Supplier’s Offer to Make Product Invalidates Patent under the On-Sale Bar

Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc. (Fed. Cir. 2013)

In a split decision, the Federal Circuit has affirmed a lower court ruling that Hamilton Beach’s asserted patent claims are invalid under the on-sale bar of (pre-AIA) 35 U.S.C. 102. The patent at issue is U.S. Patent No. 7,947,928 and relates to a slow-cooker or crockpot. (I use it generically, but “Crock-Pot” is a brand whose trademark is held by Sunbeam.) The original specification focused on a pot with an integrated spoon in the lid. In the second-continuation, Hamilton Beach responded to Sunbeam’s new product by refocusing the claims on a pot with a latched top.

The priority application was filed in March 2006. More than one year prior (In February 2005), Hamilton Beach issued a purchase order for 2,000 slow cookers from a foreign supplier but to be delivered to its US warehouse. That order was confirmed by the supplier that same month and manufacturing would begin once Hamilton Beach provided its “release.” Hamilton beach did not provide the release until after the one-year critical date and no products were manufactured or sold until after that critical date.

The On-Sale Bar of (Pre-AIA) 102(b) will invalidate a patent when the invention was sold or offered-for-sale more than one year before the filing date. The trick here to finding an offer-for-sale is to think in reverse – the supplier is selling the products to the patentee. Thus, the commercial offer-for-sale occurs when the supplier says “we’ll make it once you give your release.” In patent law, an offer for sale is one where the other party only needs to accept in order to create a binding contract for sale. Here, the supplier’s confirmation satisfies that definition. As Judge O’Malley writes:

Hamilton Beach’s supplier responded prior to the critical date that it was ready to fulfill the order. In other words, the supplier made an offer to sell the slow cookers to Hamilton Beach. At that point, the commercial offer for sale was made and, under the governing corporate purchase agreement, Hamilton Beach could accept the offer when it so pleased. And, Hamilton Beach concedes, as it must, that, had it provided a “release” any time after it received that email, a binding contract would have been formed.

The statute requires that an offer for sale of the invention invalidates the patent and here, this offer satisfied that statutory requirement.

Writing in Dissent, Judge Reyna argued that the transactions should not be seen as a commercial offer for sale, but rather an experimental use.

The decision here is one that calls to mind the large literature on company structure. The patentee lost here because it chose to outsource manufacture in a particular way (through a purchase contract). Hitting on that point, Judge Reyna writes: “My greatest concerns involve the implications this case will have for future innovators, most notably small enterprises and individual inventors who lack in-house prototyping and fabricating capabilities.” Of course, it turns out that most US product companies (not just small enterprises) outsource some amount of manufacture.

191 thoughts on “Supplier’s Offer to Make Product Invalidates Patent under the On-Sale Bar

  1. 191

    You keep on asking questions Ned, and still have not given the citation for a holding as I have asked of you.

    First things first Ned.

  2. 190

    Anon, why is the invention on sale if you have your supplier manufacture the whole thing, but not if he manufactures all but a small, conventional part. Why is the invention not on sale if the inventor or his assignee internally manufactures commercial quantities, but does not actually put them on sale.

    These are not just details. They tell us that something is not right in the State of Denmark.

  3. 189

    Oddly Ned, my answer to your post at 1:27 has also disappeared.

    I explored the attempt by you to distinguish commercial use and preparation for commercial use with sale and offer for sale.

    But you should note that ‘preparation for commercial use’ fails in the instant case. As I have previously noted in this thread, the actions of development houses are ‘commercial’ for them – that is their commerce. Part of the no-supplier exception is a realization that commerce does in fact take place between businesses. If you read the dissent, this is an important factor to be mindful of. It is NOT that a sale (or here, an offer for sale) has taken place – that cannot be denied. It is how that sale (or here, offer for sale) is characterized. The dissent plainly believes that ‘magic words’ are not necessary (and magic words is what the majority mistakenly is looking for). The dissent plainly notes that at the critical time, there could be no ‘commercial’ offer for sale because at that time, the product was still in an experimental phase with leakage concerns being addressed. Volume is not material in this context. Timing at the state of readiness are the drivers (with or without magic words).

  4. 187

    Fix Malcolm’s broken tag.

    The retread projected fantasies of yours do not need to have detail added. Such only shows that you are dwelling on these things far too much.

    You should instead dwell on the law that is really there. I suggest that you begin with the basics and learn the difference between copyright protection and patent protection. Knowing the difference is rather important if you really do have any clients.

  5. 186

    Perhaps this comment will be allowed to remain (maybe I need to use more expletives):
    You did not answer my question Malcolm – not in an intellectually honest manner. You reverted to a strawman, and the very strawman I had just identified.

    Your projections of ‘mommy’ and ‘afraid’ consistently tell others of your own mental state. They say far more about you than you realize, and what they say is that you are rather deeply disturbed. Your choice of career is obviously something you should reconsider, as the angst of working with patents is something that deeply troubles you.

  6. 184


    I still haven’t had time to go through this, or to even read the opinion.

    But the point of granting time-limited rights is to give to the developer or his assignee the ability to maintain control.

    That control is limited, as we now see in the denial of injunctions, but ultimately control is the operative concept.

    Control of pricing and availability are two of the dimensions of control.

    This is an economic phenomenon, except in the case of vanity patents. Developers develop things to improve their position, and obtain and enforce patents to curtail the positions of their competitors.

    The goal of the mechanisms of control that patents grant, during the life of the patent, is an improved economic position. The control that enables that improvement is given in exchange for disclosure.

    That is the quid pro quo, and there must be some contractual proportionality. A patentee is entitled to only what they are entitled to, and no more–hence the on-sale bar. The corollary is that a patentee should not give up anything in any situation in which they do not gain economically from the patent system.

    This is most surely such a situation. The patentee is not profiting from this transaction, and the transaction should therefore not impact the bargain made by that patentee or patent applicant and the state.

  7. 183

    And, anon does the patentee have a license to make when he is delivered drawings sufficient to make and use?  I would hope so.
    So, a sale of the invention occurs when the drawings are sold, but the sale is to the patentee.  Obviously this does not make much sense the viewpoint of the policy of the law.  Neither does it make much sense when the patentee orders a vendor to make products for the patentee. The policy of the law is to prevent the commercial use of the invention BY THE INVENTOR prior to filing a patent application.  This policy is not impacted adversely by the patentee ordering drawings from a vendor, ordering components from a vendor and then assembling them, or ordering a completed product from a vendor.  Such is not commercial use.  Such is preparation for commercial use, which is not the same thing.


  8. 181

    Tr0 llb0y: You have made some critical mistakes of late though, voluntaring admissions that you have found that you cannot deny.

    You have made some critical mistakes of late though, violating your parole and hanging around the elementary school again in your bathrobe behind the bushes.

    Fun game, Tr0 llb0y. I look forward to your next “move.”

  9. 180

    I noticed Malcolm that you completely sidestepped your mistreatment of development

    I noticed that you violated the terms of your parole again. I don’t have a problem necessarily with the fact that you wear a bathrobe and hide behind the bushes near the elementary school but … plaid socks? C’mon, man. That just hurts the eyes.

  10. 179

    I answered your questions directly and accurately, Tr0 llb0y. My answers to your questions aren’t “strawmen” but if you want to call them such, go right ahead (that would simply be another l i e that you habitually engage in, along with the l i e that I didn’t answer your question).

    If you want a different answer, maybe you should ask a different question. Better yet, try to summon up your best English (get help from your mommy) and tell everyone what “theory” you think you are ”
    “destroying” with your questions (previously asked and answered, many times over the years). Articulate that theory to the best of your ability. Go ahead, Tr0 llb0y. What are you afraid of?

