Public use anticipation allows multiple references that explain how single system functions

Takeaway: A district court found that multiple documents which described a single system were properly considered a single anticipatory prior art system under the public use prong of § 102(b). IP Innovations LLC v. Red Hat, Inc., 2:07-cv-447, E.D. Tex., October 13, 201.

Details:

The district court in IP Innovations LLC reviewed a jury verdict of anticipation. The jury found that the plaintiff's patent was anticipated by a software system of virtual workspaces created by a university student (referred to as the "Chan system"). As evidence of anticipation, the accused infringer relied on two separate documents which described the Chan system: a publication of the student's thesis; and a published paper by the student's supervisor and a reader of the thesis.

The patentee challenged the jury verdict. While not disputing that the prior art system met every element of the asserted claims, the patentee argued that the prior art system could not anticipate because it was a "blending of two separate articles by different authors."

The court found that substantial evidence supported the jury verdict. An expert for the accused infringer had testified that "the illustrated figures and technical details showed that the two papers described the same Chan system. Therefore, he used the information in both papers to recreate the Chan system." The court found that anticipation under the public use prong of § 102(b) was proper:

"[Alnticipation must be found in a single reference, device, or process." Studiengesellschaji Kohle, rn.b.H v. Dart Indus., Inc., 726 F.2d 724, 726-27 (Fed. Cir. 1984). Dr. Wilson used a single device, the Chan system, to show anticipation. Dr. Wilson did not rely on the articles as separate anticipatory references. He only used the articles to understand how the Chan system functioned. This court sees no error in using multiple references to describe a single prior art system for the purpose of showing anticipation.

The patentee also argued that the accused infringer had never proved that the Chan system existed prior to the § 102(b) bar date. The court found that the evidence did support a date of public use before the bar date of March 25, 1986:

Chan's thesis was published in July 1984, and his professor's paper was published in 1983. Chan's thesis explains that his system was "used in a fourth year undergraduate course" and "approximately 100 students have been exposed to the system over the course of 8 months." Therefore, the papers indicate that the Chan system existed and was in public use at least by 1984.

My two cents: Patent prosecutors may be surprised by this use of multiple documents in an anticipation context. That's because we deal almost exclusively with rejections based on publication. Anticipation in the public use or sale context works slightly differently, since anticipation requires a "single reference, device, or process" (as stated in the Studiengesellschaji decision relied upon in IP Innovations). That is, for public use or sale, it's the device/system/process that anticipates, and the number of documents which describe the prior art unit is irrelevant.

Occasionally an Examiner will issue a public use or sale rejection based on sale/use of the Applicant's own system. Usually this information comes from the Applicant's IDS, but occasionally the Examiner will dig it up on his own from an Internet archive. If this happens to you, you may be fighting an anticipation rejection which properly relies on multiple documents, as happened here in IP Innovations.

Prosecutors will be glad to know that the multiple-document-anticipation doctrine is much more limited under the other prongs of 102. These limits are described in MPEP 2131.01 - Multiple Reference Rejections. In a future post, I'll review some BPAI decisions that involve anticipation with multiple documents.

Trivia: The district court judge in IP Innovations was Judge Rader of the Federal Circuit, sitting in designation while visiting the Eastern District of Texas.