Bruckelmyer Stands — Expands Scope of Available Prior Art

Bruckelmyer v. Ground Heaters (Fed. Cir. 2006).

Bruckelmyer has two patents on methods of thawing frozen ground so that a layer of concrete can be laid on top of the ground. In a decision earlier this year, the CAFC found that Bruckelmyer’s patents were obviated by the contents of a Canadian patent file history — thus affirming a summary judgment of invalidity.

On appeal, Bruckelmyer argued that the unpublished Canadian patent documents were not a “printed publication” under 35 U.S.C. Section 102(b) and thus, was not prior art. The CAFC found that the originally filed application was “publicly accessible,” and thus a prior art “printed publication” because the Canadian prosecution file was open to the public more than a year before Bruckelmyer filed his application.  Here, the Court found that this particular application could be located because the related patent discussed a solution for the same problem addressed by Bruckelmyer’s patents.

The CAFC has now denied Bruckelmyer’s request for rehearing en banc.  However,  Judge Newman presented a forceful dissent from the denial of rehearing:

It is undisputed that these [disclosures] are not available in any database or any library, and that no index, no catalog, no abstract suggests their existence or their content. It is not contested that the only way to obtain these [disclosures] (although their existence was unknown) is to personally go to the Canadian Patent Office in Hull, Quebec, and ask to examine the file wrapper (the prosecution history) of this particular patent, which is entitled “Portable Construction Heating System”. This is not the method for heating frozen ground in preparation for pouring concrete, which is the subject of the patent in suit. The only lead to this particular Canadian prosecution record, we are told, is to observe that the broad recitation in the Canadian patent that “other typical uses [of the invention] are . . . thawing frozen ground,” and then to travel to Quebec to examine the file wrapper to see if it might contain information that was deleted from the Canadian application before issuance. This excised and unpublished and unreferenced material is not a “printed publication,” no matter how generously that concept is defined. This court improperly relies on it to invalidate the United States Patents here at issue. . . . As Judge Linn observes in his dissent, a person searching for prior art cannot be reasonably expected to look in the prosecution history of a foreign patent that does not disclose the invention, on the off chance that its inventor might have invented something relevant to the search, and then cancelled it from the application before grant.

Notes:

22 thoughts on “Bruckelmyer Stands — Expands Scope of Available Prior Art

  1. “A grant of a patent is quid pro quo for the the disclosure of the invention to the public. If an earlier disclosure of the same invention is buried so that it cannot be found by the general public, then one can hardly argue that the grant of a patent will take the invention away from the public.”

    They found it didn’t they? That blows your argument out of the water. By definition, if it was unavailable to the public, we wouldn’t be having this discussion. It WAS available and it was found. End of story.

  2. Jim Demers wants the return of local novelty: what was known to the “interested” public, only in USA. Does he also want the return of the concept (UK) of the “communication invention” that rewards with a UK patent the member of the British public that receives a communication from the depths of, say, Asia, which brings news of a contribution to technology, and brings that news to the UK Patent Office. The one who receives the communication is deemed the “inventor”.

    Didn’t local novelty die with globalisation?

    And anyway, who decides when a member of the public is “interested”?

  3. “what justification is there for granting a patent to the Johnny come lately?”

    A grant of a patent is quid pro quo for the the disclosure of the invention to the public. If an earlier disclosure of the same invention is buried so that it cannot be found by the general public, then one can hardly argue that the grant of a patent will take the invention away from the public. Grant of a patent to the “Johnny come lately” in this situation is entirely in keeping with the purpose and principles of the patent system.

    That’s why, to be invalidating prior art, a reference has to be indexed or otherwise be findable by someone who is looking for the information; it must be “available to the interested public.” The classic example of an ineffective prior reference is the thesis indexed only by author’s name. In re Cronyn, 890 F.2d 1158, 13 USPQ2d 1070 (Fed. Cir. 1989). The only question in Bruckelmyer is whether the obscure Canadian file history is in the same “lost reference” category.

