Pfaff v. Wells Electronics

Citation: Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 48 U.S.P.Q.2d (BNA) 1641 (1998)

Factual Background
Petitioner Pfaff filed a patent application on a computer chip socket on April 19, 1982. Under 35 U.S.C. § 102(b), a patent is barred if the invention was “on sale” more than one year prior to filing the patent application.

Petitioner began work on the invention in November 1980. Prior to March 17, 1981, Petitioner showed a sketch of the concept to representatives of Texas Instruments. On April 8, 1981, Texas Instruments provided Petitioner with a written confirmation of a previously placed oral purchase order for the new socket. At the time of the order, Petitioner had not made or tested a prototype. It was several more months before Pfaff developed the tooling needed to produce the device. As a result, the order was not filled until July 1981.

Federal Circuit Decision
Petitioner sued Wells Electronics under the patent. The Federal Circuit found that the one-year period should be measured from the first date the invention was “on sale,” meaning when the invention was “substantially complete at the time of the sale.” Other courts had previously held that an invention could not be “on sale” under § 102(b) until it has been reduced to practice.

Supreme Court Decision
The Supreme Court noted that an invention could be patented before it is reduced to practice, referring to Alexander Graham Bell's patent application, which was filed before he had constructed a working telephone. Accordingly, the Court held that the key factor was not the reduction to practice, but whether there was sufficient information to allow a patent application to be filed. For 35 U.S.C. §201(b) to bar issuance of a patent, the product must be the subject of a commercial offer for sale and the invention must be ready for patenting. The latter can be satisfied by either proof of reduction to practice before the critical date or by proof that, before the critical date, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person of ordinary skill in the art to practice the invention.

The Court held that when Pfaff accepted the purchase order from Texas Instruments, he had prepared descriptions and drawings sufficiently clear and precise to enable those skilled in the art[[ to produce the device and, thus, the device was [[on sale before the critical date.