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The court affirmed the district court’s judgment that certain asserted claims were anticipated by the “Ethicon Prototype,” which was conceived of prior to the priority date of Tyco’s patent, but not actually reduced to practice until after the priority date.  The court, however, reversed the district court’s holding that certain other claims were not obvious, because the district court erred by excluding the Ethicon Prototype as prior art under Section 103 on the grounds that, having not been actually reduced to practice until after the priority date, the Ethicon Prototype was “secret” prior art that could not be used for the purposes of obviousness.  The Federal Circuit held, however, that there is no requirement in Section 102(g) that prior art be reduced to practice before the priority date and therefore Section 102(g) prior art may serve as prior art under Section 103.  

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., Case No. 2013-1324, -1381 (December 4, 2014); Opinion by: Prost, joined by Reyna, Hughes; Appealed From: District of Connecticut, Arterton, J.  To read the full opinion, click here.

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