Today the Court granted certiorari in one case of interest to the business community. Amicus briefs in support of the petitioner are due on April 23, 1998, and amicus briefs in support of the respondent are due on May 26 (because May 23 is a Saturday and May 25 is Memorial Day). Any questions about this case should be directed to Evan Tager (202-778-0618) or Alan Untereiner (202-778-0656) in our Washington office. The Court will be in recess until March 23.

Patents — "On Sale" Bar to Obtaining a Patent. An inventor is not entitled to a patent if "the invention was * * * on sale in this country more than one year prior to the date of the application for patent in the United States." 35 U.S.C. ' 102(b). The Court granted certiorari in Pfaff v. Wells Electronics, Inc., No. 97-1130, to determine whether an agreement to purchase an invention based on detailed engineering drawings renders the invention "on sale" within the meaning of Section 102(b) even if no physical embodiment of the invention existed more than one year prior to the date of the patent application.

In November 1980, Texas Instruments (TI) contacted petitioner Wayne Pfaff and asked him to design a socket to test leadless chip carriers. Pfaff sketched a concept for such a device in a meeting with TI representatives, and he later made detailed engineering drawings of the device. Pfaff sent the drawings to a manufacturer for customized tooling and production in February or March of 1981. On April 8, 1981, a company acting on behalf of TI issued a purchase order to Pfaff's company for 30,100 sockets. The purchase order confirmed an earlier, oral order on March 17, 1981. As of April 19, 1981, Pfaff's invention had not yet been physically produced. Pfaff filed his patent application on April 19, 1982, and a patent issued in 1985.

A few years later, Pfaff sued Wells Electronics, claiming that a device sold by Wells infringed Pfaff's patent. At trial, the district court determined that Pfaff's invention was not "on sale" within the meaning of Section 102(b) and that Wells Electronics's device infringed the patent. On appeal, the Federal Circuit reversed. 124 F.3d 1429. The Court held that, although Pfaff's invention had never been physically reduced to practice by the critical date of April 19, 1981, the device had been "commercialized" by that date (id. at 1433) and was "substantially complete" because the only step remaining to be performed was the physical production by the manufacturer. Id. at 1435. The court emphasized that no prototype was necessary because the invention was not mechanically complicated, and Pfaff was confident that his invention would work. Id. at 1434. The court found that testing performed after April 19, 1981 was not to determine whether the invention worked but to determine the durability of the invention. Because durability was not a claimed or inherent aspect of Pfaff's invention, the court found that the subsequent testing did not prevent the device from being "substantially complete" more than one year prior to the date of the patent application. Id. at 1435.

In his petition for certiorari, Pfaff argues that the Federal Circuit's rejection of a "fully complete" test in favor of a "substantially complete" test brings dangerous uncertainty to an area of the law in which inventors need an easily understood, bright-line test. The manner in which the "on sale" bar of Section 102(b) is applied certainly affects the scope of pre-filing activities an inventor can undertake without jeopardizing subsequent patent rights. Thus, this case should be of substantial interest to any members of the business community that file for patent protection of intellectual property.

Copyright 1995 Mayer, Brown & Platt. This Mayer, Brown & Platt publication provides information and comments on legal issues and developments of interest to our clients and friends. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

This Mayer, Brown, Rowe & Maw Supreme Court Docket Report provides information and comments on legal issues and developments of interest to our clients and friends. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.