On Sale Bar – Sales require Consideration, not necessarily Money Payment

by Dennis Crouch

On Sale Bar: The Federal Circuit’s recent decision in Sunoco Partners v. U.S. Venture (Fed. Cir. 2022) focuses on the classic patent law question of whether the inventor’s pre-filing sales activity serve to bar the patent from issuing.  Was the agreement an “offer to sell” and was it excused by the “experimental use” exception.

Sunoco’s patents cover systems for blending butane into gasoline.  In a bench trial, N.D. Ill. Judge Pallmeyer sided largely with the patentee–finding US Venture liable for willful infringement and awarding $6 million in damages.  Both sides appealed, with the infringer wanting to escape liability and the patentee wanting more money.

The “on sale bar” prohibits patenting an invention that was placed “on sale” prior to the application being filed. The patents here are pre-AIA and so the on-sale bar included a one-year pre-filing grace period.  For newer patents, the one-year grace-period is limited to pre-filing sales that can be linked-back to the inventors.  “On sale” is defined by the courts as a “commercial offer for sale” of an embodiment that takes place once the invention is “ready for patenting.”  Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998).  In addition, sales/offers can be excused if they qualify as “experimental use.” City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126 (1877) (delay excused by “bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended”). In this analysis, the court conducts a wholistic totality-of-the-circumstances analysis in considering whether the pre-filing sales were primarily for experimentation or instead primarily for profit.  Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002).

Application of the on sale bar is a question of law as is the underlying issue of whether the experimental use exception applies.  However, underlying factual conclusions made by the lower court should be given deference on appeal.

The Facts: On February 7, 2000, the inventor’s company (MCE) offered to sell and install a butane-blending system to Equilon.  In the agreement, Equilon wasn’t actually pay anything for the machine, but would agree to purchase substantial butane from MCE over the next 5 years.  The Feb 7 date is important.  The original patent application was filed Feb 9, 2001–one year and two days later and outside the one year grace period.

On appeal, the Federal Circuit looked to the contract and its own prior precedent to conclude that a purchase agreement is a classic offer to sell.  The proposal expressly stated that “ownership and title to the Equipment” would be conveyed.  The district court found effectively that the equipment was being given away since the “the contract did not require Equilon to pay MCE anything in exchange for the system in the normal course of events.”  On appeal, though the Federal Circuit sided with the patent challenger–holding that the contract required transfer of title as part of the consideration for Equilon’s agreement to purchase butane.  Using its de novo power, the appellate court rejected the district court’s offer’s interpretation and found that it constituted an offer for sale.  The court cited a prior decision on point. Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315 (Fed. Cir. 2002) (offer to make a “remote database object . . . in exchange for four months full time employment or no more than $48,000” was a “commercial offer for sale”).

Experimental use: Even if thought it is an offer for sale, it could be excused based upon a conclusion of experimental use.  Here, the court’s test is whether the offer was “primarily [for] experimental purposes.”   The offer included a sections for both “pre-installation testing” and “post-installation testing.”  On appeal, the Federal Circuit found that those contract provisions do not necessarily indicate any intent to experiment with the system design or to ensure that the invention works.  Rather, those testing provisions could instead simply be for ensuring that the particular embodiment was tuned correctly.  Further, the Federal Circuit found that there was no reason why the sale was needed to further any design experimentation.

Sunoco’s analogy to the Supreme Court’s seminal City of Elizabeth case falls flat. While “the nature of a street pavement,” the invention in that case, “is such that it cannot be experimented upon satisfactorily except on a highway, which is always public,” Sunoco does not dispute that MCE’s pre-installation testing was conducted at [a different contractor’s site], and could have been performed before offering to sell the system.

Slip Op.  The district court had excused the prior offer as experimental use, but on appeal, the Federal Circuit reversed that as well.  “These tests are not experiments, but are acceptance tests to confirm that the equipment is properly blending butane—that is, that it is working as promised.” Id.

Here, the testing described in the Equilon agreement occurred to effectuate the sale, rather than the sale occurring to occasion the testing. Therefore, we conclude that the Equilon agreement was an offer for sale made to commercially exploit the invention rather than primarily for experimental purposes. On that basis, we reverse the district court’s experimental-use determination and vacate its infringement determination.

