TP Laboratories, Inc. v. Professional Positioners, Inc.
724 F.2d 965 (1984)
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Rule of Law:
A use of an invention is not a "public use" under 35 U.S.C. § 102(b) if it is for a bona fide experimental purpose. Whether a use is experimental is determined by considering the totality of the circumstances, and the burden of proving patent invalidity by public use remains on the patent challenger at all times.
Facts:
- Dr. Harold Kesling, an orthodontist, invented an improved tooth positioning appliance featuring wire "seating springs."
- Kesling was an officer of TP Laboratories, Inc., an orthodontic supply company, and also practiced at the Kesling & Rocke (K & R) orthodontic group.
- Between 1958 and early 1961, more than one year before filing a patent application, Kesling fitted three K & R patients with the new appliance as part of their ongoing treatment.
- The patients were not asked to sign confidentiality agreements or keep the device secret.
- Kesling monitored the devices' performance through regular patient check-ups over several months or years to assess their effectiveness in correcting dental irregularities.
- Two of the patients were charged a standard, fixed fee for their overall orthodontic services, with no separate charge for the new device; the third patient received free treatment as a professional courtesy.
- During this period, neither Kesling nor TP Laboratories sold or offered to sell the new device to any other orthodontists.
- Out of 606 tooth positioners used by the K & R practice between 1958 and 1960, only the three fitted on these patients contained the new invention.
Procedural Posture:
- TP Laboratories, Inc. (TP) sued Professional Positioners, Inc. (PRO) in the U.S. District Court for the Eastern District of Wisconsin for patent infringement.
- Following a bench trial, the district court held TP's patent invalid under 35 U.S.C. § 102(b), concluding that a 'public use' had occurred more than one year before the patent application was filed.
- The district court dismissed the infringement charge as a result of its invalidity finding.
- TP, as appellant, appealed the judgment of invalidity to the U.S. Court of Appeals for the Federal Circuit.
- PRO, as appellee, filed a cross-appeal challenging the district court's denial of its motion for attorney fees.
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Issue:
Does an inventor's use of a patented orthodontic appliance on three patients, without an explicit secrecy agreement but within a controlling doctor-patient relationship, constitute a barring "public use" under 35 U.S.C. § 102(b) when the use is necessary to determine the invention's long-term effectiveness?
Opinions:
Majority - Nies, J.
No. An inventor's use of a patented device on patients for the purpose of long-term testing is a non-barring experimental use, not a "public use" under 35 U.S.C. § 102(b). The court reasoned that experimental use is not an 'exception' to the public use bar; rather, a bona fide experimental use negates a finding of 'public use' in the first place. The analysis is not a two-step inquiry but a single question: considering the totality of the circumstances, was the activity a 'public use' under the statute? The statutory presumption of validity places the burden of proof permanently on the party challenging the patent. Here, the inventor needed to test the device on actual patients over a long period to determine its efficacy. The doctor-patient relationship established sufficient control over the experiment, making a formal secrecy pledge unnecessary. Furthermore, the absence of any sales, offers for sale, or other commercial activity demonstrated that the inventor's intent was to test the device, not to exploit the market.
Analysis:
This decision clarifies the 'experimental use' doctrine by reframing it as an activity that negates a finding of 'public use,' rather than as an exception to it. The ruling firmly establishes that the burden of proving invalidity by public use remains with the patent challenger and never shifts to the patentee. It champions a holistic 'totality of the circumstances' approach, prioritizing factors like the necessity of public testing and the absence of commercial exploitation over formalities such as express secrecy agreements. This precedent provides inventors, particularly in fields like medicine where real-world testing is essential, greater leeway to perfect their inventions before the one-year statutory bar begins to run.
