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Homework 5: Printed Publication Case

The case is Pfund vs. U.S. (1998) and was decided in the Federal Court of Claims. Pfund holds 3 patents, which are for methods of contacting submarines by sending laser signals up to a satellite in order to find the position of the vehicle and establish a narrow beam contact. They also cover said devices which are used in the method. Pfund holds that the U.S. is infringing upon these patents.

The part dealing with printed publication deals with only one patent, the '036 patent. The case holds that if the document became accessible more than one year prior to the filing, it is prior art, whereas if it was available within one year of the filing, it is only prior art if public access precludes the date of invention. Furthermore, the filing date is the presumptive date of invention, and the has the burden of producing evidence that the date of invention was sooner. In this case, the date that a document, Philco III, was accessible to the public was June 5, 1962 and the date of filing for the patent was July 2, 1962.

Only if the inventor conceived of the invention prior to the access date and if the inventor proceeded to work on and file the patent as diligently as possible from a date prior to the access date does the publication not count as prior art. The court found that Pfund had worked diligently from May 7, 1962 until July 2, 1962 and therefore the only question of prior art was whether or not the invention was conceived before June 5, 1962.

The law defines conception as occurring when only construction, not invention is required. In other words, there is nothing left to design, rather just the physical construction itself remains. The court found that for all but Claim 5 of the '036 patent, the concept document described and witnessed by a third party on May 7, 1962 shows that the invention was conceived before June 5, 1962. The defense argued that the concept document was not concrete enough because it does not fully specify things, calling for "appropriate" tracking systems and etc. However, the court found that by specifying "appropriate" tracking system, any person skilled in the art would likely have chosen the final specified system based on knowledge of the art, and that the concept document was still valid as evidence of conception.

For Claim 5, which relied on other claims in the patent, Pfund presented three separate documents: one which is a handwritten document, PX-26, depicting a point-to-point laser system with scanning by cross prisms. However, it does not disclose the elements of Claim 5, nor with cited articles and the document could one skilled in the art have produced the apparatus in Claim 5.

The next handwritten document, PX-27, contains two figures nearly identical to figures 1 and 2 in the '036 patent. However, the document is undated. In order to try and prove that the date of this document was before Philco III, Pfund produced another handwritten document, PX-28, which states "add figure 3." However, since there is no figure 3 in the patent, it appears as though PX-27 was the final design for his patent. Therefore, it is likely that PX-28 refers to an earlier draft than PX-27, and Pfund did not sufficiently prove the connection between the two documents, nor that PX-27 was in fact drafted before PX-28. Since Pfund could not prove that this, Philco III counts as prior art against Claim 5 in the '036 patent.

There is another publication which is written on optical communications with lasers, but it was found that this publication did not deal with or claim in a manner similar to the patent claims: the particular angle tracking manner, how acquisition and tracking would be accomplished, satellite and relay stations high above the earth's surface, and specific angle tracking structures. Because nothing in the printed publication described these elements in a way arranged as in the claims of the patent, they did not count as prior art. This is because in order to be prior art, every element of the claimed invention must be identically shown in a SINGLE reference, and MUST be arranged as in the claim under review.