At trial, the district court did not decide whether the invention was “ready for patenting” at the time of the offer.  That second prong of Pfaff could still excuse the prior offer on remand.  The defense will need to show either (1) reduction to practice or (2) a sufficient and enabling written description of the invention — one of which must have occurred prior to the offer date.

= = =

This case is one where savvy patent attorneys would have helped: (1) filing the patent application earlier; or (2) drafting the contract so that it is not a “sale.”

 = = = =

Software License: One question I have in this case involves the onboard software. The patent claims here include software elements: a “process control unit [that] generates a ratio input signal …”  The sales contract though was quite clear that the equipment was being sold, but the software was only subject to “a license.”  An offer to license is distinct from an offer to sell.  However, the Federal Circuit has several times suggested that licensing of software code can constitute a “sale.”

[A] commercial transaction arranged as a “license” or a “lease” of a product or a device … may be tantamount to a sale (e.g., a standard computer software license), whereupon the bar of § 102(b) would be triggered because “[t]he product is … just as immediately transferred to the ‘buyer’ as if it were sold.”

In re Kollar, 286 F.3d 1326, 1331 n. 3 (Fed. Cir. 2002) quoting Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1053 (Fed.Cir.2001) (Judge Lourie Concurring).  In Minton v. National Association of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003), Judge Lourie wrote for the majority and concluded that a “lease” of software constituted an invalidating offer for sale.  These cases (and others from the Federal Circuit) appear in tension with the consistant refrain that the on sale bar is guided tightly by Article 2 of the UCC and its focus on “sale” rather than licenses or leases.

= = =

Enhanced Damages: On appeal, the Federal Circuit vacated the district court’s award of enhanced damages — finding an abuse of discretion. In particular, the district court had excluded testimony and opinion evidence from the defendant’s attorney John Manion because of his confusion during testimony. On appeal, the Federal Circuit concluded that the confusion was created by the cross-examining attorney who had created a new term on the spot. “The record shows that Manion was merely confused by an unfamiliar term—’online rack tank’—that Sunoco’s attorney was using.”  Id.  On remand, the court will need to reassess if the infringement remains sufficiently egregious to allow for enhanced damages.

Judge Prost wrote the opinion here, joined by Judges Reyna and Stoll.

= = =

Thanks to the comment from kotodama. I have updated the post to correct a date error.

67 thoughts on “On Sale Bar – Sales require Consideration, not necessarily Money Payment

  1. 11

    It’s too bad this blog does not have an ethics page that could hold a discussion of the possible legal ethics impacts facing the person who leaked the Supreme Court draft document.

  2. 10

    Wait — what?! You mean “on sale bar” isn’t referring to . . . drinks at a discount?

    1. 10.1

      You’re thinking about “bar review”. which occurred 3 pm – 7 pm each weekday night during law school.

  3. 9

    The district court found effectively that the equipment was being given away since the “the contract did not require Equilon to pay MCE anything in exchange for the system in the normal course of events.”

    Somebody is missing something here, because giving something away to the public would unquestionably be “otherwise making available” so either this was poorly analyzed, poorly defended, or poorly argued.

    1. 9.1

      I mean lets say that you view the facts as the district court did that even though there was only one document there were in fact two separate deals here:

      (1) a deal to buy butane with its own bargain and consideration and
      (2) a wholly unrelated giving away of an embodiment of the invention

      Assuming that (2) does not constitute a sale because there is no consideration, why is (2) not just a dedication to the public by making it available?

      1. 9.1.1

        B/c it could be experimental use.

        FWIW, splitting the transaction makes it easier to see experimental use happening i.e., the reason business A gave something valuable away was because the business B was providing them with data, know-how, feedback, etc.

        1. 9.1.1.1

          +1 OC

        2. 9.1.1.2

          It can’t be experimental use if there’s no consideration, that’s the point.

          If the district court determines there’s no consideration for transferring the embodiment it – by definition – is open to the public and not an experimental use. How can me giving you something with no considered promise to limit use or disclosure be anything but a making available to the public?

          You can have consideration for a sale, and you can have consideration (usually secrecy and information) for an experiment, but a lack of consideration is a dedication to the public. We don’t have the district court opinion in front of us, but clearly “there was no consideration therefore it is not invalid” is a logically incorrect outcome regardless of whether it’s classified as a sale. I’m surprised it wasn’t argued. The defense missed the forest for the trees.

