Patent Prosecutors Licensing of Copyrights for Prior Art Submissions

By Dennis Crouch

CCC v. Oblon Spivak (license agreement)

The Copyright Clearance Center (CCC) is a collective agent for many copyright holders and serves as a one-stop-shop for folks to license copyrights for use. CCC offers licenses to many (perhaps most) of the academic publications (non-patent literature) submitted to the USPTO under the Rule 56 duty of disclosure. In recent years, CCC has implemented a buffet license approach that allows a business to use their entire catalog for a fixed negotiated price.

Until recently, few patent law firms have seen any copyright infringement risk associated non-patent prior art because the copies are most typically obtained from a licensed database and the submission to the PTO and file-copies are both likely fair use and therefore would not constitute copyright infringement. Thus, most firms have developed their its patent prosecution practices with an implicit belief that its prosecution related uses of scientific journal articles are noninfringing uses of the articles. In the spring of 2012, the publisher John Wiley began suing patent law firms – taking the contrary view that (1) making file copies; (2) sharing copies with clients; and (3) submitting copies to the USPTO each constitute actionable copyright infringement. These lawsuits are ongoing.

The CCC license would allow both internal copying and submitting copies to the USPTO, although it does not allow the sharing copies with clients. Of course, these actions were all previously thought to be fair use. Professor Jamie Boyle has an interesting essay from 2007 discussing the problems with this license. His main point is that once we start paying for fair use material it stops being fair use going forward and moves toward a “culture of permission” that, in his view, is normatively bad.

I contacted the CCC folks and received some information from CCC’s General Counsel Frederic Haber. The first point is that the Wiley articles that are the subject of the lawsuits are included within the license (still, the blanket license still does not include sharing articles outside of the firm). The second point is costs. CCC uses a model of basically charging on a per-professional-employee basis. For patent law firms, their current negotiated going rate is around $300 per year per registered attorney. The third point is that the form license includes a waiver of any unasserted claims of past infringement (with the caveat that the waiver only takes effect after one-year of license coverage). The fourth point is that the downside of losing a lawsuit is statutory damages.

Oblon is in a special case because the firm has the highest patent throughput of any firm in the country. Because of that, the firm would have likely been part of any upcoming second round of lawsuits. On that note, Oblon’s Managing Partner Brad Lytle writes that the “license allows us to go about our business and focus our efforts on protecting the intellectual property of our clients.” In other words, the license allows the firm to avoid the annoyance of a lawsuit. The question for firms and attorneys moving forward is (1) whether the fair use argument is sufficient and (2) whether your firm is small enough to fly under-the-radar. And, of course, there is the remaining problem that the license does not allow for the sharing of the articles with folks outside of the firm.

Update: A further communication from the folks at CCC indicates that, although “the repertory license is specifically designed for the internal use of the licensed organization”, “one exception to that general rule is that the licensee may provide individual copies (paper or electronic) to prospects, clients or customers of the licensee in response to requests from those outside people.”

83 thoughts on “Patent Prosecutors Licensing of Copyrights for Prior Art Submissions

  1. That’s funny. I think you finally found your niche. Best for all for you to stay away from your patent “humor.”

  2. I wouldn’t be shocked if they have a big client that is involved here with the copyright trolls (and yes this is trolling), and this was a favor to that client.

    Shocking and unprecedented!!!!!

  3. That is why if we don’t understand you, it is always our fault and never your fault.

    LOL

    Even better is the fact that you just used that line (fully taking yourself seriously), Mr. I’ve-Been-At-This-For-Years.

    The joke that is MM just keeps on writing itself.

  4. Still the smart-@$$ without the smart.

    On behalf of all us, anon: you are surely the smartest person here, by far. That is why if we don’t understand you, it is always our fault and never your fault. We are just lucky that you are so gracious when we dare to ask an obvious question about the inevitably impressive and hard substance of one of your comments. It’s too bad that you are no longer allowed to use sockpuppets to “spread the wealth” like you did in the old days. It’s almost impossible to imagine but we were even more awed by your contributions at that time. The endless energy that went into those clever pseudonyms! Sometimes I scroll the archives just to re-live those exciting times.

