United States District Court, D. Delaware
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE
before the Court are the parties' cross-motions for
summary judgment on invalidity (D.I. 660, 664), including
Plaintiffs motion for summary judgment as to the date of
conception (D.I. 664), as well as the parties' motions to
preclude certain expert testimony related to invalidity (D.I.
658, 665). The motions present several issues: (1) the date
of conception for the '513 Patent; (2) whether two
outplant tests rendered the invention publicly available or
used, and/or constituted experimental use; and (3) whether
the parties' experts may testify as to these matters.
Having considered the parties' briefing (D.I. 659, 661,
666,, 689, 693, 695, 717, 718, 720) and related materials,
and having heard oral argument on March 15,  IT IS HEREBY
ORDERED that the parties' motions (D.I. 658, 660, 664,
665), to the extent they relate to conception, invalidity, or
related expert testimony, are all DENIED.
Plaintiff seeks summary judgment that the invention of
the' 513 Patent was conceived before the prior art Bray
Patent (D.I. 666 at 12-15; D.I. 695 at 9-16), but Plaintiff
has not persuaded the Court that there is no genuine dispute
of material fact with respect to conception.
the date of conception is a question of law based on
underlying findings of fact. See Taurus IP, LLC v.
Daimler Chrysler Corp., 726 F.3d 1306, 1322-23 (Fed.
Cir. 2013). "[T]he test for conception is whether the
inventor had an idea that was definite and permanent enough
that one skilled in the art could understand the invention
.... An idea is definite and permanent when the inventor has
a specific, settled idea, a particular solution to the
problem at hand, not just a general goal or research plan he
hopes to pursue." Burroughs Wellcome Co. v. Barr
Laboratories, Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
"[Conception is not complete if the subsequent course of
experimentation, especially experimental failures, reveals
uncertainty that so undermines the specificity of the
inventor's idea that it is not yet a definite and
permanent reflection of the complete invention as it will be
used in practice." Id. at 1228-29.
parties appear to agree that the inventors used chromium
coatings for outplant test OX-004 in February 1998, but the
coating did not perform adequately. (D.I. 666 at 12; D.I. 695
at 10-11) Based on the test results, the parties dispute
whether conception occurred at the time of the OX-004 test in
February 1998, or not until Spring 1999, when the inventors
realized the chromium needed to be under
compression to perform adequately. (D.I. 666 at 13;
D.I. 695 at 12) A genuine dispute exists as to what problem
the inventors were trying to solve at the time of the OX-004
test and whether the inventors knew and appreciated that
chromium coatings, generally, solved that problem.
reasonable juror could find conception of the '513
Patent's claims (as opposed to conception merely of the
OX-004 test embodiment) did not occur in February 1998 based
on, for example: (1) the lack of success of the OX-004 test;
(2) evidence that the inventors did not know for months why
the tests were unsuccessful; and (3) that it took another 14
months to find a solution to the issues raised by the test.
(D.I. 695 at 9-11) The question of what the inventors knew
and appreciated as of February 1998 presents a genuine issue
of material fact for the trier of fact. See generally
Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356,
1362-63 (Fed. Cir. 2001). Therefore, summary judgment for
Plaintiff on the date of conception is not warranted.
parties move for summary judgment with respect to invalidity
(or no invalidity) based on two 1995 outplant tests conducted
by Gillette, numbered OW-006 and OW-007. Both parties'
motions turn on whether a reasonable finder of fact would
have to (or would have to not) find that OW-006 and/or OW-007
were public uses (and are therefore invalidating) or qualify
as experimental use (and are therefore not
invalidating). In the Court's view, while there is a
genuine dispute of material fact as to public use/public
availability, there is not with respect to the experimental
use exception to public use. As a result, while experimental
use of the '513 Patent will not be tried, both summary
judgment motions must be denied, as the public use issue will
have to be resolved by the jury.
the applicable pre-AIA version of 35 U.S.C. § 102, a
person is not entitled to a patent if it is known or used by
others in the United States before the critical date, 35
U.S.C. § 102(a),  or if the claimed invention was (among
other things) "in public use, on sale, or otherwise
available to the public before the effective filing date of
the claimed invention," 35 U.S.C. § 102(b). Under
Section 102(a), "[t]he statutory language, 'known or
used by others in this country' ... means knowledge or
use which is accessible to the public." Edmark v.
