EOLAS TECHNOLOGIES INC. v. MICROSOFT CORP. 1325 Cite as 399 F.3d 1325 (Fed. Cir. 2005) dealt only with the second prong of the patented device, we reverse the Claims Pfaff on-sale bar test, because the district Court’s judgment and remand the case for court had previously determined that a further proceedings.4 commercial offer for sale had taken place more than one year before the critical REVERSED and REMANDED. date. As such, Robotic IV ’s relevance, if any, is greatly diminished. Additionally, there is a significant factual difference be- tween the present case and the Robotics cases. In the Robotics cases, the invention had already been conceived prior to the , offer for sale, but the invention ‘‘was still in a developmental stage.’’ Robotic II, 112 F.3d at 1164. Here the patented invention had not yet been conceived when the al- leged offer for sale took place. ‘‘Plaintiff EOLAS TECHNOLOGIES INCORPO- asserts that conception of the patented RATED and the Regents of the Uni- release plate did not occur until after Mod. versity of California, Plaintiffs–Appel- 4 was adopted, and this fact is not disputed lees, by Defendant for purposes of summary judgment,’’ Sparton, No. 92–580C, slip op. v. at 16. In the Robotics cases, there was the potential that an on-sale bar could MICROSOFT CORPORATION, develop, because the invention had at least Defendant–Appellant. been conceived. That is not the case here. No. 04–1234. With no conception of an invention, there cannot be an offer for sale or a sale of that United States Court of Appeals, invention. Finally, the language used in Federal Circuit. the Robotics cases is ‘‘pursuant to an offer to sell that invention.’’ Robotic IV, 249 March 2, 2005. F.3d at 1313 (quoting Robotic II, 112 F.3d at 1168). As we have explained above, Background: Owner of patent for inter- absent any communication between Spar- net browsing software sued software man- ton and the Navy after the issuance of the ufacturer for infringement. The United ECP, the only offer for sale was of the States District Court for the Northern unpatented release plate and not that District of Illinois, Zagel, J., construed claimed in the ’120 and ’233 patents. Ac- claims, 2000 WL 1898853, rejected manu- cordingly, the Robotics cases are inappo- facturer’s inequitable conduct and invalidi- site. ty defenses, 2003 WL 22078029, included foreign sales of accused product in any Conclusion potential royalty award, 274 F.Supp.2d Because we hold that the March 17, 1971 972, and, following jury’s finding of in- ECP was not an offer for sale of the fringement, rejected manufacturer’s post- 4. Our reversal of the applicability of the on as to whether the release plate described in sale bar of § 102 does not, however, settle all the ECP would have rendered the claimed issues as to the validity of the ’120 and ’233 invention obvious by its addition to the prior patents. Under the March 30, 1998 order by art. This is still an open issue before the the Claims Court, no findings have been made Claims Court. 1326 399 FEDERAL REPORTER, 3d SERIES trial motions, 2004 WL 170334. Manufac- 6. Federal Courts O763.1 turer appealed. Court of Appeals reviews questions of Holdings: The Court of Appeals, Rader, statutory interpretation without deference. Circuit Judge, held that: 7. Patents O82 (1) alleged prior art was not abandoned; Software inventor did not ‘‘abandon’’ (2) fact issue existed as to whether patent invention, for purpose of determining was invalid in light of prior art; and whether it was prior art that invalidated (3) software code, sent abroad by manu- third party’s subsequent patent, by creat- facturer on master disks for copying ing and publicly disclosing improved ver- on to hard drives by foreign computer sion a few weeks after he demonstrated producers, was ‘‘component’’ of infring- allegedly anticipating software to potential ing products, within meaning of statute buyers; improved version contained same proscribing foreign assembly. relevant features as original version. 35 Affirmed in part, vacated in part, and re- U.S.C.A. § 102(g). manded. See publication Words and Phras- es for other judicial constructions and definitions. 1. Patents O314(5), 324.55(4) 8. Patents O75 Patent anticipation is question of fact, reviewed for substantial evidence. 35 Software inventor’s demonstration of U.S.C.A. § 102. invention to potential buyer’s employees without confidentiality agreements consti- 2. Patents O16.13 tuted ‘‘public use,’’ for purpose of deter- Patent obviousness is question of law mining whether software was prior art premised on underlying findings of fact. that invalidated third-party’s subsequent 35 U.S.C.A. § 103. patent. 