A recent Appeals Court ruling
highlights the importance of performing
your own search for prior art even
though the Patent Office rules don't
require you to. In the case of Beckson
Marine v. NFM, Beckson may have won a
pyrrhic victory when the lower court's
ruling of non-infringement by NFM was
vacated. What Beckson hadn't counted on
was one of NFM's products becoming
overlooked prior art
Beckson is the licensee of a 1980
patent on an improved
"portlight" - a window for a
boat - that included a self draining
feature to prevent an accumulation of
water that might enter the boat when the
portlight is opened. The claim language
used the term "drain groove"
to describe this feature.
NFM produced an oval portlight with a
covered drain beneath the sill and a
newer(1995), rectangular portlight with
open drains. Beckson asserted its patent
against both of NFM's portlights when
the rectangular product hit the market.
NFM won a non-infringement decision
in District Court for both products
based on the Court's interpretation that
a "groove" was long and
narrow; NFM's drains were, apparently,
neither long enough or narrow enough to
be infringing "grooves". The
Appeals Court, however, disagreed with
the District Court, pointing out that
the ordinary meaning of
"groove" does not require it
to be long and narrow, handing Beckson
an apparent victory.
Unfortunately for Beckson, NFM also
sought to have the patent ruled invalid
based on the revelation in the trial
that its oval portlight pre-dated the
patent's critical priority date, thus
becoming invalidating prior art. In this
aspect of the case, Beckson
"won" at the District Court
level [the district court held that
because the portlight did not infringe,
it could not be the basis for a judgment
of invalidity], but lost at the Appeals
level ["To the contrary,
any...prior art plays a role in the
determination of the
patentability..."].
The Appeals Court used this case to
restate the purpose of examining prior
art. "Invalidity often entails
evidence that prior art renders the
patent either anticipated
or obvious,." What is
the difference?
Anticipation is a question of
fact and means lack of novelty.
"To anticipate,
every...limitation of the claimed
invention must be found in a single
prior art reference."
Emphasis added
Obviousness is a legal
conclusion based on findings of fact.
To be obvious, "the subject
matter as a whole would have been
obvious at the time the
invention was made to a person
having ordinary skill in the art...".
Emphasis added.
Returning to the sad case of Beckson
v. NFM, remember that Beckson originally
asserted that both the 1995 rectangular
portlight and the older oval portlight
literally infringed thir patent. So,
while the Appeals Court, on the one
hand, kept Beckson's infringement suit
alive, it, on the other hand, pointed
out that if the ovel portlight literally
infringes on the patent it is likely
that it invalidates the patent by
anticipation! "that which will
[literally] infringe, if later, will
anticipate, if earlier."
Although Beckson's allegation of
infringement before it realized that the
oval portlight was prior art is not an
admission of invalidity, we can be sure
that NFM will take up Beckson's own
arguments and use them against their
creator. And of course, even if
anticipation is not found, invalidity
due to obviousness might.
The anticipated moral here is
obvious: invest the time up front to
identify prior art yourself.
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Nothing in the
preceding article should be construed as
legal advice. TechRoadmap Inc. serves as
an interface between companies and their
legal counsel.