          1. 9.1.1.2.1

            Unless (of course) the district court’s determination of “no consideration” has glossed over or otherwise missed the points provided by OC.

            Random, please stop pontificating – I am actually embarrassed FOR you.

            We don’t have the district court opinion in front of us, but clearly…

            Really?

          2. 9.1.1.2.2

            It can’t be experimental use if there’s no consideration, that’s the point.

            This is a non sequitur. Think City of Elizabeth. Where do we find consideration there?

            1. 9.1.1.2.2.1

              ? There was no transfer in city of Elizabeth, it was done by the inventor themselves.

              This is a pretty simple contract issue – if a contract were to explicitly say “you may use this embodiment for experimental and also occasionally for non-experimental uses” I assume you’d have no trouble finding it to be prior art. Now explain how a contract that imposes no duty on the recipient whatsoever can be a less-restrictive grant.

              1. 9.1.1.2.2.1.1

                *more restrictive

              2. 9.1.1.2.2.1.2

                City of Elizabeth explicitly says that consideration is irrelevant to the analysis (97 U.S. 126, 135, “[I]f the inventor allows his machine to be used by other persons generally, either with or without compensation,… then it will be in public use… within the meaning of the law,” emphasis added). Nicholson installed his sample pavement on a public road in Boston (Id. at 136, “Nicholson wished to experiment on his pavement…; and the only mode in which he could test it was to place a specimen of it in a public roadway”). The contract terms (if there was a contract) are not even discussed, presumably because they are irrelevant.

                if a contract were to explicitly say “you may use this embodiment for experimental and also occasionally for non-experimental uses” I assume you’d have no trouble finding it to be prior art.

                Not at all. Once again, the contract terms are relevant, but scarcely dispositive. If the actual course of conduct shows that the inventor really was loaning it out for beta-testing, then that is good enough. (Id. at 135 “Whilst the supposed machine is in such experimental use, the public may be incidentally deriving a benefit from it. If it be a grist-mill, or a carding-machine, customers from the surrounding country may enjoy the use of it by having their grain made into flour, or their wool into rolls, and still it will not be in public use, within the meaning of the law.”)

                1. “[I]f the inventor allows his machine to be used by other persons generally, either with or without compensation,… then it will be in public use… within the meaning of the law,” emphasis added

                  You miss the importance of the sentence. It is the non-restricted use that places the embodiment into the hands of the public. A transfer that is not limited to an experimental purpose (which is achieved by secrecy considerations) is simply an availability to the public.

                  The contract terms (if there was a contract) are not even discussed, presumably because they are irrelevant.

                  There was no contract because he did it himself. There’s no second party the embodiment was transferred to. It’s just not an analogous case.

                  If the actual course of conduct shows that the inventor really was loaning it out for beta-testing, then that is good enough.

                  Just to be clear here: If I were to hand you an embodiment of my invention and expressly told you that you could do whatever you wanted with it, and you just happened to only use it experimentally and report your findings to me, do you think that is not prior art? In other words, do you think the status as prior art turns upon what the recipient *actually does* as opposed to *what the inventor conveyed* to the recipient?

                2. The whole public was allowed to drive over the pavement at issue in City of Elizabeth. How much more general a use could one get.

                  The status of the conveyed embodiment as prior art does not turn on what the recipient does with the embodiment. Nor does it turn on what the inventor conveyed. It turns on what the inventor does post-conveyance.

                3. The whole public was allowed to drive over the pavement at issue in City of Elizabeth. How much more general a use could one get.

                  We appear to be talking past each other.

                  There are three relevant prior art issues here: on sale bar, public use bar, and the catchall otherwise available to the public.

                  City of Elizabeth is a public use – the inventor allowed the public to use the invention.

                  The instant case is a question of on sale. As the headline states – a sale requires consideration. Because the District court viewed the contract between the two parties is a bifucated manner, the district court found no consideration for the transfer of the embodiment, and therefore no sale of the embodiment. The CAFC disagreed, saying that there was consideration and therefore the on sale bar triggered.

                  I posit simply that it is irrelevant whether there is consideration, because if there is no consideration there is simply a conveyance that is not subject to any limitation. That general conveyance is a “making available to the public” that triggers the catchall. In other words, the lack of consideration may be a defense to the on sale bar, but not a defense to being prior art *under the AIA.* It simply shifts the theory of prior art from one bucket to another.

