Monday, May 28, 2012

Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use

In Leader Technologies v. Facebook the Federal Circuit held all of the asserted claims of U.S. Patent No. 7,139,761 (the '761 patent) were invalid under 35 U.S.C. § 102(b), because Leader had offered for sale and publicly demonstrated software that embodied the claims prior to the critical date.

The founder of Leader Technologies (Leader) Mr. McKibben and Jeffrey Lamb conceived the invention in 1999. Then they developed software to build a commercial product referred to as Leader2Leader®, which they completed around 2002. Around that time, Leader offered for sale Leader2Leader® and demonstrated it to a number of companies. For example, in January 2002, Leader presented a white paper to the Wright Patterson Air Force Base and offered 20,000 software licenses to Leader2Leader®.The white paper described the functionality of Leader2Leader®. Leader stated it was commercializing the product for the government, commerce and education and the platform was operational with low user volumes. In November 2002, Mr. McKibben demonstrated the Leader2Leader® software to Boston Scientific, a demonstration that he described as flawless. By December 8, 2002, Leader had demonstrated and offered Leader2Leader® to a number of other companies, including American Express and The Limited.

In seeking US patent protection, Leader initially filed a 60-page provisional application on December 11, 2002 (pages 1-7 are in the style of a patent application, but the detailed description section is sketchy and pages 8-60 have only pseudo code rather than source code for a number of claim limitations. Query how much should this matter?) and a non-provisional application on December 10, 2003.

The Federal Circuit said the central issue was whether the Leader2Leader® product admittedly in public use and on sale prior to December 10, 2002 fell within the scope of the asserted claims, rendering them invalid under 35 U.S.C. § 102(b). Given how much it would have helped it is curious the Federal Circuit did not explain why the critical date was not December 11, 2001 based on the provisional application. To understand why you have to review the trial court's opinion: Leader Techs., Inc. v. Facebook, Inc., 770 F. Supp. 2d 686 (D. Del. 2011). The trial court found that substantial evidence supported the jury's ruling that the '761 patent was not entitled to the priority date of the provisional application. The court noted claims are entitled to the earlier filing date of the provisional application only if the prior application describes the invention in sufficient detail so that one skilled in the art can conclude that the inventor invented the claimed invention as of the filing date sought.

As the court did not believe this was the case stating:

Leader contended that its expert, Dr. Herbsleb, demonstrated that each element of the asserted claims was supported by the provisional application. However, Dr. Herbsleb also admitted at trial that the source code in the provisional application on which he relied to support the presence of numerous claim elements was only a "pseudo code." According to Dr. Herbsleb, "pseudo code" is not a real programming language and cannot function if compiled into an executable program. Leader contends that one of Dr. Herbsleb's students, Dr. Cataldo, built an implementation of an embodiment of the '761 patent based on the provisional application; however, Dr. Herbsleb testified this embodiment did not actually work and, in any event, it did not rely on the code disclosed in the provisional application because that code, again, was incomplete pseudo code. Moreover, the co-inventor of the '761 patent, Jeff Lamb, testified that certain elements were missing from the provisional application, such as the tracking movement of users and the associating metadata with user created content elements. Accordingly, the Court concludes that the evidence was sufficient to support the jury's conclusion that the asserted claims of the '761 patent are not entitled to the priority date of the provisional application. Consequently, the appropriate critical date for purposes of applying the on sale bar and public use bar is December 10, 2002, which is one year prior to the filing date of the '761 patent.

It may sound like another typical case where someone lost its US patent because the invention was commercialized too early, but this is not why the Leader Technologies v. Facebook is so instructive. Instead, it tells us the specification of a provisional application must support each claim that is subsequently submitted with the nonprovisional application to maintain the provisional filing date. Finally, a provisional specification may not support the claims which may not be discovered until invalidating commercialization has occurred.

Copyright © 2012 Robert Moll. All rights reserved.