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CHAPTER TWENTY
Requirements for Patent
Protection: Novelty
35 U.S.C. 102 Conditions for patentability; novelty. [Editor’s Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA. See 35 U.S.C. 102 (pre-AIA) for the law otherwise applicable.] (a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. (b) Exceptions.— (1) Disclosures Made 1 Year or Less Before the Effective Filing Date of the Claimed Invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. (2) Disclosures Appearing in Applications and Patents.—A dis- closure shall not be prior art to a claimed invention under sub- section (a)(2) if— (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. (c) Common Ownership under Joint Research Agreements.—Subject
718 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if— (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the ef- fective filing date of the claimed invention; (2) the claimed invention was made as a result of activities un- dertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement....^1
Introduction
Editors of intellectual property casebooks generally begin the section on novelty by saying that the law involved is not a model of clarity. They are right. The Patent Act jumbles together provisions on novelty and statutory bars to patentability. The section on non-obviousness, which we will deal with in the next chapter, is not limpidly clear either. And then, into this existing fog, came the America Invents Act, which dramatically changed the United States from a first-to-invent, to a first-to-file system. Joy. But there is a simple set of ideas to get into one’s head that makes the whole thing a lot easier to understand.
- Novelty and statutory bar are both provisions that bar patentability because the public already “has” the invention and so we do not need—and should not grant—the statutory monopoly of the patent.
- The fundamental question in novelty is whether someone else has already invented the thing you are trying to patent and has either patented it, sold it, offered it to the public or described it in a printed publication. If they have then you do not get the patent.
- The fundamental question in statutory bar is whether you have done something to reveal the details of your own invention and have done it long enough ago and publicly enough, that the public already has access to the invention. If you have then you do not get the patent.
- Both provisions are subject to limitations—some statutory and some common law—that aim to make sure we do not punish inventors for doing things we want them to do, like experimenting with their inventions to make sure they work, or publishing their work less than a year in advance of the patent, or collaborating with other inventors who are under a joint research agreement. Not so hard, really? Onto this basic frame we add the America Invents Act and the move to first to file. In the statutory supplement there appears—courtesy of the USPTO—an annotated set of the statutory provisions applicable to pre-AIA and post-AIA patents. We are not going to (^1) [USPTO] Note: “The provisions of 35 U.S.C. 102(g), as in effect on March 15, 2013, shall also apply to each claim of an application for patent, and any patent issued thereon, for which the first inventor to file provisions of the AIA apply (see 35 U.S.C. 100 (note)), if such application or patent contains or contained at any time a claim to a claimed invention which is not subject to the first inventor to file provisions of the AIA.” This is not the entire text of § 102. You can find that in your statutory supplement.
720 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY The act of 1836, ch. 357, § 6, authorizes a patent where the party has discovered or invented a new and useful improvement, “not known or used by others before his discovery or invention.” And the 15th section provides that, if it appears on the trial of an action brought for the infringement of a patent that the patentee “was not the original and first inventor or discoverer of the thing patented,” the verdict shall be for the defendant. Upon a literal construction of these particular words, the patentee in this case certainly was not the original and first inventor or discoverer, if the Conner safe was the same with his, and preceded his discovery. But we do not think that this construction would carry into effect the intention of the legislature. It is not by detached words and phrases that a statute ought to be expounded. The whole act must be taken together, and a fair interpretation given to it, neither extending nor restricting it beyond the legitimate import of its language, and its obvious policy and object. And in the 15th section, after making the provision above mentioned, there is a further provision, that, if it shall appear that the patentee at the time of his application for the patent believed himself to be the first inventor, the patent shall not be void on account of the invention or discovery having been known or used in any foreign country, it not appearing that it had been before patented or described in any printed publication. In the case thus provided for, the party who invents is not strictly speaking the first and original inventor. The law assumes that the improvement may have been known and used before his discovery. Yet his patent is valid if he discovered it by the efforts of his own genius, and believed