#22748 1. PRIOR ART CATEGORY OF B ARTICLE: §102(?) [QUESTION] Who are the inventors of T and when did they invent the claimed subject matter? Where else was M published before the 1996 Scotland publication? Was M or another of B's advertisements also published in the United States, and if so when? What other business conduct did B make in the United states regarding their product? How are B and PO connected? [DISCUSSION] _102(a)_: Since M was "published in Scotland" (Fact 4) before our US filing date (Facts 2,4), it _may_ be prior art under 102(a) depending on the inventor's date of invention. In other words, §102(a) states that: A person shall be entitled to a patent unless ? (a) the invention was - known or used by others in this country, or ? - described in a printed publication in this or a foreign country, - before the invention thereof by the applicant for patent? Assuming there is no doubt that M was published in 1996 in Scotland, it would be a "printed publication in ? a foreign country". The open issue is whether the publication in Scotland was before the invention of T. _A_ Therefore, we should find out who the inventors are (look at face of patent) and interview them to find out when they conceived of the claimed subject matter, if there was any actual reduction to practice, and if/when they were diligent. While we can rely on our US filing date to establish a constructive reduction to practice and date of invention of 1998, the burden of production of an earlier date of invention to remove B as prior art under 102(a) will be on us. To remove the reference as 102(a) prior art, we can show either: i. an earlier conception plus diligence to a later reduction to practice, or ii. an earlier reduction to practice. See Rule 131. (While this applies to swearing behind a reference during prosecution, the same rules should also be applicable to litigation. See Newman's dissent, pg. 143.5, and Rader's opinion, pg. 143.2). As a minor point, the underlying work of B may be used as 102(g) prior art if it was in the United States and there was no abandonment, suppression, or concealment. See 102(g)(2). There will be lots of factual questions involved in this issue, especially regarding corroborating conception and diligence (attorney diligence or inventor diligence). Hopefully, outside counsel prepared the patent since they will probably have better records for attorney diligence. Thus, depending on whether we have an earlier date of invention, with enough documentation, it may be possible to remove B from 102(a) prior art. _B_ A related issue is whether there are any earlier publications of M, or the advertisement itself, anywhere in the world. If so, this may require an earlier date of invention to remove the reference. Further, it may affect the 102(b) issue if they were in the United States as discussed below. _102(b)_: If M or B's advertisement was published in the United States, there may be a 102(b) bar, depending on whether it occurred more than 1 year before the US filing date of 1998 (Fact 2). Further, the advertisement could be considered to place the invention "on sale" if it somehow reached the United States, which seems likely given the fact that you happened to be reading it (Fact 4). There may also have been other advertisements by B that describe the same or similar subject matter that were published in the US, or would constitute placing the subject matter "on sale". Further still, B may have conducted actual sales in the US of the thing in the advertisement. However, as attorney's for the PO, we may not want to spend too many resources finding all of this additional information since the burden is on the AI to prove invalidity. Rather, we should concentrate our efforts on proving the earliest possible date of invention knowing that such prior art may exist, and hoping only 102(a) applies. If the AI happens to find a 102(b) reference, then we will have to deal with it (see 103 discussion below). __Relation between PO and B_: If the PO and B are somehow connected (e.g., in business partnerships, common ownership, supplier relationship, ?) then we may want to look into all of the above issues since our own actions may have created a 102(b) bar. We do not want to assert a patent we should have known was invalid due to our own actions. 