TABLE OF CONTENTS
Interest of the United States
Statement
Summary of argument
Argument:
Section 102(b) of the Patent Act limits the
patentability of a previously sold invention
without regard to whether the invention had
been reduced to practice at the time the in-
vention was placed on sale
A. Section 102(b) does not require an inquiry
into whether the invention had been actually
reduced to practice at the time it was placed on sale
B. The Patent Act does not define "invention" to
require actual reduction to practice
C. The Patent Act and related federal statutes
indicate that an inventor can make an
"invention" without first reducing it to
practice
D. Petitioner's proposed construction is incon-
sistent with Section 102's usage of the term
"invention" and the policies underlying the
on-sale bar
E. Petitioner's proposed construction is not sup-
ported by the legislative history of the Patent
Act or defintive judicial precedent
F.The Court should adopt a clear standard for
applying Section 102(b)'s on-sale bar to com-
mercial sales
Conclusion
TABLE OF AUTHORITIES
Cases:
Andrews v. Hovey, 123 U.S. 267 (1887)
Bailey v. United States, 516 U.S. 137 (1995)
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141 (1989)
Brogan v. United States, 118 S. Ct. 805 (1998)
Cardinal Chem. Co. v. Morton Int'l, Inc.,
U.S. 83 (1993)
Clark Thread Co. v. Willimantic Linen Co.,
U.S. 481 (1891)
Corona Cord Tire Co. v. Dovan Chemical Corp.,
276 U.S. 358 (1928)
Egbert v. Lippman, 15 Blatchf. 295 (1878)
Envirotech Corp. v. Westech Eng'g Inc.
F.2d 1571 (Fed. Cir. 1990) 18-19
Ferag AG v. Quipp, Inc., 45 F.3d 1562 (Fed. Cir.),
cert. denied, 516 U.S. 816 (1995)
Graham v. John Deere Co., 383 U.S. 1 (1966)
Great Northern Corp. v. Davis Core & Pad Co.,
782 F.2d 159 (Fed. Cir. 1986)
Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367 (Fed. Cir. 1986), cert. denied, 480
U.S. 947 (1987)
Laas v. Scott, 161 F. 122 (E.D. Wis. 1908)
Loom Co. v. Higgins, 105 U.S. 580 (1881)
Mahurkar Double Lumen Hemodialysis Catheter
Patent Litig., In re:
71 F.3d 1573 (Fed. Cir. 1995)
831 F. Supp. 1354 (N.D. Ill. 1993)
Marconi Wireless Tel. Co. v. United States, 320
U.S. 1 (1943)
Metallizing Eng'g Co. v. Kenyon Bearing
& Auto Parts Co., 153 F.2d 516 (2d Cir.), cert. denied, 328 U.S. 840 (1946)
Micro Chem., Inc. v. Great Plains Chem. Co.,
103 F.3d 1538 (Fed. Cir.), cert. denied, 117 S. Ct.
2516 (1997)
Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829)
Petrolite Corp. v. Baker Hughes, Inc., 96 F.3d
1423 (Fed. Cir. 1996)
Scott v. Finney, 34 F.3d 1058 (Fed. Cir. 1994)
Seal-Flex, Inc. v. Athletic Track and Court Constr., 98 F.3d 1318 (Fed. Cir. 1996) 10-11, 21, 28
Seymour v. Osborne, 78 U.S. (11 Wall.) 516
(1870) 26
T.H. Symington Co. v. National Malleable Castings
Co., 250 U.S. 383 (1919)
The Telephone Cases, 126 U.S. 1 (1888)
UMC Elec. Co. v. United States, 816 F.2d 647
(Fed. Cir. 1987), cert. denied, 484 U.S. 1025
(1988)
United States v. Adams, 383 U.S. 39 (1966)
United States v. Bestfoods, No. 97-454 (June 8,1998) 12
Constitution and statutes:
U.S. Const. Art. I, § 8, Cl. 8
Federal Nonnuclear Energy Research and Development Act of 1974, 42 U.S.C. 5901 et seq.
42 U.S.C. 5908(m)(3)
42 U.S.C. 5908(m)(4)
Federal Technology Transfer Act of 1986
U.S.C. 3701 et seq.
15 U.S.C. 3703(9)
15 U.S.C. 3703(10)
National Aeronautics and Space Act of 1958, 42
U.S.C. 2451 et seq.
42 U.S.C. 2457(j)(3)
Patent Act of 1790, ch. 7, 1 Stat. 109
Patent Act of 1793, ch. 11, 1 Stat. 318
Patent Act of 1836, ch. 357, 5 Stat. 117
§ 6, 5 Stat. 117
Patent Act of 1839, ch. 88, 5 Stat. 353
§ 7, 5 Stat. 354
Patent Act of 1870, ch. 230, 16 Stat. 198
§ 24, 16 Stat. 201
Patent Act of 1939:
ch. 450, § 1, 53 Stat. 1212 25
ch. 451, 53 Stat. 1212
Patent Act of 1952, ch. 950, 66 Stat. 792, 35 U.S.C.
100 et seq.
35 U.S.C. 100
35 U.S.C. 100(a)
35 U.S.C. 101
35 U.S.C. 101-103
35 U.S.C. 102
35 U.S.C. 102(a)
35 U.S.C. 102(b)
35 U.S.C. 102(c)
35 U.S.C. 102(d)
35 U.S.C. 102(e)
35 U.S.C. 102(g)
35 U.S.C. 103
35 U.S.C. 111-115
35 U.S.C. 131
35 U.S.C. 151
Patent Act Amendments of 1980, Pub. L. No. 96-
517, 94 Stat. 3019, 35 U.S.C. 201 et seq.
35 U.S.C. 201(d)
35 U.S.C. 201(g)
Miscellaneous:
3 D. Chisum, Chisum on Patents (1998)
H.R. Rep. No. 961, 76th Cong., 1st Sess. (1939)
Webster's New International Dictionary:
(1st ed. 1917)
(2d ed. 1958)
|
In the Supreme Court of the United States
OCTOBER TERM, 1998
NO. 97-1130
WAYNE K. PFAFF, PETITIONER
V.
