Private Sale Gets No Safe Harbor from §102(b)(1)(B)

In NCS Multistage Inc. v. Nine Energy Serv., Inc., No. 25-1000 (Fed. Cir. Sep. 14, 2026), the Federal Circuit vacated the district court’s judgment of infringement and no invalidity of U.S. Patent No. 10,465,445 (the “’445 patent”) and remanded for a new trial.

NCS sued Nine alleging infringement of the ’445 patent, which covers a tool used to insert a casing string pipe to the bottom of an oil wellbore. At the district court, Nine argued that a tool embodying the ’445 asserted claims was sold by a third-party to Apache in August 2012, before the patent’s alleged February 2013 priority date. ^[1] NCS countered that its July 2012 sale to Tundra constituted a public disclosure, rendering the Apache sale ineligible as prior art under the safe harbor of 35 U.S.C. § 102(b)(1)(B).

After reversing the district court’s construction for certain terms, the Federal Circuit considered whether the Tundra sale fell within the safe harbor of § 102(b)(1)(B).

Under § 102(b)(1)(B), a disclosure made 1 year or less before the effective filing date is not prior art to the claimed invention under § 102(a)(1) if, prior to the disclosure, the subject matter had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed from them. In Sanho Corp. v. Kaijet Tech. Int’l Ltd., 108 F.4th 1376, 1385 (Fed. Cir. 2024), the Federal Circuit interpreted the safe harbor provision for § 102(b)(2)(B) to apply to public disclosures where the public has learned of an invention’s relevant subject matter, requiring more than simply being placed on sale.

The Federal Circuit held no reasonable jury could find the July 2012 Tundra sale a public disclosure. The Court found Sanho analogous, where the inventor privately sent Sanho the claimed invention and its features were not taught to anyone outside of Sanho. Similarly, the July 2012 Tundra sale was private and unavailable for public examination, with no ability to work out the relevant subject matter of the invention. The Court also noted that technical documents NCS provided were marked confidential, further demonstrating the lack of public disclosure. Therefore, the Court held the August 2012 Apache sale was prior art as a matter of law.

Endnote

[1] Neither party disputed that the post-America Invents Act (“AIA”) § 102(b) applies to the ’445 patent.