                  City of Elizabeth does not have a sale, and therefore isn’t related to this case, but even if it were it is pre-AIA and therefore cannot inform upon the legal relevance of the catchall vis-a-vis a “gift” (i.e. a non-sale due to a lack of consideration).

                  The status of the conveyed embodiment as prior art does not turn on what the recipient does with the embodiment.

                  I don’t know of a case that says that, but I can certainly imagine just from a fairness standpoint that this is the case. For example, if I contract you to secrecy for experimental use and you break the contract and publish the inner workings, I can imagine that that publication would not be prior art to my invention.

                  Nor does it turn on what the inventor conveyed. It turns on what the inventor does post-conveyance.

                  That makes no sense. I know of no recapture doctrine in patent law. If I simply abandon my patent rights by making something available to the public without reservation, I shouldn’t be surprised when my dedication to the public is cited as prior art against my filing. If the inventor conveys an unlimited right (i.e. what would be a sale but-for the lack of consideration) then the inventor has unquestionably made something available to the public. Presumably the recipient could allow others to make and use the device at will, as the inventor has not reserved any legal right to prevent them from doing so. How is that not totally in keeping with being prior art?

                  Do you have a case that says that it turns upon what the inventor does afterword as opposed to, for example, the inventor’s later behavior being evidence of what was previously conveyed? I can buy that later action may evidence that the deal that was struck was experimental in nature (when there is not better evidence of the deal). I cannot buy that an inventor can “undo” a sale by later coming back and asking for (but not compelling, as there would be no contractual right to fall back upon) result data in an effort to post-facto turn a sale into an experiment.

                4. Random – as usual, you are too focused on what you want to say and not grasping the situation.

                  You want to focus on your three buckets, but are not grasping the experimental exception.

  4. 8

    why did you write your summary in this way? It is very hard to follow and seems to repeat itself.

  5. 6

    Kotodama: do you have a brain? I am not sure. It is more likely some lefty person operating the copy machines at the Supreme Court leaked it, and not any justice. But of course that makes no sense to your brainless head.

  6. 5

    Patent holder X offered Pharmaceutical Company Y for an exclusive worldwide license for patented Compound A, a drug candidate. Then, X and Y entered into an agreement that grants Y the license for A and Y made an initial payment for licensing rights. Post market entry, Y will make milestone and royalty payments to X. In such a common license case in pharmaceuticals, would the license offer or its agreement potentially trigger the On-Sale Bar?

  7. 4

    Bros I’m hearing a bunch of rumors that roe v wade is now deadzor, anyone else hearing anything or whatnot?

    1. 4.1

      The Politico story is about a February draft, and is more reflective of the oral hearings than anything else.

      That ‘this**’ is being bandied about as some ‘salacious’ Great Reset has more to do with the Liberal Left panic mode than anything else.

      ** the story that should grab the headlines is practically LESS about the content of the “abortion debate” and MORE about the fact that this may well be the first time EVER that the Supreme Court’s intermediate ‘thought evolution’ has been thrown out into the public for some emotional gaming.

      Whatever else one may think on the merits (and I do permit that people of conscience may be split on those merits), the MEANS being employed here does not speak well of those making this leak.

      One logical result — for all the “fairness” that can be screamed for — is that total and full sunshine be made the norm for EVERY decision henceforth.

      If that is NOT taken as the natural consequence, then recriminations should be even more severe.

      1. 4.1.1

        Whatever else one may think on the merits (and I do permit that people of conscience may be split on those merits), the MEANS being employed here does not speak well of those making this leak.

        haha. The classic whataboutism of a mind that can’t handle two thoughts at once. Republicans come up with a convoluted standard for suggesting a democratic president should not get his pick to turn the court liberal. Republicans immediately reverse the standard when ginsberg dies to put another on the court to achieve a never-before-achieved court packing. Those two “justices” then form the majority of the greatest reversal of individual rights in the history of the nation, and apologists expect the response to be conventional?

        Why would there be a conventional response to a series of extremely unconventional actions? A whole slew of sciences from physics to ethics recognize the naturalness of an equal an opposite reaction or a proportionate response.

