Clock Spring, L.P. v. Wrapmaster, Inc.
90 U.S.P.Q. 2d (BNA) 1212, 2009 U.S. App. LEXIS 6387, 560 F.3d 1317 (2009)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A public use of an invention more than one year before the patent application filing date invalidates the patent under 35 U.S.C. § 102(b), unless the use was primarily for experimental purposes to test claimed features or determine workability for the patent application, not for market testing or commercial promotion.
Facts:
- In October 1989, Norman C. Fawley, a named inventor on the '307 Patent, conducted a public demonstration of a pipe repair method in Cuero, Texas.
- Representatives from several gas transmission companies attended the demonstration and were not under any obligation of confidentiality.
- The demonstration involved repairing a pipe by filling cavities with a filler material and then wrapping it with a high-tensile-strength band while the filler was still in an uncured, workable state.
- The stated purpose of the demonstration, according to various reports, was to familiarize pipeline personnel with the technology, train them in its use, and gather input from industry professionals.
- The demonstration was also intended to test for durability to gain 'acceptance by regulators and the pipeline industry.'
- The patent application for this method (the '307 Patent) was not filed until September 9, 1992, almost three years after the demonstration.
- The specific installation from the 1989 demonstration was not exhumed and examined for durability until almost a year after the 1992 patent application was filed.
Procedural Posture:
- Clock Spring, L.P. sued Wrapmaster, Inc. in the U.S. District Court for the Southern District of Texas for patent infringement of the '307 Patent and for false advertising under the Lanham Act.
- The two separate suits filed by Clock Spring were consolidated by the trial court.
- Wrapmaster moved for summary judgment, arguing the '307 Patent was invalid due to prior public use and obviousness, and that the Lanham Act claim failed.
- A magistrate judge recommended granting summary judgment, finding the patent invalid on grounds of both prior public use and obviousness.
- The district court judge reviewed the recommendations and rejected the finding on prior public use, concluding a genuine issue of fact existed as to whether the use was experimental.
- However, the district court adopted the magistrate's recommendation on obviousness and granted summary judgment in favor of Wrapmaster, holding the '307 Patent invalid for obviousness and dismissing the Lanham Act claim.
- Clock Spring, L.P., as appellant, appealed the district court's final judgment to the U.S. Court of Appeals for the Federal Circuit; Wrapmaster, Inc. is the appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does an inventor's public demonstration of a pipe repair method, conducted more than one year before filing a patent application, constitute an invalidating 'public use' under 35 U.S.C. § 102(b) when the demonstration's stated purpose was to familiarize industry personnel with the technology rather than to test claimed features for the patent application?
Opinions:
Majority - Dyk, J.
Yes. A public demonstration of an invention more than one year before the patent application is filed constitutes an invalidating public use if its primary purpose is commercial or promotional, rather than experimental testing for patentability. The court determined that the 1989 demonstration was a public use that occurred before the patent's critical date (September 9, 1991). The court rejected Clock Spring's claim that the demonstration qualified for the 'experimental use' exception. For a use to be experimental, it must be for the purpose of testing claimed features or determining if the invention will work for its intended purpose in the context of perfecting it for a patent application. Here, the evidence, including reports from the inventor's own company, indicated the demonstration's purpose was to familiarize industry personnel with the technology, provide training, and gain market and regulatory acceptance. Testing for durability for these purposes is not the same as testing for patentability. The fact that the inventors filed the patent application in 1992, without waiting for long-term durability results, signified that they considered the invention ready for patenting at that time, undermining the claim that the 1989 demonstration was a necessary experiment.
Analysis:
This decision reinforces a strict interpretation of the 'experimental use' exception to the public use bar in patent law. It clarifies that testing activities aimed at market acceptance, regulatory approval, or commercial promotion do not toll the one-year statutory bar under 35 U.S.C. § 102(b). The case serves as a critical precedent for inventors, emphasizing that any public disclosure or demonstration that is not strictly for perfecting the invention for patentability starts the one-year clock to file an application. This holding makes it more difficult for patentees to retroactively characterize commercial or promotional activities as 'experimental' to save a patent from invalidity.
