Lough v. Brunswick Corp. SKH

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  • Holder of patent for seal assembly in stern drives for boats sued alleged infringer. The United States District Court for the Middle District of Florida, Ralph W. Nimmons, Jr., J., entered judgment on jury verdict in favor of holder, and alleged infringer appealed. The Court of Appeals, Lourie, Circuit Judge, held that patent was invalid under public use bar.
  • Reversed in part, vacated in part.
  • When a party moves for judgment as a matter of law (JMOL) in a case tried to a jury, Court of Appeals reviews de novo the district court's decision by reapplying the standard governing judgment as a matter of law.
  • When a party moves for judgment as a matter of law (JMOL) in a case tried to a jury, Court of Appeals reviews legal standards that jury applied in reaching its verdict to determine whether they were correct as a matter of law.
  • On review of a motion for judgment as a matter of law (JMOL), when a legal issue is submitted to jury without objection, Court of Appeals treats jury's verdict on the legal issue as a resolution of all genuinely disputed underlying factual issues in favor of verdict winner.
  • When a party moves for judgment as a matter of law (JMOL), Court of Appeals reviews jury's resolution of all factual disputes for substantial evidence.
  • An evaluation of a question of public use of an invention depends on how totality of circumstances of case comports with policies underlying public use bar; those policies include discouraging removal from public domain of inventions that public reasonably has come to believe are freely available, favoring prompt and widespread disclosure of inventions, allowing inventor a reasonable amount of time following sales activity to determine potential economic value of a patent, and prohibiting inventor from commercially exploiting invention for a period greater than statutorily prescribed time.
  • A patentee may negate a showing of public use by coming forward with evidence that its use of invention was experimental.
  • Whether an invention was in public use prior to the critical date for purposes of public use bar is a question of law.
  • To determine whether a use of an invention is experimental for purposes of public use bar, totality of circumstances must be considered, including various objective indicia of experimentation surrounding use, such as number of prototypes and duration of testing, whether records or progress reports were made concerning testing, existence of a secrecy agreement between patentee and party performing testing, whether patentee received compensation for use of invention, and extent of control inventor maintained over testing.
  • Inventor's alleged experiments with regard to seal assembly for stern drives in boats were not experimental for purposes of public use bar, and thus patent for assembly was invalid; inventor installed first prototype in his own boat two years before applying for patent, inventor then provided other prototypes to friends and acquaintances, inventor neither asked for nor received any comments concerning operability of prototypes, inventor maintained no supervision or control over prototypes during alleged testing, and inventor kept no records during alleged testing.
  • For purposes of public use bar, expression by an inventor of his subjective intent to experiment, particularly after institution of litigation, is generally of minimal value.
  • Each claim of patent must be considered individually when evaluating a public use bar.
  • Statutory provision pertaining to public use bar may create a bar to patentability either alone, if device used in public is an anticipation of later claimed invention or, in conjunction with provision pertaining to obviousness, if differences between claimed invention and device used would have been obvious to one skilled in the art.
  • 4,848,775. Invalid.