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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WASHINGTON
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`HER MAJESTY THE QUEEN IN RIGHT
`OF CANADA AS REPRESENTED BY
`THE MINISTER OF AGRICULTURE
`AND AGRI-FOOD. a Canadian
`governmental authority,
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`The Honorable Stanley A. Bastian
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`No. 2:20-CV-00181-SAB
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`DEFENDANTS’ MOTION FOR
`PARTIAL SUMMARY JUDGMENT
`ON INVALIDITY
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`Hearing Date: September 30, 2021
`Hearing Time: 11:00 am
`With Oral Argument
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`Plaintiff,
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`VAN WELL NURSERY, INC. a
`Washington Corporation, MONSON
`FRUIT COMPANY, INC., a Washington
`Corporation, GORDON GOODWIN, an
`individual, and SALLY GOODWIN, an
`individual
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` Defendants.
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - i
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`TABLE OF CONTENTS
`I. INTRODUCTION ................................................................................... 1
`II. UNDISPUTED FACTS ........................................................................... 3
`III. ARGUMENT ........................................................................................... 8
`A. Relevant Legal Standards…………………………………………...8
`1. Summary Judgement Standard……………………………………..8
`2. Invalidity on Summary Judgment…………………………………..9
`3. On-Sale Bar………………………………………………………...9
`B. Staccato was Subject to a Commercial Offer for Sale Before the
`Critical Date………………………………………………………..11
`C. Staccato was Ready for Patenting………………………………….14
`D. The SVC/PICO Pre-Critical-Date “Testing Program” for Staccato
`Cannot Defeat Summary Judgment………………………………..18
`IV. CONCLUSION ......................................................................................20
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - ii
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`TABLE OF AUTHORITIES
`
`Cases
`Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1318 (Fed. Cir.
`1999) .....................................................................................................................13
`
`Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1354 (Fed. Cir. 2002) .............20
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 248 (1986) .............................................. 9
`
`Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed Cir. 2007) ..... 9, 11, 12, 20
`
`Enzo Biochem v. Gen-Probe, Inc., 424 F.3d 1276 (Fed. Cir. 2005) ........................12
`
`Evans Cooling Sys., Inc. v. General Motors Corp., 125 F.3d 1452 (Fed. Cir. 1997)
` ..............................................................................................................................13
`
`Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1045 (Fed. Cir. 2001) …..10, 12
`
`Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc., 726 F.3d 1370 (Fed. Cir.
`2013) .....................................................................................................................14
`
`Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S. Ct. 202 L.Ed.2d
`551 (2019) ...................................................................................................... 10, 13
`
`J.A. LaPorte, Inc. v. Norfolk Dredging Co., 787 F.2d 1581 (Fed. Cir. 1986) .........13
`
`LaBounty Mfg. v. United States ITC, 958 F.2d 1029 (Fed. Cir. 1992) ....................19
`
`Meds. Co. v. Hospira, Inc., 827 F.3d 1365 (Fed. Cir. 2016) ..................................... 9
`
`Merck & Cie v. Watson Laboratories, Inc., 822 F.3d 1352 (Fed. Cir. 2016) .. 10, 14
`
`Nelson v. K2 Inc., 2009 U.S. Dist. LEXIS 90 U.S.P.Q.2D (BNA) 1109 (W.D. Wash.
`February 5, 2009) ................................................................................................... 9
`
`Pennwalt Corp. v. Akzona Inc., 740 F.2d 1581 (Fed. Circ. 1984) ..........................19
`
`Pfaff v. Wells Elecs., Inc., 525 U.S. 64 (1998) ............................................. 1, 10, 11
`
`Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1357 (2001) .............................. 13, 19
`
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
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`Woodland Trust v. Flowertree Nursery, Inc., 148 F. 3d 1370 (1998) .....................13
`Statutes
`35 U.S.C. § 102(b) .......................................................................................... 1, 9, 10
`Other Authorities
`2A CHISUM ON PATENTS § 6.02 (2021) ...................................................................... 2
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`Leahy-Smith America Invents Act, Pub. L. No. 112-29, effective September 16,
`2012) ....................................................................................................................... 9
`Rules
`Fed. R. Civ. P. 56(c)................................................................................................... 8
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - iv
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`INTRODUCTION
`I.
