## Facts

- Clock Spring, L.P., a pipeline repair company, was the exclusive licensee of U.S. Patent No. 5,632,307, which claimed methods for repairing pressurized pipes with surface defects involving at least one cavity.
- The claimed method used an uncured filler material placed in the defect, followed by wrapping high-tensile reinforcement bands over the pipe while the filler was still uncured, tightening the coil, securing the convolutions, and allowing the filler to cure so load transfers from the pipe to the coil.
- The patent application was filed in 1992; the patent issued in 1997.
- In 1989—more than one year before filing—an inventor conducted a demonstration of the repair process on a working pipeline.
- The demonstration was performed in front of regulators and pipeline-industry participants, aimed at gaining acceptance of the technology and training personnel, and was documented in contemporaneous reports.
- Clock Spring sued Wrapmaster, Inc., Applied Consultants, Inc., and Glenn Davis in the Southern District of Texas, alleging patent infringement and false advertising under Lanham Act § 43(a).
- The district court granted summary judgment for defendants, holding the asserted patent claims invalid as obvious and rejecting the Lanham Act claim.
- Clock Spring appealed both rulings to the Federal Circuit.

## Issues

1. Whether the 1989 demonstration constituted a “public use” of the claimed method more than one year before the 1992 filing date, triggering the 35 U.S.C. § 102(b) statutory bar and invalidating the asserted claims.
2. Whether the 1989 use was exempt as “experimental use” rather than a § 102(b) public use.
3. Whether Clock Spring produced evidence sufficient to create a genuine dispute on its Lanham Act § 43(a) false advertising claim, including falsity or misleadingness and consumer deception or materiality.

## Decision

- The Federal Circuit affirmed summary judgment that the asserted patent claims were invalid, but on the ground of prior public use under 35 U.S.C. § 102(b), and did not reach obviousness.
- The court held there was no genuine dispute that the 1989 demonstration embodied all steps of the claimed method, including wrapping reinforcement while the filler was uncured.
- The court held the demonstration was “public” because it was conducted openly before regulators and industry participants and documented, and § 102(b) does not require exposure to the general public.
- The court rejected Clock Spring’s experimental-use argument because the purpose and circumstances showed seeking acceptance and training rather than controlled experimentation.
- The Federal Circuit affirmed summary judgment against Clock Spring on the Lanham Act claim because Clock Spring failed to present evidence of actual consumer deception or materiality for any allegedly misleading statements and did not adequately develop a literal-falsity theory in opposing summary judgment.

## Legal Principles

- A patent is barred under 35 U.S.C. § 102(b) if, more than one year before the filing date, the invention is in “public use,” including a demonstration accessible to a meaningful segment of the relevant community.
- For a method claim, a prior use triggers § 102(b) when the use practices each step of the claimed method; undisputed evidence that a demonstration performed the full process supports invalidity as a matter of law.
- The experimental-use doctrine is limited; uses aimed at market acceptance, training, or other non-experimental objectives, without indicia of controlled testing and restricted access, generally do not avoid the § 102(b) bar.
- Under Lanham Act § 43(a), a plaintiff must support a false advertising claim with evidence of literal falsity or misleadingness and, for misleading statements, evidence of actual deception (or a tendency to deceive) and materiality to purchasing decisions; conclusory allegations do not defeat summary judgment.

## Conclusion

The Federal Circuit affirmed judgment for defendants, holding the asserted pipeline-repair method claims invalid because an inventor’s pre-filing public demonstration constituted a § 102(b) public use and concluding that Clock Spring’s Lanham Act claim failed for lack of evidence of falsity, consumer deception, and materiality.


Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317 (Fed. Cir. 2009)