Tag Archives: Public Use

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

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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!

Public use == “accessible to the public.”

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by Dennis Crouch

Bottom line in this new Minerva case — file your patent application before bringing a new product to a trade show. 

The Old Case: The battle between Hologic and Minerva went to the US Supreme Court in 2021; with the Court retained the doctrine of assignor-estoppel that bars a patent assignor from later challenging the patent’s validity or enforceability. Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021). Although the doctrine remains, the Court narrowed its scope to only apply , but narrowed its scope to cover only situations where assurances (implied or express) made at assignment are later being undermined.  Thus, when claims are materially broadened post-assignment, the assignor should probably be permitted to challenge those claims.  As is true in many inter-corporate battles, the legal claims are being fought along different lines in various tribunals and cases.  This week, the Federal Circuit issued a new decision — this time involving upstart Minerva as the plaintiff suing Hologic for infringing its U.S. Patent No. 9,186,208.

Minerva’s ‘208 patent claims a device for endometrial ablation  and includes a 2011 priority filing date.  As you can see from the diagram above, the device includes both inner and outer frame elements, and the claims require that these “have substantially dissimilar material properties.”  This allows portions of the device to retain more flexibility (those coming in contact with the uterine lining) with other portions having more strength/durability.  Still, the whole head needs to be collapsible as well.

The application was filed in 2011, but back in 2009 Minerva had been doing testing on a prototype “Aurora device” that included inner/outer frames made of two different types of steel.  The devices were brought to a trade show (AAGL 2009) and Minerva gave a presentation on the device and distributed a brochure. It was also pitched to a potential acquirer.

In the appeal, Minerva provided three arguments as to why this activity was not an invalidating public use:

  1. Displaying the device at a trade show table does not count as a “use”
  2. Although the displayed device used two different types of steel, they were not different enough to satisfy the claim requirement of having “substantially dissimilar material properties.”
  3. The invention was not yet “ready for patenting” and therefore its public use was not disqualifying.

The Federal Circuit rejected each of these arguments in-turn.

Public Accessibility equals Public Use: Although the statutory language of “public use” suggests that the bar is triggered only if the invention is actually used.  The Federal Circuit explained here hat its interpretation is more expansive, and includes situations where the patentee made the invention “accessible to the public.” See, Delano Farms Co. v. California Table Grape Comm’n, 778 F.3d 1243 (Fed. Cir. 2015).  Here, the Aurora device was made available to attendees at a major trade show spanning several days.  Minerva brought 15 fully-functional devices and internally reported “lots of interest” and that the table was “busy.”

In Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007), the Federal Circuit seemed to have ruled that public use requires use. Although publicly shown, the claimed keyboard was deemed not in public use since it was “visually displayed … without puting it into use [and] was never connected to be used in the normal course of business to enter data into a system.” Id.  Here in Minerva, Judge Reyna distinguished Motionless Keyboard, noting that Minerva’s disclosures were “well beyond” what was seen in that prior case.  The court focused on the sophistication level of the trade show attendees and their ability to closely scrutinize the device and see how it operated.

The inescapable conclusion … is that Minerva allowed knowledgeable individuals to scrutinize the invention enough to recognize and understand the SDMP technology Minerva later sought to patent.

Slip Op.  On appeal, Minerva argued that its prototype’s inner/outer frames did not have substantially different material properties.  On appeal, the federal Circuit also rejected that argument since Minerva materials from that time touted the benefits of the device’s SDMP.

Ready for Patenting: Public use only creates a bar to patenting if the invention was “ready for patenting.” Here, the court concluded that it was ready for patenting since (1) it had been reduced to practice; and (2) Minerva had sufficient documentation prepared describing the invention.

At the time, Minerva was still working to improve the technology and it had not yet been used to actually perform ablation on a living human.  On appeal, the Federal Circuit noted that no evidence (beyond common sense) indicates that the device’s only use is on live human tissue.  The court also noted that Minerva had conducted lab studies sufficient to move-on for clinical trials on humans.  Minerva’s final product used slightly different materials, but the court concluded that Aurora was still itself ready for patenting. “later refinements” and “fine tuning” go beyond reduction to practice and do not negate a public use.

