By Jason Rantanen
Amkor Technology, Inc. v. International Trade Commission (Fed. Cir. 2012)
Panel: Newman, Plager, and Linn (author)
Although soon to be eliminated as prior art for new patents, 35 U.S.C. § 102(g) will continue to be a potentially important category of prior art for the near future as pre-AIA patents will remain the prevailing type of patent in infringement suits for at least the next decade. In Amkor, the Federal Circuit answered an important question about 102(g): whether an oral disclosure of an invention to the United States is sufficient to constitute prior art. It answered in the affirmative, with a key caveat.
The version of 102(g) involved in this appeal states that:
A person shall be entitled to a patent unless:
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes . . . that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. . . .
35 U.S.C. § 102(g) (2006) (emphasis added). The appeal turned on the interpretation of "made in this country": specifically, whether it encompassed an oral disclosure to a person in the United States of an invention conceived of abroad.
In concluding that an oral communication was sufficient, the CAFC issued several notable holdings. First, it extended the holding in Scott v. Koyama, 281 F.3d 1243 (Fed. Cir. 2001), that interpreted a previous version of 102(g) to allow the inventor of an invention of foreign origin to "rely on the date that the invention was disclosed in the United States as a conception date for priority purposes" to apply to the current version of 102(g)(2).
Second, the CAFC held that an oral communication could be a sufficient disclosure for 102(g) purposes. "While this court’s limited precedent on this issue establishes that writings can satisfy the full domestic disclosure requirement, the cases do not establish any per se requirement that such disclosure must be in writing." Slip Op. at 12. However, the "content of the domestic disclosure must be specific enough to encompass the "complete and operative invention...and an inventor's oral testimony to this extent is a question of proof." Slip Op. at 13 (emphasis in original). Thus, corroboration of the testimony is necessary.
The CAFC did not reach the issue of corroboration of the specificity of the disclosure, instead rejecting the accused infringer's argument based on the burden of persuasion and evidence necessary to invalidate an issued patent. The accused infringer could only show a range of dates of possible U.S. disclosure that overlapped with the patent holder's possible conception dates. "Such a showing, at best, establishes that the ASAT inventor might have conceived of the invention first. Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent." Slip Op. at 16 (emphasis in original).
Obviousness: The court also affirmed the Commission's claim constructions and rejected anticipation and obviousness arguments based on another prior art reference. In reaching this conclusion, the court pointed to a lack of any evidence of a motivation to combine or reason to modify the prior art:
Because the fused lead attached to the die pad in JP-456 prevents the lip from extending “fully around the circumference of a die pad” or “fully around the die pad” as required by the claims, Carsem was required to present evidence that one of ordinary skill in the art at the time of the invention would have been motivated or found reason to remove the fused lead from the JP-456 reference, or that common sense would have led one of skill in the art to remove the fused lead based on a known problem, design need, or market pressure. KSR Int’l v. Teleflex, 550 U.S. 398, 418-20 (2007).
Slip Op. at 21. While this language could be interpreted as limiting "common sense" to the three specific scenarios identified in KSR v. Teleflex, a better interpretation in my view is that Carsem simply failed to provide any explanation as to why a person of ordinary skill in the art would have modified the prior art, including the three specified examples. Anything more rigid would be inconsistent with the flexible approach to obviousness mandated by KSR.