Underground Drilling Is Public Use of Drilling Method
July 30, 2002
Last Month at the Federal Circuit - August 2002
Judges: Michel (author), Mayer, and Dyk (dissenting)
In New Railhead Manufacturing v. Vermeer Manufacturing Co., No. 02-1028 (Fed. Cir. July 30, 2002), the Federal Circuit affirmed a district court’s grant of SJ for invalidity of U.S. Patent Nos. 5,899,283 (“the ’283 patent”) and 5,950,743 (“the ’743 patent”) issued to New Railhead Manufacturing, L.L.C. (“New Railhead”), based on an on-sale bar and prior public use, respectively.
New Railhead sued Vermeer Manufacturing Company (“Vermeer”) and Earth Tool Company, L.L.C. (“Earth Tool”), alleging infringement of its ’283 and ’743 patents respectively drawn to a drill bit and a method for horizontal directional drilling of rock formations. New Railhead had filed CIP applications in November 1997 for both patents, claiming priority to a provisional application filed on February 5, 1997. It had earlier sold commercial embodiments of the claimed drill bit during the spring of 1996, which was more than one year before the November 1997 filing date of the nonprovisional applications, but not more than one year before the February 1997 filing date of the provisional application.
Earth Tool, however, argued that the ’283 patent was not entitled to the priority date of the provisional application because it failed to adequately describe the invention actually claimed in the patent. Claim 1 of the ’283 patent recites an asymmetrical drill bit comprising a “unitary bit body being angled with respect to the sonde housing.” David Cox, co-owner of New Railhead and an inventor, testified that the claim language “angled with respect to the sonde housing” meant that the drill bit had a toe (front portion) and a heel (rear portion), and that the toeto- heel ratio was the amount above and the amount below the outer circumference of the sonde housing. The district court concluded that nothing in the provisional specification disclosed that the drill bit was angled with respect to the sonde housing or otherwise described the toe, the heel, or the toe-to-heel ratio.
On appeal, New Railhead argued that Cox was always in possession of the heel-toe structure, and that the district court had erred by focusing on whether the provisional disclosed the importance of the angled structure rather than whether it disclosed the angled structure at all. The Federal Circuit noted that the writtendescription requirement is not subsumed by the “possession” inquiry and concluded that what is claimed must be the same as what is described in the specification. As a result, it agreed with the district court’s ruling that the specification in the provisional failed to meet the description requirement and the ’283 patent was not entitled to the filing date of the provisional application. Accordingly, because New Railhead filed the application that issued as the ’283 patent on November 12, 1997, more than one year after the admitted mid-1996 commercial offers of sale, the Federal Circuit affirmed the district court’s grant of partial SJ for invalidity under 35 U.S.C. § 102(b).
For the ’743 patent, the district court assumed that the patent was entitled to the priority date of the provisional application. However, Vermeer argued that the method claimed in the ’743 patent had been in public use for more than one year before the February 1997 priority date of the provisional. Particularly, Cox testified in his deposition that on several occasions beginning January 1996, he had allowed Earl Freeman, an acquaintance who was the foreman of a drilling team working for a third party, to test the drill bits at a public work site. The district court concurred with Vermeer and held that Freeman’s repeated use of the method claimed in the ’743 patent to test the durability of the drill bits from the ’283 patent constituted public use. New Railhead challenged that holding on the basis that all public use before the priority date was experimental.
The Federal Circuit affirmed the district court’s ruling that Freeman’s testing was public use because the method had been reduced to practice after Freeman had completed a first bore using the patented drill bit on January 1996. Although further modifications were made to the bit over the ensuing months, the Federal Circuit maintained that nothing in the record indicated that there was ever a question about the efficacy of the patented method or any modification of the patented method as a result of additional testing. Hence, the additional drilling after the first bore was not experimental for the method and use of the patented method to test the drill bit constituted public use.
Judge Dyk dissented with the majority’s holding of invalidity for the ’743 patent claims. He asserted that Freeman’s use of the patented method was experimental because the testing of the drill bit was intertwined with the testing of the method (i.e., the method would not work if the drill bit did not work). He also argued that the testing occurred underground hidden from view, and it would have been impossible for a person to understand the method of using the drill bit without viewing it or seeing it in operation. This, coupled with a showing that the use was confidential, compelled him to dissent.