Public demonstration of possession of a prior invention under 35 U.S.C. § 102(g) is sufficient to demonstrate that the prior inventors did not abandon, suppress, or conceal their invention. Enabling others to reproduce the invention is not required.
Background / Facts: The patent here was directed to a low defect silicon carbide (“SiC”) crystal semiconductor material. The district court found the claims at issue invalid under 35 U.S.C. § 102(g) on the notion that defendant Cree’s scientists were prior inventors of the low defect wafer claimed by Fox, and that although they did not file their own patent, they never abandoned, suppressed, or concealed the invention. Fox does not dispute that several years before its own invention, Cree grew a version of the claimed wafer that met all three of the defect density limitations. Cree presented these results at a conference and in an associated paper, describing the defect reduction achieved as a “breakthrough.” Instead, Fox disputes the sufficiency of Cree’s public disclosures, contending that that the presentation and publication about its wafer were not enough to enable one skilled in the art to make the invention, because Cree never disclosed how it got its results.
Issue(s): Whether public use or descriptions in a published document must be enabling, given the policy and purpose of the patent system to enrich the art by disclosing how to make the invention, in order to demonstrate that the prior inventors did not abandon, suppress, or conceal their invention.
Holding(s): No. Cree promptly and publicly disclosed its findings concerning its low defect properties of the SiC material from which its wafer was cut through a presentation at an international conference and a published paper on the subject. Accordingly, Cree promptly made its invention, a SiC material with low defect densities, known to the public. Cree produced clear and convincing evidence that it had the low density SiC crystal prior to Fox’s date of invention, and Fox did not produce sufficient evidence to show that Cree abandoned, suppressed, or concealed the invention, which is merely the product disclosed to the public.