## Facts

- New Railhead owned U.S. Patent Nos. 5,899,283 (drill bit for horizontal directional drilling) and 5,950,743 (method for horizontal directional drilling).
- The claimed technology involved a drill bit with cutting points and fluid channels for drilling rock formations, and claims included an angled placement of the bit on a housing.
- The patents were filed in late 1997 as continuation-in-part applications claiming benefit of a February 1997 provisional application.
- The provisional application did not depict or clearly disclose the angled bit-to-housing configuration later claimed in the ’283 patent.
- New Railhead commercially sold drill bits embodying the claimed design by mid-1996, more than one year before the late-1997 filing date.
- New Railhead sued Vermeer and Earth Tool in the Northern District of Texas for infringement of both patents.

## Issues

1. Whether the ’283 patent was entitled to the February 1997 provisional filing date despite the provisional’s failure to disclose the claimed angled bit-to-housing configuration, and, if not, whether New Railhead’s mid-1996 commercial sales invalidated the claims under the § 102(b) on-sale bar.
2. Whether the ’743 method patent was invalid under § 102(b) because public field use of the drill bit more than one year before filing necessarily practiced the claimed method.

## Decision

- The Federal Circuit affirmed the district court’s summary judgment that both patents were invalid under 35 U.S.C. § 102(b).
- For the ’283 patent, the court held the patent could not claim the provisional’s filing date because the provisional lacked adequate written description support for the angled bit placement; the effective filing date was therefore late 1997.
- Because New Railhead’s mid-1996 commercial sales occurred more than one year before the effective filing date and involved the claimed drill bit, the ’283 patent was invalid under the on-sale bar.
- For the ’743 patent, the court held the claimed drilling method was in public use more than one year before the effective filing date because non-secret field use of the drill bit necessarily performed the claimed method.

## Legal Principles

- A nonprovisional (including a continuation-in-part) may claim the benefit of a provisional filing date only to the extent the provisional provides § 112 written description (and enablement) support for the later-claimed subject matter.
- Written description requires that a person of ordinary skill can conclude the inventor possessed the claimed invention as of the earlier filing date; missing disclosure of a specific claimed configuration defeats priority for that limitation.
- The § 102(b) on-sale bar applies when, more than one year before the effective filing date, the invention is commercially offered for sale and is ready for patenting.
- The § 102(b) public-use bar applies to non-secret use of the invention in the ordinary course of business; public use does not require that observers understand the invention.
- For method claims, public use may be established where pre-critical-date activity necessarily performs (inherently practices) the claimed method.

## Conclusion

The Federal Circuit affirmed invalidity of New Railhead’s drill-bit and drilling-method patents because the provisional application did not support a key claimed limitation, making pre-filing commercial sales and non-secret field use more than one year before filing dispositive under § 102(b).


New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002)