View source for 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



==Class Notes==

==Class Notes==