Guest Post by Profs. Masur & Ouellette: Public Use Without the Public Using

Guest post by Professors Jonathan S. Masur (Chicago Law) and Lisa Larrimore Ouellette (Stanford Law).

What is it that makes a use “public” for purposes of the public use bar? Does it matter whether the person doing the using is a member of the public, as opposed to the inventor? Or does it matter whether the use is itself in public, as opposed to taking place in secret behind closed doors? As it turns out, the answer to both questions is “yes,” but the questions are not as distinct from one another as that formulation might make it seem. Instead, the issue of who is doing the using turns out to affect where and how that use must occur if it is to be public use.

Begin with the question of who is doing the using. Most cases of “public use” have involved use by at least one member of the public—“a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.” And when an invention is in use by a member of the public (rather than the inventor), it is blackletter law that the use can be “public use” even if it takes place entirely in secret, behind closed doors. In addition, it is also blackletter law that the use need not enable the invention to constitute prior art. No member of the public needs to see all the details of the invention or be able to reproduce it—it is enough that at least one person has come to rely on the availability of the invention free from any patent-based restriction.

But as we explain in a forthcoming article, a small line of cases suggests there is a second route to public use: even if no member of the public uses the invention, an invention can be placed in public use if it is used by the inventor, but only if it is displayed to the public in such a way that the relevant public could have understood the invention. That is, there can be public use without the public using, but only if that use is out in the open and with something like an enablement requirement. See Real-World Prior Art, 76 Stan. L. Rev. (forthcoming 2024). These cases appear to rely on an idea of constructive public knowledge: just as a conference poster can be invalidating printed publication prior art if a researcher could have learned about the invention by reading it, an inventor’s demonstration of an invention can be an invalidating public use if someone could have learned about the invention from observing the demonstration. Likewise, the Federal Circuit has held that display of an invention is not public use “if members of the public are not informed of, and cannot readily discern, the claimed features of the invention.” The only exception to these rules has come when the inventor is engaged in secret commercial use of the invention. Some courts have held that this puts the invention into public use. But more recently, the Federal Circuit has instead begun to hold that this places the invention on sale, because the whole point of the use is to exploit the invention commercially. We agree with the Federal Circuit panels that have held that the on sale bar is a better fit in these situations.

The upshot from these two lines of precedent is that the question of whether an invention is in public use depends intimately on who is doing the using. If the user is someone other than the inventor, then there is public use (a) even if the use is taking place in secret, and (b) irrespective of whether the user can figure out how the invention works (enablement). But if the inventor herself is the one doing the using, then (a) the use must be taking place in public, and (b) the use must be enabling.

As one might predict, the grouping of these two approaches under the single heading of “public use” has led to confusion among litigants and, in some cases, courts. Two new Federal Circuit decisions this month add to this “public use without the public using” line of cases and demonstrate the pitfalls of failing to keep the interlocking public use rules straight. In Minerva v. Hologic, the court held that display and demonstration of a medical device at a gynecological trade show constituted public use. The patentee, perhaps misunderstanding this line of doctrine, argued that it could not be public use because no member of the public used the invention. But the court held that “public use may also occur where, as here, the inventor used the device such that at least one member of the public without any secrecy obligations understood the invention.” Similarly, In re Wingen held that display of an inventive “Cherry Star” flowering plant at a private Home Depot event placed the plant into public use. The patentee argued that the display did not disclose the claimed genetics of the plant—which could have been a successful argument given the enablement-like inquiry imposed on other similar cases—but the court held that this argument was forfeited because it was not raised in proceedings below. It seems likely that the lawyers who argued the case before the PTAB had not thought to make this argument because they did not realize that use by the inventor requires enablement. Our article includes numerous examples of district courts that were similarly confused by the rules that vary depending on who’s doing the using.

As we explain in our article, treating enabling demonstrations by the inventor as prior art makes sense as a matter of patent policy. But lumping these cases under the “public use” umbrella has created confusion and mistakes among the lower courts. Going forward, we think the Federal Circuit should be explicit that there are two distinct routes to public use: (1) use by a member of the public—someone under no obligation of confidentiality to the inventor—which can take place in secret and need not be enabling, and (2) use by the inventor, which must take place in public and enable the invention.

