Flex-Rest, LLC v. Steelcase Inc. (Fed. Cir. 2006)
Where an inventor, after conception and reduction to practice of his invention, files a patent application and commercializes the invention within six and one-half months, she cannot, without more, be held to have suppressed or otherwise concealed it as that term is used by the Patent Act. This remains true even if the inventor maintained the invention in secret while preparing the patent application and while preparing the device for commercialization.
Under the Patent Act, “a person shall be entitled to a patent unless…before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” In the instant patent infringement case, the main issue for trial was whether defendant’s device, previously conceived and reduced to practice anticipated plaintiff’s patent or whether the device qualified as prior art for purposes of rendering the patent invalid as being obvious. In other words, was defendant’s device suppressed or concealed and thus unavailable to be used to invalidate plaintiff’s patent? The trial court held for the defendant while noting that the plaintiff failed to proffer suffi cient evidence for a reasonable jury to find suppression or concealment by the defendant.
On appeal, the Court of Appeals for the Federal Circuit agreed while noting that there are two types of suppression or concealment: (1) cases of intentional suppression or concealment and (2) cases where the court infers suppression or concealment based on an unreasonable delay in publicly disclosing the invention. Addressing the first type, the Court noted that the only evidence proffered by the plaintiff to support an intentional suppression or concealment was the six and one-half months it took defendant to fi le a patent application and commercially disclose its device at a trade show. According to the Court, the mere passage of time, without evidence of an intent to withhold defendant’s device, was not sufficient to support suppression or concealment. Addressing the second type of suppression or concealment, the Court explained that “each case involving the issue of suppression or concealment must be considered on its own particular set of facts” and that “there is no particular length of delay that is per se unreasonable.” In the instant case, evidence established that defendant’s attorney created a first draft of the patent application within four months of conception and reduction to practice. During roughly the same period of time, the defendant resolved design issues and spent three-quarters of a million dollars on necessary equipment tooling for the manufacture of the device. Because the specific delay of defendant was not unreasonable in view of these activities, the decision below was upheld.