*1 1996) (rel. (“Interfer- supra, § “ordinary and com according 29.60[6] to their tracts performance not ence with the contractor’s is Corp. accepted meaning,” Brunswick monly generally differing considered a site condi- (Fed.Cir. States, 334, 951 F.2d v. United tion.”). by govern- interference the While 1991), vantage point do so from the we also a access to work ment with contractor’s the prudent’ contractor.” of a ‘“reasonable may govern- breach of the site constitute a Majfei, at 917. a contrac 732 F.2d Such P.J. duty cooperate, government to ment’s long familiar with the tor would have been responsible third-party not actions such Differing standing limitation on Site Condi delay as labor strikes contractor’s existing when clause to conditions tions performance, specific absent contractual Moreover, we are contract was executed. Constr., provision. See McNamara Ltd. Therefore, by consistent precedent. bound States, United Ct.Cl. precedent, we hold that the Court of with our (1975). Olympus points Because to interpreting did not err Federal Claims provision no of the contract that im- would apply Differing Conditions clause to Site pose responsibility upon govern- such existing time of only to conditions at the ment, it that it is to has shown entitled contracting. equitable adjustment an for costs associated delays by caused the Textron strike. Having interpreted Differing Site apply only to conditions Conditions clause Olympus solely on Because relies its inter- executed, existing when the contract was we pretation Differing Site Conditions Clause, Olympus’s specific Olympus adopt, claims. which we do not we address need government’s remaining argu- address the equitable adjustment upon seeks an based ments. by delay caused the soil contamination. undisputed pipe, it is that the oil CONCLUSION contaminants, source of the was not sole May nearly Differing Conditions clause did open cut until ten weeks after Site Therefore, government not shift -to the the costs of the the contract was executed. delays associated with either the soil contam- Olympus soil was not contaminated when Accordingly, ination or the strike. the Court delay, by the contract. This caused executed holding of Federal Claims did not err physical an adverse condition which arose provided Olym- the clause no foundation for only performance began, after was not sub pus’s equita- claim that it was entitled to an ject Differing Site Conditions clause. adjustment, ble and we affirm its decision. entitled, Olympus Accordingly, was not un clause, Differing AFFIRMED. der the Site Conditions equitable adjustment delay for the caused by the soil contamination.
Olympus equitable also ad seeks
justment delay upon based caused undisputed It
Textron strike. SEAL-FLEX, INC., Plaintiff-Appellant, begin until strike did not several the contract weeks after was executed and Thus, proceed Olympus the notice to issued. AND ATHLETIC TRACK COURT CON- Differing is likewise not entitled under the STRUCTION, Defendant/Cross-Ap- adjust equitable Site Conditions clause to an pellant. delay ment for the caused the strike. Nos. 95-1160. temporal In addition to the limita Appeals, United States Court tion, principally on which we base our deci Federal Circuit. sion, Differing it is also clear that the Site Oct. 1996. applies only “physical” Conditions clause site, at the work not to actions of conditions deny
third-parties the contractor access McBride, generally
to the work site. See *2 Young, Young,
Thomas N. MacFarlane & Wood, P.C., MI, plaintiff- Troy, argued, for brief, appellant. him on the was Donna With Berry. L. Perry, Reising, Ethington, Bar-
Owen E.
MI, argued,
Perry, Troy,
for defen-
nard &
brief,
dant/cross-appellant.
him on the
With
Richard
Hoffman.
W.
RADER,
NEWMAN,
Before
BRYSON,
Judges.
Circuit
Opinion for
court filed Circuit
opinion,
Judge
Separate
NEWMAN.
concurring
part
concurring
result,
Judge
filed Circuit
BRYSON.
NEWMAN,
warranty
Judge.
gave an extended
for the
due
Circuit
PAULINE
uncertainty
general
as to how the
Seal-Flex,
summary judg-
appeals the
Inc.
perform under conditions of use
track would
District Court
the United States
ment of
of Kansas weather.
the extremes
Michigan1 invalidat-
District of
the Eastern
*3
4,474,833
Patents No.
ing
States
Through
United
of 1981 and the fol-
the summer
(the
(the
4,529,622
and No.
’622
patent)
’833
regularly
lowing winter Maxfield
visited the
“Method for Construct-
patent), both entitled
samples
He took
of the track to
Beloit site.
assigned to
Surface” and
ing All-Weather
enduring
how it was
the weather
determine
invalidation was based on
The
Seal-Flex.
cycles and the
of use
the Beloit
conditions
102(b).
Ath-
of 35 U.S.C.
the on-sale bar
Maxfield
High School athletes.
stated
(ATCC)
Construction
letic Track and Court
spring
by the
of 1982 he was satisfied
request for
cross-appeals the denial of its
August
performance of the track. On
attorney fees.
filed,
patent application
and
1982 his
was
duly
patent.
the ’833
The ’622
issued as
summary judgment of
We conclude
continuation-in-part
is a
of the ’833
improperly granted.
invalidity
patent.
