Thomas E. Pickering v. Orval Holman, Thomas E. Pickering v. Orval Holman

Plaintiff Pickering appeals from the district court’s holding that his patent was invalid in that it was described in a printed publication more than one year prior to the filing of the application for the patent. He also appeals from the court’s award of taxable costs to defendants. Defendants Holman, Huey and Fenton (hereafter defendants) cross-appeal on the basis of the court’s refusal to award them attorney’s fees. Pickering’s appeal raises two issues: (1) Whether publication pursuant to experimental activity is exempt from the 35 U.S.C. § 102 (b) bar against publication more than one year prior to application for patent protection; (2) Whether costs may be awarded where they were paid for by one not a party to the litigation. The cross-appeal raises the issue as to whether the court abused its discretion in refusing to grant attorney’s fees to defendants.

I. PATENT VALIDITY

Thomas Pickering is a co-inventor and owner of patent 3,266,015 directed to a plastic blinker light, which is useful as a traffic warning device. Pickering filed his application with the Patent Office on March 19, 1962. Defendants were sued on the basis of their trading in warning lights covered by the…