Bruckelmyer v. Ground Heaters, Inc. (Fed. Cir. 2006)

Under certain circumstances, the Court of Appeals for the Federal Circuit announced that an enabled disclosure (e.g., an enabled figure) made in a foreign patent application may constitute a “printed publication” under the Patent Act even if the disclosure is cancelled prior to issuance.

In the instant case, the plaintiff-patentee alleged that a former licensee had infringed his patented method directed to thawing frozen ground so that a layer of concrete can be laid on top of the ground. The accused infringer claimed that the patent was invalid based on two cancelled fi gures of an issued Canadian patent. While noting that the figures were cancelled prior to issuance of the Canadian patent, the trial court explained that the patent and its application (containing the fi gures) were available for public inspection at the Canadian Patent Offi ce more than one year before the priority date of the plaintiff-patentee’s patent and were therefore sufficiently accessible to constitute a printed publication. Because the plaintiff-patentee stipulated that the fi gures rendered the claims obvious, the patent was found invalid. The patentee appealed to the Federal Circuit.

On appeal, the Federal Circuit explained that “whether a given reference is a ‘printed publication’ depends on whether it was ‘publicly accessible’ during the [appropriate] period. A given reference is ‘publicly accessible’ upon a satisfactory showing that [it] 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.” The Court noted that the Canadian patent teaches an alternate use of the disclosed invention: thawing frozen ground in the manner claimed by the plaintiff-patentee. Further, the Canadian patent was classifi ed, indexed, and filed with its application in the Canadian Patent Office. For these reasons, the majority concluded that one having ordinary skill in the art could, while exercising reasonable iligence, use the Canadian patent as a roadmap to locate the cancelled figures in the application.

In dissent, Judge Linn wrote separately to voice his concern that “it is not entirely sound to view the issued [Canadian] patent as a roadmap to the underlying file history.” Linn explained that, while prosecution history files are regularly examined to assist the public in matters of claim scope, it is generally expected that an issued patent is coextensive with its underlying application from which it originates. Notwithstanding the broad recitation that the Canadian invention could be used to thaw frozen ground, Linn described the fact that its prosecution history contains two cancelled fi gures as “sheer happenstance.”

After affirming the decision below, petitions to rehear the case and to review the panel decision en banc were declined. Judge Newman, however, wrote separately in the denial of the Court’s denial of the petition for rehearing en banc and echoed the thrust of Linn’s dissent. Specifically, Newman commented that the cancelled drawings were not available in multiple locations, could not be ordered from the Canadian Patent Office, were not available in any database or any library, and that no index, catalog or abstract suggests their existence or their content. Newman further postulated that one could not reasonably be expected to personally visit the Canadian Patent Office in Hull, Quebec, examine this particular prosecution history on the “off chance that its inventor might have invented something relevant to the search and then cancelled it from the application before grant.”