Memorandum

To: Dennis Kelly, Senior Partner

From: Nivv Oudit, Junior Associate

Date: October 27, 2011

Re: Telescope Casual Furniture, Inc. v. Furniture World Corp. et al.

Patent Infringement Case

Firm File No. 53092ETW.003

Questions Presented

1. Is U.S. Pat. No. 6830,293 invalid under 35 U.S.C. § 102(b)?

a. Was the use of the sofa pads by Vanderminden, Barnes and Barnes’ neighbor

sufficient to count as “public use?”

b. Was the power-point sales presentation containing detailed invention features

made sufficiently publicly accessible to count as a “printed publication?”

Brief Answer

A court will most likely hold U.S. Pat. No. 6830,293 to be invalid under

35 U.S.C. §102(b).

Under 35 U.S.C. § 102(b), “a person shall be entitled to a patent unless the

invention was patented or described in a printed publication in this or a foreign

country or in public use or on sale in this country, more than one year prior to the

date of the application for patent in the United States.”

Although it can be argued that the use of the seat pads was predominantly

experimental and therefore not public use under § 102(b), the invention was likely

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sufficiently publicly accessible to be described as a printed publication prior to the

critical date, thus rendering the patent invalid.

Facts

Telescope Casual Furniture’s employee Mr. William M. Vanderminden

designed the seat pad that is the subject of the ‘293 patent. He conceived of the

idea during the fall of 1999, and on December 6, 1999, the company produced ten

seat pads. Three of these pads were taken home by Mr. Vanderminden, five were

stored away, and the remaining two were taken by Mr. Buck Barnes, the Director

of Operations at Telescope Casual Furniture, Inc.

Mr. Vanderminden put his three seat pads on furniture, on a chair, and on

a swing in his backyard. Mr. Barnes put one pad on a chair on his patio and sold

the other pad to his next-door neighbor for $30, asking him to try it out. He gave

the $30 to the sales department of Telescope Casual Furniture. Barnes regularly

asked his neighbor for feedback regarding the seat pad, and if the neighbor had

any related problems, he would let Barnes know. In December 2000, Barnes took

a new seat pad to his neighbor and traded it for the original seat pad, which was

returned to Vanderminden for evaluation.

Ms. Kate Beckett, Vice President for Sales at Telescope Casual Furniture,

emailed a power-point sales presentation on March 1, 2000 to Dr. Rick Castle,

Program Chair for the “Show of Outdoor Furniture Accents”(“SOFA”). This

presentation (SOFA 2000) demonstrated all of the features of the seat pad. In her

email, Ms. Beckett stated that a copy of the presentation would be available on the

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Telescope Casual Furniture FTP server as a backup. She also included the specific

FTP web address in her email.

The power-point presentation was available on the FTP side for only

seven days in March 2000. But prior to the critical date of June 29, 2000, Beckett

had provided the FTP web address to retailers of outdoor furniture both in

presentations and via email. She included specific links to documents within the

FTP site. The FTP site had two main folders: “dev” and “pub.” The contents of

the “pub” folder included several subfolders including the folder “furniture,”

which contained several sales presentations including the SOFA 2000

presentation. This FTP site was commonly referenced by individuals on the public

domain Google Groups.

Discussion

a. Was the use of the sofa pads by Vanderminden, Barnes and Barnes’

neighbor sufficient to count as “public use?”

It is probably likely that a court will hold that the use of the sofa pads did

not quality as a “public use.” This is because the usage of these sofa pads was

predominantly experimental for the purpose of testing the pads.

In the context of patent invalidity determination, an invention is in “public

use” if it is shown to or used by an individual other than the inventor under no

limitation, restriction, or obligation of confidentiality. This must occur more than

one year prior to the date for application (critical date) for patent in the United

States. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1325 (Fed. Cir. 2009).

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The doctrine of “experimental use” permits an inventor to engage in

activities that would otherwise be classified under “public use,” provided that the

use is incidental to experimentation, for the purpose of perfecting the invention.

