A Primer on the Law of Invention Supression
Under 35 U.S.C. § 102(g)(2), "[a] person shall be entitled to a patent unless—. . . before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it." The Federal Circuit explained that there are actually two types of suppression or concealment under this section of the statute:
- cases in which the inventor intentionally suppresses or conceals his invention, and
- cases in which a legal inference of suppression or concealment can be drawn based on an unreasonable delay in making the invention publicly known.
According to Circuit Judge Linn,
Intentional suppression occurs when an inventor "designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public." Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir. 1985) (en banc). The only evidence Flex-Rest offers for this argument is the time taken to file the patent application for the KBS device and the fact that the device was kept secret during that time. "Intentional suppression, however, requires more than the passage of time. It requires evidence that the inventor intentionally delayed filing in order to prolong the period during which the invention is maintained in secret." Fujikawa, 93 F.3d at 1567 (emphasis added).
The record demonstrates that after reduction to practice, Steelcase moved almost immediately towards both filing a patent application and commercially disclosing the KBS device at a trade show, actions which indicate an intent to make a public disclosure. Both the patent application and commercialization efforts came to fruition about six and one-half months later. That the device was kept secret during this time is not, by itself, indicative of intentional suppression or concealment. See E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436 n.5 (Fed. Cir. 1988) ("Because work is ‘secret’ does not necessarily mean that it has been ‘abandoned, suppressed or concealed.’"). Because Flex-Rest did not offer any evidence indicating a designed intent to withhold the KBS device from the public, we conclude that there is not sufficient evidence to support a jury instruction regarding intentional suppression or concealment.
Flex-Rest next argues that the delay in filing a patent application for the KBS device supports an inference of suppression or concealment. "The failure to file a patent application, to describe the invention in a published document, or to use the invention publicly, within a reasonable time after first making the invention may constitute abandonment, suppression, or concealment." Dow Chemical, 267 F.3d at 1342 (citations omitted). Our case law provides guidance on what constitutes a reasonable delay when an invention is disclosed to the public by commercializing the invention.
In Dow Chemical, we held that a delay of two and one-half years between reduction to practice and the commercialization of an invention did not constitute a prima facie case of suppression or concealment where the first inventor made "reasonable efforts to bring the invention to market." 267 F.3d at 1343 (quoting Checkpoint, 54 F.3d at 762). In that case, the first inventor "actively and continuously took steps towards  commercialization . . . including the procurement of financing to build a new production plant and  attention to safety considerations." Id. We noted that the fastest route to commercialization was not required, only reasonable efforts. Id. Similarly, in Checkpoint, we agreed with an administrative law judge’s determination that a delay of four years between reduction to practice and commercialization was reasonable when the first inventor took steps to bring the invention to market such as disclosing it to his employer, conducting further tests, purchasing supplies from vendors, and helping develop a system for mass production. 54 F.3d at 762.
In this case, Flex-Rest offered no evidence to indicate that Steelcase’s delay of six and one-half months between reduction to practice and commercialization of the KBS device was not the result of reasonable steps to bring the invention to market. After reduction to practice, Steelcase resolved design issues and spent $775,000 on tooling for the parts to the KBS device. The lead times for creating the tooling varied from four weeks to approximately six months. Therefore, it does not appear that Steelcase could have brought the KBS device to market much sooner than the trade show unveiling in June 1991.
At the same time, Steelcase’s patent counsel began drafting a patent application for the KBS device, submitting a first draft to Steelcase in March 1991. The draft was reviewed by the four named inventors and filed in May 1991. No evidence indicated that this amount of time was unreasonably long.
We disagree with Flex-Rest’s contention that Lutzker and Young command a different result. First, both Lutzker and Young address disclosing a prior invention only by filing a patent application; they do not address—as is the case here—disclosure through commercialization. In an interference context, we have held that delayed filing due to commercialization efforts or improvements not reflected in the patent application are inexcusable. Lutzker, 843 F.3d at 1367; Young, 489 F.2d at 1281-82. However, we have expressly distinguished Lutzker and Young from situations in which public disclosure occurred by bringing the invention to market. See Dow Chemical, 267 F.3d at 1343 (distinguishing Lutzker and Young from cases in which an invention is disclosed to the public by commercialization); Checkpoint, 54 F.3d at 762 (distinguishing Lutzker because "[h]ere, . . . Kaltner’s invention was brought to the public by marketing"). are applicable here. Therefore, the "reasonable steps to market" identified in Dow Chemical and Checkpoint are applicable here.
Flex-Rest had the burden to produce sufficient evidence to create a genuine issue of material fact as to whether the KBS device was suppressed or concealed. We conclude that no evidence of record supports such an instruction. We also conclude that the district court fairly stated the legal principles in answering the jury’s questions on "public" and "prior art" and did not commit prejudicial error.