DC grant of no invalidity of design patent reversed due to pre-critical date offer for sale

Larry K. Junker v. Medical Components, Inc., Martech Medical Products, Inc.

Docket No. 2021-1649 (https://cafc.uscourts.gov/opinions-orders/21-1649.OPINION.2-10-2022_1906548.pdf)

DYK, REYNA, STOLL

February 10, 2021

Brief Summary:  DC decision finding no invalidity of design patent for invalidity due to pre-critical date offer for sale reversed.

Summary: Medcomp appealed the DC’s grant of Mr. Junker’s motion for summary judgment (SJ) of no invalidity of design patent D450,389 (D’839) under the on-sale bar (Pfaff, US 1998) and finding of willful infringement and damages of about $1.2 million under 35 USC section 289 (recovery of an infringer’s profits from the sale of infringing products).  D’839 is directed to a “Handle for Introducer Sheath”, claiming “[t]he ornamental design for a handle for introducer sheath, as shown and described” in Figure 1.  D’839 was filed on February 7, 2000, the critical date for analyzing the on-sale bar under [section] 102(b) being “February 7, 1999, one year before the filing date” (pre-AIA section 102 applies as the application was filed before March 16, 2013).  As explained in the FC panel opinion, Mr. Junker’s original design include “a handle with large, rounder Mickey-Mouse-shaped ears that made it easier for doctors to grasp the introducer sheath during catheter-insertion procedures” (“‘peelable’, ‘peel-away’, or ‘tearaway’ introducer sheaths”).  The FC panel opinion explains, Mr. Junker developed a business relationship with Mr. Eddings of Galt Medical and entered into a non-disclosure agreement in August 1998.  Mr. Eddings developed a new company Xentek to develop the Mr. Eddings’ product and “enlisted the help of an engineer, Richard Gillespie, to sketch out Mr. Junker’s proposed design” and “[i]n January 1999…Xentek…provided a prototype of the product that included all of the features of his design”.  On January 8, 1999, Xentek sent Boston Scientific a letter detailing pricing information for the products including a price chart, and then additional letters in January and February 1999.  During subsequent litigation with accused infringers, “[t]he crux of the parties disagreement was whether the January 8, 1999 letter from Xentek to Boston Scientific-which was sent before the critical date-was a commercial offer for sale of a product embodying the claimed design” and the DC “held that it was not as a matter of law” but only “a preliminary negotiation, not a definite offer” as it concluded “with an invitation to further discuss specific requirements.”  The FC panel held that “the letter is a commercial offer for sale of the claimed design” as it “was not an unsolicited price quotation or invitation to negotiate, but rather a specific offer to Boston Scientific to take further action” (Merck, FC 2016, quoting Allen Eng’g, FC 2002; Uniform Commercial Code, Restatement (Second) of Contracts; Helsinn, FC 2017).  The FC panel found the letter included, for example, “specific delivery conditions”, shipment and payment terms, and “multiple different purchase options”.  The FC panel also explained that “[w]hile the letter concludes with an invitation to further discuss Boston Scientific’s specific requirements in person, “expressing a desire to do business in the future does not negate the commercial character of the transaction then under discussion” (Cargill, FC 2007).  The FC panel acknowledged that use of “the word ‘quote’” supports the DC’s conclusion but “not controlling” as “the communication must be considered in [its] entirety”.  It therefore reversed the DC’s decision.

This entry was posted in Anticipation (35 USC 102), Design Patents, On-Sale Bar. Bookmark the permalink.

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