1. Memorandum
To: Dennis Kelly, Senior Partner
From: Nivv Oudit, Junior Associate
Date: October 27, 2011
Re: Telescope Casual Furniture, Inc. v. Furniture World Corp. et al.
Patent Infringement Case
Firm File No. 53092ETW.003
Questions Presented
1. Is U.S. Pat. No. 6830,293 invalid under 35 U.S.C. § 102(b)?
a. Was the use of the sofa pads by Vanderminden, Barnes and Barnes’ neighbor
sufficient to count as “public use?”
b. Was the power-point sales presentation containing detailed invention features
made sufficiently publicly accessible to count as a “printed publication?”
Brief Answer
A court will most likely hold U.S. Pat. No. 6830,293 to be invalid under
35 U.S.C. §102(b).
Under 35 U.S.C. § 102(b), “a person shall be entitled to a patent unless the
invention was patented or described in a printed publication in this or a foreign
country or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States.”
Although it can be argued that the use of the seat pads was predominantly
experimental and therefore not public use under § 102(b), the invention was likely

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sufficiently publicly accessible to be described as a printed publication prior to the
critical date, thus rendering the patent invalid.
Facts
Telescope Casual Furniture’s employee Mr. William M. Vanderminden
designed the seat pad that is the subject of the ‘293 patent. He conceived of the
idea during the fall of 1999, and on December 6, 1999, the company produced ten
seat pads. Three of these pads were taken home by Mr. Vanderminden, five were
stored away, and the remaining two were taken by Mr. Buck Barnes, the Director
of Operations at Telescope Casual Furniture, Inc.
Mr. Vanderminden put his three seat pads on furniture, on a chair, and on
a swing in his backyard. Mr. Barnes put one pad on a chair on his patio and sold
the other pad to his next-door neighbor for $30, asking him to try it out. He gave
the $30 to the sales department of Telescope Casual Furniture. Barnes regularly
asked his neighbor for feedback regarding the seat pad, and if the neighbor had
any related problems, he would let Barnes know. In December 2000, Barnes took
a new seat pad to his neighbor and traded it for the original seat pad, which was
returned to Vanderminden for evaluation.
Ms. Kate Beckett, Vice President for Sales at Telescope Casual Furniture,
emailed a power-point sales presentation on March 1, 2000 to Dr. Rick Castle,
Program Chair for the “Show of Outdoor Furniture Accents”(“SOFA”). This
presentation (SOFA 2000) demonstrated all of the features of the seat pad. In her
email, Ms. Beckett stated that a copy of the presentation would be available on the

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Telescope Casual Furniture FTP server as a backup. She also included the specific
FTP web address in her email.
The power-point presentation was available on the FTP side for only
seven days in March 2000. But prior to the critical date of June 29, 2000, Beckett
had provided the FTP web address to retailers of outdoor furniture both in
presentations and via email. She included specific links to documents within the
FTP site. The FTP site had two main folders: “dev” and “pub.” The contents of
the “pub” folder included several subfolders including the folder “furniture,”
which contained several sales presentations including the SOFA 2000
presentation. This FTP site was commonly referenced by individuals on the public
domain Google Groups.
Discussion
a. Was the use of the sofa pads by Vanderminden, Barnes and Barnes’
neighbor sufficient to count as “public use?”
It is probably likely that a court will hold that the use of the sofa pads did
not quality as a “public use.” This is because the usage of these sofa pads was
predominantly experimental for the purpose of testing the pads.
In the context of patent invalidity determination, an invention is in “public
use” if it is shown to or used by an individual other than the inventor under no
limitation, restriction, or obligation of confidentiality. This must occur more than
one year prior to the date for application (critical date) for patent in the United
States. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1325 (Fed. Cir. 2009).