        It’s just the opposite – when something extreme occurs and the response is to treat it like any other interaction THAT does not speak well of the responder.

        1. 4.1.1.1

          You use the phrase “whataboutism” and it is abundantly clear that you do not understand what that phrase means.

    2. 4.2

      But if you want to take guesses as TO “the leak,” my bet would be on one of the clerks of the ultra-liberal wing of the Court. Maybe one that feels Ends justify any Means.

      1. 4.2.1

        (1) There is no ultra-liberal wing of the Court; I’m not sure if there’s ever been one really, but certainly not at present.

        (2) Why on earth would any of the liberalish Justices release a draft that’s completely one-sided with arguments against their position? It makes no sense once you ponder it for a few moments. The far more likely explanation is as a trial balloon by one or more RW Justices. We saw that plenty of times in the TP admin where they deliberately “leaked” an unpopular initiative before it got implemented, or, quite often, abandoned. Also, RWers in state gov’t and lower courts have been looking forward to this for a long time, so this is a “sneak preview” of sorts letting them know to keep the “faith”. Finally, RWers get to have it both ways by getting out their desired sneak preview and simultaneously using it as a weapon to accuse the liberal(ish) side of leaking, thus making them (RWers) “victims” in the process.

        1. 4.2.1.1

          Your (1) is plainly false. After that assertion the rest of your post was ign0red as having zero credibility.

          1. 4.2.1.1.1

            (1) Is that right? Who are your examples of so-called ultra-lib individual Justices, let alone a “wing”? I’m curious!

            (2) OK, so you’re not capable of responding? Got it!

            1. 4.2.1.1.1.1

              Easy- Breyer, Sotomayor, and Kagan.

              I am more than capable of responding – but you are so obviously in denial of reality, of what use would such do?

              1. 4.2.1.1.1.1.1

                Breyer and Kagan are nobody’s idea of ultra liberal. I give that an ultra LOL. Even Sotomayor has her fair share of conservative opinions at least joined. Probably some authored too. Thanks for playing though.

                1. And still crickets on your explanation of why any of the centrist squish Justices would leak. How’s it going on that?

                2. Your denial of reality persists – those are not crickets.

                  Oh wait, you are one of those as pictured in Musk’s Overton Window meme as sprinting to the Left. No wonder you want to disclaim any existence of the Far Left on the bench.

                  Sorry, but no — your sprinting does not in fact change what it means.

                  I know that this escapes your cognitive abilities — but that is definitely a “you” problem.

                3. “Every single justice on the court is an originalist,”

                  lolwut? How do you figure? Even in just the topic of the day, literally any of them that don’t support overturning Roe are not “an originalist”. “An originalist” interprets the document as it was intended to mean when written as best can be seen from the historical context. Abortion certainly was not seen as prohibited by the constitution until SUPER late.

                4. 6’s comment appears to have landed on the wrong sub-string, but is otherwise correct in pointing out the inanity of those who (somehow) want to deny reality as to the philosophical proclivities of the members of the US Supreme Court.

                  It is only by sprinting farther Left can these folks even advance the absurd view that there are no ultra liberals on the bench.

                  Way to verify the Musk meme, guys!

              2. 4.2.1.1.1.1.2

                Easy- Breyer, Sotomayor, and Kagan.

                Breyer, Sotomayor and Kagan are simply taking the position that five republican justices took in the 1970s and that have been upheld by over a half dozen more republican justices since. Just like Obamacare would “destroy america” with its socialism despite being the republican plan from a decade earlier. It must suck to be so easily frightened out of your wits all the time.

                Every single justice on the court is an originalist, so yeah there’s no “ultra liberal” justices. You don’t see anyone interpreting equal protection under the law to actually mean the definition of those words, for example. There’s not a single justice that ignores suspect classes and differently heightened scrutiny despite the words of the amendment actually giving no leeway for that.

                He’s taught in his school
                From the start by the rule
                That the laws are with him
                To protect his white skin
                To keep up his hate
                So he never thinks straight
                ‘Bout the shape that he’s in
                But it ain’t him to blame
                He’s only a pawn in their game

                1. Way to prove my point by sprinting hard Left there Random.

                  I suppose I (and Musk) should say, “Thank you.”

