Federal Circuit Confirms Secret Process Can Create On-Sale Bar

device sketch for patent

The Federal Circuit reversed the District Court for the District of Pennsylvania’s summary judgement that a medical device design patent wasn’t invalid under the on-sale bar rule.

Junker v. Medical Components, Inc. involved a design patent for “[t]he ornamental design for a handle for introducer sheath.”

The sheath was a component of catheter kits used for inserting a catheter into a patient’s vein.

Larry G. Junker, the named inventor on the patent, sued Medical Components, Inc. and Martech Medical Products, Inc. (collectively, “MedComp”) for infringement of the patent.

In 1998, Junker entered into a business relationship with James Eddings, the founder of a medical device company called Galt Medical.

In January 1999, Eddings’ company, Xentek, developed and provided to Junker a prototype of the product that included all of the features of his design, including a handle with “Mickey Mouse” ears.

Also in January of 1999, Junker, via Xentek, began meeting with Boston Scientific Corporation regarding a peelable introducer sheath product.

A January 8, 1999 letter from Xentek to Boston Scientific included a price chart for several products.

On February 7, 2000, Junker filed the application that led to the patent. Thus, as the court noted, “Thus, the critical date for analyzing the on-sale bar under § 102(b)1 is February 7, 1999, one year before the filing date.”

In 2013, Junker sued MedComp, accusing four of its products of infringing the design patent.

MedComp argued, among other things, that the patent was invalid due to the on-sale bar.

As the court noted,

A patent claim is invalid under § 102(b) if “the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.” Section 102(b)’s on-sale bar is triggered if, before the critical date, the claimed invention was both (1) the subject of a commercial offer for sale and (2) ready for patenting.

The court stated that

The material facts here are not in dispute. The parties agree that the January 8, 1999 letter speaks for itself. They also agree that the products described in the letter embody the claimed design. And they agree that the claimed design was ready for patenting. The question before us is therefore a simple one: Whether the January 8, 1999 letter is a commercial offer for sale of the claimed design, or merely a quotation signaling the parties were engaged in preliminary negotiations.

The court concluded that the letter was a commercial offer for sale and thus that the on-sale bar applied:

As stated on the face of the letter, Xentek was directly responding to a “request for quotation” from Boston Scientific, and the letter was addressed to Boston Scientific alone. … This signals that the letter was not an unsolicited price quotation or invitation to negotiate, but rather a specific offer to Boston Scientific to take further action.

The takeaway here is that Junker might have avoided losing his patent rights if he’d been more careful about what his supplier was communicating to potential buyers, and/or if he’d filed his patent just a few weeks earlier.

Categories: Patents