  5. I agree with your analysis.  

    But that is where the issue becomes dicey at best.  Why was on sale included at all if, in the end, the invention must be available to the public.  That certainly is a public use as well.  If the details of the invention must be available publicly, it is totally IRRELEVANT whether the invention was in addition "on sale."  If the invention is available to the public, it is in public use.  

    Do you agree?  Is there a legal distinction between public use and on sale where some public "uses" are not "public uses" but nevertheless are still public on sales?

    Interesting question, that.

  6. It’s the removal of the personal bars – 102 is now strictly prior art (and is yet more evidence that Metallizing has been stricken.

  7. …and yet some people have a difficult time grasping this concept.

    Note too, that the AIA PUR is intimately tied into the elimination of 102(g) and the radical re-write of 102(b) – (have you noted the title change to 102 yet), and all this follows exactly my line of logic concerning exactly what the AIA PUR stands for.

  8. Anon, it was so-deemed, yes.  But, even thought the product was in the public domain, it nevertheless concealment of the way to make the hose.  This operates to kill off the right to obtain a patent.  It is in the statutes in two ways, 102(b) and 102(g).
     

     

  9. Ned,

    See my comment below to Leopold on November 30th at 3:37 PM and draw your own parallels between commercial use of the AIA and such commercial use as exemplified in Pennock, in which even secret use is deemed to be public use.

  10. anon, you and I have had long and extended discussion on Pennock and understand that case thoroughly. It would be wise for others here to read it, in context especially with Hand’s Mettalizing opinion and the Baldwin dissent in In re Bass, which relied extensively on Pennock for his view that 102(g) is not prior art at all except to a loser of an interference because prior art must be publicly disclosed. Now, I have no real beef that the effective date of a 102(g) might be the earlier date of reduction to practice, but I think it has always been clear that even for 102(g), that the invention itself must be publicly disclosed in a manner as to enable others to make the invention (and this could include a published patent or patent application). That is the essence of the holding of Pennock and any number of following Supreme Court case. They are all consistent on this point.

    Regarding PUR, I think the new statute does not require any public use of the prior use for PUR. I think this is important for prior user rights, as most businesses want to keep their processes secret and need PURs. Until prior user rights became available, the business was only protected to the extent it filed its own patent, published a document describing the process, or had a product that could be reversed engineered to disclose the invention. In essence, the invention had to be in the public domain in order for it to be prior art.

    The present case represent an aberration for prevailing law so strong as to be odoriferous in the extreme. It does not portend well for the future if this kind on non disclosure is deemed prior art under the AIA.

    Regarding the need to repeal 102(g) and (f), I think the repeal of (g) was necessary, but not (f). We all recognize, I think, that the named inventor must be an inventor and not be a deriver.

  11. I always thought if a use was Fair Use, no permission, compensation or licence is necessary.

    You are correct – but whether or not it actually is Fair Use may not be so obvious (to some entities in some situations), and getting rid of the bother will spur some to contract away their Fair Use rights.

  12. Under what sense of equity/legal theory does an invention by another (alone a factor), prior to someone else’s patent by at least the statutory bar time frame of a year, proven by clear and convincing evidence (you know, the things necessary to actually have a valid PUR), NOT invalidate that patent, but rather, rewards only the party that could have and CHOSE NOT to share that item with a powerful freerider benefits?

  13. Um, is there a mess-up with the comments section, or am I missing something – as I read this article, its about CCC v Oblon Spivak on copyright licensing issues in the latter’s use of case law/journal articles in house and for their clients. (I’m looking at this article above: link to patentlyo.com )

    I always thought if a use was Fair Use, no permission, compensation or licence is necessary.