    I don’t think the standard of what constitutes an “available” reference should be “whatever a law firm can dredge up in the course of litigation.” At the time of invention, the “interested public” does not include litigators. Judge Newman’s point is that no U.S. inventor, and no patent attorney prosecuting a U.S. patent application for that inventor, is going to travel to the Canadian Patent Office in Hull to review file wrappers for deleted text. For all intents and purposes – other than the subsequent patent litigation – that file wrapper was lost to the U.S. public. In Newman’s view, Bruckelmyer did in fact “advance the useful arts” by re-inventing and disclosing the technology, and should be rewarded with a patent for doing so.

  4. Well,there you go. When writing a new law, do you set “equity” as the foundation stone, achieve full flexibility but at the cost of low legal predictability, or do you confine equitable considerations to the necessary minimum, and go for more legal predictability. Europe had the same issue 40 years ago, when crafting a European patent law out of common law English (equity) and civil law German (no equity). See today how the English common law courts manage the EPC (equity, but not so much). Given that patents get litigated up to 20 years after they are written, it is still a little early to pass judgement on the EPC corpus of substantive law (one should examine how recently written patents are faring in the courts of Europe), but it is proving good enough for the rest of the world to adopt it. Now it is the turn of USA to figure out its patent law for C21.

  5. Malcom Mooney:

    You make my point exactly.

    Litigation is risky. So is business. Therefore, I see no need for the legal certainty allegedly provided by allowing obscure and nearly impossible to ever uncover references (during the course of reasonable investigations) to serve as prior art. The equities, in my view, favor making such obscure references not prior art.

    In a related vein, see Dennis Crouch’s question a few days ago regarding the ability to “publish” obscurly so as to provide art one might pull out of the back of their pocket to invalidate another’s patent, but which seemingly avoids the need to reveal trade secrets (i.e, a trade secret owner might get to have it both ways: keep a trade secret secret until charged with infringment by a patentee.) I say society benefits more by preventing the invalidation because the patentee helps society through his/her disclosure.

    The US system works very well because we accoummodate equity. This decision seems to me to remove some of that equity.

  6. Mr. Mooney writes:
    “A writing that was knowingly provided to another without confidentiality restrictions and which a member of the public can now retrieve is indeed “published.”
    Am I missing some relevant case law to the contrary?”

    Yes, I think he is missing the general point. If I were to send someone a description of my invention in a letter to him, and at some point (prior to the patentee’s conception) his lifelong correspondence was published for whatever reason, it would not be prior art. And if simply inventing something first were enough (forget about that in Europe), then one’s private papers documenting that invention would automatically establish priority. “First to invent” should not be taken literally in law.

    As to the issue of prior art in anticipation or used in conjunction with other prior art as to obviousness, whether an obsure inaccesible prior art patent is used to render a patent invalid for either is irrelevant to the general question of what should constitute prior art. Does anyone doubt that there will be case law in which this decision will bleed into 103?
    I am not sure what Mr. Mooney means by stating prior art should include all prior art, which sounds like defining a word by using that word. I also think his apocalypic view of patent prosecution is rather silly. On one hand, he appears to chide Breckelmyer for not finding that obscure patent but then criticizes patent applicants (and by association their patent attorneys) for neurotically looking for anything and everything. Patent ligitation is expensive and costly (but not for the patent attorneys who take the case). Who really suffers the incorrect case law more than the civilians?

  7. Fredric

    “Maybe Hansel and Gretel could find their way home by following a trail of bread crumbs but the skilled man in the art (who is the standard, not the highly paid infringer’s attorney) would not navigate such a maze.”

    You appear to be referring to section 103 now. Section 103 does not prohibit patents based on what prior art references one skilled in the art would be likely to know about.

    If you want to rewrite the text of section 103, that’s a matter for the legislature. But the idea that prior art includes ALL the prior art is a longstanding one (I think it’s a good idea). The idea that the hypothetical ordinary artisan for the purposes of 103 is aware of all the prior art is also a longstanding one (I think it’s a good idea).

    The approach that the Fed Cir has taken is the best one. When in doubt: always assume the art is published. Then we can all move on to more interesting arguments such as “Is the invention obvious in view of these published writings”?

  8. Fredric writes

    “The mere fact that something is ‘accessible’ to the public does not automatically make it “published”,”

    A writing that was knowingly provided to another without confidentiality restrictions and which a member of the public can now retrieve is indeed “published.”