    Maybe you should ask your buddy Gene to help you. He’s supposed to be sort of smart, isn’t he? Did you ever run your “devastating” “analysis” by him? Please tell me that you did. Please, please, please. And show me the link so I can have a good laugh.

  11. 178

    Sorry Ned, but both in my analogy and in Malcolm’s post, you are clearly wrong. With Malcolm, you had to change the facts and include a license to make – that is the gist of his not so subtle point that you want to gloss over.

  12. 177

    The point, MM, is to illustrate that buying drawings from a draftsman can “sell” the invention just as much as buying products made from those drawings.


  13. 176

    I noticed Malcolm that you completely sidestepped your mistreatment of development (and attempted to make the experiment doctrine disappear with a conjuring of ‘just file a provisional.’ While you say you understand development, your treatment shows that ‘understanding’ to be (yet another) 1ie from you.

    You spin so much you have lost your sense of direction, and you don’t know which end is up.

    Rather pathetic, really.

  14. 174

    I see you retreat to your vacuous understanding of law Malcolm and your ‘famous’ WHATEVER line of reasoning.

    It suits you.

  15. 170

    More straw from you Malcolm – I just called you out for attempting to switch the topic to a strawman of ALL mental steps, and you slink right back to that strawman.

    Try again. This time with some (any) intellectual honesty.

  16. 169

    I’m not a habitual l i a r, Tr0 llb0y.

    Actually Malcolm, that is precisely what you are. You have made some critical mistakes of late though, voluntaring admissions that you have found that you cannot deny. Admissions that expose the blatant 1ies that you have built your anti-patent agenda on.

    Your ‘spin’ and deceipt are uncovered. Your animosity is reflected in your attempts to hide that animosity. Your evasion of any sense of intellectual honesty is your very undoing.

    Just [shrug] and stand-by. Or better yet, get into a line of work in which you can believe in the work product, instead of it eating your soul.

  17. 168

    anon, still it shows the fallacy of the Federal Circuit.

    One can, I think, order component parts from suppliers and assemble them without putting the invention “on sale.” So why is it that having the supplier do the assembly any different?

  18. 167

    Malcolm, if one sells drawings that enable the making of an invention to third parties, without any restriction on use, the invention is sold.

    Obviously, if this applies as well to drawings commissioned by the patentee, it will lead to chaos as patent firms that use outside draftsmen will unexpectedly place their client’s inventions on sale.

    Same principle as ordering physical embodiments. Wrong heading in the extreme.

  19. 166

    Suppose the patentee sells the drawings to others with a license to make. How is that not selling the invention?

    Okay, let’s assume that a patentee selling drawings along with the necessary license to make the objects depicted in the drawings is “selling the invention”.

    What’s your point? That somehow that result is inconsistent with a different result based on completely different facts, which is a problem because … why?

  20. 163

    MM, let’s pull that cart an not push for a second.

    Suppose the patentee sells the drawings to others with a license to make. How is that not selling the invention?

  21. 161

    Ned: why is an apparatus embodying the invention any more “the invention” than drawings embodying the invention?

    For the purpose of the on-sale patent bar in 35 USC 102, pre AIA? Maybe because contracting with someone to prepare drawings to sell to you isn’t remotely similar to the “sale of the invention” described in the patent claims. Of course, if you sit on the drawings and the artist makes the invention and sells it for two years prior to your earliest filing date, your patent rights are hosed. But maybe you can sue for breach of contract or something. Hooray!

  22. 160

    Ned: if I sell you drawings illustrating the invention, and the manner of making and using it, haven’t I sold you the invention?

    No, you’ve just sold me some drawings and information about how to make and use what’s in the drawings. That’s not the sale of “an invention” unless perhaps the “invention” is a new recipe book. A much better way to sell “an invention” is to file a patent application describing “the invention” and then sell the patent application or the patent. Or you can make the “invention” yourself and sell it.

    Drawings are more enabling than a physical embodiment in most cases.

    That depends very much on the invention being depicted. I’m not sure it’s true in most cases. I think probably it’s not true in most cases. That’s why people typically like to buy things that have been assembled by others.

  23. 158


    I’m not a habitual l i a r, Tr0 llb0y. Thats’s your domain. It’s what you do. It’s your specialty.

    I also don’t post pointless insults directed at anyone who has ever expressed a view that I disagree with, regardless of what they write. That’s your domain, Tr0 llb0y. It’s what you do. It’s one of your other specialties, on display here every day.

    You’re invited to change your tune at any time, Tr0 llb0y. There’s a perfect opportunity presenting itself below. Maybe you can turn over a new leaf. Seriously, we both know that’s not going to happen.

  24. 157

    Thanks Lyle,

    I was referring to the actual statutory text (the law). I will check out your reference.

  25. 156

    I have a claim comprised completely of [old steps].

    That’s nice. We’ve been through this exercise before, Tr0 llb0y. Were you on different meds the last time? It’s odd that you seem to forget the answers every time.

    Patent ineligible?

    The answer depends on the steps. For example, an old process comprising only mental steps is no more eligible than a new process comprising only mental steps.

    Per se patent ineligible?

    No (see above).

    Do you understand yet how this destroys your little pet theory

    Which “theory” are you referring to, Tr0 llb0y? It might help if you articulated that “theory” so we can all see what it is that you think you are “destroying.”

  26. 155

    Whole lot of mewling QQ there Malcolm with nothing at all of substance.

    Try again (but without the spin). Maybe get Vivika M. to help you out.

  27. 153

    Ned – no, facts of a (particular) case do not (necessarily) a holding make.

    The ball is still in your court.

  28. 151

    Shorter Tr0 llb0y: “I refuse to answer the question.”

    Here it is again for anyone who missed it:

    Should purely mental processes be eligibile for patenting, Tr0 llb0y? Simple question for you. Would you support an amendment to 101 that explicitly barred purely mental processes? What about an amendment that barred processes which recited only anticipated steps followed by a new mental process. Would you support that amendment? If no, why not?

    Tr0 ll0y refuses to answer these questions. While insulting everyone (including the Supreme Court) who dares to interpret 101 is Tr0 llb0y’s favorite pastime, somehow the act of coherently expressing his opinion regarding these simple questions is something that Tr0 llb0y just can’t manage. How curious.

    dissembling as if this were a brand new question.

    Yes you certainly are, Tr0 llb0y. What a t 0 0 l.

  29. 149

    Anon, if I sell you drawings illustrating the invention, and the manner of making and using it, haven’t I sold you the invention? 
    You have to distinguish between the invention and embodiments.   Drawings are more enabling than a physical embodiment in most cases.
    On sale does not refer to embodiments, but to the invention.


  30. 147

    “Tr0 llb0y,” You keep calling me that

    That’s right, Tr0 llb0y. Because you’ve trolled this blog for years, insulting everybody who you deem to be “anti-patent” occasionally including some rarely comprehensible horsesh*t but mostly not. For years you did your trolling while hiding behind and endless stream of s0ckpuppets, while pretending that you weren’t doing that (you were responding to a “vocal minority”, remember?). Then Dennis finally outed you. And of course there’s your endless l y i n g, bragging about “beatdowns” that you dream you are administering, the endless l i e s about the “answers” to your dumbaxx questions that you pretend that I never provide, and generally behaving like a m0 therflocking idjut who never found a patent he couldn’t fluff.

    projecting your odd s3xual fantasies

    As you know, these are not fantasies. It’s the truth, Tr0 llb0y. You “voluntarily admitted” that. And your admission is “archived” somewhere. Right? That’s the game you like to play, Tr0 llb0y. Just keep playing it. It’s what you do. It’s your speciality.

    yes, your views are anti-patent. Plain and simple, that is an accurate description.

