Evidence of Experimental Use “Sinks” Summary Judgment of Invalidity on Floating Dock Patent
January 15, 2002
Last Month at the Federal Circuit - February 2002
Judges: Rader (author), Mayer, and Linn
In EZ Dock, Inc. v. Schafer Systems, Inc., No. 00- 1443 (Fed. Cir. Jan. 15, 2002), the Federal Circuit overturned a district court’s decision that had granted SJ of patent invalidity due to a sale that had occurred more than one year prior to the filing of the patent application. The Federal Circuit ruled that substantial questions of fact remained concerning whether the transaction was for experimental rather than commercial purposes.
The Court reiterated that Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), requires that the on-sale bar be applied to inventions that are (1) the subject of a commercial offer and (2) ready for patenting. The Court noted, however, that if a sale is for experimental purposes, it is not truly commercial. Further, if the inventor is still experimenting with the invention, it may not be ready for patenting.
This case involved a patent on a floating dock. More than one year prior to filing a patent application, the patentee made a single sale. The Court considered factors such as absence of “for sale” signs, reduced price, free installation, the fact that the sale was instigated by the buyer, that the inventors visited the sold dock to monitor its performance and maintained the dock at no charge, and that the design was changed slightly as a result. Considering all of these factors, the Court held that a jury could reasonably find that the sale was experimental rather than commercial; therefore, SJ was inappropriate.