In one of the major development, the United States Court of Appeals for the Federal Circuit (CAFC) held that unpublished patent documents “removed” during prosecution before Patent Office will also constitute prior art and subsequently upheld the District Court’s summary judgment of invalidating U.S. Patent Nos. 5,567,085 (the ‘085 patent) and 5,820,301 (the ‘301 patent) based on the same “removed” subject matter on the grounds of obviousness. CAFC revisited 35 USC § 102(b), enlarging the scope of prior art to include the contents of the file wrapper as to constitute a printed publication for the purposes of 35 USC § 102(b). In Mark Bruckelmyer v. Ground Heaters (CAFC 05-1412), the court decided that abandoned drawings of Canadian patent application were “publicly accessible,” because the file wrapper could be located from the published patent and sufficiently accessible for public inspection at the Canadian Patent Office. To recap, Mark Bruckelmyer obtained two US patents --- the ‘085 and ‘301 patent, for method of thawing frozen ground so that a layer of concrete can be laid on top of the ground and later on July 15, 2002 filed a patent infringement suit against one of his former licensees – Ground Heaters in the District Court for the District. In response Ground Heaters filed a counterclaim challenging the validity of the ‘085 and ‘301 patents and on December 19, 2002 filed a motion for summary judgment of invalidity based on figures 3 and 4 of the Canadian patent application (the Application) which were omitted during prosecution subsequently leading to Canadian Patent No. 1,158,119 (the ‘119 patent). The court denied Ground Heaters’ motion for summary judgment of invalidity upon finding a genuine issue of material fact regarding whether a person of ordinary skill in the art would have been enabled by figures 3 and 4 to practice the technology claimed by the ‘085 and ‘301 patents without undue experimentation. However, while denying summary judgment, the court determined that figures 3 and 4 omitted during prosecution but continue to exist in the file wrapper of the ‘119 patent was a “printed publication” under § 102(b) and concluded that “the contents of the file wrapper were sufficiently accessible to the relevant and interested public as to constitute a printed publication for the purposes of § 102(b).” In view of the court’s determination that omitted figures 3 and 4 of the Application constituted § 102(b), Bruckelmyer filed a stipulation in the court conceding that omitted figures rendered the claims of the ‘085 and ‘301 patents invalid. However, in doing so, Bruckelmyer removed from dispute any question of fact as to whether omitted figures were enabling to a person of ordinary skill in the pertinent art. Following Bruckelmyer move, Ground Heaters filed a renewed motion for summary judgment of invalidity and which was later granted by court on May 13, 2005. Bruckelmyer subsequently appealed to the CAFC. The single issue of Bruckelmyer’s appeal was whether the two omitted figures 3 and 4 of the Application were “printed publications” under § 102(b). Bruckelmyer’s Rationale – Not indexed or Catalogued Bruckelmyer asserted that a reference to be a “printed publication” it must be “publicly accessible” and contended that a patent application located in a foreign patent office is not “publicly accessible” just because it is laid open for inspection by the general public during the relevant prior art time frame. Bruckelymer further elaborated, relying on previously decided CAFC decisions, that for a prior art reference to be considered “publicly accessible,” it must either (1) be published to those interested in the art for a sufficient amount of time to allow them to “capture, process and retain the information conveyed by the reference, or (2) those interested must be able to locate the material in a meaningful way.” Bruckelmyer asserted that the Application did not meet the either criterion, and thus it was not “publicly accessible.” Bruckelmyer further stated that there are no evidence produce by defendants that the contents of the Canadian file wrapper had been disseminated and no copies were known to have been made and sent elsewhere during the prior art period. Bruckelmyer contended that because Canadian Patent Office did not index or catalogue the Application, and because no printed abstract of the Application classified and published, a person of ordinary skill in the art would not have been able to locate omitted figures 3 and 4 in a meaningful way. Further, Bruckelmyer argued that the ‘119 patent itself would not have guided a person of ordinary skill in the art to locate figures 3 and 4 because the figures were “removed” from the Application during prosecution. Ground Heaters Counter Attack Ground Heaters responded that even though the Application was not formally indexed, a person of ordinary skill in the art would have been able to locate the figures contained in the Application through the published ‘119 patent. Ground Heaters further argued that the statement made in the ‘119 patent that: “the claimed system is suitable for applying heat to other objects and is not necessarily confined to use in relation to concrete placement. Other typical uses are: … thawing frozen ground” would have led one skilled in the art to the Application, and hence to figures 3 and 4. Moreover, Ground Heaters contended that the ‘119 patent was indexed and catalogued according to its subject-matter, and the Application was in the file of the ‘119 patent in the Canadian Patent Office, and thereby, the Application was also, as a practical matter, indexed and catalogued. CAFC --- Expanding Scope of “Printed Publication” The CAFC affirmed the District Court’s ruling of patent invalidity, holding that the Canadian Patent Application was “publicly accessible”, and thus that it was a “printed publication” under 35 USC § 102 (b). The CAFC maintained that a given reference is a “printed publication” when it was “publicly accessible” during the prior period, quoting ICE Corp. v. Armco Steel Corp. 250 F. Supp. 738, 745 (S.D.N.Y. 1966) which hold that a reference is “publicly accessible” upon a satisfactory showing that such document has been disseminated or other wise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation. Relying on In re Wyer, 655 F.2d 221 (CCPA 1981) where the existence of a published abstract that would allowed one skilled in the art exercising reasonable diligence to locate the foreign patent application and the fact that the application was classified and indexed in the patent office were central to the Court’s decision, the CAFC concluded that the Application was “publicly accessible” and further found that the published ‘119 patent is even more of a roadmap to the application file than the abstract was in Wyer. The CAFC also contended that it does not matter whether the Application was catalogued or indexed “in a meaningful way” because the ‘119 patent was indexed and could serve as a “research aid.” Dissenting Opinion Judge Inn in his dissenting opinion finds that “it is not entirely sound to view the issued ‘119 patent as a roadmap to the underlying file history.” He further noted that an indexed abstract is a brief statement of the contents of the more comprehensive work, while an issued patent is not necessarily looked as a summary or index of the underlying file history. He also argued that the removed figures had not been “catalogued or indexed in a meaningful way” because there was nothing in the text of the issued ‘119 patent to suggest that a disclosure of structure for implementing the “thawing frozen ground” use will be found in the Canadian File Wrapper.