Bruce A. Kock v. The Quaker Oats Company

681 F.2d 649 215 U.S.P.Q. 200 Bruce A. KOCK, Plaintiff-Appellant, v. The QUAKER OATS COMPANY, et al., Defendants-Appellees. No. 80-4072. United States Court of Appeals, Ninth Circuit. Argued and Submitted Nov. 12, 1981. Decided July 15, 1982. Sidney F. DeGoff, DeGoff & MacGowan, San Francisco, Cal., for plaintiff-appellant. Lawrence Rosenthal, Blum, Kaplan, Friedman, Silberman & Beran, New York City, for defendants-appellees. Appeal from the United States District Court for the Northern District of California. Before WALLACE, KENNEDY, and PREGERSON, Circuit Judges. KENNEDY, Circuit Judge: 1 The appeal comes from a patent infringement suit where the trial court, within the confines of a summary judgment motion, determined the patent invalid. The court ruled that 35 U.S.C. § 102 (b) (1976) operates to invalidate the patent because the invention had been on sale for longer than one year before the date of the patent application. All concede that certain rights to the invention were transferred by an agreement executed more than a year before the patent application. The inventor argues that the transfer was for an experimental purpose and so not within the bar of the…

The appeal comes from a patent infringement suit where the trial court, within the confines of a summary judgment motion, determined the patent invalid. The court ruled that 35 U.S.C. § 102 (b) (1976) operates to invalidate the patent because the invention had been on sale for longer than one year before the date of the patent application. All concede that certain rights to the invention were transferred by an agreement executed more than a year before the patent application. The inventor argues that the transfer was for an experimental purpose and so not within the bar of the cited statute, while the defendant in the infringement suit argues the contract was a sale not limited to that purpose. We agree that summary judgment must be entered for the defendant below based on the cited statute, although on reasoning somewhat different from that of the court below, and we affirm.

Bruce A. Kock, the inventor in this case, was the plaintiff below and is appellant here. Kock undertook a project for Merry Manufacturing Company (Merry). Kock was to be paid one thousand dollars “for the development and building of one working prototype toy watch movement, exclusively for Merry…

dissenting.

The majority opinion thoughtfully examines the issues involved in determining what constitutes a sale for experimental purposes under 35 U.S.C. § 102 (b). 1 The opinion, however, overlooks decisive inferences and case law and frustrates an independent inventor’s ability to market his invention, and reap the rewards of his creativity. Therefore, I respectfully dissent.

This case is here on appeal from the district court’s order granting summary judgment for the defendants. Thus, the primary question before us is whether, after construing all evidence in the light most favorable to plaintiff, the non-moving party, there remains a material question of fact whether the sale of the prototype was for an experimental purpose. Fed.R.Civ. Pro. 56(c); Pegasus Fund, Inc. v. Laraneta, 617 F.2d 1335, 1339 (9th Cir. 1980). Since material questions of fact exist, we should remand for trial.

Our court has stated that resolution of the question whether a sale had an experimental purpose depends upon “the totality of evidence presented by both parties, of the nature of the acts committed prior to the critical date and the purpose that motivated the commission of those acts.”…