3. Section 102(g)'s 'abandoned, suppressed, or concealed' determination

Jason Rantanen writes on the PatentlyO site that "Section 102(g) will be eliminated as a category of prior art for patents based on applications filed on or after March 16, 2012, [but] it will continue to apply to a large number of patents for many years to come."[1] Rantanen explains the two requirements for a prior-art determination under 102(g):

"First, the challenger must establish that the alleged prior inventor reduced its invention to practice first or, alternately, was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to practice. Second, the prior inventor must not have abandoned, suppressed, or concealed the invention."

In Fox Group, Inc., v. Cree, Inc., the U.S. Court of Appeals for the Federal Circuit ruled in favor of a patent holder for a silicon carbide material against claims that the holder concealed its invention. (Fox Group, Inc. v. Cree, Inc. (2012) 700 F.3d 1300 [105 U.S.P.Q.2D (BNA) 1097].) The dissenting opinion in that case distinguished merely announcing to the world that you have invented something, and actually providing information to the public about the invention. (Id. at 1309.) The dissent pointed to evidence presented by the alleged infringer that the inventor "concealed its production methods" and failed to release the product in an attempt to ensure that no one could reverse-engineer it. (Id. at 1310.)

In the context of patented software, release of the product to the public generally makes the underlying code readily available. Here is where the layered protection of trade secrets, copyrights, and patents is required to protect the software developer's intellectual property.

In Eolas Techs., Inc. v. Microsoft Corp., The U.S. Court of Appeals for the Federal Circuit described "two types of conduct that invoke the exception within section 102(g)." (Eolas Techs., Inc. v. Microsoft Corp. (2005) 399 F.3d 1325, 1333 [73 U.S.P.Q.2D (BNA) 1782], citing Apotex USA, Inc. v. Merck & Co. (2001) 254 F.3d 1031, 1038.) The first is when the inventor actively conceals the invention from the public with the intention of "applying it indefinitely and exclusively for his own profit," and the second is "when 'abandonment, suppression, or concealment may be inferred based upon the prior inventor's unreasonable delay in making the invention publicly known.'" (Eolas Techs. Inc. v. Microsoft Corp., supra, 399 F.3d 1325, 1333, quoting Dow Chem. Co. v. Astro-Valcour, Inc. (2001) 267 F.3d 1334, 1342.)

The district court ruled that by posting and making available for download an updated version of the software in question, the patent holder abandoned the earlier version. Thus the second of the two 102(g) exceptions applied, and the alleged infringement was not possible. The appellate court overruled, finding that neither 102(g) exception applied in this case: there was no undue delay in disclosing the invention because "the inventor continued to refine, perfect, or improve the invention." (Ibid., citing Lutzker v. Plet (1988) 843 F.2d 1364, 1367.)

Rarely is a software program created from whole cloth. Questions will persist as to when a release constitutes an entirely new "invention" under 102(g) rather than a refinement, perfection, or improvement of a patented invention. The nature of software allows patent holders to charge infringement for use of programs that may bear little resemblance to the purposes for which the patent was awarded years earlier. This fact also argues for a shorter duration for software patents than for other patented inventions.

d. 35 U.S. Code § 103 Conditions for patentability: non-obvious subject matter

[1] http://patentlyo.com/patent/2012/12/the-fox-group-v-cree.html