    The majority of comments on this post seem to relate to a patent case Fox v Cree on disclosure sufficiency – is there some link to the copyright case? If so, can somebody explain it to me. Seriously, kinda lost.

  14. IANAE, there is no prior art that is not available to the public so as to put the public in possession of it.  This is error of the panel.
     
    On sale is not prior art.  It is a personal bar.
     

     

  15. and the Supreme Court has told us that on-sale can include offering an article for sale before you’ve even invented/designed it.

    When did this happen?

  16. “The public is not in possession if the invention. It is not “otherwise” available to the public because they cannot make and use it.”

    Yes, yes I understand your argumentlol, now if you’d be so kind as to answer the question I’d be appreciative.

    Although I do note that your position becomes even more lolable in that you seem to think that if only Cree had given the boule away then it might would have been prior art. Tar ded, but funny.

  17. It is not “otherwise” available to the public because they cannot make and use it.

    No, but it is on sale.

    And I thought we were talking about 102(g), which doesn’t seem to mention anything about availability to the public.

    What’s more, we don’t even know if “available to the public” requires enablement, since on-sale is syntactically an example of availability, and the Supreme Court has told us that on-sale can include offering an article for sale before you’ve even invented/designed it.

  18. The public is not in possession if the invention.  It is not "otherwise" available to the public because they cannot make and use it.

    This is not a priority 

    Sent from iPhone

  19. “They have the violins.”

    They don’t have the violin’s in such a way as to enable reverse engineering, which, for some re ta rd reason seems important to O’Malley and which I presume is important to you.

    The public has been largely denied the benefit of the invention of the superior violin as only a select few people can have one.

    And not only that, had anyone gone to Cree and begged for a great boule at inflated price I’m quite sure they would have been willing to make them one so long as their order quantity made sense to do a run. It isn’t like they were proactively trying to stop people from getting one simply by not making a bunch and offering them for general sale. They were trying to perfect the process so that they could then make the boule at an acceptable rate and acceptable quality per run to make the thing competitive on the market.

    “Here, the public did not have any example of the product”

    You mean they didn’t lug the actual physical boule into the conference? Probably true, but irrelevant. It is accepted and not contested that it existed. If someone really really wanted to look at it, they might could have begged a view off of them. It would look the same as any other SiC boule so nobody would so beg.

    “No description.”

    Wut? They published a description. Did you not even read the decision? There is a published paper describing the boule and showing an image thereof.

    “No patent application.”

    Not a requirement.

    Now Ned, if you’d be so kind as to answer the question I presented, I’d be much obliged. It is a simple yes or no, and maybe a sentence worth of explanation.

  20. Once again, it would have been possible for Cree to prevail without any disclosure at all, provided they could prove they hadn’t concealed the invention. The time frame was awfully long here, but if they could evidence continuous progress towards commercialization then they could prevail.

    So with that no disclosure at all, could that progress towards commercialization be all internal to a corporation such that the public has no benefit (of the actual invention itself)? It’s easy to consider a situation in which there is zero public benefit (a cost reducing process invention, for example, that allows the corporation a larger profit margin instead of reduced prices for the consumer).

  21. Because in this case and this case alone, it’s okay to (dismissively) discuss policy rather than simply rely on what the law clearly is.

    Still the smart-@$$ without the smart. CLEARLY I have set the stage of my question as outside of the current law, with no attempt to confuse or obfuscate what is actual law with the point I wish to make.

    Are you having difficulty finding the Pennock case? I am sure Ned can provide a link.

  22. I still don’t understand the question.

    I think he’s asking how it could possibly be fair to reward someone who came up with a really clever idea and is willing to contribute to the economy and start a business to manufacture the invention and make it available for everybody to use, by protecting him (and him alone) from a statutory cause of action given to someone else who came up with the same clever idea but decided instead to write about it.

