By making this argument, however, SRC necessarily, and
curiously, implies that it was non-commercial for it to make and
use the accused forms as a means of testing the Hunkeler
machine. This argument invites at least two questions. First:
Did SRC make and use the accused forms in order to test both the
forms and the Hunkeler machine, or did SRC intend to test the
machine only? And: Did SRC make and use the accused forms in
order to evaluate the Hunkeler machine simply out of idle
curiosity or a purely philosophical interest, or did SRC act
with an eye towards its business interests? The answers to these
questions are obvious, and they compel the conclusion that SRC
is not entitled to the experimental use or de minimis use
SRC attempts to liken this case to Ruth v. Stearns-Roger Mfg.
Co., 13 F. Supp. 697 (Colo. 1935), rev'd on other grounds,
87 F.2d 35 (10th Cir. 1936). In Ruth, the court exempted certain
machine parts from infringement on the basis of the experimental
use doctrine because the Colorado School of Mines had bought the
infringing parts. Both the infringing machines and parts "`were
all used in the laboratory and were . . . changed from day to
day.'" Item 178, pp. 3-4 (quoting Ruth, 13 F. Supp. at 703).
Yet, the cited section of Ruth is inapposite for several
reasons. First, the court there was inquiring into the
defendant's "contributory infringement."*fn7 The court found
that the defendant had committed no contributory infringement
when it sold "covered," or infringing, machine parts to a
college that used the parts as replacements on "covered"
machines. Furthermore, the court relied on the fact that the
college was using the infringing machines and infringing parts
for experimental purposes only. Id. at 703-04. Here, there are
no similar factual considerations.
Moreover, this case differs critically from Ruth because SRC
is not an educational institution, nor did SRC make the accused
forms so that it could sell them to an educational institution.
See Item 181, pp. 3-4.
This court's decision as to experimental use is also informed
by the Federal Circuit's recent decision in Embrex, Inc. v.
Service Engineering Corp., 216 F.3d 1343 (Fed.Cir. 2000). In
that case, plaintiff Embrex was the exclusive licensee of a
patented method "for inoculating birds against disease by
injecting vaccines into a specified region of the egg before
hatching." 216 F.3d at 1346. Defendant SEC appropriated this
patented method and built its own inoculating machine. Id. A
jury ultimately found that SEC had infringed the patent and
returned a verdict in favor of Embrex. Id. at 1347. On appeal,
the Federal Circuit affirmed the trial court's refusal to set
aside the jury's verdict. In ruling, the court reiterated that
the experimental use exemption (and the de minimis use
exemption, for that matter) was an exceptionally narrow defense,
which is available only where "infringement [is] performed `for
amusement, to satisfy idle curiosity, or for strictly
philosophical inquiry.'" 216 F.3d at 1349. Further, the court
held that defendant SEC's "alleged experimental use" did not
"fit within the narrow confines of the alleged experimental use
exception because this particular use . . . had `definite,
cognizable, and not
insubstantial commercial purposes.'" Id. Thus, the Federal
Circuit rejected the argument that SEC's investigation into the
patented inoculation technology had been "experimental:"
SEC's acts of hiring Drs. Davis and Rosenberger, and
the doctors' acts injecting eggs with vaccine cannot
be deemed experimental use or de minimis. While SEC
tries to cloak these tests in the guise of scientific
inquiry, that alone cannot immunize its acts. The
district court determined on the record before it
that SEC performed the tests expressly for commercial
purposes. SEC's chief commercial purpose was to
demonstrate to its potential customers the usefulness
of the methods performed by its in ovo injection
machines. Just because SEC was unsuccessful in
selling its machines does not confer infringement
immunity upon SEC for its infringing acts.
Embrex, 216 F.3d at 1349. Although the present case differs
from Embrex's procedural posture, the court's reasoning is
helpful. Much like the defendant in Embrex, it is self-evident
that SRC made and used the accused forms for the commercial
purpose of testing and evaluating the forms themselves as well
as the Hunkeler machine. SRC's employees did not travel to
Switzerland in order to satisfy their own "idle curiosity."
