The public use bar may not be triggered even if the invention is tested publicly prior to the critical date

Sung-Hoon Kim | September 14, 2018

Polara Engineering Inc. v. Campbell Company

July 10, 2018

Before Lourie, Dyk, and Hughes.  Opinion by Lourie.

Summary:

The Federal Circuit affirmed the jury’s finding of experimental use that negates application of the public use bar by Polara because Polara’s activities were necessary to ensure that the invention would work for its intended purpose and Polara’s invention was “a life safety device” that the testing was “imperative.”  The Federal Circuit found that while it is undisputed that Polara did not enter a confidentiality agreement, Polara maintained the secrecy of the invention.  Finally, the Federal Circuit found that Polara was not commercially exploiting its invention during the test periods.

Details:

Polara is a company that manufactures accessible pedestrian signal systems (“APS”) and pedestrian push buttons, and an owner of U.S. Patent No. 7,145,476 (“the ’476 patent).  The ‘476 patent is related to a two-wire control system for push-button crosswalk stations for a traffic-light controlled intersection with visual, audible, and tactile accessible signals.  This patent enables using “existing underground wire pairs to transmit power and data signals in order to generate the accessible signal functions for both sighted and visually impaired pedestrians.”

Activities of Polara:

  • January 2002: tested the prototype in its parking lot
  • Before March 2002: sent a letter to the traffic engineer for the City of Fullerton, CA (asking for a permission to install the prototype at the intersection close to Polara’s plant)
  • March 2002: installed the prototype at the intersection in the City of Fullerton (First Installation)
  • Fall 2002 to Fall 2003: installed the modified prototype at the larger intersection with a different configuration than at the location of the First Installation (Second Installation)
    • Polara did not sign a confidentiality agreement with the City of Fullerton. Polara employees installed, uninstalled, and performed the testing of prototypes during the First and Second Installations.  They did not tell anyone from the city how the prototype worked.
  • January 2003: installed another prototype in Burnaby, Canada.
    • This time, Polara signed a confidentiality agreement with the City of Burnaby to test the prototype and keep the information concerning the prototype and its testing confidential. Polara also signed a confidentiality agreement with a company responsible for installing and monitoring the prototype.
  • 102(b) critical date: August 5, 2003
  • Polara began selling products in September 2003
  • Application filed: August 5, 2004
  • 2008: Campbell, a manufacturer of traffic-industry products, started developing an APS.
  • January 2, 2013: Polara filed the patent infringement suit against Campbell.

Public Use Bar and Experimental Use:

The public use bar is triggered “where, before the critical date, the invention is in public use and ready for patenting.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005).

However, “an inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention – even if such testing occurs in the public eye.” Pfaff, 525 U.S. at 64.  Proof of experimental use serves “as a negation of the statutory bars.” EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1352 (Fed. Cir. 2002).  A use may be experimental if its purpose is: “(1) [to] test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose – itself a requirement of patentability.” Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009).

In Clock Spring, L.P., the Federal Circuit identified factors relevant determining whether a use is experimental:

  • the necessity for public testing,
  • the amount of control over the experiment retained by the inventor,
  • the nature of the invention,
  • the length of the test period,
  • whether payment was made,
  • whether there was a secrecy obligation,
  • whether records of the experiment were kept,
  • who conducted the experiment,
  • the degree of commercial exploitation during testing,
  • whether the invention reasonably requires evaluation under actual conditions of use,
  • whether testing was systematically performed,
  • whether the inventor continually monitored the invention during testing, and
  • the nature of contacts made with potential customers.

District Court:

The district court upheld the jury’s verdict that the invention was not in public use for more than a year before the filing of the application.  The court held that substantial evidence supported the jury’s finding that Polara’s installation of prototypes in Fullerton was experimental use necessary to ensure that the invention would work for its intended purpose.

Federal Circuit:

The Federal Circuit agreed with Polara’s arguments that substantial evidence supports the jury’s finding of experimental use that negates application of the public use bar.

The Federal Circuit found that Polara’s activities were necessary to ensure that the invention would work for its intended purpose and agreed that Polara’s invention was “a life safety device” that the testing was “imperative.”

In addition, the Federal Circuit found that the safety and durability testing Polara conducted at the First and Second Installations related to claimed features, most particularly the claimed transmission of digital data signals over a single pair of wires.

Furthermore, while it is undisputed that Polara did not enter a confidentiality agreement with the City of Fullerton, Polara maintained the secrecy of the invention (i.e., Polara installed, uninstalled, and tested the prototypes itself and did not explain to the Fullerton employees how the invention operated.  The functionality of the system was not apparent to the public.).

Finally, the Federal Circuit found that Polara was not commercially exploiting its invention during the test periods.

Takeaway:

The public use bar may not be triggered even if the invention is tested publicly prior to the critical date when the invention was experimented for public safety.

However, it is highly recommended to enter a confidentiality agreement before testing the invention and to maintain the secrecy of the invention.

Full Opinion

 

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