February 14, 2022 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (February 7-11): Don't Forget To File Your Patent Before Pressing That "Fax" Button

No better way to start Valentine’s Day week than to think about a different way for communicating. But as this week’s case of the week shows, what you say and how you say it can matter. Check out our usual weekly statistics below and the detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 7

Non-precedential opinions: 13

Rule 36: 5

Longest pending case from argument: GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., No. 18-1976 (353 days) (en banc order)

Shortest (non-Rule 36) pending case from argument: Feiss v. United States, No. 21-1986 (2 days)

Case of the week: Junker v. Medical Components, Inc., No. 21-1649

Panel: Judges Dyk, Reyna, and Stoll, with Judge Stoll writing the opinion

You should read this case if: you have a matter involving an on-sale bar due to a pre-critical date letter that may be a commercial offer for sale.

If you’re wondering whether the Federal Circuit is still dealing with cases involving antiquated technology, the answer is yes. Indeed, the Court had to transport themselves back to when people still used the good old fashioned fax machine for communicating.

Larry G. Junker owns a design patent covering an introducer sheath handle with “large, rounded Mickey-Mouse-shaped ears.” The sheath handle may be used for inserting a catheter into the vein of a patient. Mr. Junker sued MedComp for infringement.

But Mr. Junker’s suit ran into trouble with the Pre-AIA § 102(b) on-sale bar. That provision bars a patent to an invention that was “on sale in” the United States more than one year before the patent application was filed. (Post-AIA § 102 also includes an on-sale bar, although some of the relevant statutory language has changed.) The heart of the issue was whether a letter sent via fax was a commercial offer for sale such that the on-sale bar applied.

The letter was sent not by Mr. Junker but by a business partner that had developed a prototype of Mr. Junker’s invention. The partner sent a letter to a potential buyer with details about bulk pricing information, specifically, a price chart for variously sized sheath products. The letter provided numerous specific commercial terms, such as payment terms, shipment terms, and delivery conditions and then concluded with an invitation to discuss any further requirements.

The district court held that the letter was a preliminary negotiation, not a definite offer sufficient to trigger the on-sale bar. Although the district court acknowledged the letter’s commercial terms, it really focused on the word “quotation” (which appeared three times) and the invitation at the end of the letter. As a result, the district court granted Mr. Junker’s motion for summary judgment of no invalidity under the on-sale bar.

The Federal Circuit reversed. The Court noted that the letter was in direct response to a request for a quotation. Further, the letter was addressed to the potential buyer alone. Thus, the letter was a specific offer to take further action, not an unsolicited price quotation or invitation to negotiate. The Court also noted the commercial terms in the letter as being necessary terms typical for a commercial contract: specific delivery conditions, allocation of risk and responsibilities of the buyer and seller (for delivery, payment, and loss of the product), and payment terms. And the icing on the cake was that the letter specified multiple different purchase options (the price chart). Although the letter concluded with an invitation for further discussions, the complete and definite commercial terminology used in the letter meant that it was a commercial offer for sale. It did not help that later communications between the same parties used the exact same commercial terms, indicating that the terms in the disputed letter were definite. Oops! The Court thusconcluded that the letter contained multiple offers for sale and so triggered the on-sale bar.

In the end, this was not the “happiest [decision] on Earth” for these claims to a sheath handle with “large, rounded Mickey-Mouse-shaped ears.”