himself to be the original inventor. The clause in question qualifies the words before used, and shows that by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public. If the foreign invention had been printed or patented, it was already given to the world and open to the people of this country, as well as of others, upon reasonable inquiry. They would therefore derive no advantage from the invention here. It would confer no benefit upon the community, and the inventor therefore is not considered to be entitled to the reward. But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the people of this country be unable to profit by it. The means of ob- taining knowledge would not be within their reach; and, as far as their interest is concerned, it would be the same thing as if the improvement had never been discovered. It is the inven- tor here that brings it to them, and places it in their possession. And as he does this by the effort of his own genius, the law regards him as the first and original inventor, and protects his patent, although the improvement had in fact been invented before, and used by others. So, too, as to the lost arts. It is well known that centuries ago discoveries were made in certain arts the fruits of which have come down to us, but the means by which the work was accomplished are at this day unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if any one now discovered an art thus lost, and it was a useful improvement, that, upon a fair construction of the act of Congress, he would be entitled to a patent. Yet he would not literally be the first and original inventor. But he would be the first to confer on the public the benefit of the invention. He would discover what is unknown, and communicate knowledge which the public had not the means of obtaining without his invention. Upon the same principle and upon the same rule of construction, we think that Fitzgerald must be regarded as the first and original inventor of the safe in question. The case as to this point admits, that, although Conner’s safe had been kept and used for years, yet no test had been applied to it, and its capacity for resisting heat was not known; there was no evidence to show that any particular value was attached to it after it passed from his possession, or that it was ever afterwards used as a place of security for papers; and it
Novelty: Basics 721 appeared that he himself did not attempt to make another like the one he is supposed to have invented, but used a different one. And upon this state of the evidence the court put it to the jury to say, whether this safe had been finally forgotten or abandoned before Fitzgerald’s invention, and whether he was the original inventor of the safe for which he obtained the patent; directing them, if they found these two facts, that their verdict must be for the plaintiff. We think there is no error in this instruction. For if the Conner safe had passed away from the memory of Conner himself, and of those who had seen it, and the safe itself had disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. The public could derive no benefit from it until it was discovered by another inventor. And if Fitzgerald made his discovery by his own efforts, without any knowledge of Conner’s, he invented an improvement that was then new, and at that time unknown; and it was not the less new and unknown because Conner’s safe was recalled to his memory by the success of Fitzgerald’s. We do not understand the Circuit Court to have said that the omission of Conner to try the value of his safe by proper tests would deprive it of its priority; nor his omission to bring it into public use. He might have omitted both, and also abandoned its use, and been ignorant of the extent of its value; yet, if it was the same with Fitzgerald’s, the latter would not upon such grounds be entitled to a patent, provided Conner’s safe and its mode of construction were still in the memory of Conner before they were recalled by Fitzgerald’s patent. The circumstances above mentioned, referred to in the opinion of the Circuit Court, appear to have been introduced as evidence tending to prove that the Conner safe might have been finally forgotten, and upon which this hypothetical instruction was given. Whether this evidence was sufficient for that purpose or not, was a question for the jury, and the court left it to them. And if the jury found the fact to be so, and that Fitzgerald again discovered it, we regard him as standing upon the same ground with the discoverer of a lost art, or an unpatented and unpublished foreign invention, and like him entitled to a patent. For there was no existing and living knowledge of this improvement, or of its former use, at the time he made the discovery. And whatever benefit any individual may derive from it in the safety of his papers, he owes entirely to the genius and exertions of Fitzgerald. Upon the whole, therefore, we think there is no error in the opinion of the Circuit Court, and the judgment is therefore affirmed. Mr. Justice McLEAN, dissenting. [Omitted.] Questions: 1.) We invite you to muse on the business of a “stereotype founder.” 2.) In one of its key passages, the opinion says: For if the Conner safe had passed away from the memory of Conner himself, and of those who had seen it, and the safe itself had disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. The public could derive no benefit from it until it was discovered by another inventor. And if Fitzgerald made his discovery by his own efforts, without any knowledge of Conner’s, he invented an improvement that was then new, and at that time unknown; and it was not the less new and unknown because Conner’s safe was recalled to his memory by the success of Fitzgerald’s. What does this tell you about the basic concept of novelty? Is it a metaphysical question of true priority in invention—in the sense that if we discovered a hidden stash of papers
