MVS Filewrapper® Blog: Unauthorized Planting does not Constitute Public Use

Post by Dan Lorentzen

 

The Federal Circuit Court of Appeals has issued a decision in Delano Farms Company v. California Table Grape Commission, holding that the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields did not constitute invalidating public use of the plant varieties.

 

The case involves two varieties of grapes, which are covered by plant patents owned by the USDA.  The USDA licensed the varieties to the California Grape Commission.  Delano Farms filed suit alleging that the patents were invalid because the varieties were in public use for more than one year before applications for the varieties were filed.  The United States District Court for the Eastern District of California initially ruled that sovereign immunity barred action against the USDA, and that the case could not go forward without the USDA as a party.  The Federal Circuit overturned the decision and remanded to the District Court.  

 

On remand, the plaintiffs asserted that the claimed varieties were planted and cultivated more than a year before the filing date of the patent applications, which constituted a prior public use under 35 U.S.C. § 102(b) (pre-AIA), thereby invalidating the patents.   The plaintiffs had obtained access to and grew the varieties in 2002, without permission and before the varieties were available to anyone else.  They did not, however, sell or distribute the varieties or their fruit.  The District Court concluded that this activity did not rise to the level use required to invalidate the patents under § 102(b), and ruled for the defendants.  The plaintiffs again appealed to the Federal Circuit.

 

On appeal, the plaintiffs pointed to a number of actions—cultivation of the varieties, one plaintiff providing plant material to another, and disclosure (but not provision) of the varieties to a business partner—were sufficient to constitute a public use.  The plaintiffs pointed to a number of cases, including the Federal Circuit's 2013 decision in Dey, L.P. v. Sunovion Pharm., Inc., to support their argument that because the plaintiffs made no affirmative efforts to conceal the varieties or keep them secret, their planting constituted public use.  The Federal Circuit held that despite the plaintiffs exchanging of the varieties among themselves and disclosing them to a business partner, all of the actions were taken with the expectation of secrecy.  Further, the court held that the plantings themselves could not constitute public use because, even though they were visible to the public, the varieties could not be identified by the public simply by viewing the vines, and as a result, the public could not be put in possession of the varieties' features. 

 

The Federal Circuit specifically did not address the issue of whether use of an invention by one who has misappropriated that invention (or obtained it through other improper means) can ever qualify as an invalidating public use. 

Public use can't be experimental if not for purposes of the patent application

In a decision last week, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity of a patent and summary judgment to the defendant on the Plaintiff's false advertising claims. The defendant asserted the patent was invalid as obvious and by virtue of a prior public use.  The district court held a genuine issue of fact existed regarding whether the public use was experimental, but granted summary judgment of obviousness.  The court also granted summary judgment on the false advertising claims.

The Federal Circuit agreed the patent was invalid, but on the grounds of public use.  Specifically, the court held there was no genuine issue of material fact that the public use both embodied all the claim limitations and was not for experimental use.  While the purpose of the use was ostensibly for purposes of durability testing, the court observed that the results of the "test" (which was performed in 1989) were not available until almost a year after the patent application was filed in 1992.  As such, even if the use was for purposes of testing durability, it could not, as a matter of law, be experimental use, because it was not for purposes of the patent application.

The court also affirmed the summary judgment on the Lanham Act false advertising claims, agreeing with the district court there was no evidence the two challenged statements were false.

More detail of Clock Spring, L.P. v. Wrapmaster, Inc. after the jump.

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Clinical trials necessary to determine invention works for intended purpose

In a recent decision, the Federal Circuit affirmed a district court's ruling in favor of AstraZeneca, holding that the generic drug manufacturers Apotex and Impax Laboratories infringed patents for the popular heartburn medication Prilosec® (generic form omeprazole) in filing abbreviated new drug applications (ANDAs).  The Federal Circuit previously addressed these patents in the context of other defendants in a decision blogged about here.

The major issue in this appeal was whether the clinical trials of omeprazole constituted an invalidating public use under § 102(b).  The district court held the clinical trials were experimental use, and the formulation was not ready for patenting at the time of the trials.  Accordingly, the district court held the public use bar of § 102(b) did not apply.  The Federal Circuit affirmed the district court's holding on the basis that the invention was not ready for patenting at the time, as the clinical trials were necessary for the inventors to know that the invention would work for its intended purpose, a necessary predicate to a finding of public use.

