Bruckelmyer v. Ground Heaters (CAFC 05-1412)

Mark Bruckelmyer sued Ground Heaters for infringing 5,567,085 and 5,820,301, patented methods of thawing frozen ground so that a layer of concrete can be laid on top of the ground. Ground Heaters found a buried treasure: invalidating prior art. But the trial court denied summary judgment, because it was a questionable matter of fact as to whether the reference was enabling (sufficient).

The prior art in question were abandoned drawings related to Canadian patent 1,158,119. '119 was filed 13 years prior to Bruckelmyer's patents, and issued in 1983. Bruckelmyer's '085 patent was filed in 1995.

The reason the trial court initially denied summary judgment was the issue of whether '119 was enabling: whether one skilled in the art could have practiced the technology without undue experimentation based solely upon the prior art reference.

In reaching its decision to deny summary judgment, the court determined that the ’119 application was a “printed publication” under § 102(b). Id. The court noted that the ’119 patent and its application were available for public inspection at the Canadian Patent Office in Hull, Quebec, more than one year before the priority date of the patents in suit. Id. The court also determined, albeit in a conclusory manner, that “the contents of the file wrapper [were] sufficiently accessible to the relevant and interested public as to constitute a printed publication for purposes of § 102(b).” Id.

In view of the court’s determination that figures 3 and 4 of the ’119 application constituted § 102(b) prior art, Bruckelmyer filed a stipulation in the court conceding that those figures rendered the claims of the patents in suit invalid. Final Decision, slip op. at 6. In doing so, Bruckelmyer removed from dispute any question of fact as to whether those figures were enabling to a person of ordinary skill in the pertinent art. Ground Heaters filed a renewed motion for summary judgment of invalidity, which the court granted on May 13, 2005.

Bruckelmyer appealed, arguing that the damning figures (3 & 4) originating from the '119 patent application were frozen underground, not "publicly accessible." Figures 3 & 4 had been dropped during prosecution, and were not part of the issued patent. The figures were only available from the Canadian patent office in Quebec as part of the patent file history.

The “printed publication” provision of § 102(b) “was designed to prevent withdrawal by an inventor . . . of that which was already in the possession of the public.” In re Wyer, 655 F.2d 221, 226 (CCPA 1981). Whether a given reference is a “printed publication” depends on whether it was “publicly accessible” during the prior period. Id. A given reference is “publicly accessible”

upon a satisfactory showing that 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 and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.

Id. (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 745 (S.D.N.Y. 1966)). Although Ground Heaters does not assert that the ’119 application with figures 3 and 4 was actually disseminated during the relevant prior art time frame, Bruckelmyer has conceded that figures 3 and 4 of the application were in the patent file and were enabling. Thus, the only question that remains for us to answer is whether a person of ordinary skill in the art interested in the subject matter of the patents in suit and exercising reasonable diligence would have been able to locate the ’119 application. If the answer to that question is “yes,” then the ’119 application, including figures 3 and 4, was “publicly accessible” and the patents in suit are invalid.

Controlling in our determination whether the ’119 application was “publicly accessible” is our predecessor court’s decision in In re Wyer. In that case, an Australian patent application was laid open for public inspection and an abstract of the application was published by the Australian Patent Office more than two years before the filing date of the corresponding U.S. patent application at issue in that case. Id. at 222.

In this case, the published ’119 patent was considered by the court even more of a roadmap to the application file than the abstract was in Wyer.

Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were “removed” from the application during prosecution, and thus a person of skill in the art would not have looked past the ’119 patent in searching for the subject matter of the patents in suit. As a matter of undisputed fact, the ’119 patentee did not physically remove figures 3 and 4 from the file wrapper, but merely cancelled the subject matter figures from the patent during prosecution. The figures were thus still in the file, although they did not appear in the issued patent... [I]t does not matter that figures 3 and 4 do not appear in the ’119 patent because no reasonable trier of fact could find that there was not sufficient disclosure in the patent to allow one skilled in the art to locate the figures contained in the application.

Bruckelmyer’s reliance on In re Cronyn to argue that the ’119 application was not “publicly accessible” is misplaced as that case is factually distinguishable. In re Cronyn, we determined that the student theses at issue were not meaningfully catalogued or indexed, and thus they were not “publicly accessible.” 890 F.2d at 1161. The significance of whether these theses were meaningfully catalogued or indexed was whether one skilled in the art could locate them.

So, according to the court majority, a foreign patent file wrapper of an issued patent constitutes accessible prior art.

The ground was thin enough for Judge Linn to dissent, arguing that a patent file history is obscure, particularly when the issued patent makes only the briefest mention of what in another case is the relevant prior art.

The majority distinguishes In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) by concluding that the issued ’119 patent serves as an index to the ’119 application... In my opinion, it is not entirely sound to view the issued ’119 patent as a roadmap to the underlying file history. An abstract, which is similar in many respects to a library index card, is a brief statement of the contents of something else; i.e., the more extensive text to which it refers. It is intended to serve as a tool to steer researchers to the content of a larger and more comprehensive work. The abstract contained in an issued patent, for example, is a summary of the technical information contained in the specification. On the other hand, the printed text of an issued patent—including the abstract, written description, and claims—is not necessarily looked to as a summary or index of the underlying file history... [I]t is my view that the limited reference in the issued ’119 patent to “thawing frozen ground” did not put the public in possession of the canceled drawings in the ’119 application.