Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Howard Shire and Stephanie Remy
May 31, 2022

Federal Circuit: Agreement Between Patent Owner and Third Party Was Not Insulated from The On-Sale Bar

In Sunoco Partners Mktg. & Terminals L.P. v. U.S. Venture, Inc., 32 F.4th 1161 (Fed. Cir. 2022), the United States Court of Appeals for the Federal Circuit reversed a finding from the District Court for the Northern District of Illinois and held that a subset of asserted patent claims was not insulated from the on-sale bar. The appellate court vacated the district court's infringement judgement and remanded the case to the district court for further proceedings.

Background

Sunoco Partners Mkt. & Terminals L.P. (Sunoco) owns U.S. Patent Nos. 7,032,629; 6,679302; 9,494,948; and 9,606,548 (collectively, the Asserted Patents), which cover a "system and method for blending butane with the gasoline at a point close to the end of the distribution process." Sunoco sued U.S. Venture, Inc. (Venture) for patent infringement. Venture filed counterclaims asserting that the Asserted Patents were not infringed, are invalid, and unenforceable. Specifically, Venture argued that Sunoco had attempted to sell the invention two days prior to the critical date of the invention and was therefore barred under the on-sale bar. The district court held a bench trial which ultimately resulted in an award of $2 million in damages to Sunoco. Venture appealed and challenged the district court's: 1) rejection of its on-sale bar defense, 2) determination that Venture infringed the Asserted Patents, 3) construction of two claim terms, and 4) decision to enhance damages.

Arguments

On appeal, Venture argued that claim 2 of the '629 patent and claims 2, 3, and 16 of the '302 patent were invalid because the invention was on sale prior to the critical date of the inventions. In order to succeed under an on-sale bar defense, a defendant must establish that the invention was both "1) 'the subject of a commercial offer for sale' and 2) 'ready for patenting'" prior to the critical date of the invention.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Overview of Regulatory Guidance Governing the Use of AI Systems In the Workplace Image

Businesses have long embraced the use of computer technology in the workplace as a means of improving efficiency and productivity of their operations. In recent years, businesses have incorporated artificial intelligence and other automated and algorithmic technologies into their computer systems. This article provides an overview of the federal regulatory guidance and the state and local rules in place so far and suggests ways in which employers may wish to address these developments with policies and practices to reduce legal risk.

Is Google Search Dead? How AI Is Reshaping Search and SEO Image

This two-part article dives into the massive shifts AI is bringing to Google Search and SEO and why traditional searches are no longer part of the solution for marketers. It’s not theoretical, it’s happening, and firms that adapt will come out ahead.

While Federal Legislation Flounders, State Privacy Laws for Children and Teens Gain Momentum Image

For decades, the Children’s Online Privacy Protection Act has been the only law to expressly address privacy for minors’ information other than student data. In the absence of more robust federal requirements, states are stepping in to regulate not only the processing of all minors’ data, but also online platforms used by teens and children.

Revolutionizing Workplace Design: A Perspective from Gray Reed Image

In an era where the workplace is constantly evolving, law firms face unique challenges and opportunities in facilities management, real estate, and design. Across the industry, firms are reevaluating their office spaces to adapt to hybrid work models, prioritize collaboration, and enhance employee experience. Trends such as flexible seating, technology-driven planning, and the creation of multifunctional spaces are shaping the future of law firm offices.

From DeepSeek to Distillation: Protecting IP In An AI World Image

Protection against unauthorized model distillation is an emerging issue within the longstanding theme of safeguarding intellectual property. This article examines the legal protections available under the current legal framework and explore why patents may serve as a crucial safeguard against unauthorized distillation.