Lough v. Brunswick Corp.

• Decision Date: 02 January 1997
• Docket Number: 95-1314,Nos. 95-1266,95-1302,s. 95-1266
• Citation: 41 USPQ2d 1385,103 F.3d 1517
• Parties: Steven G. LOUGH, Plaintiff-Appellee, v. BRUNSWICK CORPORATION, d/b/a Mercury Marine, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1517

103 F.3d 1517

41 U.S.P.Q.2d 1385

Steven G. LOUGH, Plaintiff-Appellee, v. BRUNSWICK CORPORATION, d/b/a Mercury Marine, Defendant-Appellant.

Nos. 95-1266, 95-1302, 95-1314.

United States Court of Appeals Federal Circuit.

Jan. 2, 1997.

Appealed from: U.S. District Court for the Middle District of Florida; Judge Nimmons, Jr.

Ward E. Dahlgren and Richard R. Garland, Dickinson & Gibbons, P.A., Sarasota, FL, submitted a petition for rehearing and suggestion for rehearing in banc for plaintiff-appellee. With him on the petition were Arnold B. Silverman and Kirk D. Houser, Eckert Seamans Cherin & Mellott, Pittsburgh, PA.

George H. Solveson and Edward R. Williams, Jr., Andrus, Sceales, Starke & Sawall, Milwaukee, WI, submitted a response to plaintiff-appellee's petition for rehearing and suggestion for rehearing in banc.

Prior report: 86 F.3d 1113.

ORDER

A combined petition for rehearing and suggestion for rehearing in banc having been filed by the APPELLEE, and a response thereto having been invited by the court and filed by the APPELLANT, and the petition for rehearing having been referred to and acted upon by the panel that heard the appeal, and, thereafter, the suggestion for rehearing in banc and response having been referred to the judges authorized to request a poll whether to rehear the appeal in banc, and a poll having been requested, taken, and failed, it is

ORDERED that the petition for rehearing be, and the same hereby is, DENIED, and it is further ORDERED that the suggestion for rehearing in banc be, and the same hereby is, DECLINED.

Circuit Judge LOURIE concurs in a separate opinion.

Circuit Judge NEWMAN, with whom Circuit Judge RADER joins, dissents in a separate opinion.

Circuit Judge PLAGER, with whom Circuit Judge RADER joins, dissents in a separate opinion.

Circuit Judge MICHEL dissents in a separate opinion.

Circuit Judge RADER dissents in a separate opinion.

LOURIE, Circuit Judge, concurring in the Order declining the suggestion for rehearing in banc.

I concur in the decision of the court not to take this case in banc. There is nothing wrong with the panel's decision or its statements of law. The latter are not new.

The dissents from the decision not to take the case in banc argue that public use is a question of fact, not law, and that the panel erred in failing to defer to the jury's decision on public use. They similarly consider experimental use to be a question of fact subject to deference to the jury. I disagree. However, in the context of a negative vote to take a case in banc, I will not attempt to counter-analyze all the case law cited by the dissents. Suffice it to say that I do not agree with their interpretations. A few brief comments are nonetheless appropriate.

We have for some time considered the question of public use under 35 U.S.C. § 102(b) to be a question of law. Moreover, whether or not all the cases explicitly state that it is a question of law, they mostly treat the issue as one of law, notwithstanding occasional loose language in some opinions, including some from courts to which we are not subordinate. The reason it is a question of law is that it is a statutory term that requires the exercise of judgment, taking into account a variety of facts in light of the policies behind the statute. Public use is not a matter of simply determining whether, e.g., a particular event occurred more than one year from the filing date of an application, a matter capable of precise determination. It encompasses underlying facts such as whether the action in question was undertaken for commercial purposes, whether members of the public viewed the invention without any bond of confidentiality to the inventor, whether the nature of the invention was discernible by observation, whether any precautions were taken to exclude outsiders, etc. These facts, determinable by a fact-finder and of course subject to deference, must be weighed in making a judgment whether they amount to the type of action that the statute was intended by Congress to prohibit. Frequent references in the case law to issues of fact relate to these underlying facts rather than establishing that the statutory question of public use is one of fact.

