Docket No. 2014-1030
PROST, BRYSON, HUGHES
January 9, 2015
Brief Summary: DC decision that a reasonable jury could not have determined whether members of the public were informed of or could readily discern the public had been put in possession of the claimed features of the invention affirmed.
Summary: The DC also found the unauthorized planting of two patented plant varieties in their own fields did not constitute a public use and therefore rejected Delano’s invalidity challenge. The FC affirmed this decision and reviewed the meaning of “accessible to the public”. The question presented is “in a case such as this one whether the actions taken by the inventor (or, as in this case, a third party) create a reasonable belief as to the invention’s public availability” (depending on “the nature of the activity that occurred in the public; the public access to and knowledge of the public use; [and] whether there was any confidentiality obligation imposed upon persons who observed the use” (Bernhardt, FC 2004); “[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a public use where there is not commercial exploitation…[T]he presence or absence of [an express confidentiality] agreement is not determinative…” Dey, FC 2013). Here, it was determined that the USDA employee who gave the persons the plant material was not authorized to do so and that the persons knew that fact. In addition, although the persons “grew [the plants] in locations that were visible from public roads…the appellants ignore the [DC’s] finding that grape varieties cannot be reliably identified simply by viewing the growing vines alone.” The “plantings…were also extremely limited in comparison to the total cultivation of the  farms” and were only sold after the critical date (and under a different name). Thus, the FC panel concluded that DC correctly concluded a reasonable jury could not have determined whether members of the public were informed of or could readily discern the public had been put in possession of the claimed features of the invention. The opinion noted that since the trial evidence was sufficient, it “need not address the question whether use of invention by one who has misappropriated that invention (or obtain it through other improper means) can ever qualify as an invalidating public use.”