Pfaff v. Wells Electronics, Inc.

525 U.S. 55 (1998)

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Nature of the Case

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Facts

P filed an application for a patent on a computer chip socket. April 19, 1981, constitutes the critical date for purposes of the on-sale bar of §102(b); if the 1-year period began to run before that date, P lost his right to patent his invention. P commenced work on the socket in November 1980, when Texas Instruments asked him to develop a new device for mounting and removing semiconductor chip carriers. P prepared detailed engineering drawings that described the design, the dimensions, and the materials to be used in making the socket. P sent those drawings to a manufacturer in February or March 1981. Prior to March 17, 1981, P showed a sketch of his concept to Texas Instruments. On April 8, 1981, they sent P a written confirmation of a previously placed oral purchase order for 30,100 of his new sockets for a total price of $91,155. P did not make and test a prototype of the new device before offering to sell it in commercial quantities. P did not fill the order until July 1981. P first reduced his invention to practice in the summer of 1981. The '377 patent issued on January 1, 1985. P brought an infringement action against Wells (D). D prevailed on the basis of a finding of no infringement. D began to market a modified device, and P brought this suit, alleging that the modifications infringed six of the claims in the '377 patent. The court concluded that three of the claims were infringed. The court rejected D's §102(b) defense because P had filed the application for the '377 patent less than a year after reducing the invention to practice. The Court of Appeals reversed 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. It concluded 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. The Supreme Court granted certiorari.