Lough v. Brunswick Corp. (901422128)

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

JMOL

• 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