                 NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
                   is not citable as precedent. It is a public record.

 United States Court of Appeals for the Federal Circuit

                                        05-1425


                        BENNETT REGULATOR GUARDS, INC.,

                                                       Plaintiff-Appellant,

                                            v.

                         CANADIAN METER COMPANY, INC.
                         and AMERICAN METER COMPANY,

                                                       Defendants-Appellees.

                           __________________________

                           DECIDED: June 19, 2006
                           __________________________


Before MAYER, SCHALL, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST. Dissenting opinion filed by Circuit
Judge MAYER.

PROST, Circuit Judge.

      Bennett Regulator Guards, Inc. (“Bennett”) sued Canadian Meter Co., Inc. and

American Meter Co. (collectively “Meter”) alleging that Meter’s Splash Guard product

infringed claims 1, 2, 5 and 6 of Bennett’s U.S. Patent No. 5,810,029 (the “’029 patent”).

Meter defended by contending that it already had developed and publicized the Splash

Guard prior to Bennett’s efforts to obtain a patent and that these acts invalidated the

’029 patent by anticipation under 35 U.S.C. § 102(a) and (b). The district court agreed

and granted Meter’s motion for summary judgment of invalidity. On appeal, we find that
genuine issues of material fact exist as to whether Meter’s activities relating to the

Splash Guard anticipate the ’029 patent and, therefore, the grant of summary judgment

was improper and we vacate the judgment and remand.

                                            I.

      The ’029 patent owned by Bennett issued in 1998 from an application filed June

16, 1995 and claims a spray cover for a natural gas regulator pressure valve. The

spray cover prevents the gas regulator valve from failing due to ice formation. Bennett

contends that the invention was completely designed as of late July or August 1994.

      The defendants are two affiliated companies, Canadian Meter and American

Meter, that manufacture gas equipment. One of their products is the Splash Guard

protector for gas regulators. On February 2, 2004, Bennett filed an action for patent

infringement in the Northern District of Ohio against Meter alleging that Meter’s Splash

Guard product infringed claims 1, 2, 5, and 6 of the ’029 patent. At the district court,

Meter raised the defense that the ’029 patent was invalid for anticipation under 35

U.S.C. § 102(a) and (b) which state that

      [a] person shall be entitled to a patent unless--

      (a) the invention was known or used by others in this country, or patented
      or described in a printed publication in this or a foreign country, before the
      invention thereof by the applicant for patent, or

      (b) 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,
      or . . . .

35 U.S.C. § 102 (2000) (emphases added). Meter alleged that its own activities relating

to the Splash Guard anticipated Bennett’s patent. Specifically, in the 1980s, Meter

began searching for the cause of a few catastrophic failures of gas regulating valves.



05-1425                                     2
As a result of that research, Meter realized that the old style regulators had

malfunctioned when, during freezing conditions, water splashed and subsequently froze

onto the screens of the regulators. Canadian Meter then developed a product called the

Splash Guard that kept water from splashing up onto the screen and thereby prevented

malfunctioning due to ice formation. While Meter never patented its Splash Guard, in

the early 1990s, Meter undertook a number of activities relating to its Splash Guard

product. These efforts are the factual basis for Meter’s theories of anticipation upon

which Meter filed a motion for summary judgment of invalidity.1

       Meter contended that the patent was anticipated by its prior publication and prior

offer for sale. The district court did not grant the summary judgment motion on these

first two theories (i.e., printed publication and offer for sale) because it concluded

Bennett had raised a genuine issue of material fact underlying each of those theories.

       The district court did grant the motion for summary judgment as to Meter’s last

two theories, namely that the patent was anticipated by prior public use and public

knowledge.    First, Meter contended that, in October 1991, it conducted regulatory

testing of the Splash Guard with the Canadian Gas Association (“CGA”) in Nebraska

City, Nebraska to certify that the Splash Guard met CGA safety standards. The testing

was evidenced by affidavits describing the tests, by memos discussing the tests, by the



       1
              In this case, the accused infringing device, the Splash Guard, is also the
device that allegedly provides the anticipatory use or knowledge. Thus, absent a
dispute as to whether the complete Splash Guard device was involved in the
anticipatory act, we agree with the district court that “[w]hen the anticipatory reference is
the accused product, the Defendant’s burden [of showing that the anticipatory reference
contains each and every claim element] is satisfied by the Plaintiff’s infringement
allegations in the Complaint that the accused product embodies the claimed invention.”
Bennett Regulator Guards, Inc. v. Canadian Meter Co., No. 1:04-CV-177, slip op. at 9
(N.D. Ohio May 10, 2005).


