Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1585

OBJECTIONS to re Exhibits To Be Used with Winer, Van Liere, Poret, and Balakrishnan by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # 1 Declaration Decl of Ketan Patel, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G)(Maroulis, Victoria) (Filed on 8/6/2012)

EXHIBIT B

Page 1

ALLEN ENGINEERING CORPORATION, Plaintiff-Appellee, v. BARTELL
INDUSTRIES, INC. and DARRAGH COMPANY, Defendants-Appellants.
01-1238
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
299 F.3d 1336; 2002 U.S. App. LEXIS 15418; 63 U.S.P.Q.2D (BNA) 1769

August 1, 2002, Decided
PRIOR HISTORY:
[**1] Appealed from: U.S.
District Court for the Eastern District of Arkansas. Judge
Stephen M. Reasoner.
Allen Eng'g Corp. v. Bartell Indus., Inc., 46 F. Supp. 2d
867, 1999 U.S. Dist. LEXIS 5443 (E.D. Ark. 1999).
DISPOSITION:
REVERSED-IN-PART,
REMANDED.

AFFIRMED-IN-PART,
VACATED-IN-PART, AND

COUNSEL: Paul McNeill, Womack, Landis, Phelps,
McNeill & McDaniel, of Jonesboro, Arkansas, argued for
the plaintiff-appellee. On the brief was Stephen D.
Carver, Carver Patent Law, LTD., of Little Rock,
Arkansas.
William M. Lee, Jr., Lee, Mann, Smith, McWilliams,
Sweeney & Ohlson, of Chicago, Illinois, argued for
defendants-appellants. With him on the brief was Mark J.
Nahnsen.
JUDGES: Before GAJARSA, LINN, and PROST,
Circuit Judges.
OPINION BY: Linn
OPINION
[*1342] LINN, Circuit Judge.

Bartell Industries, Inc. ("Bartell") appeals the April
13, 1999 judgment, following a bench trial, of the United
States District Court for the Eastern District of Arkansas,
46 F. Supp. 2d 867 ("Allen Engineering"), holding that
Bartell's riding trowel models TS-65, TS-78, and TS-88 1
infringed certain claims of United States Patent No.
5,108,220 (" '220 patent"), assigned to Allen Engineering
Corporation ("Allen"), and the same court's Order of
February 2, 2001, entering judgment for Allen and
awarding doubled damages in the amount [**2] of $
463,485.10. Because the district court did not construe
the claims in suit and did not identify the specific claims
it held to be infringed under the doctrine of equivalents,
we vacate the judgment of infringement and the award of
damages based thereon. Moreover, because the district
court failed to apply the proper legal test in considering
whether Allen's sales of the Red Rider more than one
year prior to the filing date of the '220 patent constituted
an on-sale bar to the patenting of the invention claimed
therein, we vacate the district court's determination that
the patent is not invalid under 35 U.S.C. § 102(b).
Because claims 1-4, 13, and 23 of the '220 patent are
indefinite, we reverse the district court's holding that
those claims are not invalid under 35 U.S.C. § 112. We
affirm the district court's finding that Bartell has not
established the intent to deceive necessary to its claim of
inequitable conduct before the Patent and Trademark
Office based on Allen's failure to disclose its Red Rider
trowel during the prosecution of the '220 patent. Finally,
we affirm the district court's finding that the

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299 F.3d 1336, *1342; 2002 U.S. App. LEXIS 15418, **2;
63 U.S.P.Q.2D (BNA) 1769
typographical error contained [**3] in certain patent
identification labels on the Allen trowels was not material
and does not affect any eventual calculation of damages.
The case is remanded for further proceedings consistent
with this opinion.
1 Although the district court recited these model
numbers in its February 2001 Order as identifying
Bartell trowels that were found to infringe the
claims of the '220 patent, infringement was
apparently assessed in the April 1999 judgment
with respect to Bartell trowels identified as
"Bartell # 1" and "Bartell # 2." We cannot
determine from the record which model numbers
correspond to these designations. This confusion
should be addressed on remand.
I. BACKGROUND
This appeal relates to concrete riding trowels, which
are machines used to smooth the surface of freshly
poured concrete. Such trowels are powered by an internal
combustion engine and are steered by the manipulation of
a control stick or sticks. Since the steering of early
trowels was relatively poor, research focused on
improvements to the responsiveness [**4] of the
steering. Allen's first model of such a trowel was known
as the "Red Rider." It featured dual control sticks, and
was a "front-facing" trowel, meaning that the operator sat
on a forward facing seat, as distinct from "straddle-type"
trowel seats, which were similar to motorcycle seats.
Sales of the Red Rider began in 1988; over one hundred
units were ultimately sold. Allen's further research efforts
ultimately resulted in the development of another riding
trowel model, known as the "Flying Frame," which was
introduced to the market in 1990.
Bartell introduced straddle-type trowels beginning in
1988. Its first front-facing model was completed in 1992,
and was [*1343] allegedly copied from a prototype of
Allen's Flying Frame trowel. The introduction of this
Bartell model to the marketplace provoked the present
infringement litigation.
The application which matured to Allen's '220 patent
was filed on July 13, 1990, and the patent issued in 1992.
The claims were extensively amended during
prosecution. Representative claim 15 of the '220 patent is
reproduced below:
A self-propelled, fast steering motorized

riding trowel for finishing a concrete
surface, said riding trowel comprising:
[**5]
seat means for supporting an operator
of said riding trowel;
primary
control
lever
means
accessible by said operator from said seat
means for steering said riding trowel;
rigid frame means adapted to be
disposed over said concrete surface for
supporting said seat means and said lever
means;
motor means for powering said riding
trowel;
twin rotor means associated with said
frame means for navigating said concrete
surface and supporting said frame means
thereabove, each rotor means comprising:
blade means comprising a plurality of
individual radially spaced apart blades
adapted to frictionally contact said surface,
said blades having a preselected pitch;
gearbox means for rotating said blade
means, said gearbox means comprising a
pair of rotatable shafts projecting
downwardly from said frame means and
defining a biaxial plane; and
pivot steering box means for pivotally
mounting said gearbox means to said
frame means;
flexible drive shaft means for
actuating said gearbox means in response
to said motor means thereby revolving
said rotor means, said flexible drive shaft
means comprising individual shaft
sections axially linked together by friction
disk means for facilitating [**6] bending;
means interconnecting said drive shaft
means with said motor means; and,
lever arm means disposed beneath
said frame means for tilting said gearbox

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299 F.3d 1336, *1343; 2002 U.S. App. LEXIS 15418, **6;
63 U.S.P.Q.2D (BNA) 1769
means in a plane generally parallel with
said biaxial plane in response to said
primary control lever means.

