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No Public Use Where Samples Were Distributed to Third Parties Who Understood the Need for Secrecy

January 12, 2015

No Public Use Where Samples Were Distributed to Third Parties Who Understood the Need for Secrecy

January 12, 2015

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Delano Farms Co. v. California Grape Table Comm’n, __ F.3d ___ (Fed. Cir. Jan. 9, 2015) (Prost, BRYSON, Hughes) (E.D. Cal.: Haddon) (3 of 5 stars)

The Federal Circuit affirms finding of no invalidating public use under section 102(b). The patentee (USDA) held an open house before the critical date at which it displayed the patented grape varieties.  Visitors weren’t allowed to take any plant material or even view the plaints in the field. Nevertheless, a USDA worker, acting without authorization, gave samples of the patented grapes to a grower but instructed him not to sell the grapes until they were commercially available. The grower understood he was expected to keep the grapes secret—he didn’t want other growers to know he had the grapes and later perjured himself to protect the USDA worker’s identity. The grower grafted less than 50 vines of the patented grapes, did not sell any before the critical date, but gave a few to his cousin, telling him they should “keep it to themselves.” The cousin grew a couple hundred vines but did not sell them. The grower also showed his marketer the grapes, but the marketer didn’t sell any until after the critical date, and, even then, sold them under a different name to hide their identity.

None of these events constituted an invalidating prior public use. “The question in a case such as this one is thus whether the actions taken by the inventor (or, as in this case, a third party) create a reasonable belief as to the invention’s public availability.”  Slip op. at 7. Although the grower was a third-party who obtained control of the invention, he disclosed the plants to his cousin and marketer only under an expectation of confidentiality. The grower and his cousin “knew that they were not authorized to have the plants and that they needed to conceal their possession of the plants.”  Id. at 10. The marketer likewise understood the economic incentives for keeping the plants secret. It did not matter that there was no explicit confidentiality agreement given this “expectation of secrecy.”  Id.  Unlike Egbert v. Lippmann, 104 U.S. (1881), where the inventor allowed his friend to wear the patented corset with no expectation of secrecy, here, the grower sought to maintain control of the plants, and everyone understood the need for secrecy. Finally, the grower’s plants were not publicly accessible by virtue of being viewable from public roads, because they were unlabeled, there were a very limited number relative to other unpatented varieties on the land, and no member of the public actually recognized what they were.

Author: Craig Countryman

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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