author: Justice Stevens

text:
    PFAFF v. WELLS ELECTRONICS, INC.
    No. 97-1130.
    Argued October 6,1998
    Decided November 10, 1998

      Jerry R. Selinger argued the cause for petitioner. With him on the briefs were Susan E. Powley and Jack A. Kanz.

      C. Randall Bain argued the cause for respondent. With him on the brief were Alan H. Blankenheimer, Patricia A. Hubbard, C. Mark Kittredge, and James D. Hall.

      Jeffrey P. Minear argued the cause for the United States as amicus curiae urging affirmance. With him on the brief were Solicitor General Waxman, Assistant Attorneys General Hunger and Klein, Deputy Solicitor General Wallace, William Kanter, Alfred Mollin, David Siedman, Mark S. Popofsky, Nancy J. Linck, and Albín F. Drost.

      Briefs of amici curiae urging reversal were filed for Global Gaming Technology, Inc., by Joseph M. Vanek; for the American Intellectual Property Law Association by Robert H. Fischer, Gary L. Griswold, Robert L. Baechtold, and J. Michael Jakes; for the Federal Circuit Bar Association by George E. Hutchinson, Denise W. DeFranco, and James F. McKeown.

      Briefs of amici curiae urging affirmance were filed for View Engineering, Inc., by Ernie L. Brooks and Frank A. Angileri; for the Dallas-Fort Worth Intellectual Property Law Association by D. Scott Hemingway and Louis Touton; for the Mas-Hamilton Group by David E. Schmit; and for the Patent, Trademark & Copyright Section of the Bar Association of the District of Columbia by Brace T. Wieder.

   Justice Stevens

delivered the opinion of the Court.

Section 102(b) of the Patent Act of 1952 provides that no person is entitled to patent an “invention” that has been “on sale” more than one year before filing a patent application. We granted certiorari to determine whether the commercial marketing of a newly invented product may mark the beginning of the 1-year period even though the invention has not yet been reduced to practice.

rH

On April 19, 1982, petitioner, Wayne Pfaff, filed an application for a patent on a computer chip soeket. Therefore, April 19, 1981, constitutes the critical date for purposes of the on-sale bar of 35 TJ. S. C. § 102(b); if the 1-year period began to run before that date, Pfaff lost his right to patent his invention.

Pfaff commenced work on the socket in November 1980, when representatives of Texas Instruments asked him to develop a new device for mounting and removing semiconductor chip carriers. In response to this request, he prepared detailed engineering drawings that described the design, the dimensions, and the materials to be used in making the socket. Pfaff sent those drawings to a manufacturer in February or March 1981.

Prior to March 17,1981, Pfaff showed a sketch of his concept to representatives of Texas Instruments. On April 8, 1981, they provided Pfaff with a written confirmation of a previously placed oral purchase order for 30,100 of his new sockets for a total price of $91,155. In accord with his normal practice, Pfaff did not make and test a prototype of the new device before offering to sell it in commercial quantities.

The manufacturer took several months to develop the customized tooling necessary to produce the device, and Pfaff did not fill the order until July 1981. The evidence therefore indicates that Pfaff first reduced his invention to practice in the summer of 1981. The socket achieved substantial commercial success before Patent No. 4,491,377 (’377 patent) issued to Pfaff on January 1, 1985.

After the patent issued, petitioner brought an infringement action against respondent, Wells Electronics, Inc., the manufacturer of a competing socket. Wells prevailed on the basis of a finding of no infringement. When respondent began to market a modified device, petitioner brought this suit, alleging that the modifications infringed six of the claims in the ’377 patent.

After a full evidentiary hearing before a Special Master, the District Court held that two of those claims (1 and 6) were invalid because they had been anticipated in the prior art. Nevertheless, the court concluded that four other claims (7,10,11, and 19) were valid and three (7,10, and 11) were infringed by various models of respondent’s sockets. App. to Pet. for Cert. 21a-22a. Adopting the Special Master’s findings, the District Court rejected respondent’s § 102(b) defense because Pfaff had filed the application for the ’377 patent less than a year after reducing the invention to practice.

The Court of Appeals reversed, finding all six claims invalid. 124 F. 3d 1429 (C A Fed. 1997). Four of the claims (1, 6,7, and 10) described the socket that Pfaff had sold to Texas Instruments prior to April 8,1981. Because that device had been offered for sale on a commercial basis more than one year before the patent application was filed on April 19,1982, the court concluded that those claims were invalid under § 102(b). That conclusion rested on the court’s view that as long as the invention was “substantially complete at the time of sale,” the 1-year period began to run, even though the invention had not yet been reduced to practice. Id., at 1434. The other two claims (11 and 19) described a feature that had not been included in Pfaff’s initial design, but the Court of Appeals concluded as a matter of law that the additional feature was not itself patentable because it was an obvious addition to the prior art. Given the court’s § 102(b) holding, the prior art included Pfaff’s first four claims. •

