WAYNE K. PFAFF, Petitioner, v. WELLS ELECTRONICS, INC., Respondent.

No. 97-1130

October Term, 1997

May 14, 1998

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

BRIEF AMICUS CURIAE FOR THE PATENT, TRADEMARK & COPYRIGHT SECTION OF THE BAR ASSOCIATION OF THE DISTRICT OF COLUMBIA IN SUPPORT OF AFFIRMANCE

This brief amicus curiae is presented by the Bar Association of the District of Columbia under Rule 37.3 of this Court. Letters of consent from the parties are filed herewith. n1

n1 No counsel for a party authored any part of this brief. Only amicus curiae made a monetary contribution to the preparation and submission of this brief.

Bruce T. Wider, Counsel of Record, Chair, Amicus Committee, Lynn E. Eccelston, Chair, Patent, Trademark & Copyright Section, Bar Association of the District of Columbia, 1819 H Street, N.W., 12th Floor, Washington, D. C. 20006, (202) 223-6600.

In view of the longstanding statutory definition that the one-year grace period to an "on sale" bar can start to run only after an invention is fully completed, should the Pfaff patent have been held invalid under 35 U.S.C. § 102(b) when Mr. Pfaff's invention was admittedly not "fully completed" more than one year before he filed his patent application? [*i]

[*1] II. INTEREST OF AMICUS

The Bar Association of the District of Columbia is a voluntary membership nonprofit organization. Membership is not restricted to any segment of the profession and thus the members and their clients represent widely diverging interests and views. Members include attorneys in private practice as well as those employed by corporations and those in government.

The Patent, Trademark & Copyright Section of the Bar Association of the District of Columbia includes members of the bar regularly practicing in and interested in patent law. Members frequently represent applicants for patent before the United States Patent and Trademark Office as well as patent owners and accused infringers. Members are thus concerned with obtaining valid patents as well as with the enforcement of patents and the defense against patent infringement actions.

[*2] In this brief, the Bar Association of the District of Columbia seeks to persuade this Honorable Court that inventors can put their inventions on sale, under the plain meaning of 35 U.S.C. § 102(b), at any time on or after the inventors have a complete conception of their invention. The invention need not exist in a physical, tangible form.

Section 102(b) of Title 35, United States Code, states, in relevant part, that "[a] person shall be entitled to a patent unless - (b) 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." Section 102(b) does not require an actual sale, only that the invention be "on sale."

Where an inventor has a complete conception of an invention and the inventor or those acting on behalf of the inventor offer that invention for sale, anyone receiving such an offer would presume the invention to be on sale, [*3] regardless of the existence or nonexistence of a physical, tangible embodiment of the invention. Using the plain meaning of § 102(b), such an offer to sell the invention would place the invention on sale and begin the one year period for filing an application for patent.

The test used by the Federal Circuit in Pfaff v. Wells Elecs., Inc., 124 F.3d 1429 (Fed. Cir. 1997), cert. granted, 118 S. Ct. 1183 (1998), that "the appropriate question is whether the invention was substantially complete at the time of sale such that there was 'reason to expect that it would work for its intended purpose upon completion,'" establishes an unnecessarily vague test. See id. at 1434 (emphasis added) (citations omitted). Nonetheless, the Federal Circuit's determination should be affirmed.

This case presents a narrow fact pattern. This case is distinguishable from a contract to develop an invention, where it is merely the hope of the parties that an invention will result; it is distinguishable from the case where the inventor builds a device and subjects it to experimentation to determine if the hoped-for invention will work; and it is distinguishable from the case where a third party offers an item for sale and the details of that offered item and whether it will work are unclear. Because of the many different fact patterns that can raise the on sale issue, it is a concern of amicus curiae that this Honorable Court's decision recognizes that the present case addresses only one of many frequently encountered fact patterns.

[*4] V. ARGUMENT

The statute at issue in this case is 35 U.S.C. § 102(b). Section 102(b) states in relevant part: "[a] person shall be entitled to a patent unless - (b) 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."

"Where, as here, the resolution of a question of federal law turns on a statute and the intention of Congress, we look first to the statutory language and then to the legislative history if the statutory language is unclear." Blum v. Stenson, 465 U.S. 886, 896 (1984). The language of [the statute] is not unclear. Thus, although a court appropriately may refer to a statute's legislative history to resolve statutory ambiguity, there is no need to do so here.

Toibb v. Radloff, 501 U.S. 157, 162 (1991). As in Toibb, the language of the statute at issue is clear. The statute asks if "the invention" was placed "on sale" in the United States more than one year prior to the date of application for a United States patent.

[*5] The statute does not require that there be a sale of the invention, merely that the invention be offered for sale, i.e., that the invention was placed "on sale." King Instrument Corp. v. Otari Corp., 767 F.2d 853, 860 (Fed. Cir. 1985). The critical question thus becomes: when is the invention so defined that we can determine that it is "the invention" that is being offered for sale.

Petitioner Pfaff suggests that an invention may not be put on sale until "it is reduced to practice and exists in physical, tangible form." Petition for Writ of Certiorari, filed Jan. 5, 1998, at 6 n.1. Such a narrow reading of § 102(b) is contrary to the plain meaning of the statute.

For example, an inventor may have a complete conception of an invention, and even produce an engineering drawing of that invention, yet never build the invention. If a sketch or some brief description of the invention is included in a catalog, along with a price at which the invention is for sale, anyone receiving the catalog would, applying the plain meaning of the term "on sale," understand the invention to be on sale. That the inventor elects not to produce any of the invention until an order is in hand should not alter the conclusion that the inventor has placed the invention on sale.