WELLS ELECTRONICS, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE SUPPORTING RESPONDENT
INTEREST OF THE UNITED STATES
This case presents a fundamental question respecting the patentability of inventions. That question is important to the United States because the
Constitution entrusts Congress with the power to determine the availability and scope of patent rights. See U.S. Const. Art. I, § 8, Cl. 8. Congress has charged the Patent and Trademark Office (PTO) with responsibility to examine all patent applications to ensure that they satisfy the statutory conditions for patentability. See 35 U.S.C. 131. More generally, the United States
has an interest in preserving the balance that Congress has struck among the competing policy
interests that underlie the patent system. Those interests include creating incentives for
innovation, disseminating useful knowledge, and preserving competition.
STATEMENT
Petitioner Wayne K. Pfaff sued respondent Wells Electronics, Inc., for infringement of his
patent. The United States District Court for the Northern District of Texas adopted the report
of a special master and ruled, among other things, that the patent contained valid claims and
that Wells had infringed them. Pet. App. 21a-22a. The court of appeals reversed. Id. at 1a-20a. The court of appeals concluded, in relevant part, that petitioner's patent was invalid under
Section 102(b) of the Patent Act, 35 U.S.C. 102(b), because petitioner did not apply for his
patent until more than one year after he had placed his invention "on sale." Pet. App. 2a.
1. The Patent Clause of the Constitution empowers Congress "[t]o promote the Progress of
Science and useful Arts by securing for limited Times to * * * Inventors the exclusive
Right to their * * * Discoveries." U.S. Const. Art. 1, § 8, Cl. 8 (emphasis added). Congress
has implemented that Patent Clause through statutory enactments, commonly known as the
Patent Acts, that have set out the conditions for obtaining a patent. See, e.g., Patent Act of
1790, ch. 7, 1 Stat. 109; Patent Act of 1793, ch. 11, 1 Stat. 318; Patent Act of 1836, ch. 357,
5 Stat. 117; Patent Act of 1839, ch. 88, 5 Stat. 353; Patent Act of 1870, ch. 230, 16 Stat. 198;
Patent Act of 1939, ch. 451, 53 Stat. 1212; Patent Act of 1952, ch. 950, 66 Stat. 792.
The Patent Act of 1952, as amended, provides the currently controlling law governing the
issuance of patents. See 35 U.S.C. 100 et seq. Sections 101 through 103 set out the basic
requirements to qualify for a patent. As this Court has explained, those Sections indicate that
"patentability is dependent upon three explicit conditions: novelty and utility as articulated in
§ 101 and § 102, and non-obviousness * * * , as set out in § 103." See Graham v. John
Deere Co., 383 U.S. 1, 12 (1966); United States v. Adams, 383 U.S. 39, 48 (1966). See
generally Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146-151 (1989).
Section 101 provides the basic test for patentability. It states that an inventor may obtain a
patent for "any new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof." 35 U.S.C. 101. Section 102 amplifies on the
limitations that arise from the novelty requirement. Section 102(a) provides, for example, that
an applicant is not entitled to a patent if "the invention was known or used by others in this
country * * * before the invention thereof by the applicant for patent." 35 U.S.C. 102(a).
Section 102(b) further states that an applicant is not entitled to a patent if "the invention was
* * * in public use or on sale in this country, more than one year prior to the date of the
application for patent." 35 U.S.C. 102(b).
Section 103 of the Patent Act articulates the additional requirement, added explicitly in 1952,
that the subject matter of the invention must be "non-obvious." 35 U.S.C. 103. Section 103
specifically states that a patent may not be obtained, even though the invention is not
identically disclosed or described under Section 102, if the differences between the subject
matter and the prior art "are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordi-nary skill in the art." 35 U.S.C.
103. In other words, "Patentability is to depend, in addition to novelty and utility, upon the
'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary
skill in the pertinent art." Graham, 383 U.S. at 14.
The Patent Act also addresses the question of how to determine who is entitled to a patent
among competing inventors who each claim to have created the same invention. Section
102(g) states the general rule: "In determining the priority of invention there shall be
considered not only the respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to conceive and last to reduce
to practice, from a time prior to conception by the other." 35 U.S.C. 102(g). See 3 D.
Chisum, Chisum on Patents § 10.01, at 10-9 (1998).
2. Petitioner, an inventor who owns a company called Plastronics, Inc., developed and
patented a device for mounting and removing semiconductor components. Petitioner began
development of his device in November 1980, in response to a request from Texas Instruments
Corporation (TI) that he create a housing, or socket, for mounting and removing "leadess chip
carriers." Leadless chip carriers are used in computer applications to interconnect semiconductor components, or "chips," in a way that provides a maximum number of interconnections in
a minimum amount of space on the circuit board. See Pet. App. 2a-4a, 26a-29a, 177a-179a,
199a-200a. TI sought a socket that would provide a means for rapidly mounting and removing
leadless chip carriers from the circuit board for testing and other purposes. See id. at 4a, 180a-181a, 200a-201a.
Petitioner met with TI and sketched his concept of a socket for leadless chip carriers. Pet.
App. 4a, 121a. He later provided TI with detailed engineering drawings, which he also sent
to a company called Weis-Aug, which could provide customized tooling and pro-duction of
such devices. Id. at 4a, 121a-122a. On April 8, 1981, TI's representative, the Delta V
Company, sent Plastronics a written purchase order, confirming TI's earlier oral order, for
30,100 sockets. Ibid.; J.A. 60. Petitioner subcontracted the production to Weis-Aug, which
manufactured the sockets and supplied them to petitioner in July 1981. Pet. App. 4a, 122a.
Petitioner subjected some of the sockets to a mechanical stress test, concluded that they performed satisfactorily, and shipped them to TI, which accepted the shipment. Id. at 4a, 122a-123a.