Allen brought suit in the Eastern District of Arkansas
in July of 1995, alleging that Bartell's manufacture and
sale of its Bartell # 1 and Bartell # 2 models infringed
claims 1-4, 6-9, and 13-24 of the '220 patent. The court
did not conduct a Markman hearing, nor did it construe
the claims of the '220 patent. After a bench trial, the
district court found that the Bartell # 1 trowel literally
infringed claims 15-19, and possibly other claims, and
that the Bartell # 2 trowel infringed unspecified claims
under the doctrine of equivalents. The district court also
found that the Red Rider trowel was an experimental
model that never reached completion, and on that basis,
rejected Bartell's contention that the '220 patent claims
were subject to an on-sale bar. The district court also
rejected Bartell's argument that Allen committed
inequitable conduct by not disclosing the Red Rider to
the PTO during prosecution of the [**7] '220 patent.
Finally, the court rejected Bartell's argument that
damages could not be awarded because Allen's Flying
Frame trowel, which was allegedly covered by the claims
of the '220 patent, bore erroneous marking stickers that
did not provide effective notice of the patent numbers to
the public.
II. DISCUSSION
A. Standard of Review
This court reviews a district court's judgment
following a bench trial [*1344] for errors of law and
clearly erroneous findings of fact. Manville Sales Corp.
v. Paramount Sys., Inc., 917 F.2d 544, 549, 16
U.S.P.Q.2D (BNA) 1587, 1597 (Fed. Cir. 1990); Gould v.
Quigg, 822 F.2d 1074, 1077, 3 U.S.P.Q.2D (BNA) 1302,
1304 (Fed. Cir. 1987). Claim construction is a matter of
law and is reviewed de novo. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979, 34 U.S.P.Q.2D
(BNA) 1321, 1328 (Fed. Cir. 1995) (en banc), aff'd, 517
U.S. 370, 38 U.S.P.Q.2D (BNA) 1461, 134 L. Ed. 2d 577,
116 S. Ct. 1384 (1996). A determination of whether
properly construed claims literally read on an accused
product is a question of fact, General Mills, Inc. v.
Hunt-Wesson, Inc., 103 F.3d 978, 981, 41 U.S.P.Q.2D
(BNA) 1440, 1442 (Fed. Cir. 1997), as is [**8] the
question of whether an element of an accused device is
the equivalent of a claim limitation, Insta-Foam Prods.,

Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 702, 15
U.S.P.Q.2D (BNA) 1295, 1297 (Fed. Cir. 1990).
A determination of whether a claim recites the
subject matter which that applicant regards as his
invention and is sufficiently definite, so as to satisfy the
requirements of 35 U.S.C. § 112, paragraph 2, is a legal
conclusion and is reviewed de novo. Solomon v.
Kimberly-Clark Corp., 216 F.3d 1372, 1377, 55
U.S.P.Q.2D (BNA) 1279, 1281 (Fed. Cir. 2000).
Inequitable conduct is a matter within the sound
discretion of the trial court and is reviewed for an abuse
of that discretion. Kingsdown Med. Consultants, Ltd. v.
Hollister Inc., 863 F.2d 867, 876, 9 U.S.P.Q.2D (BNA)
1384, 1392 (Fed. Cir. 1988) (en banc in relevant part).
The ultimate determination of whether an invention
was on sale under 35 U.S.C. § 102(b) is a question of law
subject to plenary review. Brasseler, U.S.A. I, L.P. v.
Stryker Sales Corp., 182 F.3d 888, 889, 51 U.S.P.Q.2D
(BNA) 1470, 1471 (Fed. Cir. 1999). This legal
determination [**9] is, however, based on underlying
issues of fact. Weatherchem Corp. v. J.L. Clark, Inc.,
163 F.3d 1326, 1332, 49 U.S.P.Q.2D (BNA) 1001, 1006
(Fed. Cir. 1998).
B. Analysis
1. Claim Construction and Infringement
Allen asserted at trial that Bartell's riding trowels
infringe claims 1-4, 6-9, and 13-24. This court's
precedent provides a road map for district courts in
assessing whether accused devices infringe patent claims.
In short, an assessment of whether an accused device
infringes claims of a patent necessarily involves both an
identification and interpretation of the asserted claims,
and a comparison of the properly interpreted claim
limitations to the elements of the accused device.
The first step in any such analysis is to construe the
claims at issue, which is a matter of law for the court.
Markman, 52 F.3d at 976, 34 U.S.P.Q.2D (BNA) at 1326.
In interpreting the claim limitations, the court should look
first to the intrinsic evidence, or in other words "the
written description, the drawings, and the prosecution
history, if in evidence." Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 63 U.S.P.Q.2D (BNA) 1374, 1380
(Fed. Cir. 2002). The words of the [**10] claims
themselves define the scope of the invention, and are

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299 F.3d 1336, *1344; 2002 U.S. App. LEXIS 15418, **10;
63 U.S.P.Q.2D (BNA) 1769
given their ordinary and customary meaning, unless the
patentee has chosen to use terms in some other manner.
Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1366,
60 U.S.P.Q.2D (BNA) 1173, 1179 (Fed. Cir. 2001); see
also Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d
1575, 1578, 38 U.S.P.Q.2D (BNA) 1126, 1129 (Fed. Cir.
1996). It is thus necessary to review the specification to
determine whether the patentee has assigned any special
meaning to claim terms; the specification is "the single
best guide to the meaning of a disputed term." Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39
U.S.P.Q.2D (BNA) 1573, 1577 (Fed. Cir. [*1345]
1996). The court may also consider the prosecution
history, if in evidence. Id.; Markman, 52 F.3d at 980, 34
U.S.P.Q.2D (BNA) at 1330. The prosecution history "is
often of critical significance in determining the meaning
of the claims." Vitronics, 90 F.3d at 1582, 39 U.S.P.Q.2D
(BNA) at 1577.
Once the court has construed the claim limitations,
the second step in its analysis is to apply the claims to the
accused device. Literal infringement of a claim [**11]
exists when each of the claim limitations "reads on," or in
other words is found in, the accused device. Baxter
Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575,
1583, 34 U.S.P.Q.2D (BNA) 1120, 1126 (Fed. Cir. 1995);
Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562, 38
U.S.P.Q.2D (BNA) 1471, 1476 (Fed. Cir. 1996). Even if
one or more of the claim limitations are not literally
present in the accused device, thus precluding a finding
of literal infringement, the claim may still be held
infringed if equivalents of those limitations are present.
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 24, 41 U.S.P.Q.2D (BNA) 1865, 1869, 137 L.
Ed. 2d 146, 117 S. Ct. 1040 (1997). Equivalents are
assessed on a limitation-by-limitation basis; this focus on
individual limitations, rather than on the accused device
as a whole, aids the court in being specially vigilant
against allowing the concept of equivalence to eliminate
any claim limitations completely. Id. at 40, 41
U.S.P.Q.2D (BNA) at 1875. Equivalence may be
established by a showing by preponderant evidence that
an element of an accused device "'does substantially the
same thing in substantially [**12] the same way to get
substantially the same result' as the claim limitation."
Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367,
1370, 60 U.S.P.Q.2D (BNA) 1437, 1439 (Fed. Cir. 2001)
(quoting Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1260, 9 U.S.P.Q.2D (BNA) 1962,
1969 (Fed. Cir. 1989)). "'A claim element is equivalently

