Watts v. University of Delaware
| Decision Date | 27 June 1979 |
| Docket Number | Civ. A. No. 77-343. |
| Citation | 471 F. Supp. 1272 |
| Parties | William R. WATTS, Plaintiff, v. The UNIVERSITY OF DELAWARE, Defendant. |
| Court | U.S. District Court — District of Delaware |
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E. Leigh Hunt, Wilmington, Del., for plaintiff.
E. Alan Uebler of Mortenson & Uebler, Wilmington, Del., for defendant.
William R. Watts (the "plaintiff") is the owner of two United States patents that describe and claim a chair frame. He has filed a two-count complaint against the University of Delaware (the "University") seeking injunctive relief and damages.1 Count I alleges that the University has infringed both of the plaintiff's patents. Count II sounds in unfair competition. The plaintiff alleges that, before the patent issued, he revealed his secret design for a chair frame to the University in confidence and that the University misappropriated and exploited his design by disclosing it and by unfairly obtaining bids and purchasing chairs of that design from others than the plaintiff.2 A jury trial has been demanded.3
The University filed an answer in which it asserted, among other things, an affirmative defense of fraud on the United States Patent and Trademark Office ("Patent Office"), two counterclaims for declaratory judgments that the plaintiff's patents are invalid, unenforceable and not infringed and a request for costs and attorney's fees. (Docket Items 20 and 28). The University challenges the validity of the patents on the ground, inter alia, that a statutory bar exists because the claimed chair frame was in public use or on sale in this country more than one year prior to the date the patent applications were filed.
This case is presently before the Court on the parties' cross motions for partial summary judgment. The University moved for summary judgment on the following issues: (1) whether the plaintiff's patents are invalid due to a prior public use or sale of the claimed invention; (2) whether there was an oral agreement of confidentiality binding on the University; (3) assuming that the University prevails on the first two issues, whether the claim of unfair competition should be dismissed for lack of subject matter jurisdiction; and (4) whether the University is entitled to an award of its reasonable attorney's fees pursuant to 35 U.S.C. § 285. (Docket Item 36). In its cross motion, the plaintiff seeks partial summary judgment on all issues relating to liability. (Docket Item 40). This Opinion addresses the issues raised by the pending motions.
The plaintiff is the owner of two patents: (1) design patent Des 243,427, which is entitled "Frame for a Seat" and was issued on February 22, 1977,4 and (2) utility patent U.S. 4,074,919, which is entitled "Chair Frame Furniture Unit" and was issued on February 21, 1978.5 The descriptions and claims of the two patents relate to the same chair frame.
The University contends that both patents are invalid under 35 U.S.C. § 102(b), which provides in pertinent part:
The applications for both the patents in suit were filed on August 27, 1975.6 The critical date therefore is August 27, 1974.
The plaintiff's affidavit7 alleges the following facts, which for present purposes are undisputed. The plaintiff is a furniture upholsterer and designer by trade. For a number of years prior to 1974 he did upholstery repair work for the University. In or around February 1974 the plaintiff set out to design a chair unit that would be more durable and easier to repair than the furniture then being used by the University. During the first week of April 1974 the plaintiff completed his drawings for the basic chair unit and delivered them to a furniture frame manufacturer in Philadelphia, M. Halpern & Sons, Inc. ("Halpern"), so that a prototype could be made. Halpern made the frame and, on April 29, 1974, the plaintiff inspected it and authorized several minor changes. On May 30, 1974, the plaintiff's wife picked up the chair unit as modified. Halpern retained a second frame of the same design in storage for future use as either a pattern for production or a basis for modifications.
Between February and early June of 1974 the plaintiff had a few meetings with employees of the University at which he discussed his idea for a new chair frame. Although factual disputes exist concerning what transpired at the various meetings, the following chronology is essentially undisputed.