Because other courts have held or assumed that an invention cannot be “on sale” within the meaning of § 102(b) unless and until it has been reduced to practice, see, e. g., Timely Products Corp. v. Arron, 523 F. 2d 288, 299-302 (CA2 1975); Dart Industries, Inc. v. E. I. Du Pont de Nemours & Co., 489 F. 2d 1359, 1365, n. 11 (CA7 1973), cert. denied, 417 U. S. 938 (1974), and because the text of § 102(b) makes no reference to “substantial completion” of an invention, we granted certiorari. 523 U. S. 1003 (1998).

r-t í — Í

The primary meaning of the word invention” m the Patent Act unquestionably refers to the inventor’s conception rather than to a physical embodiment of that idea. The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in §101 make any mention of "reduction to practice.” The statute’s only specific reference to that term is found in § 102(g), which sets forth the standard for resolving priority contests between two competing claimants to a patent. That subsection provides:

"In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to eoneep - tion by the other.”

Thus, assuming diligence on the part of the applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to the patent.

It is well settled that an invention may be patented before it is reduced to practice. In 1888, this Court upheld a patent issued to Alexander Graham Bell even though he had filed his application before constructing a working telephone. Chief Justice Waite’s reasoning in that case merits quoting at length:

"It is quite true that when Bell applied for his patent he had never actually transmitted telegraphically spoken words so that they could be distinctly heard and understood at the receiving end of his line, but in his specification he did describe accurately and with admirable clearness his process, that is to say, the exact electrical condition that must be created to accomplish his purpose, and he also described, with sufficient precision to enable one of ordinary skill in such matters to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect, receive the words, and carry them to and deliver them at the appointed place. The particular instrument which he had, and which he used in his experiments, did not, under the circumstances in which it was tried, reproduce the words spoken, so that they could be clearly understood, but the proof is abundant and of the most convincing character, that other instruments, carefully constructed and made exactly in accordance with the specification, without any additions whatever, have operated and will operate successfully. A good mechanic of proper skill in matters of the kind can take the patent and, by following the specification strictly, can, without more, construct an apparatus which, when used in the way pointed out, will do all that it is claimed the method or process will do ....
“The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient clearness and precision to enable those skilled in the matter to understand what the process is, and if he points out some practicable way of putting it into operation.” The Telephone Cases, 126 U. S. 1, 535-536 (1888).

When we apply the reasoning of The Telephone Cases to the facts of the case before us today, it is evident that Pfaff could have obtained a patent on his novel socket when he accepted the purchase order from Texas Instruments for 30,100 units. At that time he provided the manufacturer with a description and drawings that had “sufficient clearness and precision to enable those skilled in the matter” to produce the device. Id., at 536. The parties agree that the sockets manufactured to fill that order embody Pfaff’s conception as set forth in claims 1,6,7, and 10 of the ’377 patent. We can find no basis in the text of § 102(b) or in the facts of this case for concluding that Pfaff’s invention was not “on sale” within the meaning of the statute until after it had been reduced to practice.

Ill

Pfaff nevertheless argues that longstanding precedent, buttressed by the strong interest in providing inventors with a clear standard identifying the onset of the 1-year period, justifies a special interpretation of the word “invention” as used in § 102(b). We are persuaded that this nontextual argument should be rejected.

As we have often explained, most recently in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 151 (1989), the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time. The balance between the interest in motivating innovation and enlightenment by rewarding invention with patent protection on the one hand, and the interest in avoiding monopolies that unnecessarily stifle competition on the other, has been a feature of the federal patent laws since their inception. As this Court explained in 1871:

“Letters patent are not to be regarded as monopolies... but as public franchises granted to the inventors of new and useful improvements for the purpose of securing to them, as such inventors, for the limited term therein mentioned, the exclusive right and liberty to make and use and vend to others to be used their own inventions, as tending to promote the progress of science and the useful arts, and as matter of compensation to the inventors for their labor, toil, and expense in making the inventions, and reducing the same to practice for the public benefit, as contemplated by the Constitution and sanctioned by the laws of Congress.” Seymour v. Osborne, 11 Wall. 516, 533-534.

Consistent with these ends, § 102 of the Patent Act serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term. See, e.g., Frantz Mfg. Co. v. Phenix Mfg. Co., 457 P. 2d 314, 320 (CA7 1972).

We originally held that an inventor loses his right to a patent if he puts his invention into public use before filing a patent application. “His voluntary act or acquiescence in the public sale and use is an abandonment of his right.” Pennock v. Dialogue, 2 Pet. 1, 24 (1829) (Story, J.). A similar reluctance to allow an inventor to remove existing knowledge from public use undergirds the on-sale bar.

Nevertheless, an inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention — even if such testing occurs in the public eye. The law has long recognized the distinction between inventions put to experimental use and products sold commercially. In 1878, we explained why pat-entability may turn on an inventor’s use of his product.

