[87] Cough v. Gilbert § Barker Mfg., 106 U.S. 166 (1882); Carnegie Steel v. Cambria Iron, 185 U.S. 403 (1902).

[88] Topliff v. Topliff, 145 U.S. 156 (1892). This does not of course mean that the patent may not be invalid for obviousness.

[89] General Electric Company v. Jewel Incandescent Lamp Co., 326 U.S. 242, 67 USPQ 155 (1945); Ansonia Brass Co. v. Electric Supply Co., 144 U.S. 11 (1892); WL Gore & Assocs. v. Garlock, 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983).

[90] See, for example, Tilghman v. Proctor, 102 U.S. 707 (1881) where it was held that incidental production fats and oils in prior process for purifying fats and oils did not anticipate processes for preparing fatty acids even though the claimed conditions had been used in the prior purification processes, and International Nickel Co. v. Ford Motor Co., 119 USPQ 72 (S.D.N.Y. 1958) where no anticipation of a magnesium-containing alloy was found in a case where prior workers had produced an alloy that contained magnesium, but this was "purely by chance" and was "never recognized or appreciated" by its prior workers and Pfizer Inc. v. International Rectifier Corp., 545 F.Supp. 486, 207 USPQ 397 (C.D. Cal. 1980) where a small quantity of tetracycline was produced as a by product by a prior process, but this went unrecognized.

[91] See, for example, Clements Industries v A. Meyers & Sons Corp, 12 USPQ2d 1874 (S.D.N.Y. 1989) where functional language referring to a newly discovered function (that a particularly shaped head used in a tag pin resulted in a reduction of the tangling of assemblies of such tag pins) was not sufficient to overcome a finding that what was claimed was inherently disclosed in the prior art.

[92] See, for example, Sutter Products v. Pettibone Mulliken Corp., 428 F.2d 639 166 USPQ 100 (7th Cir. 1970).

[93] Brush v. Cordit, 132 U.S. 39 (1889). Even though the statute does not use the word "public" in connection with uses under 35 USC § 102(a) the courts have implied this requirement, see Carella v. Starlight Archery, 231 USPQ 644 (Fed. Cir. 1986), "The statutory language 'known or used by others in this country' means knowledge or use which is accessible to the public."

[94] FMC Corp. v. FE Myers & Bros. Co., 155 USPQ 299.

[95] In Egbert v. Lippman, 104 U.S. 333 (1881), the Supreme Court held that supply of corset steels to the inventor's girlfriend (later wife) constituted a public use of the invention since she was not placed under any obligation of secrecy. The court noted "to constitute prior use of an invention it is not necessary that more than one of the patented articles be publicly used". In The National Research and Development Corp v. Varian Associates, 30 USPQ2d 1537, the case was one where an inventor's supervisor had disclosed the invention to another in a private conversation without making it clear that the disclosure was confidential and the recipient of this information had then gone ahead to make his own equipment in accordance with the disclosure, this equipment having been made more than one year before the actual filing date of the U.S. patent application in question. This was held to be prior use. The court did, however, expressly state that this case can not be cited as a precedent.

[96] In re Smith, 714 F.2d 1127, 218 USPQ 976 (1983).

[97] Moleculon Research Corp. v. CBS, 793 F.2d 1261, 229 USPQ 805 (1985).

[98] Beachcomber Int'l Inc v. WildeWood Creative Products Inc., 31 F.3d 1154, 31 USPQ2d 1653 (1994).

[99] Metallizing Engineering Co. v. Kenyor Bearing, 68 USPQ 54 (2nd Cir. 1946), Kinzenbaw v. Deene, 741 F.2d 1540 222 USPQ 929 (Fed. Cir. 1984). In Metallizing Engineering, Judge Learned Hand reached back to the reasoning in Pennock v. Dialogue that a patent's effective term should not be extended by adding on a period of prior secret use to the statutory period.

[100] W.L. Gore & Associates v. Garlock, 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983). This can occur where the invention relates to a process which is used in secret to produce a commercial product. Prior to the creation of the Federal Circuit, some regional circuits were not convinced that prior secret commercial use by a "pirate" could not act as a statutory bar. See Lorenz v. Colgate-Palmolive-Peet, 77 USPQ 138 (3d Cir. 1948).

[101] See, for example, Chemitron Corp. v. Procter & Gamble Co, 427 F.2d 893, 165 USPQ 678 (4th Cir. 1970).

[102] The excusal of prior use if it was of an experimental nature necessary to "bring the invention to perfection" dates back at least to the Supreme Court's decision in City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877). The case involved testing a new form of road surfacing that required testing by exposing it to normal public traffic. The testing lasted for six years before a patent application was filed. A more recent case is T.P. Laboratories, Inc. v. Professional Positions, Inc., 717 F.2d 1374 220 USPQ 577 (Fed. Cir. 1984).

[103] Ibid.

[104] Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 16 USPQ2d 1587 (Fed. Cir. 1990).

[105] Lough v. Brunswick Corp., 86 F.3d 1113, 39 USPQ2d 1100 (Fed. Cir. 1996).

[106] RCA Corp v. Data General Corp, 12 USPQ2d 1449 (Fed. Cir. 1989), and Atlantic Thermoplastics Co. Inc. v. Faytex Corp, 28 USPQ2d 1343 (Fed. Cir. 1993).

[107] In re Mann, 861 F.2d 1581, 8 USPQ2d 2030.

[108] Tone Brothers Inc. v. Sysco Corp, 31 USPQ2d 1321 (Fed. Cir. 1994).

[109] Finnigan Corp v. ITC, 51 USPQ2d 1001 (Fed. Cir. 1999).