LATCHUM, Chief Judge.
William R. Watts (the "plaintiff") is the owner of two United States patents that describe and claim a chair frame. He has filed a two-count complaint against the University of Delaware (the "University") seeking injunctive relief and damages.
The University filed an answer in which it asserted, among other things, an affirmative defense of fraud on the United States Patent and Trademark Office ("Patent Office"), two counterclaims for declaratory judgments that the plaintiff's patents are invalid, unenforceable and not infringed and a request for costs and attorney's fees.
This case is presently before the Court on the parties' cross motions for partial summary judgment. The University moved for summary judgment on the following issues: (1) whether the plaintiff's patents are invalid due to a prior public use or sale of the claimed invention; (2) whether there was an oral agreement of confidentiality binding on the University; (3) assuming that the University prevails on the first two issues, whether the claim of unfair competition should be dismissed for lack of subject matter jurisdiction; and (4) whether the University is entitled to an award of its reasonable attorney's fees pursuant to 35 U.S.C. § 285. (Docket Item 36). In its cross motion, the plaintiff seeks partial summary judgment on all issues relating to liability. (Docket Item 40). This Opinion addresses the issues raised by the pending motions.
The plaintiff is the owner of two patents: (1) design patent Des 243,427, which is entitled "Frame for a Seat" and was issued on February 22, 1977,
The University contends that both patents are invalid under 35 U.S.C. § 102(b), which provides in pertinent part:
The applications for both the patents in suit were filed on August 27, 1975.
The plaintiff's affidavit
Between February and early June of 1974 the plaintiff had a few meetings with employees of the University at which he discussed his idea for a new chair frame. Although factual disputes exist concerning what transpired at the various meetings, the following chronology is essentially undisputed.
Sometime in February 1974 the plaintiff mentioned his efforts to design a more durable chair unit to N. Wayne Hurst, an employee in the University's Housing Division.
The plaintiff agreed to the test and, after upholstering the chair frame at his own expense, delivered it to the dormitory involved on or about June 24, 1974.
The chair frame described and claimed in the patents in suit is exactly the same as the chair frame used in the College Try Program.
In November 1974 the University requested bids on furniture of the type designed by the plaintiff. The plaintiff's bid proved unsuccessful. Thereafter, he actively pursued his rights to a patent, submitting applications for design and utility patents on August 27, 1975.
According to the plaintiff, the University spent over $150,000 to purchase furniture of the type he designed between 1975 and the end of 1977. (Docket Item 48, exh. E-89). The plaintiff further alleges that the University's employee Showers has obtained a copyright on drawings of the plaintiff's chair frame design and licensed a company to make and sell the furniture at a substantial royalty to the University. (Docket Item 48, exhs. E-56, 66B, 66C and 86). The Court now turns to the parties' contentions.
I. Public Use
The University contends that the use of the chair frame in its dormitory lounge in June 1974 was a public use of the plaintiff's invention more than one year before the patent application date, and therefore constitutes a statutory bar to patentability. The plaintiff advances two grounds to avoid the statutory bar. First, he appears to argue that the use was not public, because the dormitory lounge was not open to the general public
The plaintiff's first argument lacks merit. The courts have construed the
Thus, use of a device under conditions of limited public access may still be a public use. See Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 19, 59 S.Ct. 675, 83 L.Ed. 1071 (1939); Marrese v. Richard's Medical Equipment, Inc., 504 F.2d 479, 482-83 (C.A.7, 1974); Magnetics, Inc. v. Arnold Engineering Co., 438 F.2d 72, 74 (C.A.7, 1971). Since the students who used the dormitory lounge owed no duty of secrecy to the plaintiff, the fact that the general public did not have access to the lounge is immaterial. Likewise, the fact that an invention when used in its natural and intended way may be hidden from the public's eye provides no basis for concluding that a use of the invention is not public. Egbert v. Lippmann, supra, 104 U.S. at 336.
The public nature of the June 1974 use does not necessarily render the plaintiff's patents invalid, however. For despite the seemingly absolute wording of the statute, the courts have engrafted an exception onto § 102(b) by which a public use incidental to experiment will not bar patentability. The leading case is City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1877). It involved Nicholson's patent on a new and improved wooden pavement for roads. Nicholson had constructed a 75 foot length of his pavement at his own expense on a heavily traveled roadway in Boston. The pavement was subjected to public use for six years before a patent application was filed. Nevertheless, the Supreme Court held that the use was not a public use within the meaning of § 102(b), because the plaintiff intended it to be an experiment to test the usefulness and durability of his invention. Id. at 134. The Court stated:
Id. The plaintiff in the case sub judice alleges that he agreed to let the University use the chair in the College Try Program in June 1974 in order to determine whether the chair unit could withstand heavy use and whether any changes were required to perfect it. Thus, he contends that the use falls within the experimental use exception to § 102(b).