“It is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law; but this cannot be said with justice when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended. His monopoly only continues for the allotted period, in any event; and it is the interest of the public, as well as himself, that the invention should be perfect and properly tested, before a patent is granted for it. Any attempt to use it for a profit, and not by way of experiment, for a longer period than two years before the application, would deprive the inventor of his right to a patent.” Elizabeth v. Pavement Co., 97 U. S. 126, 137 (emphasis added).

The patent laws therefore seek both to protect the public’s right to retain knowledge already in the public domain and the inventor’s right to control whether and when he may patent his invention. The Patent Act of 1836, 5 Stat. 117, was the first statute that expressly included an on-sale bar to the issuance of a patent. Like the earlier holding in Pen-nock, that provision precluded patentability if the invention had been placed on sale at any time before the patent application was filed. In 1839, Congress ameliorated that requirement by enacting a 2-year grace period in which the inventor could file an application. 5 Stat. 353.

In Andrews v. Hovey, 123 U. S. 267, 274 (1887), we noted that the purpose of that amendment was “to fix a period of limitation which should be certain”; it required the inventor to make sure that a patent application was filed “within two years from the completion of his invention,” ibid. In 1939, Congress reduced the grace period from two years to one year. 53 Stat. 1212.

Petitioner correctly argues that these provisions identify an interest in providing inventors with a definite standard for determining when a patent application must be filed. A rule that makes the timeliness of an application depend on the date when an invention is “substantially complete” seriously undermines the interest in certainty. Moreover, such a rule finds no support in the text of the statute. Thus, petitioner’s argument calls into question the standard applied by the Court of Appeals, but it does not persuade us that it is necessary to engraft a reduction to practice element into the meaning of the term “invention” as used in § 102(b).

The word “invention” must refer to a concept that is complete, rather than merely one that is “substantially complete.” It is true that reduction to practice ordinarily provides the best evidence that an invention is complete. But just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case. Indeed, both the facts of The Telephone Cases and the facts of this case demonstrate that one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.

We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date.

First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. The experimental use doctrine, for example, has not generated concerns about indefiniteness, and we perceive no reason why unmanageable uncertainty should attend a rule that measures the application of the on-sale bar of § 102(b) against the date when an invention that is ready for patenting is first marketed commercially. In this ease the acceptance of the purchase order prior to April 8, 1981, makes it clear that such an offer had been made, and there is no question that the sale was commercial rather than experimental in character.

Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. In this case the second condition of the on-sale bar is satisfied because the drawings Pfaff sent to the manufacturer before the critical date fully disclosed the invention.

The evidence in this case thus fulfills the two essential conditions of the on-sale bar. As succinctly stated by Learned Hand:

“[I]t is a condition upon an inventor's right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.” Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (CA2 1946).

The judgment of the Court of Appeals finds support not only in the text of the statute but also in the basic policies underlying the statutory scheme, ineluding § 102(b). When Pfaff accepted the purchase order for his new sockets prior to April 8,1981, his invention was ready for patenting. The fact that the manufacturer was able to produce the socket using his detailed drawings and specifications demonstrates this fact. Furthermore, those sockets contained all the elements of the invention claimed in the ’377 patent. Therefore, Pfaff’s ’377 patent is invalid because the invention had been on sale for more than one year in this country before he filed his patent application. Accordingly, the judgment of the Court of Appeals is affirmed.

It is so ordered.

       "A person shall be entitled to a patent unless—
      “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or ...35 U. S. C. § 102.

       “A process is reduced to practice when it is successfully performed. A machine is reduced to practice when it is assembled, adjusted and used. A manufacture is reduced to practice when it is completely manufactured. A composition of matter is reduced to practice when it is completely composed.” Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U. S. 358, 383 (1928).

       At his deposition, respondent’s counsel engaged in the following colloquy with Pfaff:
      “Q. Now, at this time [late 1980 or early 1981] did we [sic] have any prototypes developed or anything of that nature, working embodiment?
      “A. No.
      “Q. It was in a drawing. Is that correct?
      “A. Strictly in a drawing. Went from the drawing to the hard tooling. That’s the way I do my business.
      “Q. ‘Boom-boom’?
      “A. You got it.
      “Q. You are satisfied, obviously, when you come up with some drawings that it is going to go — fit works’?
      “A. I know what I’m doing, yes, most of the time.” App. 96-97.

       Initial sales of the patented device were:
      1981. $ 350,000
      1982.$ 937,000
      1983.$2,800,000
      1984.$3,430,000
      App. to Pet. for Cert. 223a.

        Pfaff v. Wells Electronics, Inc., 9 USPQ 2d 1366 (ND Ind. 1988). The court found that the Wells device did not literally infringe on Pfaff’s ’377 patent based on the physical location of the sockets’ conductive pins. 6

       Initially the District Court entered summary judgment in favor of respondent, but the Court of Appeals reversed and remanded for trial because issues of fact were in dispute. See 5 F. 3d 514 (CA Fed. 1993).

