Medtronic, Inc. v. Mark A. Barry

35 U.S.C. § 102(b) (2011) bars the patenting of an invention that was “in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.” The statutory bar is triggered by the sale or public use of an invention that is “ready for patenting,” which can be shown by “proof of reduction to practice before the critical date.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). “A process is reduced to practice when it is successfully performed.” Corona Cord Tire Co. v. Dovan Chem. Corp., 276 U.S. 358, 383 (1928). In this case, however, a divided panel of the Federal Circuit ruled—as that court has in other cases—that reduction to practice required not just successful performance of the claimed process, but also the patentee’s subjective determination that the process worked for a later-asserted “intended purpose” appearing nowhere in the patent. Additionally, this Court has ruled that a patentee seeking to rely on the exception for “experimental” uses bears the burden of “full, unequivocal, and convincing” proof that the sale or public use was experimental. Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 264 (1887). But the Federal Circuit has declared this Court’s view not “tenable,” departing from the decisions of other circuits addressing the same issue. TP Labs., Inc., v. Professional Positioners, Inc., 724 F.2d 965, 972 n.3 (Fed. Cir. 1984). The questions presented are: 1. Whether a process invention is reduced to practice, and thus “ready for patenting,” when all of its elements are “successfully performed,” as this Court has held, or whether it must also be determined to (i)