    Because in this case and this case alone, it’s okay to (dismissively) discuss policy rather than simply rely on what the law clearly is.

  23. I’d really like to understand Oblon’s true motivation to pay here. I wouldn’t be shocked if they have a big client that is involved here with the copyright trolls (and yes this is trolling), and this was a favor to that client. The favor being that by licensing it, the copyright trolls can then point to Oblon as an example of a law firm that “did the right thing” and bought into the “permissive culture” here.

  24. Let’s take a famous example Ned. The stradivarius violin. Nobody knows how to make one, but we have several in existence and there is ample evidence of their existence as of a way back date. Someone invents a way to make one, identical to those that are in use now. Perhaps they discovered the original method of making them used however long ago.

    Now, tell me Ned, if they try to claim “1. A stradivarius violin.” is the claim valid or invalid and why or why not?

  25. Not as much a distinction as you might think, given the “commercial use” requirement of the AIA PUR.

    What other use would a commercial enterprise make of an invention? And why would you sue anyone other than a commercial enterprise for infringement?

    Under pre-AIA law, such commercial use was legally equivalent to public use.

    I don’t think so. The AIA indicates that purely internal use can qualify for PUR, doesn’t it?

    Under what sense of equity/legal theory does an invention by another (alone a factor), prior to someone else’s patent by at least the statutory bar time frame of a year, proven by clear and convincing evidence (you know, the things necessary to actually have a valid PUR), NOT invalidate that patent, but rather, rewards only the party that could have and CHOSE NOT to share that item with a powerful freerider benefits?

    I still don’t understand the question.

  26. One key distinction is that AIA PUR can apply to prior use that is concealed

    Not as much a distinction as you might think, given the “commercial use” requirement of the AIA PUR.

    Under pre-AIA law, such commercial use was legally equivalent to public use.

    I will let you ponder this….(hint: think Pennock)

  27. what is the factual and legal differentiation between the invention existing by another in this case under pre-AIA, and an invention by another for a valid PUR post-AIA?

    One key distinction is that AIA PUR can apply to prior use that is concealed. Because the public doesn’t directly benefit from such secret use, making the PUR a personal defense, rather than invalidating art, makes sense to me.

    Under what sense of equity/legal theory does an invention by another (alone a factor), prior to someone else’s patent by at least the statutory bar time frame of a year, proven by clear and convincing evidence (you know, the things necessary to actually have a valid PUR), NOT invalidate that patent, but rather, rewards only the party that could have and CHOSE NOT to share that item with a powerful freerider benefits?

    I don’t understand the question.

  28. I am thoroughly enjoying the discussion above (Ned, do you see why 102g had to disappear (along with 102f), in order to have the AIA version of PUR in place?

    And here’s a question for the crowd: other than the expressly written portion of the law that states that PUR does not make a patent invalid, what is the factual and legal differentiation between the invention existing by another in this case under pre-AIA, and an invention by another for a valid PUR post-AIA?

    Under what sense of equity/legal theory does an invention by another (alone a factor), prior to someone else’s patent by at least the statutory bar time frame of a year, proven by clear and convincing evidence (you know, the things necessary to actually have a valid PUR), NOT invalidate that patent, but rather, rewards only the party that could have and CHOSE NOT to share that item with a powerful freerider benefits?

  29. A disclosure may well need to be enabling, but an actual physical reduced to practice copy of the invention need not be enabling.

    People observing this case seem to not be able to tell the difference in a physical boule being prior art as it is evidenced by a paper and in the paper being evidence to support a factual finding of what was known in the art as of that day. Two distinct things.

  30. For 102 g to be prior art, it must be publicly disclosed and that disclosure must be enabling.

    For an event to be prior art under 102(g), it must also be prior art under some other paragraph of 102?

    Why did 102(g) even exist, then? So the statute could look more “first to invent”?

  31. there is at least one actual reduction to practice falling within the scope of the claims but wth even more structural detail described in the specification.

