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Application Of On-Sale Bar Of Patented Method Requires Completion Of All Steps Prior To Critical Date

Client Alert | 1 min read | 12.20.06

In Plumtree Software, Inc. v. Datamize, LLC (No. 06-1017; Dec. 18, 2006), the Federal Circuit vacates summary judgment of invalidity of Datamize's patents and remands for a determination of whether all of the steps of the patented method were actually performed before the critical date for an on-sale bar. The patented invention is for a method and computer program for creating other computer programs, which could be used to create an interactive kiosk system.

The patentee met with representatives of Ski Industry of America (SIA) before the critical date and offered to create a kiosk for an SIA tradeshow. Subsequently, and prior to the critical date, SIA sent a letter to the patentee confirming the patentee's participation in the trade show. The district court decided that an on-sale bar was triggered, because there was an agreement before the critical date that the patentee would provide a software/hardware package necessary to produce the interactive touch-screen information center as presented to SIA.

The Federal Circuit vacates the summary judgment, because the record does not clearly indicate (A) whether the agreement required use of the patented method, or (B) whether all of the steps of the patented method were performed before the critical date. The patentee began creating the kiosk system using the patented method prior to the critical date, but the kiosk system was not finished until after the critical date. Thus, the Federal Circuit remands for a determination of whether all of the steps of the patented method were performed prior to the critical date.

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Client Alert | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

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