Digest of The Medicines Company v. Hospira, Inc., No. 2014-1469, 2014-1504 (Fed. Cir. July 2, 2015) (precedential). On appeal from D. Del. Before Dyk, Wallach, and Hughes.
Procedural Posture: Plaintiff appealed the district court’s claim construction and non-infringement findings. Defendant cross-appealed the district court’s determination that the asserted claims are not invalid under the on-sale bar, obviousness, or indefiniteness. CAFC reversed the district court’s validity determination and held the asserted claims invalid under the on-sale bar.
- On-Sale Bar: The on-sale bar of 35 U.S.C. § 102(b) applies when, before the critical date, the claimed invention (1) was the subject of a commercial offer for sale; and (2) was ready for patenting. More than a year prior to the filing date, Plaintiff paid a contractor to perform services that resulted in the patented product-by-process, and thus a commercial “sale” occurred. Since the invention was sold, it was reduced to practice, and thus ready for patenting. Further, the experimental use doctrine did not bar the application of the on-sale bar, since “[e]xperimental use cannot occur after a reduction to practice.”