By demonstrating that these activities fell within the boundaries of experimental

use, it is possible to refute a charge that the activity in question rendered the

invention unpatentable. Elizabeth v. Pavement Co., 97 U.S. 135 (1877).

In determining whether a use of an invention is experimental for purposes

of the public use bar, an entirety of the circumstances must be taken into

consideration. This includes various objective indications of experimentation

surrounding use, such as number of prototypes and length of testing, whether

records were made regarding testing, existence of a confidentiality agreement

between patentee and party performing testing, whether patentee received

compensation for using invention, and the extent of control the inventor

maintained over testing. Lough v. Brunswick Corp., 86 F.3d 1120 (Fed. Cir.

1996).

Experimental use can be satisfied if an invention is tested for the purpose

of further improvement, albeit in public, for several years prior to the filing of a

patent. Elizabeth, 97 U.S. at 133. In Elizabeth, the U.S. Supreme Court held that

the testing of pavement material on a public road constituted experimental use.

This testing occurred for a period of six years before the inventor Mr. Nicholson

filed for a patent. The Court held that the nature of the invention required it to be

tested in a public place over a significant period of time. During the testing

period, Nicholson examined the pavement on a daily basis and regularly sought

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feedback from a toll-collector Joseph L. Lang with regard to its condition.

Additionally, the testing was conducted under the control and regular inspection

of the inventor. Id.

Although confidentiality is of significant importance in the patent process,

the presence or absence of a confidentiality agreement is not dispositive of the

public use issue. TP Labs, Inc. v. Prof’l Positioners, Inc.,724 F,2d 972 (Fed. Cir.

1984). Experimental use can be satisfied even if an invention is tested in the

absence of confidentiality, provided that this is incidental to the experimentation

process and that the testing is within the inventor’s control. Id at 965. The U.S.

Court of Appeals held that the use of a prototype orthodontic device in the

treatment of three patients was not public use, but was experimental. The patients

were not asked to swear to secrecy. The Court held that the inventor’s use of the

orthodontic apparatus on his patients was consistent with experimentation, still

within his control, and not considered a public use. The Court also recognized that

the small number of units produced (three) also indicated an experimental use, as

opposed to a large number which could possibly imply a commercial, and hence,

public use. The Court noted that if an inventor allowed his invention to be used by

other persons generally, regardless of compensation, or to be put on sale for

general use, this would constitute public use. Id at 971.

Conduct that would lead the public to reasonably believe an invention is in

the “public domain” raises a concern of public use. Of particular importance is the

idea that the invention is out of the inventor’s control. One of the underlying

policies considered by the U.S. Court of Appeals involves “discouraging removal

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from the public domain of inventions that the public reasonably has come to

believe are freely available.” Baxter Int’l, Inc. v. Cobe Labs., Inc., 88 F.3d 1058

(Fed. Cir. 2009). In Baxter, the Court held that a scientist’s use of a prototype

centrifuge, prior to it critical date, was public use. Although the scientist

Suaudeau described his use as experimental, the Court held that Suaudeau was not

experimenting with the basic features of the centrifuge, but was merely fine-

tuning it to his own purpose after it had been reduced to practice, out of the

control of the inventor. Id at 1059. “A use may be experimental only if it is

designed to test the claimed features of the invention or to determine whether an

invention will work for its intended purpose.” Clock Spring, 560 F.3d 1325.

Furthermore, the record indicated a frequent stream of people visiting the lab.

These people were not bound by an obligation of confidentiality. The Court held

that these factors, when considered in totality, indicated that the invention was in

the public domain. This was not experimental use, but public use. Baxter, 88 F.3d

at 1059.

When an inventor distributes his invention to members of the public under

circumstances that suggest a near total lack of supervision and control concerning

its use, this suggests that the invention was in public use. Lough v. Brunswick

Corp., 86 F.3d 1122 (Fed. Cir. 1996). In Lough, the inventor of a boat-seal

assembly created six prototypes. He installed the first in his own boat, and

installed the remaining prototypes in boats of his friends. One of these boats was a

demonstration boat at their marina, and was sold. The installations of the

prototypes and the sale of the boat occurred prior to the invention’s critical date.

