Intellectual Property Law

Public use can't be experimental if not for purposes of the patent application

By McKee, Voorhees & Sease, P.L.C.

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.

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Full post as published by FileWrapper on April 02, 2009 (boomark / email).