How Does One “Use” Flowers?

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by Dennis Crouch

We all love flowers, but what is their real purpose, their “use.”  That was a key question the court faced when deciding In re WinGen LLC (Fed. Cir. 2023).

The utility patent at issue covers a petunia plant.  Here, the Federal Circuit has affirmed that the claims are invalid based upon a pre-filing trade-show display of the ornamental plant — holding that the display counted as a “public use.”  “The displaying of ‘Cherry Star’ … was … undoubtedly a use for its intended purpose: ornament.”

The inventors here used conventional plant breeding to create a new form of petunia (Calibrachoa).  WinGen first obtained a plant patent (PP23,232); followed by a utility patent that was filed as a continuation-in-part (US9313959). The claims require two components (1) a particular petal phenotype and (2) a particular genotype:

Petal Phenotype: at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, wherein said pattern extends from the center of the inflorescence and does not fade during the life of the inflorescence, and

Genetic Feature: a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.

During the reissue, the patentee disclosed the potential invalidating prior use; admitting that the claimed variety was displayed at a private Home Depot event where wholesale growers displayed their wares.  Nothing was for sale at the event, no orders were placed, and attendees were not permitted to take samples or cuttings.  However, there was also no express or implied obligation of confidentiality binding individuals who attended.

The patentee argued that the display should not be considered a public use — it was only displayed — and not used.  One case on point is Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).  In that Motionless Keyboard, the alleged prior use involved displaying the invention (a keyboard).  But there, the court found no public use because the keyboard was not hooked-up to a computer. Id.  The patentee also distinguished the old canard of Egbert v. Lippmann, 104 U.S. 333 (1881).  In Egbert, the Supreme Court premised its public use finding on the notion the inventor failed to maintain control over his invention — allowing someone to wear the corset around in public repeatedly over an extended time without any restrictions. See, Dey, L.P. v. Sunovion Pharms., Inc., 715 F.3d 1351 (Fed. Cir. 2013).  Here, however, the flower was kept in the control of the patentee despite being displayed.

In distinguishing these cases, the Federal Circuit looked to the purpose of the invention.  The oddity of this utility patent is that it claims an ornamental plant.  Although the claims were not challenged on Section 101 utility grounds, the Federal Circuit still considered the plant’s utility as it fed into the “public use” bar of Section 102.  And without fanfare, the court concluded that its purpose was ornamentation; that a display of the plant counts as ornamentation; and therefore the plant was in public use.

Although the court indicates that this situation (ornamental use of a utility patent) is a unique question of first impression, the court inexplicitly issued its decision as non-precedential. Perhaps the court simply did not want to make law based upon a logical paradox. Further, the Federal Circuit’s justification was not found in the USPTO brief in the case. Rather, the USPTO asked for a simple rule that a public use follows from display of the complete invention in a commercial setting and without any secrecy limitations.  But public display is not enough for a finding of traditional public use.

The patentee had also argued that its continued control over the plant meant that nobody at the Home Depot event could have learned of the genetic feature claim limitation.  On appeal, the Federal Circuit did not consider that argument – finding that the argument had been forfeited because it was not meaningfully presented to the lower tribunal.

The patentee told the court in briefing and at oral arguments that the claims cover an ornamental plant.  Those admissions allowed the court to rely upon that conclusion in its decision.  Here, the real utility might be found in the specification (and deposit) that provide guidance on how to grow the plant.

Note that this was a pre-AIA case.  The AIA now includes an additional catch-all “otherwise available to the public” that presumably makes it easier to show that certain public showings ‘count’ as prior art.

