To: Patent Law Class
From: Sam Kasley
Date: December 14, 2007
Re: Verdegall Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628 (Fed, Cir. 1987).
Subject
Prior Art anticipated by the “All Elements†Rule
Summary
This is a patent infringement action claiming that the Verdegall patent for a process to make urea-sulfuric acid fertilizer was infringed by Union Oil. The defendant, Union Oil claimed that the patent was invalid because it was anticipated by another process patent. The assumption of patent validity was overcome by the defendant on appeal by establishing that the prior art patent met the “all elements†rule for anticipation based on 35 U.S.C. §102(e).
Procedural History
Verdegaal sued Union Oil for patent infringement in the United States District Court for the Eastern District of California. The jury verdict was for the plaintiff that the patent was valid and infringed. Union Oil appealed to the Federal Circuit. The Federal Circuit reversed, finding the patent was anticipated by prior art.
Analysis
The crux of the dispute about patent validity was an element in a claim in the Verdegaal patent that teaches that a heat sink (a mass of material that can absorb heat without an excessive rise in temperature) is a required aspect of that invention. Union Oil argued that a previous patent by Stoller taught the use of a heat sink in a process to make the same end product. The court found that Stoller may not have recognized that he was using a heat sink but that he did use one by leaving a heel from the previous batch of manufactured material in the process vessel for the next reaction. The court concluded that even assuming that Stoller did not recognize that the heel of his process functioned as a heat sink, that property was INHERENTLY (emphasis added) possessed by the heel in his disclosed process, and thus the Stoller process anticipated the claimed invention of Verdegaal. So in this case, the “all elements†rule was satisfied not by having every element explicitly duplicated in the prior art, but by having one of the elements inherently duplicated in the prior art. This case stands for the proposition that the “all elements†rule can be satisfied by inherent elements in the prior art rather than a requirement that every element in the prior art explicitly duplicate every element in the patent at issue.
From: Sam Kasley
Date: December 14, 2007
Re: Verdegall Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628 (Fed, Cir. 1987).
Subject
Prior Art anticipated by the “All Elements†Rule
Summary
This is a patent infringement action claiming that the Verdegall patent for a process to make urea-sulfuric acid fertilizer was infringed by Union Oil. The defendant, Union Oil claimed that the patent was invalid because it was anticipated by another process patent. The assumption of patent validity was overcome by the defendant on appeal by establishing that the prior art patent met the “all elements†rule for anticipation based on 35 U.S.C. §102(e).
Procedural History
Verdegaal sued Union Oil for patent infringement in the United States District Court for the Eastern District of California. The jury verdict was for the plaintiff that the patent was valid and infringed. Union Oil appealed to the Federal Circuit. The Federal Circuit reversed, finding the patent was anticipated by prior art.
Analysis
The crux of the dispute about patent validity was an element in a claim in the Verdegaal patent that teaches that a heat sink (a mass of material that can absorb heat without an excessive rise in temperature) is a required aspect of that invention. Union Oil argued that a previous patent by Stoller taught the use of a heat sink in a process to make the same end product. The court found that Stoller may not have recognized that he was using a heat sink but that he did use one by leaving a heel from the previous batch of manufactured material in the process vessel for the next reaction. The court concluded that even assuming that Stoller did not recognize that the heel of his process functioned as a heat sink, that property was INHERENTLY (emphasis added) possessed by the heel in his disclosed process, and thus the Stoller process anticipated the claimed invention of Verdegaal. So in this case, the “all elements†rule was satisfied not by having every element explicitly duplicated in the prior art, but by having one of the elements inherently duplicated in the prior art. This case stands for the proposition that the “all elements†rule can be satisfied by inherent elements in the prior art rather than a requirement that every element in the prior art explicitly duplicate every element in the patent at issue.