CAFC Narrows Experimentation Defense to the On Sale Bar

Electromotive Division of GM v. Transportation Systems of GE (Fed. Cir. 2005).

EMD appealed after its patents on diesel turbochargers were found invalid. On appeal, the CAFC affirmed, finding that the patented invention was subject to commercial sales before the pre-critical date that were not primarily experimental. 

EMD had sold its product more than one year before its patent application filing date, but argued that those sales were negated by an experimental use defense. The appellate panel, however, disagreed.

In its decision, the Federal Circuit panel first provided a full analysis of the law of experimental use in relation to the Section 102(b) public use and on sale bars.  Then, the court tightened its rules — finding that ordinarily, a patentee must prove that (i) control over the experiment and (i) that the customer was aware of the experiment.

Our precedent has treated control and customer awareness of the testing as especially important to experimentation. Indeed, this court has effectively made control and customer awareness dispositive. Accordingly, we conclude that control and customer awareness ordinarily must be proven if experimentation is to be found.

Invalidity Affirmed.