    Because Tr0 llb0y says so. Just like Tr0 llb0y pretended for years that I had to be a patent examiner because “only a patent examiner” would dare question Tr0 llb0y about the awesomeness of a patent or a case that made it easier to obtain or enforce a patent.

    Keep it up, Tr0 llb0y. You make Gene happy. You make a great team. That’s all that matters.

  31. 146

    It only looks like horseh*t because I am rubbing your nose in your own sh*t.

    Any insults towards you have been fully earned. I have told you how to limit these, but you must be willing to actually post in an intellectually honest manner.

  32. 145

    And if you have trouble, you can phone a Friend(S) of the Court, or any of your dissembling ‘worst-thing-EVAH’ svckies that you incessantly QQ ed about yet indulge in that very activity (and yes, the word for you STILL: hyprocrite).

  33. 144


    I have a claim comprised completely of [old steps].

    Patent ineligible? (note that I am not asking patentable)

    Per se patent ineligible?

    Do you understand yet how this destroys your little pet theory (you know the one, the one you tossed on a bonfire of your own making when you attempted for the first time to provide a substantive squaring of Prometheus with the case most on point, and then even refused to save your flaming ‘theory’ with your ‘mastery’ of English as a first language).


  34. 143

    A direct reply is not possible since Malcolm messed up the tags, but above he askes “Should purely mental processes be eligibile for patenting, Tr0 llb0y? Simple question for you.

    The simple answer to the true Tr011’s question is twofold:

      1) The question is a strawman, as NO ONE has ever questioned a purely mental process. This has been pointed out to Malcolm numerous times, and yet he insists on dissembling as if this were a brand new question.
      2) ANTHROPOMORPHICATION. Machines do not in fact think. Yes, you answered in the opposite manner previously. But you were wrong then, and you are still wrong.

    Try again, but this time with a little bit of intellectual honesty.

  35. 141

    Question: “All, what is the difference from buying a completed unit and buying all but one insignificant part?

    Answer: Addressing the point under discussion and discussing an insignificant and rather lame strawman.

    Again, Ned, you insist on have the patentee commercially use the invention, and yet you have failed to provide a single case that has as its holding that the it MUST be the patentee that issues the offer for sale.

    Exactly like our discussion in the Myriad case, Ned, your inability to follow through with the legal points I make simply eviscerate your position. You simply are not making your case, and ignoring my calls to provide a holding is only shining the spotlight on your faulty position ever brighter.

    Stay away from the lame strawmen and provide the case with the desired holding (if you can actually find one).

  36. 140

    If having an outside draftsman make patent drawings for one places the invention on sale

    If your “invention” is a set of drawings, your problems are already a whole lot bigger.

  37. 139

    Tr0 llb0y,

    You keep calling me that and ignoring my actual moniker, Malcolm, all the while acting like what you are accusing me of, and projecting your odd s3xual fantasies onto me.

    Rather odd and disturbing behavior of yours.

    And yes, your views are anti-patent. Plain and simple, that is an accurate description. Sorry that the truth hurts.

  38. 138


    The case deals with this by noting that the offer for sale and offer for purchase are two sides of the same coin, and the earliest date for which a contract could possibly happen (note, NOT actually happen) is the controlling date.

    As I discuss herein, there is no doubt that a sale (or rather, an offer for sale) had taken place at the indicated date.


    For development houses, such is clearly their ‘commerce.’ The finer nuance here is does the term ‘in commerce’ truly apply – and to this, the dissent’s note that at the critical time there was still experiments ongoing to correct a critical leakage problem.

  39. 137

    Ugh!  You do seem to have had some bad experiences.  But you do raise a point I hadn’t considered.  If having an outside draftsman make patent drawings for one places the invention on sale (after all, there is no “supplier exception”) then the problems with this case just got a whole lot bigger.


  40. 136

    Reading the AIA 102 Exam Guidelines at 78 FR 11063, the USPTO indicates a public offer for sale to qualify as prior art, but not a secret or private offer for sale.

  41. 135

    All, what is the difference from buying a completed unit and buying all but one insignificant part?

    Second, what is the difference from the case at hand and buying all the components from a supplier and then having the patentee assemble them.

    Third, in the case where the invention claims a process, the patentee buys commercial quantities of supplies. Has the invention gone on sale?

    All of this is wrongheaded, because in no case has the patentee commercially used the invention let alone sold anything TO the public.

  42. 134

    I have never liked outside draftsmen–my experience with them has been terrible.

    The best one yet was when somebody just digitized hand sketches, after having been told to draw them up in CAD, properly dimensioned, and sent me a bill.

    You can imagine the fun I had. First, they denied that they just scanned the sketches! Incredible.

    Beware outside draftsmen. I don’t use them anymore.

  43. 133


    I’m not categorically disagreeing with you, but there are many purposes for, and types of, “prototyping”, which is an unfortunate term.

    Filing a provisional might be one way to maintain some control, but it can also put you under the gun prematurely. It’s in no way a real solution to the problem, which is that the developer, by disclosing enough information to get a prototype made, has no intention whatsoever of giving up control of the development process to anybody, including the manufacturer of the prototype.

    That’s why NDA’s, etc. are always used in such a relationship.

    Consider that the offer is made under the umbrella of an NDA. What is the purpose of that NDA? To maintain control. The fact of the potential supplier or manufacturer making an offer to the developer, or to anybody else for that matter, does not evidence an intent by the developer to cede control of the development process.

    Consider this slightly different legal construction of the same fact situation: it is the developer who makes the offer to purchase x units of widget A, and the manufacturer who accepts by whatever means, like actual delivery by a certain date. There is now no offer for sale, but an offer for purchase.

    Logically, why should the developer suffer a penalty under one construction, but not under another, for exactly the same commercial transaction? Yes, there may be a penalty when the contract is completed upon delivery as an actual sale, but that happens at a completely different time, if ever, and so is a totally different consideration.

    What is it about the character of the manufacturer’s actions in making the offer that merits such a penalty to the developer? Nothing.

    There is an answer somewhere in contract law, I just haven’t put my finger on it yet, because I haven’t had time. But I will.

  44. 131

    IBP: There is no clause that I have ever seen that successfully dictates that offers of sale made to anybody will be null and void with respect to 35 USC.

    Right. So it’s a pretty good idea to file that provisional application first before disclosing your invention to anybody. Of course it should be the best provisional application that you can prepare and file, given whatever constraints exists (budget, time) etc.

    If their entire position in the bargain can be undermined by the actions of a third party, over whom they have no or insufficient control, then there is much less reason for them to even participate in the game.

    File the provisional application describing the prototype you want developed first. If the issues is that the third party might contribute to the actual (enabled, working, useful, new) invention well… I think the law has ways of addressing that circumstance as well.

  45. 130

    I agree. A company should be able to out-source production without triggering an on-sale bar where the company is only obtaining its “own” product from the supplier.

    However, apparently Judges O’Malley and Bryson on the Federal Circuit disagree. They think it constitutes a “sale”. Obviously money changed hands to cover the costs of production.

    And in this case, the potential supplier’s mere offer (which is totally out of the inventing company’s control) triggered the bar. It wasn’t as if the inventing company (Hamilton Beach) was the one who had first approached the supplier to make the product; although it is unclear how the supplier got wind of the new invention in order to be ready to make the offer. However, even if Hamilton Beach had refused the offer, the offer was made and the bar would exist.

