Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc. , 726 F.3d 1370 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
HAMILTON BEACH BRANDS, INC.,
Plaintiff-Appellant,
v.
SUNBEAM PRODUCTS, INC. (doing business as
Jarden Consumer Solutions),
Defendant-Appellee.
______________________
2012-1581
______________________
Appeal from the United States District Court for the
Eastern District of Virginia, Case No. 11-CV-0345, Judge
James R. Spencer.
______________________
Decided: August 14, 2013
______________________
ROBERT M. TYLER, McGuire Woods LLP, of Richmond,
Virginia, argued for plaintiff-appellant. With him on the
brief were KRISTEN M. CALLEJA and WILLIAM N.
FEDERSPIEL.
RICHARD D. HARRIS, Greenberg Traurig, LLP, of Chi-
cago, Illinois, argued for defendant-appellee. With him on
the brief were KEVIN J. O’SHEA and MATTHEW J.
2 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
LEVINSTEIN. Of counsel on the brief was KIMBERLY
WARSHAWSKY, of Phoenix, Arizona.
______________________
Before O’MALLEY, BRYSON, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge O’MALLEY.
Dissenting opinion filed by Circuit Judge REYNA.
O’MALLEY, Circuit Judge.
Hamilton Beach Brands, Inc. (“Hamilton Beach”) ap-
peals from the decision of the United States District Court
for the Eastern District of Virginia granting in part
Sunbeam Products, Inc.’s (“Sunbeam”) motion for sum-
mary judgment finding claims 1 and 3–7 (“asserted
claims”) of U.S. Patent No. 7,947,928 (“the ’928 patent”)
invalid as anticipated. The district court also found that
Sunbeam did not literally infringe the asserted claims of
the ’928 patent. Hamilton Beach’s appeal is timely, and
we have jurisdiction under 28 U.S.C. § 1295(a)(1). For the
reasons below, we affirm the district court’s ruling that
the asserted claims are invalid under the on-sale bar.
I. BACKGROUND
Hamilton Beach and Sunbeam are direct competitors
in the small kitchen appliance industry. Both Hamilton
Beach and Sunbeam sell competing versions of “slow
cookers,” which are electrically heated lidded pots that
are used to cook food at low temperatures for long periods.
See New Oxford English Dictionary (3d ed. 2010) (“slow
cooker, n. a large electric pot used for cooking food”).
Hamilton Beach is the assignee of the ’928 patent, which
is directed to a particular type of portable slow cooker.
The ’928 patent, filed June 4, 2010, is a continuation
of U.S. Patent Application No. 12/255,188, which, in turn,
is a continuation of U.S. Patent Application No.
11/365,222 (“the ’222 application”). The ’222 application
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 3
was filed on March 1, 2006 and issued on February 3,
2009, as U.S. Patent No. 7,485,831 (“the ’831 patent”). In
other words, the ’928 patent directly at issue in this case
is the “grandchild” of the ’831 patent. The ’831 patent
disclosed a “portable” slow cooker. The claimed slow
cooker included clips used to seal the detachable lid of the
device on the housing of the cooker. The sealing action
provided by the clips is intended to limit leaking during
transport. See ’831 patent, col. 1, ll. 16–34. The ’831
patent provides an image of a preferred embodiment:
’831 patent, col. 2, ll. 29–34. The written description
provides that at least one “clip” (element 22) is used,
among other elements, to seal the lid onto the body of the
slow cooker. Id., col. 5, ll. 13–46.
Hamilton Beach’s commercial embodiment of its pa-
tented invention is the Stay or Go® slow cooker. Accord-
ing to Hamilton Beach, the Stay or Go® slow cooker was a
tremendous commercial success and increased Hamilton
Beach’s market share by over 30 percent. In response to
Hamilton Beach’s success, Sunbeam, the previous market
4 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
leader, developed a competing slow cooker called the Cook
& Carry®. Sunbeam attempted to design around the ’831
patent claims by mounting sealing clips on the lid of the
slow cooker rather than on the body.
Hamilton Beach responded to Sunbeam’s introduction
of its slow cooker by filing a continuation of the ’222
application, which eventually matured into the ’928
patent. As could be predicted, the ’928 patent claimed a
slow cooker with sealing clips on the lid of the slow cook-
er. See ’928 patent, col. 8, ll. 34–49. During prosecution
of the ’928 patent, Hamilton Beach argued that a person
of ordinary skill in the art would recognize that placing
the clips on the lid was wholly consistent with the original
disclosure in the ’222 application. The patent office
agreed, and the ’928 patent issued on May 24, 2011. That
same day, Hamilton Beach filed suit alleging that Sun-
beam’s Cook & Carry® slow cooker infringed the ’928
patent. See Hamilton Beach Brands, Inc. v. Sunbeam
Prods., Inc., 3:11-cv-00345-JRS, ECF No. 1 (E.D. Va. May
24, 2011).
