Chapter §9.03 Graham Factor (1): Scope and Content of the Prior Art

• Jurisdiction: United States

§9.03 Graham Factor (1): Scope and Content of the Prior Art

[A] Terminology

A term of art in patent law, the phrase "prior art" can be understood at a very basic level as the legally available technology and information with which a claimed invention will be compared to determine whether that invention is patentable. Which categories of technology and information are "legally available" for use as prior art in a §103 analysis is governed by the criteria of 35 U.S.C. §102, as well as the notion of "analogous art." These concepts are detailed below. Prior art documents such as patents and printed publications are typically referred to as "references."

[B] What Is Prior Art for §103 Purposes

In evaluating the "scope and content of the prior art" Graham factor (1), the USPTO and the courts may obtain evidence about the prior art from several different sources. In a typical USPTO ex parte patent prosecution, the patent applicant will submit relevant prior art of which it is aware to the Office via an "Information Disclosure Statement."⁶⁹ In addition, the examiner will conduct her own independent search of the prior art accessible to the USPTO. Moreover, the America Invents Act of 2011 expanded opportunities for pre-issuance submission of prior art by third parties.⁷⁰ All of this prior art will become part of the official prosecution history file for the patent in question, the contents of which will be publicly available when the patent issues (or in many cases, sooner⁷¹).

If an issued patent's validity is being challenged in federal court or in a USPTO post-issuance proceeding, the accused infringer or petitioner (i.e., the challenger of validity) will introduce into evidence the prior art it seeks to have considered. Often this prior art will include newly discovered prior art, that is, prior art documents or events that were not known to or considered by the USPTO during the initial examination of the patent application but that have been unearthed through the litigation process. The Federal Circuit has taken the view that introduction of such newly discovered prior art, which may be more pertinent than that considered by the USPTO in the initial examination, does not weaken the patent's presumption of validity under 28 U.S.C. §282. Its introduction can nevertheless facilitate the validity challenger's carrying of its burden in federal court to prove invalidity by clear and convincing evidence, for it requires that the patentee come forward with countervailing evidence.⁷²

Contrariwise, a validity challenger who relies only on prior art that was already known to the USPTO during the initial examination of a patent application bears a somewhat heavier burden to establish obviousness. For example, in Shire LLC v. Amneal Pharms., LLC,⁷³ the primary prior art reference relied on by the accused infringers who sought to invalidate the Shire pharmaceutical patents in suit was a published Australian patent application; the USPTO had listed that application on the face of the Shire patents. The Federal Circuit explained that when a prior art reference is listed on the face of an issued U.S. patent, "the examiner is presumed to have considered it."⁷⁴ The validity challengers in Shire thus carried " 'the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.' "⁷⁵ For this and other reasons discussed infra,⁷⁶ the Federal Circuit affirmed a district court's grant of summary judgement to Shire that its challenged patents were not invalid (i.e., sustaining their validity).⁷⁷

[C] Section 102/Section 103 Overlap

Section 103 of 35 U.S.C. does not define the meaning of "prior art" as the phrase is used in that section. Case law and legislative history fill the gap. These sources make clear that 35 U.S.C. §102, the statutory provision that governs novelty and loss of right,⁷⁸ is the key to determining the scope and content of the prior art properly available in a Graham factor (1) analysis under §103.⁷⁹ Section 102 can be conceptualized as a catalog of the varieties of information (e.g., documents and events) that may potentially qualify as prior art for §103 purposes. In other words, any reference relied on in determining nonobviousness must first qualify as prior art under one or more subsections of §102.⁸⁰ As stated by a co-author of the 1952 Patent Act, "[t]he antecedent of the words 'the prior art,' which here appear in a statute [§103] for the first time, lies in the phrase 'disclosed or described as set forth in section 102' and hence these words refer to material specified in section 102 as the basis for comparison."⁸¹

