904 F. Supp. 2d 622
S.D. Tex.2012Background
- Tesco owns the '443 and '324 CDS with link tilt patents; the patents cover a casing drilling system on a drilling rig.
- A jury trial addressed validity of certain claims, with mixed verdicts on validity.
- Post-trial, Frank’s seeks summary judgment invalidity under the on-sale bar; NOV and OES seek related invalidity summary judgments.
- Court analyzes on-sale bar under Pfaff's two-prong test: commercial offer for sale and readiness for patenting.
- Court finds genuine issues of material fact exist on both prongs and denies the post-trial motions.
- Court notes ongoing disposition of remaining post-trial motions and clarifies the standard for on-sale bar analysis historically from Federal Circuit precedent.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Conoco Contract constitutes an on-sale offer for sale of the CDS with link tilt. | Tesco argues the Conoco Contract did not require the patented invention and did not constitute an offer for sale of the CDS with link tilt. | Defendants contend the Conoco Contract was an objective manifestion to provide the CDS with link tilt under the contract. | Genuine issues of material fact preclude summary judgment on the on-sale issue. |
| Whether the CDS with link tilt was ready for patenting before the critical date. | Tesco contends the CDS with link tilt was not patent-ready prior to the critical date. | Defendants contend it was ready, based on pre-critical-date materials and testing. | Genuine issues of material fact preclude summary judgment on patent readiness. |
Key Cases Cited
- Ferag AG v. Quipp, Inc., 45 F.3d 1562 (Fed.Cir.1995) (on-sale bar where offer and intent to provide invention met contract terms)
- Robotic Vision Systems Inc. v. View Engineering, Inc. (Robotic II), 112 F.3d 1163 (Fed.Cir.1997) (on-sale bar with development before critical date; completion may validate an inchoate bar)
- Sparton Corp. v. United States, 399 F.3d 1321 (Fed.Cir.2005) (conception timing and pre-conceived invention affect on-sale analysis)
- August Technology Corp. v. Camtek, Ltd., 655 F.3d 1278 (Fed.Cir.2011) (post-conception, pre-critical-date theory; how on-sale bar can arise)
- Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (Sup. Ct.1998) (two-prong ready-for-patenting test for on-sale bar)
- Envirotech Corp. v. Westech Eng’g Inc., 904 F.2d 1571 (Fed.Cir.1990) (objective manifestation standard in on-sale inquiries)
- Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2234 (S. Ct.2011) (clear and convincing evidence standard for patent validity)