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For purposes of 35 U.S.C.S. § 102(b), case law defines the contours of what it means to be "accessible to the public." The principal policy underlying the statutory bar is to prevent the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available. The question in such a case is thus whether the actions taken by the inventor (or a third party) create a reasonable belief as to the invention's public availability. Factors that have been identified as being helpful in analyzing that question include 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. The last factor captures the commonsense notion that whether an invention is accessible to the public depends, at least in part, on the degree of confidentiality surrounding its use: An agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a public use where there is not commercial exploitation.
This appeal involves a challenge to the validity of two plant patents for varieties of table grapes developed by the U.S. Department of Agriculture ("USDA") and licensed to the California Table Grape Commission. The plaintiffs filed suit against the USDA and the California Table Grape Commission, seeking to invalidate the patents on the ground that the two grape varieties were in public use more than one year before the applications for both plant patents were filed, and that the patents are therefore invalid under the public use bar of 35 U.S.C. § 102(b) (2006). The United States District Court for the Eastern District of California initially ruled that sovereign immunity barred this action against the USDA, and that the case could not go forward without the USDA as a party. On remand, the district court granted partial summary judgment for the defendants on matters that are not at issue on appeal. The court held a bench trial on the remaining question whether the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields constituted an invalidating public use of the plant varieties. The district court found that the actions of those individuals did not constitute a public use of the two plant varieties and therefore rejected the plaintiffs' challenge to the patents.
Did the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields constitute an invalidating public use of the plant varieties?
The court held that the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields did not constitute an invalidating public use of the plant varieties under 35 U.S.C.S. § 102(b) because the evidence showed that the individuals sought to maintain control of the plants and continued to treat their possession of the unreleased varieties as confidential and non-public. While the individuals grafted the plants and grew them in locations that were visible from public roads, the grape varieties could not be reliably identified simply by viewing the growing vines alone.