Aipla model Patent Jury Instructions

6. Anticipation

6.0 Anticipation

If a device or process has been previously invented and disclosed to the public, then it is not new, and therefore the claimed invention is “anticipated” by the prior invention. Simply put, the invention must be new to be entitled to patent protection under the U.S. patent laws. To prove anticipation, [the Defendant] must prove that it is highly probable that the claimed invention is not new.

In this case, [the Defendant] contends that [[some] [all of]] the claims of the [abbreviated patent number] patent are anticipated. [DESCRIBE BRIEFLY EACH BASIS FOR THE DEFENDANT’S INVALIDITY DEFENSE, FOR EXAMPLE: “First, [the Defendant] contends that the invention of claims 1, 2, and 3 of the ____ patent was described in the July, 1983 article published by Jones in THE JOURNAL OF ENDOCRINOLOGY.”]

To anticipate a claim, each and every element in the claim must be present in a single item of prior art, and arranged or combined in the same way as recited in the claim. You may not combine two or more items of prior art to find anticipation. In determining whether every one of the elements of the claimed invention is found in the prior [[publication] [patent] [etc.]], you should take into account what a person of ordinary skill in the art would have understood from his or her review of the particular [[publication] [patent] [etc.]].

Practice Note: If one or more elements of the claim are alleged by the Defendant to be inherent in a single prior art reference, the jury will need to be instructed on inherency. Care should be taken to limit this Instruction as appropriate to the evidence admitted in the case and to make this Instruction as clear as possible. This Instruction should be given only if the issue is properly before the Court.

Inherency: In determining whether the single item of prior art anticipates a patent claim, you should take into consideration not only what is expressly disclosed in the particular prior art reference [[publication] [invention] [etc.]] but also what is inherently present or disclosed in that prior art or inherently results from its practice. Prior art inherently anticipates a patent claim if the missing element or feature would necessarily result from what the single item of prior art teaches to persons of ordinary skill in the art. A party claiming inherent anticipation must prove that it is highly probable that the allegedly inherent element necessarily is present. Evidence outside of the prior art reference itself [including experimental testing] may be used to show that elements that are not expressly disclosed in the reference are inherent in it. In order to be inherent, the feature that is alleged to have been inherent must necessarily have existed in the prior art reference. The fact that it was likely is not sufficient. It is not required, however, that persons of ordinary skill actually recognize or appreciate the inherent disclosure at the time the prior art was first known or used. Thus, the prior use of the patented invention that was unrecognized and unappreciated can still be an invalidating anticipation, provided the allegedly inherent feature was necessarily present in the reference.

You must keep these requirements in mind and apply them to each kind of anticipation you consider in this case. There are additional requirements that apply to the particular categories of anticipation that [the Defendant] contends apply in this case. I will now instruct you about these.

Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008); Toro Co. v. Deere & Co., 355 F.3d 1313, 1320-21 (Fed. Cir. 2004); Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377-78 (Fed. Cir. 2003); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347-48 (Fed. Cir. 1999); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995); Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992); Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1267-69 (Fed. Cir. 1991); Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988).

6.1 Prior Public Knowledge

6.1.1 Prior Public Knowledge (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was publicly known by others in the United States before it was invented by the inventor(s).

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention, the jury should be instructed here as to how they should determine the date of invention. Otherwise, the Court should instruct the jury as to the date of invention.

[The invention defined by claim _____ of the [abbreviated patent number] patent was invented on [invention date.]

A patent claim is invalid if the invention defined in that claim was publicly known by others in the United States before it was invented by [the patentee].

35 U.S.C. § 102(a) (pre-AIA); Minnesota Mining and Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301, 1306 (Fed. Cir. 2002); Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361, 1369 (Fed. Cir. 2000); Woodland Trust v. Flowertree Nursery, 148 F.3d 1368, 1370 (Fed. Cir. 1998).

6.1.2 Prior Public Knowledge (Post-AIA)

[The Defendant] contends that claim ____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was available to the public before the effective filing date of the claimed invention.
Practice Note: If there is a factual issue to be resolved by the jury as to whether the prior public knowledge is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or is subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if the invention defined in that claim was available to the public before the effective filing date of the claimed invention.