    Fair enough, but if the claim is something people already wished they had, that’s not the invention. The invention is the method of producing it that all those wishers couldn’t come up with.

  32. It’s a claim that, if you substitute “what is claimed is” with “what I wish I had is”, could easily have been drafted ten years before the priority date by anybody of ordinary skill in the art.

    Maybe not so unlike a Beauregard claim after all, then.

    Except ordinarily in this type of case (as opposed to a B-claim) there is at least one actual reduction to practice falling within the scope of the claims but wth even more structural detail described in the specification. That is never true of B-claims which get no further than a generic description of types of “media” upon which information is printed.

  33. If I follow you, had Cree chosen NOT to disclose the product it would have been better placed to prove lack of novelty under the 102(g) state of the art because then the inference that Cree had deliberately “concealed” the “invention” would not be there.

    I’m not sure I’d go that far, Max. The passage of time by itself can raise that inference. The published document was really nice evidence of actual reduction to practice prior to the critical date, which is step 1 in 102(g)(2). The issue to the dissent is about whether it is also sufficient evidence of lack of concealment.

    Reading between the lines a bit, part of the problem here appears to be that the concealment issue wasn’t very well developed at the lower court. For instance, the record shows that Cree was selling the product in 2004, nearly 7 years after the patent was filed and 9 years after Cree’s first disclosure that the technology existed. However, Cree’s counsel said that this didn’t mean the product wasn’t publicly available earlier, but meant only that they didn’t even attempt to prove commercialization. It appears that Fox’s primary arguments were that (a) actual reduction to practice wasn’t shown and (b) that disclosure of the mere existence of the product was meaningless. I think they correctly lost on those arguments.

    This case is interesting, but I don’t think it’s terribly significant, as it’s highly fact-sensitive. I certainly don’t think it breaks new ground in defining standards for prior art documents, however.

  34. That whole case boils down to:

    “However, Cree needs only prove either that it reduced its invention to practice first or that it conceived of the invention first and was diligent in reducing it to practice.
    Mycogen, 243 F.3d at 1332. An alleged prior inventor
    would need to prove conception only if the alleged prior inventor had not successfully reduced the invention to practice before the critical date of the patent-at-issue (May 4, 2000).3 Since Cree reduced the invention to practice in 1995, Fox Group, 819 F. Supp. 2d at 532, it does not need to prove conception. Reduction to practice and conception are separate and distinct concepts and
    tests; we will not combine them.”

    And that most certainly is da lawl. Cree made one first. Period, your sht is done son. Enablement is talking about nonsensical “art” that is little more than scratches on a paper rather than an actual irl boule.

    If you think differently you need to remove your lawlta rd head from your lawltar d ar se.

    “Fox contends that Cree admitted it had not invented a repeatable process, quoting the 1996 article, which states “we are working on process repeatability issues that will result in consistent production of wafers of equal or better quality.””

    Fox even goes out of its way to show off how bad its reading skills are.

    “Fox claims that public use or descriptions in a published document must be enabling,”

    Fox then brings more lulz to the party.

    ““in conjunction with Cree’s choice not to reveal the subject matter of the invention in its [Kyoto Article] and not to enable its competitors how to make it, establish that Cree suppressed or concealed the invention.””

    Lol wut? Say wut now Fox? Not handing you how to make a boule along with disclosure of the boule suddenly makes Cree’s reduced to practice wafer somehow not eligible under 102(g)? Lulz.

    “(1) deliberately concealed its production methods”

    The production methods are not claimed ta rd O’Malley.

    “(3) failed to publicly use or commercialize the Kyoto wafer in a manner that would have allowed reverse-engineering.”

    So wut?

    “Fox argued that Cree had no proof that the process it used to create the Kyoto wafer was ever used again, or that Cree even understood what that process was.”

    So wut?

