Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 5 (1998)

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Cite as: 525 U. S. 55 (1998)

Opinion of the Court

mercial success before Patent No. 4,491,377 ('377 patent) issued to Pfaff on January 1, 1985.4

After the patent issued, petitioner brought an infringement action against respondent, Wells Electronics, Inc., the manufacturer of a competing socket. Wells prevailed on the basis of a finding of no infringement.5 When respondent began to market a modified device, petitioner brought this suit, alleging that the modifications infringed six of the claims in the '377 patent.

After a full evidentiary hearing before a Special Master,6 the District Court held that two of those claims (1 and 6) were invalid because they had been anticipated in the prior art. Nevertheless, the court concluded that four other claims (7, 10, 11, and 19) were valid and three (7, 10, and 11) were infringed by various models of respondent's sockets. App. to Pet. for Cert. 21a-22a. Adopting the Special Master's findings, the District Court rejected respondent's § 102(b) defense because Pfaff had filed the application for the '377 patent less than a year after reducing the invention to practice.

The Court of Appeals reversed, finding all six claims invalid. 124 F. 3d 1429 (CA Fed. 1997). Four of the claims (1, 6, 7, and 10) described the socket that Pfaff had sold to Texas Instruments prior to April 8, 1981. Because that device had been offered for sale on a commercial basis more than one

4 Initial sales of the patented device were:

1981.................................................................................................... $   350,000

1982.................................................................................................... $   937,000

1983.................................................................................................... $2,800,000

1984.................................................................................................... $3,430,000

App. to Pet. for Cert. 223a.

5 Pfaff v. Wells Electronics, Inc., 9 USPQ 2d 1366 (ND Ind. 1988). The court found that the Wells device did not literally infringe on Pfaff's '377 patent based on the physical location of the sockets' conductive pins.

6 Initially the District Court entered summary judgment in favor of respondent, but the Court of Appeals reversed and remanded for trial because issues of fact were in dispute. See 5 F. 3d 514 (CA Fed. 1993).

59

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