IP Law Daily, PATENT—S.D. Fla.: Summary judgment granted in aircraft fuel safety system dispute, (Aug 13, 2024)

By Kevin M. Finson

The on-sale bar invalidated patents for an ignition mitigation system for aircraft fuel tanks because the patentee had offered to sell the system incorporating the patented invention more than a year prior to applying for the patents, even though the patented system was not yet FAA approved.

A patentee failed to show any error in a magistrate’s report recommending summary judgment of invalidity of fuel tank safety patents, the U.S. District Court in Miami has held. The patents were invalid under the on-sale bar due to the patentee’s three offers to sell its proprietary system incorporating the patents more than a year prior to the application (Jetaire Aerospace, LLC v. AerSale Inc., No. 1:20-cv-25144-DPG (S.D. Fla. Aug. 9, 2024)).

Jetaire Aerospace, LLC (Jetaire) was the owner of U.S. Patents Nos. 9,849,998 (the ’998 patent), 10,633,109 (the ’109 patent), and 10,800,541 (the ’541 patent), which together culminated in what Jetaire called its “Invicta Kit,” a method and system for using reticulated polyurethane safety foam in coordinated shapes to fill fuel tanks and thereby accomplish ignition mitigation. Jetaire brought suit against AerSale, Inc. (AerSale) for infringement of all three patents. AerSale moved for summary judgment on the ground that the asserted patents were invalid under the on-sale bar. A magistrate judge found the asserted patents invalid due to three separate offers of sale of the Invicta Kit more than a year prior to Jetaire’s patent applications. Jetaire objected to the magistrate’s report and recommendations.

Method and apparatus claims. Jetaire argued that the magistrate erred in not distinguishing method and apparatus claims in its on-sale bar analysis, claiming that the Invicta Kit did not encompass both sorts of claims. The court found this argument was waived because Jetaire did not present it to the magistrate.

Commercial offer. Jetaire argued that the Invicta Kit could not possibly have been commercially offered for sale at the time of the alleged offers because it lacked the required Federal Aviation Administration (FAA) approval. The court held that the offers were valid under the law of contracts and the UCC even if they may have been understood to be contingent on FAA approval. An offer subject to a contingency was still a valid offer.

Experimentation. Jetaire argued that the magistrate erred by not considering all 13 Allen factors to determine whether the offers were for experimental use. The court found that the Federal Circuit had expressly held that not all 13 factors would be relevant in every case, and that there was no evidence from which a jury could find the intended use was experimental.

Ready for patenting. Finally, Jetaire argued that the magistrate’s report failed to show the Invicta Kit was reduced to practice at the time of the offers. The court found that this was neither the argument made by AerSale nor the theory adopted by the magistrate. Rather, the magistrate had found that a sufficient written description existed to practice the invention when Jetaire had applied for a Supplemental Type Certificate from the FAA. Jetaire did not address this argument in its objections.

The court adopted the magistrate’s report and recommendations in its entirety.

The Case is No. 1:20-cv-25144-DPG.

Judge: Gayles, D.

Attorneys: Carey Matthew Rozier (Rozier Hardt McDonough PLLC) for Jetaire Aerospace, LLC, Jetaire Flight Systems, LLC, and Michael Williams. Amelia Toy Rudolph (Eversheds Sutherland US LLP) for AerSale Inc.

Companies: Jetaire Aerospace, LLC; Jetaire Flight Systems, LLC; AerSale Inc.

Cases: Patent FloridaNews