Electromotive Division of General Motors Corp. v. Transportation Systems Division of General Electric Co.
United States Court of Appeals for the Federal Circuit
417 F.3d 1203 (2005)
EMD (plaintiff) installed prototype planetary bearings in Union Pacific's locomotives for field testing without any confidentiality agreement, without restricting UP's use of the locomotives, and without requiring any monitoring, reports, or documentation of that use, then filed its patent application more than a year after that pre-critical-date field use; when EMD sued GE (defendant) for infringement, GE argued the patent was invalid under the on-sale bar, and the district court agreed.
Whether, to prove experimental use sufficient to avoid application of the on sale bar, an inventor must establish that he or she retained control over the testing and made the purported tester aware of the experimentation.