Federal Circuit Expands Experimental Exception

Rack and Pinion Steering System

Lisle Corp. v. A.J. Mfg. (Fed. Cir. 2005)

Lisle owns the patent on a tie-rod tool for servicing a rack and pinion steering system.  Lisle sued A.J. for infringement.  Lisle won infringement on summary judgment and validity (no prior public use) in a jury verdict.  A.J. appealed.

On the public use issue:

  • May 1989: Lisle had developed an early prototype of its device that would certainly be infringing;
  • Dec 1989: Lisle delivered the prototype (freely) to repair shops in Omaha without a formal confidentiality agreement;
  • June 1992: (30 months later) Lisle filed for a patent application.

Despite the fact that Lisle delivered the prototype well over a year prior to filing the application, the Federal Circuit upheld the jury’s findings that the repair shops use of the device was ‘experimental’ and thus did not create a patentability bar.

This will be an important case – read it.