Hamilton Beach alleged that Sunbeam’s Cook & Car-
ry® slow cooker infringed claims 1 and 3–7 of the ’928
patent (“asserted claims”). Claim 1 is representative and
provides:
1. A slow cooker for heating of food stuffs, the slow
cooker comprising:
a housing having a base and a side wall extending
therefrom to define a heating cavity within the
housing, the housing further having a housing rim
at a first, free edge of the side wall defining an
opening to the heating cavity;
a heating element disposed within the housing
sufficiently proximate the heating cavity to heat
the heating cavity;
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 5
a container having a generally hollow interior and
a container rim defining an opening for accessing
the interior thereof, the interior being capable of
retaining the food stuffs therein, the container be-
ing shaped and sized to fit within the heating cav-
ity of the housing for heating thereof by the
heating element;
a lid sized and shaped to at least partially cover
the opening of the container when placed on the
container rim, the lid having a gasket around an
outer edge thereof for sealing engagement with
the container rim; and
at least one clip mounted between the lid and the
side wall of the housing, the at least one clip being
an over-the-center clip having a hook and a catch,
one of the hook and catch being mounted on one of
the lid and side wall of the housing and the other
of the hook and catch being mounted on the other
of the lid and side wall of the housing, the at least
one clip being selectively engageable with the lid
and side wall of the housing to selectively retain
the lid in sealing engagement with the container
rim to inhibit leakage of the food stuffs from the
interior of the container, wherein the housing and
lid have a vertical height, the at least one clip be-
ing disposed entirely within the vertical height of
the housing and lid to facilitate storage and
transport of the slow cooker when the at least one
clip is engaged with the lid and side wall of the
housing.
’928 patent, col. 8, ll. 16–49.
Two days after filing suit, Hamilton Beach moved for
a preliminary injunction, which the district court denied.
See Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc.,
3:11-cv-00345-JRS, ECF No. 58 (E.D. Va. Aug. 15, 2011).
A few months later, the district court construed a number
6 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
of claim terms and then entertained the parties’ motions
for summary judgment. See Hamilton Beach Brands, Inc.
v. Sunbeam Prods., Inc., 3:11-cv-00345-JRS, ECF No. 79
(E.D. Va. Dec. 20, 2011).
Sunbeam moved the court for summary judgment,
contending that its Cook & Carry® slow cooker did not
infringe the asserted claims. Sunbeam also argued that
the asserted claims of the ’928 patent were invalid be-
cause Hamilton Beach could not claim priority to the ’831
patent as it introduced new matter into the ’928 written
description, which rendered the ’928 patent’s claims
anticipated under 35 U.S.C. § 102(a) and (b). Sunbeam
further claimed that Hamilton Beach offered for sale and
publicly used the Stay or Go® slow cooker, the commercial
embodiment of the ’831 patent, more than one year prior
to the earliest possible filing date, i.e., one year prior to
the ’831 patent’s application date—March 1, 2006 (the
’831 patent’s application date and the earliest possible
filing date), rendering the ’928 patent claims invalid.
Sunbeam last contended that the ’928 patent claims were
invalid as obvious. Hamilton Beach moved the court for a
finding that the ’928 patent claims were not invalid on the
ground that no new matter was added.
The district court granted Sunbeam’s motion, finding
that the Cook & Carry® slow cooker did not infringe the
asserted claims of the ’928 patent. See Hamilton Beach
Brands, Inc. v. Sunbeam Prods., Inc., 3:11-cv-00345-JRS,
ECF No. 200 (E.D. Va. July 13, 2012). The district court
also concluded that the ’928 patent was invalid because it
was not entitled to an earlier filing date than the one
listed on its face because Hamilton Beach added new
matter when it filed its continuation; therefore, the sales
of the Stay or Go® slow cooker more than one year before
that date served as invalidating sales and uses of the ’928
patent under the on-sale and public use bars of 35 U.S.C.
