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July 21, 2006

Backyard Prior Art

Jumpsport sued Jumpking, and other defendants, for infringing trampoline patents 6,053,845 and its continuation 6,261,207. Mixed verdict; the item of interest is the continuation of broad latitude in what constitutes prior art; in this case, public use.

The CAFC (05-1182), in a non-precedent ruling (silly concept) agreed in entirety with the district court on its variety of rulings, which found all-too typical weaselly behavior by some parties, notably false advertising and fiddling with inventorship, though the asserted inequitable conduct was not found.

On December 5, 2003, the jury returned a verdict on the issues of infringement, validity, inventorship, false advertising, and false advertising damages. First, the jury found that Jumpking’s FunRing-1 product infringed claims 1, 7, 13, and 17 of the ’845 patent and claims 5, 9, and 14 of the ’207 patent, that Hedstrom’s JumpGuard product infringed claims 1, 2, 7, 15, and 17 of the ’845 patent and claims 9 and 10 of the ‘207 patent, that the infringement was not willful, and that the FunRing-2 product did not infringe either the ’845 or the ’207 patent. The jury also determined that the retailer defendants and ICON were not liable for infringement. Second, the jury found that claims 2, 3, 11, and 12 of the ’845 patent and claims 1, 24, 25, 31, 32, 33, and 35 of the ’207 patent were invalid because of anticipation, and that claims 29 and 38 of the ’207 patent were invalid because of obviousness. Third, the jury made findings of fact that Donald Strasser was a co-inventor of the ’845 and ’207 patents and that Byron Bertsch, a listed inventor on the patents, was not a co-inventor of the ’845 and ’207 patents. Finally, the jury found that both Jumpking and JumpSport engaged in false advertising under the Lanham Act, but that neither party owed damages to the other party.

The interesting portion of this ruling was whether a guy having a trampoline in his backyard that he let others use constituted public use. It does.

We also agree with the defendants that there was no genuine issue of material fact regarding whether the Curtis enclosure anticipated claims 16 and 40 of the ’207 patent. 35 U.S.C. § 102(b) provides that “[a] person shall be entitled to a patent unless . . . the invention was . . . 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.” “We have defined ‘public use’ as including ‘any use of [the claimed] invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor.’” Lough v. Brunswick Corp., 86 F.3d 1113, 1119 (Fed. Cir. 1996) (citations omitted). Here, there is no question that Curtis did not limit, restrict, or oblige to secrecy the persons in the neighborhood who used his trampoline enclosure, and therefore it was in public use. Moreover, while Curtis maintained control of the trampoline in his backyard, he did not control access to it or make any effort to keep it confidential. Because JumpSport concedes that if the Curtis enclosure is considered to have been in public use, claims 16 and 40 of the ’207 patent are invalid, we thus affirm the court’s grant of the defendants’ motion for summary judgment.

Prior art searchers take note: don't limit searches to the front yard.

Posted by Patent Hawk at July 21, 2006 12:58 PM | Prior Art


Same old issue again: does the US public want (need?) a bright line test (eg. made available to at least one member of the public: EPO) that minimises litigation by giving legal certainty, or does it want (need?) a fuzzy test "what a reasonably diligent searcher might have been expected to find" that offers none, with the prospect of settling the issue in court?

The answer seems obvious when looking in from outside USA, but I guess it is nowhere near so clear, when considered from inside the USA. What do US readers say?

Posted by: MaxDrei at July 22, 2006 11:00 AM