       Title 85 U. S. C. § 103 provides: "A patent may not be obtained though the invention is not identically disclosed or described... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

       Title 85 U. S. C. §100, “Definitions,” states:
      “When used in this title unless the context otherwise indicates—
      “(a) The term ‘invention’ means invention or discovery....” 9

       Section 101, “Inventions patentable,” provides: ‘Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

       This Court has also held a patent invalid because the invention had previously been disclosed in a prior patent application, although that application did not claim the invention and the first invention apparently had not been reduced to practice. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U. S. 390, 401-402 (1926).

       The Federal Circuit has developed a multifactor, “totality of the circumstances” test to determine the trigger for the on-sale bar. See, e. g., Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F. 3d 1538, 1544 (1997) (stating that, in determining whether an invention is on sale for purposes of § 102(b), “ ‘all of the circumstances surrounding the sale or offer to sell, including the stage of development of the invention and the nature of the invention, must be considered and weighed against the policies underlying section 102(b)’”); see also UMC Electronics Co. v. United States, 816 F. 2d 647, 656 (1987) (stating the on-sale bar “does not lend itself to formulation into a set of precise requirements”). As the Federal Circuit itself has noted, this test “has been criticized as unnecessarily vague.” Seal-Flex, Inc. v. Athletic Track & Court Construction, 98 F. 3d 1318, 1323, n. 2 (1996).

       Several of this Court’s early decisions stating that an invention is not complete until it has been reduced to practice are best understood as indicating that the invention’s reduction to practice demonstrated that the concept was no longer in an experimental phase. See, e. g., Seymour v. Osborne, 11 Wall. 516, 552 (1871) (“Crude and imperfect experiments are not sufficient to confer a right to a patent; but in order to constitute an invention, the party must have proceeded so far as to have reduced his idea to practice, and embodied it in some distinct form”); Clark Thread

        Co. v. Willimantic Linen Co., 140 U. S. 481, 489 (1891) (describing how inventor continued to alter his thread winding machine until July 1858, when “he put it in visible form in the shape of a machine_It is evident that the invention was not completed until the construction of the machine”); Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U. S., at 382-383 (stating that an invention did not need to be subsequently commercialized to constitute prior art after the inventor had finished his experimentation. “It was the fact that it would work with great activity as an accelerator that was the discovery, and that was all, and the necessary reduction to use is shown by instances making clear that it did so work, and was a completed discovery”).

       See, e. g., Rooklidge & Jensen, Gommon Sense, Simplicity and Experimental Use Negation of the Public Use and On Sale Bars to Patentability, 29 John Marshall L. Rev. 1, 29 (1995) (stating that “whether a particular activity is experimental is often clear”).

         The Solicitor General has argued that the rule governing the on-sale bar should be phrased somewhat differently. In his opinion, “if the sale or offer in question embodies the invention for which a patent is later sought, a sale or offer to sell that is primarily for commercial purposes and that occurs more than one year before the application renders the invention unpatentable. Seal-Flex, Inc. v. Athletic Track and Court Constr., 98 F. 3d 1318, 1325 (Fed. Cir. 1996) (Bryson, J., concurring in part and concurring in the result).” Brief for United States as Amicus Curiae 10-11 (internal quotation marks omitted). It is true that evidence satisfying this test might be sufficient to prove that the invention was ready for patenting at the time of the sale if it is dear that no aspect of the invention was developed after the critical date. However, the possibility of additional development after the offer for sale in these circumstances counsels against adoption of the rule proposed by the Solidtor General.


source: Caselaw Access Project

author: Justice Scalia

license: Public Domain

text:
    WRIGHT v. UNIVERSAL MARITIME SERVICE CORP. et al.
    No. 97-889.
    Argued October 7,1998
    Decided November 16, 1998

      Ray P. McClain argued the cause for petitioner. With him on the briefs were Elaine R. Jones, Theodore M. Shaw, Norman J. Chachkin, and Charles Stephen Ralston.

      Deputy Solicitor General Underwood argued the cause for the United States et al. as amici curiae urging reversal. With her on the brief were Solicitor General Waxman, Acting Assistant Attorney General Hodgkiss, James A. Feld-man, C. Gregory Stewart, Philip B. Sklover, Lorraine C. Davis, and Robert J. Gregory.

      Charles A. Edwards argued the cause and filed a brief for respondents.

