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Concealment judgement requires ‘designed intent to withhold’July 14, 2006

In a recent case, the Federal Circuit discussed the requirements to distinguish concealment of an invention in violation of the patent laws. The patents at issue related to keyboard positioning systems, one in particular that allowed users to adjust a keyboard to a backward tilted position.One patent covered a clamping system to hold the keyboard in place and the other a tray system with sidewalls to perform the same function. Steelcase sold similar products, some of which were found non-infringing because they lacked sidewalls. Steelcase stipulated it infringed the clamping system patent, but contended that it developed the invention first. This ultimately gave rise to the most important issue of the case: did Steelcase suppress or conceal its invention in violation of the patent laws? If it did, it was liable as an infringer; if not, the patent was invalid because Steelcase developed its design first.The District Court found no suppression or concealment and held the patent invalid. On appeal, Flex-Rest argued that Steelcase had spent seven months drafting its patent, during which time it kept its device a secret. During this time, Steelcase did not make any improvements to the invention, but instead was saving public disclosure for an upcoming trade show. Flex-Rest, relying on a prior case for the proposition that three months is a reasonable amount of time to prepare a patent application, argued that seven months was unreasonable and provided at least an inference of suppression sufficient for the jury to decide the issue. The Federal Circuit did not agree. First, it stated intentional suppression requires more than just the passage of time. There must be evidence of a ‘designed intent’ to delay filing a patent application or commercializing the invention in order to prolong the period the inventor withholds the invention from the public. The court found Steelcase’s secrecy prior to the trade show did not provide evidence of concealment because Steelcase was working toward commercialization at that time by purchasing manufacturing equipment to produce the keyboard systems. Second, the court stated that there is no length of time that is per se unreasonable. Instead, each case must be considered on its own particular set of facts. The court noted a prior case that held a delay of over two years between the reduction to practice and the commercialization of an invention did not constitute suppression where the inventor made ‘reasonable efforts to bring the invention to market’ (and by doing so ‘to the public’). Therefore, the court held that there could be no inference of suppression because there was evidence that Steelcase took reasonable steps to bring its device to market, and that circumstances were such that it could not have brought its device to market much sooner than it did. The message to be taken is that it is acceptable to spend time taking an invention from the point of reducing it to practice to the point of bringing it to market, so long as reasonable steps are taken to accomplish this. However, the court has held in the past that delayed filing of a patent due to commercialization efforts or improvements not reflected in the patent application are inexcusable. Furthermore, inventors who spend unreasonable amounts of time given the circumstances, thereby profiting from their delay and harming the public through lack of disclosure, will be found to have suppressed or concealed their invention and forfeit any right they may have had to a patent. * McKee, Voorhees & Sease, P.L.C. represented Flex-Rest, LLC in this case.

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