To conclude otherwise, would also grant the inventor a de facto extension of the 20-year statutory term for exploiting the invention. See 35 U.S.C. § 154(a)(2). Such an extension would undermine the policies underlying § 102(b), particularly the policy "prohibiting an extension [*6] of the period for exploiting the invention." King Instrument, 767 F.2d at 860 (citations omitted).

In Pfaff, the Federal Circuit offers a new test, the "substantially complete" test, to determine if the invention was on sale under § 102(b). Pfaff, 124 F.3d at 1434. However, it is not necessary to create a new and somewhat vague test to make this determination.

For an invention to be placed on sale, one must be able to define what constitutes the invention. n2 The patent laws have long recognized that the invention will be so definable when conception is complete.

n2 An inventor may offer a potential purchaser a "new and improved" device even before the inventor has conceived of the device. Under such circumstances it cannot fairly be said that the yet-to-be conceived invention is on sale. While equitable doctrines could be invoked to bar the inventor from applying for and obtaining a patent for the new and improved device more than one year after making such an offer, the offer of such a yet-to-be conceived device should not be a bar under § 102(b) and should not be a bar to others.

In 1890, Professor Robinson wrote:

The conception of the invention consists in the complete performance of the mental part of the inventive act. While this in theory [*7] necessarily precedes the physical part or reduction to practice, it in fact also embraces whatever of thought and skill the inventor may have exercised in bringing the invention to that point where reduction to practice can begin. By it inventive genius, so far as it relates to the particular invention, is exhausted; all that remains to be accomplished, in order to perfect the art or instrument, belongs to the department of construction, not creation. It is thus the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.

1 William C. Robinson, The Law of Patents for Useful Inventions § 376, at 532 (1890). This basic definition was adopted in Mergenthaler v. Scudder, 11 App. D.C. 264, 276, 1897 C.D. 724, 731 (1897), which in turn was adopted in Townsend v. Smith, 36 F.2d 292, 295 (C.C.P.A. 1929) and by the Federal Circuit in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).

Thus, "conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known." Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994).

When conception exists, the inventor can clearly explain the invention to a potential buyer and offer the [*8] invention for sale. There is no need for the inventor to have reduced the invention to practice or to have the invention in a physical, tangible form in order to offer it for sale. n3 Moreover, there is no need for the potential purchaser to have actual knowledge of the invention for it to be on sale. The issue is whether the invention has been placed on sale, i.e., whether the inventor has begun to exploit the invention. King Instrument, 767 F.2d at 860.

n3 For purposes of proof at trial, "conception must be proved by corroborating evidence which shows that the inventor disclosed to others his 'completed thought expressed in such clear terms as to enable those skilled in the art' to make the invention. Field v. Knowles, 183 F.2d 593, 601, 37 CCPA 1211, 1222, 86 USPQ 373, 379 (1950)." Coleman, 754 F.2d at 359.

After there is a complete conception, the invention is clearly defined. From that moment, the inventor can offer to make and sell this clearly defined, completely conceived invention. Under the plain meaning of § 102(b), when this invention is offered for sale, the one year period begins to run. The statute requires no more.

Pfaff "made detailed engineering drawings" of his invention and sent those drawings to a company "for customized tooling and production in February or March of 1981." Pfaff, 124 F.3d at 1432. On April 8, 1981, a [*9] company, unrelated to Pfaff's company, issued a purchase order to Pfaff's company "for 31,100 sockets, which were intended for production use. The purchase order confirmed an earlier verbal order on March 17, 1981. Pfaff filed his patent application on April 19, 1982." Id. The arrangement with the purchasing company "was purely commercial, with no experimentation or additional development involved." Id. at 1433.

Thus, it appears that in February or March of 1981, more than one year prior to the date of his application for patent, Pfaff had "a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented." See Sewall, 21 F.3d at 415. It was that operative invention that Pfaff offered for sale.

Applying the plain meaning of § 102(b), Pfaff's invention was on sale more than one year prior to the date of application for patent.

This is not a case where there was no offer for sale but merely an experimental use, as in Elizabeth v. Pavement Co., 97 U.S. 126 (1877). Elizabeth involved a patent for a method of constructing pavement for a roadway. There, the inventor "believed [his invention] to be a good thing, but he was not sure; and the only mode in which he could test it was to place a specimen of it in a public roadway. He did this at his own expense. . . ." Id. at 136. Nor is this a case where a product different from the invention is offered for sale and the inventor later substitutes the invention for the earlier offered product. See Envirotech Corp. v. Westech Eng'g Inc., 904 F.2d 1571 [*10] (Fed. Cir. 1990). Nor does this case involve any offers for sale from third parties that could raise issues of proof as to exactly what the third party offered for sale. Amicus curiae respectfully submits that this Honorable Court's decision should recognize that the present case addresses only one narrow fact pattern of the many fact patterns that can raise the on sale issue.

Under established patent law, there is a complete conception of an invention when the inventor has a "definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented." Sewall, 21 F.3d at 415. The offer for sale of such a completely conceived invention is all that is required to start the one year time period under § 102(b).

Respectfully submitted,

Bruce T. Wieder

Counsel of Record

Chair, Amicus Committee

Lynn E. Eccelston, Chair

Patent, Trademark & Copyright Section

Bar Association of the District of Columbia

1819 H Street, N.W., 12th Floor

Washington, D. C. 20006

(202) 223-6600

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