Moleculon Research Corp. v. CBS, Inc.
793 F.2d 1261 (1986)
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Rule of Law:
An inventor's private use of an invention for personal enjoyment and its disclosure to a few close associates does not constitute a 'public use' that invalidates a patent under 35 U.S.C. § 102(b), so long as the inventor retains control over the invention's use and the distribution of information about it. Furthermore, an assignment or sale of rights in an invention is not a sale of 'the invention' itself that would trigger the statutory on-sale bar.
Facts:
- In 1957, Larry D. Nichols conceived of a 2x2x2 puzzle cube capable of rotational movement.
- Between 1957 and 1962, while a graduate student, Nichols constructed several paper models of the puzzle using magnets to hold the pieces together.
- Nichols showed one of these models to a few close friends, including two roommates and a chemistry department colleague, and explained its operation to at least one of them.
- In 1968, Nichols, now a research scientist at Moleculon, built a working wood block prototype of the puzzle, which he usually kept at home but occasionally brought to his office.
- In January 1969, Dr. Obermayer, the president of Moleculon, saw the prototype on Nichols' desk, and Nichols explained its workings to him.
- Obermayer suggested that Moleculon should try to commercialize the puzzle, to which Nichols agreed.
- In March 1969, Nichols formally assigned all his rights in the puzzle invention to Moleculon in exchange for a share of potential proceeds.
Procedural Posture:
- Moleculon Research Corporation, as assignee of the patent, sued CBS Inc. in the U.S. District Court for the District of Delaware for patent infringement.
- The district court held that claims 3-5 and 9 of Moleculon's patent were valid and infringed by certain Rubik's Cube puzzles.
- CBS Inc. appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does an inventor's use of his invention for his own enjoyment, including showing it and explaining its operation to a few close friends and colleagues without an express confidentiality agreement, constitute a 'public use' or place the invention 'on sale' that would invalidate a patent under 35 U.S.C. § 102(b)?
Opinions:
Majority - Baldwin, Circuit Judge.
No. An inventor's private use of an invention for personal enjoyment, even when disclosed to a few close associates, does not constitute a 'public use' under 35 U.S.C. § 102(b) where the inventor retains control over its use and the dissemination of information. The court reasoned that the essence of a 'public use' is the free and unrestricted giving over of an invention to the public. Here, Nichols' relationships with his friends and colleague were personal, and the circumstances surrounding his demonstration to Obermayer implied confidentiality and control, distinguishing it from cases like Egbert v. Lippmann where an invention was given away for unrestricted use. The court held that the absence of a formal confidentiality agreement is not determinative. Furthermore, the court concluded that an assignment of patent rights, such as the one from Nichols to Moleculon, is not a 'sale of the invention' that triggers the § 102(b) on-sale bar, as this comports with the policies underlying the bar and business realities.
Analysis:
This decision clarifies the 'public use' bar under § 102(b), establishing that the bar is not triggered by mere disclosure to others but hinges on the inventor's loss of control over the invention. It adopts a totality-of-the-circumstances approach, where personal relationships and an implicit expectation of confidentiality can prevent a use from being deemed 'public,' even without a formal non-disclosure agreement. This provides inventors with more latitude to discuss and demonstrate their inventions in private or trusted settings without immediately starting the one-year statutory clock. The ruling also affirms the important distinction between selling the invention itself and selling the rights to the invention, protecting common business arrangements between inventors and their employers or assignees.
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