Before Markey, Chief Judge, Rich, and Bennett, Circuit Judges.
Appellant (Crane) challenges the judgment of the district court, 577 F. Supp. 186, 219 USPQ 1101 (N.D. Ohio 1983), that U.S. Patents No. 3,724,916 ('916 patent) and No. 3,729,234 ('234 patent) on vehicle brake control systems are invalid under 35 USC 102(a) for anticipation, under § 102(b) because of "on sale" and "printed publication" time-bars, under § 103 for obviousness, and under § 112 for failure to set forth the "best mode." Because we affirm as to the claims in suit, on the ground that the claimed inventions were "on sale" more than one year prior to the filing dates of the applications for patent in the U.S., we do not reach the other grounds of invalidation.
Goodyear correctly points out that the district court held invalid certain claims not involved in the lawsuit, wherefore, as to these claims, the judgment is reversed.
The final pretrial order in this case states that only claims 1-11 and 15-17 of the '916 patent and claims 1-6 of the '234 patent were alleged to have been infringed. Thus, claims 12-14 of the '916 patent and claims 7-8 of the '234 patent were not involved in this lawsuit. Neither the district court's opinion nor its entry of judgment speaks to specific claims; rather, the opinion consistently makes a generalized reference to "the patents" -- not particular claims. Goodyear argues that Crane's opening statement that claims 1-17 of the '916 patent and claims 1-8 of the '234 patent were asserted to be infringed modified the pretrial order such that all claims were legally held invalid. We disagree. The statute, § 282, requires that each claim be considered independently of the other claims. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983). The one-sentence reference to the claims in suit by Crane's attorney during his opening statement does not, under these circumstances, rise to the level of a unilateral modification of a pre-trial order approved by both counsel and the trial judge.
The findings by the district court concerning transactions between Crane and Boeing included an invitation on February 1, 1966, to Boeing to issue a consignment purchase order to Crane, as set forth in a Crane "proposal expressly seeking Boeing's 'evaluation of the Mark III Antiskid Control System' on the 727-200 aircraft," 219 USPQ at 1105. A lengthy proposal, dated May 12, 1966, was submitted by Crane at Boeing's request to be supplied with the Mark III antiskid system for its supersonic aircraft. This proposal was found to include a "block diagram corresponding to the block diagram of Figure 1 of the patents in suit and full description of the other operating components." 219 USPQ at 1105-06. The court found that additional proposals had been submitted to Boeing prior to the critical date, for its 727-120 and 727-200 aircraft which contained "a detailed description of the antiskid control Circuit as claimed in the '916 and '234 patents . . . ." 219 USPQ at 1106. The court also found that "Crane advised Boeing . . . that the Mark III had been proven 'during field tests'. . . and by "actual aircraft flight test data . . . ." Id.
In explanation of these seeming offers to sell the Mark III system, Crane states that its invention had not been reduced to practice and that it "was attempting to 'sell' . . . a test and development program." The district court found otherwise, and we have not been persuaded that this finding was clearly erroneous. For the "on sale" bar of § 102(b) to apply, "it is not necessary that a sale be consummated. It suffices that the claimed invention, reduced to practice, was placed on sale, i.e. offered to potential customers, prior to the critical date." In re Theis, 610 F.2d 786, 791, 204 USPQ 188, 192 (CCPA 1979). Additionally, testing or evaluation "for the benefit of the customer, who would want to know if the system suited his purposes . . . does not fall within the experimental use exception . . . ." Theis, 610 F.2d at 792, 204 USPQ at 193. Therefore, we affirm the district court's finding that the claimed invention was on sale within the meaning of the statute.
The case law precedents cited by Crane do not convince us that the claimed inventions were not reduced to practice at the time of their sales. In Chandler v. Mock, 202 F.2d 755. 758, 97 USPQ 135, 136 (CCPA 1953) the subject airplane carburetor had only been "air box" tested and not flight or engine-tested; and in Gaiser v. Linder, 253 F.2d 433, 435, 117 USPQ 209, 211 (CCPA 1958), the subject airplane windshields "were [n]ever installed in airplanes" nor subjected to flight tests or tests "simulating those encountered in actual use in airplanes." In McDonnell Douglas Corp. v. United States, 670 F.2d 156, 161, 214 USPQ 857, 861 (Ct. Cl. 1982) a patented missile guidance system was held not to have met contractual requirements for reduction to practice by computer simulations because subsequent "physical testing revealed significant flaws in the . . . design, making the device (as passed by computer simulation) incapable of meeting important elements of the patent claims now involved."
Crane suggests that only after June, 1967, when the braking systems had passed the FAA-mandated testing and had also satisfactorily passed a full operational testing program "were the inventions acceptable for commercial use," and that the "inventions only then were placed 'on sale' within the meaning of 35 U.S.C. § 102(b)." Commercially-acceptable operability is not a prerequisite to finding that a claimed invention has been placed "on sale." "[A]n invention passes out of the experimental stage and becomes a reality for purposes of the statutory bar even though it may later be refined or improved." In re Theis, 610 F.2d at 792, 204 USPQ at 193, quoting Hobbs v. United States, Atomic Energy Commission, 451 F.2d 849, 859, 171 USPQ 713, 720 (5th Cir. 1971).