Comments on: Something old, something new Part 3 http://www.thefireofgenius.com/2006/05/16/something-old-something-new-part-3/ Academic commentary about patent law, i.p. law, creativity, and more Sat, 27 Feb 2010 17:04:51 -0800 http://wordpress.org/?v=2.8.5 hourly 1 By: David J. French http://www.thefireofgenius.com/2006/05/16/something-old-something-new-part-3/comment-page-1/#comment-1393 David J. French Thu, 29 Jun 2006 17:24:36 +0000 http://www.thefireofgenius.com/2006/05/16/something-old-something-new-part-3/#comment-1393 David French writes: The 1981 Wyer decision represents an effort to accommodate language written in 1836 to the circumstances of the 20th century. This is an example of judicial lawmaking and may not be illegitimate when dealing with a statute written in earlier times. Bruckelmyer in 2006 represents a continuation of this judicial lawmaking process. Meanwhile, the United States is on the brink of adopting the coming world standard for patent novelty: "not previously available to the public". In anticipation of this event, it would be appropriate to ask how the Canadian file wrapper would be treated under such a novelty requirement. The Canadian courts have borrowed from the British jurisprudence to explore the meaning of this expression, "available to the public". In one Canadian Federal Court of Appeal decision, a judge has listed the following principles: 1. Sale to the public or use by the public alone is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information. 2. For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure". 3. The prior sale or use of a chemical product will constitute enabling disclosure to the public if its composition can be discovered through analysis of the product. 4. The analysis must be able to be performed by a person skilled in the art in accordance with known analytical techniques available at the relevant time. The person skilled in the art, using available analytical techniques, must be able to find the invention without the exercise of inventive skill. 5. ... when reverse engineering is necessary and capable of discovering the invention, an invention becomes available to the public if a product containing the invention is sold to any member of the public who is free to use it as she or he pleases. ... sale of a product to even one member of the public constitutes a making available to the public 6. It is not necessary to demonstrate that a member of the public actually analyzed the product that was sold 7. The amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration, in this respect, is only whether inventive skill was required. .... Complexity or time and work involved alone are insufficient. 8. It is not necessary that the product that is the subject of the analysis be capable of exact reproduction. It is the subject matter of the patent claims (the invention) that must be disclosed through the analysis. ... The novelty of a claimed invention is destroyed by the prior use of a product, for example, sale of a product, if an analysis of a product using available analytical techniques is such as to inform the skilled person of an embodiment of the product which falls within the claim of the patent. This list is taken from paragraph 42 of the decision in CANWELL ENVIRO-INDUSTRIES vs BAKER PETROLITE CORP 2002 FCA 158 http://decisions.fct-cf.gc.ca/fct/2002/2002fca158.shtml David French writes:

The 1981 Wyer decision represents an effort to accommodate language written in 1836 to the circumstances of the 20th century. This is an example of judicial lawmaking and may not be illegitimate when dealing with a statute written in earlier times.

Bruckelmyer in 2006 represents a continuation of this judicial lawmaking process.

Meanwhile, the United States is on the brink of adopting the coming world standard for patent novelty: “not previously available to the public”. In anticipation of this event, it would be appropriate to ask how the Canadian file wrapper would be treated under such a novelty requirement.

The Canadian courts have borrowed from the British jurisprudence to explore the meaning of this expression, “available to the public”. In one Canadian Federal Court of Appeal decision, a judge has listed the following principles:

1. Sale to the public or use by the public alone is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information.

2. For a prior sale or use to anticipate an invention, it must amount to “enabling disclosure”.

3. The prior sale or use of a chemical product will constitute enabling disclosure to the public if its composition can be discovered through analysis of the product.

4. The analysis must be able to be performed by a person skilled in the art in accordance with known analytical techniques available at the relevant time. The person skilled in the art, using available analytical techniques, must be able to find the invention without the exercise of inventive skill.

5. … when reverse engineering is necessary and capable of discovering the invention, an invention becomes available to the public if a product containing the invention is sold to any member of the public who is free to use it as she or he pleases. … sale of a product to even one member of the public constitutes a making available to the public

6. It is not necessary to demonstrate that a member of the public actually analyzed the product that was sold

7. The amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration, in this respect, is only whether inventive skill was required. …. Complexity or time and work involved alone are insufficient.

8. It is not necessary that the product that is the subject of the analysis be capable of exact reproduction. It is the subject matter of the patent claims (the invention) that must be disclosed through the analysis. … The novelty of a claimed invention is destroyed by the prior use of a product, for example, sale of a product, if an analysis of a product using available analytical techniques is such as to inform the skilled person of an embodiment of the product which falls within the claim of the patent.

