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TAKEAWAY: The Federal Circuit reminds us that commercial use of a claimed invention to produce a product or provide a service may trigger the on-sale bar, even if the claimed invention is a system or computer-readable medium that is not sold to customers.

On May 21, 2019, the Federal Circuit issued its decision in Quest Integrity USA, LLC, v. Cokebusters USA Inc., holding that certain claims of a patent belonging to Quest Integrity were invalid under the on-sale bar.

Quest obtained a patent with claims directed to a method for displaying inspection data collected from a furnace, and claims directed to a system and a computer-readable medium for performing such a method. Cokebusters alleged that more than one year before Quest filed its patent application, Quest used the claimed method, system, and computer-readable medium to generate charts for furnace inspection reports provided to a customer as part of an inspection service. Quest did not sell any hardware or software to the customer. Nonetheless, Cokebusters alleged that providing the inspection reports as part of a commercial service triggered the on-sale bar of 35 U.S.C. § 102(b) (the patent falling under pre-AIA law).

The Federal Circuit held that the sale of a product produced by a claimed process implicates the on-sale bar. Similarly, the use of a claimed system or computer-readable medium to provide a service performed for compensation also implicates the on-sale bar. Therefore, the production of the inspection report charts using claimed method, system, or computer-readable medium placed the subject matter of Quest’s claims “on sale” more than a year before its application filing date. The court also noted that it makes no difference whether Quest’s activities are analyzed under the “on sale” or “public use” bar of § 102(b), since the outcome would be the same.

This case serves as a reminder that commercial use of an invention to produce a product or provide a service may trigger the on-sale bar. This is true even if the claimed invention is, for example, a hardware system that is only used internally and not sold to customers.