Federal Circuit Reverses District Court’s Decision Based on On-Sale Bar (Junker v. Medical Components, Inc.)

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” of 35 U.S.C. § 102(b) (pre-AIA).  Mr. Junker’s lawsuit alleged that Medical Components, Inc. and Martech Medical Products, Inc. (collectively, “MedComp”) infringed the claimed design of U.S. Design Patent No. D450,839 (the “D’839 patent”), entitled “Handle for Introducer Sheath.”

Under 35 U.S.C. § 102(b) (pre-AIA), a patent claim is invalid 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, more than one year before the United States patent application filing date (i.e., before the “critical date”), the claimed invention was both (1) the subject of a commercial offer for sale and (2) ready for patenting.  Mr. Junker filed the application that led to the D’839 patent on February 7, 2000; as such, the critical date for analyzing the applicability of the on-sale bar is February 7, 1999.  The parties did not dispute that the claimed design was ready for patenting, but disagreed whether a January 8, 1999 letter was a commercial offer for sale of the claimed design or merely a quotation of the parties’ preliminary negotiations.

Applying traditional contract law principles, the Federal Circuit held that the January 8, 1999 letter was a commercial offer for sale.  First, the Federal Circuit noted that the letter was directly responding to a “request for quotation.”  In addition, the letter also contained a number of necessary terms typical for a commercial contract such as “shipment in bulk, non-sterile,” “FOB Athens, Texas,” and a “net 30-day basis” payment term.  The Court further highlighted that the letter specified multiple different purchase options for the patented products.  Accordingly, the Court determined based on the “overall language of the letter” that the specificity and completeness of the commercial terms therein outweighed three references to “quotation” and mention of possible future discussions.  The Federal Circuit thus found that the letter triggered the on-sale bar and invalidated the D’839 patent, and therefore reversed the district court’s summary judgment of no invalidity.

The Federal Circuit’s decision is available here.

Written by: Nima Zargari, Ph.D.