Woodland Trust v. Flowertree Nursery, Inc.

• Decision Date: 10 July 1998
• Docket Number: No. 97-1547,97-1547
• Citation: 47 USPQ2d 1363,148 F.3d 1368
• Parties: WOODLAND TRUST, Plaintiff-Appellant, v. FLOWERTREE NURSERY, INC. and Ivy J. Winslett, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1368

148 F.3d 1368

47 U.S.P.Q.2d 1363

WOODLAND TRUST, Plaintiff-Appellant, v. FLOWERTREE NURSERY, INC. and Ivy J. Winslett, Defendants-Appellees.

No. 97-1547.

United States Court of Appeals Federal Circuit.

July 10, 1998.

Rehearing Denied; Suggestion for Rehearing In Banc

Declined Sept. 1, 1998.

Stephen D. Milbrath, Allen, Byer, Doppelt, Milbrath, and Gilchrist, Orlando, Florida, argued for plaintiff-appellant.

David J. Gaskey, Howard & Howard Attorneys, P.C., Bloomfield Hills, Michigan, argued for plaintiff-appellees. With him on the brief was William H. Honaker.

Before NEWMAN, MICHEL, and CLEVENGER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Woodland Trust appeals the judgment ¹ of the United States District Court for the Middle District of Florida, holding United States Patent 4,763,440 (the '440 patent) invalid based on prior knowledge and use by others. Because uncorroborated oral testimony, particularly that of interested persons recalling long-past events, does not, of itself, provide the clear and convincing evidence required to invalidate a patent on this ground, the judgment is reversed.

BACKGROUND

The '440 patent, inventor Gregory James, is assigned to Woodland Trust. The invention is a method and apparatus for protecting a plot of foliage plants from freezing, by establishing an insulating covering of ice over ground level watering. It is described as particularly applicable to ferns grown in Florida for floral use. Claim 1 is illustrative, and describes the patented method:

1. A method for protecting a ground plot of foliage plants from freezing, said method comprising the steps of:

(a) providing ground-level sprinklers throughout said plot;

(b) covering said plot and said ground-level sprinklers with a covering of the type having openings therein;

(c) providing elevated sprinklers above said covering;

(d) sprinkling said plot with water through said ground-level sprinklers; and

(e) sprinkling said covering with water through said elevated sprinklers as the ambient temperature drops to about 32F., whereby the water from said elevated sprinklers freezes in the openings of said covering and holds heat released during operation of said ground-level sprinklers under said covering.

The patent application was filed on July 1, 1983; the patent issued on August 16, 1988. In response to Woodland's suit for patent infringement, filed in 1993, Flowertree Nursery pled several defenses, including patent invalidity under 35 U.S.C. § 102(a), § 102(b), and § 103. Under § 102(a), Flowertree stated that the method was previously known and used by each of Joseph Burke and William Hawkins (an owner of Flowertree) in the 1960s and 1970s at their nurseries in Florida, and was then discontinued by these users in 1976 and 1978. The district court found that Hawkins' system at Flowertree was reconstructed in 1988.

Four witnesses testified in support of the defense of prior knowledge and use: Mark Hawkins, Joseph Burke, Charles Hudson, and John Kaufmann. Mark Hawkins is the son of William Hawkins; he testified that his father's system, on which he worked as a child, was destroyed by a tornado in 1978, and was not reconstructed until 1988. Joseph Burke is a nursery owner who has known William Hawkins since the 1960s; he testified that he used the same system as shown in the patent, but tore it down in 1976 and did not rebuild it. Charles Hudson is a nursery owner who had worked for Joseph Burke, and John Kaufmann is a life-long friend of William Hawkins; they testified that they observed the patented system at the Burke or Hawkins nursery, before its use was discontinued. Woodland provided conflicting The district court credited the statements of all of the Flowertree witnesses, holding that "to discredit those witnesses in this case the court would be obliged to conclude that all four were deliberate perjurers." On the basis of this testimony the district court found that the apparatus claims of the '440 patent were anticipated under 35 U.S.C. § 102(a) by the Hawkins and Burke systems "which constitute prior art that was known publicly for many years before the filing date of the application for patent," and that the method claims of the '440 patent were anticipated under § 102(a) by the Burke method which was "openly and publicly used in the ordinary course of business" such that "the methods claimed in the patent were 'known' and 'used' by others more than one year before the filing date of the original application for the patent." The district court held the patent invalid, and did not discuss other defenses raised by Flowertree.

testimony; a witness named Marcus Crosby explained that he described the patented system to William Hawkins, his employer at Flowertree in 1988, after learning about it during his prior employment with Gregory James.

