Gonzo Said It Was So, But That Wasn’t “Convincing.”

In this realm of patent trolls, reformers and generics, I find refreshment in a patent infringment suit between Diamond Heads and an infringer “also known as GONZO.”  Added to my refreshment is that the patent is in the art of custom engraved motorcycle engine heads, which were more particularly pointed out and distinctly claimed as a “fin structure” with “one intagliated region comprising at least two concavities of a preselected configuration.”  USP #6,626,134.  More simply, that means if you ‘preselect’ a configuration of two diamonds in the eye-sockets of a skull, then that can be engraved on the heads of your chopper’s engine.

In Briton v. Loggans, a/k/a Gonzo, 04CV177 (M.D. Tenn.), defendant Gonzo wanted to offer his testimony, and others, that he had seen the customized fins in public more than one year before the filing date of the patent, and to offer a page from a 1970 Chopper Magazine.  One witness recalled a “photograph of a motorcycle ..in a magazine in approximately 1963 or 1964 …but he does not recall the name of the magazine.”  The patentee move in limine to exclude what Gonzo would say and show.

What can a patentee do when faced with anecdotal testimony about a prior public use, offered to invalidate under §102(b)?  You can worry a lot, but the Gonzo case offers some guidance on how to deal with it. 

First, I never would want to scare our younger readers, but sometimes a P.I. or a party’s employee will come forward with a witness whose recollection of seeing the claimed combination, in public, somewhere, is totally mistaken, or just made-up.

These witnesses, who often are present or past business associates of party, or who want that association, will tell a tale that is broad enough to cover the point, and as thin as a stain and as hard to wash away.  They will say they were in a shop, or at a show, or that in a photo or a catalog they saw an embodiment of the invention, with each element as claimed and connected.  BUT, they can’t remember exactly where, or whose catalog it was, or such details.  Still, they will swear on the Good Book that they saw it, in public, more than one year before the effective filing date of the patent.  This can present you with the case where you may get to show that you are a cross-examiner as talented as in Rumpole of the Bailey, or Inherit The Wind.  A document can be challenged on its face, but a ‘convenient’ witness only can be challenged face-to-face.  Well, maybe not, a motion may do it.

The Judge in Nashville refused to exclude the evidence, but ruled that the uncorroborated testimony and the “unclear and too vague” Chopper magazine were “insufficient to meet the clear and convincing standard” to invalidate for a prior public use.  He relied on long-standing precedent in The Barbed Wire Case, known fully as Washburn & Moen v. The Beat`Em All Barbed Wire Co., 143 U.S. 275 (1892).  It holds that uncorroborated oral evidence about prior public use either should be precluded, or if admissible, should be insufficient to invalidate a patent.

Many well-stated barbs against uncorroborated testimony, from cases after The Barbed Wire Case,  are collected in Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998).  It sets out eight factors that “can be described as application of a ‘rule of reason’ to the corroboration requirement” for oral testimony that is offered to invalidate.  Among the nuggets of wisdom from the collected cases are, “With the guidance of precedent, whose cautions stressed the frailty of memory of things long past and the temptation to remember facts favorable to the cause of one’s relative or friend, we conclude that this oral evidence, standing alone, [does] not provide the clear and convincing evidence necessary to invalidate a patent on the ground of prior knowledge and use under §102(a).”

As applied to case circumstances today, the “Supreme Court’s view of human nature as well as human recollection, whether deemed cynical or realistic, retains its cogency.”  In other words, no one has invented anyting new for telling what is the truth. 

“Through all the verbal variances, however, there runs this common core of thought and truth, that one otherwise an infringer who assails the validity of a patent fair upon its face” still has to prove invalidity, rather than just finding someone will to say the right words.  Perhaps Gonzo was correct, but without hard evidence to corroborate the testimony, the proffer was inadequate.  Thus, the patentee obtained a summary judgment of infringement, and could stop worrying that others may earlier have “intagliated” preselected “concavities” on chopper head fins.