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The doctrine of “experimental use” permits an inventor to engage in
activities that would otherwise be classified under “public use,” provided that the
use is incidental to experimentation, for the purpose of perfecting the invention.
By demonstrating that these activities fell within the boundaries of experimental
use, it is possible to refute a charge that the activity in question rendered the
invention unpatentable. Elizabeth v. Pavement Co., 97 U.S. 135 (1877).
In determining whether a use of an invention is experimental for purposes
of the public use bar, an entirety of the circumstances must be taken into
consideration. This includes various objective indications of experimentation
surrounding use, such as number of prototypes and length of testing, whether
records were made regarding testing, existence of a confidentiality agreement
between patentee and party performing testing, whether patentee received
compensation for using invention, and the extent of control the inventor
maintained over testing. Lough v. Brunswick Corp., 86 F.3d 1120 (Fed. Cir.
1996).
Experimental use can be satisfied if an invention is tested for the purpose
of further improvement, albeit in public, for several years prior to the filing of a
patent. Elizabeth, 97 U.S. at 133. In Elizabeth, the U.S. Supreme Court held that
the testing of pavement material on a public road constituted experimental use.
This testing occurred for a period of six years before the inventor Mr. Nicholson
filed for a patent. The Court held that the nature of the invention required it to be
tested in a public place over a significant period of time. During the testing
period, Nicholson examined the pavement on a daily basis and regularly sought

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feedback from a toll-collector Joseph L. Lang with regard to its condition.
Additionally, the testing was conducted under the control and regular inspection
of the inventor. Id.
Although confidentiality is of significant importance in the patent process,
the presence or absence of a confidentiality agreement is not dispositive of the
public use issue. TP Labs, Inc. v. Prof’l Positioners, Inc.,724 F,2d 972 (Fed. Cir.
1984). Experimental use can be satisfied even if an invention is tested in the
absence of confidentiality, provided that this is incidental to the experimentation
process and that the testing is within the inventor’s control. Id at 965. The U.S.
Court of Appeals held that the use of a prototype orthodontic device in the
treatment of three patients was not public use, but was experimental. The patients
were not asked to swear to secrecy. The Court held that the inventor’s use of the
orthodontic apparatus on his patients was consistent with experimentation, still
within his control, and not considered a public use. The Court also recognized that
the small number of units produced (three) also indicated an experimental use, as
opposed to a large number which could possibly imply a commercial, and hence,
public use. The Court noted that if an inventor allowed his invention to be used by
other persons generally, regardless of compensation, or to be put on sale for
general use, this would constitute public use. Id at 971.
Conduct that would lead the public to reasonably believe an invention is in
the “public domain” raises a concern of public use. Of particular importance is the
idea that the invention is out of the inventor’s control. One of the underlying
policies considered by the U.S. Court of Appeals involves “discouraging removal

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from the public domain of inventions that the public reasonably has come to
believe are freely available.” Baxter Int’l, Inc. v. Cobe Labs., Inc., 88 F.3d 1058
(Fed. Cir. 2009). In Baxter, the Court held that a scientist’s use of a prototype
centrifuge, prior to it critical date, was public use. Although the scientist
Suaudeau described his use as experimental, the Court held that Suaudeau was not
experimenting with the basic features of the centrifuge, but was merely fine-
tuning it to his own purpose after it had been reduced to practice, out of the
control of the inventor. Id at 1059. “A use may be experimental only if it is
designed to test the claimed features of the invention or to determine whether an
invention will work for its intended purpose.” Clock Spring, 560 F.3d 1325.
Furthermore, the record indicated a frequent stream of people visiting the lab.
These people were not bound by an obligation of confidentiality. The Court held
that these factors, when considered in totality, indicated that the invention was in
the public domain. This was not experimental use, but public use. Baxter, 88 F.3d
at 1059.
When an inventor distributes his invention to members of the public under
circumstances that suggest a near total lack of supervision and control concerning
its use, this suggests that the invention was in public use. Lough v. Brunswick
Corp., 86 F.3d 1122 (Fed. Cir. 1996). In Lough, the inventor of a boat-seal
assembly created six prototypes. He installed the first in his own boat, and
installed the remaining prototypes in boats of his friends. One of these boats was a
demonstration boat at their marina, and was sold. The installations of the
prototypes and the sale of the boat occurred prior to the invention’s critical date.