3. Petitioner applied for a patent on the socket on April 19, 1982, more than one year after
he received TI's purchase order and subcontracted with Weis-Aug for manufacture of the
sockets. Pet. App. 4a. The PTO examined petitioner's application and awarded petitioner a
patent. See Id. at 172a-198a. He thereafter discovered that Wells had produced and marketed
a similar device, and he brought his first suit for patent infringement against Wells. A district
court ruled that petitioner's patent was valid, but held that Wells' device did not infringe the
patent. Id. at 198a-227a. The court of appeals affirmed the finding of non-infringement and,
in accordance with its practice at that time, vacated the district court's finding of patent validity
as moot. Id. at 229a (Table). See Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83
(1993) (holding that the routine use of that practice is an abuse of discretion).
Petitioner brought this second infringement action after he later learned that Wells was
selling a modified version of its device. J.A. 5, 44. The district court ruled on a motion for
summary judgment that the device did not infringe petitioner's patent, but the court of appeals
reversed and remanded for further proceedings, holding that the court had improperly resolved
a disputed issue of material fact. Pet. App. 155a-169a. On remand, the district court referred
the case to a master for a non-jury trial. The master prepared an extensive report
recommending that the district court find, in relevant part, that petitioner's patent is valid and
that Wells had infringed certain of the patent claims. Id. at 23a-154a. The district court
adopted the master's report and recommended findings of fact and conclusions of law, id. at
21a-22a, including his recommendation that the invention was not "on sale" more than one
year before petitioner applied for his patent, 35 U.S.C. 102(b), because "[t]here was no
reduction to practice of the invention prior to the critical date," Pet. App. 123a; see id. at 123a-126a.
The court of appeals reversed. Pet. App. 1a-20a. That court rejected the district court's
holding that petitioner's invention was not "on sale" within the meaning of Section 102(b).
Noting that the sale admittedly was "purely commercial, with no experimentation or additional
development involved," id. at 7a, the court of appeals ruled that "reduction to practice is not
necessarily a prerequisite to application of the on-sale bar," id. at 8a. It concluded that "the
appropriate question is whether the invention was substantially complete at the time of the sale
such that there was 'reason to expect that it would work for its intended purpose upon
completion.'" Id. at 9a. The court found that test satisfied here because the "substantially
completed socket had entered the production phase prior to the critical date and a specific
purchase order was being filled." Id. at 10a; see also id. at 13a. The court of appeals also
rejected petitioner's arguments that Wells had infringed certain claims in the patent that
reflected post-sale changes to the invention. Id. at 13a-20a. The court concluded that those
claims "would have been obvious in light of the prior art and the socket that was on sale." Id.
at 20a.
SUMMARY OF ARGUMENT
Section 102(b) of the Patent Act states that an inventor who places an invention "on sale"
must apply for a patent within one year or lose the right to receive a patent. 35 U.S.C. 102(b).
The Federal Circuit correctly ruled that Section 102(b)'s on-sale bar applies without regard to
whether the inventor had actually reduced his invention to practice--viz., had constructed the
invention and demonstrated that it would work for its intended purpose--at the time of the
offer of a commercial sale.
The express terms of Section 102(b) indicate that the on-sale bar applies if the inventor
makes a commercial offer to sell an invention and then applies for a patent that claims the same
invention more than one year after placing it on sale. Section 102(b) makes no reference
whatsoever to "reduction to practice." Although petitioner suggests that reduction to practice
is implicit in the Patent Act's use of the term "invention," the Act's definition of that word
indicates that it should be construed in light of its ordinary meaning "unless the context
otherwise indicates." 35 U.S.C. 100(a).
The statutory context here does not require, or even suggest, petitioner's proposed
construction. To the contrary, Sections 101 through 103 manifest Congress's understanding
that an inventor can make an "invention" and apply for a patent without actually reducing the
invention to practice. Indeed, Section 102(g) indicates that the term "reduction to practice"
is a part of the test for determining priority among inventors and is not a part of the definition
of invention; Section 102(g) unambiguously expresses the un-derstanding that one "invention"
could be "made," but not "reduced to practice," before a second "invention" is "made" and
"reduced to practice." 35 U.S.C. 102(g). Congress revealed that same understanding in a variety of other statutes addressing the federal government's rights to patent "inventions" that are
"made" in the course of government employment, assistance, or cooperative agreements. See,
e.g., Federal Technology Transfer Act of 1986, 15 U.S.C. 3703(9) and (10).
Petitioner's proposed construction is also inconsistent with Section 102(b)'s specific usage
of the term "invention" and the policies underlying the on-sale bar. Section 102(b) uses the
term invention in contexts in which it is clear that there is no need for the inventor to create a
physical embodiment. For example, an invention need not be physically constructed to be
"patented," "described in a printed publication" or--as in this case--placed "on sale." 35
U.S.C. 102(b). Furthermore, imposing a requirement of "reduction to practice" would defeat
Section 102(b)'s primary statutory objective by allowing an inventor to exploit the commercial
value of the invention while deferring the beginning of the statutory term of the patent.
Petitioner's proposed test would also fail to provide a clear date from which the public, the
PTO, and the courts could measure the commencement of Section 102(b)'s one-year grace
period.
Petitioner is mistaken in suggesting that his proposed construction is supported by the Patent
Act's legislative history and judicial precedent. The legislative history of the Patent Act is
silent on the specific question of whether the term "invention" connotes actual reduction to
practice, and this Court has never squarely addressed the question. Until the Federal Circuit's
decision in UMC Electronics Co. v.
United States, 816 F.2d 647, 652 (Fed. Cir. 1987), cert. denied, 484 U.S. 1025 (1988), the
lower courts had not reached a consensus on whether Section 102(b)'s on-sale bar required
actual reduction to practice. In the intervening years, the Federal Circuit, which has nationwide jurisdiction over patent cases, has consistently held that reduction to practice is not
required for the bar to apply.
When, as in this case, it is undisputed that the inventor has offered his invention for
commercial sale, Section 102(b)'s on-sale bar can be applied by simply examining whether the
offer embodies the invention for which a patent is later sought. If the invention claimed in the
patent application is the same invention that was offered for sale, or an obvious variation
thereof, then the inventor is not entitled to a patent unless he submits his application within one
year of the date on which the invention was placed "on sale." That test satisfies the language
and statutory objectives of Section 102(b), and it provides a workable rule for inventors,
competitors, the PTO, and the courts.
