Invitrogen v. Biocrest (Fed. Cir. 2005)
Invitrogen sued several defendants for infringement of its patent that broadly covers a method of growing E.coli cells. On summary judgment, the district court found Invitrogen’s patent invalid under the public use bar of 35 U.S.C. § 102(b). 102(b) codifies a “critical date” of one year before filing of the patent application (or priority document). Public use or sale of the invention before the critical date will invalidate the patent.
Invitrogen had used the claimed process before the critical date, within its own laboratories. However, the process was kept confidential within the company, the process was not sold, and no products of the process were sold.
Rule: On appeal, the CAFC first determined that the Supreme Court’s analysis in Pfaff should be extended to cover public use — noting that both the public use and on sale bars are “based on the same policy considerations. Under the new rule, a patent will be invalid if it is (1) in public use and (2) ready for patenting before the critical date. (Explicitly rejecting the old ‘totality of the circumstances’ test).
Public Use: “The proper test for the public use prong of the § 102(b) statutory bar is whether the purported use: (1) was accessible to the public; or (2) was commercially exploited.” In this case, because there was no evidence that Invitrogen received compensation for internally, and secretly, exploiting its cells, Invitrogen’s use cannot constitute “public use.”