    The lesson: keep your inventions secret, even from your potential outsource suppliers, until the patent application is filed.

  46. 129


    I will first answer your specific question, and then address patent policy in general.

    To your specific question: if someone came to me with bull like that–and they have–I would immediately ask them on how they know what the filed claims were going to be, and on what basis they believe that they would be allowable. Your scenario presumes someone else has done that work. If they hadn’t, I wouldn’t progress to the second part of your answer at all, I would require that I perform a proper search before moving ahead at all with any further work or hypothetical discussion.

    Yes, that is how I do things, and it works well for me.

    If someone had done that work, your question becomes one about opinion practice. I have my own views on that type of practice, sometimes I do it, sometimes I don’t, depending on the precise nature of the legal issues involved, and on my perceived quality of the statement of facts.

    In the abstract, however, I would ask why those were the only 2 identified options. How about waiting until good claims were drafted, and doing that drafting asap and filing a non-provisional?

    What the heck do they think they are doing asking about provisionals, when they are “sure” that it is patentable? How can they be sure it will be patentable if they don’t yet even know what the claims will be? Rubbish.

    “Best”? Best for what? There are more than 2 options. Risk is always related to potential reward in the first instance, and in practice, relies to a great extent on risk management. There is no one-size-fits-all answer to your question: it depends on who they are, where they exist in the market, what that market is, how they want to conduct business, how much and what types of resources they are willing to bring to bear on this project, how they have managed similar projects in the past, if at all, and what their experience was, the specific nature of the technology, how necessary and to what extent, prototyping is, etc.

    “Best”, even from a strictly legal point of view, depends on these practicalities, because again, those are never the only 2 options.


    Patent policy in general: the whole point is to encourage the development and dissemination of products, methods, and designs, from those developers to general society.

    “General society” is any entity that is at arms-length from the developer. CA’s and NDA’s are used to eliminate that distinction, to bring all relevant entities under an umbrella, but they are not an exhaustive list of how that may be achieved.

    In order for potential developers to find the current quid-pro-quo at all inviting, they must perceive that they have a certain amount of power in the process, and that the process is knowable and non-arbitrary. If their entire position in the bargain can be undermined by the actions of a third party, over whom they have no or insufficient control, then there is much less reason for them to even participate in the game.

    How much control do they have over prototypers? They have contractual control, over things like disclosure. Is there any possible way they could control the making of an offer by that third party, while still engaging in the disclosure required to enable required development? No. There is no clause that I have ever seen that successfully dictates that offers of sale made to anybody will be null and void with respect to 35 USC.

    Without this control over development, the policy of development and subsequent dissemination is not at all served.

  47. 128

    Tr0 llb0y: You do realize that prototypes are often built during development, right? You are aware of what ‘development’ means, right?

    Yes, Tr0 llb0y. We all understand that.

    real world experience

    Right, like the “real world experience” you got watching anime in your mommy’s basement before they hauled you to the hospital.

    Your innate animosity to all things patent

    You keep reciting this strange mantra, Tr0 llb0y, even as you habitually demonstrate your own “innate animosity” to anyone who doesn’t fell-8 patents with your special brand of gusto.

    I don’t have animosity towards “patents”. I do have a problem with an inept PTO, lazy judges, and greedy a–0les who relentlessly exploit weaknesses in the system for their own selfish purposes while simultaneously shrieking that patents are too hard to obtain and enforce. This has all been explained to you before. Now run along and polish Gene’s buttons like a good p uppy.

  48. 126

    we deal with non-explicit (i.e. implicit readings of ‘what Congress said’ by the Court in 101 jurisprudence.

    Oh, the horror! The horror!

    As if that Tr0 llb0y and his cohorts would suddenly stop soiling themselves if only the statute were amended to explicitly state the holding in, e.g., Prometheus.

    Should purely mental processes be eligibile for patenting, Tr0 llb0y? Simple question for you. Would you support an amendment to 101 that explicitly barred purely mental processes? What about an amendment that barred processes which recited only anticipated steps followed by a new mental process. Would you support that amendment? If no, why not?

    Let’s watch Tr0 llb0y spin like the shiny top that the nuthouse wards had to take away from him.

  49. 125

    Come Malcolm, you disappeared from our conversation last weekend. What’s the matter?

    Uh … I took a little vacation by the beach like many people do this time of year. I realize that’s difficult for an institutionalized d*psh*t like you.

    Also, whatever “conversation” you are referring to, I’m sure it amounted to little more than you spewing your usual horsesh*t and insults.

  50. 124

    before contracting with a third party to make a protoype

    LOL – Malcolm your utter lack of real world experience in things actually manufactured is showing. You do realize that prototypes are often built during development, right? You are aware of what ‘development’ means, right?

    I realize that to you, this sounds like (gasp) an advantage to a patentee (which to you must then lead to the ‘worst thing EVAH.’

    I implore you to get into a field in which you can believe in the work product you produce. Your innate animosity to all things patent is showing again.

  51. 123

    Can we get more clues, 6?

    LOL – seeking clues from the clueless.

    The irony of the Malcolm Fail is hysterical.

  52. 122

    He’s also a s0ci0path and a habitual l y i n g t00l.

    Y A W N

    More of the typical Accuse-others-of-that-which-you-are from Malcolm.

    Come Malcolm, you disappeared from our conversation last weekend. What’s the matter? Your agenda exposed and your fallacious ‘theories’ burnt to a crisp?


  53. 121

    IBP Not only does this decision sound badly in policy, I suspect it also sounds badly in law

    What’s “wrong”, “ridiculous” or “disgraceful” about a policy (or law) that encourages inventors to file patent applications before contracting with a third party to make a protoype?

    Before this case, if a client came to you and said that they had invented a new device which would ultimately be covered by an as-yet-unfiled patent. Specifically, they wanted your opinion as to whether it would be best to prepare and file at least a provisional patent application on the device (a) immediately or (b) wait until after they had disclosed the device to one or more third parties prior to engaging one of the parties to build a prototype.

    How would you have advised them?

  54. 120

    Said a man with 0 legal training and who doesn’t even appear to be involved with patent law in any way shape or form other than being a wanna be inven tard.

    He’s also a s0ci0path and a habitual l y i n g t00l.

    Can we get more clues, 6?

  55. 119

    Not only does this decision sound badly in policy, I suspect it also sounds badly in law.

    I will go through it and find out how.

    At first glance, ridiculous, like another poster said.

    But more than that, probably disgraceful and embarrassing.

  56. 118

    Thanks 6 – for at least acknowledging the fact that what you asked for (“they should make that explicit“) is not even done for the first – and supposedly wide open – gate of patent law, while ignoring the point I raise about the ‘complexity’ of the word “any.”

    That’s a real big contribution, considering the source.

  57. 117

    “Who is ‘they?’ Congress?”


    “And yet, we deal with non-explicit (i.e. implicit readings of ‘what Congress said’ by the Court in 101 jurisprudence.”


  58. 116


    Still waiting for that proper citation to a holding that the sale or offer for sale MUST be by the patentee.

  59. 115

    they should make that explicit in the lawl


    Who is ‘they?’ Congress? The Court? We both know exactly which branch of the government (and only one branch was so authorized) to actually write patent law. And yet, we deal with non-explicit (i.e. implicit readings of ‘what Congress said’ by the Court in 101 jurisprudence. If you think ‘commercial’ is not a particularly complex word, how do you feel about he word ‘any‘?

  60. 114

    Agreed – with the one year ‘protection’ already paper-thin, one must race first to the Office.

  61. 113

    Under the AIA, the offer to sell or sale must be public

    Check again, jcvillar. There is no “offer to sell” as prior art under the AIA.


