On December 15, 2024, a Wilson Sonsini patent litigation team secured a summary judgment victory for client Thermal Shipping Solutions based on recent Federal Circuit case law interpreting patent invalidity under the America Invents Act (AIA). This decision is one of the first in the nation to address the “public disclosure” and “derivation” exceptions under 35 U.S.C. § 102.

Thermal Shipping provides insulation products for use in food kits and pharmaceuticals. In 2015 and 2016, Thermal Shipping collaborated with a manufacturer, CMS, to develop a recyclable plastic thermal insulation product. The parties’ collaboration ended in mid-2016, with both companies commercializing competing insulation products and each filing for patents.

In late 2021, CMS sued Thermal Shipping, alleging that Thermal Shipping willfully infringed CMS’s patent. CMS sought approximately $20 million in damages and a permanent injunction against Thermal Shipping.

Before trial, Thermal Shipping moved for summary judgment on the ground that CMS’s patent was invalid because Thermal Shipping offered to sell its product by April 2016, two months before CMS filed for its patent. CMS responded that Thermal Shipping’s 2016 product was not prior art and invoked two new statutory exceptions to invalidity created by the AIA. First, CMS claimed it had “publicly disclosed” its claimed invention (35 U.S.C. § 102(b)(2)(B)) by February 2016 by selling its product and supplying samples to two customers. Second, CMS argued that Thermal Shipping’s 2016 product was “obtained directly or indirectly”—i.e., derived—from CMS’s inventors (35 U.S.C. § 102(b)(2)(A)) based on the parties’ prior collaboration. The court rejected both of CMS’s arguments. As to “public disclosure,” the court relied on a recent Federal Circuit decision, Sanho Corp. Kaijet Tech. Int'l Ltd., 108 F.4th 1376 (Fed. Cir. 2024), holding that private sales did not constitute a public disclosure. The district court thus rejected CMS’s public disclosure argument for similar reasons. The court also rejected CMS’s derivation argument because Thermal Shipping presented unrebutted evidence that it had independently conceived of the accused product prior to the parties’ collaboration. 

This is a significant victory for Thermal Shipping, which has been forced to endure nearly two years of allegations that it willfully violated CMS’s intellectual property, causing significant harm to the company.

The Wilson Sonsini patent litigation team that represented Thermal Shipping Solutions in the matter consisted of Ryan Smith, Chris Mays, Talin Gordnia, Ava Shelby, Alex Miller, Arlene Apodaca, Kathie Ramos, and Robin Pezzimenti.