UMC Electronics Co. v. U.S. SKH

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  • Assignee of patent brought infringement action against United States. The Claims Court, Margolis, 8 Cl.Ct. 604, held that patent was valid and not infringed. The assignee appealed. The Court of Appeals, Nies, Circuit Judge, held that patent was invalid as having been on sale more than one year prior to date of application for patent.
  • Affirmed on different grounds and vacated in part.
  • Edward S. Smith, Circuit Judge, filed a dissenting opinion.
  • There cannot be reduction to practice of an invention, for purposes of on-sale bar to patentability, without physical embodiment which includes all limitations of claim.
  • Claims Court erred in holding that there had been reduction to practice of invention, for purposes of on-sale bar to patentability, where both court found and parties did not dispute that there was no physical embodiment containing all limitations of claimed invention before the critical date.
  • An offer to sell later-claimed invention may be sufficient to invoke on-sale bar to patentability whether offer is accepted or rejected.
  • Reduction to practice of claimed invention is not an absolute requirement of on-sale bar to patentability.
  • On-sale bar to patentability does not necessarily turn on whether there was or was not a reduction to practice of claimed invention; rather, all of circumstances surrounding sale or offer to sell, including state of development of invention and nature of invention, must be considered and weighed against policies underlying on-sale bar.
  • Challenger of patent on basis of on-sale bar has burden of proving that there was a definite sale or offer to sell more than one year before application for patent, and that subject matter of sale or offer to sell fully anticipated claimed invention or would have rendered claimed invention obvious by its addition to the prior art, and if those facts are established, patent owner is called upon to come forward with explanation of circumstances surrounding what would otherwise appear to be commercialization outside grace period.
  • A sale of claimed invention made because purchaser was participating in experimental testing creates no on-sale bar to patentability.
  • Issue of whether invention is on sale, for purposes of on-sale bar to patentability, is a question of law.
  • Patent for aviation counting accelerometer, devised for sensing and recording number of times aircraft has been subjected to predetermined levels of acceleration, was invalid as having been on sale more than one year prior to date of application for patent whereas owner made definite offer to sell later patented invention to United States more than one year prior to date of patent application, offer was made for profit, not to conduct experiments, and there was substantial embodiment of invention and testing which was sufficient to satisfy inventor that later claimed invention would work.
  • Invalid.