Addressing the issue of the experimental use exception to the on-sale bar of 35 U.S.C. § 102(b), the U.S. Court of Appeals for the Federal Circuit held that the sale of an invention to a customer for experimentation to determine whether the machines would suit a particular customer’s purposes does not fall within the experimental use exception. Atlanta Attachment Co. v. Leggett & Platt, Inc., Case No. 07-1188 (Fed. Cir., Feb. 21, 2008) (Mayer, J.; Prost, J. concurring).
Commercial sewing machine manufacturer Atlanta Attachment Co. developed an automatic gusset ruffler machine in response to a request by Sealy, Inc. Atlanta Attachment developed prototypes, which it presented for sale to Sealy along with offers to sell production models. One of the prototypes was offered for sale to Sealy starting in 2000 through February 2001, at which time Sealy paid for the prototype and inspected it.
Atlanta Attachment later received a patent for its invention and filed suit against Leggett & Platt for infringement. Although the district court held that the claim at issue was not invalidated by the prototype sales, the Federal Circuit reversed. The Federal Circuit’s analysis was guided by Pfaff, in which the Supreme Court held that an invention is barred from patenting when it is the subject of a commercial offer for sale before the critical date and ready for patenting at the time of the offer. The Court determined that the prototype was offered for commercial sale and sold in February 2001, and it determined that the prototype was an embodiment of the claimed invention.
Although the sale to Sealy was experimental, the Court held that experimentation to determine if the invention fit Sealy’s requirements did not fall within the experimental use exception. Additionally, Atlanta Attachment was not experimenting on prototypes sold to Sealy because Sealy performed and controlled the experimentation, and Sealy was not under the inventor’s control.
The Court also held that the invention was ready for patenting at the time of the February 2001 offer since the prototype worked for its intended purpose, meaning that it was reduced to practice. Later changes to the machines did not show that the earlier prototype was not suitable for its intended purpose, and an invention can be considered reduced to practice even though it may later be refined or improved upon.
In a concurring opinion, Judge Prost urged the Federal Circuit to reconsider the idea that reduction to practice means that an invention is “ready for patenting” under Pfaff, an idea that eliminates any experimental use exception after an invention is reduced to practice.