Case 19: UMC Electronics Co. v. U.S. (1987)
The invention under scrutiny is an aviation counting accelerometer (ACA), a device which counts how many times an aircraft has been subject to a set acceleration (filed 1968). The Navy had been using ACAs from Maxson Electronics Company and Giannini Controls Corporation, which were unreliable and troublesome to use. It contacted UMC employee Weaver and informed him that they were looking for a better ACA. He developed a model (UMC-A) and UMC was awarded a contract in late 1966. In 1967, UMC determined that its ACA would behave much like the Maxson and Giannini units, that is, badly. The inherent frequency of the mass-spring system within the transducer was the cause of the problems; this system was unable o distinguish between actual acceleration of the aircraft in maneuvers and other accelerations such as wind gusts. Weaver set to work developing an analog transducer that utilizes a varying electric signal. This signal could be filtered to distinguish actual acceleration from other noise; UMC was unsuccessful in negotiating terms to a new contract with the new transducer.
In 1967, the Navy reworked its specifications and requested proposals from contractors. UMC responded with a number of its UMC-B ACAs. In August of that year, UMC demonstrated its product to the Navy; however, the Navy went forward with another company, Systron-Donner. UMC filed an action suit against the Navy seeking compensation because, in their view, Systron-Donner used their ACAs in their design. The court upheld the patent as valid, but ruled the Systron-Donner ACAs did not fall under the scope of the patent's claims. Both parties appealed, the Navy that the UMC patent is invalid and UMC that the ruling of no infringement be reversed.
The patent must hold up to three criteria: (1) the complete invention must be obvious or apparent in the thing offered for sale; (2) the invention must have been tested sufficiently; and (3) the sale must be primarily for profit, rather than experimental purposes. If the invention satisfied all three, then it was unpatentable under 102. The court found that (2) and (3) were both met, but (1) was not because the inventor had not assembled a complete working model before the critical date. Furthermore, because the model was never produced and UMC didn't profit from it, it was never really on sale under 102.
The case deals a lot with reduction to practice. It is not enough to say there was reduction to practice if Weaver only built and tested part of the new claimed invention. It is a contradiction for the District Court to say there was a reduction to practice, yet the on-sale bar doesn't hold because it wasn't a completed product for sale. The Appellate Court said that the ACA was not reduced to practice, but it was on sale. Thus, the ACA is no longer patentable and the patent rights are vacated.