1 of the ’622
summa-
Claim
and the matter is re-
judgment is reversed
method:
rizes the
proceedings. The dis-
for further
manded
attorney
constructing
af-
of
fees is
1. A method for
an
trict court’s denial
comprising
steps
firmed.
mat over a foundation
of:
BACKGROUND
spreading
asphaltic
coating
tack
over
surface;
the foundation
inventor,
Maxfield,
Marvin
spreading
layer
partic-
a first uniform
of
He
inter-
asphalt paving business.
became
coating;
tack
ulate rubber over the
in
structure of all-weather athletic
ested
track,
experimented
running
and
with vari-
spreading
asphaltic coating
a second
formulations,
composition
track
their
and
rubber;
ous
layer
over the first
of
Maxfield, in
In 1979
method of installation.
spreading
layer
par-
uniform
of
second
(also
Paving
Rit-
association with Ritchie
Co.
asphaltic
ticulate rubber over said second
Track,
“Ritchie”),
all
chie Tennis &
herein
coating;
running
Derby
at
an outdoor
installed
then,
sequence,
applying liquid
in
first
Wichita,
Derby
High
in
Kansas. The
School
containing styrene
and
mixture
butadiene
required
repairs
installation
extensive
after
preceding
layers
rubber
in
water
winter;
the first
Maxfield called it “the Der-
substantially
quantity to coat
all
sufficient
by High
disaster.”
School
layers,
particles
rubber
of said
improving
Maxfield continued to work on
drying
applied
then air
mixture un-
said
methods,
and in the fall
his formulations
visible,
substantially
liquid
til
no
of 1980he and Ritchie undertook to install an
spreading
succeeding
then
uniform
Beloit,
in
High
athletic track at Beloit
School
layer
particulate
uniformly
of
rubber
over
Kansas, using
proce-
a new formulation and
layers;
preceding
developed
light
that Maxfield had
in
dure
continuing
sequential ap-
the aforesaid
repairs
Derby.
the failures and
Maxfield
plication
styrene
and water
butadiene
spread
layers
asphaltic
had
two
emulsion
mixture,
drying
spreading
air
of uni-
for the Beloit track when the
rubber
layers
approxi-
form
of rubber until the
began to flake and chalk. This was
mixture
mat
mate desired thickness for the
weather,
to the cold
and construc-
attributed
achieved; and
suspended
Installa-
tion was
for the winter.
sealing
applying
in March
and com-
a coat of
material
tion was resumed
over
layer
particles.
pleted May
top
Maxfield stated that he
of rubber
1981.
Seal-Flex,
(E.D.Mich.1994).
1.
Inc. v. Athletic Track and Court Con-
struction,
F.Supp.
U.S.P.Q.2d 1676
judgment
mercially
The court held that
feasible.”
ATCC moved
patented
patented
invalidity
ground that
method had been
“[b’Jecause
on the
public
use and had
extensively developed
had been
at the time the offers
sold,
High
made,
on the Beloit
based
the court determines that
been
were
charged
Alternatively,
sufficiently
ATCC
complete
installation.
invention was
as to in-
on sale based on cer-
the invention was
voke
on-sale bar.” Seal-Flex states
employee
Roth-
of Ritchie
Joe
standard,
tain activities
legal
and that
this was
incorrect
shortly
completion of installation of
after
well
on the correct standard
before the
the Beloit track
granted.
should not have been
(one
year
August
“critical date”
date).
filing
patent’s
’883
before the
DISCUSSION
*4
use
respect
public
to the asserted
With
Summary judgment may
granted
be
when
court denied
sale at Beloit the district
and
question
dispute,
fact
in
no material
is
summary judgment, holding that “based on
Inc.,
Liberty Lobby,
477
Anderson v.
U.S.
here,
deter-
presented
the court
the evidence
251-52,
242,
2505, 2511-12,
106 S.Ct.
91
question
over
that a factual
remains
mines
(1986),
it
that
L.Ed.2d 202
or when
is shown
high
track
school
the sale of the
to
whether
prevail
can not
on
the nonmovant
its version
invalidating
or an
in Beloit was an
event
facts,
rendering a trial
thus
futile. See
ruling
ap-
experimental sale.” That
Matsushita Elec. Industrial Co. v. Zenith
pealed,
appealable.
and is not
587,
574,
Corp., 475
106
Radio
U.S.
S.Ct.
