A patent for a product, while presumed valid, is rendered invalid if a challenging party proves by clear and convincing evidence that the product in public use or on sale prior to the critical date, one year prior to the patent filing, [was] embodied [by] the claimed invention.
The patentee sued alleging infringement of various claims of its patent for software that allows users on a network to communicate and collaborate on a large scale. A jury returned a verdict in favor of the alleged infringer, finding that the asserted claims of the ‘761 patent were invalid on two independent grounds: 1) that the invention was subject to an invalidating sale; and 2) that the invention was subject to an invalidating public use. The district court denied the patentee’s post-trial motion for judgment as a matter of law or for a new trial.
On appeal, the Federal Circuit affirmed the district court’s denial of the patentee’s motion. The central issue was whether the software that was publicly used and on sale prior to the critical date under 35 U.S.C. § 102(b), one year prior to the patent filing date, fell within the scope of the asserted claims of the patent, rendering them invalid. Applying the law of the Third Circuit, the Federal Circuit upheld the district court’s denial of judgment as a matter of law, as the record contained substantial evidence that the software on sale and in public use prior to the critical period fell within the scope of the asserted claims, and denial of a new trial, as the district court did not abuse its discretion in concluding that the verdict was not against the great weight of the evidence. Both district court findings were appropriate where the patentee failed to cite any contemporaneous evidence indicating that the software that existed prior to the critical date was substantively different from the post-critical date software and where, in fact, the evidence in the record pointed to the contrary.
A copy of the opinion can be found here.