by Dennis Crouch
The text of pre-AIA Section 102(a) suggests that an inventor’s own prior publication qualifies as invalidating prior art, even if within the 1-year grace period. Although the statute includes a “by others” caveat, the clause’s grammar suggests that qualification only applies to prior art created by being “known or used” and does not apply to printed publications. Here is the statute:
A person shall be entitled to a patent unless —(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.
35 U.S.C. § 102(a)(pre-AIA). In the statute, “by others” modifies “known or used” but does not appear to modify “patented or described in a printed publication.” As the Federal Circuit’s precursor explained, a strait reading of the statute “would negate the one year period afforded under § 102(b) during which an inventor is allowed to perfect, develop and apply for a patent on his invention and publish descriptions of it if he wishes.” In re Katz, 687 F.2d 450 (C.C.P.A. 1982). In Katz, the court recognized the difficulty in the statute, but determined that a non-grammatical reading was the best reading in order to protect grace period rights. Id.
A case pending before the Federal Circuit focuses on the meaning of “by others” and asks whether a press release by the patent owner quoting one of the inventors qualifies as prior art under 102(a). Salix Pharmaceuticals et al. v. Norwich Pharmaceuticals, Docket No. 22-2153 (Fed. Cir.). Oral arguments were held January 8 2024, and a decision is expected later this year.
The case centers on two patents covering methods of using the drug rifaximin to treat irritable bowel syndrome with diarrhea (IBS-D). U.S. 8,309,569 and U.S. 10,765,667. Both patents have priority dates from early 2008. In finding the claims obvious, the lower court relied largely on a September 2007 press release from the patentee reporting positive Phase II trial results on using a particular dosage of rifaximin to treat IBS-D. Although the press release does not disclose exact invention eventually claimed, it does disclose aspects of the invention that arguably renders the subsequent claims obvious. (Although I don’t write about it here, the patentee argues that even if the press release is prior art, it still does not render the claimed invention obvious).
The press release specifically quotes and references Dr. Bill Forbes, who is listed as an inventor on the IBS-D patents. This press release is also discussed in the patent specifications. Salix argues this means the press release reflects the inventor’s own work, not the work of “others,” and thus does not qualify as prior art that can be used against the patents.
At oral argument, the attorney for Salix, William Peterson (MorganLewis), focused on how Norwich as the challenger failed to carry its burden of proving by clear and convincing evidence that the press release was prior art – i.e., that it reflected work done by “others” not inventors. He reiterated how the press release quotes the inventor and patents describe the underlying study, clearly tying it to the inventors. In his view, this means it cannot be Section 102(a) prior art used to invalidate the patents as obvious.
But the judges pushed back with probing questions about inventor Forbes being quoted and whether that alone makes the press release not prior art. They suggested that the face of the press release gives no indication or reason to assume it is solely reflects the inventor’s work. The suggestion here is that a publication by someone other than an inventor will be assumed to be “by others” — shifting the burden to the patentee to at least present a prima facia case that the release was not by others. Thus, a central issue here is who bears the burden with respect to showing whether the release reflects “others” vs the inventors.
This issue was solved in the AIA with Section 102 no longer using the words “by others.” Still, we’ll be litigating lots of pre-AIA cases the next decade. A similar issue does arise under AIA 102(b) in terms of who has the burden of proving whether a disclosure was derived from the inventor.
William Peterson (MorganLewis) argued on behalf of the patentee and Chad Landmon (Axinn) on behalf of Norwich.
Wouldn’t the case law on journal articles that include non-inventor authors be informative here?
The key to interpreting pre-AIA 102(a) is “before the invention thereof by the applicant.” An inventor cannot invalidate his own invention under 102(a) because, essentially be definition, nothing from before he invents the invention could be invalidating prior art under 102(a).
It does get trickier when considering 103 issues but it seems like the best way to deal with it, as the courts have long held, is to continue operating under the principle that the inventor’s own work cannot be used against him except as permitted by 102(b).
