Appeal No. 1996-0910
Application 08/118,368
the appellants’ invention. From our perspective, the facts7
of record relating to the transaction do not support this
characterization. The facts merely show a situation wherein a
first party, the appellants/inventors and their employer,
Boeing, paid a second party, Ingersoll, for its services in
fabricating for the first party an invention made by the first
party. Any
notion that Ingersoll sold the invention to the
inventors/Boeing under these circumstances is illogical. All
that the facts of record establish here is that Ingersoll sold
its services, not the invention, to the inventors/Boeing.
This interpretation of the Boeing-Ingersoll transaction
finds support in Brasseler, U.S.A. I L.P. v. Stryker Sales
Corp., 182 F.3d 888, 51 USPQ2d 1470 (Fed. Cir. 1999) wherein
the court, distinguishing activity which was found to
constitute a § 102(b) on-sale bar, stated “[t]his is
not a case in which an individual inventor takes a design to a
7 There is some dispute as to whether all of the appealed
claims read on the HAL cells involved in the transaction (see
pages 3 and 4 in the appellants’ reply brief, Paper No. 21).
Given our decision in the appeal, this issue is moot.
6
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