Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc.
726 F.3d 1370
| Fed. Cir. | 2013Background
- Hamilton Beach owns the '928 patent family directed to a portable slow cooker with lid-sealing clips; Sunbeam markets a competing Cook & Carry slow cooker.
- The '928 patent is a continuation of the '222 application, which traces to the '831 patent disclosing a portable slow cooker with lid-clips to seal the lid.
- The district court held the asserted claims invalid under 35 U.S.C. § 102(b) for on-sale bar due to a pre-critical-date commercial offer for sale and that the invention was ready for patenting.
- Hamilton Beach’s Stay or Go slow cooker (commercial embodiment) was sold/ordered prior to March 1, 2005; Sunbeam argued the pre-critical-date sale/offer anticipates the claims.
- The district court found no genuine dispute that the stay-or-go product was ready for patenting and that the purchase-order bid constituted an invalidating offer to sell, with the on-sale bar applying regardless of any supplier exception.
- On appeal, the Federal Circuit affirmed the on-sale finding, affirming invalidity of claims 1 and 3–7 under § 102(b).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Hamilton Beach’s pre-critical-date offer to sell trigger the on-sale bar? | Hamilton Beach argues no valid sale, relying on Linear Tech and experimental-use aspects. | Sunbeam contends the supplier’s response created a binding, definite offer for sale prior to the critical date. | Yes; pre-critical-date commercial offer anticipated the claims. |
| Was the invention ready for patenting before the critical date? | HB asserts no ready-for-patenting determination based on disputed prototype details. | Sunbeam contends detailed CAD drawings and working prototypes enabled practice of the invention before the date. | Yes; the invention was ready for patenting prior to the critical date. |
| Does the no-supplier-exception rule apply to this pre-critical-date offer? | HB emphasizes experimental-use context and lack of true commercial sale; no supplier exception should apply. | Sunbeam argues no-supplier-exception applies; the offer was commercial and directed to US customer. | Yes; no-supplier-exception does not bar the on-sale finding; the offer was commercial. |
| If on-sale is established, what is the correct status of the '928 patent claims? | HB contends the '928 claims benefit from earlier priority and are not invalid under 102(b). | Sunbeam argues the on-sale bar defeats the claims regardless of priority. | The claims are invalid under § 102(b). |
Key Cases Cited
- Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (Supreme Court 1998) (two-pronged on-sale analysis: commercial offer and ready for patenting)
- Grp. One Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001) (on-sale analysis binding contract via simple acceptance; enabling prong)
- Lacks Indus., Inc. v. McKechnie Vehicle Components, USA, Inc., 322 F.3d 1335 (Fed. Cir. 2003) (binding contract formation in Pfaff framework)
- Dana Corp. v. Am. Axle & Mfg., Inc., 279 F.3d 1372 (Fed. Cir. 2002) (commercial offer for sale and ready-for-patenting considerations)
- Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326 (Fed. Cir. 1998) (ready-for-patenting standards under Pfaff framework)
- Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001) (no-supplier-exception precedent in on-sale analysis)
- Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361 (Fed. Cir. 2008) (commercial relevance of on-sale and public use; concurring opinions cited)
- Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040 (Fed. Cir. 2001) (fact pattern distinguishing binding contract in Pfaff context)