Absent the application of a statutory exception (e.g. § 103(c)), secret § 102(g) prior art may serve as prior art under § 103 for the purposes of establishing obviousness. Here, for example, the accused infringer’s prototype, which was conceived before the patented devices but only later reduced to practice, was found to nevertheless still qualify as prior art under § 103 via § 102(g).
Background / Facts: The patents being asserted here are directed to a surgical device that employs ultrasonic energy to cut and coagulate tissue in surgery. The accused infringer developed a prototype of a similar ultrasonic surgical device that was conceived before the patented devices, even though it was only later reduced to practice, thereby qualifying as prior art under § 102(g). The district court, however, declined to apply it as prior art for the purposes of establishing obviousness under § 103 with respect to certain claims.
Issue(s): Whether § 102(g) requires prior reduction to practice in order to serve as prior art under § 103, even if the inventor can prove that he or she conceived of the invention first and was diligent in later reducing it to practice.
Holding(s): No. “In Kimberly-Clark, we held that § 102(g) prior art established by prior reduction to practice could constitute prior art under § 103. [] That holding, however, does not preclude an invention from satisfying § 102(g) through prior conception and later diligent reduction to practice. That was simply not at issue in Kimberly- Clark. We therefore hold that neither § 102(g) nor § 103 make prior reduction to practice the only avenue through which § 102(g) prior art can constitute prior art under § 103. … Thus, absent the application of a statutory exception, § 102(g) prior art may serve as prior art under § 103.”