IP Law Daily, PATENT—D. Del.: Partial summary judgment of no on-sale bar denied in modem dispute, (Oct 24, 2025)

By Kevin M. Finson, J.D.

The on-sale bar applied to the patent claims at issue because the product sold more than a year before the priority date embodied the claimed invention, even if it was kept secret.

In an action filed by Cisco Systems, Inc. seeking declaratory judgment of no infringement, patentee Ramot at Tel Aviv University, Ltd. was not entitled to summary judgment that the on-sale bar did not apply to the claims of two patents at issue, the U.S. District Court in Wilmington has held. The secrecy of the technical details of the product was not relevant because the product sold more than a year before the priority date embodied the claimed invention (Cisco Systems, Inc. v. Ramot at Tel Aviv University, Ltd., No. 1:21-cv-01365-GBW, (D. Del. Oct. 23, 2025)).

Cisco Systems, Inc. (Cisco) brought two suits, later consolidated, for declaratory relief that its products did not infringe U.S. Patents Nos. 11,133,872 (the ’872 patent) and 11,342,998 (the ’998 patent), owned by Ramot at Tel Aviv University, Ltd. (Ramot). Ramot counterclaimed for infringement of both patents.

Cisco raised the affirmative defenses that the asserted patent claims were invalid under the on-sale bar prohibition of 35 U.S.C. § 102, based on the Nortel/Ciena Next Generation Modem (NGM) Transmitter System (the Nortel Modem), which was on sale in the United States more than a year prior to the earliest claimed priority date. It was undisputed that the technical documents from which Cisco’s expert determined that the Nortel Modem embodied the claimed invention were kept and marked secret. Ramot moved for partial summary judgment on the issue of the on-sale bar.

On-sale bar. Ramot argued that the on-sale bar should not apply because the documents that explained the way the product worked were secret. The court found that Federal Circuit precedent made clear that when the product itself embodied the claimed invention, as opposed to when the product was simply produced by a secret and patented method, the on-sale bar applied, regardless of any attempt at secrecy.

The court denied the motion for partial summary judgment.

The Case is No. 1:21-cv-01365-GBW.

Judge: Williams, G.

Attorneys: Jennifer Ying (Morris, Nichols, Arsht & Tunnell LLP) for Cisco Systems, Inc. and Acacia Communications, Inc. Andrew Colin Mayo (Ashby & Geddes) for Ramot at Tel Aviv University Ltd.

Companies: Cisco Systems, Inc.; Acacia Communications, Inc.; Ramot at Tel Aviv University Ltd.

Cases: Patent DelawareNews