Helsinn v. Teva (Fed. Cir. 2017) [HelsinnDecision]
In an important decision, a Federal Circuit has interpreted the post-AIA on-sale bar of 35 U.S.C. § 102 to include sales made available to the public (i.e., noticed in an SEC filing), even if the published portion does not fully disclose the invention.
[Post-AIA On sale bar attaches] if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.
The court here refused to particularly decide whether truly secret sales still qualify as prior art under Section 102, but (in my view), appears to strongly suggest that the on sale bar will continue to apply in the truly secret cases as well.
The AIA did not directly change the pre-AIA “on sale” language, but did linguistically suggest that only public offers for sale should be considered as prior art. This change from prior law comes from the rewritten Section 102 that bars patentability of an invention that “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). Here, the linguistic argument is that the “otherwise available to the public” clause limits on-sale activity to those that are also available to the public. This is the interpretation taken by the USPTO. However, the PTO’s interpretation is given no deference by the Federal Circuit. And, although some congressional history supports the change, the linguistic argument is not strong (in my opinion).
In the present case, the pre-filing sale was actually publicly announced in an SEC filing, and that filing included a redacted version of the contract. According to the court, the disclosed agreement included “all the pertinent details of the transaction other than the price and dosage levels.” Although the dosage levels were a key element of the claimed invention, the Federal Circuit ruled that the sale nonetheless created prior art:
Requiring such disclosure as a condition of the on-sale bar would work a foundational change in the theory of the statutory on-sale bar. Indeed, the seminal Supreme Court decision in Pennock addressed exactly such a situation— the public sale of an item but the withholding from “the public the secrets of [the] invention.” Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19 (1829). Failing to find such a sale invalidating, said the Court, “would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries.” Id.