Pfaff v. Wells Electronics (JWB)

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The Case

  • Pfaff (Petitioner), Wells Electronics (Respondent)
  • early 1981 Pfaff designs new computer chip socket and sent detailed engineering drawings of the socket to a manufacturer.
  • April 8, 1981 showed sketches of his concept to Texas Instruments, who placed an order
  • July 1981 Pfaff filled the order (did not make and test a prototype before offering to sell)
  • April 19, 1982 applied for patent
  • Sued Wells Electronics for infringement, but lost
  • Sued again when Wells brought out modified design, and District Court held that three claims were infringed and rejected Wells’ defense that Pfaff filed the patent less than a year after reducing to practice
  • Court of Appeals reversed, concluding that the 1-year period of 102(b) begins when the invention was offered for sale, not reduced to practice


Ruling

  • It is well settled that an invention may be patented before it is reduced to practice
    • Court upheld a patent issued to Alexander Graham Bell even though he had filed his application before constructing a working telephone
    • The 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. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented
    • The word “invention” must refer to a concept that is complete, rather than merely one that is “substantially complete.” It is true that 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
  • § 102 of the Patent Act 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
  • Nevertheless, an 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.
    • The patent laws therefore seek both to protect the public's right to retain knowledge already in the public domain and the inventor's right to control whether and when he may patent his invention.
  • On-sale Bar conditions:
    • 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 were sufficiently specific to enable a person skilled in the art to practice the invention.
  • On-sale Bar conditions for this case:
    • “When Pfaff accepted the purchase order for his new sockets prior to April 8, 1981, his invention was ready for patenting. The fact that the manufacturer was able to produce the socket using his detailed drawings and specifications demonstrates this fact. Furthermore, those sockets contained all the elements of the invention claimed in the '377 patent”