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The inventor Lough did not know what happened to that boat after its sale, and
did not ask for comments regarding operability of the prototypes in his friends’
boats. In order to establish a potential claim for experimental use, Lough had to
maintain some degree of control and feedback over the uses of the prototypes.
The U.S. Court of Appeals held that these incidents concerning his prototypes
constituted public use. Id. at 1121.
In the case of Telescope Casual Furniture, Inc., the usage of the seat pads
will probably be regarded as experimental. The fact that only five pads were
tested suggests experimental use, as it is a relatively small number of units,
compared to a larger number which might suggest commercial and hence, public
use. Like the orthodontist inventor in TP Labs, Inc, Vanderminden can reliably
testify that this was an indicator that the seat pads were to be used for
experimental purposes.
The fact that Vanderminden checked his seat pads on a daily basis and
made meticulous notes on their condition in the weather also suggests
experimental use. In Elizabeth, Mr. Nicholson the inventor of the wooden
pavement examined the pavement daily and regularly sought feedback from
people regarding its condition. Through the scrupulous daily inspections of his
own seat pads, as well as his weekly requests for feedback regarding Barnes’
pads, Vanderminden became similar to Nicholson. This further supports the
possibility that the use of the seat pads was experimental.
The fact that three of seat pads were in Vanderminden’s furniture in his
own residence, and two were given to Barnes, Vanderminder’s associate, suggests

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that Vanderminden maintained a significant degree of control and feedback over
his invention during the alleged testing period, another indicator of experimental
use. Despite Barnes’ sale of one pad to his neighbor, there is hardly strong
evidence suggesting that the invention was out of Vanderminen’s control, as the
sold seat pad was still accessible to Barnes (and hence, Vanderminden) and
Barnes always received feedback from his neighbor. Barnes even took a new seat
pad to his neighbor and traded it for the original one, further indicating that the
sold seat pad was being tested so that it could be brought to perfect its claimed
features. As previously mentioned, the inventor of the boat-seal assembly in
Lough installed several prototypes in the boats of his acquaintances, did not keep
a record of their conditions, nor sought feedback from the users of the prototypes;
in essence, not keeping control. Unlike the inventor in Lough, Vanderminden
maintained control over his invention and Barnes’ sale of one of his seat pads to
his neighbor was incidental to the experimental process.
But, there is a possibility that the use of the seat pads would be considered
public use. Barnes’ neighbor was under no degree of secrecy regarding the seat
pad. Although in TP Labs, Inc. the Court held that this was not dispositive of the
public use issue, there is a possibility that the neighbor could have let others
generally use it. The fact that Barnes sold the seat pad to his neighbor for $30 (as
opposed to a lower figure when considering the average retail price of a seat pad)
instead of simply giving him the pad suggests a commercial transaction.
Furthermore, Barnes’ neighbor could have let others generally use his seat pad.
Recall that in TP Labs, Inc., the Court noted that if an invention was used by other

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persons generally, or was sold for general use, this would constitute public use.
Using this reasoning, it can be inferred that the sale to the neighbor and the
construed “general use” would likely be considered public use. In response to this,
Vanderminden can argue that the sale was incidental to the experimental process,
and that the nature of the invention required the neighbor to use it in a general
manner to test its durability.
Although there is a possibility that the Court can hold that the use of the
seat pads was public use, it is likely more probable that the use was experimental.
The use of the seat pads was consistent with testing to perfect the claimed
invention features, and this weighs more heavily than the possibility that the use
was public use.
Discussion
b. Was the power-point presentation containing detailed invention features
made sufficiently publicly accessible to count as a “printed publication?”
It is very likely that a court will hold that the power-point presentation was
made sufficiently publicly accessible to qualify as a printed publication. This is
because the availability of the presentation, prior to the critical date, on the FTP
web address and in email communications suggested that it was available to the
public.
A document is regarded as a printed publication upon a reasonable
showing that it has been distributed or made prevalent to an degree that people
interested and ordinarily skilled in subject matter or art, exercising reasonable
diligence, can locate it and understand essentials of the claimed invention without

