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Vanmoor v. Wal-Mart Stores, Inc., Nos. 99-1190, 99-1256, 2000 WL 12856 (Fed. Cir. Jan. 10, 2000).

PATENT VALIDITY - ON-SALE BAR - CRITICAL DATE - REDUCTION TO PRACTICE


ISSUE & DISPOSITION

Issue(s)

Whether sales of products, prior to the critical date, made pursuant to a product's specification drawings which remain unchanged to the present day, qualify as proof that the invention embodied in these products was reduced to practice prior to the critical date.

Disposition

Yes. An invention is "ready for patenting" for the purposes of 35 U.S.C. 102(b) when, prior to the critical date, (1) there was actual reduction to practice, or (2) the inventor had prepared drawings or other description of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. Either of these conditions taken in conjunction with the additional condition that the product resulting from invention be the subject of a commercial offer for sale triggers 102(b)'s on-sale bar to patent validity.

SUMMARY

Vanmoor is the owner of U.S. Patent No. 5,582,331 ("the '331 patent"), that is directed to construction for a cartridge used to dispense caulking compound. Vanmoor filed suit against major home improvement retailers, including Wal-Mart Stores, Inc., HomeDepot USA, Inc., and Builder's Square, Inc., as well as Red Devil, Inc., a manufacturer of caulking products, for infringement of the '331 patent. The Glidden Company, a supplier of several of the accused infringing products to Wal-Mart, intervened as an additional defendant (collectively "Wal-Mart"). Vanmoor later added Federal Packaging Corporation and Sonoco Products Company ("manufacturers"), to the patent infringement claim and also included a trade secret misappropriation claim against the manufacturers. Both Wal-Mart and the manufacturers denied Vanmoor's allegations and requested a declaratory judgment that the '331 patent was invalid. All defendants jointly moved for summary judgment on the patent infringement and trade secret misappropriation claims, which the District Court for the Southern District of Florida granted.

Determination of whether a product was placed on-sale for the purposes of 102(b) is a question of law, based on underlying facts. The Supreme Court clarified the test for the on-sale bar on patent validity within 102(b) by pointing out that a claimed invention is considered to be on-sale if: (1) the product is the subject of a commercial offer for sale and (2) the invention is ready for patenting. See Pfaff v. Wells Electronics, Inc., 119 S. Ct. 304, 311-12 (1998). An invention is ready for patenting when, prior to the critical date: (1) there was actual reduction to practice or (2) the inventor had prepared drawings or other description of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. Id. at 312.

While Wal-Mart and the manufacturers bore the burden of showing that the cartridges anticipated in the '311 patent were sold prior to critical date, that burden was satisfied by Vanmoor's allegation that the accused cartridges infringe the '311 patent and the fact that these accused cartridges were sold prior to the critical date. Thus, the court held that the first condition of 102(b) was met. The court also held that the second condition in 102(b) was met because the pre-critical date sales of the cartridges, made pursuant to specifications that remain unchanged to the present day, shows that the invention embodied in the accused cartridges was reduced to practice before the critical date. Hence, the court ruled that since both of the conditions for the application of the on-sale bar articulated in Pfaff were met, the '331 patent is invalid under 102(b).

Because Vanmoor proffered no evidence to support his conclusory allegations of trade secret misappropriation by the manufacturers, the court held that he failed to establish a genuine issue of material fact, and thus affirmed the district court's summary judgment on this claim.

 


Prepared by the liibulletin-patent Editorial Board.

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