Originally, and using pre-AIA designations, only §102(a) (2006) prior art (typically printed publications or issued patents having an effective date before the applicant's filing date/presumptive invention date) was considered appropriate for use in combination to form §103 obviousness rejections. No concern about the use of secret prior art existed because such information would clearly have been published or otherwise available to the PHOSITA on or before the invention date.⁸² For example, if a patent application claim filed pre-AIA recited "a widget comprising X and Y," the USPTO examiner might enter a §103 obviousness rejection by contending that a PHOSITA would have been motivated to make the claimed invention in view of the combined disclosures of element X in a widget depicted in a §102(a) (2006) printed publication with element Y in a widget described in another §102(a) (2006) printed publication. Both references would have had an effective date before the applicant's filing date (that is, the applicant's presumptive invention date under pre-AIA principles).

The categories of §102 prior art that are available for use in a §103 obviousness rejection are no longer limited to §102(a) (2006). In a series of judicial decisions the courts held that other categories of §102 prior art, namely information (e.g., documentation or events) qualifying under pre-AIA subsections §102(b) (2006),⁸³ §102(e) (2006),⁸⁴ §102(f) (2006),⁸⁵ and §102(g) (2006)⁸⁶ of 35 U.S.C. were legally available as prior art that properly can be combined for purposes of forming a §103 obviousness rejection.

For example, consider a competitor's sale of a product more than one year before the applicant's filing date, which product was similar to but not anticipatory of (that is, not strictly identical to) the claimed invention. The competitor's sale of the product would not result in a loss of right to a patent on the claimed invention under §102(b) (2006) alone, because the strict identity rule of anticipation would not be satisfied. However, if a PHOSITA would have been motivated to make the claimed invention by modifying the features of the sold product, in accordance with other knowledge available at that time to the PHOSITA (the other knowledge qualifying under some subsection of §102), then the invention would have been obvious under 35 U.S.C. §103. The competitor's sale of the product more than a year before the applicant's filing date, even though a sale of something different than the claimed invention, effectively added that product to the universe of prior art available to the PHOSITA confronted with the problem addressed by the invention. This can be conceptualized as a "§102(b) (2006)/§103" theory of unpatentability.

Note that the law allowed use of §102(b) (2006) statutory bar prior art in §103 rejections, even though the effective date of the §102(b) reference(s) was likely not "the time the invention was made" (that is, the effective date of the §102(b) reference was probably more recent than the inventor's true invention date). Thus the §103 timing requirement was effectively ignored or trumped by the policy of loss of right reflected in §102(b) (2006), and evidence of a statutory bar/loss of right event under §102(b) (2006) may be used to establish obviousness for pre-AIA patents.⁸⁷

[1] In re Bass (CCPA 1973)

In re Bass⁸⁸ is a foundational case in the development of §102/§103 overlap jurisprudence. Bass concerned the applicability of pre-AIA 35 U.S.C. §102(g)⁸⁹ as prior art for purposes of nonobviousness analysis under §103. Before the Bass decision, the courts viewed 35 U.S.C. §102(g) exclusively as a basis for interference proceedings, which were pre-AIA administrative determinations to determine time-wise priority of invention between two (or more) rival claimants seeking to patent the same invention.⁹⁰ The USPTO had not previously had occasion to rely on the prior making of inventions under §102(g) as prior art for the purposes of forming obviousness rejections in ex parte prosecution of patent applications.⁹¹ In Bass, the Court of Customs and Patent Appeals (CCPA) determined that prior invention by another under §102(g) also could be used for that purpose. This was proper even though the prior art invention and the invention of the application on appeal were made by employees of the same corporation. The rather complicated facts of Bass can be summarized as follows.

The invention of the application on appeal in Bass, invented by a group of co-workers consisting of Bass, Jenkins, and Horvat, was a four-element vacuum system for controlling and collecting waste (e.g., dirt and twigs) on carding machines that are used in forming textile fibers. Before the inventive entity of Bass/Jenkins/Horvat filed a patent application claiming its system, however, a separate patent application had been filed that named Jenkins as the sole inventor of one of the four components of the vacuum system (i.e., a main cylinder screen). The USPTO examiner rejected the vacuum system invention as obvious under §103 in view of a combination of prior art...