CAFC split on invalidity via 102(g)

Fox Group v. Cree

As to invalidity under 35 USC 102(g)


Under § 102(g) a patent may be invalidated if “the in- vention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” 35 U.S.C. § 102(g). This section “operates to ensure that a patent is awarded only to the ‘first’ inventor in law.” Apotex, 254 F.3d at 1035. “[A] challenger . . . has two ways to prove that it was the prior inventor: (1) it reduced its invention to practice first . . . or (2) it was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to prac- tice.” Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001).

As to facts:

Since Cree reduced the invention to practice in 1995, Fox Group, 819 F. Supp. 2d at 532, it does not need to prove conception. Reduction to practice and conception are separate and distinct concepts and tests; we will not combine them.
The test for establishing reduction to practice requires that “the prior inventor must have (1) constructed an embodiment or performed a process that met all the claim limitations and (2) determined that the invention would work for its intended purpose.” Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP & IPR Pharms., Inc., 661 F.3d 1378, 1383 (Fed. Cir. 2011). Cree met both prongs to establish reduction to practice.

Footnote 3:

To show conception a prior “inventor must be able to ‘describe his invention with particularity.’ [Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).] This requires both (1) the idea of the invention’s structure and (2) possession of an operative method of making it.” Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005). Cree would also meet the requirements of prior conception since it had an embodiment of the claimed product prior to Fox.

One does not need to repeat an implementation of an invention for it to be reduced to practice:

However, Fox does not support its contention that Cree must prove repeatability to prove it had reduced the invention to practice. Furthermore, considering Cree’s statement within the context of the article, Cree never said that it could not make another SiC boule that met the claim limitations of the ’130 patent. Rather, Cree was describing the Kyoto Wafer which had very low micropipe density and describing plans to continue to reduce defects and grow even better quality wafers in the future. Cree proved that it had reduced the invention to practice; there is no requirement for it to have done so repeatedly, and therefore no genuine issue of material fact exists as to this issue.

As to disclosure:

However, our case law establishes that “although § 102(g) prior art must be somehow made available to the public in order to defeat another patent, a § 102(g) prior inventor is under no obligation to file a patent application.” Apotex, 254 F.3d at 1039. Commercialization has been relied upon as another way to prove public disclo- sure. See e.g., Dow, 267 F.3d at 1343 (“Here, [the prior inventor’s] public disclosure of its . . . invention occurred through commercialization.”); Checkpoint Sys. Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 762 (Fed. Cir. 1995) (“In cases in which an invention is disclosed to the public by commercialization . . . .”). Filing a patent application and commercializing a product are only two convenient ways of proving an invention has been disclosed to the public. There are other ways to prove public disclosure including, e.g., the use of a printed publications as prior art under 35 U.S.C. §§ 102(a), (b).4

There is no jurisdiction over unasserted claims:

There was no case or controversy with respect to the unasserted claims at the time of the summary judg- ment motions; therefore the district court did not have jurisdiction over the unasserted claims. Id. Accordingly, we vacate the district court’s declaration that the entire ’130 patent is invalid,6 but uphold the district court’s finding of invalidity of claims 1 and 19 under § 102(g). See id.; see also Dow, 267 F.3d at 1344 (finding only the claims at issue invalid under § 102(g)).

There was a dissent:

Because I agree that Cree established prior invention by clear and convincing evidence, the relevant questions are: (1) whether Fox produced evidence sufficient to create a genuine issue that Cree nonetheless abandoned, sup- pressed, or concealed that invention, and, if so, (2) whether Cree rebutted Fox’s evidence of abandonment, suppression, or concealment with clear and convincing evidence. The majority agrees with the district court that Fox failed to present any evidence that Cree abandoned, suppressed, or concealed the invention. I disagree. As discussed below, summary judgment was inappropriate because: (1) Fox presented evidence of both direct and inferential abandonment, suppression, or concealment; and (2) Cree’s written publication – a 1996 article entitled “Recent progress in SiC crystal growth,” which was pub- lished in the Kyoto Conference journal (“the Kyoto Arti- cle”) – was insufficient standing alone to rebut Fox’s evidence.

While citing to it in passing, the majority completely ignores Apotex, failing to address either its policy con- cerns or the analysis employed. It is difficult to ignore the fact, however, that Apotex makes clear that a prior inven- tor must show that the public was clearly given the bene- fit of an invention, via reverse-engineering, a detailed disclosure, or otherwise, if it wants to rely on § 102(g) to invalidate a patent.