The Fox Group, Inc. v. Cree, Inc.
700 F.3d 1300
| Fed. Cir. | 2012Background
- Fox appeals a district court decision granting Cree summary judgment that the '130 patent is invalid under 35 U.S.C. § 102(g) for claims 1 and 19.
- The district court also held there was no case or controversy as to the unasserted claims of the '130 patent and invalidated the entire patent as to those claims.
- The '130 patent covers a low-defect axial region of recrystallized single crystal silicon carbide with specified defect-density limits, and Fox alleged Cree infringed claims 1 and 19.
- Cree had long studied low-defect SiC and in 1995 tested the Kyoto Wafer, which Cree publicized at the Kyoto Conference and in a 1996 article.
- In 1995 Cree reduced the invention to practice by developing a Kyoto Wafer that met all three defect-density limitations in claims 1 and 19, according to the district court record.
- Fox argued Cree abandoned, suppressed, or concealed the invention; the district court rejected this, and the majority affirmed only as to claims 1 and 19, vacating the rest for lack of a live controversy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Cree is a prior inventor under 102(g) that invalidates claims 1 and 19 | Fox contends Cree did not invent first or reduce to practice before Fox’s date. | Cree reduced the invention to practice in 1995 and was the first inventor with diligence to reduce to practice. | Yes; Cree prior invention and reduction to practice established. |
| Whether Fox proved abandonment, suppression, or concealment under 102(g)(2) | Fox argues Cree suppressed or concealed the invention via policy and non-enabling disclosures. | Cree publicized the invention (Kyoto Conference and Kyoto Article) and disclosed a product, not necessarily the process, to the public. | No genuine issues of material fact; Cree did not abandon/suppress/conceal as a matter of law (majority view). |
| Whether the unasserted claims render the entire patent invalid under 102(g) | There was no live controversy over unasserted claims at the summary-judgment stage. | The district court correctly invalidated all claims after ruling on the asserted ones. | Vacate as to unasserted claims; affirm invalidity as to claims 1 and 19 only. |
Key Cases Cited
- Apotex USA, Inc. v. Merck & Co., Inc., 254 F.3d 1031 (Fed. Cir. 2001) (burden-shifting framework for 102(g) invalidity and suppression/concealment)
- Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) (evidence of commercialization can rebut abandonment/suppression/concealment)
- Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756 (Fed. Cir. 1995) (public disclosure and commercialization as factors in 102(g))
- Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052 (Fed. Cir. 2005) (conception and reduction to practice standards for prior inventors)
- Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316 (Fed. Cir. 2001) (two-path test for establishing prior invention (reduction to practice or conception with diligence))
- Scanner Technologies Corp. v. ICOS Vision Sys. Corp. N.V., 528 F.3d 1365 (Fed. Cir. 2008) (case/controversy scope when multiple claims; representative claim approach)
- Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269 (Fed. Cir. 2012) (claim scope and jurisdiction over unasserted claims when narrowed)
- Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) (prior art; burden-shifting and commercialization evidence)