present in an accused device if only 'insubstantial
differences' distinguish the missing claim element from
the corresponding aspects of the accused device.'"
Leggett & Platt, Inc. v. Hickory Springs Mfg. Co., 285
F.3d 1353, 1359, 62 U.S.P.Q.2D (BNA) 1266, 1270 (Fed.
Cir. 2002) (quoting Sage Prods., Inc. v. Devon Indus.,
Inc., 126 F.3d 1420, 1423, 44 U.S.P.Q.2D (BNA) 1103,
1106 (Fed. Cir. 1997)).
The district court's opinion gives little consideration
to the claim limitations of the asserted '220 patent. The
court identifies the alleged "enhanced steering
characteristics" of the '220 patent, which it implies are
attributable to the "offset torque rod means," as the
"heart" of the invention. Allen Engineering, 46 F. Supp.
2d 867, 872. This is erroneous. It is well settled that
"there is no legally recognizable or protected [**13]
'essential' element, 'gist' or 'heart' of the invention in a
combination patent." Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 345, 128 U.S.P.Q. 354,
359, 5 L. Ed. 2d 592, 81 S. Ct. 599 (1961). Rather, "'the
invention' is defined by the claims." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565, 19 U.S.P.Q.2D (BNA)
1111, 1118 (Fed. Cir. 1991).
In its only attempt at claim construction, the district
court construes the "offset torque rod means" limitation
to mean that "the actual movement of the gear boxes
resulted from application of force at a point offset from
the center pivot axis of the gear boxes themselves." Allen
Engineering, 46 F. Supp. 2d 867, 872. The court then
proceeds to find literal infringement without discussing
any other claim limitations: "while these concepts appear
in various claims in the '220 patent, the most evident
claim which directly reads on the Bartell # 1 unit is
contained in claim 15 and its dependent claims 16, 17,
18, and 19." Id. Among these claims, however, the "offset
torque rod means" appears only in claim 18. Thus, the
court finds literal infringement [*1346] of an
independent claim apparently without considering any of
[**14] the limitations of that claim and purportedly on
the basis of a limitation appearing only in a dependent
claim. This is error.
The court's findings with respect to the Bartell # 2
trowel also are flawed. Here, the court identifies no claim
infringed by the trowel; rather, the court states in a
conclusory manner that "Bartell # 2 . . . is both a
structural and functional equivalent of the '220 patent.
The Court finds that the Bartell # 2 trowel, while

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299 F.3d 1336, *1346; 2002 U.S. App. LEXIS 15418, **14;
63 U.S.P.Q.2D (BNA) 1769
modified, performs substantially the same function as the
'220 patent in substantially the same way." Id. However,
equivalents must be assessed on a claim-by- claim,
limitation-by-limitation basis, not on any blanket
comparison of the patent document generally to the
accused device. Warner-Jenkinson, 520 U.S. at 40, 41
U.S.P.Q.2D (BNA) at 1875. Not only has the district
court
in
this
case
failed
to
perform
a
limitation-by-limitation comparison, it has not even
identified which claim or claims it finds the Bartell # 2
trowel to infringe under the doctrine of equivalents.
The district court's failure to construe the claim
limitations at issue, and its inadequate factual findings on
infringement, compel this court to remand [**15] for
further proceedings consistent with this opinion. See
Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 791, 35
U.S.P.Q.2D (BNA) 1255, 1260 (Fed. Cir. 1995) ("The
entire omission of a claim construction analysis from the
opinion, and the conclusory factual findings on
infringement, each provide an independent basis for
remand."). On remand, the district court must construe
the disputed limitations of all of the claims remaining in
suit and must then compare each of those limitations, as
construed, to the corresponding elements of the accused
Bartell trowels to determine infringement. To assist the
district court in this process, we provide the following
guidance on specific issues that, among others, will have
to be addressed on remand.
a. Claim Preamble
Each of the independent claims in suit begins with
the same preamble, which is in this case that part of each
claim preceding the transitional term "comprising." This
preamble reads: "[a] self-propelled, fast steering
motorized riding trowel for finishing a concrete surface,
said trowel comprising . . . ." '220 patent, col. 16, ll.
32-35. Generally, the preamble does not limit the claims.
DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3, 226
U.S.P.Q. 758, 764 n.3 (Fed. Cir. 1985). [**16] However,
the preamble may be limiting "when the claim drafter
chooses to use both the preamble and the body to define
the subject matter of the claimed invention." Bell
Communications
Research,
Inc.
v.
Vitalink
Communications Corp., 55 F.3d 615, 620, 34
U.S.P.Q.2D (BNA) 1816, 1820 (Fed. Cir. 1995). If the
preamble is "necessary to give life, meaning and vitality"
to the claim, then the claim preamble should be construed
as limiting. Kropa v. Robie, 38 C.C.P.A. 858, 187 F.2d

150, 152, 88 U.S.P.Q. 478, 480-81 (CCPA 1951). This is
determined "on the facts of each case in view of the
claimed invention as a whole." In re Stencel, 828 F.2d
751, 754, 4 U.S.P.Q.2D (BNA) 1071, 1073 (Fed. Cir.
1987); see also Applied Materials, Inc. v. Advanced
Semiconductor Materials Am., Inc., 98 F.3d 1563,
1572-73, 40 U.S.P.Q.2D (BNA) 1481, 1488 (Fed. Cir.
1996) ("Whether a preamble stating the purpose and
context of the invention constitutes a limitation . . . is
determined on the facts of each case in light of the overall
form of the claim, and the invention as described in the
specification and illuminated in the prosecution
history.").
Allen argues that the term "fast [**17] steering"
should be interpreted as a claim limitation. [*1347]
Bartell responds that this is simply a "laudatory term"
that only sets forth the purpose of the claimed invention.
We agree with Bartell. The term "fast steering" is a
relative term, and no interpretive frame of reference is
provided in any of the claims or in the specification.
Moreover, there is no indication in the record that one of
skill in the relevant art would understand what was meant
by the term in this context without such a frame of
reference. The term "fast steering" fails to give "life,
meaning and vitality" to the claimed structure, and thus is
not a limitation of the claim. Kropa, 187 F.2d at 152, 88
U.S.P.Q. at 480-81. We hold that the expression "fast
steering" should be construed as merely setting forth the
intended purpose of the claimed combination, and should
be given no limiting meaning.
b.
35
U.S.C.
§
112,
Means-Plus-Function Limitations

Paragraph

6,

A claim limitation may be expressed in
means-plus-function format in accordance with 35 U.S.C.
§ 112, paragraph 6, which reads as follows:
An element in a claim for a combination
may be expressed [**18] as a means or
step for performing a specified function
without the recital of structure, material, or
acts in support thereof, and such claim
shall be construed to cover the
corresponding structure, material, or acts
described in the specification and
equivalents thereof.
35 U.S.C. § 112, paragraph 6 (2000). The use of the