I presume that it is not in dispute that the relevant information in the media release originated with the inventor? If I invent something, then disclose the invention to a journalist in an interview, and the journalist then publishes the information that I disclosed, s102(b) surely applies. The publication is literally ‘by another’ (i.e. the journalist) but it is a consequence of my disclosure. The grace period is not negated by the republication, by a third party, of information derived from the disclosure of an inventor.
Is the situation here different? Maybe, in that the disclosure by the inventor to their employer is not a public disclosure, and thus the first publication is by the employer in the media release. But it would seem odd if directing the inventor to speak directly to the media resulted in a different outcome to publishing a media release that quotes the inventor.
To be honest, I have always assumed that a successor in title to an invention also enjoys the benefit of the grace period, so I am surprised to see this issue arising at all. Is there case law that expressly states otherwise?
same. I’m wondering if there are more facts. regardless of the who, how could it be before the invention?
While it would not logically be possible to make an anticipatory disclosure before invention, in this case it is not being said that the fully-conceived invention has been disclosed in the media release. Rather, it is said that the disclosure in the media release is sufficient to render the invention obvious. Unusual, but not logically impossible.
Mark, I like your comment because it set me thinking that a press release even before the date of conception, a press release that inadvertently renders the putative “invention” obvious, might be not only “not logically impossible” but also increasingly likely, at least in a world where, increasingly, you are under pressure to “fake it till you make it”.
The popular term “vaporware” for prematurely announced software-related products comes to mind.
Should any type of non-reality be taken as actual State of the Art – BE it science fiction, or as Paul puts it: vaporware?
Depends on how broadly functional the subject claim is.
Nonsense.
The status of an item is determined by the item itself and its date.
That item has no dependence as to the claim to which the item is being pressed into service for either of 102 or 103.
It does – and must – stand on its own merits.
This is precisely why any fiction part of science fiction cannot serve as any basis of rejection in view of State of the Art (through the Person Having Ordinary Skill In The Art).
Another word salad with dog diarrhea dressing. You’ve had fifteen years to learn how to write a coherent English sentence and this is still your standard output? Wow.
Malcolm,
That you think this to be a “word salad” says more about you than you realize.
But fly that “Gr0wn-up” freak flag of yours as you rest on the peak of your Mount S t u p 1 d.
Please Pardon Potential re(P)eat…
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January 12, 2024 at 8:23 am
Malcolm,
That you think this to be a “word salad” says more about you than you realize.
But fly that “Gr0wn-up” freak flag of yours as you rest on the peak of your Mount S t u p 1 d.
Does any case law under “experimental use” provide any guidance in terms of public disclosures made during development?
? Since this is pre-AIA old 1o2(a), does not it’s ending qualifier “.., before the invention thereof by the applicant for patent” enable resolving the missing “by others” issue with publications? [Since pre-AIA applicants can show said invention’s date by prior conception plus diligence or prior actual reduction to practice prior to the publication date?]
If the press release was prior to the filing date, and not clearly by the same inventors, was not showing that or one or the other way to show prior invention always the patentees obligation to demonstrate?
I was wondering the same thing. I always thought the “before the invention thereof” language resolved any grammar ambiguity with regard to “by others.” If the publication is describing the inventor’s own work, then the publication is not “before the invention thereof by the applicant for patent.”
Unless the difference here is that the press release is only being used as a 103 obviousness reference to render obvious an invention developed after date of the press release.
I too am confused as to how an inventor would disclose his invention in writing before he invents it. I suspect something missing from the professor’s explanation of the situation.
same
In Katz, the court recognized the difficulty in the statute, but determined that a non-grammatical reading was the best reading in order to protect grace period rights.
I am reliably informed that the Constitution assigns exclusive authority over patent laws to the Congress, and that any common law derogation from the plain language of the statute erodes the foundations of the Republic. Strangely, however, the same people who are always reminding us of this exclusive authority never cite this particular example. Why could that be?
perhaps because it is such a minor issue – what is its actual occurrence rate?
As to the hidden link (“a”ssigns), I was wondering when the Kool-Aid swilling would return to the SAT scene (gee, maybe abject quotas being OUT, and never working anyway, we should actually — gasp — try merit?)