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 7
§ 102(b)1. Id. And, the district court found that, even if
the ’928 patent was entitled to an earlier priority date
coincident with the ’222 application, there were invalidat-
ing commercial offers to sell the Stay or Go® slow cooker
prior to the critical date. Id. The district court, however,
determined that Sunbeam did not establish its public use
defense with respect to the ’222 application date or that
the patent was obvious. Id. Hamilton Beach then filed
this appeal.
II. DISCUSSION
The district court found that Hamilton Beach’s pur-
chase order with its foreign supplier for the Stay or Go®
amounted to an invalidating commercial offer for sale
under the on-sale bar of 35 U.S.C. § 102(b). We agree
with the district court that Hamilton Beach’s transaction
with its foreign supplier in early 2005 was an offer for
sale of a product that anticipated the asserted claims and
that the invention was ready for patenting prior to the
critical date. As discussed below, therefore, we hold the
asserted claims of the ’928 patent invalid under § 102(b).
Consequently, we find the remaining issues on appeal
moot.
A. LEGAL STANDARD
We apply the law of the regional circuit when review-
ing summary judgment decisions. Brilliant Instruments,
Inc., v. GuideTech, LLC, 707 F.3d 1342, 1344 (Fed. Cir.
2013) (citing Lexion Med., LLC v. Northgate Techs., LLC,
Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011)). The Fourth
1 Congress recently changed the language and
structure of 35 U.S.C. § 102. See Leahy-Smith America
Invents Act, PUB. L. NO. 112-29. Because this case was
filed before the effective date of the change, we refer to
the old version of § 102(b).
8 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
Circuit reviews the grant of summary judgment de novo.
Nader v. Blair, 549 F.3d 953, 958 (4th Cir. 2008). “The
district court should only grant a motion for summary
judgment where there is no genuine dispute as to an issue
of material fact, and the moving party is entitled to sum-
mary judgment as a matter of law.” Id. (citing Nguyen v.
CNA Corp., 44 F.3d 234, 236 (4th Cir. 1995)).
The on-sale bar applies when two conditions are satis-
fied before the critical date: (1) the claimed invention
must be the subject of a commercial offer for sale; and (2)
the invention must be ready for patenting. Pfaff v. Wells
Elecs., Inc., 525 U.S. 55, 67 (1998). An actual sale is not
required for the activity to be an invalidating commercial
offer for sale. Atlanta Attachment Co. v. Leggett & Platt,
Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008). An attempt to
sell is sufficient so long as it is “sufficiently definite that
another party could make a binding contract by simple
acceptance.” Id. (citing Netscape Commc’ns Corp. v.
Konrad, 295 F.3d 1315, 1323 (Fed. Cir. 2002)). “In deter-
mining such definiteness, we review the language of the
proposal in accordance with the principles of general
contract law.” Id.An invention is “ready for patenting” when prior to
the critical date: (1) the invention is reduced to practice;
or (2) the invention is depicted in drawings or described in
writings of sufficient nature to enable a person of ordinary
skill in the art to practice the invention. Id. The on-sale
bar is a question of law based on underlying factual
findings. See Grp. One, Ltd. v. Hallmark Cards, Inc., 254
F.3d 1041, 1045–46 (Fed. Cir. 2001); see also Leader
Technologies, Inc. v. Facebook, Inc., 678 F.3d 1300, 1305
(Fed. Cir. 2012) (“Whether a patent is invalid for a public
use or sale is a question of law, reviewed de novo, based
on underlying facts, reviewed for substantial evidence
following a jury verdict.”); Electromotive Division of
General Motors Corp. v. Transportation Systems Division
of General Electric Co., 417 F.3d 1203, 1209-10 (Fed. Cir.
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 9
2005) (“Whether an invention was on sale within the
meaning of § 102(b) is a question of law that we review de
novo based upon underlying facts, which we review for
clear error.”).
B. ANALYSIS
Sunbeam contended that Hamilton Beach’s foreign
supplier offered to sell the Stay or Go® slow cooker, a
commercial embodiment of the ’831 and ’928 patents, to
Hamilton Beach prior to the relevant critical date of
March 1, 2005. The district court agreed and found that
the claimed invention in the ’831 and ’928 patents was
offered for sale and was ready for patenting before the
critical date.
