25 F.4th 1027
Fed. Cir.2022Background
- Junker invented an ornamental design for a peel-away introducer-sheath handle (D'839) and filed the design application on Feb 7, 2000 (critical date: Feb 7, 1999).
- Junker worked with James Eddings/Xentek; by January 1999 Xentek had produced a prototype embodying Junker’s claimed design.
- On January 8, 1999 Xentek sent Boston Scientific a letter responding to a request for quotation that listed product sizes, tiered bulk prices, payment terms (net 30), delivery terms (bulk, non-sterile, FOB Athens, Texas), and invited further discussion.
- Junker sued MedComp in 2013 for infringement; the district court held the Jan 8 letter was a quotation (not an offer) and granted summary judgment of no invalidity under the on-sale bar, then found infringement and awarded disgorged profits.
- On appeal the Federal Circuit held the Jan 8 letter was a commercial offer for sale; because the parties agreed the design was ready for patenting, the court reversed the district court’s summary judgment and declared the sole claim of D'839 invalid under 35 U.S.C. § 102(b).
Issues
| Issue | Plaintiff's Argument (Junker) | Defendant's Argument (MedComp) | Held |
|---|---|---|---|
| Whether the Jan 8, 1999 letter was a commercial offer for sale under § 102(b) | The letter was a price "quotation" inviting further negotiation, not a binding offer | The letter contained definite commercial terms (sizes, tiered prices, FOB, net 30) addressed to Boston Scientific and thus was an offer that could be accepted | The letter was a commercial offer for sale; the specificity and completeness of terms outweighed repeated use of "quotation" |
| Consequence if letter is an offer | No on-sale bar because no binding offer existed | If letter is an offer and invention was ready, the on-sale bar invalidates the claim | Because invention readiness was undisputed, the claim is invalid under § 102(b); district court judgment reversed |
Key Cases Cited
- Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (U.S. 1998) (on-sale bar requires commercial offer for sale and readiness for patenting)
- Merck & Cie v. Watson Labs., Inc., 822 F.3d 1347 (Fed. Cir. 2016) (response to buyer's request with price, delivery, and payment terms can be a commercial offer)
- Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007) (letter specifying amount, unit price, and FOB is strong evidence of a sale/offer)
- The Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (on-sale-bar legal standard and reliance on commercial-contract principles)
- Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001) (an offer that can be accepted to form a binding contract qualifies under § 102(b))