Public use can’t be experimental if not for purposes of the patent applicationApril 2, 2009

In a decision last week, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity of a patent and summary judgment to the defendant on the Plaintiff's false advertising claims. The defendant asserted the patent was invalid as obvious and by virtue of a prior public use. The district court held a genuine issue of fact existed regarding whether the public use was experimental, but granted summary judgment of obviousness. The court also granted summary judgment on the false advertising claims.

The Federal Circuit agreed the patent was invalid, but on the grounds of public use. Specifically, the court held there was no genuine issue of material fact that the public use both embodied all the claim limitations and was not for experimental use. While the purpose of the use was ostensibly for purposes of durability testing, the court observed that the results of the "test" (which was performed in 1989) were not available until almost a year after the patent application was filed in 1992. As such, even if the use was for purposes of testing durability, it could not, as a matter of law, be experimental use, because it was not for purposes of the patent application.

The court also affirmed the summary judgment on the Lanham Act false advertising claims, agreeing with the district court there was no evidence the two challenged statements were false.

More detail of Clock Spring, L.P. v. Wrapmaster, Inc. after the jump.

Clock Spring is the owner of a patent relating to repairing damaged high-pressure gas pipes. Clock Spring sued several defendants, including Wrapmaster, for infringement and false advertising under § 43(a) of the Lanham Act, asserting Wrapmaster made false or misleading statements about its goods. Wrapmaster contended the asserted claims were invalid based on obviousness and based on Clock Spring's public use of the patented method more than 1 year prior to the patent's priority date. Specifically, in 1989, Clock Spring demonstrated the claimed method for a group of industry professionals, but the patent application was not on file until 1992. The district court granted summary judgment to Wrapmaster on obviousness and the Lanham Act claims, but held there was a fact issue regarding whether the 1989 demonstration was experimental. Clock Spring appealed.

The Federal Circuit affirmed, but held the patent invalid by virtue of the prior public use rather than obviousness.

Clock Spring argued that not all the limitations of the claims were involved in the demonstration and the use was experimental and therefore not barring. The Federal Circuit had little trouble holding all the claim elements were present in the demonstration. Clock Spring argued that the demonstration lacked three elements: (1) a "cavity" in the pipe; (2) that the "filler material" was used to fill the "cavity"; and (3) that the pipe was not wrapped while the filler material was in an "uncured state." The court addressed the first two missing elements by pointing out there was evidence that there were "pinhole areas of corrosion" in the pipe, which would satisfy the requirement of a "cavity." Further, while it was not explicit that filler was used to fill the pinholes, this would have been obvious given "the whole purpose of the experiment was to demonstrate a method of 'spot repair' of pipelines. We have held that the public use bar applies to obvious variants of the demonstrated public use."

The third element was shown from the duration of the demonstration and reports of attendees to the demonstration. Attendees noted that Clock Spring wrapped the pipes before the filler had cured. Also, the brief duration between applying the filler and wrap (three minutes) provided evidence that the filler had not fully cured. Because Clock Spring had provided no evidence controverting this evidence, there was no genuine dispute that the demonstration embodied all elements of the claims.

Regarding experimental use, the court noted there are 13 factors that can be considered when determining whether a public use is experimental:

(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.

Here, the inventor did not have control over the public use, and the court observed this factor can be dispositive. The court declined to rest its decision on this ground, however, because it further noted use is "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." Further, this testing must be "for purposes of the filing of a patent application." Here, the public use occured in 1989. The patent application that led to the patent was filed in 1992. However, the pipe that was repaired was not excavated to determine the durability of the claimed method until nearly a year after the application was filed. On this basis, the court held "even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use exception into play." Therefore, there was no issue of material fact regarding the non-experimental nature of the demonstration, and the court therefore affirmed the finding of invalidity on the alternative grounds of public use.

Finally, the court addressed the Lanham Act false advertising claims. In order to prevail on such a claim in the Fifth Circuit, Clock Spring had to prove:

(1) a false or misleading statement of fact about a product; (2) such statement deceived or had the capacity to deceive a substantial segment of potential consumers; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the product is in interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the statement.

The court addressed only the first element, whether a false statement was made. The two allegedly false statements were: (1) "Wrapmaster PermaWrap™ sleeves contain an embedded metallic mesh material that enhances the strength of the sleeve," and (2) "'Diamond Grip' Technology [ensures] that a mechanical locking system exists in addition to the chemical bonding of the Adhesive. It is basically a 'belt and suspender' approach to ensure the permanence of the installation."

Regarding the first statement, Clock Spring offered no evidence of the comparative strength of the sleeve with and without the metallic mesh, and thus there was no evidence in the record that this statement was false. Regarding the second statement, While Clock Spring had presented evidence based on expert testing, Wrapmaster asserted and provided evidence that the design had changed between the date of testing (2004) and the date the statements were made (2007). Clock Spring did not provide rebuttal evidence, and therefore the court reasoned there was no evidence that the statements about the 2007 product were false, and as such there was no issue of fact that would preclude summary judgment. Accordingly, the court affirmed the district court's decision on the 43(a) claim.

To read the full decision in Clock Spring, L.P. v. Wrapmaster, Inc., click here.

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