    “This evidence, taken as a whole, is sufficient to create a genuine issue that Cree abandoned, suppressed, or concealed its invention, particularly since the standard for summary judgment requires that it be viewed in the light most favorable to Fox.”

    Lol wut again?

    “Here, Cree’s only rebuttal argument was that it disclosed the Kyoto wafer, together with an x-ray topograph”

    So then they had the perfect rebuttal? And you discount it O’Malley? Say wut?

    “In short, the district court, and now the majority here, find that the same evidence which established Cree’s prior reduction to practice was sufficient to prohibit afinding of abandonment, suppression, or concealment.”

    You mean they did the only sensible thing?

    “There must be something more.”

    O rly? Then why not simply insert that into the conditions to find concealment, abaondonment, or suppression? Why not just say concealment, abandonment, suppression, or “hey they didn’t tell us all about how to make it yet”? If those are the conditions then why not just list it out?

    “Instead, the evidence at this
    stage establishes only that the Cree inventors gave a
    presentation and published a non-enabling article”

    And actually made a boule. O’Malley seems apt to forget what the “inventors” at Cree actually did as compared to the tom-wan kery he is usually dealing with in patent cases where it is all just hypothetical disclosures.

    “Although Cree alleges that it continued its research efforts to further improve its SiC material, there is no supporting evidence of that fact in the record.”

    Oh, except for that whole part in their own publication telling about their ongoing research and the evidence that some years later we have commercially available boules of the type made back then? I suppose O’Malley overlooks that pub, or just thinks it was lying, and that the new boules appeared as if by magic.

    “Neither Cree nor the majority point to any case law
    where § 102(g) was used to invalidate a patent even
    though the prior inventor did not commercialize the
    product, make it available to the public so that reverseengineering was possible, or provide some other detailed disclosure giving the public the benefit of the invention.”

    Cree did commercialize it, which is why it is being charged with infringement…

    “Under the majority’s approach,
    an inventor could publicly announce that it made
    a product, with no explanation as to how it did so, and
    then hide it away in a closet indefinitely.”

    Yes but ta rd O’Malley remember, that doesn’t stop others from coming along and developing the method of production, and then patenting the method of production and possibly catching themselves an infringer.

    “The Kyoto Article did not refer to the three defect densities claimed in the ’130 Patent and did not reveal Cree’s “experimental methods” or its “specific crystal growth conditions.”
    Appellant Br. 14.”

    So wut ta rd O’Malley? They made the fr akin boule ffs. Which is more than most of your inventa rds you deal with every day do.

    I swear to go d, judges that place the importance of their tasks above the importance of the tasks which are governed by their tasks annoy the fck out of me.

    “Because there are underlying facts that are both material and genuinely disputed”

    If by “underlying facts” he means “wild speculations with 0 evidencial support” then yes, there are totally “underlying facts” that would require remand for trial.

  35. The composition is not claimed based on its desired funcationality. That said, whether the claim satisfies all of the criteria of 112 is a genuine factual question.

    That’s probably more like what I meant to say. It’s a claim that, if you substitute “what is claimed is” with “what I wish I had is”, could easily have been drafted ten years before the priority date by anybody of ordinary skill in the art.

    Maybe not so unlike a Beauregard claim after all, then.

  36. I don’t see where you get anything “functional” out of that. Those all read as structural limitations to me.

    They are structural limitations, describing the objectively understood and measurable configuration and arrangement of component parts of the composition.

    The composition is not claimed based on its desired funcationality. That said, whether the claim satisfies all of the criteria of 112 is a genuine factual question.

    (Of course, the fact that this claim was granted provides additional support for the argument that Beauregard claims are equally patentable <–your Friday joke)

  37. Rather, to be anticipatory, a disclosure must be enabling. Additional prior art for the purpose of showing obviousness is good for everything it teaches.

  38. a non enabling product annoucement makes the product available to the public enough to be prior art regardless that the product itself is not available.

