Lough v. Brunswick Corp. (JWB)

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The Case

  • FL Court of Appeals
  • 1986 – Lough (repairman for Brunswick inboard/outboard boats) determined that the corrosion in the upper seal assembly occurred due to contact between the annular seal and the bell housing aperture.
  • He designed a new upper seal assembly that isolated the annular seal from the aluminum bell housing in order to prevent such corrosion
  • Made a prototype and put it on his own boat; made a second prototype for a friend three months later, and also made one for owner of marina where he worked
  • Gave remaining prototypes to long-term friends
  • Filed for patent on June 6, 1988, which was issued July 18, 1989
  • Lough sued Brunswick for infringement on June 12, 1993, but Brunswick claimed noninfringement, invalidity


  • found that Brunswick failed to prove that Lough's invention was in public use before the critical date on June 6, 1987, one year prior to the filing date
  • found Brunswick infringed on claims 1-4
  • awarded Lough $1.5 million in lost profits
  • Brunswick moved for Judgment as a Matter of Law (JMOL), but was denied
  • Brunswick appealed


  • Brunswick argues that the district court erred in denying its motion for JMOL because the uses of Lough's prototypes prior to the critical date were not experimental.
  • Lough counters that the tests performed with the six prototypes were necessary experiments conducted in the course of completing his invention
  • Inventor is allowed to experiment, so that “an inventor [can have] time to determine if the invention is suitable for its intended purpose, in effect, to reduce the invention to practice”


  • After providing the five prototypes to these third parties, Lough did not ask for any comments concerning the operability of these prototypes.
  • Lough did not receive compensation for the prototypes, but he also did not keep records for the alleged testing
  • Nor did he inspect the seal assemblies after they had been installed by other mechanics
  • Had no control of prototypes after distribution into what could be considered ‘public’
  • “Lough's failure to monitor the use of his prototypes by his acquaintances, in addition to the lack of records or reports from those acquaintances concerning the operability of the devices, compel the conclusion that, as a matter of law, he did not engage in experimental use.”

Dissenting Opinion

  • Man with high school education solved problem by trial and error, with an ingenious bushing of his own design, and, on his grandfather's metal lathe, after several tries, fashioned a half-dozen prototype seals that looked like they might do the job
  • He didn’t know that his lack of detailed notes may bar his patent, but that does not mean his prototypes were not experimental

Class Notes

  • Lough invented seal to reduce corrosion on drive shaft of boat motor
  • Built several six prototypes for himself, his boss, and close friends
    • The marina sold the boat with the prototype without Lough’s knowledge
  • Lough sued Brunswick for infringement


  • 1986 prototype invented
  • 1988 patent application
  • 1989 patent issued


  • District Court ruled that Brunswick pay Lough $1.5 million dollars
  • Court of Appeals has greater power to deal with matters of law than District Court (because District Court is decided by just a jury)
  • COA ruled that Lough’s invention was in public use
  • Not experimentation
    • No documentation
    • No progress reports
    • Number of prototypes not justified as experiment (unlike necessity of Nicholson’s road to be in public)
    • No secrecy

Dissenting Opinion

  • Lough was a man with a high school education and no scientific background (he was in a company)
  • He simply had a more casual experimentation process; does not mean he was not experimenting
  • Did not know he needed to keep rigorous records because he “hadn’t read the precedents”


  1. Public expectation of free use
  2. Quick disclosure of inventions
  3. Reasonable time to judge value (market testing)
  4. Cannot exploit the system