Novelty: Anticipation of Every Element 723
3 .) Novelty: Anticipation of Every Element
Coffin v. Ogden 85 U.S. 120 (1873) Mr. Justice SWAYNE stated the case, recited the evidence, and delivered the opinion of the court. The appellant was the complainant in the court below, and filed this bill to enjoin the defendants from infringing the patent upon which the bill is founded. The patent is for a door lock with a latch reversible, so that the lock can be applied to doors opening either to the right or the left hand. It was granted originally on the 11th of June, 1861, to Charles R. Miller, assignee of William S. Kirkham, and reissued to Miller on the 27th of January, 1863. On the 10th of June, 1864, Miller assigned the entire patent to the complainant. No question is raised as to the complainant’s title, nor as to the alleged infringement by the defendants. The answer alleges that the thing patented, or a material and substantial part thereof, had been, prior to the supposed invention thereof by Kirkham, known and used by divers persons in the United States, and that among them were Barthol Erbe, residing at Birmingham, near Pittsburg, and Andrew Patterson, Henry Masta, and Bernard Brossi, residing at Pittsburg, and that all these persons had such knowledge at Pittsburg. The appellees insist that Erbe was the prior inventor, and that this priority is fatal to the patent. This proposition, in its aspects of fact and of law, is the only one which we have found it necessary to consider. Kirkham made his invention in March, 1861. This is clearly shown by the testimony, and there is no controversy between the parties on the subject. It is equally clear that Erbe made his invention not later than January 1st, 1861. This was not controverted by the counsel for the appellant; but it was insisted that the facts touching that invention were not such as to make it available to the appellees, as against the later invention of Kirkham and the patent founded upon it. This renders it necessary to examine carefully the testimony upon the subject. Erbe’s deposition was taken at Pittsburg upon interrogatories agreed upon by the parties and sent out from New York. He made the lock marked H.E. He made the first lock like it in the latter part of the year 1860. He made three such before he made the exhibit lock. The first he gave to Jones, Wallingford & Co. The second he sent to Washington, when he applied for a patent. The third he made for a friend of Jones. He thinks the lock he gave to Jones, Wallingford & Co. was applied to a door, but is not certain. Brossi. In 1860 he was engaged in lockmaking for the Jones and Nimmick Manufacturing Company. He had known Erbe about seventeen years. In 1860 Erbe was foreman in the lock shop of Jones, Wallingford & Co., at Pittsburg. In that year, and before the 1st of January, 1861, he went to Erbe’s house. Erbe there showed him a lock, and how it worked, so that it could be used right or left. He says: “He (Erbe) showed me the follower made in two pieces. One piece you take out when you take the knob away. The other part— the main part of the follower—slides forward in the case of the lock with the latch, so you can take the square part of the latch and turn it around left or right, whichever way a person wants to.” He had then been a lockmaker eight years. He examined the lock carefully. He had never seen a reversible lock before. He has examined the exhibit lock. It is the same in construction. The only difference is, that the original lock was made of rough wrought iron. It was a complete lock, and capable of working. Erbe thought it a great thing.... Masta. In 1860 he was a patternmaker for Jones, Wallingford & Co. Had known
724 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY Erbe fourteen or fifteen years. Erbe showed him his improvement in reversible locks New Year’s day, 1861. He examined the lock with the case open. “You had to pull out the spindle, and the hub was fitted so that it would slide between the spindle and the plate and let the latch forward.”... “The whole hub was made of three pieces. One part was solid to the spindle or hub shanks, and then the hub that slides between the plate and case, and a washer at the other side of the spindle.” “There is not a particle of difference between the exhibit and the original lock. It is all the same.” He identifies the time by the facts that he commenced building a house in 1861, and that year is marked on the water conductor under the roof.... The case arose while the Patent Act of 1836 was in force, and must be decided under its provisions. The sixth section of that act requires that to entitle the applicant to a patent, his invention or discovery must be one “not known or used by others before his invention or discovery thereof.” The fifteenth section allowed a party sued for infringement to prove, among other defences, that the patentee “was not the original and first inventor of the thing patented, or of a