5 Key Takeaways | Making Sense of §102 Public Use and On Sale Bars to Patentability
Monthly Minute | Commercialization of an Invention
In Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Appeal No. 25-1228, The Federal Circuit found that claims reciting a dosing regimen with unequal loading doses were not obvious and that a presumption of...more
In Jiaxing Super Lighting Elec. Appliance, Co. v. CH Lighting Tech. Co., Ltd, the Court of Appeals for the Federal Circuit reviewed the judgment in a patent infringement case involving three patents owned by Jiaxing Super...more
DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024) In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court,...more
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
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
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
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
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
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
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
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
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
On February 10, 2022, in Junker v. Medical Components, Inc., the U.S. Court of Appeals for the Federal Circuit reversed the Eastern District of Pennsylvania’s grant of summary judgment of no invalidity under the “on-sale bar”...more
The Federal Circuit recently reversed a lower court’s summary judgment that a medical device design patent was not invalid under the on-sale bar. As a result, the patent owner (Junker) lost the $1.25M infringement damages...more
Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or...more
In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more
PATENT CASE OF THE WEEK - GS CleanTech Corp. v. Adkins Energy LLC, Appeal No. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. Mar. 2, 2020) - In this week’s Case of the Week, the Federal Circuit affirmed a district court’s...more
GS CLEANTECH CORP. v. ADKINS ENERGY LLC - Before, Reyna, Wallach, and Hughes. Appeal from the District Court for the Northern District of Illinois. Summary: Withholding and obscuring evidence of a pre-critical date...more
As we close out another calendar year, we look back at the top legal developments of 2019 that could influence the market for biologics and biosimilars. These five major court decisions will likely impact the legal strategy...more
The US Court of Appeals for the Federal Circuit affirmed a district court finding that three patent claims were invalid under the on-sale bar but remanded two other patent claims for trial, explaining that the district court...more
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property...more
Before enactment of the America Invents Act (AIA) in 2011, it was understood that an inventor’s secret commercialization of an invention through sale or use can operate like prior art against that inventor’s subsequent patent...more
On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more
Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more