Footnote 11 in Pfaff

My Patent Law class just finished up anticipation, which included a discussion of the on-sale bar issues in Pfaff v. Wells Electronics, 525 U.S. 55 (1998).  Footnote 11 always makes me laugh (and sometimes even my students) given what was to come in the decade and a half after Pfaff in opinions such as KSR, eBay, Bilski, etc.:

Petitioner correctly argues that these provisions identify an interest in providing inventors with a definite standard for determining when a patent application must be filed.  A rule that makes the timeliness of an application depend on the date when an invention is “substantially complete” seriously undermines the interest in certainty.11

11The Federal Circuit has developed a multifactor, “totality of the circumstances” test to determine the trigger for the on-sale bar. See, e. g., Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F. 3d 1538, 1544 (1997) (stating that, in determining whether an invention is on sale for purposes of § 102(b), “`all of the circumstances surrounding the sale or offer to sell, including the stage of development of the invention and the nature of the invention, must be considered and weighed against the policies underlying section 102(b)’ “); see also UMC Electronics Co. v. United States, 816 F. 2d 647, 656 (1987) (stating the on-sale bar “does not lend itself to formulation into a set of precise requirements”). As the Federal Circuit itself has noted, this test “has been criticized as unnecessarily vague.” Seal-Flex, Inc. v. Athletic Track & Court Construction, 98 F. 3d 1318, 1323, n. 2 (1996).

525 U.S. at 65-66.  Link to the Court’s opinion.

44 thoughts on “Footnote 11 in Pfaff

  1. 6

    But more typically this is called the “ready for patenting” test, due to the Courts statement that “one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.” That does not seem to have created that much ambiguity in later “on sale” bar cases, unlike a really ambiguous decision like Bilski. That seems to inherently require that there is sufficient 112 information available for a valid patent application [a fairly objective test] [plus the other requirement of a commercial offer for sale] before the statutory deadline. [The AIA 102 will eventually make these questions academic.]

    1. 6.1


      Would you agree that “ready for patenting” has been written out of US patent law with the AIA (along the lines of secret use/secret on sale no longer being a bar – see post 5)?

  2. 5

    Prof. Crouch,

    Did you discuss any AIA implications (such as the soliloquy that arguably removes private sales as a patent bar)?

  3. 4

    Wasn’t there a movement to place patent law more in line with general law…?

    The notion of “void for vagueness” then, should be the death knell of the Supreme Court’s own nose of wax addiction, given that their insistence on keeping their implicit writings alive, no matter what, has directly resulted in such vagueness that even the specialty court created by Congress to eliminate vagueness that had developed in the courts has thrown up its hands in disgust (just ask Alice).

    Even if we grant some notion of the Court not being completely kicked out of writing patent law by the 1952 Act, what law they have (implicitly) written is unconstitutional not only for violating the separation of powers doctrine (writing patent law explicitly given to the legislative branch), but for violating the vagueness and notice doctrines.

    1. 4.1

      anon, the Supreme Court law of invention was developed over a long period of time, deciding particular cases such that there was a common-law of invention that was developed. To some extent, the effort in drafting section 103 was an attempt to preempt that common-law development, in other respects it was an attempt to overrule a particular case, Cuno (flash of genius), and finally it was an effort to codify existing law.

      We know from history that deciding cases narrowly on particular facts is the best way to develop the law. In contrast, writing broadly on narrow facts is almost always a surefired way to get it wrong.

      So what happened in 1952 was that the patent bar got together and thought they do it better than the Supreme Court. We can see they made a hash of 103. They similarly made a hash of 271(b) and 271(c). The worst of all they made a hash of functional claiming by passing 112(f). The arrogance of these folks in hindsight was appalling. Truly appalling.

