OCTOBER TERM, 1998
Syllabus
certiorari to the united states court of appeals for the federal circuit
No. 97-1130. Argued October 6, 1998—Decided November 10, 1998
Under § 102(b) of the Patent Act of 1952, no one can patent an "invention" that has been "on sale" more than one year before filing a patent application. In early 1981, petitioner Pfaff designed a new computer chip socket and sent detailed engineering drawings of the socket to a manufacturer. He also showed a sketch of his concept to representatives of Texas Instruments, which placed an order for the new sockets prior to April 8, 1981. In accord with his normal practice, Pfaff did not make and test a prototype before offering to sell the socket in commercial quantities. He filled the order in July 1981, and thus the evidence indicates that he first reduced his invention to practice that summer. He applied for a patent on April 19, 1982, making April 19, 1981, the critical date for § 102(b)'s on-sale bar. After the patent issued, he lost an infringement action he filed against respondent, Wells Electronics, Inc. Subsequently, he brought this suit, alleging that a modified version of Wells' socket infringed six of his patent's claims. The District Court held, inter alia, that three of the claims were infringed, rejecting Wells' § 102(b) defense on the ground that Pfaff had filed the patent application less than a year after reducing the invention to practice. In reversing, the Court of Appeals concluded, among other things, that § 102(b)'s 1-year period began to run when the invention was offered for sale commercially, not when it was reduced to practice.
Held: Pfaff's patent is invalid because the invention had been on sale for more than one year in this country before he filed his patent application. Pp. 60-69.
(a) The primary meaning of "invention" in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea. The statute contains no express "reduction to practice" requirement, see §§ 100, 101, 102(g), and it is well settled that an invention may be patented before it is reduced to practice. In The Telephone Cases, 126 U. S. 1, 535-536, this Court upheld a patent issued to Alexander Graham Bell even though he had filed his application before constructing a working telephone. Applying the reasoning of The Telephone Cases to the facts of this case, it is evident that Pfaff could have obtained a patent when he accepted Texas Instruments' order, for at that time he provided the manufacturer with a description
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