`U.S. Patent No. PP20,551 (“the ’551 Patent”) is invalid under 35 U.S.C. §
`102(b) because the alleged invention was on sale in the United States before the ’551
`Patent’s “critical date,” i.e., the date one year before a patent’s priority date. Even a
`single Staccato tree on sale before the critical date invalidates the ’551 Patent. Here,
`the evidence shows over 9,200 Staccato trees on sale more than one year before the
`earliest priority date claimed by the ’551 Patent, March 13, 2002.1
`At least three separate nurseries within the United States commercially sold
`Staccato before
`the critical date. The evidence
`includes emails, orders,
`acknowledgements, growing contracts, invoices, and related documents establishing
`that, before the critical date, Staccato was (1) the subject of a “commercial offer for
`sale” and (2) “ready for patenting.” With evidence establishing beyond any genuine
`issue of material fact both prongs of the two-part test for invalidity under § 102(b),
`Defendants discharge their burden to prove that a plant covered by the single claim
`of the ’551 Patent was “on sale” before the critical date and thus invalid. See Pfaff
`v. Wells Elecs., Inc., 525 U.S. 55, 64 (1998).
`Defendants expect the plaintiff, Her Majesty the Queen in right of Canada as
`represented by the Minister of Agriculture and Agri-food (“AAFC”), to attempt to
`create a genuine issue of material fact that Staccato was not ready for patenting
`
`
`1 The Parties dispute whether the ’551 Patent may claim priority to a
`provisional application, U.S. Appl. Serial No. 60/363,574, filed March 13, 2002,
`because it was incorrectly identified during prosecution of the application giving rise
`to the ’551 Patent as “60/363,547” (Dkt. No. 55, fn. 2), but it does not matter for the
`purposes of this motion because all evidence cited pertains to sales or offers for sale
`occurring before March 13, 2001.
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 1
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`because it was sold for testing purposes and was therefore “experimental.” This
`argument “is frequently evoked by patent holders to avoid the statutory bar but is
`rarely sustained by the courts.” 2A CHISUM ON PATENTS § 6.02 (2021).
`Here, no evidence of experimentation exists sufficient to defeat summary
`judgment. For starters, Staccato was reduced to practice years prior to when these
`sales occurred. Further, none of the sales at issue were by or at the direction or
`control of the inventor. Not only were nearly all sales in commercial quantities and
`at commercial prices, but many sales were to growers operating without a so-called
`“testing agreement” with AAFC’s commercial licensing agent, Summerland
`Varieties Corporation, known then as Okanagan Plant Improvement Corporation
`(“SVC/PICO”).
`Even as to growers who had testing agreements with SVC/PICO, the terms of
`those agreements did not provide for testing on behalf of the inventor or his agent to
`determine whether the invention functioned for its intended purpose. On the
`contrary, the testing agreements allowed growers to test the market viability of the
`variety—not the sort of testing contemplated by the “experimental use” exception to
`the on-sale bar. In short, these kinds of “semi-commercial”2 activities to test the
`market viability of an invention in the United States are exactly the sort of pre-
`market activities that trigger the on-sale bar. If activities like this did not trigger the
`on-sale bar, a patentee could improperly extend his limited monopoly provided by a
`patent, upsetting the important balance struck by Congress in the Patent Act.
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`2 This is how at least one grower described his pre-critical-date plantings of
`Staccato. (See infra, § II.)
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 2
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`II. UNDISPUTED FACTS
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`The original Staccato seedling was produced at PARC in 1982. (Dkt. 1-1 (the
`’551 Patent) at Col. 3 ln. 1.) The variety was planted as a seedling in 1984 and given
`the Breeders Reference Number 13S-20-09 in 1991. (Id. at Col. 3 ln. 8-9.) Beginning
`in 1990 and well before the critical date, Staccato was extensively tested. (Id. at Col.
