TICKET NUMBER 22742 [To simplify the form of my questions and discussions, I am assuming that the invention is a product rather than a process, a method of manufacturing a product, etc. and that both PO and AI have designed and manufactured only one generation of their respective products.] 1. ANTICIPATION AND SEC. 102 BARS QUESTIONS Sec. 102(a) When did the inventor first record his or her idea and develop a prototype? Was AI's product described in any publications or presentations, or shown to others prior to PO's application filing date? If so, in how much detail and when? Sec. 102(b) When was PO's specific application filing date? Were either PO's or AI's respective products described in any publications more than one year earlier than that date? Were either PO's or AI's respective products shown to others or offered for sale more than one year earlier than that date? DISCUSSION PO's activities prior to the application filing date may provide a basis for AI to assert that the T patent is invalid. If PO's claims read on AI's allegedly infringing product, then AI's activities prior to the application filing date may also provide a basis for AI to assert that the T patent is invalid. Sec. 102(a) Documented dates of conception and reduction to practice can be used to establish the earliest possible date after which subsequent publication or presentation of details of the invention to others, or use of the invention by others, cannot serve as a bar under sec. 102(a). These dates may be difficult to establish but the alternative is that the application filing date will be considered to be a constructive date of conception and reduction to practice. If AI has described its product in publications, sales meetings, etc. in sufficient detail to allow a person of ordinary skill in the art to practice the invention prior to the established date of conception and reduction to practice, or if it has shown or provided prototypes to prospective partners or customers prior to the same, then AI will have a strong invalidity defense under sec. 102(a). Sec. 102(b) The critical date, one year prior to PO's application filing date, is a more easily determined date after which subsequent publication of details of, public use of , or offers to sell the invention cannot serve as a bar under sec. 102(b). Assuming that PO's claims read on AI's product so that both PO 's and AI's activities are of concern, if either PO or AI have described their product in publications or demonstrated their product in meetings in sufficient detail to allow a person of ordinary skill in the art to practice the invention prior to the critical date, or offered their product for sale prior to the same, then AI will have a strong invalidity defense under sec. 102(b). 2. ANTICIPATION, OBVIOUSNESS, AND OTHER REFERENCES QUESTIONS Anticipation What other references exist in the literature and in published patents? When were these references published? Obviousness What other references exist in the literature and in published patents? How interrelated and well known/read are the sources where literature in the field is found? How much does the industry rely on an awareness of the state of the art and subscriptions to literature for day-to day-decision-making? What do so-called standard references reveal about practices and expected results? When were these references published? DISCUSSION The T patent is presumed valid under sec. 282. While AI may challenge the examiner's decision concerning the K patent or assert invalidity by introducing new references, the AI must be capable of presenting a strong reference-based defense because it must establish by clear and convincing evidence, not merely a preponderance of the evidence, that the T patent should not have been issued had additional facts and/or references been known. Anticipation The examiner apparently decided that the K patent did not anticipate the T patent. Since anticipation analysis is comparatively easy and given the presumption of validity, AI is unlikely to succeed in challenging the examiner's decision based on this reference. However, AI may be able to establish anticipation by finding additional patent references or, more likely given the examiner's patent search, by finding references published in industry or related literature. An anticipatory reference would be preferable to the B advertisement reference of facts 4-6 because it would, standing alone, potentially serve as the required clear and convincing evidence. The publication date of any such reference must be prior to the established date of conception and reduction to practice or the critical date as discussed in the prior section. Obviousness The examiner also apparently decided that the K patent did not render the T patent obvious in combination with his or her view of the capabilities of a person of ordinary skill in the art. The AI may be able to challenge the examiner's decision based on this reference by providing additional evidence, through standard references, of the level of ordinary skill in the art. Alternately, the AI may be able to combine the B advertisement reference of facts 4-6 with the K patent of fact 3 (if the K patent discloses something that also resembles the invention but includes a gizmo) to make a case for obviousness. Similarly, the AI may be able to assert other combinations of references, new or old, if those references are within the art, if there is some suggestion within the references or within the art to combine those references, and if a person of ordinary skill in the art could be expected to be aware of and make a connection between those references. The dates of the references and the established date of conception and reduction to practice will be critical to any such defense because the inventor may be able to document that one or more references only became available to those skilled in the art after the invention was complete -- sec. 103(a). 3. POTENTIAL INTERFERENCE QUESTIONS Was the AI working on similar technology prior to 1998? When did the PO's inventor first record his or her idea and develop a prototype? When did the AI's inventor first record his or her idea and develop a prototype? How have the PO's inventor and AI's inventor conducted their development programs? How have the AI and PO pursued commercialization or a patent? DISCUSSION Assuming that the PO and the AI are diversified manufacturers working within the same product category, there is the potential that the PO and the AI were developing similar products at similar times, so that even if there weren't activities that triggered a statutory bar, there could be conflicting claims of inventorship. The timing of the respective inventor's efforts and the way in which they conducted their development programs becomes important to sec. 102(g), and may potentially stall the infringement litigation until an interference is resolved within the PTO. Evidence that could convince the court to delay the infringement suit, which would be relevant to an interference proceeding, would include evidence that the AI had conceived and reduced to practice a similar invention prior to the PO's application filing date, a lack of documentation of the PO inventor's actual conception and reduction to practice, possible evidence that the PO's inventor had not diligently reduced the invention to practice, or evidence that the PO had not diligently sought to obtain a patent so that the PO's conduct could at least plausibly be characterized as working an abandonment, suppression, or concealment of the PO's inventor's invention.