Public Use & Prior Art Put “PermaWrap” On Patent

Posted on | May 1, 2008 | No Comments

2008-1332 Clock Spring v. Wrapmaster

SD/TX H-05-0082

Plaintiff Clock Spring appeals from the order of Judge Vanessa Gilmore–adopting the recommendations of Mag. Judge Mary Milloy–granting defendant summary judgment on invalidity and on plaintiff’s false advertising claim.  The action is the latest in this "serial litigation" between these competitors in the business of "composite sleeve reinforcement systems" for repairing pipes. 

Clock Spring sued Wrapmaster accusing it of false advertising as well as alleging that use of defendant’s PermaWrap product infringed claims of 5,632,307.  On summary judgment, the court held the ‘307 invalid as "used publicly more than one year prior to filing" under §102(b) and as obvious under § 103.

Prior Public Use.  The prior public use was evidenced by a written report from Gas Research Institute on a 1989 demonstration of Clock Spring’s technology.  The report describes the process claimed in the ‘307 (filed in 1992).   Clock Spring countered that (1) the use was "experimental" and (2) the evidence of the prior use was inadmissible hearsay.  The court rejected the "experimental" defense under Invitrogen Corp v. Biocrest, 424 F.3d 1371 (Fed. Cir. 2005), finding the demonstration was both "open to the public" and commercially motivated (done in the hope of obtaining business).

The court likewise rejected the hearsay argument.  While noting that it was undoubtedly hearsay under  Evid. R. 801, it  fell within the exceptions under Evid. R. 803(17) (compilation) and 807 (catch-all).  The court found the report reliable (evidence of reliability by public and industry) and its use a necessity (impractical to call or identify everyone who worked on the report).

Of some importance to the court was the fact that Clock Spring did not  challenge the truth or accuracy of the report.

Obviousness. The court also found the claims obvious–the allegedly inventive step
claimed was using a "filler material" (epoxy) on the pipe and, before the filler hardened or cured, wrapping the pipe with high strength material.  The court found several prior art references describing application of a hot or tacky substance and then applying the wrap before the substance cooled or lost its adhesiveness.  The court found it would have been obvious to replace the hot or tacky substances with epoxy per KSR.

False Advertising.  Clock Spring claimed that Wrapmaster made advertising statements about its own PermaWrap product that were false or misleading.  In general, the statements claimed that the PermaWrap sleeve was stronger than competitors (i.e., Clock Spring).  While Clock Spring presented some evidence to show this was false, it failed to show the statements were material.  It presented only a declaration of its president as to what purchasers believe, which the court dismissed as self-serving and not evidence that actual customers were actually misled.   

Documents:

2008-1332_sj_invalidity.pdf
2008-1332_false_adv_sj.pdf

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