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Archived updates for Tuesday, February 15, 2005

Repair Shops' Use of Tool for 30 Months Was "Experimental"

In Lisle Corporation v. A.J. Manufacturing Company (Fed. Cir. Feb. 11, 2005)Lisle delivered the prototype tool to four different automobile repair shops around December 1989. Lisle did not receive any payment for those tools, but also did not require any of the mechanics to enter into a formal confidentiality agreement. In June 1992, over thirty months after the first prototype tool was delivered, Lisle filed its patent application. According to the Federal Circuit:

[S]ubstantial evidence supports the jury’s findings of fact in favor of Lisle on the question of experimental use, and those findings support the conclusion of lack of public use. To counter A.J.’s attempt to show public use, Lisle relies on the testimony of Mr. Danny Williams, coinventor of the ’776 patent and an engineer for Lisle, which was presented to the jury. Williams testified that he needed to know how well the wrench disc would fit on the inner tie rod socket and whether the prototype tool would fit in the confined location of the tie rod in different automobile models. Williams also stated that, under company protocol, he and other engineers at Lisle would have contacted the mechanics who were given the prototype tool every two to four weeks by telephone or in person to receive testing feedback.

Williams further testified that he modified the design of the retainer in the prototype tool and added additional wrench disc sizes based on comments he received from the outside mechanics. Finally, Williams explained that although there was no formal confidentiality agreement between Lisle and the mechanics who were given the prototype tools, Lisle had prior working relationships with those mechanics. Williams also believed that the mechanics knew that the prototype tool was given to them for experimental purposes.

The jury was also presented with "General Meeting Reports" that were drafted by the president of Lisle, Mr. John Lisle. The reports gave updates on the then-current status of the tie rod tool project, plans for future testing, concerns regarding the commercial viability of the tools, and suggestions from outside mechanics regarding how to improve the design of the tool. Mr. Marvin Negley, Manager of Engineering at Lisle, also testified that those reports were based on information that Mr. Lisle received during weekly management meetings. While we express no view as to whether we as fact-finders might have concluded that this evidence was sufficient to rebut a prima facie case of public use, we agree with Lisle that the submitted testimony and reports do constitute substantial evidence from which a reasonable jury could find that Lisle rebutted the prima facie case of public use and thus A.J. failed to prove by facts supported by clear and convincing evidence that the ’776 patent was invalid for public use.

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