      Briefs of amici curiae urging reversal were filed for the Commonwealth of Massachusetts et al. by Scott Harshbarger, Attorney General of Massachusetts, Richard Wayne Cole and Catherine C. Ziehl, Assistant Attorneys General, Grant Woods, Attorney General of Arizona, Judy Drickey-Prohow, Assistant Attorney General, Darrell V. McGraw, Attorney General of West Virginia, Mary C. Buchmelter, Assistant Attorney General, and by the Attorneys General for their respective States as follows: Winston Bryant of Arkansas, Richard Blumenthal of Connecticut, Alan G. Lance of Idaho, Thomas J. Miller of Iowa, Frank J. Kelley of Michigan, Hubert H. Humphrey III of Minnesota, Dennis C. Vacco of New York, Hardy Myers of Oregon, William Sorrell of Vermont, and Mark L. Early of Virginia; for the American Civil Liberties Union et al. by Louis M. Bograd, David S. Schwartz, and Steven R. Shapiro; for the American Federation of Labor and Congress of Industrial Organizations et al. by Laurence Gold, Jonathan P. Hiatt, James B. Coppess, Marsha S. Berzon, Thomas PE Gleason, Herzl S. Eisenstadt, James R. Watson, and Armand Derfner; for the Lawyers’ Committee for Civil Rights under Law et al. by Paul PE Mollica, Thomas R. Meites, Barbara R. Arnwine, Thomas

        J. Henderson, Rickard T. Seymour, Teresa A Ferrante, Cathy Ventrell-Monsees, and Sally Dunaway; for the National Academy of Arbitrators by David E. Feller; and for the National Employment Lawyers Association et al. by Cliff PalefsJcy and Paula A Brantner.

      Briefs of amici curiae urging affirmance were filed for the Equal Employment Advisory Council et al. by Robert E. Williams, Ann Elizabeth Reesman, and Daniel V. Yager; for the National Association of Manufacturers by Clifford M. Sloan, Samuel D. Walker, Jan S. Amundson, and Quentin Riegel; and for the National Association of Waterfront Employers by Charles T. Carroll, Jr., and F. Edwin Froelieh.

      Briefs of amici curiae were filed for the Chamber of Commerce of the United States by Steven B. Berlin, Mark A de Bernardo, Garry G. Mathi-ason, Stephen A Bokat, Robin S. Conrad, and Sussan Mahallati Kysela; and for the Securities Industry Association by Michael Delikat, Gary Siniscalco, Lisa K McClelland, and Stuart J. Kaswell.

   Justice Scalia

delivered the opinion of the Court.

This case presents the question whether a general arbitration clause in a collective-bargaining agreement (CBA) requires an employee to use the arbitration procedure for an alleged violation of the Americans with Disabilities Act of 1990 (ADA), 104 Stat. 327,42 U. S. C. § 12101 et seq.

\ — 1

In 1970, petitioner Ceasar Wright began working as a longshoreman in Charleston, South Carolina. He was a member of Local 1422 of the International Longshoremen’s Association, AFL-CIO (Union), which uses a hiring hall to supply workers to several stevedore companies represented by the South Carolina Stevedores Association (SCSA). Clause 15(B) of the CBA between the Union and the SCSA provides in part as follows: “Matters under dispute which cannot be promptly settled between the Local and an individual Employer shall, no later than 48 hours after such discussion, be referred in writing covering the entire grievance to a Port Grievance Committee ....” App. 43a. If the Port Grievance Committee, which is evenly divided between representatives of labor and management, cannot reach an agreement within five days of receiving the complaint, then the dispute must be referred to a District Grievance Committee, which is also evenly divided between the two sides. The CBA provides that a majority decision of the District Grievance Committee “shall be final and binding.” Id., at 44a. If the District Grievance Committee cannot reach a majority decision within 72 hours after meeting, then the committee must employ a professional arbitrator.

Clause 15(F) of the CBA provides as follows:

“The Union agrees that this Agreement is intended to cover all matters affecting wages, hours, and other terms and conditions of employment and that during the term of this Agreement the Employers will not be required to negotiate on any further matters affecting these or other subjects not specifically set forth in this Agreement. Anything not contained in this Agreement shall not be construed as being part of this Agreement. All past port practices being observed may be reduced to writing in each port.” Id., at 45a-46a.

Finally, Clause 17 of the CBA states: “It is the intention and purpose of all parties hereto that no provision or part of this Agreement shall be violative of any Federal or State Law.” Id., at 47a.

Wright was also subject to the Longshore Seniority Plan, which contained its own grievance provision, reading as follows: “Any dispute concerning or arising out of the terms and/or conditions of this Agreement, or dispute involving the interpretation or application of this Agreement, or dispute arising out of any ride adopted for its implementation, shall be referred to the Seniority Board.” Id., at 48a. The Seniority Board is equally divided between labor and management representatives. If the board reaches agreement by majority vote, then that determination is final and binding. If the board cannot resolve the dispute, then the Union and the SCSA each choose a person, and this “Committee of two” makes a final determination.

On February 18, 1992, while Wright was working for respondent Stevens Shipping and Terminal Company (Stevens), he injured his right-heel and his back. He sought compensation from Stevens for permanent disability under the Longshore and Harbor Workers’ Compensation Act, 44 Stat. 1424, as amended, 33 U. S. C. § 901 et seq., and ultimately settled the claim for $250,000 and $10,000 in attorney's fees. Wright was also awarded Social Security disability benefits.