`5-9.) For example, in August 1990, four Staccato trees were created by T-budding
`vegetative buds of Staccato onto Mazzard rootstock. (Id. at Col. 3 ln. 46-47.) The
`resulting trees were grown in a nursery, then dug up in the fall of 1991 and stored in
`cold storage over winter. (Id. at Col. 3 ln. 22-24.) In the spring of 1992, the trees
`were removed from cold storage and planted in a field. (Id. at Col. 3 ln. 25-26.)
`According to the text of the ’551 Patent, “[t]he resulting trees were stable in their
`horticultural traits and no off-types or variants occurred during the re-propagation of
`Staccato.” (Id. at Col. 3 ln. 26-28.) For each season after 1992, Staccato was
`asexually reproduced and its distinguishing traits were conserved over each
`successive generation. (Id. Col. 3 ln. 48-50, Cols. 6-8, Tables 1-5.)
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`By 1995, several nurseries and growers in the United States grew Staccato.
`(Declaration of Ron Moon (“Moon Decl.”) ¶¶5-7, Ex. B-D; Declaration of Kyle
`Mathison (“Mathison Decl.”) ¶¶3-5; Ex. B-D; Declaration of Nancy Fowler-Johnson
`(“Fowler Decl.”) ¶¶3-8, 11-12, Ex. A-F, I-J.); Declaration of Carla Perleberg
`(“Perleberg Decl.”) ¶¶3-56, Ex. A-BBB.) Growers from the United States would
`visit SVC/PICO annually for “Cherry Day” to sample new varieties. (Walters Decl.
`¶2, Ex. A.) Growers based in the United States could then pay a fee for access to
`“test” new varieties. (Moon Decl. at ¶3, Ex. A; Moon Decl. ¶3.) The standard
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 3
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`SVC/PICO testing agreement expressed the grower’s intent to “access, test and
`evaluate the plant material” provided by SVC/PICO as the “holder of exclusive
`evaluation, distribution, propagation, and commercialization rights for the
`Agriculture and Agri-Food Canada, Summerland, plant material specified in Exhibit
`A.” (Id.) For the payment of $300 annually, growers could access up to six different
`varieties and plant up to one acre per variety. (Id.) Plantings greater than one acre
`required a discussion with SVC/PICO “and an additional per-tree testing fee may
`apply.” (Id.)
`Several pre-critical-date growers in SVC/PICO’s “testing program” exceeded
`the one-acre limit for Staccato. (Moon Decl. ¶¶ 6-7, Ex. C-D); (Mathison Decl. ¶¶2-
`5, Ex. A-D); (Perleberg Decl. ¶¶25-27, Ex. W-Y) (sales to D.A. Nusom Orchards);
`¶¶7-12, Ex. E-J (sales to D&J Orchards); ¶¶19-21, Ex. Q-S (sales to Gaspar Orozco);
`¶¶28-33, Ex. Z-EE (sales to Marc Eggerton), and ¶¶49-56, Ex. UU-BBB (sales to
`Golddigger).) On January 31, 1996, Kyle Mathison, a U.S. grower, wrote the general
`manager of SVC/PICO, Wendy Couriard, asking for permission to plant 2000
`Staccato trees in a “semi-commercial test in order to get a perception of the
`acceptance of these cherries in the marketplace and whether they will be a viable
`variety once they have been ran [sic] through the various phases of packaging.”
`(Mathison Decl. ¶2, Ex. A.) Permission was granted, and Mr. Mathison continued to
`increase his Staccato acreage each year through the 2002 season. (Mathison Decl.
`¶¶3-5, Ex. B-D; Fowler Decl. ¶10, Ex. H.)
`Kyle Mathison was not the only U.S. grower interested in growing
`commercial quantities of Staccato before the critical date. Business records confirm
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 4
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`Staccato was on sale in quantities exceeding one acre based on standard tree spacing3
`to at least the following U.S. growers: D.A. Nusom Orchards (Perleberg Decl. ¶¶25-
`27, Ex. W-Y), Ron Moon (Moon Decl. ¶¶6-7, Ex. C-D), D&J Orchards (Perleberg
`Decl. ¶¶7-12, Ex. E-J), Gaspar Orozco (Perleberg Decl. ¶¶19-21, Ex. Q-S), Marc
`Eggerton (Perleberg Decl. ¶¶28-33, Ex. Z-EE), and Golddigger Apples, Inc.
