Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
IP News
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
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- 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
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.