W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)

Read for 3/4/11

Reading Notes

• Decided by the CAFC in 1983 on appeal from the District Court
  • DC held two patents owned by Gore invalid
  • CAFC affirms in part, reverses in part, and remands
• Patents were developed to help solve the problem of PTFE tape breaking in the stretching machine
  • Original machine was patented in 1969 by his father and does not reference stretch rate or matrix tensile strength greater than 7300 psi
• In 1969 Dr. Gore realized that increasing the stretch rate prolonged breakage, contrary to teachings
  • Used this method to develop several products
• In May, 1970 Gore filed the application for the two patents in issue
  • First is for the specific process with rate above 10% per second and temperature between 35 C and crystalline melt point
  • The second has claims directed at the products made by the process
• Inventions filled long sought need, enjoyed prompt commercial success, and were met with skepticism
• Garlock first produced the accused product as a substitute for the patented product and advertised it as a "new form" of PTFE
• Sued Garlock on 11/2/79 for infringement
  • Garlock claimed declaratory judgment for invalidity
• District Court ruled for process
  • One claim invalid under 102 by Gore's use of the original machine
  • All claims invalid under 102 because of public use or on sale (Budd's use of Cropper machine)
  • Three claims invalid under 103 for reference pairings
  • All invalid as indefinite under 112
• DC ruling for products
  • Claims invalid under 102 and 103
  • Invalid and indefinite under 112
• Garlock failed to prove all claims of the present patents invalid
• All claimed inventions must be considered as a whole
• District Court help only claim one of the first patent anticipated by the use of the original machine in the shop
• In 8/69 Gore offered to sell tape "to be made" on the 401 machine
  • Shipped on 10/24/69
  • Gore offered no proof that his invention date was before the shipment
• Operation of the 401 machine must be viewed as a reproducible use of Dr. Gore's invention as set forth in claim 1 and therefore irrelevant that those using the invention may not have appreciated the result
• Can't be said that the DC erred in finding claim one of 566 patent was used under 102
  • No evidence that inventions of other claims of either patent was known or used before late October, 1969
• 1966 - Cropper made a machine for producing stretched and unstretched PTFE thread seal tape
  • Offered to sell in 1967 to no avail so no evidence of prior use
  • In 1968 Cropper sold to Budd was which was used to produce and sell
    • Conditions of secrecy
• That Budd did not keep it secret from employees who were bound not to tell does not show failure to maintain a secret
  • Showing around for repair does not likewise breech secrecy
• The DC was wrong to hold the 566 patent invalid under 102 due to public use because of Budd as it was secret
• *Critical date is 5/21/69
  • Must decide it Budd had the produce on sale
• Budd only sold tape, not the process
  • Does not ultimately bar Gore
• With regards to the invalidity of 4 claims under 103
  • Did not look at the claims as a whole
  • Disregarded disclosures that taught away from the invention
• Claim 1 could not have been invalid under 103
• Breakdown of prior art shows that all previous patents and teachings not only did not disclose but also taught away from the current invention with regards to 3 and 19
  • Claim 17 is obvious with prior art
  • 401 machine patent suggests the 500% stretch is not possible
• The prior techniquies of Smith and Sumitomo do not place the products claimed in 390 in possession of the public
• Products are not obvious under Smith and Sumitomo as well
  • Significant objective evidence
• District Court found the claim nonspecific enough under 112
  • Misinterpreted function and purpose of 112
• Just because some experimentation would have been needed to use his patent does not make it invalid under 112
  • Confusion of the roles of the claims and specification
• Insufficient evidence to show Gore intended to defraud the PTO

Findings

• Claim 1 of 566 invalid under 102
• All of 566 not invalid under 102 by Budd's use
• Garlock was no successful in proving claims 3 and 19 of 566 obvious
• Garlock did not meet its burder of showing certain claims anticipated by Smith and Sumitomo
• Inventions set forth in claims of 390 are non-obvious
• Garlock did not prove the specification was not enabling or that the claims were indefinite under 112
• No fraud
• Denial of Garlock's attorney fees
• Remanded to determine infringement of the claims that were found valid

Statutory Bars

• In determining obviousness there is no "essential" or "heart of the invention"
  • Restriction of a multi-step process to one step constitutes error
• The non-secret use of a claimed process in the usual course of producing articles for commercial purposes is a public use
• Commercialization of a product made by a process bars those involved from a patent but secret commercialization of a process cannot bar a third party of a patent on that process
  • Law favors the later inventor who promptly files a patent rather than a prior inventor who benefits from secret production
• Teaching away by prior art is strong evidence of non-obviousness
• Decision maker must occupy the mind of one skilled in the art prior to the invention under consideration
• Anticipation requires the disclosure in a single prior art reference of each element of the claim under consideration
• Rule of law is that an infringer's use of the process of a dominating patent does not render that employment an anticipation of an invention described and claimed in an improvement patent
• Inherency and obviousness are distinct concepts
• Objective evidence of non-obviousness should always be considered
• Section 112 states that the claims must allow a person of ordinary skill to make and use the invention
  • Must allow a skilled person, not the public
  • Must look at the time of application, not the time of trial
• 112 requires best mode of practicing known to the inventor

Concurring/dissenting judge

• Agrees with
  • Validity of 390 under 102 and 103
  • Validity of 390 under 112
  • Invalidity of claims 1 and 17 of 566
  • Lack of fraud
  • Denial of attorney's fees
• Disagrees with the validity of the claims of 3 and 19 of the 566 patent
• Facts show that the Gore shop was practicing the invention earlier than the 10/69 invention date
  • 401 machine was used with a rate of greater than 10%
• Absence of personal intent to defraud does not mean the 401 machine was not doing what he did not know about
• Majority wrongly neglected to include the 401 machine in the prior art