"[A]lthough § 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." Commercialization has been relied upon as another way to prove public disclosure.
On November 28, 2012, in Fox Group, Inc. v. Cree, Inc., the U.S. Court of Appeals for the Federal Circuit (Newman, O'Malley, Wallach*) affirmed-in-part and vacated-in-part the district court's summary judgment that U.S. Patent No. 6,562,130, which related to a low defect silicon carbide (SiC) crystal, was invalid under 35 U.S.C. § 102(g). The Federal Circuit stated:
Under § 102(g) a patent may be invalidated if "the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it." This section "operates to ensure that a patent is awarded only to the 'first' inventor in law." "[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 practice." . . . An alleged prior inventor would need to prove conception only if the alleged prior inventor had not successfully reduced the invention to practice before the critical date of the patent-at-issue (May 4, 2000). Since Cree reduced the invention to practice in 1995, it does not need to prove conception.
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." Cree met both prongs to establish reduction to practice. [T]he prior inventor does not need to "establish that he recognized the invention in the same terms as those recited" in the patent claims.
There were two ways for Fox to produce evidence sufficient to create a genuine issue of material fact of abandonment, suppression, or concealment. The first way, that the prior inventor actively and intentionally suppressed or concealed, has not been raised before this court. Rather, Fox disputes the sufficiency of Cree's public disclosures, contending that abandonment, suppression, or concealment may be inferred from the inventor's "unreasonable delay in making the invention publicly known."
There are numerous ways to support an inference of abandonment, suppression, or concealment, such as "[t]he failure to file a patent application, to describe the invention in a published document, or to use the invention publicly, within a reasonable time after first making the invention . . . ." "[A]lthough § 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." Commercialization has been relied upon as another way to prove public disclosure. 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).
The purpose of § 102(g) is to bar an inventor from receiving a patent on an invention that has already been invented and was not abandoned, suppressed, or concealed. If the patent claimed a process, then a prior inventor would have to prove prior invention of the process which had not been abandoned, suppressed, or concealed, to invalidate the patent under § 102(g). "Cree promptly and publicly disclosed its findings concerning the low defect properties of the SiC material from which the [Kyoto Wafer] was cut through a presentation at the 1995 International Conference and a published paper on the subject." Accordingly, Cree promptly made its invention, a SiC material with low defect densities, known to the public. Fox has not produced sufficient evidence raising any genuine issues of material fact to show that Cree suppressed or concealed its invention.
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