At the outset, there are three important points to
note. First, while the trial court found that the relevant
critical date for the ’928 patent was June 4, 2009, because
the patent included new matter—a finding which would
clearly invalidate that patent under § 102(b)—it alterna-
tively found that the on-sale bar applied even if the ’928
patent was entitled to the ’831 patent’s critical date, i.e.,
March 1, 2005. Because we do not address the trial
court’s new matter finding, we employ the earlier critical
date in our § 102(b) analysis, a date more favorable to
Hamilton Beach. Second, there is no “supplier exception”
to the on-sale bar. See Special Devices, Inc. v. OEA, Inc.,
270 F.3d 1353, 1355 (Fed. Cir. 2001). Thus, it is of no
consequence that the “commercial offer for sale” at issue
in this case was made by Hamilton Beach’s own supplier
and was made to Hamilton Beach itself. Finally, a com-
mercial offer for sale made by a foreign entity that is
directed to a United States customer at its place of busi-
ness in the United States may serve as an invaliding
activity. In re Caveney, 761 F.2d 671, 676–77 (Fed. Cir.
1985). It is undisputed that Hamilton’s Beach’s foreign
supplier directed its activity to Hamilton Beach within
the United States.
10 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
1. COMMERCIAL OFFER FOR SALE
The district court found that Hamilton Beach’s inter-
action with its supplier was dispositive regarding whether
the patented invention was the subject of a commercial
offer for sale. We agree, albeit on slightly different
grounds.
On February 8, 2005, Hamilton Beach issued a pur-
chase order to its supplier for manufacture of its Stay or
Go® slow cookers. Hamilton Beach listed on the purchase
order its facility in Tennessee as the shipping address and
its office in Virginia as the billing address. Hamilton
Beach also listed the specific quantity—almost 2000
units, part number, unit price, and requested delivery
date for the slow cookers. On February 25, 2005, the
supplier, via email, confirmed that it had received the
purchase order and noted that it would begin production
of the slow cookers after receiving Hamilton Beach’s
release.
As noted by the district court, in the small kitchen
appliance industry, such a purchase order is a typical
transaction. The transaction involves a manufacturer
transmitting a purchase order to a vendor or supplier,
with the supplier fulfilling that order by manufacturing
the requested items. In that scenario, the manufacturer
makes the initial contact, which is an offer to buy. The
district court, relying on Linear Tech. Corp. v. Micrel, Inc.,
275 F.3d 1040, 1052 (Fed. Cir. 2001), found that an offer
to buy a patented invention prior to the critical date
amounts to an invalidating sale under § 102(b) as long as
the offer is accepted and a binding contract to sell is
formed. Id. at 1052.
In Linear Tech, Linear Technology Corporation
(“LTC”) created the LT1070 chip, which was “a function-
ing version of the [claimed] invention.” Id. at 1043–44.
Prior to the critical date and release of the chip, LTC’s
European distributors submitted purchase orders, or
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 11
offers to buy, the LT1070. Id. at 1044–45, 1052. Upon
receipt of these offers to buy, LTC would create dummy
accounts in its sales software until the chip was ready for
release, but did not otherwise respond to the buyers’
offers. Id. Once the chip was officially released, LTC
customer service representatives would convert the dum-
my orders into normal orders which it would then accept.
Id. The buyers were never required to take any action
beyond their initial offers to buy. Id.
Based on those facts, this court stated that “[t]he
question is whether LTC accepted [the foreign distribu-
tors’ offers to buy] before [the critical date], because if so,
then it entered into a binding contract to sell the LT1070
that invalidates the [patent-in-suit].” This court found
that, because LTC never communicated acceptance of the
distributors’ offers to buy prior to the critical date, there
was no completed sale, and, thus, no invalidating sale. Id.
at 1052–1054.
Relying on Linear Tech, the district court in this case
stated that, if the transactions and communications
between Hamilton Beach and its supplier formed a bind-
ing contract, Pfaff’s first prong would be met. The district
court then analyzed the communications between Hamil-
ton Beach and its supplier and found that the supplier’s
response email in February 2005—prior to the March 1,
2005 critical date—was an objective manifestation of
assent that created a binding contract between the parties
for sale of the patented product. The parties spend much
of their briefing on appeal debating the propriety of this
conclusion. While the district court’s conclusion that the
claims of the ’928 patent are invalid under § 102(b) was
correct, there was no need for the district court to require
a binding contract on these facts; Linear Tech is factually
distinguishable, making the lower court’s and parties’
reliance on it misplaced.