    Am I missing some relevant case law to the contrary?

  9. Let’s get clear the different and complementary roles of novelty and obviousness.

    The Novelty test is to deny a patent to somebody who is “re-patenting the prior art”. Obviousness stops a party patenting what, at the date of the claim, was already obvious. The difference is obscured by US law, that allows an obviousness attack to be built on a doc (US patent specn) that was not yet available to the public on the date of the claim. Euro law is clearer, maybe because it emerged from a tussle between UK (common law) and German (ROW civil law) philosophies in the 1970′s, when the only theory that would fly was one acceptable to both camps. For European obviousness, you look at the totality of the state of the art (Phosita mindset)at the date of the claim, and must exclude all the stuff still unpublished at that date. Thus, the obscure Outer Mongolian PhD thesis isn’t going to get you home on an obviousness attack. However, it can (and should) destroy novelty.

    It is right that the Mongolian PhD should destroy novelty (unless you subscribe to the since 1949 defunct UK concept of the “Communication Invention”, under which the person who brings into the UK an invention discovered overseas gets a patent for his troubles)

    Actually, in Europe, we need a novelty concept pretty much ONLY to deny a patent to the party who is a close second to the Patent Office, but whose claim at its filing date (shortly after #1 filer) was still not obvious in the light of everything that was at that date already available to the public.

    How often does a patent case hang on an obscure reference? For every one that does, and so makes the headlines, there are a thousand that don’t. Obscure fact matrices make bad law. Let’s concentrate on the 1000, and find a patent law that deals with them expeditiously.

    Based on my European experience, with Problem & Solution despatching the obviousness issue, I think you can have legal certainty and simplicity of definition, and fairness between inventor and public.

    Have I correctly understood the comment above about legal risk: it is inevitable, so it is pointless trying to reduce it. As the tennis player once said “You cannot be serious”.

  10. Those who argue that it is available/published” prior art because they routinely check foreign file histories after corresponding US patents have it all wrong.

    This is prior art for purposes of patentability. The standard is not what patent attorneys armed with hindsight after the fact can find, but what those of ordinary skill in the art have available to them. I don’t have a strong opinion on the rectitude of this decision, but it does strain credulity to think that an ME or CE trying to deal with frozen earth would say “hey, wonder what unpublished stuff there is up at CIPO on this, I think I’ll have a look.” Granted, we indulge this fiction with published patent documents, as well we should.

    Not so sure it should be extended this way with respect to printed publications.

  11. So, in essence, pursuant to this decision, we end up having to trade off an incurring of greater discovery expenses (pre-filling, during litigation, whenever) for another uncertainty (If one cannot afford to uncovered these obscure references, there is is the risk of invalidity after all prosecutiona and litigation expenses have been incurrred).

    The risk always exists regardless of whether these ultra obscure references are permitted or not. You can’t prove to your client that invalidating art does not exist (that’s standard boiler plate, isn’t it?).

    If you actually were the first to invent something then guess what? Your patent will be valid if you hired a competent patent attorney and you won’t have to worry about obscure prior art.

    If you are so afraid of obscure prior art invalidating your patent that you feel compelled to obtain copies of every file history and every thesis in every library in every country in the world to prove its validity to yourself, then you shouldn’t be in the business of asserting your patent in the first place.

    Litigation is risky. That’s why the vast majority of patent disputes result in licenses or some other form of settlement.

  12. The question, and answer, is clearly found in the nature of prior art materiality- if the hypothetical skilled man in the art would look to (and find) that field or patent and use it to recreate the invention. Otherwise it is not relevant prior art whether it would render the invention obvious or not, nor if you can find it or not. What a defendant’s attorney might find with a limitless budget to get the infringer off the hook is not the standard Judge Newman was articulating. The mere fact that something is ‘accessible’ to the public does not automatically make it “published”, a point which Mr. Mooney misses in his criticism of Judge Newman, nor does “available” mean unlimited in scope of effort to obtain it (assuming of course you even know about it). Maybe Hansel and Gretel could find their way home by following a trail of bread crumbs but the skilled man in the art (who is the standard, not the highly paid infringer’s attorney) would not navigate such a maze. Is this yet another manner of reining in the dreaded patent trolls by giving another handle for attorneys to render duly issued patents invalid (and, via e-Bay, hollow)?