  62. 112

    Under the AIA, the offer to sell or sale must be public. This was not so under pre-AIA law, where even secret sales are a statutory bar.

  63. 111

    Pfaff v. Wells? In Pfaff, it wasn’t even necessary that the actual working product design exist so long as there was enough info to file a patent. Take Pfaff and combine with this case and you have the new AIA scenario where you better not even THINK of discussing the new device with even a potential supplier until you’ve filed a provisional on it.

  64. 109


    Let’s keep the goal posts in place first and have you supply your proper citation.

    I’m still waiting.

  65. 108

    Anon, why do you think third party private commercial exploitation of an invention is not prior art but if done by the patentee still remains a bar.

    Please explain.

  66. 107

    Bizzare strawman, Ned, as no one is even close to discussing buying components of a patented invention.

    How do you “assemble” a process?

  67. 106


    Do you know what a holding is?

    Need I retrieve (once again) the very reference you supplied by a judge explaining what a holding is in relation to case law?

    Read again my requests – including my post at 3:01 PM yesterday (facts of a particular case are not the same as a holding).

    Why are you holding onto that ball for so long?

  68. 104

    “Your inability to see the legal logic only reinforces the ongoing ineptitude of yours to participate in discussions of legal topics.”

    Said a man with 0 legal training and who doesn’t even appear to be involved with patent law in any way shape or form other than being a wanna be inven tard. TBH, coming from you that means less than nothing.

  69. 103

    what precisely

    Come now, Ned, it is perfectly clear what I asked of you: Show me a case law decision that holds that the seller (or one making an offer to sell) MUST be the patentee.

  70. 102


    Sorry, but you have demonstrated NOTHING. You mentioned that there are plenty of cases directly on point (with appropriate holdings), and yet you have not delivered a single citation to back that up.

    Just like our discussion before the Myriad decision came out, you insist on relying on your own word. Sorry, Ned, that is just not good enough.

    You need to show a HOLDING that the seller (or one offering to sell) MUST be the patentee.

    The ball remains in your court.

  71. 101

    Holding? Holding what precisely?  To the public? Yes, the very case you cited (by references to the MPEP) did rely on the delivery of samples to the public.


  72. 100

    Mark, the case law requires a sale to the public in the case of third party sales.  Public disclosure is the KEY.
    In the case of the patentee, private commercial use is a bar.  But buying parts is not commercial use by the patentee.
    The problem with this line of cases is that they do not apply the law correctly and miss the point.  They are inconsistent with historical case law and for this reason must be considered bad law.
    I would continue to argue that the line is illegal because of this inconsistency, and urge en banc review to resolve it if panels continued to insist that a patentee buying parts from a supplier puts the invention “on sale.”  Where does one reasonably draw the line.  Many good patents will be ridiculously invalidated given this line of cases.  We need to fight back and give the Federal Circuit a piece of our mind.
    What a joke.  There a many here who recognize the fallacy of this line of cases. 


  73. 99

    anon, the line of cases is inconsistent with long established case law to the contrary.  I have demonstrated that.  Sales by third parties to the public in the US are prior art because they are to the public.  That is public disclosure.  Private commercial use is not prior art because it is not to the public.  That is the whole point.


  74. 98

    anon, whoever wrote that did not seem to understand that the offer of sale in In re Caveney was to an independent third party in the US and samples were provided.  A sale to the public will disclose the invention while a sale that does not disclose the invention, after the sale is completed, is not prior art.  That point was made.
    “Here the claimed invention was disclosed to the purchaser.”  In re Caveney, 761 F.2d 671 (Fed. Cir. 1985)"
    Metallizing is consistent with this distinction.  The public disclosure of the invention is the critical distinction.  The MPEP does not point this out and cannot be relied upon for its inaccurate summary of the law.

  75. 97


    I see nothing from you to any HOLDING according to what I have asked of you.

    Sorry, but your track record on ‘interpretations’ of case law that is not on point is rather dismal. I even provided you with MPEP sections.

    Once of us is lost, and it is not me.

  76. 96

    I’m sorry, but if 3rd party sales are not prior art unless they are to the public, what else do you need to find your way out of the words.  Bread crumbs?


  77. 95

    But that is exactly what didn’t happen here. The opinion of the court in its analysis of the case stated:

    “Second, there is no “supplier exception” to the on-sale bar. See Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353, 1355 (Fed. Cir. 2001). Thus, it is of no consequence that the “commercial offer for sale” at issue in this case was made by Hamilton Beach’s own supplier and was made to Hamilton Beach itself.”

  78. 94


    May I suggest MPEP 2133.03(b)(III)(B), (IV)(A), and the cases referenced therein as indicators of a position opposite of that which you are attempting to establish.

    As in the Myriad case, I now leave to you the onus of overcoming a legal position backed up with sound support.

    The ball is in your court.

  79. 93

    I only know how stuff is developed and made. This “work-around” may actually be normal and no sham. A prototype firm is like a hybrid machine shop/service bureau, as such they normally estimate shop time plus mat’ls but sell at a fixed price with options as to materials quality etc. If they provide short run or pre-production services it may be parts or assembled products so lines blur. Not complementary but not like production, but they do sell goods as their customer specifies.

    It can be different when a model or prototype is a deliverable of an outside product development firm, or a contract manufacturer. Some of these firms have internal shops, some contract it out and many do both both. It varies but protos might not be transferred or sold to the client even though they may be “work products”. It is not unusual that the work products of product development be considered different than sold goods for reasons including independence, iterative R&D process, accounting, taxation, liability and even IP assignment.

    Additionally, “Prototype” is quite varied in meaning and in kind. A prototype may be a means of expressing/communicating the product design, as an invention/development step, used for market/engineering/ regulatory test (experimentation?) or as a proxy at trade shows, and in promotional stuff. And it might be a mistake to equivocate prototypes and pilot production/preproduction/short runs (like 2000); is it to test in a limited market for acceptance, to work the kinks out, or to get to market early while higher volume tooling and stuff is developed?; it all depends. You tell me if that is experimental or not. I just think its normal.

    But I do not think the logic of this case is.

  80. 92

    Nice story, Ned, but still fails to deliver what I asked:

      Still waiting for the case that has as its holding that the seller MUST be the patentee.
  81. 91

    anon, WL Gore, 721 F.2d 1540 (Fed. Cir. 1983) relies on Metallizing for the following:

    “Assuming, arguendo, that Budd sold tape produced on the Cropper machine before October 1969, and that that tape was made by a process set forth in a claim of the ‘566 patent, the issue under § 102(b) is whether that sale would defeat Dr. Gore’s right to a patent on the process inventions set forth in the claims.

    If Budd offered and sold anything, it was only tape, not whatever process was used in producing it. Neither party contends, and there was no evidence, that the public could learn the claimed process by examining the tape. If Budd and Cropper commercialized the tape, that could result in a forfeiture of a patent granted them for their process on an application filed by them more than a year later. D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, at 1147-48 (Fed.Cir.1983); See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir.1946). There is no reason or statutory basis, however, on which Budd’s and Cropper’s secret commercialization of a process, if established, could be held a bar to the grant of a patent to Gore on that process.

    Early public disclosure is a linchpin of the patent system. As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter. See Horwath v. Lee, 564 F.2d 948, 195 USPQ 701 (CCPA 1977). The district court therefore erred as a matter of law in applying the statute and in its determination that Budd’s secret use of the Cropper machine and sale of tape rendered all process claims of the ‘566 patent invalid under § 102(b).”

    Check out the cases that follow this line of authority:

    link to

  82. 89

    Your inability to see the legal logic only reinforces the ongoing ineptitude of yours to participate in discussions of legal topics.

