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Moleculon Research Corp. v. CBS, Inc. - 793 F.2d 1261 (Fed. Cir. 1986)


A trial court correctly ascertained the true meaning of a claim by interpreting the claim language in light of the specification and the patent as a whole.


Appellee Moleculon, as assignee of the '201 patent which issued to Larry D. Nichols, sued appellant CBS Inc., as successor to the Ideal Toy Corporation, alleging infringement of claims 3, 4, 5, 6, and 9 of the '201 patent.

In 1957, Nichols conceived of a three-dimensional puzzle capable of rotational movement. He envisioned an assembly of eight cubes attached in a 2 x 2 x 2 arrangement, with each of the six faces of the composite cube distinguished by a different color and the individual cubes being capable of rotation in sets of four around one of three mutually perpendicular axes. During the period 1957-1962, while doing graduate work in organic chemistry, Nichols constructed several paper models of his puzzle. Although these models confirmed the feasibility of Nichols' conception, they lacked durability.

In 1962, Nichols accepted employment as a research scientist at Moleculon. Dr. Obermayer, the president of Moleculon, expressed interest in the puzzle and asked whether Nichols intended to commercialize the puzzle. Obermayer suggested that Moleculon should try to do so. In March 1969, Nichols assigned all his rights in the puzzle invention to Moleculon in return for a share of any proceeds of commercialization. In the next three years, Moleculon contacted between 50 to 60 toy and game manufacturers, including Ideal. Ideal responded to the effect that it did not currently have an interest in marketing the puzzle. Moleculon itself did not succeed in marketing the Nichols cube. Nichols filed on behalf of Moleculon a patent application covering his invention. The '201 patent issued.

CBS’ products are the well-known 3 x 3 x 3 Rubik's Cube puzzle, two 2 x 2 x 2 variations -- a Japanese-made Pocket Rubik's Cube and a Taiwanese-made Pocket Rubik's Cube (pocket cubes), and a 4 x 4 x 4 Rubik's Revenge. CBS argues that the subject matter of the '201 patent was in "public use" and "on sale" by Nichols, prior to the March 3, 1969 critical date (i.e., one year prior to filing of the patent application), thus rendering the patent invalid under section 102(b).

The  United States District Court for the District of Delaware held that claims 3-5 and 9 of Moleculon's patent no. 3,655,201 ( the '201 patent) valid and infringed by certain of the well-known Rubik's Cube puzzles. On appeal, CBS held that the District Court erred in holding that the claimed invention was not in public use nor on sale; (2) holding claims 3-5 not invalid for lack of utility and enablement; (3) holding claims 3-5 and 9 nonobvious; and (4) finding infringement of claim 9 and induced infringement of claims 3, 4, and 5.


  1. Was the claimed invention not in public use nor on sale within the meaning of 35 U.S.C. § 102(b)?
  2. Were claims 3-5 and 9 not invalid for obviousness under 35 U.S.C. § 103
  3. Were claims 3-5 not invalid for lack of utility and enablement under 35 U.S.C. §§ 101, 112


1. No 2. No 3. No


The United States Court of Appeals for the Federal Circuit affirmed in part and vacated in part. The Court affirmed the finding of infringement as to claim 9.  The Court affirmed the parts of the district court's judgment holding that the claimed invention was not in public use or on sale, that claims 3-5 were not invalid for lack of utility or enablement, and that claims 3-5 and 9 were not invalid for obviousness. The Court also affirmed that part of the judgment holding claims 3-5 and 9 infringed by the 2 x 2 x 2 Rubik's pocket cubes.  The Court vacated that part of the judgment holding the '201 patent was infringed by the 3 x 3 x 3 Rubik's Cube and 4 x 4 x 4 Rubik's Revenge.

The patent was not in public use because Nichols, at all times, retained control over the puzzle's use and the distribution of information concerning it. Nichols' use was private and for his own enjoyment. There was also no evidence found of any commercially motivated activity by Nichols prior to the critical date. Discussion between employer and employee does not by itself convert an employee's private pursuit into commercial enterprise with the employer. The patent was also not on sale as there was no indication that the parties contemplated the sale or transfer to Moleculon of the single physical embodiment of the puzzle then in existence.

The Court ruled that claims 3-5 and 9 are not invalid for obviousness after it considered each of CBS' arguments. CBS showed neither legal error in the court's determination on nonobviousness nor clear error in the court's probative findings underlying that determination.

The Court also held that claims 3-5 are not invalid for lack of utility or enablement as neither the claims nor the disclosure need set forth a particular series of moves to solve the puzzle. CBS did not come close to meeting the burden of a non-utility defense by proving total incapacity with facts supported by clear and convincing evidence. Nor has CBS shown that the claims fail for lack of an enabling disclosure, i.e., one that enables a person of ordinary skill in the art to use the claimed methods.

Based on the Court’s review of the patent, it held that claim 3 was limited, at least for purposes of literal infringement, to a method for restoring a 2 x 2 x 2 composite cube. That interpretation follows not only from the language of a step, but also from the way the eight cube piece composite cube is manipulated in the succeeding steps, which are limited to manipulating sets of four cubes only. The Nichols patent as a whole shows that the word "cube" is not limited to geometrically true cubes but refers to the cubelet shape as perceived by the puzzle user. Claims 3-5 and 9, then, are infringed only by the 2 x 2 x 2 Rubik's pocket cubes, but not by the 3 x 3 x 3 Rubik's Cube and 4 x 4 x 4 Rubik's Revenge.

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