The United States Court of Appeals for the Federal Circuit affirmed a district court judgment of no invalidity under § 102(g). Flex-Rest, LLC v. Steelcase, Inc., No. 05-1354, -1367 (Fed. Cir. July 13, 2006) (Linn, J.).

Flex-Rest owns two patents on computer keyboard positioning systems. Both patents were directed to systems for holding a keyboard in a "negative tilt" position, such that the handrest is above the keys.

The parties stipulated that one of the defendant's devices was conceived and reduced to practice before the patent at issue was conceived. Within seven months after reduction to practice, a patent application was filed on the prior art device and the device was shown at a trade show. The district court gave a § 102(g) instruction that "anything made or built in the United States by another person before the date of the claimed invention can be prior art . . . even if it is not publically [sic] available before the date of the claimed invention." The district court denied, based on insufficient evidence, giving an instruction offered by the plaintiff that the prior art device was "suppressed or concealed."

Relying on Dow Chemical Co. v. Astro-Valcour, Inc., the Federal Circuit agreed that there was insufficient evidence to warrant the plaintiff's proffered jury instruction because the plaintiff failed to "make out a prima facie case of suppression." The Federal Circuit noted two types of suppression or concealment: intentional and inferential, the latter one based on an unreasonable delay in publicizing the invention. The Court concluded that plaintiff failed to present sufficient evidence to support a jury instruction regarding intentional suppression or concealment because the plaintiff did not offer any evidence indicating intent to withhold the prior art device from the public. Merely keeping the device secret while preparing a patent application and preparing to commercialize it "is not, by itself, indicative of intentional suppression or concealment."

The Court also concluded that there was no inferential suppression or concealment because the plaintiff offered no evidence to indicate that the defendant's delay of six and one-half months between reduction to practice and commercialization of the prior art device was the result of anything other than reasonable steps to bring the invention to market, based upon time spent on design, money spent on tooling and lead times for the tooling. The Court found that it was unlikely that the defendant could have brought the prior art device to market much sooner than the trade show seven months after reduction to practice.

Practice Note: The Federal Circuit affirmed that even though assertion of § 102(g) prior art is a defense, the burden remains on the patentee to show prima facie evidence of suppression or concealment.

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