Addressing the issue of what would trigger the one-year on-sale bar under 35 U.S.C. §102(b) for a process, the U.S. Court of Appeals for the Federal Circuit held that a process is the subject of a sale or offer for sale either if a commercial offer to perform the patented process was made before the critical date or if the patented process was indeed performed before the critical date for a promise of future compensation. Plumtree Software, Inc. v. Datamize, LLC, Case No. 06-1017 (Fed. Cir., Dec. 18, 2006) (Newman, J.).

Datamize sued Plumtree Software for patent infringement under three patents related to a computerized process for creating computer programs. Plumtree filed a summary judgment motion asserting that the patents were invalid under the on-sale bar. At issue was whether the on-sale bar should apply in view of the inventor’s offer, before the critical date, to display a computer kiosk which allegedly "embodied" all the claims at a trade show taking place after the critical date. The lower court granted summary judgment. Plumtree appealed.

The Court vacated the summary judgment, indicating that the record, which focused on the computer kiosk that was made by the claimed process rather than the claimed process itself, did not provide a basis to support the conclusion that the patented process was the subject of an on- sale.

In the Federal Circuit’s view, Plumtree had two ways to establish that the patented process was the subject of an invalidating on-sale. It could show either that a commercial offer to perform the patented process was made before the critical date or that the patented process was performed before the critical date for a promise of future compensation.

Under the first theory, the Court reasoned that even though a contract entered into before the critical date requires the inventor to provide a computer kiosk, the kiosk could be implemented using many different methods other than the patented process. There was no showing in the record that the contract required the inventor to perform the patented method. As to the second theory, the record also failed to establish that, pursuant to the contract entered into before the critical date, the inventor actually performed all of the claimed process steps.

The Court also decided that based on a previous lawsuit filed by Datamize against Plumtree for infringing the parent of the patents involved in the present action, Plumtree satisfied the prerequisite reasonable apprehension of suit required to bring a declaratory judgment action.

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