Inventions Cannot be Offered For Sale Until Conception Date
August Technology v. Camtek (decided 8/22/11)By: Nicole Davis
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What This Means to You
- Consider whether there has been a conception of the invention before the critical date to satisfy the offer for sale prong.
- Capture embodiments you wish to protect in the claims.
- Do not contradict an embodiment with the language of the claims.
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Overview
In August Technology Corp. v. Camtek, Ltd., the US Court of Appeals for the Federal Circuit (Federal Circuit) held that an invention need not be ready for patenting at the time an alleged offer for sale is made, but there must be a conception.
The court also construed a claim based on its plain language, despite the fact that its claim construction excluded the preferred embodiment in the disclosure.
Case Background
August Technology held a patent to a wafer inspection machine and sued Camtek for patent infringement. In construing the claims, the district court held that “a wafer” can also be “a plurality of wafers,” and, as a result, Camtek literally infringed the asserted claims.
In its defense, Camtek argued that August Technology’s own product, the NSX-80 wafer machine, was on sale prior to the critical date and was thus prior art that rendered the asserted claims obvious. The district court provided the following jury instruction: “In order to be on ‘sale’, the NSX-80 must also have been ready for patenting at the time the alleged offer for sale is made.” The jury found that the NSX-80 was not on sale before the critical date and was thus not prior art.
Camtek appealed to the Federal Circuit.
Decision Analysis
One issue before the Federal Circuit was whether an invention must be ready for patenting at the time the alleged offer for sale is made. The Federal Circuit held that it does not. The on-sale bar (§102(b)) applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. To conclude that an invention must be ready for patenting at the time the offer is made would render the second prong superfluous. The two prongs are independent requirements that can occur in any order and at any time before the critical date.
The Federal Circuit held that an offer for sale of an invention requires a conception, as “invention” in the Patent Act refers to the inventor’s conception. Before conception, an inventor can only offer an idea for a product. Therefore, if an inventor makes an offer for sale but then retracts the offer before conception, no offer for sale of the invention has been made. Likewise, if an inventor extends an offer for sale and then later conceives of the invention, the offer for sale of the invention occurs as of the conception date.
Regarding the claim construction issue, to determine whether “a wafer” was also “a plurality of wafers,” the Federal Circuit looked to the language of the claim, finding it distinguished between a single wafer and multiple wafers. Further, the specification and claims in the patent’s parent indicated that wafers are discrete objects. August Technology argued that construing wafers as discrete objects was erroneous because it excluded the preferred embodiment in the disclosure.
The Federal Circuit rejected August Technology’s argument, noting that an alternative embodiment not encompassed by the claim construction does not outweigh the language of the claim, especially when the construction is supported by intrinsic evidence and when claims in the parent patent cover the excluded embodiment. Therefore, the Federal Circuit held that wafers are discrete objects, vacating the judgment of infringement and remanding to the district court.
Takeaways
In this case, the Federal Circuit made it clear that conception—rather than “ready for patenting”— is the proper standard for determining whether an offer for sale of the invention has been made to satisfy the offer for sale prong of the on-sale bar. Since only conception is required, clients depending on the “ready for patenting” standard may trigger the offer for sale of the invention prong before realizing it. Conversely, merely offering for sale an idea for an invention, without conception, before the critical date will not satisfy the offer for sale requirement. When assessing prior art, ensure that the offer for sale date coincides with conception.
This case also highlights the importance of capturing each embodiment you wish to protect in the claim language. As evidenced in this case, preferred embodiments may be excluded from the claim construction if outweighed by the claim language. Be cognizant of claims in the parent application and whether they cover the preferred embodiment, as that weighed against August Technology’s claim interpretation in this case.