Sometime in February 1974 the plaintiff mentioned his efforts to design a more durable chair unit to N. Wayne Hurst, an employee in the University's Housing Division.8 In mid-May 1974 Hurst and Stephen S. Showers, who was the Associate Director of Housing, visited the plaintiff at his upholstery shop and discussed generally with him his work in designing a new chair unit.9 In early June 1974 the plaintiff or one of his employees delivered the unupholstered prototype chair frame to Richard Blakeman, the University's Director of Purchasing, for his inspection. The chair was delivered to Blakeman's office and picked up later the same day.10 The plaintiff never explicitly offered to sell the chair to Blakeman, and Blakeman did not offer to buy it.11 Around the same time, Showers asked the plaintiff if he wanted to put his chair in a lounge being used by students in the College Try Program for a two-week period in order to test it. In previous years students in the College Try Program had subjected the lounge furniture to very hard use.12
The plaintiff agreed to the test and, after upholstering the chair frame at his own expense, delivered it to the dormitory involved on or about June 24, 1974.13 Both the plaintiff and Showers inspected the chair at least once during the time it was in the lounge.14 The plaintiff also authorized Showers to have drawings made of the chair so that the University would have a record of it in the event of theft.15 The plaintiff picked up the chair sometime in July 1974.16
The chair frame described and claimed in the patents in suit is exactly the same as the chair frame used in the College Try Program.17 No changes were made in the design as a result of the test.
In November 1974 the University requested bids on furniture of the type designed by the plaintiff. The plaintiff's bid proved unsuccessful. Thereafter, he actively pursued his rights to a patent, submitting applications for design and utility patents on August 27, 1975.
According to the plaintiff, the University spent over $150,000 to purchase furniture of the type he designed between 1975 and the end of 1977. . The plaintiff further alleges that the University's employee Showers has obtained a copyright on drawings of the plaintiff's chair frame design and licensed a company to make and sell the furniture at a substantial royalty to the University. . The Court now turns to the parties' contentions.
The University contends that the use of the chair frame in its dormitory lounge in June 1974 was a public use of the plaintiff's invention more than one year before the patent application date, and therefore constitutes a statutory bar to patentability. The plaintiff advances two grounds to avoid the statutory bar. First, he appears to argue that the use was not public, because the dormitory lounge was not open to the general public18 and the chair frame itself, as opposed to the upholstered chair unit, could not be seen by those who used the lounge. Second, the plaintiff argues that the use of the chair frame in June 1974 represented an experimental use and as such falls outside the proscription of § 102(b).
The plaintiff's first argument lacks merit. The courts have construed the term "public use" in § 102(b) very broadly. A single use of an invention without restriction or limitation by even one person who is not an agent of the inventor is sufficient to constitute a public use. Egbert v. Lippmann, 104 U.S. (14 Otto) 333, 336, 26 L.Ed. 755 (1881). As the court stated in Watson v. Allen, 103 U.S.App.D.C. 5, 8, 254 F.2d 342, 345 (1958):
Public use exists where the invention is used by, or exposed to, anyone other than the inventor or persons under an obligation of secrecy to the inventor.
Thus, use of a device under conditions of limited public access may still be a public use. See Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 19, 59 S.Ct. 675, 83 L.Ed. 1071 (1939); Marrese v. Richard's Medical Equipment, Inc., 504 F.2d 479, 482-83 (C.A.7, 1974); Magnetics, Inc. v. Arnold Engineering Co., 438 F.2d 72, 74 (C.A.7, 1971). Since the students who used the dormitory lounge owed no duty of secrecy to the plaintiff, the fact that the general public did not have access to the lounge is immaterial. Likewise, the fact that an invention when used in its natural and intended way may be hidden from the public's eye provides no basis for concluding that a use of the invention is not public. Egbert v. Lippmann, supra, 104 U.S. at 336.
The public nature of the June 1974 use does not necessarily render the plaintiff's patents invalid, however. For despite the seemingly absolute wording of the statute, the courts have engrafted an exception onto § 102(b) by which a public use incidental to experiment will not bar patentability. The leading case is City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1877). It involved Nicholson's patent on a new and improved wooden pavement for roads. Nicholson had constructed a 75 foot length of his pavement at his own expense on a heavily traveled roadway in Boston. The pavement was subjected to public use for six years before a patent application was filed. Nevertheless, the...
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