MEDICINES COMPANY v. HOSPIRA, INC. (Fed. Cir. 2016) (P, en banc) – Manufacturing services by a supplier does not trigger an on sale bar under 35 U.S.C. § 102(b)

by Steve Driskill | Jul 11, 2016 | [sub] offer for sale, Prior Art

The mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention. Here, for example, no on sale bar was found to be triggered by the...

MERCK & CIE v. WATSON LABORATORIES INC. (Fed. Cir. 2016) (P) – It is not necessary that an actual sale be consummated to trigger the on-sale bar under 35 U.S.C. § 102(b)

by Steve Driskill | May 13, 2016 | [sub] offer for sale, Prior Art

While an offer for sale must qualify as a commercial offer under the law of contracts to trigger the on-sale bar under 35 U.S.C. § 102(b), it is not necessary that an actual sale ever be consummated. Here, for example, a fax detailing price and delivery terms,...

THE MEDICINES COMPANY v. HOSPIRA, INC. (Fed. Cir. 2015) (P) – Products prepared by a supplier for commercial exploitation by the patentee trigger the on-sale bar

by Steve Driskill | Jul 2, 2015 | [sub] offer for sale, Prior Art

Products embodying the invention and prepared by a supplier for commercial exploitation by the patentee trigger the on-sale bar. Here, for example, a batch of pharmaceuticals marked by the supplier with commercial product codes and customer lot numbers and sent to the...

SOUTHERN SNOW MANUFACTURING v. SNOWIZARD HOLDINGS (Fed. Cir. 2014) (NP) – Unassembled components still trigger on-sale bar when offered for sale

by Steve Driskill | Jun 30, 2014 | [sub] offer for sale, Prior Art

An offer for sale of the necessary components of the claimed invention triggers an on-sale bar even if the components require some assembly in order for the claimed invention to be put into operation.  “The law only requires that the invention be ‘ready for...

HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS (Fed. Cir. 2013) (P) – Supplier contracts as an on-sale bar

by Steve Driskill | Aug 14, 2013 | [sub] offer for sale, Prior Art

There is no “supplier exception” to the on-sale bar. It is of no consequence that a “commercial offer for sale” is made by the patentee’s own supplier or that it was made to the patentee itself. A patent application or at least provisional application should be filed...

SUPERIOR INDUSTRIES, LLC. v. THOR GLOBAL ENTERPRISES LTD. (Fed. Cir. 2012) (P) – Claim preclusion based on trademark action

by Steve Driskill | Nov 27, 2012 | [sub] offer for sale, Prior Art

While the issue of claim preclusion is not particularly relevant for patent preparation or prosecution, it is important to note the distinction the court makes here between mere “advertising” and a true “offer for sale” sufficient to give rise to liability for patent...