917 F.2d 544 (Fed. Cir. 1990)
Brooks Kushman successfully represented Manville Sales Corporation (“Manville”) in an action for patent infringement against Paramount Systems, Inc. (“Paramount”). Manville’s patent was directed to a self-centering luminare assembly used to raise and lower highway lights on 100 ft. poles for maintenance or replacement purposes.
Paramount asserted that the patent was not infringed, invalid, and unenforceable. Brooks Kushman litigated the case on Manville’s behalf for four years before the U. S. District Court for the Eastern District of Pennsylvania and the U. S. Court of Appeals for the Federal Circuit. Brooks Kushman succeeded in establishing that the patent was valid, enforceable and infringed, and the District Court awarded Manville over $2 million in damages.
Paramount’s primary argument was that the patent was invalid because the invention was in public use prior to the 35 U.S.C. § 102(b) bar date. Prior to the bar date, Manville’s inventor sought to test the invention for durability during winter months at a rest area that was not yet open to the public. The inventor installed the patented device at the rest area November 1971. In March 1972, the inventor returned to the rest area to inspect his invention and concluded that it had worked properly even after the Wyoming winter. On March 10, 1972, Manville approved the invention for commercial use. A patent application was filed on February 5, 1973, that later issued as the ‘333 patent.
Paramount argued that Manville’s public use of its invention at the rest area in Wyoming more than one year prior to the filing date of the patent, was an invalidating public use under Section 102(b). The Federal Circuit, however, in a landmark decision, ruled that Manville’s use was experimental, and outside the reach of Section 102(b), because the use was for primarily experimental, and not commercial purposes. Most noticeably, the Federal Circuit held that “when durability in an outdoor environment is inherent to the purpose of an invention, then further testing to determine the invention’s ability to serve that purpose will not subject the invention to a Section 102(b) bar.”
Manville’s holdings have been subsequently cited over 400 times, including over 50 citations by the Federal Circuit.