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The inventor Lough did not know what happened to that boat after its sale, and

did not ask for comments regarding operability of the prototypes in his friends’

boats. In order to establish a potential claim for experimental use, Lough had to

maintain some degree of control and feedback over the uses of the prototypes.

The U.S. Court of Appeals held that these incidents concerning his prototypes

constituted public use. Id. at 1121.

In the case of Telescope Casual Furniture, Inc., the usage of the seat pads

will probably be regarded as experimental. The fact that only five pads were

tested suggests experimental use, as it is a relatively small number of units,

compared to a larger number which might suggest commercial and hence, public

use. Like the orthodontist inventor in TP Labs, Inc, Vanderminden can reliably

testify that this was an indicator that the seat pads were to be used for

experimental purposes.

The fact that Vanderminden checked his seat pads on a daily basis and

made meticulous notes on their condition in the weather also suggests

experimental use. In Elizabeth, Mr. Nicholson the inventor of the wooden

pavement examined the pavement daily and regularly sought feedback from

people regarding its condition. Through the scrupulous daily inspections of his

own seat pads, as well as his weekly requests for feedback regarding Barnes’

pads, Vanderminden became similar to Nicholson. This further supports the

possibility that the use of the seat pads was experimental.

The fact that three of seat pads were in Vanderminden’s furniture in his

own residence, and two were given to Barnes, Vanderminder’s associate, suggests

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that Vanderminden maintained a significant degree of control and feedback over

his invention during the alleged testing period, another indicator of experimental

use. Despite Barnes’ sale of one pad to his neighbor, there is hardly strong

evidence suggesting that the invention was out of Vanderminen’s control, as the

sold seat pad was still accessible to Barnes (and hence, Vanderminden) and

Barnes always received feedback from his neighbor. Barnes even took a new seat

pad to his neighbor and traded it for the original one, further indicating that the

sold seat pad was being tested so that it could be brought to perfect its claimed

features. As previously mentioned, the inventor of the boat-seal assembly in

Lough installed several prototypes in the boats of his acquaintances, did not keep

a record of their conditions, nor sought feedback from the users of the prototypes;

in essence, not keeping control. Unlike the inventor in Lough, Vanderminden

maintained control over his invention and Barnes’ sale of one of his seat pads to

his neighbor was incidental to the experimental process.

But, there is a possibility that the use of the seat pads would be considered

public use. Barnes’ neighbor was under no degree of secrecy regarding the seat

pad. Although in TP Labs, Inc. the Court held that this was not dispositive of the

public use issue, there is a possibility that the neighbor could have let others

generally use it. The fact that Barnes sold the seat pad to his neighbor for $30 (as

opposed to a lower figure when considering the average retail price of a seat pad)

instead of simply giving him the pad suggests a commercial transaction.

Furthermore, Barnes’ neighbor could have let others generally use his seat pad.

Recall that in TP Labs, Inc., the Court noted that if an invention was used by other

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persons generally, or was sold for general use, this would constitute public use.

Using this reasoning, it can be inferred that the sale to the neighbor and the

construed “general use” would likely be considered public use. In response to this,

Vanderminden can argue that the sale was incidental to the experimental process,

and that the nature of the invention required the neighbor to use it in a general

manner to test its durability.

Although there is a possibility that the Court can hold that the use of the

seat pads was public use, it is likely more probable that the use was experimental.

The use of the seat pads was consistent with testing to perfect the claimed

invention features, and this weighs more heavily than the possibility that the use

was public use.

Discussion

b. Was the power-point presentation containing detailed invention features

made sufficiently publicly accessible to count as a “printed publication?”

It is very likely that a court will hold that the power-point presentation was

made sufficiently publicly accessible to qualify as a printed publication. This is

because the availability of the presentation, prior to the critical date, on the FTP

web address and in email communications suggested that it was available to the

public.

