Federal Circuit Invalidates A Design Patent Under The On-Sale Bar

Published date22 February 2022
Subject MatterIntellectual Property, Patent
Law FirmPanitch Schwarze Belisario & Nadel
AuthorMr Ronald J. Ventola II

On February 10, 2022, the Federal Circuit in Junker v. Medical Components, Inc. reversed the United States District Court for the Eastern District of Pennsylvania's judgment awarding over $1 million in damages for infringement of a design patent. Based on this Letter providing a quotation with a price/quantity grid for a product "in the final stages of development[,]" the Federal Circuit held thatconstituted a commercial offer for sale of the claimed design, and that the offer for sale rendered the design patent invalid. For inventors, the case stands as an example of the risks of failing to file for patent protection in a timely fashion after communicating about a product'even if the author of the communication believes that the communication is not a formal offer for sale, or that the product is incomplete.

Under current statutory law, both utility patents and design patents are unavailable'and invalid if granted'if the claimed invention was "on sale . . . before the effective filing date of the claimed invention." 35 U.S.C. ' 102(a)(1). For patent applications in which all claims were effectively filed before March 16, 2013, a similar rule bars a patent where the claimed invention was "on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. ' 102(b) (pre-America Invents Act). Despite some changes to the surrounding statutory language, the U.S. Supreme Court held in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628 (2019), that the standard for whether an invention is "on sale" was not altered by the revision of Section 102. As a result, the standard for determining whether an invention was "on sale" before the statutory bar date continues to be the standard announced by the Supreme Court in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998): whether the invention (a) is the subject of a commercial offer for sale, and (b) is ready for patenting.

The Federal Circuit and the District Court disagreed about whether the Letter was a commercial offer for sale. Individual inventor Larry Junker ("Junker") had defeated Medical Components, Inc.'s "on sale" bar defense on summary judgment before the District Court, which held that the Letter was not a commercial offer for sale. The Letter specifically stated, "[t]hank you for the opportunity to provide this quotation for the MediTech Peelable Sheath Set[]" and "[t]he device we are proposing is in the final stages of...

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