Lough v. Brunswick Karch

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Lough v. Brunswick Corp., 86 F.3d 1113 (1996)

C.A.Fed. (Fla.),1996

June 12, 1996

Background

In 1986, Steven G. Lough worked as a repairman for a boat dealership in Sarasota, Florida. While repairing Brunswick inboard/outboard boats, he noticed that the upper seal assembly in the stern drives often failed due to corrosion.

After some trial and error with his grandfather's metal lathe, he made six usable prototypes in the spring of 1986.

  1. He installed one prototype in his own boat at home.
  2. three months later, he gave a second prototype to a friend who installed it in his boat.
  3. He also installed prototypes in the boat of the owner of the marina where he worked and in the boat of a marina customer.
  4. He gave the remaining prototypes to longtime friends who were employees at another marina in Sarasota.


Lough did not charge anyone for the prototypes. For over a year following the installation of these prototypes, Lough neither asked for nor received any comments about the operability of the prototypes. During this time, Lough did not attempt to sell any seal assemblies.

June 6, 1988, Lough filed a patent application entitled “Liquid Seal for Marine Stern Drive Gear Shift Shafts,” which issued as the '775 patent on July 18, 1989.

Lough sued Brunswick on June 12, 1993, alleging infringement of the '775 patent. Brunswick counterclaimed for a declaratory judgment of patent noninfringement, invalidity, and/or unenforceability. A jury 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 of the '775 patent. The jury also found that Brunswick infringed claims 1-4 of the '775 patent, both literally and under the doctrine of equivalents. Based on its infringement finding, the jury awarded Lough $1,500,000 in lost profits.

Argument

Not experiment

  1. no documentation
  2. no progress reports
  3. number not justified as experimental
  4. no secrecy

Experiment

  1. one person, not a company, so casual experimentation is reasonable

Policy

  1. public exception of free use
  2. quick disclosure
  3. reasonable time to judge value (market testing)
  4. can't game the system