A document is regarded as a printed publication upon a reasonable

showing that it has been distributed or made prevalent to an degree that people

interested and ordinarily skilled in subject matter or art, exercising reasonable

diligence, can locate it and understand essentials of the claimed invention without

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need of further research or experimentation. In re Wyer, 655 F.2d 225 (C.C.P.A.

1981). The underling policy behind this is to ensure that the information that is

already accessible to the public cannot afterwards be withdrawn, thus depriving

the public of its free use. Id at 221. The word “printed” has evolved with the

ongoing advances in technology regarding data storage, retrieval, and

dissemination in which a reference may be communicated to the public. It is no

longer necessary that the information is literally printed, handwritten, or on any

particular form of media, as long as the information can be disseminated. What is

essential about the information is the doctrine of “public accessibility,” in

evaluating whether a reference is a printed publication. In re Hall, 781 F.2d 898

(Fed. Cir. 1986).

A document can constitute a printed publication if it is catalogued in a

meaningful way, so as to reasonably infer it is publicly accessible. Id. In Hall, the

U.S. Court of Appeals held that general library cataloging and shelving practices

showed that a single thesis submitted to a university library by Peter Foldi would

have been indexed, cataloged and shelved, and therefore publicly accessible

before the critical date to be deemed a printed publication. Id. at 898.

A document that has neither been catalogued nor indexed in a meaningful

way is likely not publicly accessible and therefore not a printed publication. In re

Cronyn, 890 F.2d 1158 (Fed. Cir. 1987). In Cronyn, a college professor submitted

three student theses to the chemistry department library at his university. The

theses were listed on three out of 450 cards filed alphabetically by author in a

shoebox in the chemistry department library. The U.S. Court of Appeals held that

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the theses had neither been cataloged nor indexed in a meaningful way since the

theses could only be found if the researchers’ names were known, but the names

bore no relationship to the subject of the theses. Id at 1159

A document that remains uncatalogued and unshelved as of the critical

date is not considered a printed publication. In re Bayer, 568 F.2d 1357 (C.C.P.A.

1978). In Bayer, a graduate student submitted a single thesis to his university’s

library, where the invention remained uncatalogued and unshelved prior to its

critical date. Despite the fact it was accessible to three members of the student’s

graduate committee, the U.S Court of Customs and Patent Appeals held that this

thesis was not a printed publication. The Court concluded that, under the

circumstances, the availability of this document to those committee members “did

not raise a presumption that the public concerned with the art would know of (the

invention).” Id at 1361. Despite counterarguments that there could be a possibility

that the information was transmitted to others and hence publicly accessible, the

Court held that there was an extremely small probability of public knowledge of

the invention and was hence publicly inaccessible within the meaning of 35 U.S.C

§ 102(b). Id. Furthermore, the Court notes the distinction between disseminating a

document to persons in general, suggesting public accessibility, as opposed to

communicating a document privately for the use of single persons or of a few

restricted groups of persons, suggesting private communications. Id at 1360.

A document that is presented via oral presentation can constitute a printed

publication if copies of the document are disseminated without restriction. MIT v.

AB Fortia, 774 F.2d 1108 (Fed. Cir. 1985). In MIT, a scientist orally presented a

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research paper regarding cell growth to an audience consisting of 50 to 500 cell

culturists. Before the conference, the scientist gave a copy of the paper to the

conference head and copies were disseminated after the presentation, at the

request of the culturists and without any restriction, to approximately six persons.

These events occurred prior to the paper’s critical date and the U.S. Court of

Appeals held that the dissemination of these copies to those persons interested and

of ordinary skill in the subject matter rendered the paper a printed publication. Id

at 1109.

A document can constitute a printed publication if it is publicly displayed

for a period of time. This is as long as it is sufficiently accessible to raise a

presumption that the public concerned with the art would know of the invention.

