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Drawings Cancelled in Foreign Application Constitute § 102(b) Prior Art and Invalidate U.S. Patents

April 20, 2006

Decision icon Decision

Last Month at the Federal Circuit - May 2006

Judges: Michel, Lourie (author), Linn (dissenting)

In Bruckelmyer v. Ground Heaters, Inc., No. 05-1412 (Fed. Cir. Apr. 20, 2006), the Federal Circuit affirmed a district court’s decision to grant SJ of invalidity of two U.S. patents. The Federal Circuit held that two figures cancelled from a Canadian patent application were sufficiently “publicly accessible” to constitute an invalidating “printed publication” under 35 U.S.C. § 102(b).

The two patents-in-suit disclose a method of thawing frozen ground so that a layer of concrete can be laid on top of the ground.The patented methods place rubber hoses on the ground around or within a concrete form and then circulate a heated liquid through the hoses, thawing the frozen ground and preventing concrete from hardening too quickly.

More than thirteen years before the filing of the applications that issued as the patents-in-suit, another inventor filed an application that issued as Canadian Patent 1,158,119 (“the ’119 patent”). The ’119 patent discloses a method of heating structures by having heated liquid flow through flexible hoses. Two figures illustrating the use of the disclosed system to thaw frozen ground were cancelled during prosecution, but remained in the file wrapper of the ’119 patent.

After Mark Bruckelmyer, the inventor of the patents-in-suit, sued Ground Heaters, Inc. (“Ground Heaters”) for infringement, Ground Heaters filed a motion for SJ of invalidity based in part on the two figures cancelled from the ’119 patent. In granting Ground Heater’s motion, the district court concluded that the cancelled figures constituted § 102(b) prior art because the ’119 patent and its application were available for public inspection at the Canadian Patent Office more than one year before the priority dates of the patents-in-suit.

On appeal, Mr. Bruckelmyer argued that a patent application located in a foreign patent office is not “publicly accessible” just because it is laid open for inspection by the general public for some period of time. Further, Mr. Bruckelmyer contended that the interested public was not able to locate the material in a meaningful way because the Canadian Patent Office did not index or catalogue the application.

The Federal Circuit concluded that the ’119 patent provided sufficient information to allow a person of ordinary skill in the art to locate the ’119 patent application and the figures contained within. In doing so, the Court followed the reasoning of its predecessor court in In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981). In Wyer, the Court of Customs and Patent Appeals concluded that the published abstract of an Australian patent application allowed one skilled in the art exercising reasonable diligence to locate the associated foreign patent application. The existence of the published abstract and the fact that the application was classified and indexed in the Australian patent office were central to the conclusion that the application was “publicly accessible.”

The Federal Circuit found that the issued ’119 patent was likely more informative of the content of its application than the published abstract at issue in Wyer. Further, the Court concluded that it did not matter whether the ’119 patent application was meaningfully catalogued or indexed because the ’119 patent application was indexed and would have led one skilled in the art to locate the ’119 patent application. Accordingly, the Court affirmed the district court’s decision that the ’119 patent application was “publicly accessible,” and thus an invalidating prior art reference under § 102(b).

In the dissenting opinion, Judge Linn disagreed that the cancelled figures at issue were sufficiently accessible to the public as to constitute a printed publication for purposes of§ 102(b). In distinguishing the issued ’119 patent from the published abstract in Wyer, Judge Linn stated that the text of an issued patent does not generally lead researchers to the file history for a more expansive disclosure of the invention. Further, he found nothing in the text of the issued ’119 patent to suggest that the invalidating structure disclosed in the cancelled figures would be present in the application file.