substantial and material part thereof claimed to be new.” The whole act is to be taken together and construed in the light of the context. The meaning of these sections must be sought in the import of their language, and in the object and policy of the legislature in enacting them. The invention or discovery relied upon as a defence, must have been complete, and capable of producing the result sought to be accomplished; and this must be shown by the defendant. The burden of proof rests upon him, and every reasonable doubt should be resolved against him. If the thing were embryotic or inchoate; if it rested in speculation or experiment; if the process pursued for its development had failed to reach the point of consummation, it cannot avail to defeat a patent founded upon a discovery or invention which was completed, while in the other case there was only progress, however near that progress may have approximated to the end in view. The law requires not conjecture, but certainty. If the question relate to a machine, the conception must have been clothed in substantial forms which demonstrate at once its practical efficacy and utility. The prior knowledge and use by a single person is sufficient. The number is immaterial. Until his work is done, the inventor has given nothing to the public. In Gayler v. Wilder the views of this court upon the subject were thus expressed: “We do not understand the Circuit Court to have said that the omission of Conner to try his safe by the proper tests would deprive it of its priority; nor his omission to bring it into public use. He might have omitted both, and also abandoned its use and been ignorant of the extent of its value; yet if it was the same with Fitzgerald’s, the latter would not, upon such grounds, be entitled to a patent; provided Conner’s safe and its mode of construction were still in the memory of Conner before they were recalled by Fitzgerald’s patent.” Whether the proposition expressed by the proviso in the last sentence is a sound one, it is not necessary in this case to consider. Here it is abundantly proved that the lock originally made by Erbe “was complete and capable of working.” The priority of Erbe’s invention is clearly shown. It was known at the time to at least five persons, including Jones, and probably to many others in the shop where Erbe worked; and the lock was put in use, being applied to a door, as proved by Brossi. It was thus tested and shown to be successful. These facts bring the case made by the appellees within the severest legal tests which can be applied to them. The defence relied upon is fully made out. DECREE AFFIRMED.
726 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY this case is whether Union Oil’s evidence is so clear and convincing that reasonable jurors could only conclude that the claims in issue were invalid. Anticipation A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. See, e.g., Structural Rubber Prods. Co. v. Park Rubber Co. (Fed. Cir. 1984); Connell ; Kalman v. Kimberly-Clark Corp. (Fed. Cir. 1983), cert. denied , 465 U.S. 1026 (1984). Union Oil asserts that the subject claims of the ’343 patent are anticipated under 35 U.S.C. § 102(e)[1] by the teachings found in the original application for U.S. Patent No. 4,315,763 to Stoller, which the jury was instructed was prior art. From the jury’s verdict of patent validity, we must presume that the jury concluded that Union Oil failed to prove by clear and convincing evidence that claims 1, 2, and 4 were anticipated by the Stoller patent. Under the instructions of this case, this conclusion could have been reached only if the jury found that the Stoller patent did not disclose each and every element of the claimed inventions. Having reviewed the evidence, we conclude that substantial evidence does not support the jury’s verdict, and, therefore, Union Oil’s motion for JNOV on the grounds that the claims were anticipated should have been granted. The Stoller patent discloses processes for making both urea-phosphoric acid and urea-sulfuric acid fertilizers. Example 8 of Stoller specifically details a process for making 30- 0 - 0 - 10 urea-sulfuric acid products. There is no dispute that Example 8 meets elements b, c, and d of claim 1, specifically the steps of adding water in an amount not greater than 15% of the product, urea in an amount of at least 50% of the product, and concentrated sulfuric acid in an amount of at least 10% of the product. Verdegaal disputes that Stoller teaches element a, the step of claim 1 of “providing a non-reactive, nutritive heat sink.” As set forth in claim 2, the heat sink is recycled fertilizer. The Stoller specification, beginning at column 7, line 30, discloses: Once a batch of liquid product has been made, it can be used as a base for further manufacture. This is done by placing the liquid in a stirred vessel of appropriate size, adding urea in sufficient quantity to double the size of the finished batch, adding any water required for the formulation, and slowly adding the sulfuric acid while stirring. Leaving a heel of liquid in the vessel permits further manufacture to be conducted in a stirred fluid mass. This portion of the Stoller specification explicitly teaches that urea and sulfuric acid can be added to recycled fertilizer, i.e., a heel or base of previously-made product. Dr. Young, Union Oil’s expert, so testified. Verdegaal presented no evidence to the contrary. Verdegaal first argues