The Medicines Company v. Hospira Inc., Fed. Cir., No. 2014-1469,-1504, amicus brief filed 1/19/2016
A transaction between an inventor and its supplier to produce the claimed invention is not a commercial offer for sale, and therefore does not trigger the on-sale bar to patentability under 35 U.S.C. §102(b)(pre-AIA), AIPLA argued to the en banc Federal Circuit in a January 19, 2016 amicus brief.
“[T]his Court has applied the on-sale bar to supplier-to-inventor transactions involving activities that would not result in a patent-barring event if performed in-house by the inventor,” the brief states. “The application of the on-sale bar should not turn on whether inventors need or choose to commercially contract with third parties to develop or produce their inventions.” AIPLA urged the court to overrule Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2013) to that it is necessary to recognize that a supplier transaction falls outside of the on-sale bar.
“[T]his Court has applied the on-sale bar to supplier-to-inventor transactions involving activities that would not result in a patent-barring event if performed in-house by the inventor,” the brief states. “The application of the on-sale bar should not turn on whether inventors need or choose to commercially contract with third parties to develop or produce their inventions.” AIPLA urged the court to overrule Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2013) to that it is necessary to recognize that a supplier transaction falls outside of the on-sale bar.