35 U.S.C.A. § 102(b). See publication Words and Phras- 3. Patents O324.54, 324.55(2) es for other judicial constructions District court’s finding that patent is and definitions. unenforceable due to inequitable conduct is 9. Patents O51(1) reviewed for abuse of discretion; its find- ings on underlying factual issues of materi- Prior knowledge or use by others may ality and intent are reviewed for clear invalidate patent if such knowledge or use error. was accessible to public, even if prior use was abandoned. 35 U.S.C.A. § 102(a, g). 4. Patents O324.5 District court’s patent claim construc- 10. Patents O75 tion is reviewed without deference. Third party prior use accessible to public can be public use bar to patentabili- 5. Courts O96(7) ty. 35 U.S.C.A. § 102(b). Patents O324.5 Question of whether jury instruction 11. Patents O72(1) on issue of patent law is erroneous is To anticipate patent, single reference matter of Federal Circuit law, and is re- must teach each and every limitation of viewed de novo. claimed invention. 35 U.S.C.A. § 102(b). EOLAS TECHNOLOGIES INC. v. MICROSOFT CORP. 1327 Cite as 399 F.3d 1325 (Fed. Cir. 2005) 12. Patents O323.2(3) so grievously unfair as to constitute re- Issue of material fact as to whether versible error; it was uncontested that prior art software enabled display of ob- operating system was involved in operation jects imbedded in Internet web pages pre- of computer programs. cluded summary judgment on question of 19. Patents O259(3) whether it anticipated or made obvious patent for Internet browsing software. 35 Software code, sent abroad by manu- U.S.C.A. §§ 102(b), 103. facturer on master disks for copying on to hard drives by foreign computer produc- 13. Patents O67.1, 73 ers, was ‘‘component’’ of infringing prod- When determining validity of software ucts, within meaning of statute proscribing patent, it is earlier software product itself foreign assembly. 35 U.S.C.A. § 271(f)(1). that constitutes prior art, rather than later See publication Words and Phras- published abstract associated with that es for other judicial constructions earlier product. and definitions. 14. Patents O161 Patents O328(2) When interpreting disputed patent 5,206,951, 5,581,686. Cited as Prior claim terms, court accords terms their cus- Art. tomary meaning in the art at time of in- vention. Patents O328(2) 5,838,906. Cited. 15. Patents O167(1.1) Construing court should consult pat- ent specification to determine whether pat- entee gave claim term meaning inconsis- tent with customary meaning in proper Martin R. Lueck, Robins, Kaplan, Miller technological and temporal context. & Ciresi L.L.P., of Minneapolis, Minneso- ta, argued for plaintiff-appellees. With 16. Patents O101(2) him on the brief were Jan M. Conlin, ‘‘Executable application’’ to be located Richard M. Martinez, and Munir R. Me- and identified, as called for in patent for ghjee. Of counsel was Emily M. Rome. Internet browser software, meant any computer program code, that was not op- Constantine L. Trela, Jr., Sidley Austin erating system or utility, that was Brown & Wood LLP, of Chicago, Illinois, launched to enable end user to directly argued for defendant-appellant. With him interact with data. on the brief were David T. Pritikin, Rich- ard A. Cederoth, Robert N. Hochman, and 17. Patents O167(1.1) Carter G. Phillips, of Washington, DC. Of Absent clear disclaimer, embodiments counsel on the brief were H. Michael Hart- in specification do not limit broader patent mann, Brett A. Hesterberg, and Steven P. claim language. Petersen, Leydig, Voit & Mayer, Ltd., of 18. Patents O324.56 Chicago, Illinois. Of counsel was Thomas Unobjected-to jury instruction, in ac- Andrew Culbert, Microsoft Corporation, of tion for infringement of Internet browser Redmond, Washington. software patent, that inventors contem- Gregory S. Coleman, Weil, Gotshal & plated browser’s use of some outside re- Manges LLP, of Austin, Texas, for amicus sources such as operating system, was not curiae Oracle Corporation. With him on 1328 399 FEDERAL REPORTER, 3d SERIES the brief were Matthew D. Powers and conduct defense, this court vacates the dis- Edward R. Reines, of Redwood Shores, trict court’s decision and remands for a California. new trial on these issues. In addition, this John D. Vandenberg, Klarquist Spark- court affirms the district court’s claim con- man, LLP, of Portland, Oregon, for amici struction of ‘‘executable application’’ and curiae Autodesk, Inc., et al. finds the district court did not err in its jury instruction with regard to the claim Charles K. Verhoeven, Quinn Emanuel limitation ‘‘utilized by said browser to Urquhart Oliver & Hedges, of San Fran- identify and locate.’’ Finally, this court cisco, California, for amici curiae Netscape affirms the district court’s holding that Communications Corporation, et al. With ‘‘components,’’ according to section him on the brief were David A.