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need of further research or experimentation. In re Wyer, 655 F.2d 225 (C.C.P.A.
1981). The underling policy behind this is to ensure that the information that is
already accessible to the public cannot afterwards be withdrawn, thus depriving
the public of its free use. Id at 221. The word “printed” has evolved with the
ongoing advances in technology regarding data storage, retrieval, and
dissemination in which a reference may be communicated to the public. It is no
longer necessary that the information is literally printed, handwritten, or on any
particular form of media, as long as the information can be disseminated. What is
essential about the information is the doctrine of “public accessibility,” in
evaluating whether a reference is a printed publication. In re Hall, 781 F.2d 898
(Fed. Cir. 1986).
A document can constitute a printed publication if it is catalogued in a
meaningful way, so as to reasonably infer it is publicly accessible. Id. In Hall, the
U.S. Court of Appeals held that general library cataloging and shelving practices
showed that a single thesis submitted to a university library by Peter Foldi would
have been indexed, cataloged and shelved, and therefore publicly accessible
before the critical date to be deemed a printed publication. Id. at 898.
A document that has neither been catalogued nor indexed in a meaningful
way is likely not publicly accessible and therefore not a printed publication. In re
Cronyn, 890 F.2d 1158 (Fed. Cir. 1987). In Cronyn, a college professor submitted
three student theses to the chemistry department library at his university. The
theses were listed on three out of 450 cards filed alphabetically by author in a
shoebox in the chemistry department library. The U.S. Court of Appeals held that

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the theses had neither been cataloged nor indexed in a meaningful way since the
theses could only be found if the researchers’ names were known, but the names
bore no relationship to the subject of the theses. Id at 1159
A document that remains uncatalogued and unshelved as of the critical
date is not considered a printed publication. In re Bayer, 568 F.2d 1357 (C.C.P.A.
1978). In Bayer, a graduate student submitted a single thesis to his university’s
library, where the invention remained uncatalogued and unshelved prior to its
critical date. Despite the fact it was accessible to three members of the student’s
graduate committee, the U.S Court of Customs and Patent Appeals held that this
thesis was not a printed publication. The Court concluded that, under the
circumstances, the availability of this document to those committee members “did
not raise a presumption that the public concerned with the art would know of (the
invention).” Id at 1361. Despite counterarguments that there could be a possibility
that the information was transmitted to others and hence publicly accessible, the
Court held that there was an extremely small probability of public knowledge of
the invention and was hence publicly inaccessible within the meaning of 35 U.S.C
§ 102(b). Id. Furthermore, the Court notes the distinction between disseminating a
document to persons in general, suggesting public accessibility, as opposed to
communicating a document privately for the use of single persons or of a few
restricted groups of persons, suggesting private communications. Id at 1360.
A document that is presented via oral presentation can constitute a printed
publication if copies of the document are disseminated without restriction. MIT v.
AB Fortia, 774 F.2d 1108 (Fed. Cir. 1985). In MIT, a scientist orally presented a

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research paper regarding cell growth to an audience consisting of 50 to 500 cell
culturists. Before the conference, the scientist gave a copy of the paper to the
conference head and copies were disseminated after the presentation, at the
request of the culturists and without any restriction, to approximately six persons.
These events occurred prior to the paper’s critical date and the U.S. Court of
Appeals held that the dissemination of these copies to those persons interested and
of ordinary skill in the subject matter rendered the paper a printed publication. Id
at 1109.
A document can constitute a printed publication if it is publicly displayed
for a period of time. This is as long as it is sufficiently accessible to raise a
presumption that the public concerned with the art would know of the invention.
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004). In Klopfenstein, a chemist
displayed a printed slide presentation continuously for two and a half days at a
meeting of the American Association of Cereal Chemists (AACC). This
presentation contained fourteen slides and had invention details. Despite
counterarguments that no copies of the presentation were publicly disseminated as
in MIT, or that the display was not later indexed in any database, the Court held
that the presentation was made sufficiently public to be a printed publication. Id at
1350. The Court noted several factors in arriving at its decision: “duration of the
display, expertise of the target audience, existence (or lack thereof) of reasonable
expectations that the material displayed would not be copied, and the ease with
which the material could be copied.” Id. When applying these factors in light of
the fact that the display had been shown to an audience of chemists for a

