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.