Del Mar Engineering Laboratories v. Physio-Tronics, Inc.

• Decision Date: 23 March 1981
• Docket Number: INC,PHYSIO-TRONIC,No. 78-3515,78-3515
• Citation: 642 F.2d 1167,209 USPQ 977
• Parties: DEL MAR ENGINEERING LABORATORIES, Plaintiff-Appellee, v., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1167

642 F.2d 1167

209 U.S.P.Q. 977

DEL MAR ENGINEERING LABORATORIES, Plaintiff-Appellee, v. PHYSIO-TRONICS, INC., Defendant-Appellant.

No. 78-3515.

United States Court of Appeals,

Ninth Circuit.

Argued and Submitted Oct. 8, 1980.

Decided March 23, 1981.

Henry M. Bissell, Los Angeles, Cal., for defendant-appellant.

Mario A. Martella, Los Angeles, Cal., for plaintiff-appellee.

Appeal from the United States District Court for the Central District of California.

Before NELSON and BOOCHEVER, Circuit Judges, and WILLIAMS ^*, District Judge.

BOOCHEVER, Circuit Judge:

Del Mar Engineering Laboratories (Del Mar) is the assignee of patent # 3,267,934. Claims one through eight of this patent relate to a device for measuring electrically the "ST segment" of the human heartbeat. Physio-Tronics, Inc., is the southwest distributor of Quinton Instruments, a Washington corporation. Del Mar brought this suit against Physio-Tronics alleging infringement of its patent by two devices produced by Quinton Instruments.

Physio-Tronics contends that the patent is invalid: first, because William Thornton, the original patentee, deceptively failed to disclose that he had made public use of a ratemeter, an unrelated device covered by claims 15 and 16 of the same patent; second, because the patent claims relating to the "ST segment" measuring device fail under the statutory defenses of anticipation and obviousness; finally, it contends that if the patent is valid, there was no infringement by the Quinton equipment. The trial judge concluded that the patent was valid and that it had been infringed. We affirm.

I. INVALIDITY OF THE PATENT FOR FAILURE TO DISCLOSE A PUBLIC USE

The statutory bar of 35 U.S.C. § 102(b) prevents entitlement to a patent if there is a public use or sale "more than one year prior to the date of the application for patent ...."

Thornton filed his patent application on September 20, 1962. Physio-Tronics points to Thornton's exhibition of a ratemeter at two meetings of the American Medical Association, its use on patients, and an alleged sale of the device to Duke Medical School as a sale and public uses that occurred before the date barred by statute, September 20, 1961. Physio-Tronics contends that the entire Del Mar patent, including the patent claims to the "ST segment" measuring device, is invalid because Thornton committed fraud by failing to disclose the ratemeter uses to the patent office.

In 1976, prior to the time the case went to trial, Del Mar filed a disclaimer to the ratemeter claims 15 and 16, but Physio-Tronics contends that the disclaimer cannot save the patent. In its view, the patent was originally filed with "deceptive intention" within the meaning of 35 U.S.C. § 253, so any later disclaimer cannot save the patent's initial invalidity. ¹

Physio-Tronics' argument can be accepted only if the public uses were in fact barred by statute, and if it can be shown that Thornton's failure to inform the patent office was "culpable" or in "bad faith." See Carpet Seaming Tape Licensing v. Best Seam, Inc., 616 F.2d 1133, 1138 (9th Cir. 1980) (a showing of culpability is required to establish fraud on the Patent Office).

Turning first to the question of public use, it should be noted that the statute does not bar genuine experimental uses. The policy underlying the statutory bar of § 102(b) is to prevent an inventor from extending the period of a patent monopoly by commercially exploiting the invention before applying for a patent. See, e. g., Pickering v. Holman, 459 F.2d 403, 406 (9th Cir. 1972).

When an invention has been reduced to practice, further public testing and demonstration may well support an inference that the inventor's intent is to exploit the invention, but "there may be an experimental use even following reduction to practice where the experiments are an attempt to further refine the device." Cataphote Corp. v. DeSoto Chemical Coatings, Inc., 235 F.Supp. 931, 934 (N.D.Cal.1964). See Elizabeth v. Pavement Co., 97 U.S. 126, 135-36, 24 L.Ed. 1000 (1877). An inventor may also sell an unpatented device and not be barred by statute. The Ninth Circuit rule in this regard is that a sale is permitted if there is "an express or clearly implied condition that the sale or offering is made primarily for experimental use." Robbins Co. v. Lawrence Manufacturing Co., 482 F.2d 426, 433 (9th Cir. 1973).

