United States District Court, W.D. Louisiana, Lafayette Division
TOTAL REBUILD, INC.
PHC FLUID POWER, L.L.C.
B. WHITEHURST MAG. JUDGE
PRELIMINARY FINDINGS OF FACT AND CONCLUSIONS OF
A. DOUGHTY UNITED STATES DISTRICT JUDGE
a patent infringement case in which Plaintiff Total Rebuild
(“Plaintiff”) contends systems and/or methods
utilized by or through Defendant PHC
(“Defendant”) infringe claims of United States
Patent No. 8, 146, 428 (“the '428 Patent”).
The '428 Patent is directed to systems and methods for
safely testing devices and components under high-pressure.
trial on inequitable conduct was conducted from September 12
to September 13, 2019. The Court holds that the '428
Patent is unenforceable due to inequitable conduct, because
the inventor, Mr. Terry Lavergne, withheld material
information of prior sales from the United States Patent and
Trademark Office (“PTO”) with the specific intent
to deceive the PTO into granting the patent. The following
constitutes the Court's preliminary findings of fact and
conclusions of law.
FINDINGS OF FACT
Terry J. Lavergne is the sole inventor named in the '428
Patent. Mr. Lavergne filed the earliest provisional
application, No. 61/188, 435, on August 8, 2008. The '428
Patent issued April 3, 2012. The “critical date”
for analyzing the on-sale and public-use bars of 35 U.S.C.
§ 102(b) is August 8, 2007, one year prior to the
“ABSTRACT” of the '428 Patent describes the
invention as follows:
A safety system for testing high-pressure devices comprising
an explosion-proof safety housing; a high-pressure pneumatics
testing equipment located within the housing; a closeable
access opening in the housing for inserting a high-pressure
device for testing within the housing; a device located
within the housing for coupling the high-pressure pneumatics
testing equipment to the high-pressure device for testing; a
control panel located outside the housing; and a device
linking the high-pressure pneumatics testing equipment to the
control panel for operating the high-pressure pneumatics
testing equipment within the safety housing from the control
'428 Patent at Abstract.
There is clear and convincing evidence of substantial on-sale
and public uses of the invention described in the '428
Patent dating as early as June 23, 2006.
Lavergne admitted at trial that prior to the critical date,
he and Plaintiff sold, installed, and demonstrated safety
systems for testing high-pressure devices containing all of
the elements of Claims 1 and 16 of the '428 Patent.
Defendant displayed on its website since at least 2002 the
safety system for testing high-pressure devices containing
all of the elements of Claims 1 and 16 of the '428
Invoices produced at trial, Mr. Lavergne's testimony, and
the testimony of other witnesses establishes that Mr.
Lavergne and Plaintiff sold, installed, and demonstrated
safety systems for testing high-pressure devices in multiple
locations prior to August 8, 2007.
safety systems for testing high-pressure devices was
accomplished utilizing the system and method ...