Performing a Claimed Method for Compensation Triggers the On-sale Bar, Even Where No Product is Sold

In Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 2017-2423 (Fed. Cir. May 21, 2019), the Federal Circuit affirmed the district court’s grant of summary judgement invalidating three claims of U.S. Patent No. 75,542,874 under the on-sale bar of 35 U.S.C. § 102(b) and reversed and remanded to the district court to determine the validity of two remaining claims.

Quest asserted five claims of the ’784 patent, which relates to displaying inspection data collected from commercial furnace tubes, against Cokebusters. Cokebusters asserted that the claims were invalid under the § 102(b) on-sale bar because Quest inspected a client’s furnace tubes and created a set of reports for that client using the claimed method and systems more than one year prior to filing the patent. The district court found all asserted claims invalid on summary judgment. Quest appealed.

On appeal, the Federal Circuit reiterated that “[p]erformance of a claimed method for compensation, or a commercial offer to perform the method, can also trigger the on-sale bar, even where no product is sold or offered for sale.” Because the prior method used by Quest embodied three of the claims, the court affirmed the invalidity of those claims. Regarding the remaining two claims, the court found that the Quest’s affidavit created a genuine issue of material fact whether Quest’s pre-patent method embodied one of the claim elements. The court rejected the district court’s reasoning that Quest’s affidavit opposing summary judgment was a “sham affidavit,” explaining that evidence of record reasonably explained and corroborated the affidavit. The court thus reversed the invalidity finding of the two remaining claims and remanded for further proceedings.