Federal Circuit Says Veterinarian’s Suggestion Covered Essential Patent Claim Element

On Thursday, May 3rd, the Court of Appeals for the Federal Circuit issued a decision in In Re VerHoef, a case stemming from a decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent during an ex parte proceeding on 35 U.S.C. § 102(f) grounds, which governs the patentability of inventions which have been derived from a person who is not listed as an inventor on the patent application. The Federal Circuit panel affirmed the PTAB’s finding that Jeff VerHoef was not the sole inventor of a mobility device for dogs because the device incorporated a suggestion made by a veterinarian working with VerHoef’s dog.

The patent application at issue in this appeal is U.S. Patent Application No. 20130152873, titled Dog Mobility Device and claiming priority to a patent application filed in December 2011; this patent application is subject to pre-America Invents Act Section 102(f). That patent application lists VerHoef as the sole inventor. In an affidavit, VerHoef stated that he had developed the mobility harness covered by the ‘873 patent application, which assists with a dog’s movement of his hind legs, after his dog Reilly had difficulty walking after a surgical operation.

VerHoef worked with a veterinarian, Dr. Alycia Lamb, to provide rehabilitative therapy for Reilly around the same time that VerHoef was working on the mobility device. VerHoef had previously acted on Dr. Lamb’s suggestion to purchase a commercially available harness to support Reilly’s hind leg, but this device caused Reilly to place the leg’s weight on his knuckles instead of his toes. VerHoef recognized that a harness connected to Reilly’s toes would solve the problem and discussing this issue with Dr. Lamb, the vet suggested a strap configured with a figure 8 structure to engage the toes might solve that problem. Incorporating the figure 8 design into the mobility device, VerHoef filed a patent application listing himself and Dr. Lamb as co-inventors. That relationship soured and VerHoef filed the ‘873 patent application on the same day that Dr. Lamb filed a substantially similar patent application listing herself as the sole inventor.

The examiner of VerHoef’s patent application issued a Section 102(f) final rejection after VerHoef submitted his affidavit because the examiner found that VerHoef did not invent the claimed subject matter. On appeal to the PTAB, the Board affirmed the examiner’s decision, finding that the figure 8 loop was an essential element of the invention and finding that VerHoef didn’t maintain “intellectual domination” over the inventive process. During oral arguments on appeal to the Federal Circuit, counsel for VerHoef argued that, while Dr. Lamb did provide the suggestion on the figure 8 loop, VerHoef maintained the work of making the invention and the mere suggestion from Dr. Lamb did not automatically raise her to the level of joint inventor.


CAFC Finds HFC Patent Valid: Honeywell Was Not “Another Inventor” under § 102(g)(2)

The following post comes from Scott Daniels, partner at Westerman,Hattori, Daniels & Adrian, LLP and Practice Center Contributor.

This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817.  The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities.  Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).

Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case.  Section 102(g)(2) provides in relevant part that a person is entitled to a patent if  “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added).  The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process.  The CAFC said no. (more…)