    That you are involved with the law in any way is alarming. With your experience in the weeds, I would suggest a career in botany.

  83. 87

    No actually you know what anon, I did answer directly your post.

    This was the answer:

    I certainly don’t see how this could lead me to some “legal logic” to see why ready for patenting obscures rather than helps in the above situation.

    To be clear, I don’t see how anything in the case of the original post in this thread has anything to do with some “legal logic” what so ever. In fact I explained the instant case to you. And that’s all I have to say on the matter. You ta rd.

  84. 85

    anon, think.

    The patent covers A + B + C + D.

    The patentee buys components A, B, C and D. He has all the parts. On Sale?

    The patentee then assembles the parts, forming A + B + C + D. On Sale?

    The patentee sells component parts A + B + D + C, but not the plan for their assembly. On Sale?

    The patentee buys a chemical X, assembles process Y that uses X, but does not use the process. Is the purchase of X On Sale.

    Bizzare. We can drift into the morass and this case takes us a long way into that abyss.

  85. 83

    Anonymous, I assume by “purpose for the law,” you reference Story’s 1829 Pennock case that Congress codified in 1836?

    Regardless, you got it right. The purpose is to prevent the inventor from commercially exploiting the invention prior to filing a patent application. Congress granted a grace period in 1836 to allow 2years of exploitation. That was later reduced to one.

    What third parties do is irrelevant. Their actions are governed by the balance of 102(a) and (b).

    The Hallmark of third party prior art is public disclosure — an enabling public disclosure. Anything less is not prior art.

    Private commercial use or sales by third parties does not disclose the invention. The public is not in possession. Such is not prior art.

    European law is consistent to some extent, requiring a public disclosure in all cases.

  86. 82

    Sorry 6, this is nonresponsive to my post at 5:42.

    Taking one snippet and then ignoring what happened in the case rather misses the point.

    Try again.

  87. 81

    “Clearly, the tying nuance of ‘to the public’ connects to the pre-AIA dissent understanding that this particular sale was exactly the type of ‘commercial’ sale that the doctrine of experimental use was meant to protect (in other words, this type of sale was not commericial as the law intends that word to be understood).”

    Well then they should make that explicit in the lawl. Because “commercial” is not a particularly complex word.

  88. 80

    “Read the dissent, and see if you can develop the legal logic”

    I just read it. And it all boils down to

    a. Reyna not liking that the majority concluded it was a commercial use allegedly without review and supposedly without considering if the purchase was just for experimental use.
    b. Reyna feels like the circumstances as he sees them indicated experimental use. He comes to this conclusion based on the assertions/facts that “The purchase order “was not the result of customer
    demand or projections”” and, at the time the order was placed, Hamilton Beach was repeatedly changing the product specification due to a series of design failures, most notably, foodstuffs leaking through the lid”.

    I’m sorry, but none of this is persuasive for the following reasons:

    a. They failed to so argue and the court bears no responsibility to do the review or analysis on their own without sufficient evidence or even argument to support it.
    b. Neither of these is sufficient basis to indicate that all of the ones purchased were for experimental use. Which is what would be required.

    Also Reyna adds:

    “Hamilton Beach was similarly entitled to test and perfect its slow cooker under the experimental-use exception”

    Which everyone agrees with. If they had done so then they’d have been in the clear. There is not sufficient evidence on the record to so indicate, and there is no reason for the majority to even consider such since the argument was not made, and they have 0 responsibility to raise it for them.

    Sorry if you don’t like it anon, it’s just that simple bro.

    I certainly don’t see how this could lead me to some “legal logic” to see why ready for patenting obscures rather than helps in the above situation.

    In either event, I’m through discussing it with you. You’re not a lawl tard, you’re just a bum-ta rd. I’m sorry, you don’t know what you’re talking about and Reyna read a bit too much into the assertions/evidence/facts before him.

    I will say finally though that Reyna need not be worried:

    “Under the majority’s holding in this case,
    a single offer to buy for purely experimental purposes may trigger the on-sale bar, and the experimental-use exception will offer them no salvation”

    That is certainly not the case. All the patentee has to do is establish, and raise in their brief, that it was experimental use only. That’s it. Simple as pie. All they have to do is the same thing they had to do before this decision.

  89. 79

    Huh? You don’t need to own an “invention” to sell it. A patent may prevent you from doing so, but there is none in the above example (at least yet).

  90. 78

    But the statute is written more broadly than Metallizing Engineering. And this isn’t the first time that the on-sale bar has been applied in this manner.

  91. 77

    Ned – please provide a citation that is on point to your contention. Please do not provide superfluous citations that merely have in their fact pattern what you claim to be a holding.

    Since you believe there is a wealth of case law that holds precisely this, it should not take you long.

    (and again, visit the site to see my other comments)

  92. 76


    Funny that you ask that question. Once again, per the majority, that question is simply not material to the law.

    (You should visit the blog and see the full comment string, as you would likely appreciate my other posts)

  93. 75

    Paul, are you suggesting that some foreign manufacturers may be slightly disrespectfully of confidentiality requirements?

    I can see it all now — under the new AIA where “make available” to the public is what counts, any disclosure to certain countries might be deemed a non confidential disclosure regardless of any NDA.

  94. 74

    DR, an “offer” by a third party to sell TO THE PUBLIC counts only if it is with the authority of the patentee.

    See, Pennock and Metallizing.

  95. 72

    anon, “the offer does not have to be made by the patentee.”

    Yes it does. There is a wealth of case law that holds precisely this and panel decisions cannot overturn that case law. There are Supreme Court decisions on point. There is A Metallizing case. And there are wealth of Federal Circuit cases that follow Learned Hand’s opinion in Metallizing.

    Some Federal Circuit panel decisions here have gone off on a lark and have developed a inconsistent line of case authority that is dramatically wrong. This has to be taken en bank at a minimum because third-party offer for sale do not count. They are not prior art. In order to be prior art there must be a public disclosure of the invention by a third-party and that public disclosure must be enabling.

    The central purpose of the on sale bar is to prevent the patentee for commercially exploiting the invention prior to filing a patent application, in this bar applies regardless of whether that commercial exploitation is public or not. If it was public, then it would be a public use regardless of that it was a sale or not.

    Buying products is not commercially exploiting the invention by the patentee and it certainly does not disclose the invention to the public in any manner that would otherwise qualifies a public use. At the end of the day the invention remains confidential, secret and unavailable to the public in a case where the patentee himself is buying the product. The commercial nature of the third-party sale again is irrelevant because third-party sales are not prior art.

    Just as the a dissent suggests, if we were to extend the law to make purchases from a third-party a bar regardless that the patentee was buying the products for his own experimentation, then we would essentially eviscerate controlling Supreme Court law on experimental use.

  96. 70

    From the summary above, the decision appears to be based upon an unfortunate semantic/nomenclature error…calling a “manufacturing agreement” to get the products ready for sale (ready FOR the patentee to sell) an “offer for sale” TO the patentee.

    The purpose of the law was to prevent inventors from effectively extending their monopoly by offering for sale/selling for more than a year and THEN patenting (giving them control over the invention for longer than the statutorily envisioned term). This decision certainly perverts that purpose…

  97. 68

    Mike – why do you say that? In what world does an unpatented invention need to be “authorized” to be made, by anyone?

    Now, you may well argue that the accountant, under his obligation of confidentiality to the inventor, can’t make and sell them externally.

    But that doesn’t stop him from making White’s proposed offer to the inventor.

    It sits there, a bone fide offer to make (and sell), awaiting only the inventor’s acceptance. And in White’s hypo, whether the inventor accepts or declines the offer is not material.

