Hurricane Shooters Defendant Toasts Court's Ruling That Its Section 102(g) Prior Invention Defense Survives Summary Judgment

September 15, 2011

Plaintiff Hurricane Shooters, LLC sought summary judgment of no invalidity on Defendant's defenses of prior inventorship under Section 102(g) and lack of utility under Section 101. The patents-in-suit involve drinking cups for serving mixed drinks in bars and restaurants having a plural chamber that optimizes the mixing of fluids as they are simultaneously poured while minimizing interference with the nose of the drinker.

Defendant's invalidity defense was based on a plural chamber "bomb cup" invented by a competitor. Rejecting Plaintiff's evidence of an earlier date of invention in August 2004 consisting only of the uncorroborated inventor's testimony, Plaintiff's inventors' evidence showed that they invented their plural chamber cup in November of 2004. Defendant, however, presented evidence that its plural chamber cup was invented in October 2004. The Hurricane Shooters court was faced with the issue of whether Defendant's evidence of an earlier invention was sufficient to survive summary judgment.

The Court began by recounting the invalidity defense under Section 102(g), which states that "[a] person is entitled to a patent unless...(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it." The statute further states that "[i]n determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

Turning to the Plaintiff's motion, the Court found that the Defendant "has shown a genuine issue of material fact on the issue of whether in October 2004, [the "bomb cup" inventor] designed what appears to be the same cup patented by Plaintiff, which, if believed by a finder of fact, could provide clear and convincing evidence of the patent's invalidity." In addition to the "bomb cup" inventor's testimony that he designed the cup in October 2004, the Defendant's expert stated that he had no reason to doubt this testimony and relied on two electronic files constituting images of the bomb cup that, according to the file date and time, were last modified on October 22, 2004, i.e., about the same time that the bomb cup inventor claimed he designed his invention. The Court held that this evidence was sufficient to raise a genuine issue of material fact on the Defendant's prior invention defense and thus defeat Plaintiff's motion for summary judgment of no invalidity.

The Court also denied Plaintiff's motion for summary judgment on Defendant's defense of invalidity based on Section 101. The Court relied on the Defendant's expert's testimony that the invention lacked utility because the patents merely contain mathematical formulae and process steps "which do not form structural elements as the basis for a statutory invention under 35 U.S.C. ยง 101 as a useful article of manufacture, thus lacking utility." The Court further relied on a number of contradictions in the patents' claimed utilities of nesting, overpouring, and enhanced shots.

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This case illustrates the importance of maintaining product development records. With such records available as corroborating evidence, a company may be able to rely on its first invention as an invalidity defense under Section 102(g) to invalidate a patent covering the accused product, provided the company invented its product before the patentee.

Hurricane Shooters, LLC. v. EMI Yoshi, Inc., Case No. 10-CV-762-T-30AEP (M.D. Florida Sept. 8, 2011)

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