Plaintiff’s Motion for Partial Summary Judgment on § 102(f) and § 102(g) Defenses Denied

Chemfree Corp. v. J. Walter, Inc. et al., Case No. 1:04-cv-03711 (N.D. Ga. June 10, 2008) (Camp., J.) (Part III)

(Read Part I discussing Judge Camp’s Order on inequitable conduct and Rule 11 and Part II discussing his Order on the ethical considerations of simultaneously representing a party and a fact witness.)

This case involves five patents-in-suit relating to environmentally friendly washers for mechanical parts. Defendants asserted that the patents are invalid under Section 102(f) and Section 102(g). Section 102(f) relates to improper inventorship and prohibits a person from obtaining a patent if he did not invent the claimed subject matter, but instead derived the invention from another. Section 102(g) relates to prior invention in this country by another who had not abandoned, suppressed, or concealed his invention. These sections are relied on relatively infrequently by alleged infringers because in most cases, a prior invention is disclosed in a publication or through public use and is asserted under Sections 102(a) or (b).

Sufficient Evidence of Prior Conception: Plaintiff argued that it was entitled to judgment as a matter of law on Defendants’ 102(f) and 102(g) claims. Upon review of the facts, the Court concluded that genuine issues of material fact remained as to each defense. Specifically, the Court found evidence suggesting that one of the named inventors of the patents-in-suit conceived of the entire claimed invention (meaning he should have been named as the sole inventor) and communicated this concept to the Plaintiff prior to the filing of the patents-in-suit. This evidence, which consisted of the inventor’s testimony and various schematics and descriptions that pre-dated the applications for the patents-in-suit, was deemed sufficient for Defendants’ 102(f) and 102(g) defenses to survive summary judgment.

Local Patent Rules Interpreted: In rejecting Plaintiff’s procedural challenge to the Defendants’ 102(f) invalidity contentions, Judge Camp interpreted the requirements of Local Patent Rule 4.3.

• LPR 4.3(a)(1)(ii) provides that a party must identify the prior art relied on under Section 102(f). The Court held that Defendants met this requirement by identifying a potential witness and referring to supporting exhibits that were alleged to “describe the circumstances under which the inventions of the patents-in-suit were derived.”


• LPR 4.3(a)(3) requires a party to identify any combination of prior art references and the motivation to combine the references “[i]f the disclosing party contends that a combination of items of prior art makes a claim obvious.” The Court held that this requirement applies only to claims of obviousness, not to claims of derivation under Section 102(f).


• LPR 4.3(a)(4) requires a party to provide a chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found. The Court held that this requirement did not apply to the Defendants’ derivation claim because the Defendant was relying on the activities of an individual, not on a specific prior art reference. (The implication is that the requirement would apply to a derivation claim based on prior art references.)