## Facts

- Continental owned U.S. Patent No. 4,108,324, claiming a plastic bottle bottom with radial ribs designed to improve flexibility, impact resistance, and deformation resistance.
- Claim 1 required that each rib be “hollow.”
- Continental sued Monsanto and related entities in the Southern District of Ohio for infringement based on accused plastic beverage bottles.
- Monsanto asserted invalidity based on: (a) anticipation under 35 U.S.C. § 102(a) by the Marcus patent; and (b) anticipation/on-sale bar under 35 U.S.C. § 102(b) based on an alleged “Marcus bottle” associated with Admiral Plastics and Coca-Cola more than one year before the filing date.
- On § 102(a), Monsanto argued inherent anticipation: because Marcus’s bottle was made by injection blow molding, its ribs necessarily would be hollow.
- On § 102(b), Monsanto relied on development/supply arrangements stating quantities and maximum prices but conditioning any purchase on whether a “satisfactory bottle was developed,” within a confidential development effort.
- The district court granted partial summary judgment that the ’324 patent was invalid (including anticipation and § 102(b) on-sale bar) and entered final judgment under Rule 54(b).
- Continental appealed.

## Issues

1. Whether summary judgment was proper that the Marcus patent inherently anticipated the claimed “hollow” ribs under 35 U.S.C. § 102(a), including whether “hollow” was correctly construed.
2. Whether summary judgment was proper that the Marcus bottle activity triggered the 35 U.S.C. § 102(b) on-sale bar more than one year before filing.
3. Whether summary judgment was proper that the claims were obvious under 35 U.S.C. § 103 despite disputed facts, including secondary considerations.

## Decision

- The Federal Circuit reversed the partial summary judgment of invalidity and remanded.
- The court held the record did not permit summary judgment that the Marcus patent inherently disclosed “hollow” ribs as claimed.
- The court held summary judgment was improper on the § 102(b) on-sale bar because the evidence showed a conditional, developmental program and material factual disputes over whether a qualifying offer for sale or sale occurred.
- The court held obviousness could not be resolved on summary judgment given disputed factual questions concerning the prior art and secondary considerations.

## Legal Principles

- Summary judgment is proper only when there is no genuine dispute of material fact and the movant is entitled to judgment as a matter of law; contested technical questions commonly preclude summary judgment in patent validity disputes.
- Claim terms must be construed in view of the specification and prosecution history; construction cannot be replaced by assumptions tied to a manufacturing process.
- Inherent anticipation requires that the missing limitation be necessarily present in the prior art; probability, inference, or disputed expert testimony is insufficient to establish inherency as a matter of law.
- The § 102(b) on-sale bar requires evidence of a qualifying commercial sale or offer for sale; agreements conditioned on successful development of a satisfactory product and occurring within a confidential development setting may not satisfy the bar as a matter of law.
- Obviousness under § 103 is fact-dependent (scope/content of prior art, differences from the claims, level of skill, and secondary considerations) and is generally unsuitable for summary judgment where these facts are disputed or underdeveloped.

## Conclusion

The Federal Circuit set aside a summary judgment holding a bottle-bottom patent invalid, finding that inherency, on-sale bar, and obviousness determinations turned on disputed factual questions—particularly the meaning and presence of “hollow” ribs and whether pre-filing activity reflected commercial exploitation rather than conditional, confidential development.


Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991)