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Determining Suitability of Invention for Customer Purpose is not Experimental Use

Feb.26.2008

Customer experimentation to determine whether an invention suits its particular purposes does not fall within the experimental use exception to an on-sale bar, a Federal Circuit panel concludes in Atlanta Attachment Company v. Leggett & Platt, Incorporated (No. 2007-1188; February 21, 2008).

Atlanta Attachment sent a quotation for the third in a series of automatic gusset ruffler machine prototypes to a potential customer in September 2000. After inspecting the machine at Atlanta Attachment’s facilities to determine whether that prototype fit its requirements on February 7, 2001, the potential customer provided comments about the third prototype. Improvements were included in a fourth, subsequently delivered prototype. Atlanta Attachment filed a U.S. patent application, eventually maturing into its patent, that claimed priority to a provisional application filed March 5, 2002. In a subsequently filed suit against Legget & Platt, a competitor of Atlanta Attachment, the district court, by summary judgment, held that Legget & Platt machines did infringe the claim at issue, and determined that the third prototype sale was experimental use.

The Federal Circuit panel reverses, noting that it is appropriate to consider only the actions of Atlanta Attachment (and not customer experiments) in determining whether the machine was suitable to the purpose of the invention, and experimentation conducted to determine whether an invention would suit a particular customer’s purposes does not fall within the experimental use exception to an on-sale bar. While improvements were possible and ultimately manufactured in the fourth prototype, deficiencies in the third prototype did not prevent reduction to practice of the invention actually claimed. Because the third prototype was both the subject of a commercial offer for sale before the critical March 5, 2001, date and was reduced to practice at that time, the claim at issue is invalid due to the on-sale bar of 35 U.S.C. § 102(b), as the third prototype contained each element of that claim.

[http://www.cafc.uscourts.gov/opinions/07-1188.pdf]

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Richard R. Diefendorf
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