Baxter International, Inc. v. Cobe Laboratories, Inc.
88 F.3d 1054 (1996)
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Rule of Law:
Public use of an invention by a third party who is independent of and not controlled by the patentee, more than one year prior to the patent application's filing date, constitutes an invalidating public use under 35 U.S.C. § 102(b). This use is not negated by the experimental use exception when the third party is testing for their own purposes rather than to perfect the invention on behalf of the inventor.
Facts:
- Dr. Jacques Suaudeau, a researcher at the National Institutes of Health (NIH), required a centrifuge that would not damage blood platelets for his heart preservation research.
- Suaudeau sought advice from Dr. Yoichiro Ito, another NIH scientist, who designed a sealless centrifuge to solve the problem.
- Suaudeau had the centrifuge built at the NIH machine shop from Ito's drawings and began using it in his laboratory before May 14, 1975.
- The centrifuge immediately worked for its intended purpose of separating blood components.
- Suaudeau's laboratory was in a public building, and he made no effort to keep the centrifuge confidential; co-workers and visitors observed it in operation and were under no duty of secrecy.
- Suaudeau's subsequent tests were to fine-tune the centrifuge's performance for his specific research needs, not to test its basic functionality.
- Neither Suaudeau nor Ito had any relationship or connection with Herbert M. Cullis, the inventor named in the patent at issue.
- Cullis filed the application for the patent on the sealless centrifuge on May 14, 1976.
Procedural Posture:
- Baxter International, Inc. sued COBE Laboratories, Inc. in the U.S. District Court for the Northern District of Illinois for patent infringement.
- COBE filed a motion for summary judgment, arguing that Baxter's patent was invalid under 35 U.S.C. § 102(b) due to a prior public use.
- The district court (a court of first instance) granted COBE's motion for summary judgment, holding the patent invalid.
- Baxter, as the appellant, appealed the district court's decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a third party's use of an invention in a publicly accessible, non-confidential laboratory setting, for the third party's own research purposes and without the inventor's control or involvement, constitute an invalidating 'public use' under 35 U.S.C. § 102(b) if it occurs more than one year before the patent application filing date?
Opinions:
Majority - Lourie, Circuit Judge.
Yes, a third party's use of an invention in a publicly accessible, non-confidential setting for their own purposes constitutes an invalidating public use. The court defined 'public use' to include any use of the invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor. Suaudeau’s use meets this definition because his NIH laboratory was accessible to others, visitors observed the device, and no one was under a duty of confidentiality. The experimental use exception does not apply because it is intended to allow an inventor time to test and perfect their invention. Here, Suaudeau was not acting under the direction or control of Cullis, the inventor. Furthermore, Suaudeau's experiments were to adapt the already-working device for his own particular purposes, not to test or perfect the basic features of the invention as claimed in the patent.
Dissenting - Newman, Circuit Judge.
No, a third party's private laboratory research use, even after a reduction to practice, should not be considered an invalidating 'public use' against another's patent. The majority's holding creates a new and mischievous category of 'secret' prior art that is undiscoverable through any diligent search. This decision distorts the statutory scheme of 35 U.S.C. § 102, which generally defines prior art as publicly available information. Holding that private, unpublished laboratory work constitutes a 'public use' creates an omnipresent cloud over the validity of issued patents, undermining the policy goals of the patent system.
Analysis:
This decision significantly clarifies the scope of the 'public use' bar under 35 U.S.C. § 102(b), establishing that non-commercial, research-based use by even a single third party can invalidate a patent if done openly. It sharply curtails the experimental use exception, linking it almost exclusively to activities performed by or under the direct control of the inventor for the purpose of perfecting the invention. The case creates a substantial risk for inventors, as the independent, non-secretive research activities of unknown third parties can retroactively destroy patent rights, thereby increasing uncertainty in the patent system.