    It’s a 102(g) case, Ned. The issues are: did someone else (in the US, as I recall) invent prior to the applicant and was it abandoned, suppressed or concealed? There is no “available to the public” requirement. Secret prior art and all that.


  39. Leo, if the product is not available to the public, how is it prior art?

    102(g)(2) doesn’t say anything about “available to the public.”

  40. Except, IANAE, the product itself was not publicly available in any way!

    It’s not prior art on the basis of public availability, it’s prior art on the basis of prior inventorship by another. It only has to have been invented.

    If the evidence of inventorship had to amount to a contemporaneous making-available, that would be a pretty silly state of the law. What would be the point of 102(g) at all then?

  41. Well Ned, thanks to Leo I had thought I understood that this was all about a FtI priority contest. Under FtF such contests do not occur. So, sorry, I’m not perceiving your AIA line of thinking here.

  42. Max, while this decision is decided under now repealled 102(g), it is applicable to the AIA as well, as it appears to hold that a non enabling product annoucement makes the product available to the public enough to be prior art regardless that the product itself is not available.

    Nonsense, I say.

  43. Yes, there was such a case. And what about that English case (Lund-Beck, if I remember right) where the racemic mixture was old but nobody knew how to separate the l from the r enantiomer. Claim 1 (ultimately held not invalid) was to the enantiomer per se. The description supporting that claim enabled (for the first time) isolation of the claimed molecule. In the end, the inventor got protection not just for the isolation process but also for the molecule per se.

  44. I do struggle to get 102 and FtI clear in my head. Here, the facts were that Cree disclosed the product but not how to make it. Those facts the dissent sees as tending to suggest 102(g) “concealment”.

    If I follow you, had Cree chosen NOT to disclose the product it would have been better placed to prove lack of novelty under the 102(g) state of the art because then the inference that Cree had deliberately “concealed” the “invention” would not be there.

    You suggest that then all that Cree would have needed to destroy validity was anti-abandonment evidence that, as regards the invention, for the reiod, they were “still working on it”. OK, I think I get the FtI point now.

    No wonder you are not happy with my characterizing this as a case about “making available”. Thanks for taking the trouble to explain.

  45. How is that a valid claim? It only recites a sufficiently uniform crystal. Yes, the “sufficiently uniform” is objective and measurable, but it’s a purely functional claim to the desired result.

    I don’t see where you get anything “functional” out of that. Those all read as structural limitations to me.

    But, I can see your concern, which strikes me as a possible written description problem.

    Wasn’t there a recent case on this, where the patent described something with a property greater than X and disclosed one way to build this something, but then the owner sued someone for making something else with a property greater than 10x, but using a completely different process?

  46. The “non-enabling paper” was not the prior art; the device it described was.

    This sounds correct. We can’t hold the evidence of prior inventorship to the standard of the prior inventorship itself. Actual reduction to practice happens in the lab, not in an enabling disclosure. What’s more, there’s a difference between suppressing/concealing an invention and simply not telling anybody the details.

    I’m a bit more concerned with claim 1:

    “A silicon carbide material comprising an axial region of re-crystallized single crystal silicon carbide with a density of dislocations of less than 10^4 per square centimeter, a density of micropipes of less than 10 per square centimeter, and a density of secondary phase inclusions of less than 10 per cubic centimeter.”

    How is that a valid claim? It only recites a sufficiently uniform crystal. Yes, the “sufficiently uniform” is objective and measurable, but it’s a purely functional claim to the desired result. Would Porsche have gotten a valid patent claim to “a road legal car that can go 195 mph”?

  47. So, it seems, it IS all about enablement, and making claimed subject matter “available to the public”. What fun.

    I disagree, Max. It’s about how to prove whether or not an invention has been abandoned, suppressed, or concealed. If the disclosure were enabling, this wouldn’t have been a case about 102(g), but about 102(a).

