911 F.2d 713 (Fed. Cir. 1990), 89-1580, United States Environmental Products Inc. v. Westall

Docket Nº:89-1580, 89-1581.
Citation:911 F.2d 713
Party Name:15 U.S.P.Q.2d 1898 U.S. ENVIRONMENTAL PRODUCTS INC. and International Sludge Reduction Co., Plaintiffs/Counterclaim Defendants/Appellants, v. George B. WESTALL, Jr., individually as statutory trustee of SDS Company, and d/b/a SDS Company; SDS Company; and Solids Dewatering Systems, Inc., Defendants/Counterclaim Plaintiffs/Cross-Appellants, v. Felix
Case Date:August 16, 1990
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
FREE EXCERPT

Page 713

911 F.2d 713 (Fed. Cir. 1990)

15 U.S.P.Q.2d 1898

U.S. ENVIRONMENTAL PRODUCTS INC. and International Sludge

Reduction Co., Plaintiffs/Counterclaim Defendants/Appellants,

v.

George B. WESTALL, Jr., individually as statutory trustee of

SDS Company, and d/b/a SDS Company; SDS Company; and

Solids Dewatering Systems, Inc., Defendants/Counterclaim

Plaintiffs/Cross-Appellants,

v.

Felix G. JANSSEN, R. Kimball Stedman, Robert L. Roberts,

Morris M. Riise, Walter R. Strothman and Irving M.

Jahnig, Counterclaim Defendants/Cross-Appellees.

Nos. 89-1580, 89-1581.

United States Court of Appeals, Federal Circuit

August 16, 1990

Page 714

Kenneth J. Jurek, Mayer, Brown & Platt, Chicago, Ill., argued for plaintiffs/counterclaim defendants/appellants. With him on the brief were Ronald A. Jacks, Rosanne J. Faraci and Carrie Huff. Also on the brief was Paul H. Berghoff, Allegretti & Witcoff, Ltd., Chicago, Ill.

Melvin G. Berger, Brand & Leckie, Washington, D.C., argued for defendants/counterclaim plaintiffs/cross-appellants. With him on the brief was John D. Whitler. Also on the brief were William G. Bruns and Frederick M. Woodruff, Gravely, Leidler & Woodruff, St. Louis, Mo. Sean T. Beeny, Brand & Leckie, Washington, D.C., of counsel.

Before NIES, Chief Judge, [*] and MILLER, Senior Circuit Judge, and LIFLAND, District Judge. [**]

LIFLAND, District Judge.

This appeal is from the judgment of the United States District Court for the Eastern District of Missouri, U.S. Environmental Products, Inc., et al., v. George B. Westall, Jr., et. al., No. 87-196C(A), slip op. (E.D.Mo. May 19, 1989), in a patent infringement action brought by U.S. Environmental Products Inc. and International Sludge Reduction Co. ("USEP/ISR") alleging infringement of United States Patent No. 4,632,764 (the " '764 patent"). Following a bench trial, the district court held that the patent was invalid because it did not contain a true statement of inventorship and the invention was on sale more than one year prior to the patent application. The district court also found that even if the patent had been valid, it was not infringed by defendants George B. Westall, Jr., individually as statutory trustee of SDS

Page 715

Company and d/b/a SDS Company; SDS Company; and Solids Dewatering Systems, Inc. (hereinafter "Westall"). Finally, the district court denied defendants' request to find the case exceptional within the meaning of 35 U.S.C. Sec. 285, thereby warranting attorney fees. Both USEP/ISR and Westall appeal.

We affirm solely on the basis that the '764 patent is invalid by virtue of the on-sale bar of 35 U.S.C. Sec. 102(b) (1982). We remand the cross-appeal on the attorney's fees issue for factual findings in accordance with this opinion.

I.

In 1976, Forrest Stannard, Morris Riise and others formed Sludge Reduction System ("SRS") to develop and market a sludge dewatering system. During the late summer or fall of 1976, SRS was successful in selling a sludge dewatering system to the City of Sunrise, Florida. The Sunrise system became operational in January, 1977. By the spring of 1977, the relationship among the SRS principals had deteriorated, culminating in the break up of the company. ISR purchased the rights to the patent application and appointed USEP as its exclusive licensing agent in the United States.

SRS first filed a patent application in 1976. The subject matter of the application was a sludge dewatering system referred to as a vacuum-assisted sludge dewatering bed, or VASDB. The 1976 application claimed only a single filter plate. After several rejections and amendments, a continuation-in-part application was filed on August 2, 1978, claiming a multiple layer filter plate. This CIP application ultimately resulted in the issuance of the '764 patent on December 30, 1986. The '764 patent covers a method for dewatering sludge by the use of a rigid, multi-layer filter plate, which is a type of VASDB.

George Westall, Jr. is the president, sole director and sole shareholder of the other defendants. He became involved with sludge dewatering systems when his company, Sears-Westall, became a manufacturer's...

To continue reading

FREE SIGN UP