that Stoller does not anticipate because in Stoller’s method sul- furic acid is added slowly, whereas the claimed process allows for rapid addition. However, there is no limitation in the subject claims with respect to the rate at which sulfuric acid is added, and, therefore, it is inappropriate for Verdegaal to rely on that distinction. See SSIH. It must be assumed that slow addition would not change the claimed process in any respect including the function of the recycled material as a heat sink. Verdegaal next argues that the testimony of Union Oil’s experts with respect to what Stoller teaches could well have been discounted by the jury for bias. Discarding that tes- timony does not eliminate the reference itself as evidence or its uncontradicted disclosure that a base of recycled fertilizer in a process may be used to make more of the product. Verdegaal raises several variations of an argument, all of which focus on the failure
Novelty: Anticipation of Every Element 727 of Stoller to explicitly identify the heel in his process as a “heat sink.” In essence, Verdegaal maintains that because Stoller did not recognize the “inventive concept” that the heel functioned as a heat sink, Stoller’s process cannot anticipate. This argument is wrong as a matter of fact and law. Verdegaal’s own expert, Dr. Bahme, admitted that Stoller discussed the problem of high temperature caused by the exothermic reaction, and that the heel could function as a heat sink. In any event, Union Oil’s burden of proof was limited to establishing that Stoller disclosed the same process. It did not have the additional burden of proving that Stoller recognized the heat sink capabilities of using a heel. Even assuming Stoller did not recognize that the heel of his process functioned as a heat sink, that property was inherently possessed by the heel in his disclosed process, and, thus, his process anticipates the claimed invention. The pertinent issues are whether Stoller discloses the process of adding urea and sulfuric acid to a previously-made batch of product, and whether that base would in fact act as a heat sink. On the entirety of the record, these issues could only be resolved in the affirmative.... After considering the record taken as a whole, we are convinced that Union Oil established anticipation of claims 1, 2, and 4 by clear and convincing evidence and that no reasonable juror could find otherwise. Consequently, the jury’s verdict on validity is unsupported by substantial evidence and cannot stand. Thus, the district court’s denial of Union Oil’s motion for JNOV must be reversed. Conclusion Because the issues discussed above are dispositive of this case, we do not find it necessary to reach the other issues raised by Union Oil. In accordance with this opinion, we reverse the portion of the judgment entered on the jury verdict upholding claims 1, 2, and 4 of the ’343 patent as valid under section 102(e) and infringed. REVERSED. Questions: 1.) This case provides a succinct statement of the “every element” test. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. What does the court interpret that to mean? For example, must the prior art reference (in this case the patent) match exactly word for word with the proposed innovation? What kinds of differences do not matter? 2.) Returning to a question posed at the end of Coffin , why require that every element be present in order to prove anticipation? When we turn to non-obviousness, we will find that multiple references can be combined to make an innovation “obvious” and thus unpatentable.
Novelty: Inherency 729 appeals the judgment of invalidity, arguing that the district court failed to properly construe the claims and did not apply the properly construed claims to the prior art when determining that the claims are anticipated under 35 U.S.C. § 102(b). DISCUSSION I. Brassica contends that the district court erroneously construed the claims by failing to treat the preamble of claim 1 of the ’895 patent as a limitation of the claims.... No litmus test defines when a preamble limits claim scope. Whether to treat a preamble as a limitation is a determination “resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” In general, a preamble limits the claimed invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art may indicate that the preamble is a claim limitation because the preamble is used to define the claimed invention. In this case, both the specification and prosecution history indicate that the phrase “rich in glucosinolates” helps to define the claimed invention and is, therefore, a limitation of claim 1 of the ’895 patent. The specification, for example, states that “this invention relates to the production and consumption of foods which are rich in cancer chemoprotective compounds.” A stated object of the invention is “to provide food products and food additives that are rich in cancer chemoprotective compounds.” The specification therefore indicates that the inventors believed their invention to be making food products that are rich in chemoprotective compounds, or, in other words, food products “rich in glucosinolates.” In addition, during reexamination of the ’895 patent the patentee argued as follows: Claim 1 of the patent, for example, is directed to “[a] method of preparing a food product rich in glucosinolates,... and harvesting sprouts prior to the 2-leaf stage, to form a food product comprising a plurality of sprouts.”
