793 F.2d 1261 (Fed. Cir. 1986), 85-2096, Moleculon Research Corp. v. CBS, Inc.

Docket Nº:Appeal No. 85-2096.
Citation:793 F.2d 1261
Party Name:229 U.S.P.Q. 805 MOLECULON RESEARCH CORPORATION, Appellee, v. CBS, INC., Appellant.
Case Date:May 16, 1986
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1261

793 F.2d 1261 (Fed. Cir. 1986)

229 U.S.P.Q. 805



CBS, INC., Appellant.

Appeal No. 85-2096.

United States Court of Appeals, Federal Circuit

May 16, 1986

Page 1262

Lewis H. Eslinger, Eslinger & Pelton, P.C., New York City, argued, for appellant. With him on brief, were William E. Pelton, Morris, Nichols, Arsht & Tunnell, Los Angeles, Cal., and Walter L. Pepperman, Wilmington, Del., of counsel.

Robert X. Perry, Jr., Wilkes, Artis, Hedrick & Lane, Chartered, Washington, D.C., argued, for appellee. With him on brief, was J. Carter McKaig and W. Brown Morton, Jr., Warshaw, Va.

Before BALDWIN, NIES, and BISSELL, Circuit Judges.

BALDWIN, Circuit Judge.

This is an appeal from the judgment of the United States District Court for the District of Delaware, reported at 594 F.Supp. 1420, holding claims 3-5 and 9 of Moleculon Research Corporation's U.S. Patent

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No. 3,655,201 ('201 patent) valid and infringed by certain of the well-known Rubik's Cube puzzles. We affirm in part, vacate in part, and remand.


Moleculon, as assignee of the '201 patent which issued to Larry D. Nichols, sued CBS Inc., as successor to the Ideal Toy Corporation, alleging infringement of claims 3, 4, 5, 6, and 9 of the '201 patent.

Nichols and the '201 patent

A puzzle enthusiast since childhood, Nichols, in the summer of 1957, conceived of a three-dimensional puzzle capable of rotational movement. He envisioned an assembly of eight cubes attached in a 2 X 2 X 2 arrangement, with each of the six faces of the composite cube distinguished by a different color and the individual cubes being capable of rotation in sets of four around one of three mutually perpendicular axes.

During the period 1957-1962, while doing graduate work in organic chemistry, Nichols constructed several paper models of his puzzle, making cubes of heavy file-card type paper and affixing small magnets to the inside of the cubes. Although these models confirmed the feasibility of Nichols' conception, they lacked durability. A few close friends, including two roommates and a colleague in the chemistry department, had occasion to see one of these paper models in Nichols' room and Nichols explained its operation to at least one of them.

In 1962, Nichols accepted employment as a research scientist at Moleculon. In 1968, Nichols constructed a working wood block prototype of his puzzle which he usually kept at home but on occasion brought into his office. In January 1969, Dr. Obermayer, the president of Moleculon, entered Nichols' office and happened to see the model sitting on his desk. Obermayer expressed immediate interest in the puzzle and Nichols explained its workings. Obermayer asked whether Nichols intended to commercialize the puzzle. When Nichols said no, Obermayer suggested that Moleculon try to do so. In March 1969, Nichols assigned all his rights in the puzzle invention to Moleculon in return for a share of any proceeds of commercialization. On March 7, 1969, Moleculon sent Parker Brothers an actual model and a description of the cube puzzle. In the next three years, Moleculon contacted between fifty and sixty toy and game manufacturers, including Ideal. Ideal responded to the effect that it did not currently have an interest in marketing the puzzle. Moleculon itself did not succeed in marketing the Nichols cube.

On March 3, 1970, Nichols filed on behalf of Moleculon a patent application covering his invention. The '201 patent issued on April 11, 1972.

The subject matter of the '201 patent, in its preferred embodiment, is a cube puzzle composed of eight smaller cubelets that may be rotated in groups of four adjacent cubes, and a method by which the sets of cubes may be rotated, first to randomize, and then to restore a predetermined pattern on the six faces of the composite cube.

Claims 3, 4, and 5 are as follows: 1

3. A method for restoring a preselected pattern from sets of pieces which pieces have constantly exposed and constantly nonexposed surfaces, the exposed surfaces adapted to be combined to form the preselected pattern, which sets when in random engagement fail to display said preselected pattern which comprises:

a. engaging eight cube pieces as a composite cube;

b. rotating a first set of cube pieces comprising four cubes about a first axis;

c. rotating a second set of four cubes about a second axis; and

d. repeating steps (b) and (c) until the preselected pattern is achieved.