Experimental use is not of course a term of the statute. It is, however, judge-made and accordingly appropriately decided by a judge without deference to a jury. It is often called an exception to a public use bar, but it is best characterized as a negation of a public use. It is also based on a variety of subordinate facts, once again determinable by a jury and subject to appropriate deference. Being a negation of public use and hence on the same conceptual level as public use, and based on the totality of subordinate facts and on policy considerations, it is also properly a question of law. The cases have treated it as such, if not explicitly stating as much. The subordinate fact questions include the purpose of the alleged experiment, whether supervision and control of the so-called experiments was maintained by the inventor or someone acting on the inventor's behalf, whether records were kept, and whether the experimenter, if not the inventor, was obligated to and did report to the inventor the results of the experiments. Whether a reduction to practice had already occurred is also a factor, perhaps a conclusive one, because that which has been shown to work for its intended purpose (the test for a reduction to practice) arguably isn't entitled to be called experimentation sufficient to negate what would otherwise be a public use. In this case, the indicia of supervision and control were so lacking that, as a matter of law, there could be no proper holding of an experimental use. And all of Lough's purported experiments occurred after the date on which he conceded that he reduced his invention to practice.

The principal Supreme Court case on public and experimental use is City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1877). In that case the Court discussed a variety of considerations (underlying facts) it considered relevant to the question. It stated numerous times that the question was whether they all added up to an experimental use rather than a public use within the meaning of the statute or within the meaning of the law. Clearly, it considered the ultimate question to be one of law. Earlier, the Court in Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 16, 7 L.Ed. 327 (1829), while noting questions of fact, stated: "But when all the facts are given, there does not seem any reason why the court may not state the legal conclusion deducible from them."

With respect to both public use and experimental use, courts have been accustomed to referring to their determinations as involving "the totality of circumstances," a phrase that some have objected to as being indefinite. What this phrase conveys is simply the process by which judges decide legal issues based on various facts that have been determined, utilizing the tools that judges always use, viz., the language of the statute, the purposes of the statute as indicated by legislative history, etc. Cases depend on facts, but they involve legal judgments.

The fact that members of the public may not know for certain what a judge or panel of judges may decide on a particular matter is hardly a criticism of the system of assigning fact-law labels to issues for decision. Juries are at least as difficult to predict as judges or panels of judges. Prediction is a skill that lawyers are supposed to possess, to be able to estimate, based on case law, the policies of the law, and the facts in a given case, whether those facts come within the requirements of the law. I suspect that the multiplicity of cases that arise on these issues is not due to uncertain standards, but to the fact that in a competitive economy parties press their positions until a high court tells them they have finally lost. It is due at least as much to the unpredictability of juries as to uncertain legal standards applied by judges.

NEWMAN, Circuit Judge, with whom Circuit Judge RADER joins, dissenting from the Order declining the suggestion for rehearing en banc.

In converting the factual question of experimental purpose into a matter of law, our court has cut another notch in the removal of patent issues from the trier of fact. The appellate/trial relationship is distorted in the panel's treatment of the factual question of whether this use of Mr. Lough's engine seal assembly was primarily experimental and therefore not a "public use" in terms of § 102(b). The panel's treatment is squarely in conflict with precedent. Thus I must dissent, respectfully, from the court's decision not to consider this issue en banc.

The Appellate/Trial Relationship

As discussed by my colleagues in dissent, the issue of experimental use is a question of fact, not a ruling of law. The trial process is the mechanism, in our system of justice, for finding facts, determining credibility, weighing the evidence, balancing the circumstances, and ascertaining the truth. The trier of fact, applying the rules of statute and the experience of precedent to the facts of the particular case, must exercise judgment in light of the probative value of the evidence, informed by the complex of societal and policy considerations that are the foundation of our system of law. The trial court is not a mere compiler of data; it is a tribunal of justice.

The role of the appellate court is to correct errors at trial that prejudiced the outcome, not to make de novo fact-based rulings as if there had been no decision at trial. When the law has been correctly stated and the evidence has been weighed to plausible effect, such that the conclusion is not clearly erroneous (upon bench trial) or is not without substantial supporting evidence (upon jury trial), the appellate court must give appropriate deference to the judgment of the trier of fact. The...