... Although “rich in glucosinolates” is recited in the preamble of the claim, the pertinent case law holds that the preamble is given weight if it breathes life and meaning into the claim.... Accordingly, the cited prior art does not anticipate the claims because it does not explicitly teach a method of preparing a food product comprising cruciferous sprouts that are rich in glucosinolates or contain high levels of Phase 2 inducer activity. This language shows a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art. As such, the preamble is a limitation of the claims.... II. Having construed the claim limitations at issue, we now compare the claims to the prior art to determine if the prior art anticipates those claims. In order to prove that a claim is anticipated under 35 U.S.C. § 102(b), defendants must present clear and convincing evidence that a single prior art reference discloses, either expressly or inherently, each limitation of the claim. Brassica argues that the prior art does not expressly or inherently disclose the claim limitations of “preparing a food product rich in glucosinolates” (claims 1 and 9 of the ’ patent), or “identifying seeds which produce cruciferous sprouts... containing high Phase 2 enzyme-inducing potential” (claims 1 and 16 of the ’505 patent, claim 1 of the ’
730 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY patent). According to Brassica, the prior art merely discusses growing and eating sprouts without mention of any glucosinolates or Phase 2 enzyme-inducing potential, and without specifying that particular sprouts having these beneficial characteristics should be assembled into a “food product.” Moreover, Brassica argues, the prior art does not inherently disclose these limitations because “at most, one following the prior art would have a possibility or probability of producing a food product high in Phase 2 enzyme- inducing potential” and the “fact that one following the prior art might have selected seeds meeting the limitations of the claims is not sufficient to establish inherent anticipation.” It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. See, e.g., Atlas Powder Co. v. Ireco Inc. (Fed. Cir. 1999); Titanium Metals Corp. v. Banner (Fed. Cir. 1985). “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” MEHL/Biophile Int’l Corp. v. Milgraum (Fed. Cir. 1999) (finding anticipation of a method of hair depilation by an article teaching a method of skin treatment but recognizing the disruption of hair follicles). “Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.” MEHL/Biophile. Brassica does not claim to have invented a new kind of sprout, or a new way of growing or harvesting sprouts. Rather, Brassica recognized that some sprouts are rich in glucosinolates and high in Phase 2 enzyme-inducing activity while other sprouts are not. See ’895 patent, col. 10, ll. 28–42 (“Sprouts suitable as sources of cancer chemoprotect- ants are generally cruciferous sprouts, with the exception of cabbage ( Brassica olecracea capitata ), cress ( Lepidiumsativum ), mustard ( Sinapis alba and S. niger ) and radish ( Raphanus sativus ) sprouts.”). But the glucosinolate content and Phase 2 enzyme- inducing potential of sprouts necessarily have existed as long as sprouts themselves, which is certainly more than one year before the date of application at issue here. See, e.g., Karen Cross Whyte, The Complete Sprouting Cookbook 4 (1973) (noting that in “2939 B.C., the Emperor of China recorded the use of health giving sprouts”). Stated differently, a sprout’s glucosinolate content and Phase 2 enzyme-inducing potential are inherent characteristics of the sprout. Cf. Brian R. Clement, Hippocrates Health Program 8 (1989) (referring to “[i]nherent enzyme inhibitors, phytates (natural insecticides), oxalates, etc., present in every seed”). It matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics of the sprouts. Titanium Metals Corp. v. Banner is particularly instructive in this regard. In that case, the claim at issue recited: A titanium base alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium, said alloy being characterized by good corrosion resistance in hot brine environments. Titanium Metals. The prior art disclosed a titanium base alloy having the recited components of the claim, but the prior art did not disclose that such an alloy was “characterized by good corrosion resistance in hot brine environments.” We nevertheless held that the claim was anticipated by the prior art, because “it is immaterial, on the issue of their novelty, what inherent properties the alloys have or whether these applicants discovered certain inherent properties.” Titanium Metals explained the rationale behind this common sense conclusion: The basic provision of Title 35 applicable here is § 101, providing in relevant part: “Whoever invents or discovers any new... composition
732 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY relies upon to distinguish its claims from the prior art. While Brassica may have recognized something about sprouts that was not known before, Brassica’s claims do not describe a new method. CONCLUSION For the foregoing reasons, we affirm the district court’s summary judgment that the claims at issue are anticipated by the prior art. The prior art indisputably includes growing, harvesting and eating particular sprouts which Brassica has recognized as being rich in glucosinolates and high in Phase 2 enzyme-inducing potential. But the glucosinolate content and Phase 2 enzyme-inducing potential of these sprouts are inherent properties of the sprouts put there by nature, not by Brassica. Brassica simply has not claimed anything that is new and its claims are therefore invalid. AFFIRMED. Questions: 1.) We admit to putting this case in the book partly because we love its name but it also raises some fascinating questions about novelty. The crux with novelty is whether the public had access to the benefit provided by the innovation. Did they here? Yes, they had sprouts. And yes, if they ate sprouts, at the right moment in their development, then they got the benefit of the anti-carcinogens. But they did not know that eating sprouts at that stage provided those benefits. So why claim that the claims were anticipated, that is, that they were not novel? 2.) Does this passage, approvingly quoted from another case, suggest some of the court’s concerns? “The public remains free to make, use, or sell prior art compositions or processes, regardless of whether or not they understand their complete makeup or the underlying scientific principles which allow them to operate.” 3.) What is the concept of “inherency” and how is it used here?
