March 25, 2009
Clock Spring sued Wrapmaster for infringing 5,632,307. '307 claims a method of gas pipe repair. Without expert affidavits, the district court found in summary judgment the patent invalid due to obviousness, rejecting a prior-use argument. On appeal, the CAFC bought Wrapmaster's showing of prior use: that Clock Spring publically demonstrated the technology in 1989, more than a year prior to filing the patent (1992). Herein, rubber-band §102(b) readily stretches to envelop §103(a). And a discourse on experimental use.
Clock Spring v. Wrapmaster (CAFC 2008-1332) precedential
Under 35 U.S.C. § 102:
A person shall be entitled to a patent unless . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.
For a challenger to prove a patent claim invalid under § 102(b), the record must show by clear and convincing evidence that the claimed invention was in public use before the patent's critical date. See Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007); Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 1383 (Fed. Cir. 2007); see also Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998). The critical date is "one year prior to the date of the application for patent in the United States," here September 9, 1991. See 35 U.S.C. § 102(b). "[A] public use includes any public use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor." Adenta, 501 F.3d at 1371 (quotation and alteration marks omitted). In order for a use to be public within the meaning of § 102(b), there must be a public use with all of the claim limitations. See Lough v. Brunswick Corp., 86 F.3d 1113, 1122 n.5 (Fed. Cir. 1996) ("Each claim of the patent must be considered individually when evaluating a public use bar.").
There is no dispute that the 1989 demonstration was public. In fact, representatives of several other domestic gas transmission companies were present at the demonstration, and there was no suggestion that they were under an obligation of confidentiality. This demonstration was accessible to the public. See Am. Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed. Cir. 2008) ("An invention is in public use if it is shown to or used by an individual other than the inventor under no limitation, restriction, or obligation of confidentiality.").
There is also no dispute that all the limitations of claim 1 were involved in the demonstration save for three.
The panel invoked § 102, anticipation. But § 102 readily stretches to § 103 by case law.
We have held that the public use bar applies to obvious variants of the demonstrated public use. Netscape Commc'ns Corp. v. Konrad, 295 F.3d 1315, 1321 (Fed. Cir. 2002).
Clock Spring pled "experimental use." That means nothing to public use. "[E]xperimental use cannot negate a public use when it is shown that the invention was reduced to practice before the experimental use." Further, "there is no experimental use unless claimed features or overall workability are being tested for purposes of the filing of a patent application."
In the alternative, Clock Spring claims that the 1989 demonstration was an experimental use and not a prior public use.
The experimental use exception is not a doctrine separate or apart from the public use bar. EZ Dock, Inc. v. Schafer Sys. Inc., 276 F.3d 1347, 1351-52 (Fed. Cir. 2002). Rather, something that would otherwise be a public use may not be invalidating if it qualifies as an experimental use. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1211 (Fed. Cir. 2005) (limiting "experimentation sufficient to negate a pre-critical date public use or commercial sale to cases where the testing was performed to perfect claimed features, or . . . to perfect features inherent to the claimed invention"). In Allen Engineering Corp. v. Bartell Industries, Inc., we catalogued a set of factors that in previous cases had been found instructive, and in some cases dispositive, for determining commercial versus experimental uses. 299 F.3d 1336, 1353 (Fed. Cir. 2002). These factors include:
(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9) the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.
Id. (quotation and alteration marks omitted). Though a prior commercial sale and not a prior public use was at issue in Allen Engineering, the factors explicated are equally relevant to an analysis of experimental use.
We have said that lack of control over the invention during the alleged experiment, while not always dispositive, may be so. Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1366 (Fed. Cir. 2008). In that case, we held that a public use had occurred, finding "dispositive" the fact that the patentee "did not have control over the alleged testing," which was performed by its customer. Id. Clock Spring argues that Fawley, a named inventor, exercised tight control over the demonstration, as shown through the detailed reports made of the demonstration. But, the detailed reports do not provide evidence that Fawley controlled the demonstration. An independent observer "analyzed and recorded" the 1989 demonstration. Three of the eleven Clock Spring installations were done by the pipeline's personnel. None of these individuals was under Fawley's control or surveillance. We need not, however, rely on lack of control as establishing public use because we conclude that the use cannot qualify as experimental for other reasons.
A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose--itself a requirement of patentability. See In re Omeprazole Patent Litig., 536 F.3d 1361, 1373-75 (Fed. Cir. 2008). In other words, an invention may not be ready for patenting if claimed features or overall workability are being tested. But, there is no experimental use unless claimed features or overall workability are being tested for purposes of the filing of a patent application.8 See EZ Dock, 276 F.3d at 1352, 1354; Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998) (stating that the public use provision strives to provide "inventors with a definite standard for determining when a patent application must be filed" (quotation marks omitted)). Indeed, the experimental use negation of the § 102(b) bar only exists to allow an inventor to perfect his discovery through testing without losing his right to obtain a patent for his invention. See EZ Dock, 276 F.3d at 1352.
8 To be sure, an applicant may in some circumstances elect to delay filing an application and continue testing until an actual reduction to practice has occurred; such testing may nonetheless be for the purpose of filing an application. Of course, it is clear from this court's case law that experimental use cannot negate a public use when it is shown that the invention was reduced to practice before the experimental use, even if an application has not yet been filed. See Omeprazole Patent Litig., 536 F.3d at 1372.
Clock Spring's problem, however, is that no report in the record states, or in any way suggests, that the 1989 demonstration was designed to test durability for the purposes of the patent application to the PTO. In fact, the reports make clear that the durability testing was for "acceptance by regulators and the pipeline industry," J.A. 1444,9 and that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use exception into play. By filing the 1992 application, the inventors represented that the invention was then ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.
In light of our finding of invalidity due to prior public use, we do not reach the obviousness question.
Clock Spring argued novelty in dependent claims, but for the first time on appeal. Too late, the CAFC said.
Clock Spring also lost a false advertising (Lanham Act) assertion.
Summary judgment to Wrapmaster was appropriate because Clock Spring failed to establish even a minimal prima facie case of false advertising under the Lanham Act.
Posted by Patent Hawk at March 25, 2009 5:27 PM | Prior Art
This line of the CAFC decision bothered me as an examiner:
"Although the report does not specifically state that the filler was used to fill the pinholes, applying filler to cavities would have been obvious, particularly in light of the express statement in the NCF report that the filler compound was intended to be “used to fill in pitted areas of pipe corrosion,”"
Specifically stating that something was obvious and then upholding a anticipation rejection. If I had used the word obvious near anyone of my 102 rejections I'd get a boot to the ass by SPE, QAS and/or the board.
I still think its a 102 rejection but I would have worded it as :
Although the report does not specifically state that the filler was used to fill the pinholes, applying filler to cavities would have been implicit, particularly in light of the express statement in the NCF report that the filler compound was intended to be “used to fill in pitted areas of pipe corrosion,”
The reference teaches the filler and teaches holes. Since the holes are repaired without adding a filler and the filler wouldn't be mentioned if it wasn't used in repair, then the addition of the filler is an implicit teaching.
Posted by: Anon examiner at March 29, 2009 9:06 AM
Correction for above comment, last line:
The reference teaches the filler and teaches holes. Since the holes can't be repaired without adding a filler and the filler wouldn't be mentioned if it wasn't used in repair, then the addition of the filler is an implicit teaching.
Posted by: Anon examiner at March 29, 2009 9:08 AM