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299 F.3d 1336, *1347; 2002 U.S. App. LEXIS 15418, **18;
63 U.S.P.Q.2D (BNA) 1769
word "means" "triggers a presumption that the inventor
used this term advisedly to invoke the statutory mandate
for means-plus-function clauses." York Prods., Inc. v.
Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574,
40 U.S.P.Q.2D (BNA) 1619, 1623 (Fed. Cir. 1996). This
presumption may be overcome in two ways. First, "a
claim element that uses the word 'means' but recites no
function corresponding to the means does not invoke §
112, P 6." Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302, 50 U.S.P.Q.2D (BNA) 1429, 1434 (Fed. Cir.
1999). Second, "even if the claim element specifies a
function, if it also recites sufficient structure or material
for performing that function, § 112, P 6 does not apply."
Id.; see Cole v. Kimberly-Clark Corp., 102 F.3d 524,
531, 41 U.S.P.Q.2D (BNA) 1001, 1006 (Fed. Cir. 1996)
[**19] ("To invoke [§ 112, paragraph 6], the alleged
means-plus-function claim element must not recite a
definite structure which performs the described
function."). A claim term recites sufficient structure if
"the 'term, as the name for structure, has a reasonably
well understood meaning in the art.'" Watts v. XL Sys.,
Inc., 232 F.3d 877, 880-81, 56 U.S.P.Q.2D (BNA) 1836,
1838 (Fed. Cir. 2000) (quoting Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 U.S.P.Q.2D
(BNA) 1783, 1786 (Fed. Cir. 1996)). The mere use of the
word "means" after a limitation, without more, does not
suffice to make that limitation a means-plus-function
limitation. Cole, 102 F.3d at 531, 41 U.S.P.Q.2D (BNA)
at 1006.
In Cole, this court held that a limitation reading
"perforation means extending from the leg band means to
the waist band means through the outer impermeable
layer means for tearing the outer impermeable layer
means for removing the training brief in case of an
accident by the user" was not in means-plus-function
format. The court noted that "the claim describes not only
the structure that supports the tearing function, but also
its location . . . and extent . [**20] . . . An element with
such a detailed recitation of its structure, as opposed to its
function, cannot meet the requirements of the statute."
Cole, 102 F.3d at 531, 41 U.S.P.Q.2D (BNA) at 1006. In
contrast, in Sage Products, Inc. v. Devon Industries, Inc.,
126 F.3d 1420, 44 U.S.P.Q.2D (BNA) 1103 (Fed. Cir.
1997), this court held that a "closure means . . . for
controlling access" limitation was properly construed as a
means-plus-function [*1348] limitation, since a function
was recited for the means and the claim did not
"explicitly recite[] the structure, material, or acts needed
to perform [the function]." Sage, 126 F.3d at 1428, 44

U.S.P.Q.2D (BNA) at 1110.
As in Cole, the drafter of the '220 patent "was clearly
enamored of the word 'means.'" Cole, 102 F.3d at 531, 41
U.S.P.Q.2D (BNA) at 1006. Claim 15, the independent
claim that the district court found literally infringed,
contains twelve limitations using the word "means," and
the word appears thirty-two times in that claim alone.
Most of these putative means-plus-function limitations
contain far too much structure to claim the benefit of §
112, paragraph 6. For example, the "gearbox means for
rotating [**21] said blade means" of claim 15 is further
defined in the claim to comprise "a pair of rotatable
shafts projecting downwardly from said frame means and
defining a biaxial plane." Similarly, the "flexible drive
shaft means for actuating said gearbox means" is defined
by claim 15 itself to comprise "individual shaft sections
axially linked together by friction disk means for
facilitating bending." Such detailed recitation of structure
clearly removes these limitations from the ambit of § 112,
paragraph 6.
Likewise, the presumptions raised by the use of the
word "means" in all but one of the remaining limitations
of the claims are overcome by the recitation in each
instance of sufficient structure to preclude § 112,
paragraph 6 treatment as well. The "pivot steering box
means" and the "friction disk means" of claim 15, as well
as, for example, the "torque rod means" of claim 17, the
"knuckle spring means" of claim 20, the "connecting
shaft means" of claim 21, the "crank means," "clutch
plate means," "fork means," and "cable means" of claim
24, and the "lever arm means" of all of the claims in suit,
are instances in which, as in Cole, "the claim drafter's
perfunctory addition of [**22] the word 'means' did
nothing to diminish the precise structural character of
[the] element." Id. All of these limitations recite precise
structure well understood by those of skill in the art.
Accordingly, the word "means" in these limitations may
be ignored. The only limitation that does invoke § 112,
paragraph 6 is the "means interconnecting said drive shaft
means with said motor means," reciting as it does no
structure at all. That limitation is construed in accordance
with the statute to cover the corresponding structure
disclosed in the written description for performing the
recited function, and equivalents thereof.
c. Invalidity Under 35 U.S.C. § 112
Bartell argues that claims 1-4, 13, and 23 of the '220
patent are invalid under 35 U.S.C. § 112. The second

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63 U.S.P.Q.2D (BNA) 1769
paragraph of that statute recites:
The specification shall conclude with
one or more claims particularly pointing
out and distinctly claiming the subject
matter which the applicant regards as his
invention.

We have explained that the second paragraph of §
112 contains two requirements: "first, [the claim] must
set forth what 'the applicant regards as his [**23]
invention,' and second, it must do so with sufficient
particularity and distinctness, i.e., the claim must be
sufficiently 'definite.'" Solomon v. Kimberly-Clark Corp.,
216 F.3d 1372, 1377, 55 U.S.P.Q.2D (BNA) 1279, 1282
(Fed. Cir. 2000). In determining whether the claim is
sufficiently definite, we must analyze whether "one
skilled in the art would understand the bounds of the
claim when read in light of the specification."
Personalized Media Communs., L.L.C. v. ITC, 161 F.3d
696, 705, 48 U.S.P.Q.2D (BNA) 1880, 1888 (Fed. Cir.
1998). Claim 23 is an example of a failure to meet the
second of the requirements [*1349] set forth in
Solomon. This claim ends in the middle of a limitation:
"coupled to said gearbox means by rigid". '220 patent,
col. 21, ll. 43-44. Since it is impossible to discern the
scope of such a truncated limitation, claim 23 is indefinite
and thus invalid under 35 U.S.C. § 112, paragraph 2.
Claims 1-4 and 13 of the '220 patent implicate the
first requirement set forth in Solomon: that the applicant
set forth what he "regards as his invention." Solomon,
216 F.3d at 1377, 55 U.S.P.Q.2D (BNA) at 1282. Where
[**24] it would be apparent to one of skill in the art,
based on the specification, that the invention set forth in a
claim is not what the patentee regarded as his invention,
we must hold that claim invalid under § 112, paragraph 2.
Id. at 1378-79, 55 U.S.P.Q.2D (BNA) at 1282-83. While
claims 1-4 and 13 limit one of the two pivot steering
boxes to pivoting "its gear box only in a plane
perpendicular to said biaxial plane," '220 patent, col. 16,
ll. 60-63; col. 19, ll. 51-53 (emphases added), the
specification describes this structure in contrary terms,
stating that "rotation about the axis established by bolt
272 is not permitted; gearbox 85A cannot pivot in a plane
perpendicular to the biaxial plane." '220 patent, col. 11,
ll. 48-51 (emphases added).
Allen argues that one of skill in the art would