2. OBVIOUSNESS: §103 [QUESTION] What is shown in the K and M references? What is the story behind the PO's invention? How does G make our invention great? [DISCUSSION] _The AI is stuck with 103_: Even if the AI can use M as prior art (under 102(a), or 102(b), etc.), they will not be done yet. As the Facts state, the M reference does not contain a G, but all of the claims do (Facts 5,6). As such, the AI will have to rely on §103 (obviousness) since they do not have a single piece of prior art that shows all of the claimed features (I am assuming K also does not show all claimed elements since it was the only reference considered by the Examiner (Fact 3). Further, even if this assumption is wrong, the AI's still have a tough row to hoe. See below). _The Sales Pitch_: To defend against a §103 validity attack, we need to know the story behind the invention. We would want to know about the "secondary considerations" of _Graham_. For example, we can look for evidence that our product a smash hit commercially, and then try to find a nexus between that success and a claimed feature. Also, we can determine if our claims solve some deficiency that has persisted in the prior art (long-felt need), or that others have tried to solve but failed. This argument would be most persuasive if the Gizmo somehow is the "key" element that is not shown in any of the cited references. Since we have the burden of going forward with evidence of secondary considerations, we have to make sure to get this evidence in the record. _Deficiencies of the Prior Art_: Even if we don't have a great story to tell, we still have other defenses to a §103 attack. For example, if the AI tries to combine K and M, there must be some motivation in the references (or in knowledge in person of ordinary skill in the art) to make the combination, otherwise it is simply a mosaic. Also, K and M may be from different fields of endeavor, or solving different problems from the present invention, and thus we can use _in re Clay_ to argue the prior art is non-analogous. Further, depending on the disclosure of K, we may be able to argue that M and K teach away from each other (180 degrees). For example, maybe the K reference says that you never want to add a Gizmo to a product of the Blip Co. for fear it will cause a failure of the blip. This would severely undercut the AI's defense of invalidity under §103. Finally, we would like to know who is a person of ordinary skill in the art (whatever we decide the "art" is). As the PO, we would like this to be someone with very _low_ skill to make it hard for the AI to show obviousness, especially using only a single reference. Here, the AI has the burden of proving the three factual elements under _Graham_ that would show by clear and convincing evidence that the claimed invention is obvious (see §282): scope and content of prior art, difference between the claims as a whole and the prior art, and the level of skill in the art. _If we can keep out M_: Assuming that the M reference is not prior art (i.e., it does not fall into any 102 categories), the biggest concern is if there is some other prior art. In other words, the only other art in the Facts is reference K (Fact 3). And since the Examiner already considered it, the AI will be a bit disadvantaged. I.e., the presumption of validity is not "strengthened", but is facilitated. This would also apply if B's advertisement does not show anything more than reference K (i.e., it is just cumulative). If it does not add anything, then the AI is in a similar position even if M is prior art. 3. AI'S CONDUCT [QUESTION] How did the AI develop their product? When did they first develop their product and first sell their product. [DISCUSSION] The Copying Story: Assuming the AI will be stuck with a 103 argument (Facts 5,6), at best, we have a chance to tell the copying story. We would like to know whether the AI copied our product, studied it, or reverse engineered it (like _Panduit_). The AI's Conduct as Prior Art: Similarly, we would like to know if the AI happened to create the claimed invention on their own, and if so when. The facts show that we just recently obtained our patent in 2001 (Fact 2) and that we have already filed for infringement last week in 2002 (Fact 1). As such, the AI presumably has been making, using, selling? for at least a little while. The sales of what we have alleged to infringe may antedate our filing date, or our date of invention, and invalidate the claims under 102(b) or 102(a), for example. In other words, if the AI publicly used their product more than a year before 1998, there may be a 102(a,b) bar. If there were sales, use, or some other public disclosure by the AI, we would be in the position of Evans (see CP 74.1) and be burned by the adage: "that which infringes if after, anticipates if before". Further, even if the AI had not placed his infringing product "on sale", or somehow published it, their activities may still be prior art under 102(g). Thus, we would want to know when they first reduced their product to practice, when it was first conceived, whether it worked, etc. See 102(g)(2) and _Dow_ CP 144. In other words, even if the AI's had not sought a patent, if they reduced to practice before us and did not abandon, suppress, or conceal, their activities may be invalidating prior art. And since we have alleged that their product infringes, if they can beat our dates then that activity could invalidate our patent