  13. This just seems to be the flip side of the CAFC’s approach to obviousness. They have said, in effect, that an invention is only obvious when it has already been anticipated in the prior art. This is a very restricted definition of obviousness which they have used for the sake of ease of application but which, in my view, is inconsistent with the constitutional authorization for the granting of patents. It seems to me that then using a very expansive definition of what constitutes prior art is one way of bringing the system back into balance (and constitutional validity).

    After all, if there is a formal record of any sort somewhere that an invention has already been made somewhere, what justification is there for granting a patent to the Johnny come lately?

  14. I think that this case is interesting not least because in Europe there would be no question that the disclosure was prior art. In the EPO any patent agent would know that the application as filed is likely to differ from the patent as granted, as you are required to bring the text into conformity with the claims and it is very unusual that the claims do not change during prosecution. In this case then it would be natural to check the original patent application to see if it contains any matter not included in the granted patent.
    Indeed, if the owner of the earlier patent chooses not to file a divisional application to this deleted matter it is deemed abandoned and given to the public, from their point of view it would be unacceptable that some one could then come along at a later date and get a patent to this subject matter.

  15. In my view, reasonableness and equity are better than legal certainty. We and businesses deal with risk every day so legal certainty is not a necessity. Reasonableness and equity accommdate the real world and its limitations.

    As noted by J. Newman:

    “It is undisputed that these [disclosures] are not available in any database or any library, and that no index, no catalog, no abstract suggests their existence or their content.”

    Moreover, unlike ordering file wrappers via Optipat or observing the contents via PAIR, per J. Newman, one had to travel to another country to obtain this disclosure. So, in essence, pursuant to this decision, we end up having to trade off an incurring of greater discovery expenses (pre-filling, during litigation, whenever) for another uncertainty (If one cannot afford to uncovered these obscure references, there is is the risk of invalidity after all prosecutiona and litigation expenses have been incurrred).

    I think the definition of printed publication was expanded a bit too far in this case.

  16. Add to this the fact that some patent offices, e.g., Japan’s, routinely destroy, after a few years, prosecution histories for applications that do not lead to a granted patent.

  17. MaxDrei states that we should favor legal certainty by defining the prior art to include art that is available to the public. However, legal certainty is not promoted by including obscure references as prior art, references that often requires Herculean effort and luck to locate in litigation. Patent owners do not have legal certainty when there is a possibility that there may be “killer” references which could be unearthed during litigation as a result of Herculean efforts. The practice of major companies to deliberately and defensively create obscure references further undermines legal certainty for patent owners.

    Obscure references are often not available to possible infringers during the earliest stages of litigation. Therefore, generally, including obscure references as prior art does not promote legal certainty for possible infringers.

    Having said all of the above, legal certainty should not necessarily dictate the bounds of the prior art. Perhaps the obscure references should be prior art for anticipatory purposes, but not for obviousness purposes.

  18. The dilemma on novelty here is between common sense and legal certainty. Is prior art for novelty to be defined as anything (even in say Japan) which was available to the public (like the EPC- for legal certainty) or shall we confine it to that which a half diligent searcher might reasonably be expected to have found (real life, but oh so fuzzy).

    My vote is for legal certainty. That way, clients can receive opinions on A-published patent applications that predict outcomes in litigations post-issue. Then, businesses can invest in technology.

    Likewise, on obviousness, let’s favour objective over subjective, and let’s have legal certainty. Use EPC Problem & Solution, because it does that but also decides obviousness in a common sense way.

  19. Judge Newman

    “a person searching for prior art cannot be reasonably expected to look in the prosecution history of a foreign patent that does not disclose the invention, on the off chance that its inventor might have invented something relevant to the search, and then cancelled it from the application before grant.”

    … except that when a client asks me to invalidate a patent, the first thing I do is get the prosecution and foreign prosecution history of every related patent, and look to see if the patentee has filed other patents on similar subjects, then look at those prosecution histories.

    What is Judge Newman thinking? The invention was written on a piece of paper. The writing is publically available. The invention isn’t novel. ‘Nuff said.

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