Brief Fact Summary. Geneva (Defendant) wanted to market a generic form of Hytrin.Â At that time, Hytrin was being sold by Abbott (Plaintiff), and Plaintiff moved to prevent Defendant from selling the generic form of Hytrin.Â Defendant claimed that Plaintiff’s patent for Hytrin was not valid based on the on-sale bar doctrine.
Synopsis of Rule of Law. If an invention is both the subject of a commercial sale or offer for sale and is ready for patenting before one year prior to the date of application for patent, the on-sale bar doctrine applies.
Whether or not an invention was on sale or in public use within the meaning of section 102(b) is a question of law that this court reviews de novo; however, factual findings underlying the trial court's conclusion are subject to the clearly erroneous standard of review.View Full Point of Law
Issue. Is Claim 4 of Plaintiff’s patent invalid under the on-sale provision?
Held. (Lourie, J.)Â Yes.Â Claim 4 of Plaintiff’s patent is invalid under the on-sale provision.Â If an invention was on sale in the United States more than one year prior to the date of the application for the patent in the United States, the patent is invalid.Â Prior to October 18, 1993, the invention must be both the subject of a commercial sale or offer for sale and be ready for patenting.Â By proof of reduction to practice, the invention may be shown to be ready for patenting before October 18, 1993.Â There is no dispute that Form IV was the subject matter of at least three commercial sales in the United States prior to October 18, 1993.Â The invention was also ready to be patented because it had been reduced to practice by at least two foreign manufacturers.Â It is not required to show proof of conception of the invention.Â Because there was no question that the claimed material was useful when it was sold, it means the invention was reduced to practice.Â Because the material in this case was sold, it was useful and appreciated.Â Though the parties to the sales transactions did not know that Form IV was the material they were dealing with at the time of the sales, it is irrelevant to the question of whether it was on sale before October 18, 1993.Â Affirmed.
Discussion. The purpose of the on-sale bar doctrine is to prevent the withdrawal of inventions that have been placed into the public domain through commercialization.