understand that the term "perpendicular" in the claim
should be read to mean "parallel." Allen stretches the law
too far. It is not our function to rewrite claims to preserve
their validity. Rhine v. Casio, Inc., 183 F.3d 1342, 1345,
51 U.S.P.Q.2D (BNA) 1377, 1379 (Fed. Cir. 1999). We
are simply tasked with determining whether the claims
"particularly point[] [**25] out and distinctly claim[]"
what the inventor regards as his invention. 35 U.S.C. §
112, paragraph 2; see also In re Zletz, 893 F.2d 319, 322,
13 U.S.P.Q.2D (BNA) 1320, 1322 (Fed. Cir. 1989)
(holding that claims failing this test during prosecution
must be rejected under § 112, paragraph 2). Moreover, it
is of no moment that the contradiction is obvious:
semantic indefiniteness of claims "is not rendered
unobjectionable merely because it could have been
corrected." In re Hammack, 57 C.C.P.A. 1251, 427 F.2d
1384, 1388 n.5, 166 U.S.P.Q. 209, 215 n.5 (CCPA 1970).
Here, it is apparent from a simple comparison of the
claims with the specification that the inventor did not
regard a trowel in which the second gear box pivoted
only in a plane perpendicular to the biaxial plane to be his
invention. Allen admits as much. Accordingly, we
conclude as a matter of law that claims 1-4 and 13, which
include the incorrect "perpendicular" limitation, are
invalid under § 112, paragraph 2.
Bartell also contends that these claims are invalid
under the first paragraph of § 112, on the theory that they
are not enabled by the specification. In light of [**26]
our holding of invalidity under § 112, paragraph 2, we
need not and do not address the § 112, paragraph 1
argument.
d. Prosecution History Estoppel
In any consideration on remand of infringement of
claims of the '220 patent under the doctrine of
equivalents, the district court must consider the doctrine
of prosecution history estoppel. This doctrine bars a
patentee from asserting as an equivalent subject matter
surrendered during prosecution of the patent application.
Am. Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441,
1445-46, 41 U.S.P.Q.2D (BNA) 1614, 1618 (Fed. Cir.
1997). An estoppel may arise as a result of amendments
that narrow the scope of a claim to satisfy any
requirement of the Patent Act. Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 152 L. Ed.
2d 944, 122 S. Ct. 1831, 1839, 62 U.S.P.Q.2D (BNA)
1705, 1711-12 (2002). Narrowing amendments create a
[*1350] rebuttable presumption of estoppel. 122 S. Ct. at

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63 U.S.P.Q.2D (BNA) 1769
1841-42, 62 U.S.P.Q.2D (BNA) at 1713 (citing
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 33, 41 U.S.P.Q.2D (BNA) 1865, 1873, 137 L.
Ed. 2d 146, 117 S. Ct. 1040 (1997)). The scope of the
estoppel depends on "the inferences that may reasonably
[**27] be drawn from the amendment." 122 S. Ct. at
1840, 62 U.S.P.Q.2D (BNA) at 1712. A patentee is not
barred from asserting "equivalents unforeseeable at the
time of the amendment and beyond a fair interpretation of
what was surrendered," or those that "have only a
peripheral relation to the reason the amendment was
submitted." 122 S. Ct. at 1841, 62 U.S.P.Q.2D (BNA) at
1712. Nor is recourse to the doctrine of equivalents
foreclosed where there is "some other reason suggesting
that the patentee could not reasonably be expected to
have described the insubstantial substitute in question."
122 S. Ct. at 1842, 62 U.S.P.Q.2D (BNA) at 1714. The
patentee bears the burden of overcoming the presumption
by "showing that the amendment does not surrender the
particular equivalent in question." 122 S. Ct. at 1842, 62
U.S.P.Q.2D (BNA) at 1713. An estoppel also may be
found on the basis of arguments made during prosecution
of the application to secure the allowance of claims. See
Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979, 52
U.S.P.Q.2D (BNA) 1109, 1113 (Fed. Cir. 1999) (holding
that the scope of coverage of the claims may change if a
patentee has "relinquished [a] potential claim
construction in an amendment to the claim or in an
argument [**28] to overcome or distinguish a
reference"); Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1583, 34 U.S.P.Q.2D (BNA) 1673, 1683 (Fed.
Cir. 1995).
It is apparent from the record that numerous
amendments of the claim limitations were made during
prosecution of the '220 patent. Also, in its October 3,
1991 response, Allen made numerous arguments
respecting the patentability of the claims as amended. On
remand, the district court must consider whether any of
these amendments and arguments gives rise to
prosecution history estoppel limiting resort to the
doctrine of equivalents. Festo, 122 S. Ct. at 1839, 62
U.S.P.Q.2D (BNA) at 1711-12 (holding that "a narrowing
amendment made to satisfy any requirement of the Patent
Act may give rise to an estoppel"); Southwall, 54 F.3d at
1583, 34 U.S.P.Q.2D (BNA) at 1682 ("Clear assertions
made during prosecution in support of patentability,
whether or not actually required to secure allowance of
the claim, may also create an estoppel."). Any
argument-based estoppel affecting a limitation in one

claim will also extend to all claims in which that
limitation appears. Southwall, 54 F.3d at 1584, 34
U.S.P.Q.2D (BNA) at 1683 [**29] ("Once an argument
is made regarding a claim term so as to create an
estoppel, the estoppel will apply to that term in other
claims.").
e. Copying
The district court's decision and the record evince
confusion about the legal effect of alleged copying of
Allen's trowels on the issue of infringement. Specifically,
in connection with a side-by-side comparison of several
trowels, including Allen's Flying Frame trowel, Bartell's
accused trowels, and the Red Rider, the court asked the
plaintiff's president, Mr. Allen, to tell him "what he feels
about the Allen machine that is unique and where he
thinks it has been copied on the Bartell machine." Trial
Tr. at 264 (emphasis added). Allen's counsel, perhaps out
of excessive zeal in their client's cause, misstated
applicable Supreme Court precedent in their post-trial
submissions to the court:
Interestingly enough, Defendants urge
that Bartell's copying is a "non-issue."
[Defendant's Brief, p. 26] This position is
in direct contradiction to the Court's
holding in Graham v. John Deere
Company of Kansas City, 383 U.S. 1, 15
L. Ed. 2d 545, 86 S. Ct. 684, 148 U.S.P.Q.
459 [*1351] (1966) which specifically
directs that the trial [**30] court is to take
into consideration as an element of
infringement whether the invention in
question was copied by the infringer.
Allen's Post-Trial Reply Br. at 2. Graham v. John Deere
says no such thing even by implication, much less
"specifically." That case does indicate that copying may
have relevance not on infringement but on validity as one
of a number of "indicia of obviousness or
nonobviousness." Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 U.S.P.Q. 459, 467, 15 L. Ed. 2d 545, 86 S. Ct.
684 (1966) (stating that secondary conditions such as
"commercial success, long felt but unsolved needs,
failure of others, etc. . . . may have relevancy" to the
determination of obviousness vel non, and citing to a law
review article that suggests actual copying may also be
probative of obviousness); see also Apple Computer, Inc.
v. Articulate Sys., Inc., 234 F.3d 14, 26, 57 U.S.P.Q.2D

