{"id":2763,"date":"2020-04-08T16:11:39","date_gmt":"2020-04-08T21:11:39","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2763"},"modified":"2020-04-12T21:06:55","modified_gmt":"2020-04-13T02:06:55","slug":"licensing-of-process-and-sale-of-the-business-using-process-did-not-put-invention-on-sale","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2763","title":{"rendered":"Licensing of Process, and Sale of the Business using Process, did not put Invention on Sale"},"content":{"rendered":"\n

In BASF Corp. v. SNF Holding Co., [2019-1243]<\/a> (April 8, 2020), the Federal Circuit reversed summary judgment of invalidity of claims U.S. Patent 5,633,329, finding that the asserted prior art did not create an on-sale bar, an public use bar, or prior knowledge or use.<\/p>\n\n\n\n

The Federal Circuit held that the asserted prior art Sanwet\u00ae Process does not create an on-sale bar to the \u2019329 patent under \u00a7 102(b), and further that the district court misinterpreted \u00a7 102(a) and the public-use bar of \u00a7 102(b), and that under the proper legal standard, genuine issues of material fact preclude the entry of summary judgment on those issues.<\/p>\n\n\n\n

\u00a7102(a) Prior Knowledge or Use
BASF first argued that the district court misinterpreted the phrase \u201cknown or used\u201d in \u00a7 102(a) and erroneously disregarded the confidentiality of Celanese\u2019s knowledge and use. In BASF\u2019s view, knowledge or use that is not publicly accessible does not qualify as prior art under \u00a7 102(a). The Federal Circuit agreed, noting that it has This court has uniformly interpreted the \u201cknown or used\u201d prong of \u00a7 102(a) to mean \u201cknowledge or use which is accessible to the public.\u201d The Federal Circuit concluded that the record reveals genuine issues of material fact as to whether the asserted Sanwet\u00ae Process was \u201cknown or used\u201d within the meaning of \u00a7 102(a), as set forth above.5 We therefore reverse the district court\u2019s summary judgment of invalidity and remand for a determination of SNF\u2019s \u00a7 102(a) defense at trial.<\/p>\n\n\n\n

\u00a7 102(b) Public Use
BASF also argued that the district court\u2019s summary judgment on public use was in error, conntending that the district court misinterpreted the public-use bar of \u00a7 102(b) to apply to a third party\u2019s secret commercial use. The Federal Circuit again agreed with BASF, noting that in Shimadzu, the Supreme Court explained that the public-use bar applies to uses of the invention \u201cnot purposely hidden\u201d and held that the use of a process in the ordinary course of business\u2014where the process was \u201cwell known to the employees\u201d and no \u201cefforts were made to conceal\u201d it from anyone else\u2014is a public use. The Federal Circuit noted that it has applied Shimadzu in its public-use cases. The Federal Circuit concluded that the district court erred in finding, on summary judgment, that the claimed process was publicly accessible. Neither party disputes that members of the public were given access to the Portsmouth plant on numerous occasions, where they could view the shape of the conical taper, and that no evidence suggests that any of these guests was a skilled artisan. The parties dispute whether the remaining elements of the Sanwet\u00ae Process were known, and to the extent they were not, whether they were concealed from the public on these tours, in newspaper articles, and in the commemoration video.<\/p>\n\n\n\n

The Federal Circuit rejected as “simply wrong” SNF\u2019s second contention\u2014that a third party\u2019s commercial exploitation of a secret process creates a per se public-use bar to another inventor.<\/p>\n\n\n\n

\u00a7102(b) On Sale
BASF argued that the agreement between Sanyo and Celanese to license the Sanwet\u00ae Process was not a sale under In re Kollar. The Federal Circuit agreed that the district court\u2019s judgment must be reversed. Neither the Sanyo-Celanese license agreement nor the 1987 Hoechst acquisition of Celanese is a sale of the invention within the meaning of \u00a7 102(b). The Federal Circuit said the invention itself must be sold or offered for sale, and the mere existence of a \u201ccommercial benefit . . . is not enough to trigger the on-sale bar\u201d on its own. To determine whether such a commercial sale or offer for sale has occurred, we look to how those terms are defined in the Uni-form Commercial Code. The Federal Circuit recognized that a process, however, is a different kind of invention; it consists of acts, rather than a tangible item, as is contemplated by the U.C.C.\u2019s definition of sale. Yet, in cer-tain circumstances, a process may be sold in a manner which triggers the on-sale bar. For example, performing the process itself for consideration is sufficient. So is a patentee\u2019s sale of a product made by his later-patented process.<\/p>\n\n\n\n

Because the district court misinterpreted \u00a7 102(a) prior knowledge and use, as well as the public-use bar of \u00a7 102(b), the Federal Circuit reversed its summary judgment and remand for trial on those defenses.<\/p>\n","protected":false},"excerpt":{"rendered":"

In BASF Corp. v. SNF Holding Co., [2019-1243] (April 8, 2020), the Federal Circuit reversed summary judgment of invalidity of claims U.S. Patent 5,633,329, finding that the asserted prior art did not create an on-sale bar, an public use bar, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[42],"tags":[],"class_list":["post-2763","post","type-post","status-publish","format-standard","hentry","category-anticipation"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2763","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2763"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2763\/revisions"}],"predecessor-version":[{"id":2764,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2763\/revisions\/2764"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2763"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2763"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2763"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}