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damagespatent

Related Cases

In re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation, 71 F.3d 1573, 37 U.S.P.Q.2d 1138

Facts

Mahurkar, the inventor of a dual-lumen catheter for hemodialysis, granted an exclusive license to Quinton Instruments Company to manufacture and sell the catheters. Quinton, struggling to produce the catheters, arranged a sham sale of two prototypes to Northwest Kidney Center to maintain its exclusive license. The prototypes were defective and unusable, and the transaction did not lead to any commercialization of the invention. Mahurkar later filed a patent application, and the case arose when Impra, an alleged infringer, challenged the validity of the patent based on this transaction.

In an effort to maintain its status as an exclusive licensee, Wayne Quinton, the chief executive officer of Quinton, contacted Christopher Blagg, a longstanding acquaintance and the executive director of Northwest Kidney Center (Northwest), and asked Blagg to buy 20 of these catheters from Quinton as a personal favor.

Issue

Whether the sale of two patented catheters to a hospital constituted a 'sale' for the purpose of the statutory public use or sale bar under patent law.

Rule

Analysis

The court analyzed the Northwest transaction, concluding that it was a sham sale that did not result in commercialization of the patented invention. The sale was made solely to maintain Quinton's status as an exclusive licensee and did not indicate that the invention was available to the public. The court emphasized that the prototypes were unusable for their intended purpose, and thus the transaction did not satisfy the requirements of a legitimate sale under patent law.

The court concluded that the Northwest transaction did not place Mahurkar's device 'on sale' within the meaning of section 102(b).

Conclusion

The judgment of the district court holding Impra liable for infringement and awarding lost profit damages is AFFIRMED.

Who won?

Mahurkar and Quinton prevailed in the case as the court upheld the validity of the '968 patent and awarded lost profit damages. The court found that Impra failed to prove that the sale of the prototypes constituted a public use or sale that would invalidate the patent. The court's reasoning highlighted the sham nature of the transaction and the lack of commercialization, which were critical in affirming the patent's validity.

Mahurkar and Quinton prevailed in the case as the court upheld the validity of the '968 patent and awarded lost profit damages.

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