Whether a public use is for the purpose of exploiting an invention or whether it is a bona fide experimental use turns largely on the intent or motivation of the inventor. Elizabeth v. Pavement Co., 97 U.S. 126, 135, 24 L.Ed. 1000 (1877); Pickering v. Holman, 459 F.2d at 406. As such, it is a question of fact to be determined by the trial court and we will reverse the trial judge's determination only if it is clearly erroneous. ² See Micro-magnetic Industries, Inc. v. Advance Auto Sales Co., 488 F.2d 771, 773 (9th Cir. 1973).

Thornton developed the ratemeter during the period between 1959 and 1961. As a prototype, Thornton tested it frequently at the hospital of the University of North Carolina. The ratemeter was not in routine use, but was utilized only in clinical research at the hospital. Thornton testified that he wanted to assess the practical utility of the device and to look for shortcomings. Although he continued to make modifications to the ratemeter, he testified that it generally performed well. Additionally, the device was apparently used at Duke Medical School at about this time, again on a select group of patients.

Thornton also submitted a resume describing the ratemeter to the American Medical Association. It was selected as one of ten or twelve other exhibits to be shown at a student meeting of the American Medical Association held in Chicago in either late 1960 or early 1961. Thornton's invention, which won first prize, was exhibited along with the other student scientific exhibits in an area separated from the commercial exhibits. Thornton was subsequently invited to show the ratemeter again at a general meeting of the American Medical Association in New York in June 1961. On both occasions the American Medical Association provided free space to show the exhibit.

The trial judge found that all the uses that took place prior to the date of the statutory bar occurred while the ratemeter was in a developmental stage. He concluded that the exhibition of the ratemeter as a student experiment was not inconsistent with an experimental use because Thornton did not intend to exploit it commercially by so exhibiting it. These findings are supported by the evidence and are not clearly erroneous.

As to the sale to Duke University that allegedly occurred prior to September 1961, Thornton could only give what he described as a "very wide estimate" of when it might have taken place. He testified that it was "possibly" as early as the summer of 1961. Although Thornton's vague testimony might have been the basis for a finding that the sale occurred prior to September 1961, in the absence of other testimony the trial judge's conclusion that the device was not offered for sale until January 1962, when it first became commercially available from Del Mar, is not clearly erroneous. It is, therefore, unnecessary to consider whether there was an implied condition in the sale of the ratemeter that it be used on an experimental basis. Because there was no public use or sale within the meaning of 35 U.S.C. § 102(b), it is also unnecessary to consider whether Thornton deceptively failed to inform the patent office.

The patent is not invalid on the ground that Thornton failed to disclose that the ratemeter claims were in public use.

II. INVALIDITY FOR ANTICIPATION AND OBVIOUSNESS

Physio-Tronics next raises the two statutory defenses of anticipation, 35 U.S.C. § 102(a), and obviousness, 35 U.S.C. § 103. Before considering these defenses, it is first necessary to understand the claims of the Thornton patent that are at issue in this case, and the prior art.

A. Thornton's ST Segment Measuring System

The heart's nervous system produces electrical voltages which vary in amplitude during the course of a heartbeat. A plot of voltage amplitude over time yields a wave form known as an electrocardiogram or EKG. An idealized EKG begins with a shallow undulation known as the "P" wave, followed by a flat line of no voltage change known as the "PQ interval." There is then a rapid rise and fall in voltage known as the "R" wave, which is again followed by a flat segment of no voltage change known as the "ST segment." Finally at the end of a heartbeat there is another shallow undulation known as the "T" wave. The following diagram illustrates a typical EKG for a heartbeat:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Prior to Thornton's work, it was known that depression of voltage during the ST segment of the cardiogram could be an indication of heart disease. A cardiologist using paper recording tape and a ruler could draw a line along the bottom of the EKG waveform. From this reference line, it was possible to measure the height of the ST segment. This technique was useful for a small number of heartbeats, but as a practical matter it was nearly impossible to perform for a large number. The paper tape necessary for a full day of monitoring, for example, might be more than a mile long. Furthermore, cardiologists apparently consider it important to measure the ST segment under a variety of conditions of heart stress, so that a large number of samples is desirable.

Between 1960 and 1961, Thornton, who was then a medical student, attempted to solve the problem of measuring the ST segment continuously for a large number of heartbeats by using electronic circuitry. The essence of his technique was to measure the voltage during the first flat portion of the EKG, the PQ interval, and use this as a reference to measure the ST segment. Electrically this would work much like the cardiologist...