BPAI reverses § 102(b) rejection because reference did not show sale or use in United States

Takeaway: The BPAI reversed an anticipation rejection under the "use or sale" prong of § 102(b) because neither the press release nor the related online article established use or sale of the game controller in the US.  The fact that the press release stated that the game controller could be used with game titles that were available in the US did not establish that the controller was actually used in the US. (Ex parte Kislevitz, BPAI 2011.)

Details:
Ex parte Kislevitz
Appeal 2009009637; Appl. No. 10/770,344; Tech. Center 3700
Decided  January 18, 2011

The sole independent claim on appeal read:

1. A hand-held controller configured to control an operation of an amusement device,
   the controller comprising a multi-part housing including at least a left-hand grip portion and a righthand grip portion,
   wherein the left-hand grip portion and the right-hand grip portion are substantially the same size and are pivotable with respect to each other to control the operation of the amusement device.

On appeal, the independent claim stood rejected as anticipated under § 102(b) by a press release describing a game controller called the NeGcon. The press release read, in its entirety:

NeGcon Goes Black:
The NeGcon, Namco's analog controller, will be rereleased in a brand-new color.
By Yutaka Ohbuchi, GameSpot / Posted Mar 6, 1998 4: 19 pm PT
      On April 29, Namco will rerelease its NeGcon analog controller,which is used for racing titles like Rage Racer, Wipeout XL, and Ace Combat. It has the same features as the previous version, but it is smaller in size than the original and has a lower price (2,980 yen compared with the older 4,980-yen price tag). It's currently not know whether this new NeGcon color will be released in the US.

The same anticipation rejection also relied on an online publication, the Twist article, as "evidence" of various features included in the NeGcon.

In the Appeal Brief, the Applicant first argued that the press release was not prior art under the § 102(b) public use or sale prong, since the press release referred to Japan rather than the US. The Applicant then argued that even if the press release was treated as prior art under the printed publication prong, the press release did not disclose any of the claimed elements, since the only feature mentioned was the color. The Applicant further argued that the Twist article did not establish use or sale in the US because the article did not identify the location of the toy store where the author found a NeGcon controller in 1996.

In the Answer, the Examiner clarified that "the first [press release] reference was used to establish the simple fact the reference was released prior to the filing" and that "the second reference was provided to establish the structure and features of the controller." The Examiner then replied to points raised in the Appeal Brief:

However the applicant refuses to agree the article is evidence of the original NeGcon was in public use or sale in the United States. The Examiner is amazed by this argument when the article clearly states the controller is used for racing titles such as Rage Racer, Wipeout XL & Ace Combat which are video games that were on sale & in the public at the time.
...
The picture below was disclosed by the second reference [(Twist article)] and clearly demonstrates the twisting or pivotable motion with respect to the left and right portion that the NeGcon is capable of performing. However the applicant refuses to believe the reference since the blogger posted the article after the applicant's filling date. Furthermore, the applicant refuses to believe the picture below is the original NeGcon the first reference mentions, even though the controllers labels: Namco, NeGcon and PlayStation are clearly visible in the picture.

The Applicant filed a Reply Brief to respond to various points in the Examiner's Answer:

   The Examiner relies on the identification of certain video games (Rage Racer, WipeOutXL, and Ace Combat) in the GameSpot article as proof the NeGcon controller was also on sale in the U.S. But the Examiner conveniently ignores the fact that NONE of these games REQUIRED the use of a Namco NeGcon controller (or that he has failed to even prove the games themselves to have been on sale or in public use in the U.S. before the critical date). ...
   Applicants have not argued that the controllers shown in the various pictures [in the Twist article] are in some way mislabeled. What applicants argue is regardless of what is shown, the article does not prove that a Namco NeGcon controller was on sale or in public use in the United States prior to the February 2, 2003, 102(b) bar date. The article is dated 2007. The identity and location of author and those of the "local toy store" referred to in the Twist article are not identified and are simply unknown.

The Applicant then concluded the Reply Brief argument as follows:

The mere fact that people today in the United States are familiar with certain items is not proof that any of those items were on sale or in use in the United States before a specific date. The mere fact that some items might have been available or in use in the United States before the specific date is not proof that another article that might be optionally used with such item(s) was also on sale or in public use in the United States before that specific date. Finally, the mere fact that something is described in English on the internet is not proof that whatever is being described is occurring or has occurred or exists or has existed in the United States.

The Board reversed the anticipation rejection, finding that neither the press release nor the Twist article showed public use or sale in the US. With regard to the press release reference, the Board noted that the press release did not explicitly refer to sale in the US, and that a price expressed in yen suggests that the controller was expected to go on sale in Japan. Furthermore, mentioning that "the controller may be used for certain enumerated racing titles does not establish such use was within the United States." The Board further found that "while the [Twist reference] states that the author (unnamed) found a controller 'at a local toy store' in 1996, nothing in the reference establishes the location of that toy store as being within the United States."

My two cents: Looks to me like the Examiner got a little too fancy here with his rejection, without properly understanding the use/sale prong. Perhaps the Examiner was simply unfamiliar with the fine points of the use/sale rejection because they're relatively rare in prosecution. I don't see many of them on appeal. And those that I do see tend to be in reexamination, which is handled by a special reexam art unit.

