## Facts

- Allan M. Konrad owned U.S. Patent Nos. 5,544,320; 5,696,901; and 5,974,444, directed to systems enabling users to access and search databases located on remote computers using a “remote database object.”
- Konrad developed and tested a working prototype by September 26, 1990 at Lawrence Berkeley Laboratory (LBL), including a local component installed on users’ PCs that enabled access to a remote database (the LBL STAFF database).
- In 1991, Konrad and an LBL assistant adapted the system for use with the high energy physics (HEP) database maintained at Stanford Linear Accelerator Center (SLAC).
- The ’320 patent was filed January 8, 1993, making January 8, 1992 the § 102(b) critical date.
- Before the critical date, the system was used at LBL and SLAC by multiple users in ordinary operations without confidentiality restrictions.
- Before the critical date, Konrad demonstrated the system to potential users and outside entities without imposing confidentiality obligations.
- Before the critical date, Konrad approached SLAC to create a remote database object for the HEP database in exchange for compensation.
- Konrad sued numerous Netscape customers for infringement in the Eastern District of Texas; Netscape, Microsoft, and AOL then filed a declaratory-judgment action in the Northern District of California asserting invalidity under the § 102(b) public-use and on-sale bars.
- The district court granted summary judgment that all asserted patents were invalid under § 102(b), and Konrad appealed.

## Issues

1. Whether pre-critical-date demonstrations and use of the implemented systems by others without confidentiality restrictions constituted “public use” under 35 U.S.C. § 102(b).
2. Whether Konrad’s pre-critical-date dealings with SLAC constituted a commercial offer for sale triggering the § 102(b) on-sale bar.
3. Whether the pre-critical-date activities were material information that had to be disclosed to the PTO under 37 C.F.R. § 1.56.

## Decision

- The Federal Circuit affirmed summary judgment that the patents were invalid under § 102(b).
- The court held there was no genuine dispute of material fact that:
  - Konrad’s pre-critical-date demonstrations and third-party uses at LBL and SLAC, undertaken without confidentiality restrictions and not primarily for experimentation, constituted public use; and
  - Konrad made a pre-critical-date commercial offer to create the HEP remote database object for SLAC, satisfying the on-sale bar when the invention was ready for patenting.
- Because the patents were invalid, the court did not reach the PTO materiality issue.

## Legal Principles

- Under 35 U.S.C. § 102(b), a patent is barred if, more than one year before the application date, the invention was in public use or on sale.
- Public use may be found where a working invention is demonstrated or deployed for real-world use by others without confidentiality restrictions and without a bona fide experimental-use framework.
- The on-sale bar applies where, before the critical date, (1) the invention is the subject of a commercial offer for sale and (2) the invention is ready for patenting, including where the offer concerns providing an implementation/service embodying the invention for compensation.
- Summary judgment is appropriate on § 102(b) bars when the nonmovant fails to raise a genuine issue of material fact regarding the relevant pre-critical-date activities.

## Conclusion

The Federal Circuit affirmed invalidity of Konrad’s remote-database-object patents because, more than one year before filing, the invention was publicly used through nonconfidential demonstrations and third-party operational use, and it was also commercially offered to SLAC while ready for patenting, independently triggering § 102(b)’s public-use and on-sale bars.


Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315 (Fed. Cir. 2002)