Though the patented technology hardly matters in this instance, the patent at issue is Invitrogen's 4,981,797, which "involves the introduction of recombinant DNA molecules into receptive E. coli cells to improve the cells’ “competence,” i.e., their ability to take up and establish exogenous DNA and replicate this DNA as they multiply".

The basic tenet of U.S. patent law is that an original inventor gains an exclusive right to the invention. U.S. Const. art. I, § 8, cl. 8. Thus, an inventor’s own work cannot be used to invalidate patents protecting his own later inventive activities unless, inter alia, he places it on sale or uses it publicly more than a year before filing. 35 U.S.C. § 102(b); see also In re Katz, 687 F.2d 450, 454 (CCPA. 1982); In re Facius, 408 F.2d 1396, 1406 (CCPA 1969) (“[C]ertainly one’s own invention, whatever the form of disclosure to the public, may not be prior art against oneself, absent a statutory bar.”). Section 102(a) denies any applicant for a patent an exclusive right to any invention already “known or used by others in this country” (emphasis added). On the other hand, § 102(b) can apply to the inventor’s own actions. Section 102(b) expressly requires a “public use” in this country for a statutory bar to arise based on use by the inventor himself. See Pennock v. Dialogue, 27 U.S. 1, 23 (1829) (an applicant must be the “first and true” inventor to obtain a patent, but “if he shall put [the invention] into public use, or sell it for public use before he applies for a patent . . . this should furnish another bar to his claim”); Katz, 687 F.2d at 454 (“Disclosure to the public of one’s own work constitutes a bar to the grant of a patent claiming the subject matter so disclosed (or subject matter obvious therefrom).”). Further, to qualify as “public,” a use must occur without any “limitation or restriction, or injunction of secrecy.” Egbert v. Lippmann, 104 U.S. 333, 336 (1881); In re Smith, 714 F.2d 1127, 1134 (Fed. Cir. 1983).

35 U.S.C. § 102(b) states that a person shall be entitled to a patent unless “the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b) (2000) (emphasis added). In Pfaff v. Wells, the Supreme Court considered the meaning of the phrase “the invention” in § 102(b). Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998). The Court explained that analysis under § 102(b) involves two separate inquiries, one evaluating whether “the invention” was complete and ready for patenting, and the other evaluating whether that invention was “on sale.” Id. at 66-67.

In Pfaff, the Court specifically considered the “on sale” portion of the § 102(b) statutory bar language, but in so doing, the Court noted that both the “on sale” and “public use” bars were based on the same policy considerations. Id. at 64. The Court noted that both the on sale and public use bars of § 102 stem from the same “reluctance to allow an inventor to remove existing knowledge from public use.” Id. In Pfaff, the Court applied the separate components of its test to facts raising the “on sale” issue. Nonetheless, the Court’s analysis of the statutory term “invention,” or the ready for patenting prong, applies to both of the other parts of section 102(b), “on sale” and “public use.” Thus, the Supreme Court’s “ready for patenting test” applies to the public use bar under § 102(b). A bar under § 102(b) arises where, before the critical date, the invention is in public use and ready for patenting. This court notes that in applying the Pfaff two-part test in the context of a public use bar, evidence of experimental use may negate either the “ready for patenting” or “public use” prong. See EZ Dock, 276 F.3d at 1352 (recognizing an overlap of the experimental use negation and the ready for patenting standard).

The proper test for the public use prong of the § 102(b) statutory bar is whether the purported use: (1) was accessible to the public; or (2) was commercially exploited. Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Thus, the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as, inter alia, the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on members of the public who observed the use; and commercial exploitation, see Allied Colloids, Inc. v. Am. Cyanamid Co., 64 F.3d 1570, 1574 (Fed. Cir. 1995). That evidence is relevant to discern whether the use was a public use that could raise a bar to patentability, but it is distinct from evidence relevant to the ready for patenting component of Pfaff’s two-part test, another necessary requirement of a public use bar.

The classical standard for assessing the public nature of a use was established in Egbert. In Egbert, the inventor of a corset spring gave two samples of the invention to a lady friend, who used them for more than two years before the inventor applied for a patent. Egbert, 104 U.S. at 335. The invention was sewn into a corset and therefore, by its nature, not visible to the public. Thus, the Court had to decide whether such an invention could nevertheless be “public.” Although he later married the lady friend, the inventor in Egbert received no commercial advantage. Nonetheless, on these facts, the Court established the principle that it was indeed “public” use to give or sell the invention “to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy.” Id. at 336.

As the Supreme Court pointed out in Pfaff, supra, secrecy of use alone is not sufficient to show that existing knowledge has not been withdrawn from public use: commercial exploitation is also forbidden. Invitrogen’s invention was not given or sold “to another,” or used to create a product given or sold to another, and was maintained under a strict obligation of secrecy. Without more, these circumstances are insufficient to create a public use bar to patentability.

The Supreme Court decided Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939), in accord with the basic principle of Egbert... “[T]he ordinary use of a machine or the practice of a process in a factory in the usual course of producing articles for commercial purposes is a public use.” Id. at 20. Invitrogen, on the other hand, did not sell its invention or any products made with it, and kept the invention entirely confidential within the company, distinguishing this case from Electric Storage Battery.

While there are instances in which a secret or confidential use of an invention will nonetheless give rise to the public use bar, this is not such a case. In Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946), the patentee used a secret process to recondition worn metal parts for its customers before the critical date. The Second Circuit correctly held “that it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or [a patent].”...The fact that Invitrogen secretly used the cells internally to develop future products that were never sold, without more, is insufficient to create a public use bar to patentability.

Invitrogen's patent was thus found valid.