In January 1995, Wright returned to the Union hiring hall and asked to be referred for work. (At some point he obtained a written note from his doctor approving such activity.) Between January 2 and January 11, Wright worked for four stevedoring companies, none of which complained about his performance. When, however, the stevedoring companies realized that Wright had previously settled a claim for permanent disability, they informed the Union that they would not accept Wright for employment, because a person certified as permanently disabled (which they regarded Wright to be) is not qualified to perform longshore work under the CBA. The Union responded that the employers had misconstrued the CBA, suggested that the ADA entitled Wright to return to work if he could perform his duties, and asserted that refusing Wright employment would constitute a “lock-out” in violation of the CBA.

When Wright found out that the stevedoring companies would no longer accept him for employment, he contacted the Union to ask how he could get back to work. Wright claims that instead of suggesting the filing of a grievance, the Union told him to obtain counsel and file a claim under the ADA. Wright hired an attorney and eventually filed charges of discrimination with the Equal Employment Opportunity Commission (EEOC) and the South Carolina State Human Affairs Commission, alleging that the stevedoring companies and the SCSA had violated the ADA by refusing him work. In October 1995, Wright received a right-to-sue letter from the EEOC.

In January 1996, Wright filed a complaint against the SCSA and six individual stevedoring companies in the United States District Court for the District of South Carolina. Respondents’ answer asserted various affirmative defenses, including Wright’s failure to exhaust his remedies under the CBA and the Seniority Plan. After discovery, respondents moved for summary judgment and Wright moved for partial summary judgment with respect to some of respondents’ defenses. A Magistrate Judge recommended that the District Court dismiss the ease without prejudice because Wright had failed to pursue the grievance procedure provided by the CBA. The District Court adopted the report and recommendation and subsequently rejected Wright’s motion for reconsideration. The United States Court of Appeals for the Fourth Circuit affirmed, see No. 96-2850 (July 29, 1997), judgt. order reported at 121 F. 3d 702, relying upon its earlier decision in Austin v. Owens-Brockway Glass Container, Inc., 78 F. 3d 875, cert. denied, 519 U. S. 980 (1996), which in turn had relied upon our decision in Gilmer v. Interstate/Johnson Lane Corp., 500 U. S. 20 (1991). We granted certiorari, 522 U. S. 1146 (1998).

In this ease, the Fourth Circuit concluded that the general arbitration provision in the CBA governing Wright’s employment was sufficiently broad to encompass a statutory claim arising under the ADA, and that such a provision was enforceable. The latter conclusion brings into question two lines of our case law. The first is represented by Alexander v. Gardner-Denver Co., 415 U. S. 36 (1974), which held that an employee does not forfeit his right to a judicial forum for claimed discriminatory discharge in violation of Title VII of the Civil Rights Act of 1964, 78 Stat. 253, as amended, 42 U. S. C. § 2000e et seq., if “he first pursues his grievance to final arbitration under the nondiscrimination clause of a collective-bargaining agreement.” 415 U. S., at 49. In rejecting the argument that the doctrine of election of remedies barred the Title VII lawsuit, we reasoned that a grievance is designed to vindicate a “contractual right” under a CBA, while a lawsuit under Title VII asserts “independent statutory rights accorded by Congress.” Id., at 49-50. The statutory cause of action was not waived by the union’s agreement to the arbitration provision of the CBA, since “there can be no prospective waiver of an employee’s rights under Title VII.” Id., at 51. We have followed the holding of Gardner-Denver in deciding the effect of CBA arbitration upon employee claims under other statutes. See McDonald v. West Branch, 466 U. S. 284 (1984) (claim under Rev. Stat. § 1979, 42 U. S. C. § 1983); Barrentine v. Arkansas-Best Freight System, Inc., 450 U. S. 728 (1981) (claim under Fair Labor Standards Act of 1938, 29 U. S. C. §201 et seq.).

The second line of eases implicated here is represented by Gilmer v. Interstate/Johnson Lane Corp., supra, which held that a elaim brought under the Age Discrimination in Employment Act of 1967 (ADEA), 81 Stat. 602, as amended, 29 U. S. C. § 621 et seq., could be subject to compulsory arbitration pursuant to an arbitration provision in a securities registration form. Relying upon the federal policy favoring arbitration embodied in the Federal Arbitration Act (FAA), 9 U. S. C. § 1 et seq., we said that “statutory claims may be the subject of an arbitration agreement, enforceable pursuant to the FAA.” 500 U. S., at 26 (citing Rodriguez de Quijas v. Shearson/American Express, Inc., 490 U. S. 477 (1989); Shearson/American Express Inc. v. McMahon, 482 U. S. 220 (1987); Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U. S. 614 (1985)).