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63 U.S.P.Q.2D (BNA) 1769
(BNA) 1057, 1066 (Fed. Cir. 2000) (describing copying
as "objective evidence of non-obviousness"). While
copying may be relevant to obviousness, it is of no
import on the question of whether the claims of an issued
patent are infringed. Indeed, the Supreme Court has
specifically [**31] rejected the proposition that copying
is relevant to infringement as asserted under the doctrine
of equivalents. Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 35-36, 41 U.S.P.Q.2D (BNA)
1865, 1874, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (holding
that "intent plays no role in the application of the doctrine
of equivalents"). Infringement is determined by
comparing the accused devices not with products made
by the patentee but with the claims of the patent as
properly construed. Counsel who undertake patent
infringement litigation should know the difference
between validity and infringement and are expected to
accurately explain the difference to the court.
2. Inequitable Conduct
Bartell argues that Allen committed inequitable
conduct by not disclosing its earlier Red Rider model to
the PTO during prosecution of the '220 patent. To prevail
on this issue, Bartell must show by clear and convincing
evidence that Allen withheld material information from
the PTO with intent to deceive the PTO. GFI, Inc. v.
Franklin Corp., 265 F.3d 1268, 1273, 60 U.S.P.Q.2D
(BNA) 1141, 1143 (Fed. Cir. 2001). Intent is "in the main
proven by inferences drawn from facts, with the
collection [**32] of inferences permitting a confident
judgment that deceit has occurred." Id. at 1274, 60
U.S.P.Q.2D (BNA) at 1144. The district court's
determination on inequitable conduct is reviewed for an
abuse of discretion. Id. at 1273, 60 U.S.P.Q.2D (BNA) at
1143.
We find no abuse of discretion in the district court's
determination that there was no inequitable conduct
based on the record before us. Bartell has provided no
direct evidence that Allen withheld information about the
Red Rider with intent to deceive the PTO. Instead, Bartell
argues that Allen was "at least grossly negligent" in
withholding the Red Rider from the PTO, and that, on the
basis of Argus Chemical Corp. v. Fibre Glass-Evercoat
Co., 759 F.2d 10, 14-15, 225 U.S.P.Q. (BNA) 1100, 1003
(Fed. Cir. 1985), Allen's intent to deceive is shown by
this gross negligence. However, even if Allen's conduct
amounted to gross negligence, this alone would not be
sufficient to show the requisite intent. Kingsdown Med.

Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 876, 9
U.S.P.Q.2D (BNA) 1384, 1392 (Fed. Cir. 1988) (en banc
in relevant part) (holding that "a finding that particular
conduct amounts to [**33] 'gross negligence' does not of
itself justify an inference of intent to deceive"). Bartell
argues, in essence, that the Red Rider was so material that
its nondisclosure justifies an [*1352] inference of intent
to deceive. However, "materiality does not presume
intent, which is a separate and essential component of
inequitable conduct." Allen Organ Co. v. Kimball Int'l,
Inc., 839 F.2d 1556, 1567, 5 U.S.P.Q.2D (BNA) 1769,
1778 (Fed. Cir. 1988). The extent of the evidence in the
present record simply is not sufficient to show deceptive
intent. We find no basis to conclude that the district court
abused its discretion in finding no inequitable conduct by
Allen.
3. On-Sale Bar
Bartell alleges that sales of the Red Rider more than
one year prior to the July 13, 1990 filing date of the
application which matured to the '220 patent constituted
an on-sale bar to the issuance of that patent under 35
U.S.C. § 102(b). Bartell argues that the sales were
commercial in nature, identifying evidence that Allen's
customers were not informed that the Red Rider was an
experimental model and that there was no record kept of
any experimentation. Bartell also argues that the Red
Rider [**34] was an embodiment of the invention of the
'220 patent, identifying elements of the Red Rider that it
alleges correspond to certain claim limitations, such as
the offset torque arms, parallel lever arms, twin steering
sticks and tertiary linkage, and flexible direct drive
system.
Allen responds that the Red Rider did not
incorporate the limitations of the '220 claims. Allen states
that the Red Rider "did not have the critical 'fast steering'
characteristics," nor was it "operator friendly," and
contends that this proves that the invention of the '220
patent was not ready for patenting when the Red Rider
was sold. Furthermore, Allen argues that the Red Rider
was sold primarily for reasons of experimentation, and
that the representations made by Allen to its customers
should have led them to believe that the machine was
experimental. Allen states that the trade-in guarantees it
gave to its customers establish that the Red Rider was "an
experimental machine made in anticipation of a new
superior machine."
To establish an on-sale bar, it must be shown that the

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63 U.S.P.Q.2D (BNA) 1769
device sold "fully anticipated the claimed invention or
would have rendered the claimed invention obvious by its
addition to the [**35] prior art." Tec Air, Inc. v. Denso
Mfg. Mich. Inc., 192 F.3d 1353, 1358, 52 U.S.P.Q.2D
(BNA) 1294, 1296-97 (Fed. Cir. 1999) (quoting Ferag
AG v. Quipp Inc., 45 F.3d 1562, 1566, 33 U.S.P.Q.2D
(BNA) 1512, 1514-15 (Fed. Cir. 1995)); see also Pfaff v.
Wells Elecs., Inc., 525 U.S. 55, 68, 48 U.S.P.Q.2D (BNA)
1641, 1647, 142 L. Ed. 2d 261, 119 S. Ct. 304 (1998)
(noting that the device "contained all the elements of the
invention claimed in the [4,491,]377 patent"). Thus, to
invalidate a claim of the '220 patent, Bartell must show
that the Red Rider embodied all of the limitations of that
claim or would have rendered that claim obvious. In
addition, Bartell must also prove the facts underlying
both prongs of the Pfaff test by clear and convincing
evidence. Specifically, Bartell must show that, before the
critical date--which in this case is July 13, 1989--the Red
Rider was both (1) the subject of a commercial offer for
sale not primarily for purposes of experimentation and (2)
ready for patenting. Pfaff, 525 U.S. at 67, 48 U.S.P.Q.2D
(BNA) at 1646-47. The first prong of this test involves a
determination of whether a commercial offer for sale has
occurred, applying [**36] traditional contract law
principles. See Linear Tech. Corp. v. Micrel, Inc., 275
F.3d 1040, 1048, 61 U.S.P.Q.2D (BNA) 1225, 1229 (Fed.
Cir. 2001) (citing Group One, Ltd. v. Hallmark Cards,
Inc., 254 F.3d 1041, 1047, 59 U.S.P.Q.2D (BNA) 1121,
1126 (Fed. Cir. 2001). It also involves an assessment of
whether the circumstances surrounding the transaction
show that the transaction was not primarily for purposes
[*1353]
of
experimentation.
In
assessing
experimentation, this court has considered a number of
factors, not all of which may apply in any particular case.
These factors include:
(1) the necessity for public testing, (2)
the amount of control over the experiment
retained by the inventor, (3) the nature of
the invention, (4) the length of the test
period, (5) whether payment was made,
(6) whether there was a secrecy obligation,
(7) whether records of the experiment
were kept, (8) who conducted the
experiment, . . . (9) the degree of
commercial exploitation during testing[,] .
. . (10) whether the invention reasonably
requires evaluation under actual conditions
of use, (11) whether testing was
systematically performed, (12) whether