`(Perleberg Decl. ¶¶49-56, Ex. UU-BBB).) Of these growers plus Kyle Mathison,
`only Mathison, Nusom, Eggerton, and D&J Orchards had testing agreements with
`SVC/PICO, and Nusom was admittedly growing Staccato in quantities outside of
`the confines of his agreement. (See Statement of Facts at ¶ 23 (chart summarizing
`grower testing agreement status); see also Walters Decl. ¶¶2, 11 and Ex. B.)
`Nursery sales records identify an additional eight growers who sought to
`purchase Staccato before the critical date in quantities sufficient for one acre or less.
`In ascending order in terms of the number of Staccato trees on sale to these growers
`before the critical date, they were Twin M Farms (Fowler Decl. ¶¶11-12, Ex. I-J),
`Oregon State University (Perleberg Decl. ¶¶34-35, Ex. FF-GG), Rick Kelly
`(Perleberg Decl. ¶¶22-24, Ex. T-V), Blue Lake Orchards (Perleberg Decl. ¶¶40-43,
`Ex. LL-OO), Hugo A. Oswald (Perleberg Decl. ¶¶3-6, Ex. A-D), Robert Bergh
`(Perleberg Decl. ¶¶13-18, Ex. K-P), Jim & Sandra Freese (Perleberg Decl. ¶¶44-48,
`Ex. PP-TT), and Mike Scott (Perleberg Decl. ¶¶36-39, Ex. HH-KK). Of these
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`3 Ron Moon, a grower, explains that cherry trees planted between 1995 and
`2002 were typically planted at spacings allowing between 225 to 350 trees per acre.
`(Moon Decl. ¶9.)
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 5
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`growers, only Oswald, Bergh, and Freese had testing agreements with SVC/PICO.
`(Walters Decl. ¶11.)
`Recognizing the commercial value of “late varieties such as 13S 20-9,” Kyle
`Mathison approached SVC/PICO in 1999 seeking exclusive U.S. marketing rights
`for Stemilt Growers of Staccato fruit. (Mathison Decl. ¶2, Ex. A.; id. ¶ 6, Ex. E.) In
`a letter dated July 22, 1999, Ms. Couriard of SVC/PICO questioned whether an
`exclusive license arrangement was possible for Staccato, noting that the answer to
`this question “will depend on initial approaches by PICO to those grower
`collaborators who are already testing the variety in the States.” (Id. ¶6, Ex. E.)
`Additionally, Ms. Couriard noted that “any arrangement [for exclusive U.S.
`marketing of Staccato] has to take into account our mandate of providing
`opportunities for Canadian growers particularly in BC.” (Id.) Additionally,
`SVC/PICO had a “major concern” with Mr. Mathison’s proposal, i.e., “whether a
`production based royalty system can be applied to this variety which is already being
`tested by USA growers other than Stemilt growers.” (Id.)
`In a letter dated July 27, 1999, Ms. Couriard explained that she “started to
`speak with people who are testing 20-9” and that SVC/PICO planned to “seek [a]
`Plant Patent in the States for the Variety.” Indeed, Ms. Couriard noted that “[t]he
`information has been collected and we just need to submit it.” (Mathison Decl.¶ 7,
`Ex. F (emphasis added).)
`Discussions progressed in 1999 and 2000 between Stemilt and SVC/PICO for
`exclusive U.S. marketing of Staccato fruit. In September 1999, SVC/PICO provided
`Mr. Mathison feedback from its investigation of the proposal, particularly its
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 6
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`interviews with stakeholders such as “USA Collaborators testing the cherry variety
`13S 20-9.” (Mathison Decl.¶ 8, Ex. G.) Summarizing the situation and next steps of
`the ongoing discussion between SVC/PICO and Stemilt, Ms. Couriard explained
`“[t]here are a number of B.C. testers and growers who have expressed concerns
`about releasing wood to the USA . . . .” (Id.) She noted further that these stakeholders
`were invited to submit written comments and that the Okanagan-Kootenay Cherry
`Growers Association (“OKCGA”), a Canadian trade association, was meeting on
`October 5, 1999 “and the issue [i.e., the proposal from Stemilt for sole fruit
`marketing rights of 13S 20-9] is on the agenda.” (Id.)
