Minemyer v. B-Roc Representatives, Inc., — F.Supp.2d — , 2009 WL 3464141 (N.D.Ill. 2009).
Facts
The plaintiff filed for a patent on August 23, 1999. The plaintiff’s claimed invention was a plastic pipe coupler. The key feature of the pipe was its “tapered threads†and slight “funnel shape.†This feature caused the connection to gradually become tighter and more secure as the pipe was turned.
The plaintiff sued the defendant for infringement. The defendant claims the patent is invalid due to the on-sale bar, public use bar, and/or that the invention was obvious.
Procedural Posture
This decision was in response to the defendant’s motion for summary judgment based on the claimed invalidity of the plaintiff’s patent.
Rules
Public Use and On Sale Bars - 35 U.S.C. § 102(b). “A person shall be entitled to a patent unless . . . the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . .â€
Obviousness - 35 U.S.C. 103. “In reaching a determination on obviousness, the court must consider: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the relevant art, and (4) any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others.†In re Mettke, 570 F.3d 1356, 1358-59 (Fed.Cir. 2009) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)).
Holding
The defendant’s motion for summary judgment was granted as to the invalidity under the on-sale bar and denied as to the invalidity under the public use bar and obviousness.
The court found that the plaintiff clearly sold and publicly used the invention for more than one year prior to August 23, 1999. However, the plaintiff argued that the critical date should be that of a provisional patent filed on August 25, 1997, which is before the plaintiff began selling the invention. To determine the critical date, the court examined the provisional patent to determine whether that previous application met the written description requirement for the claimed infringement. The court found that the key feature (the tapered threads) were not present on the provisional patent. Therefore, the critical date was August 23, 1999. Based on this critical date, the court granted the defendant’s motion for summary judgment based on the public use and on-sale bars of 35 U.S.C. § 102(b).
As for the obviousness argument, the court found the defendant’s arugment not fully developed. Accordingly, the court denied the defendant’s motion for summary judgment as to obviousness based on the defendant’s lack of establishing the argument and citing any evidence or case law.
Critical Analysis
The case does not appear to change any prior analysis as to the on-sale or public use bars. Although, in my opinion, there is contradictory evidence as to the plaintiff’s compliance with the written description requirement of the provisional patent – particularly the testimony from plaintiff’s expert that demonstrates the taper in the provisional patent’s drawing. This being a motion for summary judgment, the court should have evaluated the evidence in the light most favorable to the plaintiff. At this procedural state, I would have denied the defendant’s motion on all counts and let the issues go to the fact finder.
Case Disposition
Although the court partially granted the defendant’s motion for summary judgment, not all of the claims were held invalid. Therefore, the case will proceed with the remaining claims.
Facts
The plaintiff filed for a patent on August 23, 1999. The plaintiff’s claimed invention was a plastic pipe coupler. The key feature of the pipe was its “tapered threads†and slight “funnel shape.†This feature caused the connection to gradually become tighter and more secure as the pipe was turned.
The plaintiff sued the defendant for infringement. The defendant claims the patent is invalid due to the on-sale bar, public use bar, and/or that the invention was obvious.
Procedural Posture
This decision was in response to the defendant’s motion for summary judgment based on the claimed invalidity of the plaintiff’s patent.
Rules
Public Use and On Sale Bars - 35 U.S.C. § 102(b). “A person shall be entitled to a patent unless . . . the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . .â€
Obviousness - 35 U.S.C. 103. “In reaching a determination on obviousness, the court must consider: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the relevant art, and (4) any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others.†In re Mettke, 570 F.3d 1356, 1358-59 (Fed.Cir. 2009) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)).
Holding
The defendant’s motion for summary judgment was granted as to the invalidity under the on-sale bar and denied as to the invalidity under the public use bar and obviousness.
The court found that the plaintiff clearly sold and publicly used the invention for more than one year prior to August 23, 1999. However, the plaintiff argued that the critical date should be that of a provisional patent filed on August 25, 1997, which is before the plaintiff began selling the invention. To determine the critical date, the court examined the provisional patent to determine whether that previous application met the written description requirement for the claimed infringement. The court found that the key feature (the tapered threads) were not present on the provisional patent. Therefore, the critical date was August 23, 1999. Based on this critical date, the court granted the defendant’s motion for summary judgment based on the public use and on-sale bars of 35 U.S.C. § 102(b).
As for the obviousness argument, the court found the defendant’s arugment not fully developed. Accordingly, the court denied the defendant’s motion for summary judgment as to obviousness based on the defendant’s lack of establishing the argument and citing any evidence or case law.
Critical Analysis
The case does not appear to change any prior analysis as to the on-sale or public use bars. Although, in my opinion, there is contradictory evidence as to the plaintiff’s compliance with the written description requirement of the provisional patent – particularly the testimony from plaintiff’s expert that demonstrates the taper in the provisional patent’s drawing. This being a motion for summary judgment, the court should have evaluated the evidence in the light most favorable to the plaintiff. At this procedural state, I would have denied the defendant’s motion on all counts and let the issues go to the fact finder.
Case Disposition
Although the court partially granted the defendant’s motion for summary judgment, not all of the claims were held invalid. Therefore, the case will proceed with the remaining claims.