In support of his position the plaintiff has invoked 35 U.S.C. § 282, which provides:
It is well established, however, that the presumption of validity that stems from the issuance of a patent is weakened where the prior art or other information upon which a challenge to validity is based has never been presented to the patent examiner.
To avoid the operation of the statutory bar of § 102(b), therefore, the plaintiff must prove that the June 1974 use of the chair frame was only an experimental use. For, as the Third Circuit held in Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870, 872 (C.A.3, 1977):
Furthermore, the proof of an experimental use must be "full, unequivocal, and convincing." Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 264, 8 S.Ct. 122, 31 L.Ed. 141 (1887); Wilkie v. Manhattan Rubber Manufacturing Co., 14 F.2d 811, 812 (C.A.3, 1926). In Wilkie v. Manhattan, supra, the Third Circuit held that there must be evidence of both the need for, and the fact of, experimentation to bring a prior public use within the experimental use exception. 14 F.2d at 813; accord, Callahan v. Nesbitt, 1 F.2d 75, 77 (C.A.3, 1924).
The University first contends that, as a matter of law, no experimentation was necessary on the plaintiff's invention after June 1, 1974, because a prototype of the chair frame claimed in the patents in suit was made before that date. A few cases suggest that experimentation in the context of § 102(b) ends once a working prototype has been developed.
Much of the confusion in the caselaw can be traced to inconsistent judicial definitions of "reduction to practice," a term of art in patent law, and divergent views concerning how that concept relates to experimental use for purposes of § 102(b).
498 F.2d at 280 (emphasis supplied).
To this Court's knowledge the Third Circuit has not squarely addressed the issue of when the period of permissible experimentation ends. Moreover, in light of the Court's resolution of the question of experimental intent, it is unnecessary to decide
The latter point distinguishes this case from several cases cited by the plaintiff in which the courts found the experimental use exception applicable. For example, Utilities Service, Inc. v. Walker, 78 F.2d 18 (C.A.3, 1935), involved a patent on a device to furnish automatically emergency lighting in the event of an interruption in the regular supply of electric current. The inventor installed several different versions of the device in various places at his own expense. The Pennsylvania Department of Labor and Industry monitored the performance of some of those devices. 78 F.2d at 21-22. Noting the unique nature of the invention and the requirement that it function reliably in many different situations, the court found that extensive experimentation was necessary "before the inventor could truthfully say with any degree of certainty that the invention was useful or that the device by which it was carried out was practical." Id. The same observation could be made about the inventions involved in two other cases relied upon by the plaintiff. One dealt with a solar still which utilized the sun's energy to convert salt water to drinking water;
In Paeco, Inc. v. Applied Moldings, Inc., supra, 562 F.2d at 874, the Third Circuit stated that the "experimental use" doctrine
Thus, the plaintiff must prove that his primary intent in permitting the chair frame to be used in the College Try Program was experimentation.
Aerovox Corp. v. Polymet Manufacturing Corp., 67 F.2d 860, 862 (C.A.2, 1933).
The University seeks partial summary judgment on the public use issue on the ground that the plaintiff's primary intent was commercial exploitation, not experimentation. In disposing of the University's motion, the Court must take all the plaintiff's allegations as true and draw all inferences in his favor. Scott v. Plante, 532 F.2d 939, 945 (C.A.3, 1976). The Court also recognizes that because the experimental use issue turns on the patentee or inventor's intent, it generally is not well suited to disposition by summary judgment. In re Yarn Processing, supra, 498 F.2d at 288. The reason is that resolution of issues involving intent often depends upon the credibility of witnesses testifying as to their own states of mind. Id. This case is unusual, however, in that the plaintiff's own
At the outset, it is noteworthy that the purpose of the "public use or on sale" bar in § 102(b) is to prevent an inventor from extending the limited monopoly granted by a patent and to encourage prompt disclosure of new and useful information. See Chromalloy American Corp. v. Alloy Surfaces Co., 339 F.Supp. 859, 865 (D.Del.1972).
