Clock Spring, L.P. v. Wrapmaster, Inc. (Fed. Cir. 2009)
A demonstration of an invention can be considered a public use that bars patentability, depending on the circumstances surrounding the event and the demonstration’s purpose, according to the Federal Circuit.
Clock Spring and Wrapmaster are companies in the business of repairing high-pressure gas pipelines. Clock Spring is the exclusive licensee of U.S. Patent 5,632,307 (the ’307 patent) regarding a method of repairing a defective gas pipeline. In 2005, Clock Spring sued Wrapmaster for infringement of all the claims of the ’307 patent. Wrapmaster filed a motion for summary judgment of invalidity of all the claims of the ’307 patent. The U.S. District Court for the Southern District of Texas granted the motion, finding the claims of the ’307 patent invalid due to obviousness. Clock Spring appealed the case to the Federal Circuit.
On appeal, the Federal Circuit did not address the issue of the validity of the ’307 patent regarding obviousness. Instead, the court found the patent invalid based on prior public use. Wrapmaster argued that, in addition to being obvious, the patent was invalid due to a public demonstration that occurred in October 1989, more than the one year required prior to the filing of the patent application in 1992. The demonstration was recorded in a report by the Gas Research Institute, which documented a demonstration of the pipeline repair method conducted by the inventor. The Federal Circuit found this demonstration to be a public use rather than an experimental use. The court found the inventor’s lack of control over the circumstances and personnel surrounding the demonstration to be particularly convincing. The court further explained that the demonstration’s lack of refinement or perfection of the invention leaned in favor of non-experimental use as well. After this analysis, the Federal Circuit affirmed the grant of summary judgment to Wrapmaster.
Be sure to make inventors and other potential patent owners aware of the risks to patentability of public display or demonstration of inventions.