ARGUMENT
SECTION 102(b) OF THE PATENT ACT LIMITS THE PATENTABILITY OF A
PREVIOUSLY SOLD INVENTION WITHOUT REGARD TO WHETHER THE
INVENTION HAD BEEN REDUCED TO PRACTICE AT THE TIME THE INVENTION
WAS PLACED ON SALE
A. Section 102(b) Does Not Require An Inquiry Into Whether The Invention Had Been Actually Reduced To Practice At The Time It Was Placed On Sale
Section 102 of the Patent Act sets out conditions on the issuance of a patent that are designed
to ensure that the invention identified in the patent application is sufficiently novel to justify
the award. Section 102(b) states the condition of particular pertinence here: A person is not
entitled to a patent if the invention was patented or described in a printed publication in this
or a foreign country or in public use or 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) (emphasis added).
Section 102(b)'s "on-sale" bar prevents an inventor who has placed his invention in commerce
from obtaining a patent unless the inventor applies for a patent within one year of the sale.
That provision implements Congress's longstanding policy judgment that inventors should not
be allowed to exploit the commercial value of their inventions while postponing indefinitely
the beginning of the patent's grant of a temporally limited monopoly. See, e.g., Bonito Boats,
Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148-149 (1989); , 123 U.S.
267, 274 (1887); Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 23-24 (1829); Pet. App. 7a; Ferag
AG v. Quipp, Inc., 45 F.3d 1562, 1566 (Fed. Cir.), cert. denied, 516 U.S. 816 (1995); UMC
Electronics Co. v. United States, 816 F.2d 647, 652 (Fed. Cir. 1987), cert. denied, 484 U.S.
1025 (1988); Metallizing Eng'g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 519-520 (2d Cir.) (L. Hand, J.), cert. denied, 328 U.S. 840 (1946).
By its plain terms, Section 102(b) lends itself to a relatively simple and predictable bright-line rule: "if the sale or offer in question embodies the invention for which a patent is later
sought, a sale or offer to sell that is primarily for commercial purposes and that occurs more
than one year before the application renders the invention unpatentable." Seal-Flex, Inc. v.
Athletic Track and Court Constr., 98 F.3d 1318, 1325 (Fed. Cir. 1996) (Bryson, J., concurring
in part and concurring in the result). See also UMC Electronics Co., 816 F.2d at 655-656
(describing how Section 102(b) operates "in conjunction with the obviousness determination
under section 103").
The question presented under Section 102(b) in this case is whether the socket that petitioner
ultimately claimed in his application is the same as, or obvious in light of, the socket petitioner
sold to TI. Because the sockets are the same, or differ only in respects that would have been
obvious under Section 103 of the Patent Act, 35 U.S.C. 103, the on-sale bar should apply. See
Pet. App. 13a, 20a.
B. The Patent Act Does Not Define "Invention" To Require Actual Reduction To Practice
Petitioner contends that Section 102(b)'s on-sale bar should not apply in this case because
the bar applies to the sale of an "invention." Pet. Br. 11-12. According to petitioner, the
Patent Act uses the word "invention" as a term of art that implicitly incorporates "reduction
to practice" as a necessary part of the definition. Id. at 12. Petitioner argues--contrary to
common usage and understanding--that he had not placed his invention "on sale" at the time
that he accepted Delta V's purchase order because he had not yet embodied the invention in
a physical form. Id. at 35-37.
The Patent Act does not support petitioner's counter-intuitive interpretation. The logical
starting place is Section 100 of the Act, which defines relevant statutory terms. Section 100(a)
states that, "unless the context otherwise indicates, * * * [t]he term 'invention' means
invention or discovery." 35 U.S.C. 100(a). That statutory definition suggests that the word
"invention," in the normal course, should be understood in light of its familiar, non-technical
meaning, which does not necessarily connote a reduction to practice. See United States v.
Bestfoods, No. 97-454 (June 8, 1998), slip op. 13 (indicating that, when Congress defines a
statutory term tautologically, the term should be understood to convey its "ordinary or natural
meaning"); see also Bailey v. United States, 516 U.S. 137, 145 (1995).
Construing the term "invention" in light of its ordinary meaning is particularly appropriate
in light of the structure of Section 100. Section 100(a)'s basic definition of "invention"
coincides with that of authoritative English dictionaries, which typically define "invention" as
the
[a]ct of inventing, or discovering through study, experiment, etc.; a devising or
contriving, esp. of that which has not before existed; as, the invention of gunpowder.
Webster's New International Dictionary 1305 (2d ed. 1958). Accord Webster's New
International Dictionary 1136 (1st ed. 1917). At the same time, Section 100's qualification
that the statutory definitions apply "unless the context otherwise indicates," preserves the
possibility that the term "invention" might be construed in a more technical sense if the
statutory context so requires. 35 U.S.C. 100.
Petitioner's construction, by contrast, cannot be reconciled with Section 100's reference to
terms of common usage or its provision for departure from that usage where "the context
otherwise indicates." 35 U.S.C. 100. Neither the term "invention" nor its statutory synonym
"discovery" necessarily connotes the technical patent law concept of "actual reduction to
practice," which generally requires that the invention be embodied in a physical form. See
Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 383 (1928); 3 D. Chisum,
Chisum on Patents § 10.06, at 10-156; cf. id. § 10.05, at 10-142 to 10-155 (describing the
concept of "constructive reduction to practice" through the filing of a patent application). If
Congress had intended its definition to encompass that specialized concept in every case, it
presumably would have said so. Congress's decision to define "invention" by words of
common usage and then allow departures from that definition indicates that the term
"invention" should not be construed to require actual reduction to practice unless the specific
statutory context mandates that construction.
C. The Patent Act and Related Federal Statutes Indicate That An Inventor Can Make An "Invention" Without First Reducing It To Practice
The core provisions of the Patent Act, as well as other federal statutes respecting patent
rights, indicate that petitioner is wrong in contending that the statutory term "invention"
necessarily connotes an actual reduction to practice. To the contrary, the patent laws
demonstrate Congress's understanding that an inventor can make an invention and obtain a
patent for that invention, without reducing it to a physical form.