Telebrands Wholesale Corp., 41 F.3d 1521 (Fed. Cir.
1994) (internal citation omitted). Under 35 U.S.C. §
102(b), public use includes "any use of [the claimed]
invention by a person other than the inventor who is under no
limitation, restriction or obligation of secrecy to the
inventor." Petrolite Corp. v. Baker Hughes
Inc., 96 F.3d 1423, 1425 (Fed. Cir. 1996) (internal
record demonstrates a genuine dispute of material fact as to
whether the two outplant tests rendered the invention
publicly available and/or constituted public use. A
reasonable juror could find public use and/or public
availability (and thereby invalidity) based on, for example:
(1) Plaintiffs failure to produce any confidentiality
agreements for the OW-006 and OW-007 tests; (2) that some
test products were not returned; (3) that some family members
of test participants (and not just test participants
themselves) used the test products; and (4) that the tests
were performed years before the '513 Patent's
priority date. (D.I. 661 at 4-8) Alternatively, a reasonable
juror could find secret, private use (and thereby no
invalidity) based on, for example: (1) Plaintiffs use of
friends and family (i.e., individuals who might reasonably be
trusted to preserve confidentiality) for
testing; (2) Plaintiffs production of outplant
confidentiality agreements from years around the OW-006 and
OW-007 tests, and explanation (potential destruction due to
flooding) for failing to find OW-006 and OW-007 agreements;
(3) testimony from Plaintiffs employee, Ms. Zupkosky,
addressing Plaintiffs confidentiality practices; (4)
Plaintiffs requirement that test participants return test
products; and (5) the "Confidential" labels on test
documents. (D.I. 666 at 6-7) A question of fact, therefore,
remains as to whether participants of the OW-006 and OW-007
outplant tests were under a sufficient "limitation,
restriction or obligation of secrecy to the
inventor" to render the invention unavailable to the
public under 102(a), and/or constitute secret, private use
experimental use exception is not a doctrine separate or
apart from the public use bar." Clock Spring, L.P.
v. Wrapmaster, Inc., 560 F.3d 1317, 1326 (Fed. Cir.
2009). Instead, it is an exception to the public use bar;
that is, when demonstrated, proof that an otherwise
invalidating public use constituted an experimental use can
preserve the validity of a patent. Id; see also Lough v.
Brunswick Corp., 86 F.3d 1113, 1120 (Fed. Cir. 1996)
("If a use is experimental, it is not, as a matter of
law, a public use within the meaning of section 102.").
Here, no reasonable factfinder, even taking the evidence in
the light most favorable to Plaintiff, could find
experimental use of the '513 Patent.
asks the Court to find that the OW-006 and OW-007 tests
involved experimental use of the invention of the '513
Patent but, at the same time, to also accept that conception
of the '513 Patent did not occur until years later. (D.I.
693 at 11-12) While Plaintiff is correct that aspects of the
inventive process may occur before conception, see
Burroughs Wellcome, 40 F.3d at 1228 (Fed. Cir. 1994),
experimental use may not, in the Court's view, predate
conception, as the experimental use must be of the patented
invention (which, in turn, cannot yet exist if it has not
been conceived of). See Clock Spring, 560 F.3d at
1326 ("A use may be experimental only if it designed to
(1) test claimed features of the
invention or (2) to determine whether
an invention will work with its
intended purpose.. . .") (emphasis added); Atlanta
Attachment Co. v. Leggett & Piatt, Inc., 516 F.3d
1361, 1369 (Fed. Cir. 2008) (Prost, C.J., concurring)
(stating current experimental use doctrine is limited to time
"between when an invention is ready for patenting and
when it is reduced to practice.").
Neither side has persuaded the Court that the opposing
parties' experts should be precluded from testifying,
except to the extent that either expert would testify as to