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“Ready for Patenting” Test for On- Sale Bar Does Not Require Software to Be Written Prior to Critical Date

May 07, 2001

Decision icon Decision

Last Month at the Federal Circuit - June 2001

Judges: Lourie (author), Rader, and Bryson

In Robotic Vision Systems, Inc. v. View Engineering, Inc., No. 00-1343 (Fed. Cir. May 7, 2001), the Federal Circuit affirmed a district court’s decision that the asserted claim of the Plaintiff’s patent was invalid under the on-sale bar of 35 U.S.C. § 102(b).

The asserted patent, U.S. Patent No. 5,463,227 (“the ‘227 patent”) was directed to a method of scanning the leads on integrated circuit devices that are arranged in rows and columns in a pocketed tray. Prior to the invention of the ‘227 patent, scanning devices scanned all four sides of each circuit before moving to the next circuit. In contrast, the method disclosed in the ‘227 patent scans across the entire tray, a full row or column at a time. According to the patent, this reduces the overall scanning time by minimizing the number of speed and direction changes.

The case has substantial procedural history. The district court had previously entered SJ against Robotic Vision Systems, Inc. (“Robotic”), finding the asserted claim invalid under the on-sale bar and for failure to disclose the best mode. The Federal Circuit reversed the district court’s SJ on the bestmode issue and vacated and remanded SJ on the on-sale bar issue, finding disputed material issues of fact as to whether the invention was “substantially complete” by that time. While the case was on remand, however, the Supreme Court decided Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), in which it supplanted the Federal Circuit’s previous “substantially complete” standard with a “ready for patenting” test. According to the Supreme Court, the “ready for patenting” prong can be fulfilled by demonstrating, inter alia, that the invention was reduced to practice prior to the critical date or by proving that the inventor prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.

After a bench trial, the district court again found the claimed invention invalid under the onsale bar, this time applying the Pfaff test. There was no dispute that Robotic had made a commercial offer for sale prior to the critical date. As to the “ready for patenting” test, the district court cited three sources of evidence that demonstrated that the claimed invention was “ready for patenting” prior to the June 24, 1991, critical date: (1) a description of the claimed method by Robotic personnel to an Intel representative that occurred on February 8, 1991; (2) an explanation of the claimed method by one of the coinventors to another Robotic employee in March or April 1991, in which the coinventor described the method in sufficient detail to permit the employee to write the software needed to implement the method; and (3) the fact that Robotic’s code was written by May 22, 1991.

On appeal, the Federal Circuit focused on the second reason. It ruled that the coinventor’s explanation of the invention to his coworker was sufficiently specific for the coworker to understand the invention and to write the software needed to implement the method, regardless of whether the software was actually reduced to practice prior to the critical date.

The Federal Circuit also ruled that an inventor’s alleged skepticism about whether his invention will work for its intended purposes does not control because “[i]t will be a rare case indeed in which an inventor has no uncertainty concerning the workability of his invention before he has reduced it to practice.” Robotic Vision, slip op. at 9.

Since the claimed invention was ready for patenting prior to the critical date, and since Robotic had also made a commercial offer for sale prior to the critical date, the on-sale bar provision of 35 U.S.C. § 102(b) applied, and Robotic’s patent was, therefore, invalid.