12 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
After Hamilton Beach sent the February 8, 2005, pur-
chase order to its supplier, the supplier responded that it
had received the order and was ready to fulfill it upon
Hamilton Beach’s “release.” The email also listed specific
details of what the order would entail. These circum-
stances are notably different than those in Linear Tech,
because LTC never responded to the foreign distributors’
offers to buy until after the critical date. The significance
of this second communication is important, but not for the
precise reason the district court found. As this court has
repeatedly stated, a commercial offer for sale under
§ 102(b) is “one which the other party could make into a
binding contract by simple acceptance.” Grp. One Ltd.,
254 F.3d at 1048; see also Lacks Indus., Inc. v. McKechnie
Vehicle Components, USA, Inc., 322 F.3d 1335, 1348 (Fed.
Cir. 2003); Dana Corp. v. Am. Axle & Mfg., Inc., 279 F.3d
1372, 1377 (Fed. Cir. 2002).
Hamilton Beach takes aim at the district court’s reli-
ance on the supplier’s response email requesting a “re-
lease” before it could begin production of the slow cookers.
Hamilton Beach points to the parties’ corporate purchase
agreement which allegedly required Hamilton Beach to
give a certified review and approval of a final product to
its supplier before shipment of any product. Hamilton
Beach consequently argues that, because it did not pro-
vide that “release” until after the critical date, there was
no binding pre-critical date contract, as it says Linear
Tech requires. Even accepting all of Hamilton Beach’s
factual contentions as true, they are not determinative of
whether the communications with its supplier amounted
to a commercial offer for sale.
Hamilton Beach’s supplier responded prior to the crit-
ical date that it was ready to fulfill the order. In other
words, the supplier made an offer to sell the slow cookers
to Hamilton Beach. At that point, the commercial offer
for sale was made and, under the governing corporate
purchase agreement, Hamilton Beach could accept the
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 13
offer when it so pleased. And, Hamilton Beach concedes,
as it must, that, had it provided a “release” any time after
it received that email, a binding contract would have been
formed. See Oral Argument at 9:07–13:00, available at
http://www.cafc.uscourts.gov/oral-argument-
recordings/2013-03-05/all. As such, even if the parties
had not entered into a binding contract when the supplier
responded to the purchase order, the response, neverthe-
less, was a commercial offer for sale that Hamilton Beach
could have made into a binding contract by simple ac-
ceptance. This was enough to satisfy Pfaff’s first prong
without the need for a binding contract. Grp. One Ltd.,
254 F.3d at 1046; see also Lacks Industries, Inc., 322 F.3d
at 1348; Dana Corp., 279 F.3d at 1377. To the extent the
parties and the district court read Linear Tech to require
more, they were wrong. 2
2 The dissent does not dispute that a firm offer for
sale occurred in this case or that the offer for sale was for
almost 2000 units of the Stay or Go® slow cooker. In-
stead, it argues that no “commercial” sale occurred be-
cause the offer pertained to items that were to be
purchased for “experimental use.” No experimental use
defense has been asserted by Hamilton Beach in this case,
however—neither at the trial court level nor before this
court. “Experimental use” is simply not at issue. There
is, thus, no threat that this decision will have any impact
on that defense; it certainly will not “eviscerate” that
defense as the dissent fears. Given the dissent’s citation
to Pfaff, it appears that the dissent is confusing the
concept of experimental use with whether an invention is
ready for patenting at the time a sale or offer for sale
occurs. We discuss the ready for patenting prong of the
§ 102(b) analysis below.
14 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
2. READY FOR PATENTING
A product is “ready for patenting” for purposes of the
on-sale bar under § 102(b) if the claimed invention is: (1)
reduced to practice; or (2) depicted in drawings or other
descriptions “that were sufficiently specific to enable a
person skilled in the art to practice the invention.” Pfaff,
525 U.S. at 67–68; see also Weatherchem Corp. v. J.L.
Clark, Inc., 163 F.3d 1326, 1332–34 (Fed. Cir. 1998)
(holding that drawings depicting and samples of the
claimed invention were sufficiently definite to enable a
person of skill in the art to practice the invention). The
district court explained that Hamilton Beach held pre-
critical date meetings with many of its retail customers’
buying agents and presented detailed descriptions and
depictions of the Stay or Go® slow cooker. At these
meetings and presentations, Hamilton Beach showed and
distributed Computer Aided Design (“CAD”) drawings
depicting the Stay or Go® slow cooker. The district court
found that these detailed drawings and descriptions from
Hamilton Beach’s meetings, coupled with the communica-
tions with its supplier, demonstrated that the invention
was ready for patenting.
Hamilton Beach contends that the district court erred
in finding that the product that was the subject of the
purchase order was ready for patenting because the
district court failed to conduct an element-by-element
analysis of the precise product that was the subject of the
purchase order. Hamilton Beach’s argument is mis-
placed.