05-1425                                      3
certificate resulting from the CGA testing, and by the test results. Meter contended that

the testing was not confidential and was accessible to the public and therefore the

Nebraska City testing of the Splash Guard constituted an anticipatory public use under

35 U.S.C. § 102(a) and (b).

      Second, Meter contended that the Splash Guard was publicly known in the

United States, and thus anticipated under 35 U.S.C. § 102(a).          In support, Meter

submitted statements from employees attesting to their knowledge of the Splash Guard

product demonstrating, according to Meter, that the Splash Guard was known in the

United States. The statements also state that Meter’s knowledge about the Splash

Guard was publicly accessible. Furthermore, Meter submitted a letter sent to the Bay

State Gas Company, another letter to the Vermont Gas Company, and an inter-office

memo. The letters tell the gas companies that Meter would be “pleased to offer any

information [they] may require” regarding the Splash Guard. The inter-office memo

asks American Meter to relay customer feedback regarding the Splash Guard. Meter

contended that these documents evidence that American Meter’s knowledge about the

Splash Guard was publicly accessible and therefore the ’029 patent is invalid due to

anticipation by public knowledge under 35 U.S.C. § 102(a).

      As to these last two theories, the district court found that Meter presented clear

and convincing evidence that the Splash Guard was both publicly known and used prior

to the earliest potential date of invention for the ’029 patent. First, the district court

found that the CGA 1991 testing of the Splash Guard in Nebraska City, Nebraska, was

a corroborated public use. Reinforcing the testimony relating to the testing, the district

court held that “the certification document not only demonstrates public use, but also




05-1425                                     4
corroborates the other documents and statements referencing the Nebraska City

testing.” Bennett Regulator, slip op. at 13. Second, as to public knowledge, the district

court held that “[t]here can be no dispute that the claimed invention, embodied in the

Splash Guard product, was known ‘in this country’.           [Bennett] cannot argue that

Defendant American Meter lacked knowledge of the accused product. . . . The issue,

therefore, is whether the Defendants’ knowledge . . . was ‘public.’” Id., slip. op. at 11.

The district court found that the letters from Bay State Gas Company and Vermont Gas

Company along with an inter-office memo demonstrated that Meter’s knowledge about

the Splash Guard was not secret or confidential. The district court concluded that “the

corroborative documentary evidence of public knowledge . . . is substantial and

constitutes clear and convincing evidence of invalidity.” Id., slip. op. at 14. As a result,

the district court granted Meter’s motion for summary judgment of invalidity. Bennett

appealed and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                             II.

       We review a district court’s grant of summary judgment of invalidity de novo.

Baxter Int’l, Inc. v. COBE Labs., Inc., 88 F.3d 1054, 1058 (Fed. Cir. 1996) (citing Conroy

v. Reebok Int’l, Ltd., 14 F.3d 1570, 1575 (Fed. Cir. 1994)). “Summary judgment is

appropriate when there is no genuine issue as to any material fact and the moving party

is entitled to judgment as a matter of law.” Id. at 1057 (citing Fed. R. Civ. P. 56(c);

Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77 (Fed. Cir. 1989)). “In determining

whether there is a genuine issue of material fact, we view the evidence in the light most

favorable to the party opposing the motion, with doubts resolved in favor of the

nonmovant.” Id. (citing Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274 (Fed.




05-1425                                      5
Cir. 1995)). “Challenges to the validity of claims, whether regularly issued [or] issued

after a reexamination pursuant to 35 U.S.C. §§ 301-307 . . . must meet the clear and

convincing standard of persuasion.” Superior Fireplace Co. v. Majestic Prods. Co., 270

F.3d 1358, 1367 (Fed. Cir. 2001) (citing Kaufman Co. v. Lantech, Inc., 807 F.2d 970,

973-74 (Fed. Cir. 1986)).

      Bennett appeals the granting of summary judgment for anticipation under both

public use and public knowledge. Under § 102(a), “in order to invalidate a patent based

on prior knowledge or use, that knowledge or use must have been available to the

public.” Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir.

1998). Similarly, “when an asserted prior use is not that of the applicant, § 102(b) is not

a bar when that prior use or knowledge is not available to the public.” Id. at 1371.

Thus, under either § 102(a) or § 102(b), the prior use must be a public use and under

§ 102(a) the knowledge must be public knowledge. Bennett argues that the district

court erred because genuine issues of material fact exist as to whether there was an

invalidating public use of the Splash Guard and whether there was invalidating public

knowledge of the Splash Guard. We address each of these issues in that order.