DISCUSSION

A

35 U.S.C. § 102(a) provides:

§ 102. A person shall be entitled to a patent unless--

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent....

Section 102(a) establishes that a person can not patent what was already known to others. If the invention was known to or used by others in this country before the date of the patentee's invention, the later inventor has not contributed to the store of knowledge, and has no entitlement to a patent. Accordingly, in order to invalidate a patent based on prior knowledge or use, that knowledge or use must have been available to the public. See Carella v. Starlight Archery, 804 F.2d 135, 139, 231 U.S.P.Q. 644, 646 (Fed.Cir.1986) (the § 102(a) language "known or used by others in this country" means knowledge or use which is accessible to the public); 35 U.S.C. § 102(a) reviser's note (1952) (noting that " 'known' has been held to mean 'publicly known' " and that "no change in the language is made at this time"); P.J. Federico, Commentary on the New Patent Act (1954) reprinted in 75 J. PAT. TRADEMARK OFF. SOC'Y Y 161, 178 (1993) ("interpretation [of § 102(a) ] by the courts excludes various kinds of private knowledge not known to the public"; these "narrowing interpretations are not changed"). See also Coffin v. Ogden, 85 U.S. (18 Wall.) 120, 124-25, 21 L.Ed. 821 (1873) (accessible hence anticipating prior use); Gayler v. Wilder, 51 U.S. (10 How.) 477, 497-98, 13 L.Ed. 504 (1850) (nonaccessible hence nonanticipating prior use).

Therefore, notwithstanding abandonment of the prior use--which may preclude a challenge under § 102(g)--prior knowledge or use by others may invalidate a patent under § 102(a) if the prior knowledge or use was accessible to the public. See generally Edward C. Walterscheid, The Ever Evolving Meaning of Prior Art (pts. 1 & 8), 64 J. PAT. OFF. SOC'Y 457, 462-64 (1982), 66 J. PAT. OFF. SOC'Y 573, 574-78 (1984) (discussing the policies implemented by the several subparts of § 102).

The district court also referred to the criteria of § 102(b), which establishes a one year grace period based on publication or public use or sale, after which an inventor is barred from access to the patent system. Section 102(b), unlike § 102(a), is primarily concerned with the policy that encourages an inventor to enter the patent system promptly, while recognizing a one year period of public knowledge or use or commercial exploitation before the patent application must be filed. Thus an inventor's own prior commercial use, albeit kept secret, may constitute a public use or sale under § 102(b), barring him from obtaining a patent. See Egbert v. Lippman, 104 U.S. 333, 336, 26 L.Ed. 755 (1881) (inventor's unobservable prior use was a "public use"); TP Laboratories v. Professional Positioners, Inc., 724 F.2d 965, 972, 220 U.S.P.Q. 577, 583 (Fed.Cir.1984) ("public use" may bar patent "if the inventor is making commercial use of the invention under circumstances which preserve its secrecy"); 1 IRVING KAYTON, PATENT PRACTICE § 4.41 (6th ed. 1995) ("[A] secret, purposely hidden use of a patented process more than one year before an applicant's filing date precludes the issuance of the patent when it is the applicant who so used the claimed invention and did so to his commercial advantage.")

However, when an asserted prior use is not that of the applicant, § 102(b) is not a bar when that prior use or knowledge is not available to the public. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 U.S.P.Q. 303, 310 (Fed.Cir.1983) (third party secret commercial activity, more than one year before the patent application of another, is not a § 102(b) bar); KAYTON, supra, § 4.41 ("Where the commercially advantageous, secret use is by a third party and even though that use is for a period more than one year before the applicant's filing date, it cannot constitute a statutory time bar under § 102(b)."); cf. Baxter Int'l, Inc. v. COBE Laboratories, Inc., 88 F.3d 1054, 1058-59, 39 U.S.P.Q.2d 1437, 1440 (Fed.Cir.1996) (third party prior use accessible to the public is a § 102(b) bar).

B

Woodland argues that the uncorroborated oral testimony of persons related to or associated with the defendant can not provide the clear and convincing evidence that precedent requires to establish prior knowledge and use, particularly in view of the many years of asserted commercial use, the passage of time after the asserted use, and the acknowledged abandonment of the system by both asserted prior users. Flowertree responds that the district court's finding of prior use turned entirely on credibility, and that the credibility assessment of the trier of fact is entitled to great respect and should not be overturned on appeal.

Although an appellate court is indeed in a poor position to assess credibility, there is a very heavy burden to be met by one challenging validity when the only evidence is the oral testimony of interested persons and their friends, particularly as to...