However,
the district court held that
(1986) (the
1348, 1356,
pur
1323 track does not become a of use is a imental athletic actual conditions nation under completed steps See Manville invention because taken to be considered. circumstance USPQ2d at Sales, potential 16 to interest customers. The stan- F.2d (“In by whether “sufficiently complete,” applied order determine dard use, public we court, unworkable, or in was on sale for the in- the district totality of the circum- how the know, must consider until informed ventor will underlying policies comports with the stances judge, stage experimental at what his method bars.”). public use the on sale became, judicial insight based on hind- sufficiently sight, complete to start the time Vann, Inc., Tools, Inc. Geo In Baker Oil patentability. bar to USPQ2d F.2d (Fed.Cir.1987), various the court summarized not mean that an inven This does to the determi- may be relevant criteria that continuing monitoring of his invention tor’s been an invention had nation of whether peri stay of the bar will the commencement intend- to work for its completed and shown long ongoing. as this od for as public possible of a purpose at the time ed relevant, always in an it is entire include These criteria or sale event. use on determination, ty-of-the-eireumstances or of whether tests evaluations the facts had indeed been whether the invention reasonably needed conducted were that were purpose shown to work its intended invention; efficacy of the to demonstrate reasonably acting whether inventor period in relation of the evaluation length invention. continuing to evaluate the invention; whether test- to the nature that were made with nature of the contacts performed; whether systematically ing was during period of potential or on behalf of customers de was done the evaluation inventor; kept; velopment are also relevant whether records were of the invention *6 received; other payment totality was and the circumstances evaluation whether to the of the nature of that illuminate precedent circumstances our mandates. that critical activity engaged before the Can, that he did Maxfield averred not 948 F.2d at also Continental date. See as installed 1269, USPQ2d (summarizing crite- his new track at at 1750 know whether 20 considered). satisfactorily until policy perform the on- The of Beloit would ria to be period prolonged subjected freeze and not tolerate a was to winter sale bar does is commer- the inventor that it was cycle. of “evaluation” while averred neces thaw He applying the invention. In cially exploiting track in sary the Beloit actual to evaluate totality of circum- of the the standard if it of in order to determine conditions use 2 pur- necessary it is to consider stances as intended and would not would function testing and for the pose of and the need deteriorate ex crack or otherwise period. evaluation He averred of weather. that tremes Kansas techniques, that layering and he he used new days or period here at is the few issue repair perform considerable even dur had to completion of the installation weeks between wife, Maxfield’s ing of 1981. the summer and the High 1981 at Beloit installation, hand-done worked on the who City Logan and Garden with the contacts In of effect. view testified to similar Although declined the district court coaches. of uncertainty as to the status inventor’s issue of grant on the track, poten contacts with Beloit Rothwell’s “experi- Beloit track was itself whether the laying days of the of tial customers within mental,” summary judg- grant did the court held on can not be the Beloit track “sufficiently was that the invention ment undisputed of law or judgment, as a matter when a invoke the on-sale bar” complete to fact, purposes for of event to be on-sale is an Beloit” was offered. This track “like States, 102(b). Inc. v. United distinction, Gould exper- See inappropriate line (1992), but it remains the law this totality Commerce circum- of the of the 2. The standard unnecessarily changed by or the court as unless statute has been criticized circuit stances see, Advisory e.g., on Pat- vague, Commission en banc. Secretary Report A ent Law Reform: 1324 USPQ
217 198 Ct.Cl. decreased. The ’622 states column (1978) (period experimental 1 pertains use lines 8-10 that invention “[t]his particularly, until after the inventor “conducts surfaces and more to an continues running all-weather surface to be used for needed to convince himself that tests tracks,” seq. performing at column line 67 et capable its intend- invention environment.”) object present “[s]till another inven- purpose in ed its intended provide process tion is to wherein the presented ATCC no evidence ne susceptibility of the materials to the deleteri- gating the need to evaluate the track under sunlight, ous effects of moisture and weath- position actual conditions of use. ATCC’s ering substantially are decreased.” Claim 18 simply marketing that Rothwell’s activi of the ’833 refers to “weather and ties sufficed to start the on-sale bar as a degradation.” ultraviolet law, matter of relevant discussed, As we have the district court reasonably whether Maxfield believed that applied holding an incorrect standard in durability his track needed evaluation of its because Maxfield’s track had been extensive- under actual conditions. As we have dis ly developed, marketing Rothwell’s efforts cussed, is not a correct statement of period started the bar as a matter of law. general rule is that the law. The on-sale bar The court’s reliance on UMC Electronics for completed to accrue when a invention starts proposition inapt, this for that case did Tools, is offered for sale. Baker Oil not turn on whether the had been 1563, USPQ2d F.2d at at 1213-15. Facts “extensively developed” at the time it was underlying proved bar must the on-sale be