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Assume this is the globe-shaped map puzzle patented by Gustafson.

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Assume that someone started importing this into the U.S. sometime in the 1970's.

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You probably don't need a picture of this, but just in case.

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You probably don't need a picture of this, but just in case.

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Creating an account has many benefits: check out faster, keep more than one address, track orders and a lot more!

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Hey Crew, see below. This week's assignment requires a little more instruction. Paul and I will take 10-a and Ray and Jacqueline go ahead and take 10-b. You'll need to read the fact pattern in the Canvas module, then look at the slides (below), then respond to each column appropriately.
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The attached PowerPoint slide deck gives you the baseline set of facts for this week's and next week's assessment.  Please feel free to create more columns on your team's Padlet Board, in order to break down the issues.

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I guess I'll lead off.

Was the invention in public use or on sale a year before the patent app?

Gustafosn’s school friends: This was just a few friends in the privacy of his room. Probably not enough to consider it public use.

Obermayer’s examination: same thing. The dealings in the office were private—between Nichols and O. not public use or sale

Moleculon contract: this took place exactly one year before the patent application. It was a “sale” Moleculon tried to market it. I would say this fulfills the statutory bar… loss of right to the patent.

Ideal contract negotiations. This is also attempting to sell the invention. Barred from patent protection.

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Do any of these prior references anticipate (pre-date) the date of the invention?  Note: these are highlighted in yellow on the previous slide.

Prior Art (no patentability) is found if (1) the prior art reference describes or shows each and every limitation of the claimed invention, and (2) if the prior art reference enables the people with ordinary skill in the art to make the claimed invention. [For reference, the Nichols puzzle was invented in the summer of 1957, and the later Moleculon patent was filed on 12 Jan 1970].

(a)    2D puzzle (1950s).

Under 35 USC § 102(a), this invention likely pre-dates the Nichols invention of 1957, and we can assume the 2D puzzle was known by others in the United States before anyone knew of Nichols puzzle. However, a 2D puzzle cannot physically describe or mechanically show every limitation of Nichol’s three-dimensional puzzle, and cannot serve as a reference for people skilled in the art to take the two-dimensional puzzle to construct Nichol’s three-dimensional puzzle.  The 2D puzzle is not anticipatory of Nichol’s later invention, so cannot preclude Nichol’s patent rights based upon novelty.

(b)   Working prototypes (1959-1962)

Like the case in Beachcombers, if Nichols showed the puzzle to graduate friends between 1957 and 1962, with no confidentiality agreement in place, then this would seem to be a “public use” of technology, if it took place more than one year before the application for patent, rendering the 1971 patent invalid under 35 USC § 102(b).

Certainly, a working-prototype three-dimensional puzzle is probably sufficient to physically describe the limitations of the final Nichol’s puzzle, and most likely is a workable reference to construct Nichol’s three-dimensional puzzle.

The working prototype (if not protected) is probably anticipatory and would preclude Nichol’s patent rights if used by someone else prior to filing for the patent in 1970.

(c)    Gustafson or ‘089 patent (12 Mar 1963)

The Gustafson patent issued on on March 12, 1963. It teaches a “mechanical puzzle having a plurality of varicolored parts which are movable relative to each other to form various patterns.”

Gustafson’s patent pre-dates Nichol’s patent by 7 years. That said, this is probably not anticipatory because the mechanical functions of the puzzle appear to be largely unrelated to the multiple-related cube design of Nichol’s puzzle, and most likely Gustafson’s puzzle does not appear to be a suitable reference for people with ordinary skill in the art to create the Nichol’s puzzle. The Gustafson design is not anticipatory.

(d)   Hungarian puzzle (1970s)

The Hungarian puzzle seems to post-date Nichol’s patent, and if so, cannot be anticipatory.

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Do any of these prior references anticipate (pre-date) the date of the invention? Separate analysis from Paul with similar results.

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Do any of these prior references anticipate (pre-date) the date of the invention? Separate analysis from Paul with similar results.

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Same starting point for the analysis as Paul mentioned above. There are two steps in the anticipation analysis: 1) does the prior art reference describe or show each and every limitation of the claimed invention? and 2) does the prior art reference enable the phosita to make the claimed invention? If the answer to both of these is yes, then the reference defeats the claim's novelty (that which would literally infringe if later in time anticipates if earlier in time).

a. do 2d Puzzles anticipate the date of the invention? (1957):

Whereas 2d puzzles clearly predate Nichols' invention, the question is whether it anticipates Nichols' puzzle. 2d puzzles were presumably widely known and used prior to Nichols' invention, but the puzzles themselves were highly unlikely to have described and shown all limitations of the claimed invention, nor would the have allowed a person skilled in the art to intuit or develop Nichols' invention (which was 3-dimensional). 2d puzzles could not literally infringe, therefore, they  also did anticipate Nichols' invention.

b. Do Nichols' working prototypes anticipate the date of the invention?

An analysis of Beachcombers is useful, as a display of a device to friends may constitute public use. In Nichols' case, he shared the invention with two close friends, including roommates and a colleague in the chemistry department. Nichols also explained the operation to at least one of them.

Importantly, the paper models confirmed feasibility of the concept. That fact makes it likely that the models could have shown the limitations of the invention and enable someone to make the claimed invention.

