NSBA Files Amicus Brief in Patent Case

November 6, 2013

pic-patent-licenseOn Tuesday, Oct. 29 NSBA filed an amicus curiae brief in support of Hamilton Beach Brands, Inc.’s Petition for Rehearing En Banc in the case of Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., No. 2012-1581.  This case is on appeal from the U.S. District Court for the Eastern District of Virginia in Case No. 11-CV-0345 where the court granted in part Sunbeam’s motion for summary judgment finding that Hamilton Beach’s patent for a slow cooker was invalid under the on-sale bar doctrine.  The U.S. Court of Appeals for the Federal Circuit affirmed (2-1 decision) the lower court’s ruling, and it is from this Federal Circuit decision that Hamilton Beach is requesting a rehearing en banc and for which NSBA filed its amicus brief.

Under the pre-AIA on-sale bar doctrine, “[a] person shall be entitled to a patent unless… (b) the invention was patented or described in a print 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.” (35 U.S.C. §102(b)).  In the Supreme Court case of Pfaff v. Wells Electronics, Inc. 525 U.S. 55, 67 (1998), the Court held that “[t]he on-sale bar applies when two conditions are satisfied before the critical date.  First, the product must be the subject of a commercial offer for sale[, and]… [s]econd, the invention must be ready for patenting.  In the underlying case, the lower court held that the confidential offer from Hamilton’s supplier to manufacture a set number of products triggered the on-sale bar doctrine, thus invaliding Hamilton’s patent for the slow cooker.

The brief, drafted on behalf of NSBA by the firm Baker & McKenzie, LLP, argues that the majority’s opinion in the underlying case and as affirmed in a 2-1 decision by the Federal Circuit, if allowed to stand, would have a significant, negative impact on entrepreneurs and small businesses who are more often than not required to contract with third-party manufacturers or supplies to test and develop products still under development.

Please click here to read the brief.