5 .) Statutory Bar: Public Use
Pennock v. Dialogue 27 U.S. 1 ( 1829 ) This case was brought before the Court, on a writ of error to the circuit court for the eastern district of Pennsylvania. In that court, the plaintiffs in error had instituted their suit against the defendants, for an infringement of a patent right, for ‘an improvement in the art of making tubes or hose for conveying air, water, and other fluids.’ The invention claimed by the patentees, was in the mode of making the hose so that the parts so joined together would be tight, and as capable of resisting the pressure as any other part of the machine. The bill of exceptions, which came up with the record, contained the whole evidence given in the trial of the cause in the circuit court. The invention, for which the
Statutory Bar: Public Use 733 patent right was claimed, was completed in 1811; and the letters patent were obtained in
- In this interval, upwards of thirteen thousand feet of hose , constructed according to the invention of the patentees, had been made and sold in the city of Philadelphia. One Samuel Jenkins, by the permission of, and under an agreement between the plaintiffs as to the price; had made and sold the hose invented by the plaintiffs, and supplied several hose companies in the city of Philadelphia with the same. Jenkins, during much of the time, was in the service of the plaintiffs, and had been instructed by them in the art of making the hose. There was no positive evidence, that the agreement between Jenkins and the plaintiffs in error was known to, or concealed from the public. The plaintiffs, on the trial, did not allege or offer evidence to prove that they had delayed making application for a patent, for the purpose of improving their invention; or that from 1811 to 1818, any important modifications or alterations had been made in their riveted hose. The plaintiffs claimed before the jury, that all the hose which had been made and sold to the public, prior to their patent, had been constructed and vended by Jenkins under their permission. Upon the whole evidence in the case, the circuit court charged the jury: ‘We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons the inchoate right to the exclusive use of the invention, to which a patent would have entitled him, had it been applied for before such use. And we think it makes no difference in the principle, that the article so publicly used, and afterwards patented, was made by a particular individual, who did so by the private permission of the inventor. As long as an inventor keeps to himself the subject of his discovery, the public cannot be injured: and even if it be made public, but accompanied by an assertion of the inventor’s claim to the discovery, those who should make or use the subject of the invention would at least be put upon their guard. But if the public, with the knowledge and the tacit consent of the inventor, is permitted to use the invention without opposition, it is a fraud upon the public afterwards to take out a patent. It is possible that the inventor may not have intended to give the benefit of his discovery to the public; and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down; but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict.’ To this charge the plaintiffs excepted, and the jury gave a verdict for the defendant. Mr. Justice STORY delivered the opinion of the Court. ... The single question then is, whether the charge of the court was correct in point of law. It has not been, and indeed cannot be denied, that an inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure; for, where gifts are once made to the public in this way, they become absolute. Thus, if a man dedicates a way, or other easement to the public, it is supposed to carry with it a permanent right of user. The question which generally arises at trials, is a question of fact, rather than of law; whether the acts or
Statutory Bar: Public Use 735 the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it. By the very terms of the first section of our statute, the secretary of state is authorised to grant a patent to any citizen applying for the same, who shall allege that he has invented a new and useful art, machine, &c. “not known or used before the application?” The authority is a limited one, and the party must bring himself within the terms, before he can derive any title to demand, or to hold a patent. What then is the true meaning of the words “not known or used before the application?” They cannot mean that the thing invented was not known or used before the application by the inventor himself, for that would be to prohibit him from the only means of obtaining a patent. The use, as well as the knowledge of his invention, must be indispensable to enable him to ascertain its competency to the end proposed, as well as to perfect its component parts. The words then, to have any rational interpretation, must mean, not known or used