January 2015
Prior Reduction to Practice Is Not Necessary Under § 103 for Prior Art with Prior Conception
| Judges: Prost (author), Reyna, Hughes |
| [Appealed from D. Conn., Judge Arterton] |
In Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., Nos. 13-1324, -1381 (Fed. Cir. Dec. 4, 2014), the Federal Circuit upheld the district court’s determination that a prototype conceived before an asserted patent and diligently reduced to practice thereafter anticipated certain asserted claims under 35 U.S.C. § 102(g), but reversed the district court’s determination that the prototype could not be considered prior art under § 103.
Tyco Healthcare Group LP (“Tyco”) owns U.S. Patent No. 6,468,286 (“the ’286 patent”) and other related patents (collectively “the Tyco patents”) generally related to a surgical device for ultrasonic incision and tissue coagulation. Some of the asserted claims recite a device with a curved blade (“Curved Blade Claims”) and others relate to a clamp that closes against the blade via a dual cam mechanism (“Dual Cam Claims”). Ultracision, Inc. (“Ultracision”) commercialized a similar device in 1993 and obtained U.S. Patent No. 5,322,055 (“the Davison patent”), which covered that device, in 1994. Ethicon Endo-Surgery, Inc. (“Ethicon”) acquired Ultracision in 1995 and worked to perfect the design of that device (“Ethicon Prototype”) for commercialization, which was completed by November 1996. Ethicon continued to modify the design of the Ethicon Prototype through 1997, filed patent applications covering the Ethicon Prototype in October 1997, and obtained FDA approval for the device in April 1998.
Tyco initiated a patent infringement action against Ethicon on January 14, 2010. Ethicon argued that the Tyco patents were invalid either as anticipated or obvious based on the Ethicon Prototype, the Davison patent, and European Patent No. 0 503 662 (“the ’662 patent”). Tyco maintained that the earliest date of conception for the claimed invention was January 1997 and that it was reduced to practice in March 1997. After a bench trial, the district court found that Ethicon conceived of the Ethicon Prototype before Tyco’s conception date, worked diligently to constructively reduce it to practice when it filed the patent applications, and did not abandon, suppress, or conceal it thereafter. The district court concluded that twenty-six of the asserted claims were invalid as anticipated by the Ethicon Prototype under § 102(g). The district court nonetheless held that the Ethicon Prototype could not serve as prior art under § 103 because Ethicon did not establish reduction to practice before Tyco’s reduction to practice and because the prototype was not known in the art at the time of Tyco’s invention. The district court held that the remaining claims were not obvious in view of the Davison patent and the ’662 patent, and awarded $176 million to Tyco for Ethicon’s infringement of those claims. Ethicon appealed the district court’s decision to exclude the Ethicon Prototype as prior art under § 103, and Tyco cross-appealed the district court’s determination that the Ethicon Prototype anticipated twenty-six of the asserted claims under § 102(g).
“The district court erred when it inconsistently applied § 102(g) to the Ethicon Prototype by not requiring prior reduction to practice for anticipation purposes but requiring it for the obviousness analysis. The clear language of § 102(g) does not require prior reduction to practice so long as the inventor can prove that he or she conceived of the invention first and was diligent in later reducing it to practice.” Slip op. at 11.
The Federal Circuit rejected Tyco’s argument that Ethicon failed to establish prior conception because Ethicon made changes to design features of the Ethicon Prototype after 1996 and upheld the district court’s determination that Ethicon conceived of the prototype before Tyco’s conception date. The Court also found that the district court correctly determined that the record established Ethicon’s “reasonable continuing activity” to reduce the invention to practice from April 1996 to the filing of the patent applications in October 1997. The Court, however, concluded that “[t]he district court erred when it inconsistently applied § 102(g) to the Ethicon Prototype by not requiring prior reduction to practice for anticipation purposes but requiring it for the obviousness analysis” because “[t]he clear language of
§ 102(g) does not require prior reduction to practice so long as the inventor can prove that he or she conceived of the invention first and was diligent in later reducing it to practice.” Slip op. at 11. Although Tyco argued that Federal Circuit precedent required reduction to practice before Tyco’s priority date, the Court held that “neither § 102(g) nor § 103 make prior reduction to practice the only avenue through which § 102(g) prior art can constitute prior art under § 103.” Id. at 12. The Court also explained that “the clear language of § 102(g) and § 103 contains no requirement that a prior invention under
§ 102(g) be ‘known to the art’ or the patentee at the time of invention to constitute prior art under § 103.” Id.
After finding that the district court should have considered the Ethicon Prototype as prior art for obviousness purposes, the Federal Circuit analyzed whether the Curved Blade Claims and Dual Cam Claims were obvious in view of the Ethicon Prototype and other prior art. The Court held that the Curved Blade Claims were invalid under § 103 over the Ethicon Prototype in view of the Davison patent and that the Dual Cam Claims were also invalid under § 103 over the Ethicon Prototype in view of the ’662 patent. Accordingly, the Court affirmed the district court’s anticipation determination, reversed the district court’s obviousness determination, and vacated Tyco’s damages award.
*Kumiko Kitaoka is a Law Clerk at Finnegan.