Alternatively, and perhaps even better, the Federal Circuit could decide that the inventor-use category of activities instead implicates the “otherwise available to the public” prong of § 102. An enabling demonstration, where the public learns about the invention but cannot use it, could be the paradigmatic example of an activity that makes an invention available to the public without creating any other type of prior art. This is not a full solution given all the pre-AIA patents still in force, and in light of the strong policy reasons for barring pre-AIA patents that were displayed publicly we can see why courts have tried to fit these cases within the “public use” category. Regardless, for patentees and their attorneys, Minerva v. Hologic and In re Wingen serve as a reminder to avoid disclosing the details of an invention before they are ready to file a patent application—and if a disclosure does occur, they should remember to preserve the argument that it wasn’t actually enabling!

28 thoughts on “Guest Post by Profs. Masur & Ouellette: Public Use Without the Public Using

  1. 7

    The claim lacked sufficient structural limitations defining “what it is” as would be right for a composition claim but instead described in terms of “what it does” , or inherent properties, but yes beware the twisted arguments re inherency some might try to make towards negating patentivity (new word). The inherent properties of a composition otherwise shown/proven to be novel and non–obv. + useful cannot be used against it ! Its like the Fifth Amendment of patent law. Its popular a century in many fields like chem to use with polymers, their resultant properties in a claim defining them over prior art, same with the incandescent lamp, its inherent property was to be more durable, kinda like a diamond coating on a wheel. About 30 yrs ago I had taped Doug Blaze’s course on basic Fed. Civil Proc., one thing that always stands out was “How you state the claim is the most critical”. Sounds like the courts are saying: “More structural description please.”

    I didn’t care for the use of “less than…” leaving it open ended just feels uncomfortable unless something defining in the spec.

        1. 7.1.1.1

          nah nah nah, that’s insufficient ! Ya has to articulate a reasoning, not a conclusory description of me as wrong (what I allegedly did), describe me instead by my structure (what I is) !! Then you get the patent. :)

          1. 7.1.1.1.1

            Not looking for, nor needing a patent here.

            You ARE wrong (as a condition).

            What you may decide TO DO with that is simply another matter altogether.

            (Did you see what I did there?)

  2. 6

    RE: “The only exception to these rules has come when the inventor is engaged in secret commercial use of the invention. Some courts have held that this puts the invention into public use. But more recently, the Federal Circuit has instead begun to hold that this places the invention on sale, because the whole point of the use is to exploit the invention commercially. We agree with the Federal Circuit panels that have held that the on sale bar is a better fit in these situations.”

    Machines and processes, not themselves sold, but used in a factory to produce articles which are sold, would be a commercial exploitation of an invented machine or process that falls under “public use”, even if those machines or processes are kept secret and only the product made by them is accessible to the public. It may not really matter which category “public use” or “on sale” you choose to put it under, but in such situations I think “public use” is still a better fit. In either case, a bar to patenting would arise after one year of such use of the machine or process. The inventor must choose either patenting or trade secret, he/she cannot have both.

    1. 6.1

      Secret commercial use of an invention for more than a year before filing an application on it triggers the Fed. Cir. adopted Metalizing Engineering judicial doctrine of inventor application filing forfeiture [which is not a statutory bar or prior art]. [And that triggers judicially untested arguments as to weather or not that Learned Hand doctrine and its strong public policy basis was somehow silently eliminated by the AIA].

  3. 5

    Are you trying to say GEORGIA PARENT TREAT? Who gives a Melda about a woman that at age 14 was old enough to know what she was doing was not a good thing. I knew. And every girl born to an unmarried mother also knew but followed through. The statistics on this epidemic are staggering. Maybe this study should be taught in school. Maybe a few lives will change for the better.

  4. 4

    If someone is forced or coerced into signing an NDA, when the reason was to coverup the truth. That makes the NDA invalid. TRUMP would explain that to.you if you ask him why.

