Larry G. Junker v. Medical Components, and Martech Medical Products, Inc.

• Jurisdiction: United States,Federal
• Citation: Vol. 47 No. 2
• Publication year: 2022
• Author: D. Benjamin Borson
• topic: Commercial Litigation,Contracts,Patent law,Intellectual Property,Federal

LARRY G. JUNKER V. MEDICAL COMPONENTS, AND MARTECH MEDICAL PRODUCTS, INC.

D. Benjamin Borson
Borson Law Group P.C.

Larry G. Junker v. Medical Components, and Martech Medical Products, Inc. United States Court of Appeals for the Federal Circuit, Slip Op 2021-1649 (10 February 2022).

BACKGROUND

This case deals with the standard for claim invalidity by the On Sale Bar of 35 U.S.C. Section 102(b).

THE INVENTION

Larry Junker is the owner of U.S. Design Patent No. D450,839 ("D839"), drawn to "Handle for Introducer Sheath," including a single claim for "the ornamental design for a handle for introducer sheath, as shown and described." The Introducer Sheaths are used in catheterization procedures. The application was filed February 7, 2000 and led to the D839 patent.

In the 1980s, Mr. Junker reached out to other companies to handle the actual manufacture of his new design. Slip Op. 2021-1649 at 4. In August 1988, Mr. Junker developed a business relationship with James Eddings. Mr. Junker and Mr. Eddings executed a non-disclosure agreement, and Mr. Junker told Mr. Eddings about his new design, a "Peelable Introducer Sheath Product." In September 1998, Mr. Eddings informed Mr. Junker that his company could manufacture Mr. Junker's product. Id.

Mr. Junker and Mr. Eddings continued to discuss the new design. Mr. Eddings enlisted the help of engineer Richard Gillespie and Mr. Gillespie provided a drawing of the design. In January 1999, Mr. Eddings' company, Xentek, provided to Mr. Junker, a prototype that included all the features of Mr. Junker's design. Id. at 5.

In early January 1999, Mr. Eddings began communicating with Boston Scientific Corporation regarding a new peelable introducer sheath product. On January 8, 1999, Xentek sent Boston Scientific a letter detailing bulk pricing information, stating:

Thank you for the opportunity to provide this quotation for the Medi-Tech Peelable Sheath Set. When we first received this request for quotation we were under the mistaken impression that you

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wanted the exact configuration as the drawing that was provided which would have required extensive tooling expense. Subsequently, we have learned that this is not the case and are pleased to submit this quotation for a product of our design. Id. at 5 bridging to 6.

The letter also included a price chart and specified that the "prices are for shipping in bulk, non-sterile, FOB Athens Texas on a net 30-day basis." Mr. Eddings concluded by noting his appreciation for "the opportunity to provide this quotation" and that he "looked forward to discussing [Boston Scientific's] requirements in person."

THE DISPUTE

In the Federal Circuit's decision, Judge Stoll for Judges Stoll, Dyk, and Reyna, noted that the critical date was February 7, 1999, one year before the filing date. Id. at 3 bridging to 4.

In 2013, Mr. Junker sued MedComp [in the Eastern District of Pennsylvania], accusing four of MedComp's products of infringing the claimed design. MedComp raised affirmative defenses of invalidity, unenforceability, and noninfringement and filed counterclaims seeking a declaratory judgment that the claimed design is invalid, unenforceable, and not infringed. Id. at 6.

The key issue was whether the 8 January 1999 letter—which was sent before the critical date—was a commercial offer for sale of a product embodying the claimed design.

DISTRICT COURT PROCEEDINGS

"The district court held that it was not...