Were they still Experimenting in 2003?

After the Markman ruling shot down Prevost, it seems the infringing defense is left with a single legal theory.  It is called the one year rule. 

"The one-year rule, also known as the one-year grace period or on-sale bar, is a doctrine that prevents an inventor for acquiring patent protection if the application is filed more than one year of the following: 1) any public use of the invention by the inventor, a sale of the invention, an offer of sale, or public use of the invention in the United States, OR 2) any description of the invention by the inventor in a published document (i.e. a printed publication) in any country."

"In 1998 the Supreme Court established a two-part test (Plaff vs Wells) to determine the commencement of the on-sale bar. According to this test 1) there must be an offer for commercial sale -not experimentation-, and 2) the invention must be ready for patenting (i.e. it must be reduced to practice or fully documented so that a person skilled in the art could create a working version of the invention)."

Or in the words of the Supremos:

"First, the product must be the subject of a commercial offer for sale.... Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that enable a person skilled in the art to practice the invention."

The Defense has claimed to have found an email, with an offer to sell by one of the inventors that breaks that one year deadline.  They are also trying to impeach the testimony of the inventor because he failed to produce the email to them during discovery.  They did this by sandbagging that very email through discovery and springing it on the inventor during his disposition.  That's right, they are trying to impeach his testimony based on claiming he was sandbagging what they sandbagged.  Accusing someone of doing what they admit doing.  It gets better.

First, lets try to come up with a logical reason for someone not producing an email written in 2003 by asking this simple question:  Can you produce your emails written in 2003?  Do you remember your emails from 2003?  No, most cannot.  I set here prior to lunch trying to remember what I had for breakfast.  Unless I wrote emails from a large company account, with a backup server, or had a hardcover paper filing system, I do not think I could find any 2003 emails.  I certainly do not have access to them.  That was 6 tits-up hard drives ago.  The use of "backup data servers" and "off site server storage systems"  or on-line internet based email systems are nearly universal now - but they were uncommon then.  Vortex Dehydration Technology seems like a one horse, under capitalized, shoestring (in the best sense of the word) outfit that is no longer in business (although they still have an old web site) - that probably had shoe boxes in the trunk of the company car for current sales and tax material - and little else.  It does not surprise me that the inventor had a hard copy of a sales letter, but not a copy of all his emails.  Nor does it surprise me that the fixed Agri-Energy Ethanol plant still has a copy of the 2003 emails.  It is likely a simple question of access to capital in 2003 and since to create a stable data storage.

Next lets take on the question of Mr. Cantrell's employment.  As part of the reason for hiding this email at discovery the defendants claim Mr. Cantrell was not a GreenShift employee:

"Thereafter on May 12,2011, Defendants issued a notice of deposition and a subpoena to Mr. Cantrell, who was not then (2003) and is not now (2011) employed by Plaintiff."

To make it understandable I put in the years above to which "then" and "now" refer.  This is the type of lawering that makes lawyers so well esteemed in our society today.  So the defendants claim they did not have to present this since he was not an employee in 2003 nor 2011 and leave out all the years in between.  Nice.  Real nice.

WAS This an EXPERIMENTAL Phase?

All you have to do is go to Exhibit C and read the first letter dated 18 August 2003.

Goal is to install and TEST the equipment.

At THAT TIME we will know the quantity of oil produced.

We will THEN test the quality of the oil.

Is it really the defendant's stance that this was a fully developed system offered for sale?  The inventors (although they had swags) did not know the quantity nor the quality of oil actually produced by their system.  As you read on you see things like "potential improvements"  and terms like "from what we have learned so far" and "if we are successful", and "we should be able to determine this with a few days of testing".  The system planned appears to even use the windaxe at the time.

If you are still not convinced this is an experimental phase - get this from the last parts of Exhibit C:

"To prove this theory, I think the next logical step is to do a small spin test at your plant with a Gyro tester and fresh product." 

The Emails going into the spring of 2004 still express amazement at the results and beg for non-disclosure.  They admit that this is the first time this was done and they were never really sure what would happen until they actually got away from the bench and tried it with real equipment in real conditions.  They go on and one about testing protocols and trying to establish base information for a discovery in progress.  Yes, there are basic drawings but does it show the system that was eventually patented?  Does this sound like a system ready for patent using the defendant's own exhibits?  Or do you think the inventors were still in a testing phase in the late summer/fall of 2003?  By the way, a search of the word test/testing in Exhibit C alone gave 45 results.  Now you put yourself as Judge/Jury and decide whether they were still testing and experimenting.

SkunK