Weatherchem Corp. v. J.L. Clark, Inc.
United States Court of Appeals for the Federal Circuit (Fed. Cir). December 7, 1998

BACKGROUND
During the development of your product, negotiations were initiated with potential purchasers. During these negotiations, certain prototypes, drawings and performance characteristics of yourproduct were reveled to your potential purchaser. A few months later, you signed a contract with your potential purchaser for the delivery of your product, with a few modifications. About a year later, a patent application is prepared disclosing and claiming your product. Do the negotiations, the prototypes, drawings and product characteristics disclosed therein, and the resulting contract impact the patentability of your product?

EXECUTIVE SUMMARY
In this patent infringement litigation involving shake-and-spoon caps for condiments, the district court and the Fed. Cir. was asked to determine whether various purchase orders, invoices and contracts constituted and on-sale bar under section 102(b) of United States Code Title 35. The district court found the asserted claims invalid for being on sale more than one year before the filing of a patent application. The Fed. Cir. affirmed because the claimed invention was the subject of a commercial sale (rather than a sale of "experimental" or collaborative development nature) and the invention was reduced to practice, at least constructively, more than one year before the filing of a patent application. The Practice Pointer to be gained from this case is that the timing and character of various negotiations, sales and sales documents should be carefully evaluated to prevent on-sale bars under section 102(b).

THE LAW
Section 102(b) of United States Code Title 35 provides:

A person shall be entitled to a patent unless (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . . The meaning of "on sale" in this statute has been the subject of much litigation. The U. S. Supreme Court recently addressed this issue in Pfaff v. Wells Elecs., Inc. In Pfaff, the Court provided a test to determine whether an invention has been placed "on sale" under this statute. In summary, the U.S. Supreme Court noted that the on-sale bar applies when two conditions are satisfied before the critical date (one year prior to the filing of a patent application). First, that the invention was the subject of a commercial offer for sale (as opposed to a purpose that is experimental in nature, such as part of a development project). Second, that the invention was ready for patenting. The second condition can be met in two ways: by proof of reduction to practice before the critical date, or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. In this case, the Fed. Cir. found a critical date for a patent application filed October 17, 1986 is October 17, 1985, which some patent practitioners consider to be more than one year's time.

IMPORTANCE OF THE CASE
The particular facts of this case give guidance regarding what types of negotiations, sales or documents support a "sale" under section 102(b).