First, the Stay or Go® slow cooker is a commercial
embodiment of the ’928 patent, a fact that Hamilton
Beach does not, and cannot, dispute. And, the Stay or
Go® slow cooker is the same product that Hamilton Beach
both ordered from its foreign supplier and marketed to its
retail customers before the critical date. This marketing
included presentations that depicted and described the
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 15
patentable features of the invention, such as the side clips
and lid gasket used to keep the lid in place and seal the
food inside. The district court found as much.
Hamilton Beach argues, however, that the district
court was required to do an element-by-element analysis
on the prototypes and product samples on which it was
working prior to the critical date. Hamilton Beach con-
tends that such an analysis would show that the samples
it marketed, and the specifications upon which it prem-
ised its own purchase order, did not meet an important
limitation in the asserted claims: that the lid be retained
in a “sealing engagement with the container rim to inhibit
leakage of the food stuffs from the interior of the contain-
er.” ’928 patent, col. 8, ll. 42–44. Hamilton Beach alleges
that neither its own engineers nor its supplier were able
to perfect a slow cooker that met that limitation until
“months” after the critical date.
After review of the district court’s analysis and the
facts in this record, we perceive no error in the district
court’s conclusion that the product was ready for patent-
ing prior to the critical date. Sunbeam proffered what the
district court described as a “veritable tome” of evidence
from Hamilton Beach’s meeting with its retail customers
that provided specific descriptions of the Stay or Go® slow
cooker, as well as CAD drawings depicting the Stay or
Go®, that contained all the limitations of the ’831 and
’928 patents. Under the “ready for patenting” prong, so
long as the descriptions and depictions of the slow cooker
are sufficiently precise to enable a person of ordinary skill
to build the invention, the district court properly conclud-
ed that the invention was “ready for patenting.” Pfaff, 525
U.S. at 67–68.
The CAD drawings and descriptions from these
presentations—containing the same specifications provid-
ed to Hamilton Beach’s supplier—are more than enough
to enable a person of ordinary skill in the art to practice
16 HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC.
the claimed invention. Many of the presentations dis-
closed that the Stay or Go® slow cooker used clips and a
gasket to hold the lid in place. A person of skill in the art,
viewing these presentations, would understand that, if
the lid is held in place by a gasket, it would be retained in
such a way to prevent food from leaking from the contain-
er. Given the relative simplicity of the invention, the
descriptions and drawings Hamilton Beach showed to its
retail customers and the specifications provided to its
supplier are sufficiently enabling and, as an admitted
commercial embodiment of the patent-in-suit, would meet
every limitation of the asserted claims. No reasonable
juror could conclude otherwise.
Aside from the drawings and descriptions, Hamilton
Beach also concedes that, by February 2005, it possessed
at least one product sample that worked as intended, i.e.,
the lid sealed in such a way to inhibit food from leaking
out of the container. See Oral Argument at 7:15–8:30.
The record reveals that, at about the same time as, and
prior to the critical date, Hamilton Beach engineers also
created a working prototype that was subjected to testing
and was successful. In other words, Hamilton Beach
possessed working prototypes, or at least one prototype, of
the Stay or Go® slow cooker, which it concedes met all the
limitations of the asserted patent claims. Hamilton
Beach’s argument that some of the prototypes did not
work as intended is of no moment, moreover, because
“fine-tuning” of an invention after the critical date does
not mean that the invention was not ready for patenting.
See Weatherchem Corp., 163 F.3d at 1332–34. As such,
the district court did not err in concluding that the Stay
or Go® slow cooker was a commercial embodiment of the
asserted claims and necessarily met all the claim limita-
tions, and, consequently, concluding that the slow cooker
was ready for patenting.
In sum, the district court’s conclusion that there was
no genuine dispute of material fact that the patent-in-suit
HAMILTON BEACH BRANDS, INC. V. SUNBEAM PRODUCTS, INC. 17
was invalid under § 102(b) was correct. Hamilton Beach
received a commercial offer for sale from its foreign sup-
plier, and the patented invention was ready for patenting
at the time of the sale—as supported by the working
prototypes and detailed drawings and descriptions.
III. CONCLUSION
Based on the foregoing, we affirm the district court’s
finding that claims 1 and 3–7 of the ’928 patent are inva-
lid under 35 U.S.C. § 102(b) because the claimed inven-
tion was the subject of a commercial offer for sale prior to
the critical date. Accordingly, we need not reach the other
issues addressed by the district court and addressed by
the parties in the briefing before this court.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
HAMILTON BEACH BRANDS, INC.,
Plaintiff-Appellant,
v.