The core provisions of the Patent Act governing patentability--Sections 101 through
103--indicate that an inventor can make an "invention" without taking the step of actually
reducing it to practice. For example, Section 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
35 U.S.C. 101 (emphasis added). Section 101 employs the terms "invents" and "discovers"
as they are generally understood in common usage. Neither Section 101 nor Sections 102 and
103 require that a person who makes an "invention"--whether it takes the form of a "process,
machine, manufacture, or composition of matter"--must actually reduce it to practice before
that person may apply for or receive a patent.
To the contrary, this Court has indicated that patentability is dependent on the "three explicit
conditions" set out in Sections 101 through 103: usefulness, novelty, and non-obviousness.
Graham v. John Deere Co., 383 U.S. 1, 12 (1966). The PTO has consistently followed the
practice of issuing patents for inventions that satisfy those conditions, provided that the
invention is described sufficiently in the application to satisfy the written description
requirement and to enable a skilled artisan to practice the invention. See 35 U.S.C. 111-115
(describing required contents of a patent application); 35 U.S.C. 131, 151 (describing process
of examination and issuance). An applicant may commonly be able to demonstrate reduction
to practice at the time of application, but that demonstration is not necessary to obtain a patent.
See, e.g., T.H. Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 386 (1919);
The Telephone Cases, 126 U.S. 1, 535-536 (1888); Loom Co. v. Higgins, 105 U.S. 580
(1881).
Sections 100 through 103 make only a single reference to "reduction to practice." Section
102(g) indicates that "reduction to practice" is a relevant criterion for determining priority
among inventors if they assert competing rights to a patent for the same invention. In that
situation, the determination of which inventor had first actually reduced an invention to
practice, and thereby made the invention available for public use, should have a bearing on
which inventor is entitled to a patent. See 35 U.S.C. 102(g); 3 D. Chisum, supra, § 10.03[1],
at 10-26; see generally id. at 10-26 to 10-27 (quoting Laas v. Scott, 161 F. 122, 126 (E.D. Wis.
1908)). Section 102(g) thus indicates that the concept of reduction to practice is part of the
test for determining priority among inventors, and it is not part of the definition of the term
"invention." See, e.g., Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 34-35 (1943).
Indeed, Section 102(g) plainly contemplates that one "invention" could be "made," but not
"reduced to practice," before a second "invention" is "made" and "reduced to practice." See
35 U.S.C. 102(g).
Petitioner's assertion that the term "invention" necessarily connotes actual reduction to
practice is not only inconsistent with the core provisions of the Patent Act, but it is also
contrary to other federal statutes that describe, in various contexts, the federal government's
rights to patent "inventions" that are "made" in the course of government employment,
assistance, or cooperative agreements. Those statutes further demonstrate Congress's
consistent understanding that its use of the term "invention" does not necessarily connote
actual reduction to practice and that an inventor may make an "invention" without first
reducing it to practice.
For example, the Federal Technology Transfer Act of 1986 (FTTA), 15 U.S.C. 3701 et seq.,
encourages domestic research and development efforts that may lead to patentable inventions
and prescribes standards for division of patent royalties. The FTTA defines the term
"[i]nvention" synonymously with the Patent Act to include "any invention or discovery which
is or may be patentable or otherwise protected under title 35." 15 U.S.C. 3703(9). The FTTA
further states that the term "'[m]ade' when used in conjunction with any invention means the
conception or first actual reduction to practice of such invention." 15 U.S.C. 3703(10)
(emphasis added). The FTTA thus indicates that Congress's use of the term "invention" does
not necessarily connote an invention that has been reduced to practice. Indeed, the FTTA's
definitions specifically provide--contrary to petitioner's thesis--that an inventor may make
an "invention" without actually reducing it to practice.
The Patent Act Amendments of 1980, Pub. L. No. 96-517, 94 Stat. 3019, codified at 35
U.S.C. 201 et seq., articulate the same understanding. The Amendments, which govern patent
rights in inventions made with federal assistance, define the term "invenion" to mean "any
invention or discovery which is or may be patentable or otherwise protectable under this title."
35 U.S.C. 201(d). The Amendments also state, in terms similar to those of the FTTA, that "the
term 'made' when used in relation to any invention means the conception or first actual
reduction to practice of such invention." 35 U.S.C. 201(g) (emphasis added). Like the FTTA,
those definitions indicate--contrary to petitioner's argument--that an inventor may make an
"invention" by conceiving it, without actually reducing it to practice.
The Federal Nonnuclear Energy Research and Development Act of 1974, 42 U.S.C. 5901
et seq., reflects the same principle. That Act, which encourages the development of new
energy technologies, states that "the term 'invention' means inventions or discoveries, whether
patented or unpatented," and states that "the term 'made' when used in relation to any
invention, means the conception or first actual reduction to practice of such invention." 42
U.S.C. 5908(m)(3) and (4) (emphasis added). The National Aeronautics and Space Act of
1958, 42 U.S.C. 2451 et seq., contains similar language. That Act provides that "the term
'made', when used in relation to any invention, means the conception or first actual reduction
to practice of such invention." 42 U.S.C. 2457(j)(3) (emphasis added).
The foregoing statutes reflect Congress's consistent understanding that its use of the term
"invention" does not necessarily refer to an invention that has been actually reduced to
practice. To the contrary, each of those statutes--including Section 102(g) of the Patent Act
itself--recognizes that an inventor may make an invention without reducing it to practice. If
this Court were to accept petitioner's position, the Court would annul Congress's essential
premise in each of those enactments.
D. Petitioner's Proposed Construction Is Inconsistent With Section 102's Usage Of The Term "Invention" And The Policies Underlying The On-Sale Bar
Petitioner's construction of the term "invention" is not only contrary to the terms of the
Patent Act and other federal statutes, but it is also inconsistent with Section 102's general
usage of that term and Section 102(b)'s specific policy objectives. There is no basis,
accordingly, for petitioner to argue that the statutory "context otherwise indicates" (35 U.S.C.