35 U.S.C. § 102(a)(1) (post-AIA).

6.2 Prior Public Use

6.2.1 Prior Public Use (Pre-AIA)

[The Defendant] contends that claim _____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim [was publicly used by others in the United States before it was invented by [the patentee]] [was publicly used in the United States more than one year before [the patentee] filed his patent application on [earliest U.S. filing date]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention.

The invention defined by claim ____ of the [abbreviated patent number] patent was invented on [invention date].

A patent claim is invalid if [more than one year before the filing date of the patent] [before the invention by [the patentee]] an embodiment of the claimed invention was both:

1. 
   accessible to the public or commercially exploited in the United States; and
   
2. 
   ready for patenting.
   

An invention was in public use if the claimed invention was accessible to the public or commercially exploited. Factors relevant to determining whether a use was public include: the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed upon observers; commercial exploitation; and the circumstances surrounding testing and experimentation.

An invention is publicly used if it is used by the inventor or by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor. The absence of affirmative steps to conceal the use of the invention is evidence of a public use. However, secret use by a third party is not public, unless members of the public or employees of the third party have access to the invention.

In order to be a public use, the invention also must have been ready for patenting at the time of the alleged public use. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention sufficient to allow a person of ordinary skill in the art to make or use the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a), (b) (pre-AIA); Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325-27 (Fed. Cir. 2009); Am. Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1267 (Fed. Cir. 2008); Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379-82 (Fed. Cir. 2005); SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1316-20 (Fed. Cir. 2004); Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1320-23 (Fed. Cir. 2002); Abbott Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, (Fed. Cir. 1999); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (as to reduction to practice); Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265-67 (Fed. Cir. 1986); Kinzenbaw v. Deere & Co., 741 F.2d 383, 390-91 (Fed. Cir. 1984); TP Lab., Inc. v. Prof’l Positioners, Inc., 724 F.2d 965, 970-72 (Fed. Cir. 1984); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1549-50 (Fed. Cir. 1983); In re Smith, 714 F.2d 1127, 1134-37 (Fed. Cir. 1983).

6.2.2 Prior Public Use (Post-AIA)

[The Defendant] contends that claim ____ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was in public use anywhere in the world before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the printed publication is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b)(1).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if the claimed invention was in public use before the effective filing date of the claimed invention.

An invention was in public use if the claimed invention was accessible to the public or commercially exploited anywhere in the world. Factors relevant to determining whether a use was public include the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed upon observers; commercial exploitation; and the circumstances surrounding testing and experimentation. An invention is publicly used if it is used by the inventor or by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor. The absence of affirmative steps to conceal the use of the invention is evidence of a public use. However, secret use by a third party is not public, unless members of the public or employees of the third party have access to the invention.

In order to be a public use, the invention also must have been ready for patenting at the time of the alleged public use. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention sufficient to allow a person of ordinary skill in the art to make or use the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a)(2) (post-AIA).

6.3 On Sale Bar

6.3.1 On Sale Bar (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was on sale in the United States more than one year before [the patentee] filed his U.S. patent application on [U.S. filing date].

A patent claim is invalid if more than one year before the filing date of the patent an embodiment of the claimed invention was both: (1) the subject of a commercial sale or offer for sale in the United States; and (2) ready for patenting.

A commercial “offer for sale” was made if another party could make a binding contract by simply accepting the offer. An invention was subject to an “offer for sale” if the claimed invention was embodied in an item that was actually sold or offered for sale. It is not required that a sale was actually made. The essential question is whether there was an attempt to obtain a commercial benefit from the invention.

The invention also must have been “ready for patenting” more than one year before the filing date of the patent. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person of ordinary skill in the art to practice the invention. An invention is reduced to practice when it has been (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(b) (pre-AIA); Pfaff v. Wells Elecs., 525 U.S. 55, 67-68 (1998); August Tech v. Camtek, 655 F.3d 1278, 1288-89 (Fed. Cir. 2011); Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008); Board of Educ. ex rel Bd. of Trustees of Fla. State Univ. v. Am. Bioscience, Inc., 333 F.3d 1330, 1338 (Fed. Cir. 2003) (as to conception); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352-55 (Fed. Cir. 2002); Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1047-54 (Fed. Cir. 2001); Robotic Vision Sys., Inc., v. View Eng’g, Inc., 249 F.3d 1307, 1312 (Fed. Cir. 2001); Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045-49 (Fed. Cir. 2001; Abbott Labs. v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, (Fed. Cir. 1999); Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (as to reduction to practice); WL Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1549-50 (Fed. Cir. 1983).

