Difference between revisions of "W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)"
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**Claims invalid under 102 and 103 | **Claims invalid under 102 and 103 | ||
**Invalid and indefinite under 112 | **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=== | ===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== | ==Class Notes== | ||
Latest revision as of 01:09, 6 March 2011
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
