On-Sale Bar Dooms Design Patent

Details of price “quote" rise to level of “offer for sale”

Larry Junker envisioned a new design for a medical catheter that made it easier for doctors to use. He worked with a medical device company to manufacture his improved catheter. He filed for a design patent on his new design, and it was granted. Then, another company began to willfully infringe his design patent. So, he sued them and won a judgement for over $1 million. But, the Federal Circuit has now reversed that judgment because of activities between his work with the manufacturer and the filing of his patent.

Before his patent was filed, his manufacturer reached out to Boston Scientific about the new catheter, and Boston Scientific requested a quote. The manufacturer sent Boston Scientific a letter detailing bulk pricing information for variously-sized catheters, which stated “Thank you for the opportunity to provide this quotation for the Medi-Tech Peelable Sheath Set,” included a price chart, and specified that the “prices are for shipment in bulk, non-sterile, FOB [free on board] Athens, Texas on a net 30-day basis.” More than a year after the letter was sent, Mr. Junker filed for the design patent on his improved catheter.

U.S. patent law bars inventors from patent protection if therr is commercial benefit from an invention more than one year before filing for a patent, in a doctrine known as the “on-sale bar.” 35 U.S.C. § 102(b) (Pre-AIA). Commercial activities include sales and offers for sale. A manufacturer’s activities, or any third-party, can trigger the on-sale bar.

In this case, the Federal Circuit felt the manufacturer’s communication to Boston Scientific was an offer for sale. It felt that if Boston Scientific had accepted the pricing and terms in the “quote,” the manufacturer would have been contractually obligated to fill the order, noting that “While the precise label used for a given communication [“offer” or “quote”] is relevant, it is not controlling. Rather, the terms of the communication must be considered in their entirety to determine whether an offer was intended, or if it was merely an invitation for an offer or further negotiations”

This case reinforces the need to look out for communications with third-parties prior to filing for patent protection on an invention, whether those communications are from the inventor or from those who learned of the invention from the inventor.