OEA, Inc. appeals from a summary judgment by the United States District Court for the Central District of California
Because neither the text of section 102(b) nor the precedent interpreting it permits this proposed exception, and because the primary purpose of the on-sale bar is to promote prompt patent filings, we decline OEA’s invitation and affirm the district court’s judgment.
Background
OEA owns by assignment U.S. Patent No. 5,404,263 (the “'263 patent”), which issued from an application filed on August 27, 1992. More than a year earlier, however, OEA began negotiating with a supplier, the Coors Ceramics, Co., which (unlike OEA) had the capacity to mass-produce OEA’s invention — an “all-glass header” relating to automobile air bags.
In April 1991, OEA sent Coors a proposal requesting that Coors manufacture at least half of OEA’s needs for the commercial embodiment of the prospective '263 patent. In May 1991, Coors accepted. In June 1991, OEA ordered 20,000 units of the claimed invention for delivery beginning in July 1991. That July, Coors also outlined the general terms for a requirements contract that would annually supply OEA with millions of units of its own invention. OEA agreed to those terms later that month and asked Coors to prepare a formal agreement.
During the subsequent prosecution of the application that matured into the '263 patent, OEA did not disclose these commercial sales and offers for sale to the Patent and Trademark Office. The PTO, however, later learned about these sales from Coors itself, which was initially using the same attorneys as OEA to prosecute a related patent. In 1995, after OEA’s and Coors’ respective patents had issued, Coors obtained new attorneys to prosecute a reissue application for its patent, and those new attorneys informed the PTO (via the inventors’ affidavits) about the 1991 commercial transactions with the Defendant Appellant OEA. Citing the on-sale bar, 35 U.S.C. § 102(b), the PTO rejected all of Coors’ reissue application claims in 1997, including the claims that relate to OEA’s patented product.
In 1999, after receiving threat letters from OEA, Plaintiff-Appellee Special Devices, Inc. sued OEA and requested a declaratory judgment that claims 1 — 9 of the '263 patent were invalid and not infringed. OEA counterclaimed for infringement of those same claims. On October 10, 2000, the district court granted partial summary judgment, holding that the on-sale bar rendered all asserted claims of the '263 patent invalid. This appeal followed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
Discussion
We review a grant of summary judgment
de novo. Evans Cooling Sys., Inc. v. Gen. Motors Corp.,
Here, OEA does not contest that its April 1991 proposal to Coors, its June 1991 order for 20,000 commercial units of its invention, and Coors’ and OEA’s July 1991 agreement to a requirements contract each constituted an offer to sell for purposes of section 102(b). (See generally Appellant’s Br. at 5-10.) In addition, OEA has conceded that these transactions were “commercial,” not experimental. (E.g., Appellant’s Reply Br. at 3; J.A. 053.) And OEA appears to have never argued that the product sold or offered for sale — OEA’s “all-glass header” — had not yet become ready for patenting. (See, e.g., Appellant’s Reply Br. at 3; J.A. 063, ¶ 32.) OEA’s infringement counterclaim cannot withstand application of the on-sale bar, therefore, because the '263 patent had indeed become the subject of a commercial sale or offer to sell more than one year before OEA filed its patent application.
That would ordinarily end the two-part analysis under section 102(b). But OEA asks that we now recognize a “supplier” exception to the on-sale bar, arguing that we have never expressly applied the bar to a patentee-supplier relationship and that our precedent therefore permits such an exception. (See Appellant’s Br. at 5-9.) We disagree, as neither the statutory text, nor precedent nor the primary purpose of the on-sale bar allows us to grant OEA’s request.
First, the text of section 102(b) itself makes no room for a “supplier” exception, stating only that a “person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States.” By phrasing the statutory bar in the passive voice, Congress indicated that it does not matter who places the invention “on sale”; it only matters that someone — inventor, supplier or other third party — placed it on sale.
See
35 U.S.C. § 102(b);
see also Zacharin,
Consistent with this rationale, we have previously held that even if a thief “stole” the claimed invention and passed it on to an innocent buyer, the innocent buyer’s subsequent offer to sell still triggered the plain language of the on-sale bar.
See Evans Cooling Sys., Inc.,
OEA, by comparison, has even less overlap with its seller, Coors, than did the buyer and seller in Brasseler. OEA does not assert that it shared inventors or developmental efforts with Coors or that Coors would serve as the sole supplier of OEA’s “all-glass header” needs. See id. Moreover, we do not see how either the facts present or the reasoning used in Brasseler counsels in favor of a “supplier exception” to the on-sale bar. Indeed, given that decision’s focus on whether the buyer and seller constituted two distinct entities — as with a patentee and its supplier — we think Brasseler plainly disfavors the exception now sought by OEA.
Nor can OEA overcome section 102(b) by seizing on hypothetical and other language used in Brasseler. In the course of rejecting Brasseler’s on-sale bar arguments, we noted that:
By way of the sale to Brasseler, these inventors [who owned the manufacturer that sold the invention at issue] commercially exploited the invention prior to the critical [filing] date.
This is not a case in which an individual inventor takes a design to a fabricator and pays the fabricator for its services in .fabricating a few sample products. Here [the seller] made a large number of the agreed-upon product for general marketing by Brasseler. The transaction was invoiced as a sale of product, and the parties understood the transaction to be such.
Id.
at 891, 51 USPQ2d at 1473. At oral argument and in its brief, OEA intimated that it falls outside the realm of the analysis and the hypothetical described above, since its supply contracts with Coors did not involve the “commercial exploitation” of the '263 patent.
{See
Appellant’s Br. at 7-8.) But the language used in
Brasseler
does not salvage OEA’s theory; as noted earlier, OEA ordered 20,000 units from Coors in June 1991 and thereafter agreed to a requirements contract for millions of units each year, far more than the “few sample products” mentioned in the
Bras-seler
hypothetical.
See
And again, OEA has admitted that these transactions with Coors were “commercial,” not experimental. (Appellant’s Reply Br. at 3; J.A. 053.) Given the sheer number of units purchased, as well as the unrebutted finding that OEA had purchased them for commercial purposes, we conclude that the invention was commercially exploited before the critical filing date.
OEA’s additional discussion of
Zacharin, supra,,
is similarly unavailing. There, we addressed whether a developmental con
We also have previously expressed little interest in the reasoning used by the district court in
M & R Marking Sys., Inc. v. Top Stamp, Inc.,
Though factually on point,
M &R Marking
still provides no compulsion for us to follow it, for again the opinion came from the district court and, more significantly, the Supreme Court has disavowed the “totality-of-the-circumstances” test used in that case,
see Pfaff,
Last, our holding here comports with the primary policy of the on-sale bar; namely, the policy of “encouraging] an inventor to enter the patent system promptly.”
Woodland Trust v. Flowertree Nursery, Inc.,
Conclusion
The on-sale bar applies here and thereby invalidates claims 1 — 9 of the '263 patent because that patented invention became the subject of three commercial sales more than one year before the filing of its patent application and because OEA and its supplier Coors did not “overlap” and
AFFIRMED.