Watts v. University of Delaware

• Citation: 622 F.2d 47,206 USPQ 106
• Decision Date: 01 May 1980
• Docket Number: No. 79-1997,79-1997
• Parties: William R. WATTS, Appellant, v. The UNIVERSITY OF DELAWARE, an agency of the State of Delaware.
• Court: U.S. Court of Appeals — Third Circuit

Page 47

622 F.2d 47

206 U.S.P.Q. 106

William R. WATTS, Appellant, v. The UNIVERSITY OF DELAWARE, an agency of the State of Delaware.

No. 79-1997.

United States Court of Appeals Third Circuit.

Argued March 25, 1980.

Decided May 1, 1980.

E. Leigh Hunt, (argued), Wilmington, Del., for appellant.

C. Walter Mortenson, E. Alan Uebler, (argued), Mortenson & Uebler, Wilmington, Del., for appellee.

Before ROSENN, GARTH and SLOVITER, Circuit Judges.

OPINION OF THE COURT

ROSENN, Circuit Judge.

This is an appeal by William Watts from the grant of summary judgment in favor of the University of Delaware declaring his patent invalid because the patented item was in public use more than one year before the filing of the patent application. We conclude that a genuine issue of material fact exists as to whether the use of the patented item was for experimental purposes and therefore reverse.

I.

William Watts is a furniture upholsterer and designer who, for a number of years prior to 1974, upholstered and repainted furniture for the University. Approximately in February 1974, Watts set out to design a chair unit which could be linked with other chair units and which would be more durable and easier to repair than the furniture then in use by the University. During the first week of April 1974, Watts completed drawings for the basic chair unit and delivered them to a furniture frame manufacturer in Philadelphia with instructions to construct a prototype and keep the drawings and prototype confidential. On April 29, Watts inspected the frame and directed that several minor changes be made. On May 30, Watts obtained the completed frame from the manufacturer.

Between February and early June of 1974 Watts conferred with officials of the University and discussed with them his idea for a new chair frame. Some factual disputes exist concerning the various meetings. However, the following chronology is undisputed. During February 1974 Watts informed Wayne Hurst, Assistant Director of the University's Maintenance Division, of his efforts to design a more durable chair. In mid-May Hurst and Stephen S. Showers, the Associate Director of Housing, visited Watts at his upholstery shop and discussed generally with him his work in designing a new chair unit. In early June, Watts at the personal request of Richard Blakeman, the University's Director of Purchasing, had the prototype chair frame delivered to him for his inspection. Watts did not offer to sell the chair, Blakeman did not offer to buy it, and Watts retrieved it later that day. Around the same time, Showers requested and obtained permission from Watts to test the chair unit for two weeks in a lounge being used by students in the College Try Program. In previous years students in the College Try Program had subjected the lounge furniture to very hard use. Watts agreed to the test.

Watts delivered the upholstered chair unit to the designated dormitory on approximately June 24, 1974. Watts and Showers each inspected the chair once during the time it was in the lounge. Showers suggested that drawings be made of the chair unit so that the University would have a record of it in the event of theft. Watts agreed and assisted in making sketches and providing the measurements. The chair was returned to Watts sometime in July 1974 and has since remained in his possession.

In November 1974, without prior notice to Watts that the University proposed to put the chair unit out for public bids, the University requested bids of furniture of the type designed by Watts. Despite his protest over the bidding procedure, Watts submitted a bid but the University awarded the contract to a competitor. Thereafter, Watts actively pursued a patent for his chair unit, submitting applications for design and utility patents on August 27, 1975. The patents, design patent Des 243,427 "Frame for a Seat" and utility patent U.S. 4,074,919 "Chair Frame Furniture Unit," were issued on February 22, 1977 and February 21, 1978. The chair frame described in the patents in suit is exactly the same as the chair frame used in the College Try Program. No changes were made in the design as a result of the June 1974 test.