      And to top it off, they got a primary author of this debacle appointed to the CCPA who made it his life’s work to do a better job than the Supreme Court. This effort of his led to the demise of the doctrine of functional claiming, to the concept that merely reciting something within the four classes leads to eligible subject matter, and to the idea that if a claim might be construed it is not indefinite. In each of these cases, the result was directly adverse to long prevailing Supreme Court authority to the contrary; and it largely led to the chaotic patent system we have today.

      Let us not applaud what happened and ’52 to quickly. Let us learn from history instead.

      1. 4.1.1

        The problem, Ned, was not the changes that happened in 1952.

        Those changes happened for a reason and a large part of that reason was the venom of the Supreme Court towards patents and the anti-patent acitivism and “policy” that almost wrecked the US as a bastion of innovation. Contrast that with the world leading innovation that occurred because of – not in spite of – the 1952 Act.

        No Ned – the problem has been the inability of the Supreme Court to curb its power addiction and the ensuing p1ssing match and brow beating of the actual court set up by Congress to eliminate the problems caused by judicial meddling.

        You need to recognize the historical factors leading to the providing of power to Congress instead of to the judiciary.

        Further, your repeated inability to ascribe to the Supreme Court its responsibility for the chaos in patent law today is simply inexcusable.

        You are reading from the wrong script of history, my friend. Your inability to see things objectively (i.e. 6 as an Einstein of patent law only because he agreed with your crusading view) casts such a pall over your rendition of history as to make a joke of IMHO-Ned law – and your view of history.


          Anon, we can debate the historical record another time. But as to the “hash” that Rich made of what he did, it primarily had to do with all the “detail” he put into the new laws that have come back to bite us. For example, 103, 271 and 112(f) could have been stated:

          103. A patent may not be obtained though not identically disclosed in the prior art described in 102(a), if the inventive step over such prior art was the work of one of ordinary skill in the relevant art. (102 b-g automatically excluded.)

          271. Whoever, alone or jointly, makes, uses, sells or imports the invention or an intermediate product embodying the invention, or practices a patented process, in the United States infringes the patent.

          112(f) Subject to 112(b), a old element of a combination may be expressed in terms of its function.


            LOL – your restatement clearly indicates that the law is NOT what you try to say it is.

            Thanks for the admission Ned.


              anon, you will note my suggestions re: 103 would have codified the law — and immediately solved a vexing problem that later emerged by the general reference back to 102 and not to 102(a). Most of us thought obviousness is based on information that was public. That also seems to be the law in Euroland.

              271 would have simply overruled Mercoid. It would have defined contributory infringement in the way it is described in Univis Lens and a host of other cases. Joint infringement prior to ’52 was recognized.

              112(f), overruled Halliburton to the extent that case impugned functionally claiming old elements. Nothing at all would be said about anything else. Moreover, no rule of construction would be mandated.

              Simple and sweet.

              If you read Mercoid and Black’s concurrence, the reason for the court nixing contributory infringement precisely was because it was non statutory. This aligns with your thinking per Rich, and does not exhibit a Supreme Court out of control.

              On Cuno, the “flash of genius” quip came from an earlier case.


              overruled Halliburton to the extent

              LOL – no Ned, you do not get to pick and choose when a case is abrogated.

              Besides which – you have not addressed my particular points yet on the law.

              Still waiting for you to stop running away.

  4. 3

    You say: “Footnote 11 always makes me laugh (and sometimes even my students) given what was to come in the decade and a half after Pfaff in opinions such as KSR, eBay, Bilski, etc…”

    I totally agree with you on Bilski, and to a lesser extent on KSR. But I would not have placed eBay in the same boat as being unnecessarily vague. The test for injunctive relief in eBay is actually pretty easy to apply, predictable, and lots of bright-line rules have been gleaned based on particular fact patterns. Even the Apple/Samsung case, which treaded new ground in this area, has resulted in rules that are far easier to apply than, say, Bilski.

    1. 3.1

      I was thinking more along the lines of the Court’s rejections of bright-line rules rather than how “good” the replacement is, so I agree with you that there are rejections of rules that may actually produce more predictable results – and eBay is a good example of that.