In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004). In Klopfenstein, a chemist

displayed a printed slide presentation continuously for two and a half days at a

meeting of the American Association of Cereal Chemists (AACC). This

presentation contained fourteen slides and had invention details. Despite

counterarguments that no copies of the presentation were publicly disseminated as

in MIT, or that the display was not later indexed in any database, the Court held

that the presentation was made sufficiently public to be a printed publication. Id at

1350. The Court noted several factors in arriving at its decision: “duration of the

display, expertise of the target audience, existence (or lack thereof) of reasonable

expectations that the material displayed would not be copied, and the ease with

which the material could be copied.” Id. When applying these factors in light of

the fact that the display had been shown to an audience of chemists for a

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significant period of time, the Court concluded that the display was a printed

publication. Id.

In the case of Telescope Casual Furniture, Inc., it is very likely that the

prevalence of the power-point presentation on the FTP web address and in email

communications made the invention sufficiently publicly accessible to be a

printed publication.

Firstly, Ms. Beckett emailed the power-point presentation containing

detailed invention features to Dr. Castle on March 1, 2000, prior to the June 29,

2000 critical date. This email was sent with no agreement to confidentiality and,

despite his possible ethical obligation to maintain secrecy, Dr. Castle had no legal

duty to do so. Ms. Beckett effectively disseminated this document to Dr. Castle,

who is arguably a person of ordinary skill in the art interested in the subject

matter of the patent. In doing so, Ms. Beckett became similar to the scientist in

MIT. Recall that the scientist’s dissemination of his presentation resulted in the

work being counted as a printed publication.

Secondly, prior to the critical date, Ms. Beckett made the power-point

presentation available on the FTP web address for seven days. She provided the

FTP web address to retailers of outdoor furniture (arguably people of ordinary

skill in the art interested in the subject matter) both in presentations and email.

Beckett even provided specific links to documents within the FTP site. An

application of the factors the Court used for its holding in Klopfenstein may

suggest that the power-point presentation was publicly accessible to constitute a

printed publication. For the seven days the presentation was made available, it

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was likely that a person of ordinary skill in the art interested in the subject matter

could have accessed it and possibly even further disseminated it to others. This

information was directly communicated to a target audience who had no

reasonable expectation of confidentiality. By its very nature, a FTP server permits

relatively easy file access. In this medium, almost any user can effortlessly

browse, view and even further distribute files. Like the document in Hall, the file

was arguably catalogued and indexed in a meaningful way so as to infer public

accessibility. Furthermore, the file was not password-protected so as to maintain a

degree of restricted access. It is reasonable to conclude that a person with

knowledge of the FTP server could have easily browsed and downloaded several

documents including the SOFA 2000 presentation, thus rendering the presentation

as publicly accessible. Even if a person did not have knowledge of the FTP server,

the fact that the FTP site was commonly referenced on Google Groups suggests

further public accessibility since users with no direct knowledge of the FTP site

could simply search under specific interests e.g. “furniture,” locate the site and

eventually, the SOFA 2000 presentation. This is especially possible when the

folder containing the presentation was also labeled “furniture.”

Beckett can argue that her email correspondence to Dr. Castle was a

private communication and not intended to persons in general. In Bayer, the Court

noted that the instance of private communication does not suggest public

accessibility. But, there was no agreement of confidentiality and, as previously

mentioned, Castle had no legal duty to keep the file secret and could have further

disseminated the information.

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Beckett can argue that the FTP site was not catalogued in a meaningful

way and that the SOFA 2000 file was not publicly accessible. In her email to Dr.

Castle, she attached the file and also included the specific web address of the file.

In the other instances where she provided the FTP web address to retailers, she

did not specifically give the file location of SOFA 2000; in fact, she provided

links to other documents. Depending on factors such as the number of files

present in the various folders, a person exercising reasonable diligence may or not

be able to specifically access the SOFA 2000 file with ease sufficient to raise a

presumption that the public concerned with the art would know of the invention.

In this instance, there may be a relatively small probability of public knowledge,

like the Court held in Bayer.

While the Court can possibly hold that the SOFA 2000 presentation was

not sufficiently publicly accessible, it is still more probable that the facts weigh

more heavily toward public accessibility to render the document as a printed

publication. It is especially likely in light of the fact that the FTP site was

commonly referenced on the popular Google Groups.

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