Watts filed a two-count complaint in the United States District Court for the District of Delaware against the University. In Count I he alleged patent infringement and sought injunctive and monetary relief. In Count II he alleged breach of confidence by the University prior to the issuance of his patent and claimed monetary relief. According to Watts, the University spent over $150,000 between 1975 and the end of 1977 to purchase furniture of the type he designed. Watts further alleges that University official Showers has obtained a copyright on drawings of Watts' chair frame design and licensed a company to make and sell the furniture at a substantial royalty to the University.

The University filed motions for summary judgment on both counts. Watts filed cross motions for summary judgment. The district court: (1) granted the University's motion for patent invalidity on the ground the chair frame claimed in the patents was in public use more than one year before the filing of the patent application; (2) denied both motions for summary judgment on the breach of confidentiality count on the ground that a material issue of fact existed; and (3) denied the University's motion for attorney's fees. Watts appealed. ¹

II.

The basis for the grant of summary judgment by the district court was 35 U.S.C. § 102(b) which provides in relevant part:

A person shall be entitled to a patent unless

(b) the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . .

The applications for both patents in this suit were filed on August 27, 1975. The critical date for public use is therefore August 27, 1974. In granting summary judgment, the district court concluded that the use of the furniture in the College Try Program in June 1974 was a public use and thus the chair cannot be patented. Watts v. University of Delaware, 471 F.Supp. 1272 (D.Del.1979).

On this appeal Watts argues the use of the chair falls within the experimental use exception to the public use doctrine. In City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1878), the Court announced the experimental use exception. The patent in that case related to a new type of wooden block pavement. The inventor had constructed a 75 foot section of road on a public toll highway. For a period of six years before applying for a patent, the road section was used to test its qualities. The inventor financed the testing and made frequent inspections of the road. The Court held that the testing of the road was a valid experimental use because it was necessary to test the durability of the invention and to bring the invention to perfection. The Court noted that the project pursued with a bona fide intent of testing the qualities of the roadway, was a valid experimental use.

The public had the incidental use of the pavement, it is true; but was the invention in public use, within the meaning of the statute? We think not. The proprietors of the road alone used the invention and used it at Nicholson's request, by way of experiment. The only way in which they could use it was by allowing the public to pass over the pavement.

97 U.S. at 136.

In this case the district court concluded that Watts could not fall within the experimental use exception. It reasoned that the use of the chair by Watts in the College Try Program was not experimental because "plaintiff's primary intent was to commercially exploit his invention." 471 F.Supp. at 1281. Thus, the principal issue on this appeal is whether it can be said, as a matter of law, that the use of the chair in the College Try Program was a public and not an experimental use.

The University argues it is not necessary to examine Watts' intent under Manning v. Cape Ann Isinglass Co., 108 U.S. 462, 2 S.Ct. 860, 27 L.Ed. 793 (1893), because the use of the chair was public, regardless of intent. In Manning, the patent covered an improvement in the process of making isinglass. The patentee caused one machine for practicing his process to be constructed and used for a period of about seven years by a company he jointly owned. In 1867, the firm was dissolved and the machine was acquired by his partner who continued to use it in his new business in 1870, still prior to the critical date. The court held the patent invalid because the use of the machinery was not for an experimental purpose. We do not read Manning as standing for the proposition that intent is not relevant. In Manning, two additional commercial machines were set up and operated in another factory for commercial production without restrictions. The case involved clear commercial intent. Thus, the Court did not explore the intent of the patentee because the facts overwhelmingly showed a commercial purpose. In this case, Watts gave his chair to the University for two weeks concededly for testing. It is not clear from that fact whether his intent was experimental or commercial. Furthermore, unlike the instant case, Manning was a judgment after trial, not a grant of summary judgment. Therefore, the question of experimental intent versus commercial intent is crucial to a determination of this case.

The district court examined intent and concluded Watts' intent was commercial, not experimental. The court acknowledged that issues of intent are not well suited to disposition by summary judgment, In Re Yarn Processing Patent Validity Litigation, 498 F.2d 271 (5th Cir.), cert. denied, 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974), but nonetheless concluded that the record showed that Watts' intent was clear. On a motion for summary judgment, however, the court should take a view of the evidence most favorable to the party against whom the motion...