The court also addressed a potpourri of other issues, including anticipation, obviousness and the permissible extension of a patent term due to prolonged delay for FDA testing and approval.  The Federal Circuit affirmed the district court's finding on these issues, ending a decade long series of litigation over the popular heartburn medication.

More on In re Omeprazole Patent Litig. after the jump.

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License under method patent not limited to use with licensor's products absent express limitation

In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents.  The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.

The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the other.  Regarding the first patent, the court held there was no genuine issue of material fact that a product embodying all the claim limitations was in public use before the critical date.  There was also no genuine issue of material fact that the defendants were licensed under the patent, as the license grant was not limited to use with the plaintiff's products.

With regard to the second patent, however, the court held the defendant's motion for summary judgment of invalidity was not properly supported, and vacated the finding of invalidity.  Further, there were insufficient findings in the district court's summary judgment order to support a finding of noninfringement of the second patent.  The court also reinstated the defendant's claims of inequitable conduct, as not all claims of the patents had been found invalid, making an additional finding of unenforceability not moot.

More detail of Zenith Electronics Corp. v. PDI Commc'n Sys., Inc. after the jump.

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No damages for convoyed sales when no functional relationship between patented and unpatented goods

In a decision today, the Federal Circuit affirmed a district court's decision setting aside the portion of a jury verdict awarding convoyed sales to a patentee, and sustaining the portion of the verdict finding the alleged infringer had not shown invalidity via public use.  There was no evidence of a functional relationship between the patented and unpatented goods, instead the two were sold together as a matter of "convenience or business advantage."  As such, damages for convoyed sales were unavailable.

Regarding the alleged public use, the court held that the absence of a written confidentiality agreement did not mandate the conclusion that the pre-critical date uses were public.  Instead, based on the circumstances, it was proper for the jury to imply an "understanding of confidentiality."  The pre-critical date uses were for a select group of individuals and involved a series of evolving prototypes, permitting the jury to conclude that there was no invalidating public use.

More detail of Am. Seating Co. v. USSC Group, Inc. after the jump.

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Declaratory judgment jurisdiction exists, sufficient corroboration of prior public use to invalidate

In a decision last week, the Federal Circuit upheld a district court's decision that a case or controversy existed providing subject matter jurisdiction and that the patent was invalid under 35 U.S.C. § 102(b) based on a public use more than a year before the patent's priority date.  A licensee's decision to stop royalty payments combined with a threat to pursue legal action in response created a sufficient case or controversy support declaratory judgment jurisdiction.

Further, there was sufficient corroboration that a public use occurred more than a year before the patent's priority date, between the testimony of several witnesses and various documents that presented a "coherent and convincing story."

More detail of Adenta GmbH v. Am. Orthodontics Corp. after the jump.

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Federal Circuit finds disclosure not public use because invention not actually "used"

In a decision today, the Federal Circuit reversed a district court's finding of invalidity of two patents based on the public use bar of 35 U.S.C. § 102(b).  A product capable of embodying the claimed inventions was disclosed to several individuals, including potential investors, before the critical date of the patents.  The court nevertheless found no public use because the product, an ergonomic keyboard entry device, was never actually used to enter data into a computer other than for testing.  

The court, however, affirmed the district court's claim construction and its summary judgment of noninfringement, so the patentee's victory was somewhat hollow.

More details of Motionless Keyboard Co. v. Microsoft Corp. after the jump.

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Federal Circuit addresses claim construction, on-sale and public use bars, and DJ jurisdiction

In a decision Friday, the Federal Circuit vacated in part a district court's claim construction of a several terms as well as its decision to find no infringement of patents owned by Honeywell.  The court did, however, affirm the district court's retention of jurisdiction over the several withdrawn claims and the decision that Honeywell's pre-critical date activities were not barring sales or public uses under § 102(b).

More details of Honeywell Int'l Inc. v. Universal Avionics Sys. Corp. after the jump.

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