`On February 7, 2000, SVC/PICO wrote Mr. Mathison informing him that
`exclusive marketing of Staccato by Stemilt would have to wait. She explained
`“following extensive discussion with the owners, PICO Directors, BC growers, and
`USA testing programme collaborators it has been determined that we are unable to
`proceed with the proposal.” (Mathison Decl.¶ 10, Ex. I.) She explained further that
`
`[t]he selection has been up to now just that – a testing selection – not a
`variety. Our aim as with any selection is to have testing done in a
`number of different situations. With 13S 20-9 the geographical areas
`have been well covered. Hence the decision last year to direct testers
`towards alternative selections. The distribution of further wood has
`ceased until the breeder determined its course. Dr. Frank Kappel is
`now finalising a name for it, and plant protection applications are
`proceeding. Licensing is likely to follow to enable access by Canadian
`growers only at this stage.
`
`(Id.) (emphasis added).
`On March 13, 2000, SVC/PICO filed an application for plant variety
`protection in Canada on Staccato. (Walters Decl.¶4, Ex. C.) According to minutes
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
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`of the OKCGA from March 17, 2000, B.C. cherry growers were optimistic in view
`of their “positive future to look forward to especially with the introduction of new
`late varieties such as ‘Stacato’, [sic] (13s-20-9).” (Mathison Decl.¶ 9, Ex. H.)
`At least as early as March 4, 2002, SVC/PICO solicited proposals for
`exclusive marketing rights for Staccato fruit in the United States. (Id. ¶11, Ex. J.)
`Exclusive rights to market Staccato fruit in the U.S. were ultimately awarded to
`Stemilt and in September 2002, Stemilt published an advertisement in the Good Fruit
`Grower explaining that “PICO is offering Amnesty until October 15, 2002, to all
`growers who report their plantings voluntarily.” (Walters Decl.¶7, Ex. F.) The
`advertisement explained further that “[a]fter that date, PICO will be required to
`prosecute all violators to the maximum degree allowed by law.” (Id.)
`A number of growers responded to SVC/PICO’s offer of amnesty for
`“illegal”4 plantings of Staccato including Maria Alvarado, Don Nusom, Smith
`Orchards, Norm Gutzweiler, Rick Derry, John Oaks, Pete Van Well, Jim Johnson,
`Tye Fleming, Mark Clayton, and Brian Westerdahl. (Walters Decl. ¶2, Ex. B.)
`III. ARGUMENT
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`A. Relevant Legal Standards
`Summary Judgement Standard
`1.
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`A movant is entitled to summary judgment if the record shows that that there
`is no genuine issue as to any material fact. Fed. R. Civ. P. 56(c). A genuine issue for
`trial exists only when “the evidence is such that a reasonable jury could return a
`
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`4 There was nothing “illegal” about U.S. growers’ Staccato plantings at this
`time. Many growers paid full commercial prices for the trees and SVC/PICO had no
`contractual or patent rights prohibiting use by most of these “amnesty” growers.
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`verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
`248 (1986).
`
`2.
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`Invalidity on Summary Judgment
`
`Invalidity is a matter of law based on underlying facts. Meds. Co. v. Hospira,
`Inc., 827 F.3d 1363, 1365 (Fed. Cir. 2016). Courts grant summary judgment on
`invalidity when a product embodying the subject matter of a patent claim was on
`sale before the critical date. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359,
`1366-67 (Fed Cir. 2007) (affirming district court’s grant of summary judgment for
`canola oil embodying the invention sold with commercially definite terms before
`critical date); Nelson v. K2 Inc., 2009 U.S. Dist. LEXIS 8308, *3, 90 U.S.P.Q.2D
`(BNA) 1108, 1109 (W.D. Wash. February 5, 2009) (granting summary judgment of
`invalidity for patent claims covering skis that were on sale as shown in invoices).
