UMC Electronics Co. v. U.S. (JWB)
- UMC Electronics Co. (Appellant), United States (Cross-Appellant)
- US infringed patent, Claims Court held the patent valid but not infringed
- Patent assignee appealed to Court of Appeals
- filed on August 1, 1968, issued February 22, 1972
- An aviation counting accelerometer (ACA), a device for sensing and for recording the number of times an aircraft has been subjected to predetermined levels of acceleration
- 1966 Navy contacted Preston Weaver (employee of UMC) about Navy’s interest in buying improved ACA’s
- 1967 UMC concluded Weaver’s model would not meet Navy specifications
- Aug 1967 UMC gave a demonstration of Weaver’s improved ACA
- early 1968 Navy canceled the request for UMC’s product and eventually signed a contract with Systron-Donner Corporation to provide ACA’s
- June 1980 UMC filed action against US seeking compensation (after appealing directly to Navy for compensation for years)
- UMC claimed infringement (by Navy’s use of Systron-Donner ACA’s), US claimed invalidity on a number of grounds
- (1) The complete invention claimed must have been embodied in or obvious in view of the thing offered for sale, (2) The invention must have been tested sufficiently to verify that it is operable and commercially marketable (it must be completed), (3) Finally, the sale must be primarily for profit rather than for experimental purposes
- The court found the first requirement that the complete invention must be embodied in the thing offered for sale was not met because the engineering prototype did not include all elements of the claims
- The court found (incorrectly) reduction to practice, but that doesn’t matter because of the first requirement
- inconsistency between the Claims Court's conclusion that the claimed invention was “reduced to practice” before the critical date and its separate finding that no physical embodiment of the invention existed at that time
Court of Appeals
- Without a physical embodiment, as stated above, there can be no reduction to practice.
- The on-sale bar does not necessarily turn on whether there was or was not a reduction to practice of the claimed invention
- UMC made a definite offer to sell its later patented UMC-B design to the Navy, for a total of more than $1.6 million
- UMC admits that the offer was made for profit, not for experimentation
- UMC’s activities evidence shows an attempt to commercialize invention by bidding on a large government contract more than one year prior to filing
“We conclude from the unchallenged facts with respect to the commercial activities of UMC, coupled with the extent to which the invention was developed, the substantial embodiment of the invention, the testing which was sufficient to satisfy the inventor that his later claimed invention would work, and the nature of the inventor's contribution to the art, that the claimed invention was on sale within the meaning of section 102(b)”
- Vacate remainder of the Claims Court opinion
- The panel majority ignores the significance of decades of discussion of “reduction to practice” as if it does not exist, and eliminates the reduction to practice requirement for the on-sale bar.
- The panel majority correctly holds that the thing offered for sale by UMC was not reduced to practice by the critical date.
- The panel majority, however, without being asked by the parties, asks whether reduction to practice “should” be required for the on-sale bar, and concludes that there should be no such requirement, notwithstanding the binding precedent to the contrary
- The concept that an invention must be operable and reduced to practice before it can be deemed “on sale” is rooted in scientific reality and simple common sense
- Reduction to practice has occurred if one of the “things” offered has ever been completed or built and shown to work.
- “I must respectfully differ with the panel majority in the interpretation of several cited cases in our prior jurisprudence, in which the requirement of a reduction to practice was a critical element in the decision to apply or not apply the on-sale bar”
- Most inventors do not hire a patent lawyer until they know they have something that works, by which time, according to the panel majority, it may be too late.
- < blockquote >“The section 102(b) bar was not intended to force inventors into the patent system prematurely. It was intended to force the inventor to file, if at all, within a reasonable time (1 year) after the inventor starts to profit from or discloses or uses the invention. The moving of the time bar does not speed up the invention development process; it merely entraps the inventor.”