Secret Third-Party Use Does Not Constitute A Public Use

In Delano Farms Co. v. California Table Grape Commission, No. 14-1030 (Fed. Cir. Jan. 9, 2015), the Federal Circuit affirmed the district court's finding that a secret third-party use did not constitute an invalidating public use under the public use bar of 35 U.S.C. § 102(b).

The U.S. Department of Agriculture ("USDA") owns two plant patents—U.S. Patent Nos. PP16,229 ("the '229 patent") and PP16,284 ("the '284 patent")—that claim table grape varieties. The California Table Grape Commission ("Commission") is the exclusive licensee of both plant patents, and the Commission sublicenses the patents to grape growers in California. Plaintiffs, a group of California grape growers, sued the USDA and the Commission, challenging the validity and enforceability of the patents, and arguing that the two grape varieties were in public use more than one year before the applications for the patents were filed, and that the plant patents are thus invalid under the public use bar of 35 U.S.C. § 102(b). Following a bench trial, the district court held that the actions of two individuals who obtained the two plant varieties from an unauthorized source and cultivated them in their own fields did not constitute an invalidating public use. Plaintiffs appealed.

"The question in a case such as this one is thus whether the actions taken by the inventor (or, as in this case, a third party) create a reasonable belief as to the invention's public availability." Slip op. at 7.

On appeal, the Federal Circuit affirmed the district court's finding that a secret third-party use did not constitute an invaliding public use. The Court considered "whether the actions taken by the inventor (or, as in this case, a third party) create a reasonable belief as to the invention's public availability." Slip op. at 7. The Court identified three factors to guide its analysis: "the nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there was any confidentiality obligation imposed on persons who observed the use." Id. at 7-8 (alteration in original) (quoting Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1379 (Fed. Cir. 2004)). The analysis, the Court stated, "is similar when the allegedly public use is performed by an unaffiliated third party rather than the inventor." Id. at 8.

Turning to the facts of the case, the Court relied on the district court's factual findings to conclude that no public use of the...