`
`3. On-Sale Bar
`
`Under the version of the Patent Act that governs this case (i.e., in effect prior
`to the passage of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`effective September 16, 2012), “[a] person shall be entitled to a patent unless … the
`invention was . . . on sale in this country, more than one year prior to the date of the
`application for patent in the United States.” 35 U.S.C. § 102(b). The Supreme Court
`has long held that Congress imposed conditions on the “limited opportunity to obtain
`a property right in an idea,” to further the goal of “motivating innovation and
`enlightenment” while also “avoiding monopolies
`that unnecessarily stifle
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 9
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`competition.” Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.
`Ct. 628, 632, 202 L.Ed.2d 551 (2019) (quoting Pfaff, 525 U. S. 55 at 63)). The
`Supreme Court has also explained that the Patent Act encourages prompt filing and
`discourages commercialization of a patent before filing an application: “an inventor
`loses his right to a patent if he puts his invention into public use before filing a patent
`application,” and “[h]is voluntary act or acquiescence in the public sale and use is
`an abandonment of his right.” Pfaff, 525 U.S. at 64; Merck & Cie v. Watson Labs.,
`Inc., 822 F.3d 1347, 1351 (Fed. Circ. 2016) (“[A]n inventor acquires an undue
`advantage over the public by delaying to take out a patent, inasmuch as he thereby
`preserves the monopoly to himself for a longer period than is allowed by the policy
`of the law”).
`A patent is invalid under the on-sale bar if, before the critical date, the
`invention was both (1) the subject of a commercial sale or offer for sale and (2) ready
`for patenting. Pfaff, 525 U.S. at 67 (applying pre-AIA 35 U.S.C. § 102(b)).
`Defendants “must demonstrate by clear and convincing evidence that there was a
`definite sale or offer to sell more than one year before the application for the subject
`patent, and that the subject matter of the sale or offer to sell fully anticipated the
`claimed invention.” Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045
`(Fed. Cir. 2001).
`The first prong of the Pfaff test requires a determination of whether a
`commercial offer for sale occurred, which is a matter of Federal Circuit law analyzed
`under the general law of contracts, as opposed to state contract law. Group One, Ltd.,
`254 F.3d at 1047 (“As a general proposition, we will look to the Uniform
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 10
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`Case 2:20-cv-00181-SAB ECF No. 78 filed 07/22/21 PageID.1411 Page 15 of 26
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`Commercial Code to define whether, as in this case, a communication or series of
`communications rises to the level of a commercial offer for sale explaining that the
`offer must meet the level of an offer for sale in the contract sense, one that would be
`understood as such in the commercial community”). The Federal Circuit explained
`that “[o]nly an offer which rises to the level of a commercial offer for sale, one which
`the other party could make into a binding contract by simple acceptance (assuming
`consideration), constitutes an offer for sale under § 102(b).” Id.
`Under the second prong of the Pfaff test, an invention is “ready for patenting”
`if it has been: (1) reduced to practice before the critical date or (2) if before the
`critical date the inventor had prepared drawings or other descriptions of the invention
`that were sufficiently specific to enable one skilled in the art to practice the
`invention. Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1366-67 (Fed Cir.
`2007).
`
`B.
`
`Staccato was Subject to a Commercial Offer for Sale Before the
`Critical Date
`There is no genuine issue of material fact that Staccato was the subject of a
`commercial offer for sale before the critical date. Orders, acknowledgements,
`invoices, growing contracts, and similar commercial documents all show Staccato
`cherry trees (known then as “13S 20-9”) on sale in the United States to growers in
`Washington and Oregon at agreed prices, quantities, and shipping terms. See supra
`§ II. Documents like these easily satisfy the first prong of Pfaff’s two-part test for
`invalidity under § 102(b). See Cargill, Inc., 476 F.3d at 1371. For example, there is
`no genuine dispute as to when these documents offered Staccato for sale, nor is there
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 11
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`any genuine dispute as to the fact that they offered Staccato for sale. Additionally,
`the commercial nature of these documents shows beyond any genuine dispute that
`they “meet the level of an offer for sale in the contract sense, one that would be
`understood as such in the commercial community.” Group One, Ltd., 254 F.3d at
`1047. Each “could [be made] into a binding contract by simple acceptance (assuming
`consideration).” Id. Indeed, some of the documents reflect binding contracts to sell
`Staccato (see, e.g., (Perleberg Decl. ¶7, Ex. E (growing contract between CBN and
`D&J Orchards), ¶13, Ex. K (growing contract between CBN and D&J Orchards),
`¶20 (growing contract between CBN and Gaspar Orozco) and consummated sales
`(see, e.g., (Perleberg Decl. ¶18, Ex. P (invoice indicating shipment of trees), ¶33,
`Ex. EE (same), ¶48, Ex. TT (same)).
