Invitrogen Corp. v. Biocrest Mfg., LP
424 F.3d 1374 (2005)
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Rule of Law:
An inventor's confidential, internal use of a patented process for its own commercial research and development purposes does not constitute a "public use" under 35 U.S.C. § 102(b) sufficient to invalidate the patent, so long as the invention is not sold and no products made by the process are commercially sold.
Facts:
- Invitrogen developed and patented a process for producing transformable E. coli cells of improved competence.
- More than one year prior to filing its patent application (before the critical date), Invitrogen used this process within its own laboratories.
- The use of this process was kept confidential and was known only to individuals within the company.
- Invitrogen used the cells produced by this process to support other internal research projects within the company.
- Before the critical date, Invitrogen did not sell the process itself, nor did it sell any of the cells or other products produced using the process.
Procedural Posture:
- Invitrogen Corporation sued Stratagene in the U.S. District Court for the Western District of Texas for patent infringement.
- The district court initially granted summary judgment of non-infringement to Stratagene based on its claim construction.
- Invitrogen appealed to the U.S. Court of Appeals for the Federal Circuit, which reversed the district court's claim construction and remanded the case for further proceedings (Invitrogen I).
- On remand, the district court found that Stratagene infringed the patent, but granted summary judgment that the patent was invalid under the public use bar of 35 U.S.C. § 102(b) (Invitrogen II).
- Invitrogen appealed the district court's invalidity finding, and Stratagene cross-appealed the findings on infringement and indefiniteness, to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does an inventor's confidential, internal use of a patented process for its own commercial research purposes, without selling the process or any products made by it, constitute a 'public use' under 35 U.S.C. § 102(b) that would invalidate the patent?
Opinions:
Majority - Rader, Circuit Judge.
No, an inventor's confidential, internal use of a patented process for its own commercial research purposes, without selling the process or products made by it, does not constitute a 'public use' under 35 U.S.C. § 102(b). A statutory bar for public use arises only if the use was (1) accessible to the public, or (2) commercially exploited. Here, Invitrogen's use was not accessible to the public because it was maintained in secrecy within the company. Furthermore, it was not 'commercially exploited' in the manner contemplated by the statute. While the process was used to further other internal projects, which provided a commercial benefit, this is distinct from using a secret process to produce goods or services that are sold to the public. Citing Metallizing Engineering, the court noted that commercial exploitation involves using the invention competitively, such as selling products made by a secret process to customers. Since Invitrogen did not receive compensation for exploiting its cells and did not sell any products derived from them, its internal, secret use was insufficient to create a public use bar.
Analysis:
This decision significantly clarifies the scope of the "public use" bar under patent law, especially for inventions used internally by a company. It establishes that mere internal use for a commercial purpose, such as research and development, does not automatically trigger the § 102(b) bar. The key distinction is between an internal, confidential use that may provide some business advantage and external 'commercial exploitation' involving sales to the public. This provides inventors with more security, allowing them to use and refine their inventions in-house for a period without starting the one-year patent-filing clock, as long as they maintain secrecy and do not place the invention or its products into the stream of commerce.
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