New Railhead Manufacturing, L.LC. v. Vermeer Manufacturing Co.

New Railhead Manufacturing, LLC (New Railhead) (plaintiff) held two patents—one (the ‘283 patent) claiming a drill bit for horizontal directional drilling and the other (the ‘743 patent) claiming a method for the drilling technique. Both patents were filed in late 1997 as continuation-in-part (CIP) applications from a February 1997 provisional application—i.e., a patent application filed with the intent of filing CIP applications within a year. The ‘283 patent’s claims included angled placement of the drill bit on the drill-bit housing. However, the provisional application did not depict an attachment of the drill bit to the housing structure. Vermeer Manufacturing Company (defendant) and Earth Tool Company, LLC (defendant) sold drill bits that competed with New Railhead’s product. New Railhead brought an infringement action in federal district court. It was established—and not contested—that New Railhead had engaged in commercial sale of the claimed drill bit in mid-1996. The trial court found that, because the provisional application had failed to include the angled placement of the drill bit, the ‘283 patent was not entitled to the February 1997 provisional application’s filing date. Thus, the one-year on-sale bar applied. The ‘743 patent was also deemed invalid because the invention had been in public use for more than a year before the application, and use of the invention entailed use of the method claimed in the patent. New Railhead appealed to the United States Court of Appeals for the Federal Circuit.