Federal Circuit Finds That A Foreign Unpublished Patent Application Is A “Printed Publication” Under §102

In Bruckelmyer v. Ground Heaters, 445 F.3d 1374 (Fed. Cir. April 20, 2006), petition for reh’g denied (June 28, 2006), the Court of Appeals for the Federal Circuit affirmed the lower court’s summary judgment invalidating plaintiff Bruckelmyer’s patents 5,567,085 and 5,820,301.

Bruckelmyer’s patents were for using flexible tubes carrying heated liquid to thaw frozen ground so as to permit proper curing of concrete.  Thirteen years prior to Bruckelmyer’s filing, Norman Young filed an application which eventually issued as Canadian Patent 1,158,119.  Young’s patent was for a portable heating system using flexible hoses with the primary purpose of conditioning ground for concrete pouring, although thawing frozen ground was not the objective.   Two illustrations accompanied Young’s application and illustrated the use of the invention to thaw frozen ground.  These two illustrations did not accompany the issued patent because they were cancelled; however, they were still available in the file wrapper during the critical period.

In 2002, Bruckelmyer sued Ground Heaters for infringement.  Ground Heaters counterclaimed, asserting invalidity based on the two illustrations in Young’s ‘119 patent application, and filed a motion for summary judgment.  The district court determined that the illustrations in the file wrapper were “sufficiently accessible to the relevant and interested public” to be a “printed publication” under 35 U.S.C. §102(b), which forbids patents on inventions “described in a printed publication … more than one year prior to the date of filing in theU.S.”  However, the district court denied Ground Heater’s motion for summary judgment to resolve whether the illustrations were sufficient to enable a person of ordinary skill in the art to practice the invention in the ‘085 and ‘301 patents.

Disagreeing that the illustrations were “printed publication[s],” Bruckelmyer filed a stipulation conceding that the illustrations permitted the practice of the ‘085 and ‘301 patents, upon which Ground Heaters successfully renewed their motion for summary judgment.  Bruckelmyer then appealed to the Court of Appeals for the Federal Circuit on the single issue of whether the two illustrations of the ‘119 patent are printed publications under § 102.  

The Court of Appeals analyzed the case under the precedent of In re Wyer, 655 F.2d 221 (CCPA 1981), where an Australian patent application was available to the public and an abstract of the application was published. According to Wyer, a reference meets the standard of § 102 if “such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it …” Id. at 226.  In Wyer, the published application abstract was considered a sufficient roadmap to the application to meet this standard.  In the current case, the court reasoned that the published ‘119 patent was an even better research aid in finding the application file wrapper; thus the file wrapper was publicly available.

The court also clarified its holding in In re Cronyn, a case where several student theses were found to not be publicly accessible, in part because they were not meaningfully catalogued or indexed.  890 F.2d at 1161.  The court found Bruckelmyer’s reliance on Cronyn to be misplaced, noting that indexing or cataloguing is not a necessary element, but relevant only to establishing if one ordinarily skilled in the art could locate these references.  Whether the file wrapper in this case was indexed or catalogued “in a meaningful way” was irrelevant, according to the court, since the ‘119 patent was certainly indexed and would lead a person of reasonable diligence to the application wrapper.

A short dissent by Judge Linn questioned the suitability of a granted patent as an
“index” to the patent application, especially when, as in this case, the patent itself contained little to indicate that the drawings in the file wrapper disclosed subject matter not discussed in the patent itself.

Following this case, the Court of Appeals for the Federal Circuit denied Bruckelmyer’s request for rehearing en banc.  Judge Newman argued forcefully in dissent that a file wrapper only available by traveling to a foreign country and which discloses an invention not mentioned in the resulting patent is not a “printed publication” under any reasonable interpretation of the term. (Fed. Cir. Case No. 2005-1412).  Yet the Court’s judgment stands, arguably expanding the realm of available prior art.

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