Pfaff v. Wells Electronics 525 U.S. 55 (1998)
PH: Dist Ct. found 3 of the claims valid and infringed by D. Court of apps reverse
finding all 6 claims invalid. Cert was granted because other courts have assumed
that an invention cannot be on sale unless it has been reduced to practice, but
the text of 102(b) makes no reference to substantial completion of an invention.
Facts: Pfaff filed an application for a patent on a computer chip socket. Critical
date April 19, 1981. P started work in November 1980 and sent drawings to a
manufacturer in feb or march of 1981. March 17 1981 showed a sketch to Texas
Instruments and on April 8 1981, TI provided written confirmation for an oral
agreement to purchase. P didn’t fill the order until July 1981. P first reduced the
invention to practice in the summer of 1981.
Issue: Whether the commercial marketing of a newly invented product may mark the
beginning of the 1-year period even though the invention has not yet been
reduced to practice.
Rule: 102(b) provides that no person is entitled to patent an invention that has been on
sale more than one year before filing a patent application.
Assuming diligence, it is normally the first inventor to conceive, rather than the
first to reduce to practice, who establishes the right to the patent.
Analy: When applying the reasoning of THE TELEPHONE CASES to the facts of the case before
us today, it is evident that P could have obtained a patent on his novel
socket when he accepted the purchase order from TI.
- was able to enable PHOSITAS to produce the device
- sockets manufactured embody the claims
Policy: Patent laws 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.
Con.: The on-sale bar applies when two conditions are satisfied before the critical date.
(1)the product must be the subject of commercial offer for sale
(2)the invention must be ready for patenting
(a)by proof of reduction to practice before the critical date
(b)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 PHOSITA to practice the invention
Hold: P’s patent was invalid because the invention had been on sale for more than one
year in this country before he filed his patent application. Judgment of Ct of apps
affirmed.
PH: Dist Ct. found 3 of the claims valid and infringed by D. Court of apps reverse
finding all 6 claims invalid. Cert was granted because other courts have assumed
that an invention cannot be on sale unless it has been reduced to practice, but
the text of 102(b) makes no reference to substantial completion of an invention.
Facts: Pfaff filed an application for a patent on a computer chip socket. Critical
date April 19, 1981. P started work in November 1980 and sent drawings to a
manufacturer in feb or march of 1981. March 17 1981 showed a sketch to Texas
Instruments and on April 8 1981, TI provided written confirmation for an oral
agreement to purchase. P didn’t fill the order until July 1981. P first reduced the
invention to practice in the summer of 1981.
Issue: Whether the commercial marketing of a newly invented product may mark the
beginning of the 1-year period even though the invention has not yet been
reduced to practice.
Rule: 102(b) provides that no person is entitled to patent an invention that has been on
sale more than one year before filing a patent application.
Assuming diligence, it is normally the first inventor to conceive, rather than the
first to reduce to practice, who establishes the right to the patent.
Analy: When applying the reasoning of THE TELEPHONE CASES to the facts of the case before
us today, it is evident that P could have obtained a patent on his novel
socket when he accepted the purchase order from TI.
- was able to enable PHOSITAS to produce the device
- sockets manufactured embody the claims
Policy: Patent laws 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.
Con.: The on-sale bar applies when two conditions are satisfied before the critical date.
(1)the product must be the subject of commercial offer for sale
(2)the invention must be ready for patenting
(a)by proof of reduction to practice before the critical date
(b)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 PHOSITA to practice the invention
Hold: P’s patent was invalid because the invention had been on sale for more than one
year in this country before he filed his patent application. Judgment of Ct of apps
affirmed.