sale, offered for but on whether it was known convincing clear and evidence. Id. at that the invention would work its intend- 1563, USPQ2d at 1213. The trier of fact purpose testing ed without further or evalua- must determine whether invention was period tion. When an evaluation is reason- completed and known to work for its intend ably needed to determine if the invention will purpose, ed or whether the inventor was purpose, serve its intended bar continuing develop and evaluate the inven does not start to accrue while such determi- tion; merely whether the inventor was ex issue, being nation is made. This is a factual market, ploring or had made an uncondi adversely could be found to the non- completed tional offer to sell invention. summary judgment. movant on issue, these material facts are at sum When *7 not, course, We do hold that an inventor mary disposition negated. example, For may avoid the on-sale engaging bar while Corp., A.B. v. RTE Chance Co. activity, simply by continuing commercial to 1307, 1311-12, USPQ2d improvements make in the commercialized (Fed.Cir.1988), genuine there was a factual totality invention. The of the circumstances dispute as to whether the invention had been standard does not accommodate behavior purpose, shown its to work for intended thus policies that underlying contravenes the the negating summary judgment. Conversely, in law. such abuse was not here Inc., Sinskey Ophthalmias, v. Pharmacia only days shown. There were a few between (Fed. USPQ2d F.2d completion laying the of the Beloit Cir.1992) upheld grant the court the of sum High track School and the demonstration and mary judgment expe when the inventor had Logan High offer to disput- School. It is not repeated satisfactory performance rienced ed on this record that there had not been ophthalmic procedure and did not view the as time to determine whether the track would experimental. actually perform intended, as free of the patented invention is directed to an problems experiences Derby with the track. “all-weather surface.” The titles of both response In summary to motion ATCC’s for patents the ’833 and ’622 are “Method for judgment, Seal-Flex met its burden show- Constructing All-Weather Surface.” The ing dispute that material facts were in specifications patents among of both include requirements that the were not objects making the of the invention the of an summary met as a judg- matter of law. The reversed, susceptibility outdoor track to whose the del- ment is and the cause is remanded substantially eterious effects of proceedings. weather is for further for which a is later the invention FEES ATTORNEY primarily sought, or offer to sell a sale attorney pursuant fees for moved ATCC and that purposes occurs for commercial denied court The district 285. 35 U.S.C. year application the before more than one rea- motion, “plaintiff had a stating that the unpatentable. Accord- the invention renders con- lawsuit and filing the for basis sonable at trial shows that ingly, if the evidence plaintiff did argument, trary to defendant’s representa- with communications Rothwell’s in bad faith.” the case prosecute bring or Logan High constituted tives of in the of discretion no abuse We discern purely a commercial offer to make authorized ruling, which is affirmed. district court’s embodying patented product a the sale of to Seal-Flex. Costs (which method, oc- those communications REMANDED; AT- AND REVERSED year the curred more than a before DENIED. FEES TORNEY filed) trigger the on- were would applications patents in suit. sale bar and invalidate concurring in BRYSON, Judge, Circuit able to sell his An inventor should not be concurring the result. part and purposes, but avoid commercial summary judg- agree the court I with conducting by separately the on-sale bar granted in this have been should not ment case, I view the on his invention. As tests analysis case, the court’s disagree I with but irrelevant to the status is therefore I therefore concur respect. in one Logan that Maxfield was continu- transaction regard to the result performance of the Seal- ing to evaluate issue. If Beloit track. process Flex defendant’s motion granting In an offer Logan constituted transaction court relied judgment, product the district sale of made make commercial product later-patented process, offers to sell a the on-sale purported by two bar on “Logan patented process: if Maxfield was triggered even made should be process City concurrently conducting offer.” As tests on his “Garden offer” and the transaction, City facility. the evidence at another the Garden actual there was an does establish pat- made a track
offer to construct offer, purported Logan process.
ented
however, question. The presents closer supports district undisputed evidence TRW, INC., Appellant, employee, a Ritchie court’s conclusion Rothwell, proposal to the Lo- sent a Joseph coach, offering to gan High School Secretary Widnall, E. Sheila Beloit,” by “just which a track like construct Force, Appellant, the Air by the a track constructed Rothwell meant *8 process that was used same Seal-Flex CORP., Appellee. Nonetheless, UNISYS the evi- High School. Beloit Logan purported respect to the dence with CORP., Appellant, UNISYS clearly that Rothwell establish offer does to sell the to make an offer was authorized WIDNALL, Secretary Sheila E. Logan pro- at the time the process claimed Force, Appellee. the Air reason, agree I For that posal made. judgment with the court and 95-1416. Nos. granted in this ease. have been should not Appeals, Court United States the le- Although court has articulated this Circuit. Federal of 35 for the “on-sale bar” gal standard 25, 1996. Oct. ways, in different it seems U.S.C. language policies me that following captured by the
statute are best question embodies if or offer
rule: the sale