the inventor continually monitored [**37]
the invention during testing, and (13) the
nature of contacts made with potential
customers.
EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357, 61
U.S.P.Q.2D (BNA) 1289, 1296 (Fed. Cir. 2002) (Linn, J.,
concurring). The second prong of the Pfaff test may be
satisfied "by proof of reduction to practice before the
critical date; or by proof that prior to the critical date the
inventor had prepared drawings or other descriptions of
the invention that were sufficiently specific to enable a
person skilled in the art to practice the invention." Pfaff,
525 U.S. at 67-68, 48 U.S.P.Q.2D (BNA) at 1647. The
on-sale bar is evaluated on a claim-by-claim basis, so that
some claims of a patent may be found to be barred while
others are not. Lough v. Brunswick Corp., 86 F.3d 1113,
1122 n.5, 39 U.S.P.Q.2D (BNA) 1100, 1107 n.5 (Fed.
Cir. 1996) ("Each claim of the patent must be considered
individually when evaluating a public use bar.").
We have described the assessment of whether a
device sold was an embodiment of a claimed invention as
"the first determination" in the on-sale bar analysis.
Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1383,
51 U.S.P.Q.2D (BNA) 1055, 1058. However, in [**38]
some cases, it may be more efficient to first assess
experimental use negation of sales allegedly made, as
"adequate proof of experimentation negates a statutory
bar." EZ Dock, 276 F.3d at 1352, 61 U.S.P.Q.2D (BNA)
at 1292. If there is adequate proof that a device was sold
primarily for experimentation, the first prong of Pfaff
would not be met and it would be unnecessary to consider
either whether the device was an embodiment of the
claimed invention or whether the invention was "ready
for patenting" at the time of the sales.
The district court in this case chose to focus its
analysis on the experimental character of the Red Rider.
It found that the Red Rider was "essentially an
experimental prototype . . . which was under constant
modifications," Allen Engineering, 46 F. Supp. 2d 867,
870, and stated that "public use under section 102(b) does
not start the one-year period until after the invention has
left the experimental stage." 46 F. Supp. 2d at 874. The
court made the additional findings of fact that, if the users
of the Red Rider had problems with the machine, "Allen
would repair, replace, or substitute a usable product," 46
F. Supp. 2d at 870, and that "it would have been
impossible [**39] to conduct adequate research and

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63 U.S.P.Q.2D (BNA) 1769
development on the Red Rider in a factory environment,"
46 F. Supp. 2d at 870. The district court concluded from
this alone that the Red Rider sales did not create an
on-sale bar to the issuance of the '220 patent.
The district court erred, however, in concluding that
sales of the Red Rider did not trigger an on-sale bar
simply because the Red Rider was in an experimental
stage. The court made the findings that the Red Rider was
an experimental prototype that never reached completion,
based on its findings that Allen's customers received a
guarantee of repair or replacement [*1354] of the Red
Rider, and that it was necessary to test the devices on job
sites. By themselves, however, these findings are
insufficient to determine whether sales of the Red Rider
constituted a commercial offer for sale under the test set
forth in Pfaff.
What is important to an assessment of
the commercial versus experimental
significance of a sale is not necessarily the
posture of the invention's overall
development, but the nature or purpose of
the particular use to which the invention
that is the subject of that sale is to be put.
See Manville Sales Corp. v. Paramount
Sys., Inc., 917 F.2d 544, 550, 16
U.S.P.Q.2D (BNA) 1587, 1592 (Fed. Cir.
1990) [**40] ("a sale that is primarily for
experimental purposes, as opposed to
commercial exploitation, does not raise an
on sale bar"); U.S. Envtl Prods., Inc. v.
Westall, 911 F.2d 713, 716, 15
U.S.P.Q.2D (BNA) 1898, 1901 (Fed. Cir.
1990) ("[a] section 102(b) bar is avoided if
the primary purpose of the sale was
experimental");
Barmag
Barmer
Maschinenfabrik AG v. Murata Mach.,
Ltd., 731 F.2d 831, 839, 221 U.S.P.Q.
561, 567 (Fed. Cir. 1984) (quoting In re
Theis, 610 F.2d 786, 793, 204 U.S.P.Q.
188, 194 (CCPA 1979) ("the experimental
exception applies only if the commercial
exploitation is merely incidental to the
primary purpose of experimentation to
perfect the invention")).
Thus, the question posed by the
experimental use doctrine, assessed under
the first prong of the two-part on-sale bar

test of Pfaff, is not whether the invention
was under development, subject to testing,
or otherwise still in its experimental stage
at the time of the asserted sale. Instead, the
question is whether the transaction
constituting the sale was "not incidental to
the primary purpose of experimentation,"
i.e., whether the primary purpose of the
inventor at the time of [**41] the sale, as
determined from an objective evaluation
of the facts surrounding the transaction,
was to conduct experimentation. Scaltech,
Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378,
1384 n.1, 51 U.S.P.Q.2D (BNA) 1055,
1059 n.1 (Fed. Cir. 1999). As noted, once
the invention is reduced to practice, there
can be no experimental use negation.
Zacharin v. United States, 213 F.3d 1366,
1369, 55 U.S.P.Q.2D (BNA) 1047, 1050
(Fed. Cir. 2000); RCA Corp. v. Data Gen.
Corp., 887 F.2d 1056, 1061, 12
U.S.P.Q.2D (BNA) 1449, 1453. But up to
that point, regardless of the stage of
development of the invention, and quite
apart from the possible satisfaction of the
second prong of the Pfaff test, the inventor
is free to experiment, test, and otherwise
engage in activities to determine if the
invention is suitable for its intended
purpose and thus satisfactorily complete.
EZ Dock, 276 F.3d at 1356-57, 61 U.S.P.Q.2D (BNA) at
1295-96 (Linn, J., concurring).
Because the district court erred as a matter of law in
not considering or properly applying the first or second
prongs of Pfaff, we are forced to vacate the determination
of no on-sale bar and remand for further findings
consistent [**42] with this opinion. To assist the court in
this determination, we note that in its consideration of the
first prong of Pfaff, the court must investigate all of the
circumstances regarding the sales in question to assess
whether Bartell has proved, by clear and convincing
evidence, facts sufficient to establish that the sales made
prior to the critical date were commercial sales not
incidental to the primary purpose of experimentation. The
court should be guided by the factors that were set forth
in EZ Dock and quoted above, and should pay particular
attention to the circumstances of the alleged testing of the
Red Rider. Specifically, it should assess the amount of

