The Federal Circuit has affirmed a district court’s denial of judgment as a matter of law (JMOL) of invalidity on the grounds that the purported "prior public use" was, in fact, experimental. Lisle Corporation v. A.J. Manufacturing Co., Case No. 04-1275, 1346 (Fed. Cir., Feb. 11, 2005).
Lisle Corporation sued A.J. Manufacturing for infringing its patent on a vehicle steering control system. In the district court and on appeal, A.J. Manufacturing argued that Lisle’s patent was invalid because Lisle filed its application over 30 months after a prototype of the patented tool was distributed to various repair shops, without compensation and without a confidentiality agreement. Citing TP Laboratories, A.J. Manufacturing argued that it was an error to instruct the jury that Lisle merely had to come forward with "evidence" of experimental use, rather than "convincing evidence."
The Court rejected A.J. Manufacturing’s argument. The Court agreed that if the challenger presents a prima facia case of public use, the patentee must come forward with convincing evidence of experimental use. But the Court held that "convincing" evidence merely means sufficient evidence to prevent the challenger from meeting its clear and convincing burden. The Court declined to read TP Laboratories as requiring the patent owner to rebut a claim of public use with clear and convincing evidence.
In this case, Lisle relied on the testimony of the co-inventor and engineer who testified that he needed to know how well the product at issue would work before it would be ready for patenting. The witness testified that Lisle’s protocol was to contact the mechanics receiving the prototype and get feedback within a few weeks and that the information he received from outside mechanics was used to add additional features to the prototype. The witness also testified that Lisle had a prior working relationship with the mechanics and that he believed the mechanics knew that the prototype was given to them for experimental testing. During the development program, Lisle also prepared reports detailing the status of the project, future plans for testing, data regarding the project and suggestions for improvement from outside mechanics. The Court held that the evidence was sufficient to rebut a prima facia case of public use and that A.J. Manufacturing had failed to make a clear and convincing showing. Under the circumstances, the Court found that the district court’s failure to specify (in its jury instructions) the proper allocation regarding the burden of persuasion (Lisle’s burden was to rebut any clear and convincing showing of public use by A.J. Manufacturing) was harmless.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