There is obviously some tension between these two lines of cases. Whereas Gardner-Denver stated that “an employee’s rights under Title VII are not susceptible of prospective waiver,” 415 U. S., at 51-52, Gilmer held that the right to a federal judicial forum for an ADEA claim could be waived. Petitioner and the United States as amicus would have us reconcile the lines of authority by maintaining that federal forum rights cannot be waived in union-negotiated CBAs even if they can be waived in individually executed contracts — a distinction that assuredly finds support in the text of Gilmer, see 500 U. S., at 26, 35. Respondents and their amici, on the other hand, contend that the real difference between Gardner-Denver and Gilmer is the radical change, over two decades, in the Court’s receptivity to arbitration, leading Gilmer to affirm that “questions of arbitrability must be addressed with a healthy regard for the federal policy favoring arbitration,” 500 U. S., at 26 (internal quotation marks and citation omitted); Gilmer, they argue, has sufficiently undermined Gardner-Denver that a union can waive employees’ rights to a judicial forum. Although, as will appear, we find Gardner-Denver and Gilmer relevant for various purposes to the ease before us, we find it unnecessary to resolve the question of the validity of a union-negotiated waiver, since it is apparent to us, on the facts and arguments presented here, that no such waiver has occurred.

H — 1 I — i

In asserting the existence of an agreement to arbitrate the ADA claim, respondents rely upon the presumption of arbitrability this Court has found in §301 of the Labor Management Relations Act, 1947 (LMRA), 61 Stat. 156, 29 U. S. C. § 185. See generally Steelworkers v. Enterprise Wheel & Car Corp., 363 U.S. 593 (1960); Steelworkers v. American Mfg. Co., 363 U. S. 564 (1960); Steelworkers v. Warrior & Gulf Nav. Co., 363 U. S. 574 (1960). In collective-bargaining agreements, we have said, “there is a presumption of arbitrability in the sense that ‘[a]n order to arbitrate the particular grievance should not be denied unless it may be said with positive assurance that the arbitration clause is not susceptible of an interpretation that covers the asserted dispute.’” AT&T Technologies, Inc. v. Communications Workers, 475 U. S. 643, 650 (1986) (quoting Warrior & Gulf, supra, at 582-583).

That presumption, however, does not extend beyond the reach of the principal rationale that justifies it, which is that arbitrators are in a better position than courts to interpret the terms of a CBA See AT&T Technologies, supra, at 650; Warrior & Gulf, supra, at 581-582. This rationale finds support in the very text of the LMRA, which announces that “[fjinal adjustment by a method agreed upon by the parties is declared to be the desirable method for settlement of grievance disputes arising over the application or interpretation of an existing collective-bargaining agreement.” 29 U. S. C. § 173(d) (emphasis added). The dispute in the present case, however, ultimately concerns not the application or interpretation of any CBA, but the meaning of a federal statute. The cause of action Wright asserts arises not out of contract, but out of the ADA, and is distinct from any right conferred by the collective-bargaining agreement. See Gilmer, supra, at 34; Barrentine, 450 U. S., at 737; Gardner-Denver, supra, at 49-50. To be sure, respondents argue that Wright is not qualified for his position as the CBA requires, but even if that were true he would still prevail if the refusal to hire violated the ADA.

Nor is the statutory (as opposed to contractual) focus of the claim altered by the fact that Clause 17 of the CBA recites it to be “the intention and purpose of all parties hereto that no provision or part of this Agreement shall be violative of any Federal or State Law.” App. 47a. As we discuss below in Part IV, this does not incorporate the ADA by reference. Even if it did so, however — thereby creating a contractual right that is coextensive with the federal statutory right — the ultimate question for the arbitrator would be not what the parties have agreed to, but what federal law requires; and that is not a question which should be presumed to be included within the arbitration requirement. Application of that principle is unaffected by the fact that the CBA in this case, unlike the one in Gardner-Denver, does not expressly limit the arbitrator to interpreting and applying the contract. The presumption only extends that far, whether or not the text of the agreement is similarly limited. It may well be that ordinary textual analysis of a CBA will show that matters which go beyond the interpretation and application of contract terms are subject to arbitration; but they will not be presumed to be so.

IV

Not only is petitioner’s statutory claim not subject to a presumption of arbitrability; we think any CBA requirement to arbitrate it must be particularly dear. In Metropolitan Edison Co. v. NLRB, 460 U. S. 693 (1983), we stated that a union could waive its officers’ statutory right under § 8(a)(3) of the National Labor Relations Act, 29 U. S. C. § 158(a)(3), to be free of antiunion discrimination, but we held that such a waiver must be clear and unmistakable. “[W]e will not infer from a general contractual provision that the parties intended to waive a statutorily protected right unless the undertaking is ‘explicitly stated.’ More succinctly, the waiver must be clear and unmistakable.” 460 U. S., at 708; see also Livadas v. Bradshaw, 512 U. S. 107, 125 (1994) (dictum); Lingle v. Norge Div. of Magic Chef, Inc., 486 U. S. 399, 409, n. 9 (1988) (dictum); cf. Mastro Plastics Corp. v. NLRB, 350 U. S. 270, 283 (1956).

