Wednesday, November 13, 2013

Pfaff v. Wells Electronics, Inc. case brief

Pfaff v. Wells Electronics, Inc. case brief summary
525 U.S. 55 (1998)


CASE SYNOPSIS
Petitioner challenged a decision of the United States Court of Appeals for the Federal Circuit, which held that petitioner was barred from patenting his invention pursuant to 35 U.S.C.S. § 102(b) since the invention had been commercially marketed more than one year before the patent application, although the invention was not reduced to practice.

CASE FACTS
Petitioner developed a computer chip socket and prepared detailed engineering drawings describing the invention. A company placed an order for the sockets after petitioner showed it the drawings in March 1981. However, the invention was not reduced to practice until July 1981, and petitioner filed a patent application in April 1982. Petitioner brought an infringement suit against respondent, but judgment in petitioner's favor was reversed by the court of appeals.


DISCUSSION

  • The Court affirmed, holding that petitioner was barred from patenting his invention as it had been on sale more than one year prior to the patent application, pursuant to 35 U.S.C.S. § 102(b), due to petitioner's marketing of the product to the company. 
  • It was not necessary to show the invention was reduced to practice at the time in order for it to have been on sale. 
  • Rather, the on-sale bar to patentability applied where the invention was the subject of a commercial offer for sale and the invention was ready for patenting, which could be demonstrated either by reduction to practice or, as here, by preparation of descriptions that were sufficiently specific to enable one skilled in the art to practice the invention.
CONCLUSION
The Court affirmed the decision holding petitioner was barred from patenting his invention since it was on sale more than one year prior to the patent application. Petitioner had commercially marketed his device more than one year before the application, at which time descriptions of the device existed that were sufficiently specific to enable one skilled in the art to practice the invention, although it was not yet reduced to practice.

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