When a possible range of conception dates are provided for prior art under section 102(g)(2), the art is not automatically given the latest possible date, but alleged infringers must prove by clear and convincing evidence that the prior art was conceived in the United States before the patented invention.
The Federal Circuit overturned the International Trade Commission’s (the Commission's) decision that the patent at issue which covered smaller, more reliable integrated circuit packages was invalid under 35 U.S.C.§ 102(g)(2). The patentee sued the alleged infringer under Section 337 of the Tariff Act based on its importation, sale for importation, and sale in the U.S. after importation of allegedly infringing devices. At issue on appeal were the Commission’s prior art and priority date determinations under § 102(g)(2) and the alleged infringer’s alternative argument that the patent at issue was invalid as obvious over three Japanese references.
On a preliminary issue, the Federal Circuit ruled that a foreign investor may rely on the date its invention was disclosed in the U.S. as a conception date for priority purposes. The patentee did not contest this ruling, but argued that foreign inventors had to fully disclose their inventions in writing for the disclosures to be deemed “made in this country” under §102(g)(2). The court rejected this argument finding that “the content of the domestic disclosure must be specific enough to encompass the ‘complete and operative’ invention” and that “an inventor’s oral testimony to this extent is a question of proof.”
The court also overturned the Commission’s misapplication of its precedent to determine that the foreign prior art was entitled to the last possible conception date because a range of possible conception dates (here, the U.S. disclosure) were provided. The court held that this rule applied to interferences and that in validity disputes such as the dispute before the court, the alleged infringer “bore the burden of persuasion and was required to submit not just preponderant evidence but clear and convincing evidence that the [relevant prior art] was conceived in the United States before the invention of the [patent at issue]. The alleged infringer’s range of dates of possible U.S. disclosure were not enough for it to meet its burden of proof on invalidity.
A copy of the opinion can be found here.