    This is a bad outcome from a policy standpoint. But it seems (to me) to be where the law comes out in White’s hypo.

  98. 67

    anon – thanks for “sirt”, I kinda like that.

    As for the rest of your response, it seemed like you were taking a stand in the parenthetical assertion, esp. given you started it with “and as such” and used emphasis on “NOT”, it seemed to be your actual opinion.

    Guess not. Whatever.

  99. 66

    Your shoe example is a pitiful strawman (and strawmen do not even wear shoes).

    C’mon IANAE, you just have to tr011 better than this.

  100. 65


    You have not addressed my comment about the necessary link to ‘authorized’ in the present case.

    Further, would you care to share any current plausible tie to law for your view?

    Or does this fall to the phantasy land version of how law should be in the land of Ned,

  101. 64

    But, the law only requires that the product could have been patented at the time of the offer. Maybe Samsung’s Galaxy S6 is just waiting to be released – along with the 600 versions of the iPhone that have already been invented.

  102. 61

    The point about the point being valid, was that it is valid in this discussion concerning patent law.

    Well done. That’s a good restatement of the proposition I’ve been disagreeing with.

    “Yeah, I invented a new shoe, and I ordered a few thousand of them, but that’s experimental use because I don’t know who they’ll fit yet.”

    Relevant to shoe buyers? Certainly. Relevant to patent law? Not so much.

  103. 60

    My Pal Hal Wegner (or more correctly, an unidentified and respected colleague of Hal’s has commented on the dissent’s grasp of the nuance, in relation to the law as it would be applied under the AIA:

      The thoughtful dissent of Judge Reyna in Hamilton Beach has stimulated further discussion. Another respected colleague has said that “[t]he Hamilton Beach ‘sale’ might not qualify as prior art under AIA section 102, according to PTO Guidelines (77 Federal Regulations, 43765), which states that “[t]he phrase ‘on sale’ in AIA 35 USC 102(a)(1) is treated as having the same meaning as ‘on sale’ in pre-AIA 35 uSC 102(b), except that the sale must make the invention available to the public. (Guidelines, Section II.B. 1.d.).”

    Clearly, the tying nuance of ‘to the public‘ connects to the pre-AIA dissent understanding that this particular sale was exactly the type of ‘commercial’ sale that the doctrine of experimental use was meant to protect (in other words, this type of sale was not commericial as the law intends that word to be understood).

  104. 59

    LOL – You continue to insist on taking Calvinball face sp1kes.

    The point about the point being valid, was that it is valid in this discussion concerning patent law.

  105. 58

    Les’ point is a valid one.

    It’s a valid point, it’s just not a point about patent law.

    In other words, what 6 said.

  106. 56


    The statute is clear that any offer for sale will suffice. As such, even if the offer was under an NDA, it would still apply.

    As far as experimental use goes, I don’t think that would have worked either, as there doesn’t appear to be any evidence that the pre-order was not going to be made commercially available.

  107. 55

    didn’t appear to be for experimental use

    That’s where the dissent disagrees, Mike. While the volume does appear ‘high,’ the dissent note that the leakage problem at the critical date was not yet resolved is compelling. The dissent even notes how the use of volume alone falls to a method of judging that was tossed out. Usually O’Malley is sharper in picking these types of things up.

  108. 54

    It is flat out wrong that there is “no” indication.

    The judges of the majority may have believed that there was not enough indication (or as noted in my other posts, they may have simply missed the nuance).

    We do disagree. But we disagree based on you not understanding the total picture – the dissent clearly notes the date used by the majority does NOT match the ‘completed object’ meeting the ‘commercial’ standard (as he understnads the nuance of ‘commercial’). The majority does not address this factor correctly – see majority, footnote 2 wherein the majority incorrectly characterizes the dissent position.

    Again, this is a nuanced position. Take your time in coming to a proper understanding.

  109. 53

    The order for 2000 slow-cookers didn’t appear to be for experimental use, but that’s precisely what distinguishes this case from one involving one-off or low-volume prototyping, where 3rd party vendors are contracted to provide prototypes for testing and evaluation. Those transactions fit much more comfortably under the experimental use provision.

  110. 52

    The accountant has nothing to sell–he does not own the invention, nor has he been authorized to make the invention, so his “offer” is void ab initio.

  111. 51

    I love that answer. So wrong that two judges disagree. Was there a chance that they would fail to build this device? If so, they should have put in a disclaimer that they may or may not deliver.

    We simply disagree. As I said, I think there will be gray areas, I just agree with the majority that this is not one of them. If you have to have a completed object ready to deliver, let’s just get rid of the on sale bar altogether.

  112. 50

    Think about delivery to an end customer, as opposed to delivery to the patentee so that the patentee could continue to work on the (at that time unresolved) sealing issue.

  113. 48

    If it used to be in the statute and now it isn’t, doesn’t that seem to mean that Congress meant for any offer for sale to apply?

  114. 47

    The statute doesn’t require that the offer for sale come from the patentee. To achieve the result that many want here, Congress needs to change the language of the statute; it’s supposed intent is not in the language.

    I read the case before I commented and the dissent changes nothing. There is no indication that this was experimental. Experimental implies that they might not be able to deliver because they need to experiment. All the patentee had to do here was say the word.

  115. 46


    Wouldn’t the part of your statement “unless they are with the authority of the patentee” trip you up here? After all, the supplier cannot make this sale (deem it ‘commericial’ or not) without the instigation/invitation/authority of the patentee.

    Make no mistake, a sale happened here. The nuance lies in characterizing the sale. As I have posted, there is an arguable point that (at least for the supplier) the sale was their ‘commerce.’ But the nuanced (and modern view) would (or at least should) recognize the evolution of supply chains and realize that the ‘commercial sale’ of old and the modern ‘commercial sale’ between businesses of today are not necessarily the same. Hence the call for a more nuanced application of the doctrine.

  116. 45


    You charge too quickly – read again my post and note how I put the issue: I was not making a declaration myself.

  117. 44

    Also proves the case against you here, 6. Note the subtle differences as well as the similarities between the argument against ‘commercial’ and ‘ready for patenting.’ Using the term ‘ready for patenting’ obscures rather than helps in this situation.

    Read the dissent, and see if you can develop the legal logic to see why. Note that you should not feel too bad in not getting this, as even the esteemed O’Malley missed it here. (hint: the majority is off because they went ‘magic word hunting.’)

  118. 42

    A less crazy thought experiment along those lines:

    An inventor has something that is ready for patenting. She confidentially explains an embodiment to her accountant in detail but certainly doesn’t offer to sell any to him. After getting a reasonable grasp on the embodiment he says, out of the blue: “I offer to make 200 of them and sell them to you for $2 each. I can deliver them in 120 days.”

  119. 41

    You’d be very wrong about that. If you don’t keep separate affiliates acting as arms-length actors, the IRS will eat you for lunch. It seems you chide “INANE” or whatever its name is fairly frequently for not having real world experience?

  120. 39

    Huawei: “Hey, Samsung, we hereby offer to contract manufacture your Samsung Galaxy S6 when you come out with it two years from now!”

    Samsung: “What the . . . ?”

    Apple: “On sale bar!!! FTW!!!”

  121. 38

    said in reply,

    I think the point aimed for in the example was that even sister companies have one external bottom line (and as such, are NOT considered arms-length transactions).

  122. 36

    The Supreme Court on this matter?
    Not. Going. To. Happen.

    actually used to be in that statute

    Ned, do you realize that you just weakened your own position by pointing out that such has been removed from the statute?