                                            A.

       Bennett contends that, as to the public use of the Splash Guard, it raised a

genuine issue of fact as to the public nature of the Nebraska City testing and that there

is a genuine issue of fact as to whether the product tested in Nebraska City possessed

each and every element of the asserted claims in the patent.          In response, Meter

contends that its testing of the Splash Guard in Nebraska City with a team from the

CGA was not confidential. Meter contends that the CGA was under no obligations to




05-1425                                     6
keep information about the Splash Guard secret and therefore the testing constitutes a

public use under § 102(a) or (b). Further, Meter contends that the complete Splash

Guard was tested in Nebraska City and therefore there is no question as to the identity

of the public use in regards to the claim elements.

       We conclude that there exists a genuine issue of material fact as to the public

nature of the testing in Nebraska City. As pointed out by Bennett, a Vice President from

Meter testified that “I believe in my opinion, the Canadian Gas Association views [the

CGA testing] as being proprietary.” Read in the light most favorable to Bennett, this

testimony raises a genuine issue of material fact as to the publicness of the Nebraska

City testing.

       Furthermore, there exists a genuine issue of material fact as to whether the

device used in the Nebraska City testing contained each and every element of the

asserted claims.   In particular, there is a question as to whether the tested device

included the baffling means element required by the claims. Bennett highlights that an

inter-office memo by Meter stated that the Nebraska City tests were performed “with the

prototype . . . vent shield, and no device or screen installed.” Bennett argues that this

memo creates a genuine issue of fact as to the identity of the tested device. Bennett

points to Meter’s drawings it submitted to the CGA. In those drawings, the “Vent Shield”

is only the outer skirt of the Splash Guard without the baffling insert. Because the

memo suggests that only the Vent Shield was tested, Bennett argues that the memo

demonstrates that the device tested in Nebraska City cannot anticipate as a prior use

because the tested device did not contain a baffling means as required by the claims.

Although it is not clear what device was tested, the memo does create a genuine issue




05-1425                                     7
of fact as to whether the device tested in Nebraska City met the claim limitation

requiring “a baffle means.”    Thus, the Nebraska City testing cannot, on summary

judgment, support a judgment of invalidity.

                                              B.

       There is also a genuine issue of fact underlying Meter’s theory of anticipation via

35 U.S.C. § 102(a) public knowledge. There is little dispute that American Meter knew

about the Splash Guard. In other words, the Splash Guard was known in the United

States prior to the ’029 invention date because American Meter certainly knew about its

own product. Rather, the parties dispute whether that knowledge was accessible to the

public as required by our caselaw. In support of its contention that its knowledge was

publicly known, Meter submitted affidavits and testimony describing its efforts at

contacting customers in the United States regarding the Splash Guard highlighting that

it did not attempt to keep information about the Splash Guard secret and confidential

from the public.

       As described above, under § 102(a), knowledge must be publicly accessible. In

support of its grant of summary judgment of invalidity as to public knowledge, the district

court primarily relied on two pieces of evidence. First, the district court relied on a

memorandum sent from Canadian Meter to American Meter that referred to the transfer

of forty units of the Splash Guard product and that asked for “future requirements and

customer feedback” as to the Splash Guard. Because it referenced customer feedback

in regards to the Splash Guard, Meter argues that this memorandum shows that Meter

was making its knowledge of the Splash Guard publicly accessible. Second, in March

of 1992 and April of 1994, Meter sent letters to the Vermont Gas Company and to Bay




05-1425                                       8
State Gas Company respectively, telling these gas companies of the Splash Guard.

Both letters concluded by stating that the gas companies could contact Meter for “any

information you may require” about the Splash Guard. Meter argues that these letters

evidence that it was not keeping the Splash Guard secret and Meter’s knowledge about

the Splash Guard was accessible to the public. Meter argues that the district court

properly granted the motion for summary judgment based on these documents.

      However, in our view, there does exist a genuine issue of fact as to whether

Meter’s letters and memos establish that Meter’s knowledge was accessible to the

public. As argued by Bennett, the reference in the letters to “any information you may

require” or the reference to customer feedback could be taken to mean a wide variety of

things relating to the Splash Guard—“prices, product availability, or lack thereof, test

results, expected standards to be enacted in the United States, etc.” Certainly the letter

and memo do suggest that Meter intended to publicize the Splash Guard but, in the light

most favorable to Bennett, it does not establish that Meter intended to make its

technical knowledge about the structure and function of the Splash Guard publicly

accessible. One can publicize that a new product exists while still keeping an enabling

disclosure of the structure and function of the product secret. Thus, when viewed in the

light most favorable to Bennett, the internal memorandum asking for “customer

feedback” or the letters to customers offering “any information you may require” do not

establish by clear and convincing evidence that Meter’s knowledge about the Splash

Guard was accessible to the public. Rather, there exists a genuine issue of material

fact as to the public accessibility of Meter’s knowledge of the Splash Guard and it

cannot properly support summary judgment of invalidity.




