Elan Corp. v. Andrx Pharmaceuticals, Inc. (Fed. Cir. May 5, 2004)
In this case, the Federal Circuit determined that there was no on-sale-bar, thus reversing the district court’s finding of invalidity.
More than one year before filing for a patent, Elan made several offers to enter into a license under a patent for future sales of their invention “when and if it had been developed.”
The court found that this was not an offer to sell but rather a permissible offer to license because the communication was not a definite offer including material terms.
The letter . . . lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond the general statement that the potential product would be a 500 mg once-daily tablet containing naproxen. Moreover, the dollar amounts recited . . . are clearly not price terms for the sale of tablets, but rather the amount that Elan was requesting to form and continue a partnership with Lederle. Indeed, the letter explicitly refers to the total as a “licensing fee.”