This list is taken from paragraph 42 of the decision in CANWELL ENVIRO-INDUSTRIES vs BAKER PETROLITE CORP 2002 FCA 158
http://decisions.fct-cf.gc.ca/fct/2002/2002fca158.shtml

]]> By: Bob Matthews http://www.thefireofgenius.com/2006/05/16/something-old-something-new-part-3/comment-page-1/#comment-27 Bob Matthews Wed, 17 May 2006 18:56:06 +0000 http://www.thefireofgenius.com/2006/05/16/something-old-something-new-part-3/#comment-27 Seems that the different conclusions drawn by Judge Linn and the panel majority in Bruckelmeyer regarding the motivation to review the file history is another example of reasonable minds, while agreeing on the controlling legal principles, disagreeing on the conclusions and inferences to be drawn from the facts before them when applied to the controlling legal principles. This seems to be a reoccurring event in the Federal Circuit's cases. Several recent examples are evident in the claim construction context where the majority panel and a dissenting judge reach opposite conclusions as to what the specification teaches and how that teaching should impact the claim construction. E.g., Paymaster Tech., Inc. v. United States, Nos. 05-5025, -5029, 2006 WL 1228851, *3-*4 (Fed. Cir. May 4, 2006) (unpublished) (term "form set" construed by majority, in view of specification, to apply to a single ply sheet with mulitple forms on the single sheet, dissent reads specification as only showing multi-ply sheets and therefore claim should not cover single-ply sheets) ; Dorel Juvenile Gp., Inc. v. Graco Children’s Prods., Inc., 429 F.3d 1043, 1046, 77 USPQ2d 1090, 1093 (Fed. Cir. 2005) (based on majority's reading of the specificaiton"removeably attached" in claim to a child's car seat broadly construed to mean capable of removal at any time during the life of the product even if the use of special tools was required, dissent reads specification as showing a car set that was releasably coupled and therefore required capability for easy removal during its ordinary use); Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 76 USPQ2d 1432 (Fed. Cir. 2005) (majority construes “adjacentâ€? to permit intervening structure based on disclosure in specification, dissent reads specification as only supporting a construction of no intervening structure). See also Phillips v. AWH Corp., 415 F.3d 1303, 1329, 75 USPQ2d 1321, 1338 (Fed. Cir. 2005) (Lourie, J., concurring-in-part and dissenting-in-part)(“Reasonable people can differâ€? on what the specification shows and what is “accord with the intrinsic evidence,â€? i.e., what is “most consistentâ€? with the specification and file history.) (majority finds that specification did not limit "baffle" to exclude baffles perpendicularly oriented, while Judge Louire viewed specification as excluding perpendicularly oriented baffles) Situtations where the outcome may depend on a judge's subjective view on how the facts apply can leave practitioners in a real quandry in advising clients. It seems evident that in some circumstances, like the Bruckelmeyer scenario, policy considerations may provide an additional guide to reaching a consistent and predicatable results. But I suspect there will also be situations where that application of policy perspectives to the facts will raise additional differeing views as to whether the facts show that a particular policy objective is or is not being furthered. Seems that the different conclusions drawn by Judge Linn and the panel majority in Bruckelmeyer regarding the motivation to review the file history is another example of reasonable minds, while agreeing on the controlling legal principles, disagreeing on the conclusions and inferences to be drawn from the facts before them when applied to the controlling legal principles. This seems to be a reoccurring event in the Federal Circuit’s cases. Several recent examples are evident in the claim construction context where the majority panel and a dissenting judge reach opposite conclusions as to what the specification teaches and how that teaching should impact the claim construction. E.g., Paymaster Tech., Inc. v. United States, Nos. 05-5025, -5029, 2006 WL 1228851, *3-*4 (Fed. Cir. May 4, 2006) (unpublished) (term “form set” construed by majority, in view of specification, to apply to a single ply sheet with mulitple forms on the single sheet, dissent reads specification as only showing multi-ply sheets and therefore claim should not cover single-ply sheets) ; Dorel Juvenile Gp., Inc. v. Graco Children’s Prods., Inc., 429 F.3d 1043, 1046, 77 USPQ2d 1090, 1093 (Fed. Cir. 2005) (based on majority’s reading of the specificaiton”removeably attached” in claim to a child’s car seat broadly construed to mean capable of removal at any time during the life of the product even if the use of special tools was required, dissent reads specification as showing a car set that was releasably coupled and therefore required capability for easy removal during its ordinary use); Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 76 USPQ2d 1432 (Fed. Cir. 2005) (majority construes “adjacentâ€? to permit intervening structure based on disclosure in specification, dissent reads specification as only supporting a construction of no intervening structure). See also Phillips v. AWH Corp., 415 F.3d 1303, 1329, 75 USPQ2d 1321, 1338 (Fed. Cir. 2005) (Lourie, J., concurring-in-part and dissenting-in-part)(“Reasonable people can differâ€? on what the specification shows and what is “accord with the intrinsic evidence,â€? i.e., what is “most consistentâ€? with the specification and file history.) (majority finds that specification did not limit “baffle” to exclude baffles perpendicularly oriented, while Judge Louire viewed specification as excluding perpendicularly oriented baffles)

Situtations where the outcome may depend on a judge’s subjective view on how the facts apply can leave practitioners in a real quandry in advising clients.

It seems evident that in some circumstances, like the Bruckelmeyer scenario, policy considerations may provide an additional guide to reaching a consistent and predicatable results. But I suspect there will also be situations where that application of policy perspectives to the facts will raise additional differeing views as to whether the facts show that a particular policy objective is or is not being furthered.

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