Pfaff v. Wells Electronics Inc., 971130

• Court: United States Supreme Court
• Writing for the Court: Stevens
• Citation: 525 U.S. 55,142 L.Ed.2d 261,119 S.Ct. 304
• Docket Number: 971130
• Decision Date: 10 November 1998
• Parties: 124 F.3d 1429 SUPREME COURT OF THE UNITED STATES WAYNE K. PFAFF, PETITIONER v. WELLS ELECTRONICS, INC.1130

525 U.S. 55
119 S.Ct. 304
142 L.Ed.2d 261

124 F.3d 1429

SUPREME COURT OF THE UNITED STATES

WAYNE K. PFAFF, PETITIONER
v.
WELLS ELECTRONICS, INC.

No. 97 1130

November 10, 1998

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT

Justice Stevens delivered the opinion of the Court.

Section 102(b) of the Patent Act of 1952 provides that no person is entitled to patent an "invention" that has been "on sale" more than one year before filing a patent application.1 We granted certiorari to determine 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.2

I

On April 19, 1982, petitioner, Wayne Pfaff, filed an application for a patent on a computer chip socket. Therefore, April 19, 1981, constitutes the critical date for purposes of the on-sale bar of 35 U. S. C. §102(b); if the 1-year period began to run before that date, Pfaff lost his right to patent his invention.

Pfaff commenced work on the socket in November 1980, when representatives of Texas Instruments asked him to develop a new device for mounting and removing semiconductor chip carriers. In response to this request, he prepared detailed engineering drawings that described the design, the dimensions, and the materials to be used in making the socket. Pfaff sent those drawings to a manufacturer in February or March 1981.

Prior to March 17, 1981, Pfaff showed a sketch of his concept to representatives of Texas Instruments. On April 8, 1981, they provided Pfaff with a written confirmation of a previously placed oral purchase order for 30,100 of his new sockets for a total price of $91,155. In accord with his normal practice, Pfaff did not make and test a prototype of the new device before offering to sell it in commercial quantities.3

The manufacturer took several months to develop the customized tooling necessary to produce the device, and Pfaff did not fill the order until July 1981. The evidence therefore indicates that Pfaff first reduced his invention to practice in the summer of 1981. The socket achieved substantial commercial success before Patent No. 4,491,377 (the '377 patent) issued to Pfaff on January 1, 1985.4

After the patent issued, petitioner brought an infringement action against respondent, Wells Electronics, Inc., the manufacturer of a competing socket. Wells prevailed on the basis of a finding of no infringement.5 When respondent began to market a modified device, petitioner brought this suit, alleging that the modifications infringed six of the claims in the '377 patent.

After a full evidentiary hearing before a Special Master,6 the District Court held that two of those claims (1 and 6) were invalid because they had been anticipated in the prior art. Nevertheless, the court concluded that four other claims (7, 10, 11, and 19) were valid and three (7, 10, and 11) were infringed by various models of respondent's sockets. App. to Pet. for Cert. 21a 22a. Adopting the Special Master's findings, the District Court rejected respondent's §102(b) defense because Pfaff had filed the application for the '377 patent less than a year after reducing the invention to practice.

The Court of Appeals reversed, finding all six claims invalid. 124 F.3d 1429 (CA Fed. 1997). Four of the claims (1, 6, 7, and 10) described the socket that Pfaff had sold to Texas Instruments prior to April 8, 1981. Because that device had been offered for sale on a commercial basis more than one year before the patent application was filed on April 19, 1982, the court concluded that those claims were invalid under §102(b). That conclusion rested on the court's view that as long as the invention was "substantially complete at the time of sale," the 1-year period began to run, even though the invention had not yet been reduced to practice. Id., at 1434. The other two claims (11 and 19) described a feature that had not been included in Pfaff 's initial design, but the Court of Appeals concluded as a matter of law that the additional feature was not itself patentable because it was an obvious addition to the prior art.7 Given the court's §102(b) holding, the prior art included Pfaff's first four claims.

Because other courts have held or assumed that an invention cannot be "on sale" within the meaning of §102(b) unless and until it has been reduced to practice, see, e. g., Timely Products Corp. v. Arron, 523 F.2d 288, 299 302 (CA2 1975); Dart Industries, Inc. v. E. I. Du Pont de Nemours & Co., 489 F.2d 1359, 1365, n. 11 (CA7 1973), cert. denied, 417 U.S. 933 (1974), and because the text of §102(b) makes no reference to "substantial completion" of an invention, we granted certiorari. 523 U.S. ___ (1998).

II

The primary meaning of the word "invention" in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in §1008 nor the basic conditions for obtaining a patent set forth in §1019 make...