News & Analysis as of

On-Sale Bar Patent Infringement

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: On-Sale Bar Still Applies to Secret Use of a Patented Method Under AIA

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective...more

WilmerHale

Federal Circuit Patent Watch: Arguments Not Presented in PTAB Request for Rehearing Are Not Necessarily Forfeited on Appeal

WilmerHale on

Precedential and Key Federal Circuit Opinions - SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll) - Dyk, J. The Court affirmed the Board’s decision...more

Sunstein LLP

To Avoid the On-Sale Bar, Patent Applicant’s “Experimental Use” Should be Unmistakable

Sunstein LLP on

A recent Federal Circuit opinion casts fresh light on two aspects of patent strategy: the experimental use exception to the on-sale bar to patent validity; and the role of a non-infringement legal opinion in defeating an...more

Knobbe Martens

Medical Device Patentee Petitions Supreme Court Regarding On-Sale Bar and Price Quotes

Knobbe Martens on

A medical device patentee has asked the U.S. Supreme Court to save his design patent, related to an introducer sheath handle, from invalidity based on application of the “on-sale” bar, which prohibits patenting an invention...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022: Blending Butane Brings Contract Law to 35 U.S.C. § 102's On-Sale Bar and...

As post grant review allows for on sale bar assertions, and thus experimental use defenses, we wanted to highlight a recent case addressing these issues. Sunoco sued Venture and U.S. Oil Co. for infringement of U.S. Patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

AEON Law

Patent Poetry: Federal Circuit Clarifies “Experimental Use” Exception to On-Sale Bar

AEON Law on

The Federal Circuit has reversed a district court’s determination that the experimental-use doctrine insulated a subset of asserted patent claims from the on-sale bar. SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC....more

McDermott Will & Emery

Hit the Brakes: Experimental Use, Enhanced Damages Determinations Require Redo

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed and remanded a district court decision regarding experimental use under 35 U.S.C. § 102(b) and the application of enhanced damages based on an allegedly flawed...more

BakerHostetler

The Federal Circuit Provides Insight on Experimental Use and On-Sale Bar

BakerHostetler on

On April 29, 2022, the Court of Appeals for the Federal Circuit issued an opinion for Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., U.S. Oil Co., Inc. (2022 WL 1275697).This case touched on a number of...more

Knobbe Martens

Required Testing as Part of an Offer for Sale Does Not Preclude a Finding of a Commercial Sale for On-Sale Bar Defense

Knobbe Martens on

SUNOCO PARTNERS MARKETING v. U.S. VENTURE, INC. Before Prost, Reyna, and Stoll. Appeal from the United States District Court for the Northern District of Illinois. Summary: References to testing in an offer for sale...more

Knobbe Martens

Federal Circuit Reverses District Court’s Decision Based on On-Sale Bar (Junker v. Medical Components, Inc.)

Knobbe Martens on

On February 10, 2022, in Junker v. Medical Components, Inc., the U.S. Court of Appeals for the Federal Circuit reversed the Eastern District of Pennsylvania’s grant of summary judgment of no invalidity under the “on-sale bar”...more

Bradley Arant Boult Cummings LLP

The Sad Tale of an On-Sale Bar Created by a “Business Associate”

The Federal Circuit recently reversed a lower court’s summary judgment that a medical device design patent was not invalid under the on-sale bar. As a result, the patent owner (Junker) lost the $1.25M infringement damages...more

McDermott Will & Emery

Claimed Process Not Anticipated by Third-Party’s Prior Secret Use

McDermott Will & Emery on

Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or...more

McDonnell Boehnen Hulbert & Berghoff LLP

BASF Corp. v. SNF Holding Co. (Fed. Cir. 2020)

In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more

Akin Gump Strauss Hauer & Feld LLP

Withholding of Evidence Related to Offer for Sale, Filing False Declaration and Coercion by Patentee Support Finding of...

The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2020

PATENT CASE OF THE WEEK - GS CleanTech Corp. v. Adkins Energy LLC, Appeal No. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. Mar. 2, 2020) - In this week’s Case of the Week, the Federal Circuit affirmed a district court’s...more

Knobbe Martens

Attorneys and Clients Behaving Badly – Deliberately Withheld Offer for Sale Is Inequitable Conduct

Knobbe Martens on

GS CLEANTECH CORP. v. ADKINS ENERGY LLC - Before, Reyna, Wallach, and Hughes. Appeal from the District Court for the Northern District of Illinois. Summary: Withholding and obscuring evidence of a pre-critical date...more

Goodwin

Year in Review: Top Five Legal Developments of 2019 Impacting Biosimilars

Goodwin on

As we close out another calendar year, we look back at the top legal developments of 2019 that could influence the market for biologics and biosimilars. These five major court decisions will likely impact the legal strategy...more

McDermott Will & Emery

Who You Gonna Call? Inventors Survive On-Sale Heat

The US Court of Appeals for the Federal Circuit affirmed a district court finding that three patent claims were invalid under the on-sale bar but remanded two other patent claims for trial, explaining that the district court...more

Mintz - Intellectual Property Viewpoints

Performing a Service without Selling the Process Still Triggers the On-Sale Bar

Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property...more

Sunstein LLP

March 2019 IP Update - Secret Sales Trigger the On-Sale Bar under the Patent Statute, Says the Supreme Court

Sunstein LLP on

Before enactment of the America Invents Act (AIA) in 2011, it was understood that an inventor’s secret commercialization of an invention through sale or use can operate like prior art against that inventor’s subsequent patent...more

Shook, Hardy & Bacon L.L.P.

"Secret Sale" of Drug Counts as Prior Art in Patent Battle

On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more

McDermott Will & Emery

Secret Sales Still Qualify as Prior Art Under AIA

McDermott Will & Emery on

Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more

Ward and Smith, P.A.

On-Sale Bar: Less clever way of saying, Happy Hour? Maybe. Important for Patent Protection? Yes.

Ward and Smith, P.A. on

If the term "happy hour" in this article's title caught your attention, you may be disappointed by what comes next. This article is actually about limitations on patent protection, which I would argue is just as...more

White & Case LLP

Supreme Court Says America Invents Act Did Not Alter On-Sale Bar

White & Case LLP on

Squib of Holding and Key Implication: The United States Supreme Court, in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., held on January 22, 2019 that "a commercial sale to a third party who is required to keep...more

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