Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024)
In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court, finding that the Appellee, Booking Holdings Inc. (Booking), had not infringed the Appellant, DDR Holdings LLC’s (DDR Holdings) patent for e-commerce web pages.
The case involved four patents, including the main patent at issue—the ’399 patent—which relates to generating composite web pages that integrate visual elements of the host website with product information from third-party merchants. The primary issue on appeal pertained to claim construction.
ALSO THIS WEEK
Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc., Appeal Nos. 2022-2299, -2300 (Fed. Cir. Dec. 10, 2024)
In this case, the Federal Circuit found that patentee Crown Packaging’s asserted claims were invalid because a device covered by those claims had been on sale in the U.S. more than one year before the patents’ earliest priority date. Crown’s patents were directed to a machine used in the manufacture of metal beverage cans. At issue was a pre-critical date “quotation” that Crown had issued in connection with a contemplated transaction, which the Court found was an invalidating offer for sale.
To be subject to an “on-sale bar” under pre-AIA 35 U.S.C. § 102(b), the patented invention has to have been the subject of an offer which, if accepted, would create a binding contract for sale. Crown Packaging had argued—and the district court had agreed—that its “quotation” was not an offer for sale, but instead an invitation for a purchaser to make an offer. The Federal Circuit disagreed, noting that although it’s an important consideration, how a sales communication is labeled is not dispositive. Here, the “quotation” contained detailed terms and conditions the Court found sufficient to make the communication an offer for sale. Notably, the panel made this finding notwithstanding the quote contained a “written acceptance” provision which provided that any purchase offer must be accepted in writing by Crown Packaging. The finding relied in part on evidence of Crown’s historical practice of treating responses to quotations as orders it was required to fill. The Court also rejected Crown’s argument that the invention was not being sold for use in the United States, affirming that § 102(b)’s “on sale in this country” language is satisfied if an offer is directed to a U.S. entity at its U.S. place of business—which was the case here—regardless of where the offer was sent from or the intended location of use.
Because the Federal Circuit found the asserted claims to be invalid based on the undisputed facts of record, it reversed the district court’s pre-trial summary judgment rulings of no invalidity, and remanded for entry of judgment against Crown Packaging.
The full opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Brittani Gambrell, Associate