  123. 35


    I believe that majority would point out to you that “an” offer for sale simply does not have be from the patentee to count.

    As the dissent points out, the key here is not whether a sale took place, but rather, whether the sale counts as a ‘commercial’ sale.

    Strictly speaking (as I noted) entities exist for which this type of thing IS there commerce. But the nuanced view would take into account the reason (the old pre-AIA reason) for the doctrine. “A” sale, even to the patentee may still count for that doctrine, but as the dissent stresses, such was not the case here.

    I do think O’Malley missed one here. I realize that everyone (else) stumbles, but hopefully this is one of few such instances for her.

  124. 34

    Alas Ned, as Paul alludes to above, the AIA has thrown out (your versions) of Metalizing and Pennock. EXPRESSLY changed (note the title) is the notion of such personal bars.

  125. 32

    Before getting overly sympathetic with the owner of the fatally belatedly filed patent application here, note that it is not a good business practice for OTHER good reasons to give your novel product plans to some FOREIGN manufacturor before filing your own patent applications on them.

  126. 31

    Yes to line 1, but for AIA patents, depending on how AIA 102 gets interpreted, not being “available to the public” may well change the outcome.

  127. 30

    At the very least the court needs to recognize that the on sale bar is a personal bar. Activity by other does not count — unless they are with the authority of the patentee. That actually used to be in the statute at one time.

    A sale TO the patentee is not a sale BY the patented. Only sales BY the patentee to OTHERS count.

    This case and perhaps other Federal Circuit cases it relies (e.g., Linear Technology) on got it wrong. Once again, we need may need the Supreme Court to step and put these folks in their place.

  128. 28

    Les, as between sister companies it’s not an offer to make. It would be an offer to sell exactly as in HBB here.

    Accounts have to balance and separate affiliated companies don’t normally just give each other candy for free. They buy/sell such items to each other at arms-length just as they would do with non-affiliated companies.

  129. 27

    Here! Here!

    Some one needs always to remind the court of where the law came from and what it means. They are lost, adrift and worse by coming up with decisions like this.

    Read Metalizing. Then read Pennock. What were Hand and Story talking about?

    These geniuses don’t have a clue.

  130. 26

    I understood, and gathered, the point. I also added an additional point.

    That point is that all the rest of the concerns of ramping up production do not trump the concern of getting your application filed, if you want patent rights.

    Not to mention that these people had a whole year to write up 5-10 pages, make a few drawings and pay 50 whole dollars to file a prov. Takes like a few hours, max, to get something, anything, on file. You could probably draft this particular case while taking a not too particularly long sht. Well, a normal person could anyway.

  131. 25

    As usual, 6, you completely miss the point.

    Your ignorance is like a beacon on the path to truth (it screams “6 is in the weeds – do not come here”)

  132. 24

    “There are real life concerns in any ramp up to production volumes, ”

    Yeah, one of them is filing a patent before you bar yourself.

  133. 23

    “Offers to make should not be considered offers to sell.”

    I agree, but in this case they offered to make and then sell the units to the buyer corp.

  134. 22

    “I believe the “experiment” is in testing how well the supplier performs the requested and specified manufacturing services”


  135. 21

    Read the case, DR – especially the dissent.

    You may change your mind on what seems clear to you.

  136. 20

    Your lack of real world experience is telling IANAE. There are real life concerns in any ramp up to production volumes, and Les’ point is a valid one.

  137. 19

    …on the other hand, I have worked with suppliers whose entire commerical business is to development groups of other companies.

    Since the suppliers are each a self-contained entity, ‘commerce’ is in effect.

    To me, this highlights the need for a more nuanced look at the doctrine, which (shockingly) O’Malley misses and the dissent captures.

  138. 18

    This just has to be the rule. If you make an offer to sale, you represent that you can make that item. It would be different if one were commissioned to do research, but this is a clear order for something they could make anytime the customer gave the word.

    What’s the alternative? They have to deliver one? That’s a sale, not an offer. You have to prove they have one in the warehouse ready to ship? That seems unreasonable.

    I could see a gray area where it’s not clear whether the manufacturer really knew how to build the item and would need to experiment on the actual design, but this seems like a straightforward offer.

  139. 17

    No. In this case, an “offer to sell” is from a manufacturer to the public or a retailer. Offers to make should not be considered offers to sell.

  140. 16

    I believe the “experiment” is in testing how well the supplier performs the requested and specified manufacturing services.

    Please tell me that’s your idea of a joke, and not an invocation of Poe’s Law.

  141. 15

    “and the manufacturing department agreed to do so as soon at they got the go-ahead from the boss?”

    Or, “and the manufacturing department agreed to do so as soon as they got the cross-account numbers to charge the design team for the time and cost of making the 2000 units”?

    What if the design team are employees of Unit Maker Research, LLC and the manufacturing guys (and their equipment) belong to Unit Maker Makers, LLC, both wholly owned subs of The Unit Group, International?

    Can there be an invalidating offer to sell as between sister companies?

    Note many companies are set up with R&D and Manufacturing Ops in different subsidiaries.

  142. 14

    I believe the “experiment” is in testing how well the supplier performs the requested and specified manufacturing services.

    Would it have been an offer to sell if the design team had gone downstairs to the manufacturing department and asked THEM to make and deliver 2000 units according to the drawings under their arms and the manufacturing department agreed to do so as soon at they got the go-ahead from the boss?

  143. 11

    Experimental use might have been a good argument, but Hamilton Beach didn’t make it.

  144. 10

    Answered part of my question (“Anyone recall other cases”).

    After reading through the HBB opinion, I see they reference the Special Products case, which I also skimmed.

    Not sure the situations are exactly analogous, but there’s enough precedent there.

  145. 9

    Nope. Secret/confidential offers for sale are still bar clock events.

    But I don’t like this case in any event. Anyone recall other cases where the patentee having some other party make the product on their behalf got hung up in an “offer” quandary?

    I agree with J. Reyna. This is problematic. Companies that specialize in quick prototyping don’t do their work for free. The sell you their work. That’s what they’re in business for.

    Would it be a sham work-around to structure any contract with a prototyping house such that you were paying them only for their time and materials and the prototype itself is “complimentary”?

  146. 8

    Ridiculous. The on-sale bar is supposed to be an equitable doctrine that works against the patentee’s own offers for sale – sort of a codification of Metallizing Engineering or a variation on that theme. Here the court says that the inventor’s own disclosure to a third party became an offer for sale because the third party offered the thing for sale to the patentee based on the patentee’s own disclosure. What a crock. Dennis is right that this is bad policy all around.

  147. 7

    or did it agree to provide manufacturing services under the direction of HB?

    LOL, “manufacturing services”, and presumably “delivery services” and “ownership of manufactured product services” as distinguished from a sale of goods.

    That’s even funnier than “experimental use” for a pot with a lid, when the invention is self-enabling from the manufacturing specs.

  148. 6

    Did the “supplier” offer to “sell” HB slow cookers or did it agree to provide manufacturing services under the direction of HB?

    I think it was the latter and the court got it wrong, once again.

  149. 5

    Sunday Sunday Sunday! We’ve turned the Wal-Mart housewares department into a giant MUUUUD PIT!

  150. 4

    Experimental use? Is that like what Japan does with its whaling fleet? The boundary between commercial and experimental is an age-old one, in every advanced economy. I’m surprised that the boundary isn’t by now tightly defined by the higher courts of the USA.

  151. 3

    I might would if the order weren’t for so many. Obviously they were going to sell those guys, not simply experiment with them.

  152. 2

    Would this case have resolved differently if an NDA or confidentiality agreement was in place between the Supplier and the Applicant?

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