Pfaff v. Wells Electronics, Inc.

PETITIONER: Pfaff
RESPONDENT: Wells Electronics, Inc.
LOCATION: Elizabeth Township, Allegheny County

DOCKET NO.: 97-1130
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 525 US 55 (1998)
ARGUED: Oct 06, 1998
DECIDED: Nov 10, 1998

ADVOCATES:
C. Randall Bain - Argued the cause for the respondent
Jeffrey P. Minear - On behalf of the United States, as amicus curiae, supporting the respondent
Jerry R. Selinger - Argued the cause for the petitioner

Facts of the case

In 1980, Wayne K. Pfaff developed a new type of computer chip socket for Texas Instruments (TI). In early April 1981, TI confirmed they would order and use Pfaff's socket. No actual socket was made until July 1981. Pfaff applied for a patent in April 1982. A patent was not granted on Pfaff's socket until 1985. After the patent was issued, Pfaff sued Wells Electronics, who had developed a competing socket, for patent infringement. Pfaff claimed that Wells' socket infringed upon six of his patent's claims. The District Court held that Wells' socket violated three of Pfaff's patent claims. In reversing, the Court of Appeals held Pfaff had sold the socket to TI more than a year before he applied for a patent. Thus, Wells' socket did not infringe on Pfaff's under the Patent Act of 1952, which states that no one can patent an invention that has been on sale for more than one year before filing a patent application.

Question

Does the confirmation of a commercial sale mark the beginning of the one year period inventors have to file for a patent, despite the fact the invention has not been produced?

Media for Pfaff v. Wells Electronics, Inc.

Audio Transcription for Oral Argument - October 06, 1998 in Pfaff v. Wells Electronics, Inc.

Audio Transcription for Opinion Announcement - November 10, 1998 in Pfaff v. Wells Electronics, Inc.

William H. Rehnquist:

The opinion of the Court in No. 97-1130, Pfaff versus Wells Electronics will be announced by Justice Stevens.

John Paul Stevens:

The Section 102(b) of the Patent Act provides that no person is entitled to patent an invention that has been on-sale more than one year before filing a patent application.

We granted certiorari in this case to determine whether the commercial marketing of a newly invented product may signal the beginning of the 1-year period even though the invention has not yet been reduced to practice.

The petitioner in this case is the inventor of a computer chip socket.

More than a year before he applied for his patent he accepted an order for over 30000 of his new sockets and deliver specification for the production of the device to a manufacturer.

He had not however prepared an actual working model of the device and because of the time that the manufacturer needed to develop the necessary customized tooling the order was not filled until several months later.

Insure that the invention was conceived and the device was offered for sale more than a year before the application was filed, but it was first reduced to practice less than a year before the filing date.

The District Court for the Northern District of Texas, found that the patent application was timely because it was filed less than a year after the first socket was produced, but the Court of Appeals for the Federal Circuit reversed.

That court concluded that the invention was "substantially complete" when petitioner put it on a sale more than a year before filing the patent application and therefore his patent was invalid under Section 102(b).

We affirm the judgment of the Court of Appeals but we disagree with its conclusion that Section 102(b)'s 1-year period begins when an invention that is substantially complete is put on sale.

We hold that the on-sale bar applies when two conditions are satisfied before the critical date.

First, the product must be the subject of a commercial author for sale as opposed to an experimental sale.

Second, the invention must be ready for patenting.

The ready for patenting test would usually be met by proof that before the critical date the invention was reduced to practice.

But, it may also be met by proof that the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to construct the invention.

Petitioner's patent is therefore invalid under 102(b).

Our opinion, holding the patent invalid, is unanimous.