Federal Circuit Overturns District Court Ruling Based on Sale Ban (Junker v. Medical Components, Inc.) | Knobbe Martens

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On February 10, 2022, at Junker vs. Medical Components, Inc.., the United States Court of Appeals for the Federal Circuit reversed the Eastern District of Pennsylvania’s grant of summary judgment of non-invalidity under 35 U.S.C. (b) (pre-AIA). Mr. Junker’s lawsuit alleged that Medical Components, Inc. and Martech Medical Products, Inc. (collectively, “MedComp”) infringed the claimed design of U.S. Design Patent No. D450,839 (the “D’839 Patent”) ), titled “Handle for introducer sheath.

Under 35 USC § 102(b) (pre-AIA), a patent claim is invalid if “the invention was . . . for sale in this country, more than one year before the date of the patent application The section 102(b) sales ban is triggered if, more than one year before the filing date of the U.S. patent application (i.e. before the “critical date”), the claimed invention was both (1) commercially offered for sale and (2) ready for patenting. Mr. Junker filed the application which led to patent D ‘839 on February 7, 2000; as such, the critical date for analyzing the applicability of the sales ban is February 7, 1999. The parties have not disputed that the claimed design is ready for patenting , but disagreed on whether a January 8, 1999 letter was a commercial offer for sale of the claimed design or simply a quote from the preliminary negotiations. are parties.

Applying traditional contract law principles, the Federal Circuit found the January 8, 1999 letter to be a commercial offer to sell. First, the Federal Circuit noted that the letter responded directly to a “request for quotation.” In addition, the letter also contained a number of necessary terms typical of a commercial contract such as “bulk shipment, non-sterile”, “FOB Athens, Texas” and a term of payment “on a net basis of 30 days”. . The Court further noted that the letter specified several different purchase options for the patented products. Accordingly, the Court determined, based on the “general language of the letter”, that the specificity and completeness of the commercial terms outweighed three references to the “quotation” and the mention of possible future discussions. The Federal Circuit therefore found that the letter triggered the restraining order and invalidated the D’839 patent, and therefore set aside the district court’s summary judgment of non-invalidity.

The Federal Circuit decision is available here.

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