100) that the term "invention" should have a specialized meaning when that term is used in
relation to the on-sale bar.
Section 102 uses the term "invention" in contexts in which an invention might, but not
always must, be actually reduced to practice. For example, an invention that is "in public use" (35 U.S.C. 102(a) and (b)) will normally exist in some form of
physical embodiment--and therefore may be actually reduced to practice--by virtue of the fact
that the invention cannot otherwise be "used." But Section 102 also uses the term "invention"
in a number of other contexts in which it is clear that there is no need for the invention to be
reduced to a physical form. For example, an invention need not be physically embodied to be
"patented" (35 U.S.C. 102(b)), "described in a printed publication" (35 U.S.C. 102(a), (b) and
(d)), "described in a patent" (35 U.S.C. 102(e)), "abandoned" (35 U.S.C. 102(c) and (g)), or
"made" (35 U.S.C. 102(g)). See also pp. 14-15, supra. Furthermore, as this case demonstrates, an invention need not be physically embodied to be "on sale." 35 U.S.C. 102(b).
Petitioner was able to conceive and design his invention of a socket for leadless chip carriers
with sufficient particularity to make a commercial sale of his invention, without creating a
physical embodiment prior to sale. Indeed, it can be expected that computer-assisted design
and simulation technologies will increasingly allow inventors to conceive and test inventions
without actually reducing them to practice in the traditional sense of a physically tangible
embodiment.
Section 102(b)'s context does not require actual reduction to practice as a prerequisite for
the on-sale bar. Furthermore, imposing that requirement would defeat Section 102(b)'s
statutory objectives. "The foremost purpose of the on-sale bar is to 'prevent[] inventors from
exploiting the commercial value of their inventions while deferring the beginning of the statutory term.'" Pet. App. 6a, quoting Ferag AG, 45 F.3d at 1566; accord In re Mahurkar Double
Lumen Hemodialysis Catheter Patent Litigation, 71 F.3d 1573, 1577 (Fed. Cir. 1995);
Envirotech Corp. v. Westech Eng'g, Inc., 904 F.2d 1571, 1574 (Fed. Cir. 1990). As Judge
Learned Hand stated, Congress has determined that an inventor should not be given free rein
to "exploit his discovery competitively after it is ready for patenting" and "thereby extend the
period of his monopoly." Metallizing Eng'g Co., 153 F.2d at 520. Instead, the "public shall
as soon as possible begin to enjoy the disclosure." Ibid.
Petitioner's construction of invention would defeat that fundamental objective. An inventor
who has offered his invention for commercial sale has objectively manifested his judgment that
the invention is complete. As the record in this case demonstrates, the courts are entitled to
interpret an offer for commercial sale in that light:
Even though a prototype of the invention had not been built prior to the TI sale, the
district court found that [petitioner] was confident, based on his drawings, that this
invention would work. [Petitioner] testified that it was his practice to produce his
inventions without building any prototypes and that he had almost always been successful with this approach. Indeed, that [petitioner] expected his invention to work for
its intended purpose is substantiated by the large sale to TI and the ordering of
customized tooling.
Pet. App. 10a-11a. It is accordingly appropriate to require that an inventor who offers his
invention for commercial sale must file his patent application within the time period that
Congress has prescribed--a one-year grace period commencing with the offer. 35 U.S.C.
102(b). If the inventor were allowed to postpone the beginning of the grace period until the
invention is actually "reduced to practice," he would have the unilateral right to extend his pat-ent rights beyond the time period that Congress has allowed. See, e.g., UMC Electronics Co.,
816 F.2d at 655 ("by invoking reduction to practice as developed in interference law, an
inventor might be able to escape the on-sale bar simply through deft claim draftsmanship").
Petitioner does not seriously contest that his construction raises the risk that inventors would
be able to extend the time period of their patent monopoly. See Pet. Br. 32-33. He suggests,
instead, that "the Federal Circuit has overemphasized this perceived policy" against extending
the duration of the monopoly. Id. at 33 n.39. That policy, however, is reflective of the
Constitution's specification that patents should be temporally limited and is as venerable as the
patent laws themselves. See Bonito Boats, Inc., 489 U.S. at 148-149; Pennock, 27 U.S. (2
Pet.) at 23-24. Petitioner also raises a more substantial objection. He contends that the
Federal Circuit's test "has made it virtually impossible for inventors to determine with any certainty (or confidence) the filing deadline that will allow them to partake of the full grace
period." Pet. Br. 34. Petitioner's proposed test, however, suffers from that very flaw.
Petitioner would require a factual inquiry into the date of "actual reduction to practice." That
test would not provide inventors, the public, the PTO, or the courts with a clear rule in those
cases (such as this one) in which the inventor claims that he had not reduced his invention to
practice at the time he placed the invention on sale.
The concept of actual reduction to practice is simply too uncertain and manipulable to
provide a specific date from which to measure the one-year grace period. It is generally
understood that "[a]ctual reduction to practice occurs when the inventor (1) constructs a
product or performs a process that is within the scope of the patent claims, and (2) demonstrates the capacity of the inventive idea to achieve its intended purpose." 3 D. Chisum, supra,
§ 10.06, at 10-156 (footnotes omitted). See Corona Cord Tire Co., 276 U.S. at 383. The
application of that general test frequently requires a detailed factual inquiry into the specific
characteristics of the invention and the specific actions that the inventor took in constructing
or testing the physical embodiment of his conception. See, e.g., Scott v. Finney, 34 F.3d 1058,
1061-1063 (Fed. Cir. 1994). The test is unlikely to produce an objective or readily
ascertainable date from which to measure the one-year grace period.
