Lough v. Brunswick Corp. (901422128)

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Read for 2/21/11

Reading Notes

  • Decided in 1996 by the CAFC
  • Deals with a patent for stern drives which are marine propulsion devices with an engine inside the stern and a propeller outside the boat
  • Lough worked as a repairman and noticed the upper seal assembly often failed due to corrosion because of contact between the annular seal and the bell housing aperture
  • Made six prototypes in the spring of 1986
    • Put one on his own boat, gave another to a friend and the others to other acquaintances free of charge
      • Did not ask for comments or attempt to sell any
  • After learning of Lough's invention Brunswick designed its own improved seal
    • Lough sued for infringement
  • Jury found that he did not prove public use before one year prior and that he had infringed several claims
    • Brunswick appealed decision after motions were denied challenging the denial on the issue of public use
  • Claim that the use of Lough's prototypes were not experimental
  • Lough's evidence
    • Did not receive compensation
    • Did not place others on sale
    • Gave them only to personal acquaintances so they were unlikely to be seen by the public
  • CAFC disagrees with Lough
    • Only issue is if the known use was experimental
  • Bad news for Lough
    • Lost track of one of the prototypes entirely
    • Did not ask for any comments
  • Hold that the jury had no legal basis to conclude that the use was experimental - reverse the denial of JMOL and vacate the award of damages


  • A party contends the opposition has insufficient evidence to support its case

Statutory Bars

  • Defined public use as "any use of the invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor"
  • Policies underlying the public use bar:

(1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; (2) favoring the prompt and widespread disclosure of inventions; (3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and (4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time.

  • Consideration for experimentation
    • Number of prototypes
    • Duration of testing
    • Whether records or progress reports were made
    • Existence of a secrecy agreement
    • Whether compensation was received
    • Extent of the control the inventor maintained over the testing
      • This one is critically important

Dissenting Judge

  • Majority confuses role as law-giver and law-reviewer with that of fact-weigher and fact-decider
  • Not an issue of big companies fighting but one of a big company fighting a home-made improvement by a man with a high school education
    • Solved the problem by trial and error
  • Had he read prior cases he would have done the necessary things but in this case he just went with it
  • The question at hand is whether a reasonable jury could have arrived at the conclusion it did, not if he was experimenting
  • The majority was trying to avoid a complicated problem of infringement under doctrine of equivalents

Class Notes