## Facts

- Mark Bruckelmyer owned U.S. Patent Nos. 5,567,085 and 5,820,301, directed to methods for thawing frozen ground so concrete can be poured.
- The methods generally used hoses placed around or within concrete forms to warm the ground before pouring.
- More than 13 years before Bruckelmyer’s filings, Norman Young pursued a Canadian patent application that later issued as Canadian Patent No. 1,158,119.
- During Canadian prosecution, Young submitted drawings (figures 3 and 4) depicting use of the invention to thaw frozen ground; those figures were later canceled and did not appear in the issued Canadian patent.
- The canceled figures remained in the Canadian application file maintained by the Canadian patent office.
- The issued Canadian patent was classified and indexed, but the application file (including the canceled figures) was not separately indexed, and the issued patent did not indicate additional thawing-related drawings existed in the file.
- Ground Heaters relied on the canceled figures as prior art and moved for summary judgment that the U.S. patents were invalid.
- Bruckelmyer stipulated that if the Canadian application materials (including the canceled figures) qualified as a “printed publication” under 35 U.S.C. § 102(b), then his patents would be obvious and invalid.

## Issues

1. Whether a foreign patent office application file, including canceled drawings not shown in the issued patent and not separately indexed, can be a “printed publication” under 35 U.S.C. § 102(b) based on public accessibility before the critical date.
2. Whether lack of an explicit “clue” in the issued patent pointing to canceled file materials prevents those materials from being publicly accessible.

## Decision

- The Federal Circuit affirmed summary judgment that Bruckelmyer’s patents were invalid.
- The court held the Canadian application file, including the canceled figures, was a “printed publication” under § 102(b) because it was publicly accessible.
- The court rejected the contention that indexing of the file or an “indispensable clue” in the issued patent was required for public accessibility.
- Given the stipulation, once the file materials were deemed a printed publication, the invalidity determination followed without separate appellate analysis of obviousness.
- Judge Linn dissented, concluding the canceled figures were not publicly accessible because nothing reasonably directed a skilled searcher to request the file to find those specific materials.

## Legal Principles

- A reference qualifies as a “printed publication” under 35 U.S.C. § 102(b) if it was publicly accessible such that persons interested and ordinarily skilled in the art, exercising reasonable diligence, could locate it.
- Public accessibility may be established when a patent office file wrapper is open to the public and obtainable upon request, even if portions of the file were canceled from the issued patent.
- Separate indexing or cataloging of the specific file contents is not a necessary condition for a finding of public accessibility.
- The statute does not require an explicit pointer in an issued patent to every item in the associated prosecution file for those items to be treated as publicly accessible.

## Conclusion

The Federal Circuit held that canceled drawings preserved in a publicly obtainable foreign patent prosecution file can constitute a § 102(b) printed publication, and it affirmed invalidation of the asserted U.S. patents based on the parties’ stipulation tying printed-publication status to obviousness.


Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006)