The statute provides a one year "grace period" from the date of the first public use or sale of an invention within which an inventor or his assignee may file a patent application. The grace period affords the inventor time to perfect his invention and prepare a patent application. 2 Chisum, supra, § 6.02. The experimental use exception reflects a policy of allowing an inventor more time to test and perfect his invention and to assess its utility in operation, so long as his activities do not contravene the statutory objectives. In that respect, the courts have held that the term "experiment" for § 102(b) purposes does not include market testing or attempts to develop buyer demand for an invention. See Paeco, Inc. v. Applied Moldings, Inc., supra, 562 F.2d at 874-75; Kalvar Corp. v. Xidex Corp., 556 F.2d 966 (C.A.9, 1977) (per curiam); Smith & Davis Mfg. Co. v. Mellon, 58 F. 705, 707 (C.A.8, 1893).
The undisputed facts in the instant case are that the plaintiff undertook to design a more durable and more easily repairable chair frame in February 1974 because he perceived a need for such furniture on the part of the University. (Docket Item 49, pars. 6, 7). Almost immediately thereafter the plaintiff brought his efforts to the attention of Mr. Hurst, an employee of the University. (Id., par. 8). In May 1974 the plaintiff discussed his work with Hurst and his supervisor, Mr. Showers. Shortly after that the University's Director of Purchasing, Mr. Blakeman, asked to see the prototype the plaintiff had made and the plaintiff had it delivered to him for inspection. (Id., pars. 14, 16). Finally, the plaintiff agreed to the use of his chair unit in the College Try Program in June 1974. (Id., pars. 17, 18).
At his deposition the plaintiff explained his motive for showing the chair frame to employees of the University as follows:
(Watts Dep., p. 25). Concerning the use of the chair unit in the College Try Program, the plaintiff testified:
(Watts Dep., pp. 26-27).
The quoted testimony clearly indicates that commercial exploitation was the plaintiff's dominant motive in June 1974. The
(Emphasis supplied). Neither of these statements is inconsistent with the plaintiff's deposition testimony. They clearly indicate that the plaintiff's purpose was to determine whether his product was acceptable to the University—his intended customer. He also believed that his previous activities had the effect of binding the University to buy similar furniture from him, if it approved the chair unit. In other words, the plaintiff kept the University apprised of his efforts and submitted his invention for a test in order to gain an advantage over his competitors. The idea of perfecting his invention was secondary; indeed, paragraph 23 of the affidavit indicates that the plaintiff thought that even if the chair proved unsatisfactory, the University would still be bound to buy from him if he could correct the defects that appeared. Hence, the Court concludes from the undisputed facts that the plaintiff's primary intent was to commercially exploit his invention; therefore the experimental use exception to the public use bar of § 102(b) is not applicable.
The objective evidence in this case is not inconsistent with the Court's findings. The plaintiff emphasizes that the University requested permission to use the chair unit in the College Try Program. He also states in his brief that the "progress of the chair was monitored regularly and the University was surprised at [its] durability." (Docket Item 48, p. 10) (emphasis supplied). These facts add nothing to the plaintiff's argument, for it is the intent of the patentee, not the user, that determines whether a use is experimental.
The direct evidence of intent also distinguishes this case from each of the cases relied upon by the plaintiff. Significant similarities do exist, however, between this case and Interlego, A. G. v. F. A. O. Schwartz, Inc., 187 U.S.P.Q. 580, 584 (N.D. Ga.1975). There the plaintiff sued for infringement of a patent involving toy building block sets and the defendant raised the public use bar. The plaintiff had exported several sets of blocks to an importer in the United States, who, before the critical date, displayed the blocks to the defendant in order to determine their potential marketability. 187 U.S.P.Q. at 582. The importer could not offer the blocks for sale and did, in fact, return them to the plaintiff. Id. The plaintiff asserted the experimental use exception, but the court granted summary judgment for defendant. It held that the blocks were not supplied for the purpose of testing or experimentation for improvement, but for the purpose of commercial exploitation. Id. at 584.
This Court finds additional support for its conclusion in several cases dealing with the related problem of determining whether a sale or offer of sale by sample amounts to placing an invention "on sale" for purposes of § 102(b). In such situations, the patentees often invoke the experimental use exception, thereby raising questions of intent like the one posed here. The courts have refused to apply the exception where the use of the later patented invention was for the competitive purpose of promoting a product or soliciting purchase orders, rather than advice. See ADM Corp. v. Speedmaster Packaging Corp., supra, 384 F.Supp. at 1340; Roller Bearing Co. of America v. Bearing, Inc., 322 F.Supp. 703, 707-08 (E.D. Pa.1971); J. L. Clark Manufacturing Co. v. American Can Co., 256 F.Supp. 719, 734-35 (D.N.J.1966).
