Pre-Conception Engineering Change Proposal Not Invalidating Offer to Sell

In Sparton Corp. v. United States (Fed. Cir., February 28, 2005), the alleged offer for sale was an Engineering Change Proposal ("ECP") that included a description of a dual depth sonobuoy deployment design, including drawings. This description and drawings contained a release plate mechanism. However, the lower court had noted that "the government concedes, and the parties do not dispute, the release plate mechanism described in the ‘120 and ‘233 patents is not the release plate that was part of the original design proposed in the ECP; in other words, the . . . Contract does not include a release plate that meets the description of the release plate limitation of the claimed inventions."

The Federal Circuit concluded that there was no evidence of any communication between Sparton and the government that a release plate mechanism different from that described in the ECP was going to be used in the sonobuoys. Accordingly, there was nothing to suggest that prior to the critical date, Sparton made an offer for anything other than dual-depth sonobuoys having the release plate mechanism described in the ECP. Absent any communication between Sparton and the Navy after the issuance of the ECP, the only offer for sale was of the unpatented release plate and not that claimed in the ‘120 and ‘233 patents.

The Federal Circuit also noted that the case could be distingushed from the Robotics cases where "the invention had already been conceived prior to the offer for sale, but the invention "was still in a developmental invention. . . In the Robotics cases, there was the potential that an on-sale bar could develop, because the invention had at least been conceived. That is not the case here. With no conception of an invention, there cannot be an offer for sale or a sale of that invention."