SUNBEAM PRODUCTS, INC.
(doing business as Jarden Consumer Solutions),
Defendant-Appellee.
______________________
2012-1581
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 11-CV-0345, Judge
James R. Spencer.
______________________
REYNA, Circuit Judge, dissenting.
The Supreme Court has instructed that an on-sale bar
under 35 U.S.C. § 102(b) shall arise, if at all, only when
the patented invention is the subject of a commercial offer
for sale and the invention is ready for patenting more
than one year before the patent’s filing date. Pfaff v.
Wells Elecs., 525 U.S. 55, 67 (1998). Yet the majority
concludes that Hamilton Beach’s purchase order sent to
its foreign supplier, which asked the supplier to build a
set of slow cookers pursuant to Hamilton Beach’s specifi-
cations, resulted in an offer to sell a patented invention
that anticipates the claims of Hamilton Beach’s patent.
In order to reach this conclusion, the majority is quick to
note that there is no “supplier exception” to otherwise
2 HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS
anticipatory offers for sale under § 102(b), while at the
same time it overlooks the Supreme Court’s requirement
that the offer be a “commercial” one. Because the majori-
ty’s oversight portends grave consequences for innovation
and experimental use, I respectfully dissent. 1
When the Supreme Court decided Pfaff, it explicitly
rejected this court’s multifactor, “totality of the circum-
stances” test we had previously used to determine wheth-
er there was an on-sale bar. 525 U.S. at 66 & n.11; see
also Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 182
F.3d 888, 890 (Fed. Cir. 1999). In its place, the Court
substituted a two-pronged test, having a first prong that
requires a commercial offer for sale. Pfaff, 525 U.S. at 67.
This requirement makes sense: “An inventor can both
understand and control the timing of the first commercial
marketing of his invention.” Id. Indeed, the Court was
careful to distinguish between a “sale [that] was commer-
cial rather than experimental in character.” Id.; see also
Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488
F.3d 982, 998 (Fed. Cir. 2007) (“Based on [City of Eliza-
beth v. American Nicholson Pavement Co., 97 U.S. 126,
(1877)], this court has consistently distinguished permit-
ted experimental uses from barred public or commercial
uses.”). In my view, an overly-broad application of the no-
supplier-exception rule would all but abolish this distinc-
tion and render the experimental-use exception useless
for a significant class of innovators.
After Pfaff was decided, this court began fashioning
the no-supplier-exception rule in Brasseler. The patentee,
Brasseler, U.S.A., had its exclusive manufacturer produce
3,000 surgical saws embodying the invention set forth in
its patent’s claims. Brasseler, 182 F.3d at 889. Noting
1 The majority affirmed invalidity on the single is-
sue of on-sale bar. This dissent is limited to its judgment
on that issue, which I find to be erroneous.
HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS 3
that the saws were ordered “in large quantity for resale,”
id. at 891, this court concluded that “[t]he transaction at
issue undisputedly was a ‘sale’ in a commercial law
sense,” id. at 890. Indeed, it was “not a case in which an
individual inventor takes a design to a fabricator and
pays the fabricator for its services in fabricating a few
sample products. . . . [Instead, the manufacturer] made a
large number of the agreed-upon product for general
marketing by Brasseler.” Id. at 891. Only after conclud-
ing that the sale was commercial in nature did this court
reject the assertion that the relationship between the
supplier and the patentee somehow prevented the sale
from triggering the on-sale bar.
Shortly thereafter, in Special Devices, Inc. v. OEA,
Inc., 270 F.3d 1353 (Fed. Cir. 2001), this court applied the
no-supplier-exception after concluding that the offer was
commercial in nature. Id. at 1357. The patentee, OEA,
Inc., contracted with its supplier to provide it with 20,000
patented embodiments of its “all-glass header” for use in
automobile airbags. Id. at 1354. In addition, the patent-
ee agreed to supply the supplier with millions of the
patented headers annually. Id. Unsurprisingly, OEA
“conceded that these transactions were ‘commercial,’ not
experimental” given that it was unrebutted that OEA
“had purchased [the headers] for commercial purposes.”
Id. at 1355, 1356. Thus, the only two instances where
this court has deployed the no-supplier-exception rule
involved offers or sales that unquestionably met the
Supreme Court’s requirement that the offer be part of a
“commercial” offer or sale.
