## Facts

- Bennett Regulator Guards, Inc. (Bennett) owned U.S. Patent No. 5,810,029 (the ’029 patent), which issued in 1998 from an application filed June 16, 1995 and claims a spray cover for a natural-gas regulator pressure valve designed to prevent regulator failure from ice formation.
- Canadian Meter Company, Inc. and American Meter Company (collectively, Meter) manufactured gas equipment and sold a competing protector product marketed as a “Splash Guard.”
- Bennett sued Meter in the U.S. District Court for the Northern District of Ohio, alleging Meter’s Splash Guard infringed claims 1, 2, 5, and 6 of the ’029 patent.
- Meter denied infringement and asserted the ’029 patent was invalid for anticipation under pre-AIA 35 U.S.C. § 102(a) and (b), contending that Meter had developed and publicized the Splash Guard before Bennett’s efforts to obtain a patent.
- Meter relied on evidence of pre-filing activities and communications related to the Splash Guard, including (1) a memo sent to a distributor requesting customer feedback regarding Meter’s spray cover, and (2) a letter sent to gas companies stating they could contact Meter for any other information they might require.
- Bennett disputed that Meter’s evidence established, as a matter of law, that the Splash Guard (and related communications or activities) disclosed the same invention claimed in the ’029 patent or that the alleged disclosures and activities were sufficiently public and complete to satisfy § 102.
- The district court granted Meter’s motion for summary judgment that the ’029 patent was invalid as anticipated under § 102(a) and (b).
- Bennett appealed. The Federal Circuit panel issued a nonprecedential decision; Judge Prost wrote the majority opinion and Judge Mayer dissented.

## Issues

1. Whether Meter proved, as a matter of law, that its pre-patent activities and communications concerning the Splash Guard anticipated the asserted claims of Bennett’s ’029 patent under 35 U.S.C. § 102(a) and/or § 102(b), so that summary judgment of invalidity was proper.
2. Whether genuine disputes of material fact existed regarding what Meter’s pre-patent activities disclosed and whether those activities qualified as “known or used,” “public use,” “on sale,” or “described in a printed publication” within the meaning of § 102.

## Decision

- The Federal Circuit vacated the district court’s summary judgment of invalidity and remanded.
- The court held that genuine issues of material fact remained as to whether Meter’s activities relating to the Splash Guard anticipated the ’029 patent under § 102(a) and (b), making summary judgment improper.
- Judge Mayer dissented and would have affirmed the summary judgment of invalidity.

## Legal Principles

- Summary judgment is improper when the record shows a genuine dispute of material fact; the evidence must be viewed with reasonable inferences drawn in favor of the nonmoving party.
- Anticipation is a question of fact and generally requires proof that a single prior-art reference or qualifying prior activity disclosed every limitation of the challenged claim.
- Under pre-AIA 35 U.S.C. § 102(a), a patent may be invalid if, before the applicant’s invention, the invention was “known or used by others” in the United States, or “patented or described in a printed publication” anywhere.
- Under pre-AIA 35 U.S.C. § 102(b), a patent may be invalid if, more than one year before the U.S. filing date, the invention was “patented or described in a printed publication” anywhere, or was “in public use or on sale” in the United States.
- Whether distributor/customer communications and related conduct amount to a qualifying public disclosure or other § 102 category often turns on fact-specific questions about what was communicated, to whom, and how completely the claimed subject matter was conveyed.

## Conclusion

Bennett sued Canadian Meter and American Meter for infringing its ’029 patent covering a spray cover for gas-regulator pressure valves, and Meter obtained summary judgment that the patent was anticipated under § 102(a) and (b) based on alleged pre-patent Splash Guard activities, including a distributor memo seeking feedback and a letter to gas companies offering further information. The Federal Circuit vacated and remanded because the record contained genuine factual disputes about whether Meter’s activities and communications qualified under § 102 and whether they disclosed all limitations of the asserted claims, so invalidity could not be resolved as a matter of law on summary judgment.


Bennett Regulator Guards, Inc. v. Canadian Meter Co. Inc., 184 F. App’x 977 (2006)