  5. 2

    “But as we explain in a forthcoming article, a small line of cases suggests there is a second route to public use: even if no member of the public uses the invention, an invention can be placed in public use if it is used by the inventor, but only if it is displayed to the public in such a way that the relevant public could have understood the invention”

    Duh.

    I don’t know a single patent practitioner who would tell his client that prior to the filing of a well-drafted patent application, it’s ok to publicly display the invention even if the invention isn’t being used in that display.

    Leave it to some law professors to not only state the obvious, but to publish an article on this “observation” – no doubt full of footnotes.

    1. 2.1

      Yes, except the the last sentence. If it was that obvious to ALL patent attorneys that a comprehensible public display of an invention could be held to be a “public use” there would not have been the arguments here and elsewhere about the recent case on publicly displayed flowers.
      [There is also a semantic argument: does “public use” mean a use BY the public, or a [non-confidential] use IN FRONT of [some?] members of the public, and where does it say the public display has to be by the inventors?]

      1. 2.1.1

        It is less “semantic” than you propose, Paul.

        Given the “expectation” aspect (especially in the flower case), there is NO created expectation for the utility patent claims from a mere observation “use.”

      2. 2.1.2

        Arguments made in litigation to save a patent often have little relationship to reality, much less to basic ideas that “seem obvious” to most reasonable attorneys (like “file the application before you display the invention”).

        Desperation often has that effect.

        1. 2.1.2.1

          LOL that’s what theydid in the Feb/March Overtons Catalog. Then when Overtons was questioned about the theft of my claims, that I even sent the proof of the theft of my Patent claims to the USPTO. Overtons told me they weren’t interested in paying me for what they claimed was theirs I promise you Wiseman and Bovard even ran it through their Office. August 36, 1996. It’s on the record. Even Moatz knew all about it. Go ahead look it up.

            1. 2.1.2.1.1.1

              August 26, 1997 HE is charged. August 26, 1998 they oerve my husband to move back to TN. August 26 2000 my husband iscann3d from the job they coerced him into. Went fro Dover to Thyssen Dover. This is all recorded.

  6. 1

    What was the point of adding the words “otherwise made available to the public” to the US patent statute? Was that addition inspired perhaps by the wording of the 1973 European Patent Convention, the drafters of the AIA thinking it helpful? If so, ironic, then, that in Europe the words have always meant one thing but now, in the USA, something contradictory to that. In other words, well-meaning efforts towards conformity have simply generated a greater degree of disconformity. I suppose it’s always like that, in matters of comparative law.

    That or, adding tweaks to an existing statute is a different kettle of fish than drafting a whole new statute (EPC in 1973) with “made available to the public” the bedrock wording of its all-encompassing and fundamental definition (Article 54) of the state of the art.

    Or was it that perhaps that those who wrote the EPC in 1973, finding it helpful, borrowed the wording from the USA?

    1. 1.1

      Max, how does the AIA adding “otherwise made available to the public” to the US 102 statute make it further away, rather than closer, to foreign patent law? I recall one EPO decision years ago in which a bar occurred on the date the inventor’s product first reached a customers shipping dock [absent any proof that any members of the public had examined how it worked] because it was then available to the public.

      1. 1.1.1

        No time now, to put together a reply that does justice to your question, Paul, sorry. Will get back to you as soon as I can. Perhaps there will be other useful remarks in the meantime. Hope so.

      2. 1.1.2

        Paul, under the established case law of the EPO Boards of Appeal, what “the public” means is crystal-clear and what “available” means is equally clear. One person is enough. But that person has to be free in law and equity to tell others what they know about the invention. If that one person is bound by obligation of confidentiality to the giver of the information they are not free. If they cannot divine what the claimed subject matter is, well then they can’t tell anybody else what the invention is.

        Questions?

        As you see, the underlying notion within the EPC is about letting the cat out of the bag rather than notions of inventors exploiting the invention commercially before they file their patent application.

        1. 1.1.2.1

          It gets worse:

          We’ve had some historically awesome judges misfire and confuse and conflate protection times under very different setups in this nanny-like ‘watch out against’ mode.

              1. 1.1.2.1.1.1.1

                Re: “Have you tried discussing this with ChatGPT?”

                That’s a new and witty comment.

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