        2. 4.2.1.2

          If Kotodama thinks there is no ultra left wing on the Supreme Court, he must be smoking some strong wacky weed. Sotomayor and Kagan, and now Brown for sure, are as left as you can get.

          1. 4.2.1.2.1

            And Kotodama’s comment (he must know some Japanese words) about a trial balloon is just pure looney bin speak. Again too much wacky weed being smoked by Kotodama.

            1. 4.2.1.2.1.1

              I’d love to know exactly why that’s a bad theory, especially in light of the example I gave where it happened numerous times in a similar situation done by the same general crowd. You and anon are long on rhetoric and very short or nonexistent on actual reasoning.

              1. 4.2.1.2.1.1.1

                kotodama,

                Your comment finally cleared the buffer, and I have to say that you are just not paying attention as I have provided abundant reasoning — and not just my own, but from an expert in the field: Dr. James Lindsay.

                Further, YOU have established NO position as you seem to want to allude to in your May 3 response to PL. – Your accusation then of “nonexistent” is merely a projection of your own position.

        3. 4.2.1.3

          Why on earth would any of the liberalish Justices release a draft that’s completely one-sided with arguments against their position?

          To gin up popular opposition in the hopes that a public backlash would tempt the wobbliest member of the current 5-justice majority to switch. This is not that complicated an idea.

          I do not expect that any of the justices are behind this leak. Indeed, I am not super convinced that there has actually been a leak. I would not be surprised if this “leak” were a hoax, perpetrated by someone trying to gin up a public backlash during deliberations. If it is an honest to goodness leak, however, then it was probably a clerk (less to lose for one of them) than a justice.

          1. 4.2.1.3.1

            “I would not be surprised if this “leak” were a hoax”

            Too well written, it’s obviously the drafting of a federal judge/justice. Not just anyone could put that document together. Gotta have a. the edumacation b. the internal knowledge of how decisions are written (formatting etc) c. the specifics of the case at hand d. lots besides. You’d be talking about a major hoaxing effort. It’s 99% more likely to just be a butt-blasted clerk wanting to try her wittle heart out to bang chad before trying to lock down that tasty tasty provider w no fear of pregnancy, all while “doing her career” clerking. That’s who you’re looking for internally. Watch and see, it’ll be that, or a former such girl.

            1. 4.2.1.3.1.1

              I see that the Chief Justice has confirmed the authenticity of the leaked draft, so clearly my hoax hypothesis is out. As I said, I hope that the source of the leak is identified, although I am not certain that the consequences of being identified will be as uniformly negative as they should be.

              1. 4.2.1.3.1.1.1

                A draft opinion is confidential–not classified, so the direct consequence for an employee with authorized access would be termination. Unauthorized access will probably get close to the maximum possible punishment.

                Ultimately however, I think the personal consequences are likely to be small because I don’t think the general public will appreciate the magnitude of this breach the same way as lawyers.

                1. “Ultimately however, I think the personal consequences are likely to be small because I don’t think the general public will appreciate the magnitude of this breach the same way as lawyers.”

                  I suspect my own lack of concern is less because of my lack of a JD and more due to the other recent breaches in decorum surrounding SCOTUS.

                  This court was crafted via political gamesmanship. It’s hardly shocking that its internal processes might become subject to political gamesmanship. Wake me up when the justices are holding press conferences to characterize their colleagues’ positions during deliberation.

                2. For a clerk, violating the sanctity of the Supreme Court will surely carry legal ethics sanctions.

                  This person will likely never practice law again.

                3. In the words of Roberts, “singular and egregious”

                  Betrayal of confidence is not something one wants on their legal record.

                4. Yeah you’d hate to have legal training and questionable ethical standing. That would only qualify you for (checks notes) being an associate justice of the Supreme Court.

                5. Random,

                  You’d better note that “(checks notes)” is NOT sufficient if those notes are but the script of the Liberal Left narrative.

                  In the immediate case, you should realize (your notes likely miss this), that accusations alone are not enough, and that you are missing the point in your hurry to be smarmy that I had indicated that “on the record” would be in play.

                  You like to pontificate on legal items with a complete disregard of the legal settings.

                  That’s not a good look — no wonder why you whine so much in your “battle” with attorneys that attorneys know and use the law.

              2. 4.2.1.3.1.1.2

                “although I am not certain that the consequences of being identified will be as uniformly negative as they should be.”

