Polara Engineering Inc. v. Campbell Company, Nos. 2017-1974 and 2017-2033 (Fed. Cir. July 10, 2018)
The asserted patents pertained to push buttons and signals for pedestrian crosswalks at intersections – i.e., signals that tell you when to cross the street. Prior to the critical date, the patentee installed a prototype at a public intersection in Fullerton, California, which remained in use for about one year. Although the prototype was initially modified to correct various problems, it remained installed for numerous months without any changes. The patentee did not have a confidentiality agreement with the city, but the patentee’s witnesses testified that they did not tell anyone from the city how the prototype worked and that a person could not determine how it worked merely by looking at it. The jury found that the patentee’s pre-critical date uses were for experimental purposes, thereby negating the U.S.C. § 102(b) public use bar. The district court also denied the accused infringer’s post-trial motions.
The Federal Circuit affirmed on appeal, but found it to be a “close question.” Noting that the invention implicated public safety, the Federal Circuit found that “[t]he jury could have properly based its finding of experimental use on the need for testing to ensure the durability and safety of the claimed [invention]. . . . before being certain that it would work for its intended purpose.” Although “durability and safety” were not claim limitations, they were features inherent to the claimed invention. Further, the patentee’s failure to enter confidentiality agreements was not fatal because it maintained secrecy in other ways, and while changes were not made for many months, the period of testing was necessary to ensure safety and durability.