05-1425                                     9
                                            III.

      When viewed in the light most favorable to Bennett, summary judgment was not

properly granted. There exist genuine issues of material fact as to the confidentiality of

the Nebraska City testing and the identity of the product tested there that preclude a

finding of a public use. Further, when all inferences are drawn in favor of Bennett, the

memorandum and letters are not enough to establish that Meter’s knowledge of the

Splash Guard was accessible to the public. Therefore, we find the grant of summary

judgment was improper and we vacate the judgment and remand for further

proceedings consistent with this opinion.




05-1425                                     10
               NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is
               not citable as precedent. It is a public record.

      United States Court of Appeals for the Federal Circuit



                                         05-1425


                       BENNETT REGULATOR GUARDS, INC.,

                                                         Plaintiff-Appellant,

                                             v.

                         CANADIAN METER COMPANY, INC.
                         and AMERICAN METER COMPANY,

                                                      Defendants-Appellees.


MAYER, Circuit Judge, dissenting.

       Because the record establishes by clear and convincing evidence, even after all

reasonable inferences are drawn in Bennett’s favor, that Meter’s knowledge of its

Splash Guard product was available to the public in this country prior to the critical date

of Bennett’s invention, see Woodland Trust v. Flowertee Nursery, Inc., 148 F.3d 1368,

1370 (Fed. Cir. 1998) (setting forth the standard for invalidating a patent based on

public knowledge under 35 U.S.C. § 102(a)), I dissent.

       In order to provide the appropriate context for this conclusion, some additional

facts are necessary. To begin, Meter alleges, and Bennett does not dispute, that it

attached a sketch of its device to the letters it sent to the Vermont Gas Company and

the Bay State Gas Company. Indeed, the attachment is specifically referenced in the

March 1992 Vermont letter: “A sketch of these devices has also been attached for your
reference.” The attachment is the same drawing included in the April 1992 “Quality

Communique” that Meter sent to Canadian gas companies and American Meter offices

in the United States, announcing regulatory approval of its device. The “communique”

describes this sketch as “an engineering drawing . . . [showing] the size and location of

the new Canadian Meter splash guard attached to a 1213B Domestic Regulator.” In

addition to demonstrating the position and relative size of the device in a regulator, it

provides a view inside the device, showing the placement and relative size of the vent

screen and the guard, or “baffling,” insert. Along with the molded-plastic shell or casing,

the screen and the guard are the only additional elements in the device. While I agree

with the trial court that questions of material fact exist as to whether this document is

enabling, and therefore an invalidating printed publication under 35 U.S.C. §§ 102(a) or

(b), its distribution to American and Canadian gas companies establishes that by 1994,

far from attempting to keep details about its device secret, Meter was actively

publicizing them.

       Next, Meter alleges that during sales tours in 1992-93, it showed its device and

informational literature to American gas companies in the Atlanta and Great Lakes

regions.   Bennett Regulator Guards, Inc. v. Canadian Meter Co., No. 1:04-CV-177,

2005 WL 1123524, at *2 (N.D. Ohio May 10, 2005). To corroborate this activity, Meter

introduced a July 1992 cover letter attached to 40 samples of the device. The letter and

the devices were sent by Canadian Meter’s Quality Assurance and Technical Support

Manager (the employee who designed the Splash Guard product) to American Meter’s

Vice President and General Manager of the North American Service Group.               The

American Meter employee who testified that he conducted the Great Lakes sales tours




05-1425                                     2
was copied on the letter.         Moreover, it concluded, “[p]lease advise of future

requirements and customer feedback.” While this evidence does not conclusively prove

that Meter did in fact show its device to American gas companies in 1992-93, it

demonstrates that Meter intended to show its product to the public, i.e., that its product

was publicly available and not secret.

       In the abstract, it is true that, “[o]ne can publicize that a new product exists while

still keeping an enabling disclosure of the structure and function of the product secret.”

Ante at 9. Here, however, corroborated testimony shows at a minimum that Meter

disclosed the structure and function of its device in the United States and intended to

distribute samples of its product in the United States. Plainly, its invalidating knowledge

was available to the public.




05-1425                                      3