Indeed, if the accused forms had worked perfectly in the
Hunkeler machine from the very beginning, SRC would have
succeeded in making an infringing product that was ready for
The court also looks again to the Roche decision. First,
there is an interesting parallel between the arguments offered
by the defendant in Roche — Bolar — and the defendant here —
SRC. In Roche, the court found that Bolar's "intended use of
[the patented product] does not fall within the `traditional
limits' of the experimental use exception" and that this was
"fatal" to Bolar's attempt to assert the doctrine of
experimental use. 733 F.2d at 863. In this case, SRC makes a
similar concession: "The facts of the present case are quite
different than those in most experimental use cases." Item 178,
p. 5. Much like the court in Roche, this court is not inclined
to expand the experimental use doctrine to cover unusual fact
scenarios such as this one.
In addition, the following language from Roche is apt:
"[T]ests, demonstrations, and experiments which are in keeping
with the legitimate business of the alleged infringer are
infringements for which experimental use is not a defense." 733
F.2d at 863 (citation and quotation omitted) (internal
formatting omitted). As discussed supra, SRC's manufacture and
use of the accused forms were "in keeping with [its] legitimate
business," and its manufacture and use of those forms was, as a
result, commercial, not experimental, in nature.
There is no reason for this court to reach a different
conclusion on the issue of the de minimis use exemption. After
all, the experimental use defense is just "an expression of the
maxim de minimis non curat lex."*fn8 Douglas v. United
States, 181 U.S.P.Q. 170, 177, 1974 WL 20548 (Ct.Cl. 1974),
aff'd 206 Ct.Cl. 96, 510 F.2d 364 (1975). Indeed, courts have
questioned whether "any infringing use can be de minimis."
Deuterium Corp. v. United States, 19 Cl.Ct. 624, 631 (Cl.Ct.
1990) ("Damages for an extremely small infringing use may be de
minimis, but infringement is not a question of degree.").
Moreover, the Embrex court refused to exempt the defendants
from liability based on de minimis use even though the
defendants did nothing more than run tests on their infringing
machines. Instead, the court in Embrex ruled that the
defendants had "performed the tests expressly for commercial
purposes." 216 F.3d at 1349. Adding: "Just because [defendant]
SEC was unsuccessful in selling its machines does not confer
infringement immunity upon SEC for its infringing acts." Id.
Like the court in Embrex, this court finds that SRC tested the
accused forms, as well as the Hunkeler machine, for commercial
purposes. Therefore, the court refuses to exempt SRC from
infringement liability based on a de minimis use exemption.
In light of the foregoing, SRC cannot maintain the
experimental use exemption or the de minimis use defense as
grounds for summary judgment or in opposition to Moore NA's
motion for summary judgment. Therefore, SRC's motion for summary
judgment is denied. The court will now take up whether Moore NA
can prevail on its motion for partial summary judgment.
C. Other Evidence of SRC's Commercial Use of the Accused
In addition to the evidence and law discussed supra in Part
II, B, Moore NA has offered various other items of evidence in
an effort to show how SRC made and used the accused forms with
an eye towards its business interests.*fn9 Here, the court
briefly reviews this evidence and the parties' arguments
relating to this evidence.
1. Display and Distribution of Accused Forms at a 1993
SRC representatives brought accused forms back to the United
States from Switzerland and then used those forms as "sales
tools" at a 1993 trade show that took place in Denver, Colorado.
See Item 175, p. 5 & Item 175, Exh. K, pp. 910, 13. However,
courts have recognized that the mere demonstration of an
infringing product at a trade show is not, in and of itself, an
infringing act. See, e.g., Intermedics, Inc. v. Ventritex,
Inc., 775 F. Supp. 1269, 1285-86 (N.D.Cal. 1991), aff'd