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[bamtxlaw]

I just have a basic question regarding patent validity.

I have a patent which may have its validity contested in court. The infringers are trying to say that there was prior art out there which invalidates the asserted method claim in my patent. However, the only way that the defendants can legitimately raise this arguement is if users use the "prior art" in an incorrect manner which is contrary to the literature and manuals the manufactures sent out.

Thus, my question is "can the incorrect use of a product still be considered prior art and thus invalidate my patent?" Have any of you seen any cases specifically addressing this issue?

Thanks for any insight.

Bamtxlaw

[JSonnabend]

Before addressing your question in substance, may I ask, are you an attorney and is this a matter you are handling for a client?

- Jeff

[bamtxlaw]

Thanks Jeff for responding. As for your question, I am actually a law student currently clerking at an IP firm. This matter pertains to a patent owner who has not become a client yet. As a result, I was hoping to find an anwer to this issue before I invest too much time and research into studying the patent technology. I'm pretty sure what the anwer is, but I wanted to confirm my conclusion with others in this forum. I hope this helps.

Thanks,

-bamtxlaw

[Wiscagent]

It would depend on the specifics of the incorrect use.

Example 1: – the product is actually used in the incorrect manner – I can’t help but think of the idiot that used a power lawn mower to trim his hedges.  (He trimmed his fingers in the process.)  Because that incident was published, it should represent prior art.

Example 2: - the instructions explicitly say do NOT – take more than a certain dose of medication.  If it later turns out that an excessive dose of the medication has a beneficial side effect, then I think the reference would simply help demonstrate non-obviousness.

Example 3 - the instructions recommend that something not be done – a caution that an engine should not be run above the “red line” or it will burn out.  To me this suggests that someone already has run the engine above the red line.  A bit of investigation would probably show lack of novelty.


That’s my opinion.


Richard Tanzer