Pfaff vs. Wells Electronics SKH

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  • Patentee brought action against competitor, alleging infringement of patent for computer chip socket. The United States District Court for the Northern District of Texas, Barefoot Sanders, Chief Judge, entered summary judgment of noninfringement, and patentee appealed. The United States Court of Appeals for the Federal Circuit, 5 F.3d 514, reversed and remanded for trial. On remand, the District Court, Sanders, Senior District Judge, held that two claims of patent were invalid but other claims were infringed, and appeal was taken. After reinstating appeal, the Court of Appeals, 124 F.3d 1429, reversed, finding all claims at issue invalid. Patentee's petition for certiorari was granted. The Supreme Court, Justice Stevens, held that commercial marketing of invention triggered on-sale period even though invention was not yet reduced to practice, so patent was invalid under statutory on-sale bar.
  • Affirmed.
  • Process is reduced to practice, for patent purposes, when it is successfully performed.
  • Machine is reduced to practice, for patent purposes, when it is assembled, adjusted, and used.
  • Manufacture is reduced to practice, for patent purposes, when it is completely manufactured.
  • Composition of matter is reduced to practice, for patent purposes, when it is completely composed.
  • Primary meaning of the word “invention” in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.
  • Assuming diligence on the part of the patent applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to the patent.
  • Invention may be patented before it is reduced to practice.
  • Inventor's acceptance of purchase order for inventor's computer chip socket established that socket was on sale at that time, which was more than one year before inventor filed patent application for socket, and patent was thus invalid under statutory on-sale bar, even though invention was not reduced to practice until after critical date; sale was commercial, not experimental in nature, and invention was ready for patenting since drawings which inventor sent to purchaser before critical date fully disclosed invention.
  • Patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.
  • Section of Patent Act listing conditions for patentability serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term.
  • Inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention, even if such testing occurs in the public eye.
  • Word “invention,” in patent context, must refer to a concept that is complete, rather than merely one that is substantially complete.
  • Reduction to practice ordinarily provides the best evidence that an invention is complete, but just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case; rather, one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.
  • Statutory on-sale bar applies when two conditions are satisfied before the critical date: first, the product must be the subject of a commercial offer for sale, and, second, the invention must be ready for patenting.
  • Requirement of statutory on-sale bar that invention was ready for patenting at time of alleged event triggering on-sale bar 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 were sufficiently specific to enable a person skilled in the art to practice the invention.
  • Invalid.