With no review of whether the offer was commercial
in nature, the majority in this case has extended the no-
supplier-exception rule to a case without considering
whether the purchase order was placed for purely experi-
mental purposes. Yet the circumstances indicate that it
4 HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS
was. 2 The purchase order “was not the result of customer
demand or projections,” Appellant’s Br. 6 (citing Joint
App’x 4975), and, at the time the order was placed, Ham-
ilton Beach was repeatedly changing the product specifi-
cation due to a series of design failures, most notably,
foodstuffs leaking through the lid. The design remained
unstable for nearly three months after the purchase order
was placed. Just as the Supreme Court applied the
experimental-use exception when Mr. Nicholson, the
patentee in City of Elizabeth, tested and perfected his
pavement on a busy toll road in Boston—inspecting and
tapping it with his cane almost daily—for more than six
years before filing for a patent, 97 U.S. at 133-37, Hamil-
ton Beach was similarly entitled to test and perfect its
slow cooker under the experimental-use exception. 3 See
2 The majority states that the “experimental use de-
fense has [not] been asserted by Hamilton Beach in this
case.” Maj. Op. 13 n.2. While Hamilton Beach did not
use the phrase “experimental use,” it argued at length
that its offer for sale was non-commercial and that its
engineers were attempting to overcome serious shortcom-
ings when the offer was made. Appellant’s Br. 53-57. The
majority chooses to ignore the interplay between the
requirement for a commercial offer for sale and experi-
mental use. But see Pfaff, 525 U.S. at 67. I find that the
issues addressed by the parties and, indeed the majority,
lay a sufficient framework under which to analyze all the
issues in this case.
3 The majority contends that the use intended by
Hamilton Beach in this case was not experimental be-
cause it ordered almost 2,000 (actually 1,952) slow cook-
ers. This sort of quantitative analysis was previously
accepted under the “totality of the circumstances” test—a
test rejected by the Supreme Court in Pfaff. Here, Hamil-
ton Beach was not “stockpil[ing] commercial embodiments
of their patented invention” as was occurring in Brasseler
HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS 5
Pfaff, 525 U.S. at 64 (“[A]n inventor who seeks to perfect
his discovery may conduct extensive testing without
losing his right to obtain a patent for his invention—even
if such testing occurs in the public eye.”). At the very
least, the majority should have identified how the pur-
chase order was commercial in nature when the manufac-
turing resulted in slow cookers that were incapable of
“inhibit[ing] leakage of the food stuffs [sic] from the
interior of the container.” But cf. U.S. Patent No.
7,485,831 col. 8 ll. 50–51 (filed Mar. 1, 2006). If the
experimental-use exception is to have any continued
vitality, this court must refrain from overlooking the
Supreme Court’s express requirement for a commercial
offer for sale when deploying the no-supplier-exception
rule.
My greatest concerns involve the implications this
case will have for future innovators, most notably small
enterprises and individual inventors who lack in-house
prototyping and fabricating capabilities. Cf. Monon Corp.
and Special Devices. Special Devices, 270 F.3d 1354. It
would make no sense for Hamilton Beach to stockpile
slow cookers for future sales when its slow cookers were
leaking at the time. Rather, the circumstances suggest
that Hamilton Beach was in the midst of testing and
perfecting its slow cookers under the experimental use
exception when the offer was made. This is true—and can
be true—even if the invention was ready for patenting at
that time. See City of Elizabeth, 97 U.S. at 133; see also
Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d
1361, 1368–70 (Fed. Cir. 2008) (Prost & Dyk, JJ., concur-
ring); cf. Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d
1374, 1379–80 (Fed. Cir. 2005) (“[E]vidence of experi-
mental use may negate either the ‘ready for patenting’ or
‘public use’ prong.”).
6 HAMILTON BEACH BRANDS v. SUNBEAM PRODUCTS
v. Stoughton Trailers, Inc., 239 F.3d 1253, 1258–61 (Fed.
Cir. 2001) (reversing summary judgment of invalidity and
concluding that the sale was non-commercial where the
patentee had a third-party test its patented trailer be-
cause it lacked in-house testing capabilities). Whenever
the development process requires those entities to manu-
facture working prototypes or pre-mass-production sam-
ples, they often have no choice but to reach out to third-
party suppliers. Under the majority’s holding in this case,
a single offer to buy for purely experimental purposes may
trigger the on-sale bar, and the experimental-use excep-
tion will offer them no salvation. It is from this eviscera-
tion of the experimental-use exception that I respectfully
dissent.