In a decision Tuesday, the Federal Circuit affirmed a district court's holding that two patents were invalid under the on-sale bar of 35 U.S.C. § 102(b). The inventor filed a declaration during prosecution that the invention was reduced to practice before the critical date of the patents, and thereafter sold the claimed method, also before the critical date. The post-reduction to practice sales could not be considered experimental use, as once an invention is reduced to practice, experimental use is no longer possible. Further, there was insuffucient evidence to call the inventor's declaration into question. On this point, the plaintiff attempted to rely upon additional evidence not presented to the district court in opposition to the defendants' summary judgment motion. The Federal Circuit rebuffed this attempt, limiting the plaintiff on appeal to the evidence presented to the district court in opposition to the summary judgment motion. As a result, the court affirmed the finding of invalidity.
The Federal Circuit further affirmed the district court's dismissal of the plaintiff's trade secret claims as barred under the statute of limitations. The court held the plaintiff had sufficient information to allege trade secret misappropriation at least as early as 1996, but did not file suit until 2005, well outside the applicable 3-year limitations period. Accordingly, dismissal of the trade secret claims was proper.
More concerning In re Cygnus Telecomms. Tech., LLC, Patent Litig. after the jump.