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significant period of time, the Court concluded that the display was a printed
publication. Id.
In the case of Telescope Casual Furniture, Inc., it is very likely that the
prevalence of the power-point presentation on the FTP web address and in email
communications made the invention sufficiently publicly accessible to be a
printed publication.
Firstly, Ms. Beckett emailed the power-point presentation containing
detailed invention features to Dr. Castle on March 1, 2000, prior to the June 29,
2000 critical date. This email was sent with no agreement to confidentiality and,
despite his possible ethical obligation to maintain secrecy, Dr. Castle had no legal
duty to do so. Ms. Beckett effectively disseminated this document to Dr. Castle,
who is arguably a person of ordinary skill in the art interested in the subject
matter of the patent. In doing so, Ms. Beckett became similar to the scientist in
MIT. Recall that the scientist’s dissemination of his presentation resulted in the
work being counted as a printed publication.
Secondly, prior to the critical date, Ms. Beckett made the power-point
presentation available on the FTP web address for seven days. She provided the
FTP web address to retailers of outdoor furniture (arguably people of ordinary
skill in the art interested in the subject matter) both in presentations and email.
Beckett even provided specific links to documents within the FTP site. An
application of the factors the Court used for its holding in Klopfenstein may
suggest that the power-point presentation was publicly accessible to constitute a
printed publication. For the seven days the presentation was made available, it

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was likely that a person of ordinary skill in the art interested in the subject matter
could have accessed it and possibly even further disseminated it to others. This
information was directly communicated to a target audience who had no
reasonable expectation of confidentiality. By its very nature, a FTP server permits
relatively easy file access. In this medium, almost any user can effortlessly
browse, view and even further distribute files. Like the document in Hall, the file
was arguably catalogued and indexed in a meaningful way so as to infer public
accessibility. Furthermore, the file was not password-protected so as to maintain a
degree of restricted access. It is reasonable to conclude that a person with
knowledge of the FTP server could have easily browsed and downloaded several
documents including the SOFA 2000 presentation, thus rendering the presentation
as publicly accessible. Even if a person did not have knowledge of the FTP server,
the fact that the FTP site was commonly referenced on Google Groups suggests
further public accessibility since users with no direct knowledge of the FTP site
could simply search under specific interests e.g. “furniture,” locate the site and
eventually, the SOFA 2000 presentation. This is especially possible when the
folder containing the presentation was also labeled “furniture.”
Beckett can argue that her email correspondence to Dr. Castle was a
private communication and not intended to persons in general. In Bayer, the Court
noted that the instance of private communication does not suggest public
accessibility. But, there was no agreement of confidentiality and, as previously
mentioned, Castle had no legal duty to keep the file secret and could have further
disseminated the information.

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Beckett can argue that the FTP site was not catalogued in a meaningful
way and that the SOFA 2000 file was not publicly accessible. In her email to Dr.
Castle, she attached the file and also included the specific web address of the file.
In the other instances where she provided the FTP web address to retailers, she
did not specifically give the file location of SOFA 2000; in fact, she provided
links to other documents. Depending on factors such as the number of files
present in the various folders, a person exercising reasonable diligence may or not
be able to specifically access the SOFA 2000 file with ease sufficient to raise a
presumption that the public concerned with the art would know of the invention.
In this instance, there may be a relatively small probability of public knowledge,
like the Court held in Bayer.
While the Court can possibly hold that the SOFA 2000 presentation was
not sufficiently publicly accessible, it is still more probable that the facts weigh
more heavily toward public accessibility to render the document as a printed
publication. It is especially likely in light of the fact that the FTP site was
commonly referenced on the popular Google Groups.