Federal Circuit Summaries

Before Lourie, Dyk, and Hughes. Appeal from the United States District Court for the Central District of California

Summary: (1) The public use bar is not triggered by experimental use testing the claimed features to determine if the invention works for its intended purpose, and (2) a district court must fully explain its decision to enhance damages following a willful infringement finding.

Polara sued Campbell for infringement of a patent directed towards push-button crosswalk stations for pedestrians. Campbell argued the patent was invalid because Polara had tested prototypes prior to the critical date at public intersections. The jury found the asserted claims were not invalid and that Campbell willfully infringed. The district court denied Campbell’s post-trial motion for judgment as a matter of law and granted Polara’s motion to enhance damages. Campbell appealed.

The public use bar is triggered where, prior to the critical date, the invention is in public use and ready for patenting. The bar is not triggered where an inventor tests the claimed features to determine if the invention works for its intended purpose, even if the testing occurs in public. The Federal Circuit held that there was substantial evidence to support the jury’s finding of experimental use because Polara needed to test the claimed features of the devices at actual crosswalks of different configurations to ensure they were safe.

The Federal Circuit also held that substantial evidence supported the jury’s finding of willful infringement. However, the district court erred by not adequately explaining its decision to enhance damages. The district court did not even mention the public use defense, which the Federal Circuit held was a “close question.” Thus, the district court erred by either not considering the public use defense or determining that the defense was so weak it was not worth mentioning. The Federal Circuit reversed and remanded with instructions to provide a more complete explanation of its decision on whether to enhance damages, including a discussion of the public use defense.