`A finding that Staccato was on sale as a matter of law is supported by the
`Federal Circuit’s decision in Cargill, 476 F.3d at 1369. In Cargill, the Federal
`Circuit affirmed summary judgment of invalidity based on a pre-critical-date letter
`offering patented canola oil for sale. Id. The letter confirmed a verbal offer to sell
`400 pounds of the patented oil at a price of $1.50 pound, including specific shipping
`terms. Id. Finding the letter “unambiguous” and “abundantly plain from the price,
`quantity, and delivery terms on the face of the . . . letter,” the Federal Circuit rejected
`the patent-owner’s argument that the letter was merely “providing [the customer]
`with a sample of the claimed oil for testing purposes.” Id. at 1712-13.
`Similarly, in Enzo Biochem v. Gen-Probe, Inc., 424 F.3d 1276 (Fed. Cir.
`2005), the Federal Circuit rejected the patent-owner’s argument that a pre-critical
`date “research and development agreement,” offered the patented product “solely
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 12
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`for research purposes.” On the contrary, the agreement contained “necessary
`contractual obligations on the parties to constitute a commercial offer for sale.” Id.
`at 1281 (citing Group One, 245 F.3d at 1046-48.)
`It makes no difference whether the sales documents or the sales themselves
`were intended to remain confidential. Even a commercial sale to a third party who
`is required to keep the invention confidential may place the invention on sale.
`Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357 (2001) (invalidating patent
`claims based on “sales for the purpose of the commercial stockpiling of an
`invention” that “took place in secret”); Woodland Trust v. Flowertree Nursery, Inc.,
`148 F. 3d 1368, 1370 (1998) (“Thus an inventor’s own prior commercial use, albeit
`kept secret, may constitute a public use or sale under §102(b), barring him from
`obtaining a patent”). See also Helsinn, 139 S. Ct. at 632 (applying post-AIA § 102(b)
`and clarifying that the AIA did not change the law).
`Nor does it make any difference whether the inventor was aware of these
`third-party sales or offer for sales. The Federal Circuit has long-emphasized that the
`on-sale bar “is not limited to sales by the inventor or one under his control, but may
`result from activities of a third party.” J.A. LaPorte, Inc. v. Norfolk Dredging Co.,
`787 F.2d 1577, 1581 (Fed. Cir. 1986) (collecting cases). Indeed, no authorization is
`required by the inventor for a third-party’s sale sufficient to trigger the on-sale bar.
`Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315, 1318 (Fed.
`Cir. 1999) (“the statutory on-sale bar is not subject to exceptions for sales made by
`third parties either innocently or fraudulently”). See also Evans Cooling Sys., Inc. v.
`General Motors Corp., 125 F.3d 1448, 1452 (Fed. Cir. 1997) (reasoning “even if the
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`MOTION FOR PARTIAL SUMMARY JUDGMENT ON
`INVALIDITY - 13
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`Case 2:20-cv-00181-SAB ECF No. 78 filed 07/22/21 PageID.1414 Page 18 of 26
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`
`independent dealership violated internal procedures by offering the 1992 Corvette
`for sale prior to the model announcement date GM had set, this does not make the
`offer for sale any less an offer”). Moreover, § 102(b) only requires that the invention
`be “on sale” before the critical date. No actual sale or delivery is required. See Merck
`& Cie v. Watson Laboratories, Inc., 822 F.3d 1347, 1352 (Fed. Cir. 2016)
`(explaining that “[a]n offer to sell is sufficient to raise the on-sale bar, regardless of
`whether that sale is ever consummated”). See also Hamilton Beach Brands, Inc. v.
`Sunbeam Prods., Inc., 726 F.3d 1370, 1374–76 (Fed. Cir. 2013) (explaining that the
`on-sale bar applies to a com

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