1 1 AIPLA Firm Logo American Intellectual Property Law Association Hamilton Beach Brands v. Sunbeam Products: Lessons Learned Naomi Abe Voegtli IP Practice in Japan Committee Pre-Meeting Seminar Phoenix AZ January 28, 2014

2 2 AIPLA Firm Logo Agenda Background: Pre-AIA On-Sale Bar Hamilton Beach Brands v. Sunbeam Products, No (Fed. Cir. Aug. 14, 2013) Effects of America Invents Act (“AIA”) on On-Sale Bar Jurisprudence Lessons Learned

3 3 AIPLA Firm Logo Background: On-Sale Bar Pre-AIA 35 U.S.C. §102(b): On-Sale Bar A person shall be entitled to a patent unless -... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or....

4 4 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products Slow cookers with “clips” U.S. Patent No. 7,947,928 Hamilton Beach: Stay or Go® Sunbeam: Cook & Carry®

5 5 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products Is the ‘928 patent invalid under the on-sale bar? Feb. 8, 2005Hamilton Beach issued a purchase order to is supplier for manufacture of its Stay or Go® slow cookers Feb. 25, 2005The supplier, via , confirmed that: (1) it had received the purchase order and (2) it would begin production after receiving Hamilton Beach’s release Mar. 1, 2006Hamilton Beach filed U.S. Patent Application No. 11/365,222, which Hamilton Beach claimed to be a grandparent of the ‘928 patent Hamilton Beach gave its release to the contract manufacturer to begin a production

6 6 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products Decided : The Feb. 25, from the supplier to Hamilton Beach was a triggering offer for sale, and thus the ‘928 patent is invalid under the on-sale bar of pre-AIA 35 U.S.C. §102(b) Pfaff v. Wells Elecs., Inc, 525 U.S. 55 (1998) The on-sale bar applies when two conditions are satisfied before the critical date: 1.The claimed invention must be the subject of a commercial offer for sale; and 2.The invention must be ready for patenting

7 7 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products Commercial offer for sale –Actual sale is not required –An attempt is sufficient, if it is “sufficiently definite that another party could make a binding contract by simple acceptance.” “Ready for patenting” –An invention is “ready for patenting” when prior to the critical date: 1.the invention is reduced to practice; OR 2.the invention is depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention

8 8 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products There is no “supplier exception” –It is irrelevant that the commercial offer for sale was made to Hamilton Beach by its own supplier A commercial offer for sale made by a foreign entity that is directed to a U.S. customer at its place of business in the U.S. may serve as an invalidating activity

9 9 AIPLA Firm Logo Hamilton Beach Brands v. Sunbeam Products Dissent (Judge Reyna) Experimental use exception to the on-sale bar –Is the offer for sale commercial in nature or for purely experimental purposes? Expressed “greatest concerns” over the implications for future innovators, especially for “small enterprises and individual inventors who lack in-house prototyping and fabricating capabilities.”

10 AIPLA Firm Logo Effect of AIA on On-Sale Bar Jurisprudence 35 U.S.C. §102 (a) NOVELTY; PRIOR ART—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.... (b) EXCEPTIONS— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or....

11 AIPLA Firm Logo Effect of America Invents Act (“AIA”) on On-Sale Bar Jurisprudence Does one-year grace period apply to on-sale bar? –Highly likely: legislative history, USPTO, statutory construction USPTO: Third-party supplier’s commercial embodiment that includes “trivial” or “obvious” modification will create an immediate bar not saved by the grace period. Secret (private) v. public sale –According to the USPTO, post-AIA, a “secret sale... does not qualify as prior art.” AIA Examination Guidelines, 78 Fed. Reg , (Feb. 14, 2013) –Statutory construction “or otherwise available to the public”

12 AIPLA Firm Logo Lessons Learned File patent applications prior to any outside disclosure of an invention regardless of whether the recipient is bound by a confidentiality agreement –File patent applications prior to sending specifications/orders to a contract manufacturer even for a purpose of producing prototypes for experimental purposes Avoid using contract manufacturer –Often not feasible especially for small businesses and individual inventors

13 AIPLA Firm Logo Thanks for your attention! Questions? Naomi Abe Voegtli SAP This presentation is my personal view and does not purport to reflect views of SAP or its affiliates.