By contrast, the construction that we urge provides the type of bright-line rule that petitioner
argues is appropriate. As this case indicates, the date when the inventor first offers the
invention for commercial sale is often readily ascertainable, typically by documentary
evidence. See Pet. App. 4a, 121a; J.A. 60. Under our construction, the inventor will be on
clear notice of the commencement date for the one-year period in which to file a patent
application or to make non-obvious improvements that would constitute a new invention. That
construction also provides a simple test for the public, the PTO, and the courts. In determining
whether Section 102(b)'s on-sale bar applies, potential competitors, the PTO, and the courts
need examine only whether "the sale or offer in question embodies the invention for which a
patent is later sought." See Seal-Flex, Inc., 98 F.3d at 1325 (Bryson, J., concurring in part and
concurring in the result).
The examination of whether the offer or sale "embodies the invention" entails the familiar
patent law inquiry into the factors of novelty and non-obviousness that would need to be made
under any test. As the court of appeals correctly noted, "[t]he on-sale bar is not limited to a
sale of, or offer to sell, a product that anticipates the later patented invention. It also applies
if 'the subject matter of the sale or offer to sell . . . would have rendered the claimed
invention obvious by its addition to the prior art.'" Pet. App. 14a (quoting UMC Electronics
Co., 816 F.2d at 656). But our proposed test, unlike petitioner's, does not require an additional
inquiry into the date of "actual reduction to practice," which would entail a potentially complex
factual inquiry into when the inventor created a physical embodiment of the device and when
the inventor actually demonstrated that the invention could achieve its intended purpose. See,
e.g., Scott, 34 F.3d at 1061-1063; Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1375-1377 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); Great Northern Corp.
v. Davis Core & Pad Co., 782 F.2d 159, 165 (Fed. Cir. 1986). That potentially complex
inquiry is appropriate in determining priority among competing inventors, but it does not
provide a clear rule for purposes of applying the on-sale bar, "which is guided by entirely
different policies." UMC Electronics Co., 816 F.2d at 655. Nor would the relevant factual
information be likely to be reasonably available to the public, in order to determine whether
particular competitive activity would infringe a valid patent. See In re Mahurkar Double
Lumen Hemodialysis Catheter Patent Litig., 831 F. Supp. 1354, 1369 (N.D. Ill. 1993), aff'd,
71 F.3d 1573 (Fed. Cir. 1995).
E. Petitioner's Proposed Construction Is Not Supported By The Legislative History Of The Patent Act Or Definitive Judicial Precedent
Petitioner argues that his construction is supported by the "legislative history" of Section
102(b) (Pet. Br. 16-22) and "a substantial body of judicial authority" (id. at 22-28). Neither
source provides an adequate basis for this Court to diverge from the clear implications of the
language, structure, and objectives of Section 102(b).
Petitioner suggests that the legislative history of Section 102(b) actually begins with this
Court's 1829 decision in Pennock v. Dialogue, supra, which recognized an implicit "on-sale"
bar in the Patent Act of 1793. The Court concluded that "the true construction of the act is,
that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to
go into public use, or to be publicly sold for use, before he makes application for a patent."
27 U.S. (2 Pet.) at 23-24.
Congress later adopted an explicit on-sale bar in the Patent Act of 1836 that, like Pennock,
rendered an invention unpatentable if the inventor placed the invention on sale before applying
for a patent. Patent Act of 1836, ch. 357, § 6, 5 Stat. 117. Congress thereafter revised that
provision to afford the inventor two years from the time of any sale of the invention to apply
for a patent. Patent Act of 1839, ch. 88, § 7, 5 Stat. 354. See also Patent Act of 1870, ch.
230, § 24, 16 Stat. 201. None of those enactments indicated that the on-sale bar applied only
to "inventions" that had been "reduced to practice."
Petitioner's only evidence that the Congresses of that era envisioned that the on-sale bar
would require an "actual reduction to practice" arises from this Court's decision in Andrews
v. Hovey, supra, which presented the question whether prior use and sale of an invention by
persons other than the inventor, without the use or consent of the inventor, would bar the
inventor's patent. See 123 U.S. at 268. The Court held that when such use or sale occurs
more than two years before the inventor's application, it "is fatal to the validity of the patent."
Ibid. In reaching that result, the Court stated:
The evident purpose of [Section 7 of the 1839 Act] was to fix a period of
limitation which should be certain, and require only a calculation of time, and
should not depend upon the uncertain question of whether the applicant had
consented to or allowed the sale or use. Its object was to require the inventor to
see to it that he filed his application within two years from the completion of his
invention, so as to cut off all question of the defeat of his patent by a use or sale
of it by others more than two years prior to his application, and thus leave open
only the question of priority of invention.
Id. at 274. Petitioner interprets that passage as "adopting completion of an invention as an
absolute prerequisite to starting the two year grace period." Pet. Br. 19. Petitioner, however,
reads far too much into the Court's observations.
The first sentence of the passage quoted from Andrews states the Court's understanding that
Section 7 sought "to fix a period of limitation" for the on-sale bar "that should be certain."
That would be the case only if (as Section 7 states) the grace period ran from the date of sale.
See 5 Stat. 354. The second sentence addressed the situation before the Court, in which a
person other than the inventor used the invention or sold it to others more than two years
before the inventor applied for a patent. The Court's statement that the "object" of the statute
"was to require the inventor to see to it that he filed his application within two years from the
completion of his invention" was simply a general observation about the practical
consequences of Congress's statutory scheme. The Court appeared to recognize that an inventor who applied for a patent within two years of the invention's "completion"--in the sense
that the invention was ready for commercial sale or patenting--could avoid "the defeat of his
patent by a use or sale of it by others more than two years prior to his application, and thus
leave open only the question of priority of invention." 123 U.S. at 274. See id. at 270 (citing
then-Judge Blatchford's opinion in Egbert v. Lippman, 15 Blatchf. 295, 297-298 (1878)). The
Court did not hold that "completion" of the invention--in the sense of actual reduction to
practice--itself provided the test for commencing the grace period. Such a holding would have
contradicted the 1839 Act's specific terms, which stated that a patent is invalid if a "purchase,
sale, or prior use has been for more than two years prior to such application for a patent." See
id. at 272 (reciting the statutory language). And, of course, the distinction petitioner seeks to
read into the passage was not a matter at issue in the case.