I thought the Applicant did a great job in arguing, and in responding to each of the Examiner's points. Maybe the Board would have reversed even without such compelling arguments, because the Examiner's arguments were weak. But why rely on the Board to find these weaknesses – point them out yourself.

I notice that the Board didn't comment on the propriety of the Examiner combining multiple references into a single § 102, with the "Twist" article being used as "evidence" of NeGcon features. I suppose the Board didn't need to reach this question, since even when considered together the two references didn't show use or sale in the US.

First use date in trademark prosecution used as evidence of on-sale date in patent litigation

Takeaway: A patentee's trademark application was used, unsuccessfully, by the accused infringer as evidence of an on-sale bar. (Lampi, LLC v. American Power Products, Inc., 65 F.Supp.2d 757, 761 (N.D.Ill.1999)). According to the district court, the patentee's Micro Lampi fluorescent light product embodied the asserted claims. The patentee filed a product configuration (trade dress) application for this product. During prosecution of the trademark, the patentee submitted sworn statements specifying a date of first use in commerce. This first use date (before the critical date of the patent) contradicted the patentee's evidence about the on-sale date of the product (after the critical date).

The court found that the patentee was not judicially estopped from relying on the on-sale date established at trial, because the contrary position taken in the trademark proceeding was the product of inadvertence and mistake. Therefore, the patent was not invalid for an on-sale bar because the on-sale date established at trial was after the critical date.

The Federal Circuit affirmed this portion of the district court's opinion, finding that the district court did not abuse its discretion. (Lampi Corp. v. American Power Products, Inc., 228 F. 3d 1365, Fed. Cir. 2000.)

Details:
Lampi, LLC. v. American Power Products, Inc.
N.D. Illinois, Eastern Division,
August 31, 1999

The accused infringer argued that the statements made in the trademark prosecution prevented the patentee from denying a sale before the critical date. The doctrine of judicial estoppel is an equitable concept that forbids a litigant from obtaining victory in a prior proceeding and then repudiating the grounds for that victory in a different case to win a second victory. Chaveriat v. Williams Pipe Line Co., 11 F.3d 1420, 1427 (7th Cir.1993). However, the doctrine should not be applied when the former position was the result of inadvertence or mistake or when there is only an appearance of inconsistency between the two positions. In Matter of Cassidy, 892 F.2d 637, 642 (7th Cir.), cert. denied, 498 U.S. 812, 111 S.Ct. 48, 112 L.Ed.2d 24 (1990).

The president of the patentee testified that in making statements that the Micro Lampi was "in use in commerce" in 1985 (before the critical date), she misunderstood the meaning of this phrase. She mistakenly believed that submitting preliminary plans for manufacturing the Micro Lampi housing amounted to "use in commerce." The court found this testimony to be credible. The patentee also amended its trademark application to amend the date of first use from July 1985 to September 1986. The court found this to be further evidence that the initial representation was the product of inadvertence and mistake.

In conclusion, the court found that the evidence at the infringement trial showed that the on-sale date was after the critical date, and judicial estoppel did not apply to prevent the patentee's reliance on this date. Therefore, the patent was not invalid.


My two cents: "Use in commerce" in trademark law is not exactly the same as "sale" in patent law — but it's pretty close. The statutory definition of "use in commerce" includes "goods are sold or transported in commerce." Seems to me that if your first use was sale, rather than transport, that qualifies as an on-sale event in patent law. 

That's only half the story. The date of first use in commerce is relevant only if the "Micro Lampi" product which was the subject of the trade dress registration was also embodied in the patent claims. The opinion didn't analyze this, but simply stated that the Micro Lampi was the commercial embodiment of the patents-in-suit, and that "Lampi applied to the PTO to register the external design of the Micro Lampi as a trademark." Perhaps the patentee admitted that the two were the same.

In many cases it could be a lot more work to show that the product for which a trademark application was filed was the claimed product. For example, what if the Micro Lampi had lots of different models, all of which shared the same trade dress / product configuration and thus the same first use in commerce, but which differed in their internals so that only some of the models embodied the claims? In such a case, the first use date is not indicative of an on-sale sale date for a claimed embodiment.

On sale bar met by accused product rather than patentee's product

Takeaway: Invalidation under the on-sale bar of § 102(b) usually involves a sale of the patentee's product. However, the sale can actually be of any product, by any party, as long as it embodies the claims. In Cummings v. Adidas USA, 08 Civ. 9860 (S.D.N.Y 2010), one of the accused infringers raised the on-sale bar defense using its own accused product, and won on summary judgment.

Details: An invalidity defense under the on-sale bar of § 102(b) requires a) sale or offer for sale more than one year before the critical date of b) a product that was ready for patenting at the time of the sale and which c) anticipates the claims. Nike didn't even need to offer evidence that the product anticipated: that burden of proof was satisfied by the patentee's allegation of infringement. All Nike had to do was provide evidence that the accused product was materially identical to the product offered for sale. As for the other two requirements, Nike presented uncontroverted evidence that Nike sold samples of the accused product to showrooms and sales representatives more than one year before the patent's filing date. The court granted Nike's motion for summary judgment of invalidity.