    Once again, it would have been possible for Cree to prevail without any disclosure at all, provided they could prove they hadn’t concealed the invention. The time frame was awfully long here, but if they could evidence continuous progress towards commercialization then they could prevail.

    Once again, the court did not say that a document can be prior art without being an enabling disclosure. Instead, it said that a non-enabling disclosure could be sufficient evidence to rebut evidence of concealment.

  48. What options did the copyright defendants have? Is there only one licensor available? Only one blanket-type license, one price structure?

    How does the EU look at this issue?

    Is there a potential for copyright misuse? antitrust liability? The CCC must have encountered these issues before in the music licensing cases.

  49. I’ve read it now. Ned, compliment. Great case. It happens all the time, that innovative companies announce a breakthrough product while deliberately holding back the details of how to make it.

    And compliment to the dissenter O’Malley, who wrote:

    “Despite the majority’s finding to the contrary, simply disclosing the existence of the product….is insufficient….” and

    “there are no cases before now where we have said that a non-enabling disclosure, by itself, is sufficient to rebutevidence of abandonment, suppression or concealment.”

    So, it seems, it IS all about enablement, and making claimed subject matter “available to the public”. What fun.

  50. Isn’t the whole reason why Fair Use is so problematic is that the brightline fear raised by Prof. Boyle NOT in play?

    Fair Use is a case by case, highly fact specific analysis, and I am not sure that “Courts look to the “markets” for copyrighted work in determining fair use.” eliminates any Fair Use that exists without the impact of a CCC license brightline effect.

  51. Thanks Ned. Will read the Decision asap, but here are instant comments anyway.

    1. We are looking at novelty, right. We can put obviousness out of our minds.

    2. US novelty (at least pre-AIA) is nothing to do with whether anything has been “made available” to any member of the public. A prior sale anticipates, even if the buyer cannot reverse engineer to discover the subject matter of the claim under attack.

    3. So, in that case, whether or not the subject matter is “enabled” is not the decisive issue.

    Now I’ll read the Decision.

  52. the majority held that a non enabling disclosure of a product was effective prior art

    Ned, that’s just wrong, and this case has nothing to do with enablement. The “non-enabling paper” was not the prior art; the device it described was.

    You say that “to be prior art, a disclosure must be enabling.” That’s simply irrelevant here, as 102(g) doesn’t necessarily require any disclosure at all. This case might be wrong in its conclusion, given the facts (apparently there was quite a long period of time with no progress in commercialization of the product), but I don’t think they are wrong on the law.

  53. Recent case worthy of note:

    “FOX GROUP v. CREE INC
    link to cafc.uscourts.gov

    In a major departure from precedent (of 200years), the majority held that a non enabling disclosure of a product was effective prior art. A dissent objects that this cannot be the law.

    The case involved a new semiconductor material. It was described at a conference, but how was made was not described, no samples were made available to the public for reverse engineering and no patent application was ever filed describing how to make and use the product. Nevertheless, the majority held that the invention was not “abandoned, suppressed or concealed” because of the fact of publication of the existence of the invention, without more.

    The dissent points out, clearly in my view, that the majority opinion represents a significant departure from prevailing case law. To be prior art, a disclosure must be enabling. With respect to products, this means that they must be made available to the public for reverse engineering purposes, described in a printed publication or described in a patent application. To allow the announcement of a product without more to be prior art against another product where the product was not made available to the public in any fashion, where there is no printed description publicly distributed describing how to make the product, and no patent application filed describing how to make the product, the announcement of the product alone was not enabling, and therefore is not prior art because the prior invention was “abandoned, suppressed or concealed.”

  54. “His main point is that once we start paying for fair use material it stops being fair use going forward and moves toward a “culture of permission” that, in his view, is normatively bad. ”

    Obviously so, indeed, the entirety of copyright “culture”, such as it is, is “normatively bad” on its face. But lawltards, lawltards associated with big interests and big interests themselves keep it going.

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