Petitioner next relies (Pet. Br. 20-21) on the legislative history of the Patent Act of 1939,
which reduced the grace period from two years to one year. Ch. 450, § 1, 53 Stat. 1212. The
House Report accompanying that legislation noted that the previous law "permits an inventor,
after his invention is fully completed, to make the invention known to the public for a period
of 2 years before the filing of the application for a patent." H.R. Rep. No. 961, 76th Cong.,
1st Sess. 1 (1939). Petitioner provides no reason to believe that the House Committee (much
less the full Congress) equated "full complet[ion]" with "reduction to practice." The
Committee could have just as easily understood that an inventor has "fully completed" his
invention when the invention is ready for commercial sale or when the "'invention is in such
a condition that he can apply for a patent for it.'" See Andrews, 123 U.S. at 270 (quoting
Egbert v. Lippman, 15 Blatchf. 295, 297 (1878)).
Just as petitioner's recitation of legislative history does not provide a persuasive basis for
holding that the term "invention," as used in Section 102(b), connotes a "reduction to
practice," petitioner's recitation of judicial precedent is also unconvincing. As an initial matter,
this Court has not addressed the question of the relationship between the on-sale bar and the
concept of reduction to practice. The Court's past discussions of "reduction to practice" have
arisen in the context of disputes among competing inventors that have not involved the meaning
of the on-sale bar. See, e.g., Corona Cord Tire Co., 276 U.S. at 383; T. H. Symington Co.,
supra; Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481 (1891); Seymour v. Osborne,
78 U.S. (11 Wall.) 516 (1870). Furthermore, the Court has itself used the term "invention" in
ways that indicate that the term does not necessarily embody the concept of reduction to
practice. See 78 U.S. at 552 ("Original and first inventors are entitled to the benefit of their
inventions if they reduce the same to practice.").
While this Court has not addressed the issue, the lower courts have historically been in
disarray on the question. The Federal Circuit canvassed a number of the leading cases in UMC
Electronics Co., 816 F.2d at 653-657, and concluded as follows:
Some courts have rejected any rigid rules for the operation of the statutory bar,
focusing, as much of our precedent does, on the policies of the statute. * * *
The regional circuits that have considered the question have given lip service to
a requirement of reduction to practice as part of the on-sale bar. However, when
faced with a specific factual situation which appeared to fall within the intent of
the statutory bar but did not technically satisfy the requirements for reduction to
practice, these courts have stepped back from a rigid application of that
requirement.
Id. at 654-655 (footnote omitted). Contrary to petitioner's suggestions (Pet. Br. 23-24), the
case law was not consistent prior to the Federal Circuit's decision in UMC Electronics Co.,
and inventors had no basis for believing that the law was settled. Furthermore, even if the
decisions of the courts of appeals demonstrated greater uniformity in support of petitioner's
position, that circumstance would not control this Court's conclusion respecting the meaning
of Section 102(b). See, e.g., Brogan v. United States, 118 S. Ct. 805, 811 (1998).
F. The Court Should Adopt A Clear Standard For Applying Section 102(b)'s On-Sale Bar To Commercial Sales
Since its decision in UMC Electronics Co., supra, the Federal Circuit has consistently
rejected the notion that Section 102(b)'s on-sale bar applies only if the invention offered for
commercial sale had been reduced to practice. See Pet. App. 8a; Micro Chem., Inc. v. Great
Plains Chem. Co., 103 F.3d 1538, 1544-1545 (Fed. Cir.), cert. denied, 117 S. Ct. 2516 (1997);
Petrolite Corp. v. Baker Hughes, Inc., 96 F.3d 1423, 1427 (Fed. Cir. 1996); Ferag AG, 45
F.3d at 1566-1568. In applying the on-sale bar, the court has typically inquired whether the
invention in question was "substantially complete," in the sense that there was reason to expect
that it would work, at the time of the sale or offer for sale. See Pet. App. 9a, 13a. The court
has also stated that "'[a]ll of the circumstances surrounding the sale or offer to sell, including
the stage of development of the invention and the nature of the invention, must be considered
and weighed against the policies underlying section 102(b).'" Id. at 6a, quoting Micro Chem.,
Inc., 103 F.3d at 1544, and UMC Electronics Co., 816 F.2d at 656.
It may be the case that, where the parties dispute whether an invention has been offered for
sale for "experimental" rather than for commercial purposes, see, e.g., Seal-Flex, Inc., 98 F.3d
at 1321, a court may need to evaluate the "circumstances surrounding the sale or offer to sell,"
Pet. App. 6a. But in cases such as this one, where it is undisputed that the sale of the invention
was for a commercial application, the pertinent inquiry, we believe, is more straightforward
and direct. Section 102(b)'s on-sale bar can be effectively implemented in accordance with
congressional intent by examining whether the offer to sell or sale "embodies the invention for
which a patent is later sought." Seal-Flex, Inc. 98 F.3d at 1325 (Bryson, J., concurring in part
and concurring in the result). This approach provides clear guidance: If an inventor offers to
sell or sells an invention for commercial purposes, and the inventor fails to file an application
for a patent within one year of the offer or the sale date, then the invention is not patentable
unless the inventor can show that the claimed invention contains new features that would not
have been obvious in light of the invention offered or sold. That test satisfies the language and
objectives of Section 102(b) and provides a workable rule for inventors, competitors, the PTO,
and the courts.
CONCLUSION
The judgment of the court of appeals should be affirmed.
Respectfully submitted.
NANCY J. LINCK
Solicitor
ALBIN F. DROST
Deputy Solicitor
JOHN M. WHEALAN
KEVIN T. KRAMER
Associate Solicitors
United States Patent and
Trademark Office
|
SETH P. WAXMAN
Solicitor General
Counsel of Record
FRANK W. HUNGER
JOEL I. KLEIN
Assistant Attorneys General
LAWRENCE G. WALLACE
Deputy Solicitor General
JEFFREY P. MINEAR
Assistant to the Solicitor
General
WILLIAM KANTER
ALFRED MOLLIN
DAVID SEIDMAN
MARK S. POPOFSKY
Attorneys
Department of Justice
Washington, D.C. 20530-0001
(202) 5142217
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June 1998