                Obviously, they will be a hero to most non-lawl lefties for “sounding the alarm”, as they don’t understand the internals of the courts.

              3. 4.2.1.3.1.1.3

                Update: Here’s the best speculation as to the leaker. Breyer’s Clerk, fairly hardcore abortion advocate. See bunch of tweets here. There’s one other dude that’s somewhat suspect, but this girl is like 90%+ the one that did it. Name is Elizabeth Deutsch. Also fits the exact profile I had predicted.

                link to twitter.com

                1. 6 – I am in possession of information also implicating a different Liberal Justice’s clerk – but as this is a rather serious issue, I will choose to not speculate or share that information.

                2. I would doubt if she acted with someone else as well. But her being bros with the journo that ran the story pretty well ensures that she’s involved, if only tangentially.

                3. Thanks 6 – but are not all of those “creds” merely that “of the center?”

                  (not to you – to those who refuse to recognize the reality of US politics)

          2. 4.2.1.3.2

            ?however, then it was probably a clerk (less to lose for one of them) than a justice.

            I’d say the exact opposite:

            1) The clerks are just beginning their careers, and any firm that might have business before the Court more-or-less will need to blacklist them. That rules out a Big Law career (OTOH, this stunt might be a advantage in academia/NGO careers)

            2) What’s the risk wrt a Justice? Impeachment?? From *this* Senate…LOL. And that’s assuming it’s not Breyer.

            That said, we shouldn’t forget the regular staff (secretaries, IT, etc.) Nor should we ignore the possibility of a fat-fingered email (particularly given how modern email clients hide the full addresses). Heck, I wouldn’t even rule out the FBI nowadays.

            1. 4.2.1.3.2.1

              Fake edit

              The clerks may also risk disbarment for leaking client confidential material.

            2. 4.2.1.3.2.2

              Three brief responses:

              1) I would be delighted if the leak source were blackballed, but consider me skeptical. When the source is identified, s/he will be a hero to some and a villain to others. There will be plenty of firms who market themselves to the “hero” crowd, and will be delighted to garner the publicity that will come from hiring the “hero.”

              2) SCOTUS clerks go on disproportionately to academic careers, anyway.

              3) It is surprisingly difficult to get disbarred. This will not rise to that level. Indeed, some bar authorities will celebrate the source as a hero. There may be no discipline at all.

              1. 4.2.1.3.2.2.1

                Please put your Activist Privilege aside Greg.

                There is zero chance of your 3) coming to pass. One simply cannot bypass legal ethics just because “The Ends.”

                That you would even think this is shameful.

    3. 4.3

      [A]nyone else hearing anything or whatnot?

      Obviously we are all hearing the same rumors. Indeed, the news can scarcely talk of anything else.

      If this leak is real (i.e., not a hoax), it is a sad day for the Court. Leaking drafts is no way to run a court, regardless of whose ox gets gored. I hope that if the leak is real, that the culprit is identified and properly shamed (although, regrettably, we seem to be a post-shame society, so the culprit will probably win a plum job in reward for the misdeed).

  8. 3

    Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998) is an interesting example of what can happen when the Supremes take up a patent case. I remember an AIPLA talk about it from from one of its attorneys. He said the decision was a complete surprise, not argued for by either party!
    [And, I think, a much clearer “on sale bar” test that was discernable from prior Fed. Cir. decisions – a test of an invention being both “ready for patenting” and the subject of a “commercial offer for sale.”

  9. 2

    “The Feb 9 date is important. The original patent application was filed Feb 11, 2021”

    I agree the dates are very important. That’s why I want to point out that, AFAICT from the opinion, the offer to sell was made on Feb. 7, 2000, whereas Feb. 9, 2000 is the critical date. And correspondingly the original application was filed on Feb. 9, 2001.

    Now someone needs to invoke Muphry’s Law and find a mistake in this comment.

    1. 2.1

      Thanks! Good thing I wasn’t the docketing clerk here.

      1. 2.1.1

        You’re welcome! And while I hate to return with another round of bad news, one date still has a problem. In “Feb 9, 2021” the year should actually be 2001. (…an On-Sale Odyssey)

  10. 1

    last line of, “Judge Prost wrote the opinion here, joined by Judges Reyna and Stoll.” — Kudos.

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