6.3.2 On Sale Bar (Post-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was on sale before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the sale was made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b)(1).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if it was on sale before the effective filing date of the claimed invention.

A commercial “offer for sale” was made if another party could make a binding contract by simply accepting the offer. An invention was subject to an “offer for sale” if the claimed invention was embodied in an item that was actually sold or offered for sale. It is not required that a sale was actually made. The essential question is whether there was an attempt to obtain a commercial benefit from the invention.

A commercial “offer for sale” was made by the inventor both:

1. 
   if the claimed invention was embodied in an item that was actually sold or offered for sale; and
   
2. 
   the invention was “ready for patenting”
   

more than one year before the effective filing date of the claimed invention. An invention is ready for patenting either when it is reduced to practice or when the inventor has prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person of ordinary skill in the art to practice the invention. An invention is reduced to practice when it has been: (1) constructed or performed within the scope of the patent claims; and (2) determined that it works for its intended purpose. The claimed invention is ready for patenting when there is reason to believe it would work for its intended purpose.

35 U.S.C. § 102(a)(1) (post-AIA).

6.4 Experimental Use

[The Plaintiff] contends that __________________ should not be considered [[a prior public use of the invention] [placing the invention on sale]] because that [[use] [sale]] was experimental. The law recognizes that the inventor must be given the opportunity to develop the invention through experimentation. Certain activities are experimental if they are a legitimate effort to test claimed features of the invention or to determine if the invention will work for its intended purpose. So long as the primary purpose is experimentation, it does not matter that the public used the invention or that the inventor incidentally derived profit from it.

Only experimentation by or under the control of the inventor of the patent [or his assignee] qualifies for this exception. Experimentation by [third party], for its own purposes, does not. The experimentation must relate to the features of the claimed invention, and it must be for the purpose of technological improvement, not commercial exploitation. If any commercial exploitation does occur, it must be merely incidental to the primary purpose of experimentation. A test done primarily for marketing, and only incidentally for technological improvement, is not an experimental use.

If you find that [the Defendant] has shown that it is highly probable that there was a [[prior public use] [prior sale]], then the burden is on [the Plaintiff] to come forward with evidence showing that the purpose of the [[prior public use] [prior sale]] was experimental. If the evidence of the experimental use produced by [the Plaintiff] is strong enough that you find that [the Defendant] has not met its burden of establishing that a [[prior public use] [prior sale]] is highly probable, you may find that______________ does not constitute [[a prior public use of the invention] [placing the invention on sale]].

City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 134-35 (1877); Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009); Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1316 (Fed. Cir. 2005); Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353-55 (Fed. Cir. 2002); LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1071-72 (Fed. Cir. 1992); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549-51 (Fed. Cir. 1990); U.S. Envtl. Prods. Inc. v. Westall, 911 F.2d 713, 716 (Fed. Cir. 1990); In re Hamilton, 882 F.2d 1576, 1580-83 (Fed. Cir. 1989); Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 906 (Fed. Cir. 1988); Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 1535-37 (Fed. Cir. 1984); Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1580-81 (Fed. Cir. 1984); In re Smith, 714 F.2d 1127, 1134-37 (Fed. Cir. 1983).

6.5 Printed Publication

6.5.1 Printed Publication (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a printed publication [[more than one year before [the patentee] filed the U.S. patent application on [U.S. filing date]] [before [the patentee] invented the invention]].

A patent claim is invalid if the invention defined by that claim was described in a printed publication [[before it was invented by [the patentee]] [more than one year prior to the filing date of the U.S. application]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention.

A printed publication must have been maintained in some tangible form, such as [[printed pages] [typewritten pages] [magnetic tape] [microfilm] [photographs] [internet publication] [photocopies]], and must have been sufficiently accessible to persons interested in the subject matter of its contents.

Practice Note: In the event accessibility is disputed, it is appropriate to give the following additional Instruction.

Information is publicly accessible if it was distributed or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter exercising reasonable diligence can locate it. It is not necessary for the printed publication to have been available to every member of the public. An issued patent is a printed publication. A published patent application is a printed publication as of its publication date.

