News & Analysis as of

On-Sale Bar

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

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

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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

McDermott Will & Emery

Patent by Secret Process: Perils of Pre-Patent Profiting

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission’s (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because products made using...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

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In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

WilmerHale

Federal Circuit Confirms “Secret Sales” Can Trigger AIA’s On-Sale Bar

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On August 12, 2024, the Federal Circuit published its decision in Celanese International Corp. et al. v. International Trade Commission. The Federal Circuit concluded that, under the America Invents Act (AIA), patent claims...more

WilmerHale

A Secret On Sale: When Trade Secrecy and Invention Disclosure Collide

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You have invented a process for manufacturing a high-potency artificial sweetener. You are now faced with a critical business decision: how do you protect your intellectual property? You could keep your process a closely...more

Seyfarth Shaw LLP

Celanese v. ITC – Exploring the Crossroads of Trade Secrets and Patent Rights Post AIA

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On March 4, the Federal Circuit, heard oral arguments for Celanese Int’l. v ITC, 22-1827 (Fed. Cir. 2024), a case that may reshape the dynamics between trade secrets and patent rights....more

Axinn, Veltrop & Harkrider LLP

Over-Sweetening the Pot? When Selling a Product Bars Patenting the Manufacturing Process Under the AIA

The America Invents Act ("AIA") bars a person from obtaining a patent when the “claimed invention” had been “on sale” more than one year before the filing date of the patent. 35 U.S.C. § 102(a)(1). Acesulfame potassium...more

McDonnell Boehnen Hulbert & Berghoff LLP

Throwing A Life Raft To Patentability When Facing The “On Sale” Bar

As I described in the first two parts of this series, there are a number of ways in which the “on sale” bar can cost the unwitting inventor dearly. Hence, lastly, I would like to highlight some of the exceptions that can be...more

McDonnell Boehnen Hulbert & Berghoff LLP

Am I sunk? Where are all the safe harbors against the “on sale” bar?

In part 1 of this series, I introduced the “on sale bar” and described how a commercial sale or offer for sale can negate patentability, according to the doctrine the Supreme Court established in Pfaff v. Wells Elecs., Inc....more

Haug Partners LLP

You Use It, You Lose (Protection Over) It: Federal Circuit Clarifies Public-Use Bar Requirements

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I. Minerva Surgical v. Hologic: Background - The United States Court of Appeals for the Federal Circuit issued a precedential opinion earlier this year in Minerva Surgical, Inc. v. Hologic, Inc. clarifying the “in public...more

Womble Bond Dickinson

When “Displaying” Is “Using” For Prior Public Use Under 35 U.S.C. 102(b)

Womble Bond Dickinson on

Last week, in a non-precedential opinion for an appeal from a Patent and Trial Appeals Board (PTAB) decision (In re WinGen), the Federal Circuit addressed prior public use under pre-AIA 35 U.S.C. § 102(b). The issue was...more

McAfee & Taft

For patent protection, "it's never too late" does not apply

McAfee & Taft on

A recurring decision facing many businesses is how to best protect the technology it creates. One can always try to keep technology “secret,” but that is often not possible, particularly with methods or devices that will be...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

Manatt, Phelps & Phillips, LLP

Response to Request for Quote Held Commercial Offer for Sale, and Invention Invalid

In Junker v. Medical Components, Inc., the Federal Circuit held that a catheter insertion design patent was invalid because the claimed design was offered for sale more than a year before the design patent application was...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

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (May 2-6): Experimenting With The On-Sale Bar

With another busy week of arguments last week, the Federal Circuit took a break from issuing precedential decisions. But it still pushed out several non-precedential decisions along with some quick affirmances without...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2022

Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., Appeal Nos. 2020-1640, -1641 (Fed. Cir. Apr. 29, 2022) - Our case of the week has a little bit for everyone, including lost profits, reasonable royalties,...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

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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

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