A Blog About Intellectual Property Litigation and the District of Delaware

Today, I present a gift to the many patent law professors that read this blog every morning (presumably). I give you a truly odd fact pattern that can be inserted neatly into your next exam, and which is guaranteed to annoy your students. All I ask in return is that you require those students to subscribe to the blog in perpetuity, on penalty of failure.

AI-Generated, displayed with permission

Deal? Deal.

The issue here was the on-sale bar. As a quick refresher, that's this bit of 102:

A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

The patents in W.R. Grace & Co. v. Elysium Health, Inc., C.A No. 20-1098-GBW (D. Del. Aug 30, 2023) covered distinct crystal forms of a compound called "NCRI." Shortly before the critical date of July 24, 2013, the patentee had agreed to sell some NCRI to a customer. There was a PO and everything.


Grace didn't finish manufacturing the NCRI until after the critical date, and obviously the customer didn't receive the finished product until shortly after that. It was undisputed that the NCRI the customer ultimately received was the claimed form. Sounds like an open and shut on-sale bar case.

But! Look closely at that PO, and you'll notice that it does not specify what form of NCRI the customer was buying (indeed, it doesn't even say NCRI, that was found only by cross referencing reference number). Accordingly, Judge Williams found that there was a factual question about whether the offer for sale memorialized in the PO was in fact an offer to sale of the claimed form and denied the defendant's motion for summary judgment accordingly:

Notably, however, the purchase order above does not request Form I specifically and does not include the requested chemical name. Thus, a genuine issue of material fact exists as to whether the offer for sale of Batch 13201 was an offer for same of Form I. While it is known now that Batch 13201 is Form I, the manufacturing process may not have begun until after the critical date . . . The law requires that the invention must have been ready for patenting

W.R. Grace & Co. v. Elysium Health, Inc., C.A No. 20-1098-GBW, 25 (D. Del. Aug 30, 2023).

See, it's a tricky one. The critical date is even right around when the effective date for the AIA! Your students are going to hate you AND me! Remind them to subscribe.

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