We think the same standard applicable to a union-negotiated waiver of employees’ statutory right to a judicial forum for claims of employment discrimination. Although that is not a substantive right, see Gilmer, 500 U. S., at 26, and whether or not Gardner-Denver’s seemingly absolute prohibition of union waiver of employees’ federal forum rights survives Gilmer, Gardner-Denver at least stands for the proposition that the right to a federal judicial forum is of sufficient importance to be protected against less-than-explicit union waiver in a CBA. The CBA in this case does not meet that standard. Its arbitration clause is very general, providing for arbitration of “[mjatters under dispute,” App. 43a — which could be understood to mean matters in dispute under the contract. And the remainder of the contract contains no explicit incorporation of statutoiy antidis-crimination requirements. (Indeed, it does not even contain, as did the CBAs in Austin and Gardner-Denver, its own specific antidiscrimination provision.) The Fourth Circuit relied upon the fact that the equivalently broad arbitration clause in Gilmer — applying to “any dispute, claim or controversy” — was held to embrace federal statutory claims. But Gilmer involved an individual’s waiver of his own rights, rather than a union’s waiver of the rights of represented employees — and hence the “dear and unmistakable” standard was not applicable.

Respondents rely upon Clause 15(F) of the CBA, which states that “this Agreement is intended to cover all matters affecting wages, hours, and other terms and conditions of employment.” App. 45a-46a. But even if this could, in isolation, be considered a clear and unmistakable incorporation of employment-discrimination laws (which is doubtful), it is surely deprived of that effect by the provision, later in the same paragraph, that “[ajnything not contained in this Agreement shall not be construed as being part of this Agreement.” Id., at 46a. Respondents also rely upon Clause 17 of the CBA, which states that “[i]t is the intention and purpose of all parties hereto that no provision or part of this Agreement shall be violative of any Federal or State Law.” Id., at 47a. They argue that this requires the arbitrator to “apply legal definitions derived from the ADA” in determining whether Wright is “qualified” for employment within the meaning of the CBA. Brief for Respondents 39. Perhaps so, but that is not the same as making compliance with the ADA a contractual commitment that would be subject to the arbitration clause. This becomes crystal clear when one contrasts Clause 17 with the provision of the CBA which states that “[t]he requirements of the Occupations [sic] Safety and Health Administration shall be binding on both Parties.” App. 46a. (Under respondents’ interpretation of Clause 17, this OSHA provision would be superfluous.) Clause 17 seems to us nothing more than a recitation of the canon of construction which would in any event have been applied to the CBA — that an agreement should be interpreted in such fashion as to preserve, rather than destroy, its validity (ut res magis valeat quarn pereat).

Finally, we do not find a clear and unmistakable waiver in the Longshore Seniority Plan. Like the CBA itself, the plan contains no antidiscrimination provision; and it specifi-eally limits its grievance procedure to disputes related to the agreement.

* * *

We hold that the collective-bargaining agreement in this case does not contain a clear and unmistakable waiver of the covered employees’ rights to a judicial forum for federal claims of employment discrimination. We do not reach the question whether such a waiver would be enforceable. The judgment of the Fourth Circuit is vacated, and the case is remanded for further proceedings consistent with this opinion.

It is so ordered.

       We have also discerned a presumption of arbitrability under the FAA, 9 U. S. C. § 1 et seq. See Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U. S. 614, 626 (1985). Petitioner argued that the FAA does not apply to this ease, see Brief for Petitioner 43-44, and asserted that respondents “have not argued at any stage of this case that the F. A. A. applies,” id., at 43. Respondents did not dispute the latter assertion, nor did they argue the applicability of the FAA before us; rather, they contended that it makes no difference whether the FAA applies, since the FAA presumption and the LMRA presumption are the same, see Brief for Respondents 12; Tr. of Oral Arg. 42-43. Finally, the Fourth Circuit, while it cited an FAA case, Moses H. Cone Memorial Hospital v. Mercury Constr. Corp., 460 U. S. 1, 24-25 (1983), did not explicitly rely upon the FAA — presumably because it has held elsewhere that the FAA does not apply to CBAs, see Austin v. Owens-Brockway Glass Container, Inc., 78 F. 3d 875, 879 (CA4), cert. denied, 519 U. S. 980 (1996). In these circumstances, we decline to consider the applicability of the FAA to the present case.

       Respondents and some of their amici rely upon the provision in the ADA which states that “[w]here appropriate and to the extent authorized by law, the use of alternative means of dispute resolution, including . .. arbitration, is encouraged to resolve disputes arising under this chapter.” 42 U. S. C. § 12212. They rely upon it principally in connection with the question whether, under Gilmer v. Interstate/Johnson Lane Corp., 500 U.S. 20 (1991), a predispute agreement in a CBA to arbitrate employment-discrimination claims is enforceable — a question we do not reach. Our conclusion that a union waiver of employee rights to a federal judicial forum for employment-discrimination claims must be clear and unmistakable means that, absent a dear waiver, it is not “appropriate,” within the meaning of this provision of the ADA, to find an agreement to arbitrate. We take no position, however, on the effect of this provision in cases where a CBA dearly encompasses employment-discrimination claims, or in areas outside collective bargaining.