New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.

Decision Date30 July 2002
Docket NumberNo. 02-1028.,02-1028.
Citation298 F.3d 1290
PartiesNEW RAILHEAD MANUFACTURING, L.L.C., Plaintiff-Appellant, v. VERMEER MANUFACTURING COMPANY, and Earth Tool Company, L.L.C., Defendants-Appellees.
CourtU.S. Court of Appeals — Federal Circuit

Roy W. Hardin, Locke, Liddell & Sapp, LLP, of Dallas, Texas, argued for plaintiff-appellant.

Jon R. Trembath, Merchant & Gould PC, of Minneapolis, Minnesota, argued for defendant-appellee Vermeer Manufacturing Company. With him on the brief was Jared S. Goff.

Craig B. Florence, Gardere Wynne Sewell LLP, of Dallas, Texas, argued for defendant-appellee Earth Tool Company, L.L.C. Of counsel was Stacy R. Obenhaus.

Before MAYER, Chief Judge, MICHEL and DYK, Circuit Judges.

MICHEL, Circuit Judge.

Plaintiff-Appellant New Railhead Manufacturing, L.L.C. ("New Railhead") owns United States Patent Nos. 5,899,283 ("the '283 patent") and 5,950,743 ("the '743 patent"), drawn to a drill bit for horizontal directional drilling of rock formations and a method for horizontal directional drilling, respectively. New Railhead sued Vermeer Manufacturing Company ("Vermeer") and Earth Tool Company, L.L.C. ("Earth Tool"), for infringement in the United States District Court for the Northern District of Texas based upon their manufacture and distribution, respectively, of a competing drill bit. Both patents-in-suit were invalidated under 35 U.S.C. § 102(b). New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., Civ. Act. No. 4:99-CV-355-Y (Sept. 28, 2001 Order granting Earth Tool's motion for summary judgment of invalidity of the '283 patent based on the on-sale bar); New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., Civ. Act. No. 4:99-CV-355-Y (Sept. 28, 2001 Order granting Vermeer's motion for summary judgment of invalidity of the '743 patent based on prior public use). New Railhead appeals. We affirm.

I

Horizontal (or lateral) directional drilling is necessary, for example, when installing utilities around immovable objects such as roadways, rivers, or lakes. David Cox, co-owner of New Railhead, invented the drill bit and method claimed in the '283 and '743 patents to overcome prior art problems with horizontal drilling through hard rock formations. The boring system disclosed by the Cox patents uses a drill bit with a body that contains fixed and semi-floating cutting points and one or more fluid channels to lubricate and disperse formations that have been cut or fractured, without using jetting fluids that are traditionally used to steer such drilling apparati. '283 patent, col. 1, ll. 42-46, 59-64. Claim 1 of the '283 patent is representative of the seven product claims (emphasis on pertinent claim limitation):

1. An asymmetric drill bit for horizontal directional drilling in rock, comprising:

a bit body attached to an end of a sonde housing;

the unitary bit body being angled with respect to the sonde housing the bit body being nonmovable with respect to the sonde housing in drilling operation; and

the bit body being mounted with a plurality of substantially forward-facing end studs extending from a front face of the bit body.

Likewise, claim 1 of the '743 patent is representative of the four method claims:

1. A method of horizontal directional drilling in rock, comprising the step of causing a drill bit at one end of a drill string to intermittently rotate as it digs in, stops rotation until the rock fractures, and then moves after fracture in a random, orbital intermittent motion.

Notably, New Railhead acknowledges that the method of the '743 patent is performed whenever the drill bit of the '283 patent is used.

The patents-in-suit were filed as continuation-in-part applications that claimed the priority date of a provisional application filed by New Railhead on February 5, 1997. That provisional discloses a "directional earth boring tool" wherein "the heel-down method of attachment [of the bit] to the drill body helps to create the random elliptical orbital motion that causes the high impact fracturing technique." Under headings labeled "Operational assumptions" and "Theory of Operation," the provisional application further alludes to the "high included angle offsets for directional steering," and the enhanced performance that results from "multiplying the fracturing effect through leverage on the main drilling points." The provisional concludes with two drawings that show the bit and the sonde housing that holds the bit during operation; however, both drawings show the drill bit in an "exploded" view, i.e., the bit is not shown attached to the drill bit housing. Moreover, nowhere in the provisional application is the bit body expressly described as being "angled with respect to the sonde housing" as recited in claim 1 of the '283 patent. (As noted by the district court, Cox testified that the claim language "angled with respect to the sonde housing" meant that the drill bit had a toe (front portion) and a heel (rear portion), and that the toe-to-heel ratio was "the amount above and the amount below [the] outer circumference of the sonde housing.")

The '283 patent issued on May 4, 1999, and New Railhead filed this lawsuit the following day. It amended its complaint in January 2000 to include the '783 patent, which had issued on September 14, 1999.

At the close of discovery, Earth Tool moved for partial summary judgment of invalidity of the '283 patent based on the on-sale bar of 35 U.S.C. § 102(b). The parties did not dispute that commercial embodiments of the patented drill bit were sold during the spring and summer of 1996 — more than one year before the November 1997 filing date of the non-provisional application, but not more than one year before the filing date of the February 1997 provisional application to which it claimed priority. Earth Tool argued, however, that the utility application was not entitled to the priority date of the provisional because the disclosure in the provisional specification failed to adequately describe the invention claimed in the '283 patent as required by 35 U.S.C. § 119(e)(1). The district court agreed, concluding "nothing in this [provisional specification] language states that the drill bit is `angled with respect to the sonde housing' or otherwise describes the toe, the heel, or the toe-to-heel ratio." The court further found that Cox had admitted as much in his deposition, and that his later contrary declaration submitted in opposition to partial summary judgment could not, as a matter of law, create a genuine issue of material fact on this point. Thus, because the '283 patent was not entitled to claim the priority date of the provisional, New Railhead's mid-1996 commercial sales constituted a § 102(b) bar.

Vermeer also moved for summary judgment of invalidity, arguing that the '743 patent was invalid because the method claimed therein had been in public use for more than one year before the February 1997 filing date of the provisional application. Specifically, Cox testified in his deposition that on a number of occasions beginning in January 1996 he had allowed Earl Freeman, an acquaintance who was the foreman of a drilling team working for a third party, to test the drill bits at a public job site to determine if they functioned properly. The district court agreed with Vermeer that Freeman's repeated use of the method disclosed in the '743 patent to test, among other things, the durability of the drill bits that were the physical embodiment of the '283 patent constituted a public rather than experimental use. (J.A. 19 20).

New Railhead appeals.1 We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). We review a district court's grant of summary judgment of invalidity without deference, drawing all reasonable factual inferences in favor of the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

III

Because the parties do not dispute that the patented drill bit was the subject of a commercial offer for sale more than one year before the utility application was filed, the '283 patent is invalid if it is not afforded the priority date of the provisional application. 35 U.S.C. § 102(b) ("A person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States.").

As a part of the Uruguay Round Agreements Act, the Patent Statute was amended to allow applicants for United States patents to file provisional applications that could provide the priority date for a non-provisional utility application filed within one year of the provisional. See 35 U.S.C. § 111(b). Such a provisional application need only include a specification conforming to the requirements of 35 U.S.C. § 112 ¶ 1 and at least one drawing filed under § 113; no claims are required. 35 U.S.C. §§ 111(b)(1), (2). However, for the non-provisional utility application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor and the written description of the provisional must adequately support the claims of the non-provisional application:

An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such...

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