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4. The method of claim 3 which includes rotating sets of cubes about one of three mutually perpendicular axes with reference to the composite structure.

5. The method of claim 3 wherein the sets of cubes are rotated through multiples of 90?.

Claim 9 is the only apparatus claim remaining in the suit: 2

9. A puzzle comprising eight cubes, visually distinguishable indicia on three faces only of each cubes [sic] with the eight cubes together having six visually distinct indicia,

means associated with each of the remaining faces only of each of the cubes releasably maintaining the cubes in assembled relationship forming a composite cube, said maintaining means enabling three interaffiliated groups of four contiguous cubes each to be rotated respectively about three mutually perpendicular axes, the six distinct indicia being so located on the respective cubes that the cube groups can be rotated to effect the display of a distinct indicia on each of the six faces of the composite cube.

Shown below are Figs. 1 and 2b of the patent:



The Rubik's Cube and Variations

The accused products are the well-known 3 X 3 X 3 Rubik's Cube puzzle, two 2 X 2 X 2 variations--a Japanese-made Pocket Rubik's Cube and a Taiwanese-made Pocket Rubik's Cube (pocket cubes), and a 4 X 4 X 4 Rubik's Revenge. As shown below, these puzzles externally appear as composite cubes composed of smaller cubes or cubelets (27 for the 3 X 3 X 3, 8 for the 2 X 2 X 2, and 64 for the 4 X 4 X 4):


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Internal inspection reveals that the composite cube is not composed of true six-sided cubelets but rather is composed of an internal mechanism holding together cubelet shells which have one or more external faces and permitting sets of cubelets to be rotated about an axis.


Whether the district court erred in (1) holding that the claimed invention was not in public use nor on sale within the meaning of 35 U.S.C. Sec. 102(b); (2) holding claims 3-5 not invalid for lack of utility and enablement under 35 U.S.C. Secs. 101, 112; (3) holding claims 3-5 and 9 nonobvious under 35 U.S.C. Sec. 103; and (4) finding infringement of claim 9 and induced infringement of claims 3, 4, and 5.


  1. Sec. 102(b) on sale and public use bars

    CBS argues that the subject matter of the '201 patent was in "public use" and "on sale" by Nichols, prior to the March 3, 1969 critical date (i.e., one year prior to filing of the patent application), thus rendering the patent invalid under section 102(b).

    (a) Public Use

    CBS labels as public use Nichols' displaying of the models to other persons (such as his colleagues at school) without any mention of secrecy. CBS ascribes only commercial purpose and intent to Obermeyer's use of the wood model and argues that a conclusion of barring public use under Sec. 102(b) is compelled. We disagree.

    This is what the district court had to say:

    The essence of "public use" is the free and unrestricted giving over of an invention to a member of the public or the public in general. What I see here, by contrast, is the inventor's private use of his own invention for his own enjoyment. "Private use of one's own invention is permissible."

    * * *

    While it is true that Nichols explained his puzzle to a few close colleagues who inquired about it and allowed Obermayer to in fact use it, the personal relationships and other surrounding circumstances were such that Nichols at all times retained control over its use as well as over the distribution of information concerning it. He never used the puzzle or permitted it used in a place or at a time when he did not have a legitimate expectation of privacy and of confidentiality. In these respects, I consider the exposure to Obermayer in Nichols' office no different than the exposure of Nichols' close friends in his home.

    ... Here also the relationship between the participants in the alleged uses evidences a retention of control by Nichols. None of those participants had any basis

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    for inferring that the puzzle was being given over by Nichols for their free and unrestricted use. Holding the public use bar inapplicable in these circumstances will not remove anything from the public domain. Moreover, there is absolutely no evidence in this case of commercially motivated activity by Nichols during the relevant period. Accordingly, the underlying policy against extending the effective term of exclusivity is not offended by a finding that the Nichols invention was not in public use.

    594 F.Supp. at 1427 (citations omitted).

    CBS correctly recognizes that the district court's conclusion on public use under Sec. 102(b) is subject to review as a question of law while the facts underlying the conclusion on public use are subject to the clearly erroneous standard of review. Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 1537, 222 USPQ 553, 559 (Fed.Cir.1984).

    CBS urges that the decision in Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755 (1881), compels a conclusion of public use in the...

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