## Facts

- TP Laboratories, Inc. owned U.S. Patent No. 3,178,820 covering an orthodontic appliance invented by Dr. Harold D. Kesling, an orthodontist and officer/owner of TP.
- Professional Positioners, Inc. and related defendants were accused of infringing the patent with competing orthodontic devices.
- During the one-year “critical period” inquiry under 35 U.S.C. § 102(b), Dr. Kesling used the appliance in orthodontic treatment on three patients more than one year before the patent application was filed.
- TP conceded the three pre-filing patient uses but asserted they were controlled clinical tests intended to evaluate and improve the appliance, not commercial exploitation.
- After a bench trial, the district court held the patent invalid under § 102(b) based on “public use” and dismissed the infringement claim.
- Professional Positioners sought attorney’s fees under 35 U.S.C. § 285 and additional sanctions under Fed. R. Civ. P. 37(d) based on TP’s late document production; the district court denied fees and imposed limited costs sanctions.

## Issues

1. Whether use of the orthodontic appliance on three patients more than one year before filing constituted a barring “public use” under 35 U.S.C. § 102(b) or a non-barring experimental use.
2. Whether the district court abused its discretion in denying attorney’s fees under 35 U.S.C. § 285.
3. Whether the district court abused its discretion in the amount of Rule 37(d) sanctions awarded for late discovery production.

## Decision

- Reversed the judgment that the patent was invalid under § 102(b).
- Held the three patient uses were experimental and therefore not a barring “public use.”
- Remanded for further proceedings, including infringement and any remaining issues.
- Affirmed the denial of attorney’s fees under § 285.
- Affirmed the Rule 37(d) sanctions award and declined to increase it.

## Legal Principles

- The party asserting invalidity bears the burden of proving a § 102(b) public-use bar; a court errs if it effectively shifts that burden to the patentee to prove experimentation.
- Use that would otherwise appear “public” may be non-barring if the primary purpose is experimentation to test and perfect the invention, the inventor maintains control and supervision, and the record does not show commercial exploitation before filing.
- Inventions that require extended real-world observation to evaluate performance may legitimately be tested over time in a clinical setting without triggering § 102(b), even though the tests involve patients.
- Attorney’s fees under 35 U.S.C. § 285 and discovery sanctions under Rule 37(d) are reviewed for abuse of discretion; absent a showing warranting an “exceptional case” finding or greater sanction, the trial court’s determinations stand.

## Conclusion

The Federal Circuit held that limited, inventor-controlled clinical treatments on patients to evaluate an orthodontic appliance were experimental use rather than a § 102(b) public use, reversed the invalidity judgment, and remanded for infringement proceedings, while affirming the denial of attorney’s fees and the district court’s chosen level of discovery sanctions.


TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984)