The disclosure of the claimed invention in the printed publication must be complete enough to enable one of ordinary skill in the art to use the invention without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art [[one year before the application for the [abbreviated patent number] patent was filed] [at the time the invention of the [abbreviated patent number] patent was made]], and you may consider evidence that sheds light on the knowledge such a person would have had.

35 U.S.C. § 102(a), (b) (pre-AIA); In re NTP, Inc., 654 F.3d 1279, 1296-97 (Fed. Cir. 2011); Orion IP v. Hyundai Motor Am., 605 F.3d 967 (Fed. Cir. 2010); In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009); Kyocera Wireless Corp. v. Int’l Trade Comm., 545 F.3d 1340, 1350 (Fed. Cir. 2008); Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1352 (Fed. Cir. 2004); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554-55 (Fed. Cir. 1995); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988); Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 (Fed. Cir. 1986); In re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 1986); In re Donohue, 766 F.2d 531, 533-34 (Fed. Cir. 1985); Studiengesellschaft Kohle, mbH v. Dart Indus., Inc., 726 F.2d 724, 727 (Fed. Cir. 1984).

6.5.2 Printed Publication (Post-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a printed publication before the effective filing date of the claimed invention.

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

A patent claim is invalid if the invention defined by that claim was described in a printed publication before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the printed publication is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, or by another who obtained the subject matter disclosed directly from the inventor, or subject matter which had previously been disclosed by the inventor, the jury should be instructed here as to exceptions under § 102(b)(1).

A printed publication must have been maintained in some tangible form, such as [[printed pages] [typewritten pages] [magnetic tape] [microfilm] [photographs] [internet publication] [photocopies]], and must have been sufficiently accessible to persons interested in the subject matter of its contents.

Practice Note: In the event accessibility is disputed, it is appropriate to give the following additional Instruction on this issue.

Information is publicly accessible if it was distributed or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter exercising reasonable diligence can locate it. It is not necessary for the printed publication to have been available to every member of the public. An issued patent is a printed publication. A published patent application is a printed publication as of its publication date.

The disclosure of the claimed invention in the printed publication must be complete enough to enable one of ordinary skill in the art to use the invention without undue experimentation. In determining whether the disclosure is enabling, you should take into account what would have been within the knowledge of a person of ordinary skill in the art [[one year before the application for the [abbreviated patent number] patent was filed] [at the time the invention of the [abbreviated patent number] patent was made]], and you may consider evidence that sheds light on the knowledge such a person would have had.

35 U.S.C. §§ 102(a)(1) & 102(b)(1) (post-AIA).

6.6 Prior Invention

6.6.1 Prior Invention (Pre-AIA Only)¹⁵

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was invented by another person, [third party], before [the patentee] invented his invention.

A patent claim is invalid if the invention defined by that claim was invented by another person in the United States before it was invented by the patentee, [and that other person did not abandon, suppress, or conceal the invention].

[The Defendant] must show that it is highly probable that 1) before [the patentee] invented his invention, [third party] reduced to practice a [[product] [method]] that included all of the elements of claim ___ of the [abbreviated patent number] patent; or 2) that [third party] was first to conceive the invention and that he exercised reasonable diligence in later reducing the invention to practice. In addition, [the Defendant] must show that [third party]’s device was sufficiently developed that one skilled in the art would have recognized that it would work for its intended purpose.

Practice Note: This defense may be negated if the invention was abandoned, suppressed, or concealed. In the event this issue is properly asserted and there is sufficient evidentiary support to submit this issue to the jury the following additional Instructions should be given.

If the prior invention was abandoned, suppressed, or concealed, it does not anticipate the [abbreviated patent number] patent. It is not necessary that [the patentee] had knowledge of that prior invention.¹⁶

You may find that an invention was abandoned, suppressed, or concealed if you find that it is highly probable that: (1) the prior inventor actively concealed the invention from the public; or (2) the prior inventor unreasonably delayed in making the invention publicly known. Generally, an invention was not abandoned, suppressed, or concealed if the invention was made public, sold, or offered for sale, or otherwise used for a commercial purpose. A period of delay does not constitute abandonment, suppression, or concealment, provided the prior inventor was engaged in reasonable efforts to bring the invention to market during this period.