Right. Because kids with parents that can afford the individual SAT prep are clearly the most meritorious!
Long live our glorious meritocracy!
You are aware that merely taking it has no connection with the results of taking it, right?
Or is this just another example of how your cognitive abilities dissipate when you chose to venture away from patent law and Sprint Left?
Or maybe you have something against the very concept of meritocracy?
ANY of these do not look good on you.
I have nothing against meritocracy. When, or if, this country ever becomes one let me know.
Do you think that Sprint Left gets us closer there?
You may be against it without being cognitive that you are against it (happens – A LOT – to the Sprint Left).
Stop trying to make “sprint left” happen.
And stop one bucketing me.
Lulz
It is most definitely not me making Sprint Left happen.
Open your eyes.
Further – I am NOT one-bucketing you (and you appear to not understand what either means).
I have properly characterized your views ON the topics to which have been in front of us, and you DO match – without error – the Sprint Left ideology.
That you may seek to both deny its existence, and then not want to be (properly) characterized is something that you simply do NOT get to control.
Now that is clarified – please answer the question: Do you think that Sprint Left gets us closer there?
You can cling to your disdain of meritocracy or you can step back from such disdain.
“You can cling to your disdain of meritocracy…”
You’re not very bright. But we all knew that. I’m all for meritocracy. What I’m not for is delusionally thinking that what we have now is, or has ever been, a meritocracy just because I’ve done well.
^^^ THAT is the first time you finally said that directly.
But you still have not answered my question:
Do you think that Sprint Left gets us closer there?
You are slipping to the Malcolm
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in your misaimed insults.
Every time you do nothing more than dodge and insult, you dig yourself deeper.
Tell me Smelly, you ok with this?
How does this rate next to your professed admiration of meritocracy?
Is your belief system one of “merit” except (with the exceptions as in this clip)?
Do you recognize the Neo-Marxist, identity-political/religious aspects contained in the clip?
Do you?
Heavens to Betsy, I wouldn’t want to one bucket you.
link to instagram.com
You don’t fight E v i 1 with E v i 1.
You don’t overcome darkness with darkness.
Attributing a trait based on identified group nullifies the individual human person.
Or do you think somehow meritocracy is also a “group” thing?
And another (older) item displaying your error in thinking that it is I that is “trying to make “sprint left” happen.”
link to newdiscourses.com
Where is your answer to the Israel/Hamas situation Breeze?
Running away, scared, again?
Hiding behind some “I choose not to say anything” assertion?
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“Do you?”
What I “do” is recognize, and acknowledge, that my race and gender provide me with certain privileges (yes, privileges) that are not available to others in this country. And I can “do” that without flying into an apoplectic rage anytime somebody from the “Sprint Left” or “woke mob!” points that out.
Is it a privilege to be a white person in the United States of America? Is it a privilege to be a white man in the United States of America? Absolutely! Of course it is. Only an incredibly insecure person such as you would deny that.
Insecure nothing – your indulging in Activist-privilege, and your being called out on it (further, in view of the Israel/Hamas ‘no comment showing YOUR hypocrisy), rather indicates that YOU are suffering from activist fragility.
But go ahead and crow about how you support meritocracy as you employ the same labeling game that you supposedly want to fight.
I just suppose for you that some people are just to be more equal than others in this Equity spiel.
To call you a babbling bab00n would be an insult to bab00ns.
How about not attempt insults (that do not fit anyway), and provide your view as to the Israel/Hamas situation?
Or is your nonsense vis a vis “privilege” and meritocracy enough for one day (year?) from you?
Just as I thought – another “choice” of yours to be silent that rings out your deafening hypocrisy.
Having just read the Wikipedia entry for “meritocracy” I have a plethora of misgivings about whether it would be an improvement on democracy. Breeze, may I ask, do you envisage sorting those with adequate “merit” from those with insufficient by using the criterion: College degree Yes or No?
Please use a touch of common sense (and recognize that the terms “meritocracy” and worse, “myth of meritocracy” have been infected with Sprint Left nonsense on the site of Wikipedia.
Meritocracy is NOT a political ideology all on its own as the propaganda attempts to spin.
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