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The Gillette Co. LLC v. Dollar Shave Club, Inc.

United States District Court, D. Delaware

March 21, 2019

THE GILLETTE COMPANY LLC, Plaintiff,
v.
DOLLAR SHAVE CLUB, INC., et al., Defendants.

          MEMORANDUM ORDER

          HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE

         Pending 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, [1] 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.

         1. 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.[2]

         Determining 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.

         The 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[3] 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.

         A 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.

         2. Both 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).[4] 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.

         Public Use.

         Under 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), [5] 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 citation omitted).

         The 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;[6] (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"[7] to render the invention unavailable to the public under 102(a), and/or constitute secret, private use under 102(b).

         Experimental Use.

         "The 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.

         Plaintiff 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.").[8]

         3. 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 experimental ...


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