35 U.S.C. § 102(a), (g) (pre-AIA); Teva Pharm. Indus. v. AstraZeneca Pharms., 661 F.3d 1378 (Fed. Cir. 2011); Solvay S.A. v. Honeywell Int’l Inc., 622 F.3d 1367, 1376 (Fed. Cir. 2010); Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1381 (Fed. Cir. 2002); Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1343 (Fed. Cir. 2001); Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1361-63 (Fed. Cir. 2001); Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1035-40 (Fed. Cir. 2001); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436-37 (Fed. Cir.1988); Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444-46 (Fed. Cir. 1984).

6.6.2 Prior Invention (Post-AIA Only)

Practice Note: The prior invention defense was eliminated by the AIA. The prior invention defense is no longer a basis for invalidity and no Instruction should be given on this issue for Post-AIA claims.

6.7 Prior Patent

6.7.1 Prior Patent (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was patented by [third party] [[before it was invented by [the patentee]] [more than one year before [the patentee] filed his U.S. patent application on [U.S. filing date]].

A patent claim is invalid if the invention defined by that claim was patented in the United States or a foreign country [[before it was invented by [the patentee]] [more than one year before [the patentee] filed his U.S. patent application]].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the Court should instruct the jury as to the date of invention.

[The invention defined by claim _________ of the [abbreviated patent number] patent was invented on [invention date].]

35 U.S.C. § 102(a)(b) (pre-AIA); Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1287-83 (Fed. Cir. 2000); In re Carlson, 983 F.2d 1032, 103536 (Fed. Cir. 1992).

6.7.2 Prior Patent (Post-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was patented by [third party] before the effective filing date of the claimed invention.

A patent claim is invalid if the invention defined by that claim was patented in the United States or a foreign country before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the disclosure appearing in a patent is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, by another who obtained the subject matter disclosed directly from the inventor, or if the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, the jury should be instructed here as to exceptions under § 102(b)(2).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

You are further instructed that patent [patent number] issued to [third party] has an effective filing date of [effective filing date].

35 U.S.C. §§  102(a)(1), (a)(2) & (d) (post-AIA).

6.8 Prior U.S. Application

6.8.1 Prior U.S. Application (Pre-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in U.S. [[published patent application] [patent]] [[published application number] [anticipating patent number]], and because [[the published patent application [published application number]] [application for the [anticipating patent number] patent] was filed before [the patentee] made his invention.

A claim of the [abbreviated patent number] patent would be invalid if the invention defined by that claim was described in a [[published U.S. patent application] [U.S. patent]] filed by another person before the invention was made by [the patentee].

Practice Note: If there is a factual issue to be resolved by the jury as to the date of invention of the patent claims in suit, the jury should be instructed here as to how they should determine that date of invention. Otherwise, the Court should instruct the jury as the date of invention.

[The invention defined by claim [____] of the [abbreviated patent number] patent was invented on [invention date].]

35 U.S.C. §§ 102(e)(1) and (2) (pre-AIA); In re Giacomini, 612 F.3d 1380, 1383-84 (Fed. Cir. 2010); Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 983-84 (Fed. Cir. 1989) (overruled on other grounds); In re Wertheim, 646 F.2d 527, 536-37 (C.C.P.A. 1981).

6.8.2 Prior U.S. Application (Post-AIA)

[The Defendant] contends that claim __________ of the [abbreviated patent number] patent was anticipated because the invention defined in that claim was described in a patent application [published application number] published in the United States, and because the published patent application [published application number] was filed before the effective filing date of the claimed invention.

A claim of the [abbreviated patent number] patent would be invalid if the invention defined by that claim was described in a published patent application filed by another person before the effective filing date of the claimed invention.

Practice Note: If there is a factual issue to be resolved by the jury as to whether the disclosure appearing in a patent application is the result of a disclosure made within one (1) year or less of the effective filing date by the inventor, by another who obtained the subject matter disclosed directly from the inventor, or if the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, the jury should be instructed here as to exceptions under § 102(b)(2).

You are instructed that the [abbreviated patent number] patent has an effective filing date of [effective filing date].

You are further instructed that the published patent application [published application number] has an effective filing date of [effective filing date].

35 U.S.C. §§ 102(a)(2), (b)(2) & (d) (post-AIA).

7.