  5. 2

    Dennis, I agree with the joke. There is a difference between law and equity, and at times it appears even Supreme Court fails to appreciate that distinction, injecting multiple factors that must be weighed into to determine a legal issue. I was struck in reading the Supreme Court case Taylor v. Sturgell, 128 S. Ct. 2161, 553 U.S. 880, 171 L. Ed. 2d 155 (2008) that that case was all about the equitable balancing of factors that had entered into the determination of privity in the Federal Circuit law. The Supreme Court put its foot down in that case, and said there was to be no balancing of factors. The Supreme Court said that law needed to be clear indefinite, going so far as to cite the six different circumstances were privity was recognized and basically saying that it would not be recognized elsewhere.

    As you would also note, the patent office taken the position that the determination of privity within the meaning of §315(b) comprises an equitable balancing of factors, citing Taylor for support, when the case itself holds exactly the opposite.

    It also struck me is that in the recent guidelines proposed for the determination of patentable subject matter, the patent office use a very complicated balancing of factors test, each one of which use vague and indefinite terms of degree. That has got to lead to a mess.

    1. 2.1

      And let me add that we have a major problem in the “law” in the indefinite nature of the determination under section 103. What would be obvious to one of ordinary skill in the art is inherently subjective, and not a legal determination. I think we really need to consider, long-term, a better formulation.

      Rather than try to invent a better one, I suggest we look to Europe and the rest the world to see how they define invention. I’m particularly struck by the test coming out of the EPO.

      1. 2.1.1


        You should be aware of several conversations (not joined in by advocates of the EP system) that show that system to have its own share of subjectivity and faults.


          I think something which is often misunderstood about obviousness at the EPO is that there is no ultimate “test” for obviousness, but rather there is an “approach” to be applied when reasoning about obviousness.

          The difference is important because “test” evokes the idea of a tool that produces the same result irrespective of who wields it. The EPO approach has no such pretense; it simply prescribes the form that an inventive step reasoning should have. This allows parties that have different ideas about obviousness (typically office/applicant or opponent/patent proprietor) to home in more quickly to the points on which their opinion differ and which are relevant to the issue of obviousness. It is sufficiently flexible to adapt to virtually any case and at the same time rigid enough to thwart most attempts of muddling the waters.

          That being said, I highly doubt that it is possible to develop a test which excludes subjectivity when assessing obviousness while retaining the intuitive notion behind the statutory provision. I’d be happy to be proven wrong on this…


            I like that comment from LBZ. As LBZ points out, a powerful advantage of EPO-PSA is that it sets out the framework within which the debate on obviousness must be conducted. Being held to argue in accordance with that framework keeps the debate focussed. Every advocate knows what they have to do to win the argument. Nobody asserts that EPO-PSA systemically favours the side arguing for inventivity or the side arguing for obviousness. Rather, it is per se neutral.

            And it is, as LBZ says, flexible enough to allow all “secondary factors” to be invoked in the debate. The only limit on what you can argue is your own power of imagination.

            And as Ned points out, EPO-PSA is a “TSM” approach, so it definitively shuts out any incursion of ex post facto reasoning.

            The main problem with EPO-PSA is that outside the circle of experienced EPO users, patent experts will have no truck with it, supposing that obviousness can’t possibly be that easy to decide. So they decline to engage with it. And EPO-PSA is like learning as a child to ride a bike. To start with, it is impossibly difficult but, once you get the hang of it, which does require studious application to the task, and much practice, you wonder how you could ever have had a problem with it.

            The words of Max Planck are apposite here (even though legal theories are not the same as scientific theories):

            “A new scientific truth does not triumph by convincing its opponents and making them see the light, but rather because its opponents eventually die, and a new generation grows up that is familiar with it.”

            That is exactly what has happened, with obviousness in Europe.


          anon, indeed it does. The TSM was about the most objective test there ever was, IMHO. But sic fugit gloria mundi.