322 F.Supp. at 707-08 (footnote omitted) (emphasis in original).
In summary, the Court finds that the chair frame claimed in the patents in suit was in public use more than one year before the patent application date, August 27, 1975, and that the use was not primarily for experimental purposes. Accordingly, the Court will grant the defendant's motion for summary judgment declaring design patent Des 243,427 and utility patent U.S. 4,074,919 invalid by virtue of the public use bar of § 102(b).
II. The Unfair Competition Claim
Count II of the complaint alleges that, before the patents in suit issued, the plaintiff disclosed his invention to defendant's personnel "confidentially with the oral understanding that plaintiff would provide chair frames" to the University, if it decided to purchase chairs of that type. The complaint further avers that the defendant "breached this confidentiality agreement" by advertising for bids on the plaintiff's chair unit, thereby making the design public, and by accepting the bid of another
In support of its motion, the University contends that no agreement of confidentiality ever existed. Each of the three University employees who dealt with the plaintiff denied the existence of such an agreement.
After carefully reviewing the record, the Court concludes that the defendant's motion for summary judgment on the breach of confidence claim must be denied. As stated in an earlier opinion in this case, the gist of Count II is a claim of unfair competition based on the defendant's alleged misappropriation and exploitation of a secret design revealed to it in confidence by the plaintiff.
International Industries, Inc. v. Warren Petroleum Corp., 99 F.Supp. 907, 914 (D.Del. 1951) (footnote omitted), aff'd 248 F.2d 696 (C.A.3, 1957).
Viewed in the light most favorable to the plaintiff, the record indicates that he intended to keep his invention a secret, that he agreed to put an upholstered chair in one of the University's dormitories at its request, that the design of the chair frame could not be determined without at least partially dismantling the chair, and finally that the plaintiff assisted the defendant's personnel in making a drawing of the chair frame upon their representation that the drawing was needed as a record in case of fire or theft. These allegations, if true, would support an inference that a confidential relationship existed independent of any express agreement of confidentiality.
Since the University has controverted many of the plaintiff's allegations concerning the existence of a confidential relationship, the Court also must deny the plaintiff's motion for partial summary judgment on liability under Count II.
III. Attorney's Fees
Lastly, the University has moved for summary judgment on its request for an award of its reasonable attorney's fees under 35 U.S.C. § 285. Section 285 provides:
Whether attorneys fees should be awarded in a particular case is left to the sound discretion of the trial judge. ADM Corp. v. Speedmaster Packaging Corp., 525 F.2d 662, 664 (C.A.3, 1975). The courts do not grant such awards as a matter of course, however; generally they insist that the losing party be shown to have engaged in some form of misconduct.
W. L. Gore & Associates, Inc., supra, 424 F.Supp. at 704.
The record in this case does not support a finding of fraud on the Patent Office. The only facts the University advances in support of its motion are the failure of both the plaintiff and his attorney to apprise the patent examiner of the June 1974 use of the chair frame and two oaths submitted to the Patent Office by the plaintiff, in which he denied knowledge of any public use or sale of the chair frame prior to August 27, 1974. However, any inference these facts might raise of a conscious intent to defraud or a reckless disregard for the duty of frankness is rebutted by other evidence submitted by the plaintiff. In his affidavit the plaintiff stated that he informed his attorney about "all the details relating to the development of the chair unit, including the testing in the [College] Try Program." (Docket Item 49, par. 26). He also stated that he believed that the use of the chair in that program "was highly restricted as to persons" and did not inform the typical observer of the elements of his invention. (Id., par. 30). In addition, the plaintiff's attorney testified at his deposition that when he was informed about the use of a chair unit in the College Try Program, he gave the plaintiff his opinion that the use "was strictly experimental as far as patent law or legal significance" was concerned. (Hunt Dep., pp. 8-9). In light of the difficult nature of the question whether the June 1974 use was experimental within the meaning of 35 U.S.C. § 102(b), the Court finds the plaintiff's failure to disclose the use an insufficient basis for a finding of fraud.
Applying that standard to this case, the Court finds no basis for awarding the University attorney's fees for its defense of the patent infringement claim.
An Order will be entered in accordance with this Opinion.