Another Federal Circuit Opinion on the Dangers of Late Application Filing

Last week, the Federal Circuit affirmed an invalidity ruling that a patent was invalid as violating the on-sale bar.  In Delaware Valley Floral Group Inc. v. Shaw Rose Nets, LLC, the inventor’s own deposition testimony was used against him to invalidate his patent.

The patent at issue in the case relates to a process that produces larger rose heads.  The application for the patent was filed January 16, 1996, and issued June 16, 1998. 

When the patent owner answered interrogatories posed by the plaintiffs in the case, he averred that he invented and first sold a product that used his process in “August/September 1995.”  A short time later during his deposition, the patent owner instead testified 18 times that he invented the process in 1994.  He explained that the interrogatory answer had been a typo.  His testimony was that he developed the invention in May 1994.  He also testified that he started commercially exploiting roses grown by the process in September 1994.  Uh oh.

The plaintiffs moved for summary judgment of invalidity based on this testimony.  The patent owner now had to work hard to try to undo his deposition testimony.  He filed a declaration from an employee testifying to a 1995 invention and sale date and an errata sheet to change his deposition testimony to 1995. 

The district court granted the motion for summary judgment.  Frankly, the court did not believe the inventor’s evidence regarding the 1995 date.  The inventor did not equivocate in his deposition testimony.  The court held that the employee’s declaration lacked foundation as the employee did not have personal knowledge of the dates and the errata sheet was denied as untimely, as the Federal Rules of Civil Procedure permit only 30 days to correct deposition testimony.

The Federal Circuit affirmed.

I have mentioned a few times before the dangers of waiting to file a patent application.  This case is a good example of why filing earlier is better.  Had the inventor filed an application–even a provisional application–in 1995 instead of waiting until January 1996, his patent could have been saved.  Instead, his patent may have been infringed (the court never decided this issue), and he experienced an expensive and lengthly lawsuit only to find out that his patent was worthless.  File early, file often.

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One Response to “Another Federal Circuit Opinion on the Dangers of Late Application Filing”

  1. how to sing Says:

    Well written. I never thought I would agree with this opinion, but I’m beginning to view things differently. I definitely want research more on this as it appears very interesting. One thing I don’t get though is how everything is related together.

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