            “Glory” may be a bit of hyperbole…

            But I will lob a softball to you with one that rivals MoT: “Useful, concrete and tangible result”

            As I point out elsewhere, the useful aspect is but a different aspect of 101. Putting that to the side, if one then looks at what exactly is meant by “concrete and tangible” one comes amazingly close to a specific machine (concrete) of a transformation (tangible result). Hmmm, all this time that you have been attempting to force feed me the State Street case, it appears that such a case aligns with your world view…


              Anon, “useful, concrete and tangible result.” But as applied in State Street Bank, the court approved claims that calculated the improved price. What was concrete and tangible about that?

              But on its face the test seems reasonable. It was application in State Street Bank that was appalling.


              Ned, I may have to review State Street to see if you have a point about application. As you well know, I do not base my positions on that case.


            anon, read SSB and then read the clearinghouse brief for criticism of SSB. The test itself is reasonable. It simply was misapplied in SSB.

            Also, the government brief does not endorse allowing a claim merely because it claims a machine or article of manufacture. See, brief beginning at page 28.


              You have not addressed any type of ‘correction’ for your misrepresentation of what the government brief actually says Ned.

              Let’s see you take care of that, m’ok?

    2. 2.2

      Law and equity. So, do you think the four “exceptions” to the Patent Law Act of 1952 are applying the law or invoking equitable solutions?

      1. 2.2.1

        Night, well one brief, I don’t recall offhand, said that the SC was developing a common law approach to eligible subject matter in taking and ruling on cases. This is the way common law develops.



          You realize that power was removed in 1952, right?

          You also realize which branch – per the Constitution – has that power, right?

          Hint: it is not the Judiciary, nor is it the Executive.


            anon, “removed?” Read Graham v. John Deere on that point. The SC thought 103 was a codification.


              Of course the Supreme’s said that (the voice of an addict) – they were wrong and we both know that, Ned.

              You really are not pretending otherwise, are you?


          And if it is not federal common law — these bizarre exceptions–then what are they? Equitable. We know what that means Ned. Narrow as possible use. Public policy for using them should be examined each time they are used. Etc.


          Ned says: “This is the way common law develops.”

          This one gave me a good belly laugh, Ned. Common law is not supposed to develop the law when statutes have been passed. The SCOTUS can interpret the statutes, but they are not supposed to develop their own private common law.


            Ned Blogging Guideline No. 3: when you don’t have the facts or the law, then remain quiet and don’t respond to the post. Responding to the post will merely bring more attention to the post.


              Corollary No. 1 to Ned Blogging Guideline No. 3:

              Pretend that the offending post pointing out the lack of facts or law in the Ned post never happened and repeat the Ned post ad nauseum.

  6. 1

    I still don’t know exactly what to tell international clients about when they have to file and what exactly they can do with their inventions before filing. And, this regards real products (some with witches–you know, Ned, witches that abstract thing that does not exist but which you claim some people are.)

    1. 1.1

      Ned, medieval patent attorney. Abstract == witch. A female real person is accused of being a witch by Ned. A real invention such as a computer performing useful work and being sold for a fine price to a customer is called an abstraction by Ned.

      Ned. Medieval patent attorney. Mixes up computers with human brains. Ridicules the Church-Turing Thesis. Doesn’t know the difference between math and instructions to a machine.

      There is only one person more heinous–Lemley.


            LOL – then again, consider the judgment of Ned – 6 is an Einstein of patent law and everyone should, um, enjoy Malcolm’s ‘swagger.’


          6, don’t worry about it. I think it a compliment to have opposing attorneys go apoplectic. Makes my day.

    2. 1.2

      Let me assist. To advise your clients with respect to abstract ideas, you simply apply the following sophisticated, incisive analysis which is entirely consistent with Supreme Court guidance. Just trivially modify it to change “witch” to “abstract patent”:

      link to

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