With that being said, Nichols might argue under Beachcomber that there was an implied restriction of confidentiality amongst his friends. However, that fact is undercut by the fact that Nichols explained the operation of the puzzle to at leasts one of his friends, and the facts do not make clear that Nichols retained use of the puzzle at all times when showing his friends. Nichols made no obvious attempts at retaining control over the distribution of information relating to the puzzle, and a court would likely find no implied restriction of confidentiality and find that Nichols' actions constituted public use

c. The '089 Patente:

The Gustafson patent, much like the 2d puzzle, would not allow a phosita to make the claimed invention, regardless of whether the patent was received well before Nichols' patent. Looking at the Gustafson puzzle, it is clear that it is more like the Nichols puzzle than a 2d puzzle, but the Gustafson puzzle does not identify all of the limitations of the claimed invention- it might show some, but not all. Due to the limited nature of the limitations that are shown, it is unlikely the puzzle can be used to allow someone else to make the Nichols invention. Therefore, the Gustafson patent likely does not anticipate the Nichols invention.

d. The Hungarian Puzzle.

The facts only tell us that the Hungarian puzzle was imported "in the 1970's." Whether the Hungarian puzzle was imported in early 1970 does not make a difference.

If the Hungarian puzzle was imported after the filing of the Nichols patent, then it cannot anticipate the Nichols invention.

However, if the Hungarian puzzle was imported before March 3, 1970, the date Nichols filed for his patent on behalf of Moleculon, the Hungarian puzzle still does not anticipate the Nichols invention because existence of a physical object can only make the Nichols claim not patentable if it was in use by people in the U.S. prior to the date of the invention, not the patent application.

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Was the invention "in public use or on sale" more than one year before the date of the patent application? I would argue the answer is "no."

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Was the invention "in public use or on sale" more than one year before the date of the patent application? I would argue the answer is "no."

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Section 102(b) bars the patent if the technology is "in public use" more than one year prior to the application for the patent.  The theoretical underpinning is that once in the public domain, technology should not be withdrawn from it.

Similarly, section 102(b) bars the patent if an invention has been "on sale" in the U.S. "more than one year prior to the date of the patent application."

In Beachcombers v. Wildewood Creative Prods (1994), the Federal Circuit Court looked at the definition of "public use" and found a kaleidoscope prototype to be in public use by virtue of its display to guests at a party hosted by the designer and developer of the device more than a year prior to the patent application.  The jury in that case, did not find that the developer/designer imposed any secrecy or confidentiality obligations upon her guests, nor was the situation such that any confidentiality obligations would implicitly arise.

The US SC looked at when an invention has been "on sale" in Pfaff v. Wells Electronics, Inc. (1998).  The Supreme Court held there to be two conditions: (1) the product must the subject of a commercial offer for sale; and (2) the product must be ready for patenting i.e. reduced to practice, or drawings prepared sufficiently specific to enable a person skilled in the art to practice the invention.

There is an exception for experimental uses, where the inventor was exerting bona fide efforts to bring his invention to perfection. See City of Elizabeth v. American Nicholson Pavement Co (1877) and Clock Spring v. Wrapmaster (2009).  In delineating commercial versus experimental uses, the Federal Circuit Court listed 13 factors  - see page 226 of the textbook.

It is also to be noted that the sale of the invention is to be distinguished from the sale of the intangible asset of the patent itself.  Granting a license to a patent does not amount to a sale for the purposes of section 102(b): See In re Kollar (2002).

With this in mind:
(1) Did Nichols (I'm going to assume this was a typo) showing and explaining his "invention" to his graduate school friends constitute a "public use"?

I would argue no.  The facts state that he showed his model to "a few close friends, including two roommates and a colleague in the chemistry department."  He retained control of the model; and furthermore the model was in experimentation stage and not "reduced to practice" as it was made with heavy file-card paper and lacked durability. The models were experimental as they wer made to "bring the invention to perfection" and were shared in circumstances that connoted confidentiality - in the confines of a dorm room to close friends, as opposed to at a party like in Beachcomber.

(2) Did Obermayer's examination at Moleculon offices constitute public use or sale?

Again, I would argue no.  Nichols was employed as a research scientist at Moleculon and occasionally brought his prototype, that he was still working to perfect, to the office when the President of Moleculon saw it.  I would argue it was still in experimentation stage, and that it was not disclosed to the general public or in "public use".  Without more facts, it also appears that he still kept control of the prototype.

(3) Did the contract between Moleculon and Nichols put the invention into public use or sale?

Based on the holding in In re Kollar (2002) stated above, I would say that the invention was not on sale  nor in public use simply because Moleculon agreed to buy the rights to the invention in return for a share of the proceeds. The fact that Moleculon bought the right to the patent, is not putting the product itself into sale.

(4) Did the contract negotiations with Ideal render the invention in public use or on sale such as to bar the patent application?

It is less clear whether the invention was in public use or for commercial sale as it was shared with between 50-60 toy manufacturers between 1969 and 1972, one of whom was Ideal.

The facts state that on March 7, 1969, Moleculon sent Parker Brothers an actual model and description of the cube puzzle.  This is the first evidence of Moleculon trying to sell the invention after Nichols assigned his rights to them that same month.  Assuming there was no NDA/confidentiality agreement, it could reasonably be argued that the invention was in public use at that time.  This would accord with the holding in Beachcombers because Moleculon shared the prototype with others without any requirement of confidentiality.  Furthermore, the invention was subject to a commercial offer for sale, and was arguably ready to patent, thereby fitting within the definition of "on sale" laid out in Pfaff.

However, the patent application was filed March 3, 1970, so that sharing of the puzzle with Parker Brothers was within the first year of the public dissemination and/or offer for commercial sale, and therefore the patent, I would argue, should not be barred.

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Here's an interesting case about how COVID-19 is affecting trials in patent law cases (as in other cases).

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Here's an interesting case about how COVID-19 is affecting trials in patent law cases (as in other cases).

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Match Says Bumble Exploiting Virus Concerns to Delay Patent Case