Uncertainty: Helsinn Foreshadows Trouble with AIA Patents

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By Dennis Crouch

The AIA was passed back in 2011 and the changes have gradually been implemented through the patent system.  We are finally at the point where most newly issued U.S. patents are post-AIA patents whose patentability is individually based upon the first-to-file provisions of re-drafted 35 U.S.C. § 102.  We’re talking here about hundreds-of-thousands of patents interpreted under the new rules with millions on their way.  As this huge stone is slowly building momentum, the PTO has faced a startup problem: The Agency must apply the new law even though it has almost no guidance from the courts as to how the new portions of the statute will be interpreted.  Because the PTO interpretation is given no deference and because of the many drafting holes in the AIA, I expect that the PTO interpretation will be repeatedly found incorrect.

The only substantive area that has been thus-far decided by the Federal Circuit involves the recent Helsinn decision.  In that case, the Federal Circuit rejected the PTO approach to on-sale prior art and ruled that a pre-filing sale whose existence was disclosed to the public counts as 102(a)(1) prior art even if the elements of the invention were not publicly disclosed (just the fact of the sale).  In its incorrect interpretation of the statute, the PTO had judged the statute as only counting sales as public if the elements of the invention were also disclosed publicly.[1]

There are many other potential examples of questionable language from the AIA first-to-invent provisions that will eventually come to a head:

  • Effective Filing Date: In a patent claiming priority to a prior application, does the claim’s ‘effective filing date’ depend upon whether the relied-upon filing discloses and enables the claimed invention? Section 100(i) suggests that we look only to whether there is a claimed right for priority or benefit. This could impact many written description cases.
  • On Sale: Does a purely private sale or offer to sell count as prior art? Helsinn reserves this question for a later date.
  • Public Use: Does non-disclosing public use count as prior art? Helsinn suggests yes.
  • Commercialization: Does non-disclosing commercialization of the invention by the patentee count as prior art?
  • Otherwise available to the public: Under what conditions apart from the listed publications and uses will we consider an invention to be “otherwise available to the public?” How much further does this go beyond publication and public use? Is public knowledge of the existence of the invention sufficient, or must the public be made aware of the inventions elements and how to make and use the invention? Does the invention need to be discoverable in some way?
  • Grace Period: What level of proof is required for the patentee to show its prior disclosure?
  • Disclosure: For an inventor’s disclosure to trigger the grace period, must it enable the entire invention?
  • Public Disclosure: What counts as a pre-filing ‘public disclosure’ under 102(b)(1)(B) sufficient to knock-out prior art? Is the publicness the same as 102(a)(1)?
  • Changed Disclosure: For intervening third-party disclosures or patent applications that differ from an inventor’s disclosure, what scope (if any) is knocked-out from the scope of prior art? This may be different depending upon whether focusing on 102(b)(1)(a); 102(b)(1)(b); 102(b)(1)(c); or 102(b)(1)(d).
  • Date of 102(a)(2) prior art: 102(d) modifies the 102(a)(2) prior art date for published applications and patents by looking to whether the application claims priority / benefit to a prior filing. Congress certainly intended that the priority date only counts if the priority filing disclosed the subject matter being relied upon in the rejection.  However, the statute is not so clear and suggests instead that all we need is a proper claim of priority or benefit. .

These are a handful of examples, and more certainly exist.

I have some thoughts on how provisions of the statute should be interpreted – both as a matter of statutory interpretation and a matter of patent policy.  My larger concern, however, is that we are still years away from seeing court decisions interpreting these elements in ways that settle the law.  Up to now, for instance, there are not even any public PTAB decisions interpreting the new elements of 102(b).  With the disposing of more than 500,000 patent applications per year, the office is likely to churn through millions before these issues go before the Federal Circuit.  If the first case on point (Helsinn) is any indication, the Federal Circuit is likely to disagree with at least several of the PTO’s statutory interpretations – potentially creating swaths of improperly issued patents or improperly rejected applications depending upon whether the PTO interpretation is too broad or too narrow.  Although temporary, we have the potential here of creating a real bubble that will give us another 20+ year headache in similar fashion to the PTO’s low-quality examination of software and business methods in the late 1990s and early 2000s.

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[1] MPEP 2152.02(d) (“The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1)  is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.”).