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control over the experiments retained by the inventor, the
length of the test period, whether records [*1355] of the
experiments were kept, who conducted the experiment,
the degree of commercial exploitation during testing,
whether testing was systematically performed, and
whether the inventor continually monitored the invention
during testing. Experimentation conducted to determine
whether the Red Rider would suit a particular customer's
purposes does not fall within the experimental use
exception. In re Theis, 610 F.2d 786, 792, 204 U.S.P.Q.
188, 193 (CCPA 1979). [**43]
The court should also inquire into the nature of the
relationship between Allen and its customers; for
example, whether the amounts paid to Allen suggest a
purely commercial transaction, whether there was a
secrecy obligation, and the nature of the contacts made
with potential customers. Useful in this determination is
record evidence such as the testimony of Allen's
president that "we wanted to get [the Red Rider] in the
marketplace," Trial Tr. at 335, and that "we did not [tell
buyers] this was a test machine or experimental," id. at
332. A showing that Allen did not clearly communicate
to the users of the Red Rider that the use was to be for
experimental purposes makes recourse to experimental
negation questionable. In re Dybel, 524 F.2d 1393, 1401,
187 U.S.P.Q. 593, 599 (CCPA 1975) ("Appellant's failure
to communicate to any of the purchasers or prospective
purchasers of his device that the sale or offering was for
experimental use is fatal to his case."). Typical
commercial sales provisions such as Allen's trade-in
guarantees by themselves are insufficient to establish an
experimental relationship. LaBounty Mfg. v. United
States ITC, 958 F.2d 1066, 1074, 22 U.S.P.Q.2D (BNA)
1025, 1031 (Fed. Cir. 1992). [**44]
Should the district court conclude from a closer
examination of the circumstances of the sales of the Red
Rider that at least some of the sales were commercial in
nature and not incidental to the primary purpose of
experimentation, thus satisfying the first prong of the
Pfaff test, it must then assess: 1) whether the Red Rider is
an embodiment of the invention recited in at least one of
the claims of the '220 patent or would have rendered that
claim obvious, and 2) whether the second prong of the
Pfaff test, the "ready for patenting" prong, was met at the
time the sales were made.
In making the first of these determinations, the court
must both construe the claims of the '220 patent and

make specific findings linking elements of the Red Rider
to claim limitations of the '220 patent. In the court's
consideration of these limitations, it is immaterial
whether the Red Rider was considered to be a
fast-steering trowel, in view of our holding above that the
"fast-steering" language of the claim preamble is not a
limitation of any of the claims. See STX LLC v. Brine
Inc., 211 F.3d 588, 54 U.S.P.Q.2D (BNA) 1347, 1349
(Fed. Cir. 2000) ("The fact that the first squeezes that
[**45] formed the basis of the commercial offer to sell
might not have exhibited the desired degree of 'improved
playing and handling' characteristics . . . is irrelevant, not
least because the preamble to claim 1 is not a
limitation."). Nor should the court consider things like the
alleged "operator friendly" characteristics of the '220
trowel that do not appear in the claims. Finally, the court
should appreciate that experimentation and modification
of non-claimed features of the Red Rider will not
necessarily preclude the finding of an on-sale bar. See
Theis, 610 F.2d at 793, 204 U.S.P.Q. at 194 (holding that
"experimental [use] . . . does not apply to experiments
performed with respect to non-claimed features of an
invention").
4. Marking
Bartell argues that the typographical error admittedly
contained in the sticker affixed to Allen's Flying Frame
[*1356] trowel resulted in ineffective "notice to the
public," under 35 U.S.C. § 287(a), that the trowel was
patented. In support of this view, Bartell cites SRI
International, Inc. v. Advanced Technical Laboratories,
Inc., 127 F.3d 1462, 1469, 44 U.S.P.Q.2D (BNA) 1422,
1428 (Fed. Cir. 1997). However, [**46] the
typographical error in this case simply involved a
misplaced semicolon. Specifically, instead of reading
"4,046,484; 5,108,220," the sticker read "4,046,4845;
108,220." Those sufficiently interested in the patents
covering the Flying Frame would have no difficulty
discerning--and indeed would be hard pressed not to
discern--the actual patent number from the sticker. SRI
International, which dealt with a complete failure to
mark, is not applicable here. A manifestly obvious
typographical error that does not prevent interested
members of the public from discerning the number of a
patent alleged to protect an article does not result in a
failure to mark. Furthermore, Bartell did not allege that
any of the Flying Frame trowels did not bear this sticker.
See Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437,
1446-47, 46 U.S.P.Q.2D (BNA) 1001, 1009 (Fed. Cir.

Page 13
299 F.3d 1336, *1356; 2002 U.S. App. LEXIS 15418, **46;
63 U.S.P.Q.2D (BNA) 1769
1998). Accordingly, we affirm the district court's holding
that the sticker provided effective notice to the public
under 35 U.S.C. § 287(a).
5. Presentation of the Case
It is evident from the record that counsel for both
parties sought to zealously represent their clients'
interests at the trial [**47] of this case. However, at
times, counsel's actions showed an excessive emphasis on
their roles as zealous advocates. Counsel must remember
that they are not only advocates for their clients; they are
also officers of the court and are expected to assist the
court in the administration of justice, particularly in
difficult cases involving complex issues of law and
technology. Judge Bennett has described the interplay
between these roles in the following terms:
An attorney's obligations to provide
zealous advocacy on behalf of his client
are not absolute and uncompromising, but
must be viewed in light of his additional
obligations as an officer of the court to
promote the administration of justice and
to comply with the court's rules, notices,
and orders. Additionally, as with his
obligations to his client, the attorney's
obligations to the court are ongoing at
every stage of the litigation and the
attorney must continually reevaluate the
positions advanced in light of both the
development of the litigation itself and of
the relevant case law affecting the
litigation.
In re Solerwitz, 848 F.2d 1573, 1577 (Fed. Cir. 1988).
Given the wide variety of lawsuits [**48] that are

brought in district courts, it is incumbent on trial counsel
to assist the court and to fully and fairly present the legal
issues in the case within the applicable statutory and
common law framework relevant to the factual dispute
before the court for resolution. At times, both during and
after trial in this case, counsel appear to have sought to
cloud rather than clarify the central legal issues and to
draw the court's attention to peripheral matters. Counsel's
overlooking of their respective roles as officers of the
court has contributed, at least in part, to these protracted
proceedings. We have alluded above to two issues: the
mistaken focus on whether the Red Rider was a
"fast-steering" trowel, and the largely irrelevant issue of
Bartell's alleged "copying" of the Flying Frame. The
record also reveals serious misstatements of applicable
law, beginning with the mischaracterization of the
holding of Graham v. John Deere cited above. Another
example is the reference in post-trial briefs to a Fifth
Circuit "synergism" [*1357] test for the patentability of
combination inventions, a test which was specifically
abrogated in this Circuit by Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1540, 218 U.S.P.Q. 871, 880 (Fed.
Cir. 1983). [**49] Allen's Post-Trial Br. at 20; Reply Br.
at 24. The record is replete with obfuscation, deflection
and mischaracterization.
We trust that counsel in this case, mindful of their
role as officers of the court, will do a better job on
remand and will assiduously assist the court in
conducting further proceedings consistent with this
opinion.
AFFIRMED-IN-PART,
REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED.
COSTS
No costs.