Manville Sales Corporation v. Paramount Systems, Inc.
917 F.2d 544 (1990)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Use of an invention for the primary purpose of testing its functionality in its intended environment, rather than for commercial exploitation, constitutes an 'experimental use' and does not trigger the 'on sale' or 'public use' bars to patentability under 35 U.S.C. § 102(b).
Facts:
- In early 1971, Manville was subcontracted to supply a luminaire assembly for a lighting pole at a highway rest area in Wyoming, but the initial assembly failed in September 1971.
- That same month, Manville's research manager, Robert Zeller, conceived of a new self-centering 'iris' arm design to solve the problem.
- In October 1971, after a successful model test at its Ohio facility, Zeller sought permission from a Wyoming official to install the new design for field testing, providing a drawing marked with a confidentiality notice.
- Wyoming conditionally approved payment for the new device, subject to its satisfactory performance after installation.
- In November 1971, Zeller installed the device at the Fort Steele Rest Area, which was not yet open to the public.
- After the device successfully endured the winter, Zeller inspected it in March 1972 and concluded the iris arms worked as intended.
- Wyoming officials inspected the device and authorized payment in April 1972, and Manville began commercializing the invention.
- In 1984, Paramount's officers obtained a copy of Manville's iris arm drawing and used it to design and sell a competing product.
Procedural Posture:
- Manville Sales Corporation sued Paramount Systems, Inc. in the U.S. District Court for the Eastern District of Pennsylvania for patent infringement.
- Manville later added Paramount's officers, Anthony DiSimone and Robert Butterworth, as co-defendants.
- After a bench trial, the district court found Paramount, DiSimone, and Butterworth liable for infringement and rejected Paramount's defense that the patent was invalid under 35 U.S.C. § 102(b).
- The district court awarded damages to Manville.
- Paramount filed a Motion to Alter or Amend the Judgment, arguing the court lacked subject matter jurisdiction for sales made to the U.S. government, which the district court denied.
- Manville also filed a Motion to Amend the Judgment regarding the amount of damages, which the district court denied.
- Paramount, Butterworth, and DiSimone (Appellants) appealed the judgment to the U.S. Court of Appeals for the Federal Circuit, and Manville (Appellee) cross-appealed the damages award.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Is a patent invalid under 35 U.S.C. § 102(b) for being in 'public use' or 'on sale' when, prior to the critical date, the inventor installed the device at a remote, not-yet-public location primarily for testing in its intended weather environment, even though the inventor later received payment for it?
Opinions:
Majority - Michel, Circuit Judge.
No, the patent is not invalid. The activities in Wyoming fall under the experimental use exception to the on-sale and public use bars. The court must consider the totality of the circumstances in light of the policies underlying the statutory bars. Here, Manville's actions did not lead the public to believe the invention was freely available, as the location was remote and closed to the public, and the design drawing was marked confidential. Manville did not attempt to commercially exploit the invention; its primary motive was experimentation to determine if the device could withstand the harsh Wyoming winter, its intended environment. Finally, Manville acted consistently with the policy of prompt disclosure by filing for a patent within one year of confirming the invention worked as intended after the necessary environmental testing was complete.
Analysis:
This case solidifies the importance of the 'experimental use' doctrine as a key exception to the on-sale and public use bars in patent law. It clarifies that the determination is not based on a rigid set of rules but on a flexible 'totality of the circumstances' inquiry guided by the underlying policies of § 102(b). The decision emphasizes that testing an invention's durability in its intended real-world environment is a legitimate experimental purpose, even if the inventor ultimately receives payment. This precedent provides inventors with crucial leeway to perfect their inventions before the one-year statutory clock for filing a patent application begins to run.
Unlock the full brief for Manville Sales Corporation v. Paramount Systems, Inc.