by others, before the application. But how known or used? If it were necessary, as it well might be, to employ others to assist in the original structure or use by the inventor himself; or if before his application for a patent his invention should be pirated by another, or used without his consent; it can scarcely be supposed, that the legislature had within its contemplation such knowledge or use. We think, then, the true meaning must be, not known or used by the public, before the application. And, thus construed, there is much reason for the limitation thus imposed by the act. While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was “to promote the progress of science and useful arts;” and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible; having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries. A provision, therefore, that should withhold from an inventor the privilege of an exclusive right, unless he should, as early as he should allow the public use, put the public in possession of his secret, and commence the running of the period, that should limit that right; would not be deemed unreasonable. It might be expected to find a place in a wise prospective legislation on such a subject. If it was already found in the jurisprudence of the mother country, and had not been considered inconvenient there; it would not be unnatural that it should find a place in our own. Now, in point of fact, the statute of 21 Jac., ch. 3, commonly called the statute of monopolies, does contain exactly such a provision. That act, after prohibiting monopolies generally, contains, in the sixth section, an exception in favour of “letters patent and grants of privileges for fourteen years or under, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others, at the time of making such letters patent and grants, shall not use.” Lord Coke, in his commentary upon this clause or proviso, (3 Inst. 184,) says that the letters patent “must be of such manufactures, which any other at the time of
736 REQUIREMENTS FOR PATENT PROTECTION: NOVELTY making such letters patent did not use; for albeit it were newly invented, yet if any other did use it at the making of the letters patent, or grant of the privilege, it is declared and enacted to be void by this act.” The use here referred to has always been understood to be a public use, and not a private or surreptitious use in fraud of the inventor. In the case of Wood vs. Zimmer , this doctrine was fully recognised by lord chief justice Gibbs. There the inventor had suffered the thing invented to be sold, and go into public use for four months before the grant of his patent; and it was held by the court, that on this account the patent was utterly void. Lord chief justice Gibbs said, “To entitle a man to a patent, the invention must be new to the world. The public sale of that which is afterwards made the subject of a patent, though sold by the inventor only, makes the patent void.” By “invention,” the learned judge undoubtedly meant, as the context abundantly shows, not the abstract discovery, but the thing invented; not the new secret principle, but the manufacture resulting from it. The words of our statute are not identical with those of the statute of James, but it can scarcely admit of doubt, that they must have been within the contemplation of those by whom it was framed, as well as the construction which had been put upon them by Lord Coke. But if there were no such illustrative comment, it is difficult to conceive how any other interpretation could fairly be put upon these words. We are not at liberty to reject words which are sensible in the place where they occur, merely because they may be thought, in some cases, to import a hardship, or tie up beneficial rights within very close limits.... It is admitted that the subject is not wholly free from difficulties; but upon most deliberate consideration we are all of opinion, that the true construction of the act is, that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right; or rather creates a disability to comply with the terms and conditions on which alone the secretary of state is authorized to grant him a patent. The opinion of the circuit court was therefore perfectly correct; and the judgment is affirmed with costs.... Questions: 1.) List all of the reasons Justice Story gives for applying a bar of public use. 2.) What relevance has the availability of secrecy as an alternative method of protecting an innovation? The possible combinations of secrecy and patent law? 3.) Would it have mattered if the inventor had told Jenkins to keep their agreement secret? Would it have mattered if the nature of the invention could not be gleaned from its use? For example, what if I invent a fryer with a secret feature that produces perfect doughnuts, but only the doughnuts and not the fryer are made available to the public. May I use the fryer for years, keeping its details secret, and then patent it?
