Helsinn En Banc Status

TopSecret

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2017)

An invention that is “on sale” prior to the associated patent’s critical filing date is not patentable. 35 U.S.C. 102.  Although the AIA used the same “on sale” wordage as pre-AIA 102(b), many believe that it should interpreted differently.  The particular question is whether private and non-public offers-to-sell still count as prior art post-AIA. In Helsinn, the Federal Circuit did not fully answer the question since some information regarding Helsinn’s pre-filing sale had been made public — still the invention was not publicly disclosed.  Thus, Helsinn made the limited holding that “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale.”

In its petition for en banc review, Helsinn asks the following question:

Does mere public disclosure of the “existence” of a sale trigger the on-sale bar under 35 U.S.C. § 102(a)(1) of the America Invents Act (“AIA § 102(a)(1)”), even though the invention was not made “available to the public” before the critical date?

In June, Helsinn filed for en banc review with support from the big players:

  • Helsinn-Petition
  • Teva-Response
  • AIPLA (prior “on sale” activity must make the invention available to the public)
  • BIO (negative consequences will flow from the panel decision)
  • Boston (court should take the case and decide the issue)
  • IPO (court should rule en banc, decision is contrary to MedCo)
  • PhRMA (the legislative history “reflects [Congress’s] unmistakable intent to limit the invalidating effect of the on-sale bar to public activities”)
  • Lamar Smith (arguing that the statute now limits “on sale” to sales activity that makes the invention available to the public)

 

I agree that the Federal Circuit should hear the case en banc, reconcile with MedCo, and substantially settle the law.

119 thoughts on “Helsinn En Banc Status

  1. The best point I saw made in favor of the patentee was a point half-made by the AIPLA brief: That in amending the headings of 102, Congress struck “loss of right.” But what is an on sale bar but a loss of right? — for that is what the Supreme Court in Pennock v. Dialogue held to be the effect of placing the invention on sale by the inventor prior to his filing a patent application.

    The best rejoinder to this was made in the Teva brief that a requirement that the entire invention be disclosed in the on sale offer makes the on sale offer equivalent to a printed publication and therefore anticipatory either as a printed publication or is a public use. This would render “on sale” surplusage.

    Obviously there is tension between the headings and the inclusion of on sale in the text.

    But where the AIPLA really loses it is that it fails to understand that on sale has never been considered to be prior art under the cases (but there are exceptions). Rather on sale is a bar, and equitable bar that was made statutory in 1836 when Congress enacted the holding of Pennock v. Dialogue. That is primarily why secret commercial use by 3rd parties that does not disclose the invention has never been considered to be prior art.

    Another point that has to be made has to be made. Pennock was decided in 1828, before “on sale” was first placed in the statutes (1836). It decision was based both on the English cases on point, and on the Constitution and its policies. It provided an equitable bar, not a legal bar, to the patenting of inventions that have been in commercial use by the inventor prior to the inventor’s filing of a patent application. There is nothing in the AIA that would prevent the Supreme Court’s holding that this equitable bar continues to apply even after the statutory change in the definition of prior art. Lemley said as much in his 2015 essay on Public Use even though Lemley seemed to be completely unaware of Pennock v. Dialogue. Lemley described public use being in the statute only as of 1870.

  2. Roebuck & Garbett v. Stirling, 1 WPC 45 (House of Lords, 1774)

    Method of manufacturing sulfuric acid.

    After 20 years of trade secret use, RG observed S building a factory. By spying, they determined that S was intending to use the same method. RG filed and obtained a patent, sued, and obtained an injunction. While the case was ultimately disposed by a demonstration of prior public use by others, S objected strenuously to the whole idea that one could practice an invention in secret and then seek a patent only when they discover others are preparing to use the trade secret.

    Webster’s note at 44 had this:

    “In Wood & others v. Zimmer & others, 1 Holt, N.P. C., post 82, the patentee had sold the article in the public market four months before the date of the patent. Such sale .,.. evidence of the invention baying been used and exercised for the
    purpose of commerce, and not simply for the purpose of experiment, before the date of the letters patent; such use and exercise, and the subsequent obtaining a patent, are contrary to the whole spirit of the patent laws, which require a disclosure for the benefit of the public, whereas the secret might be lost to the public by such a course of proceeding; and further, the patentee might thus have a monopoly for a much longer period than 14 year, were he allowed to practise
    the invention in secret until there was danger of its being discovered, or some other circstances induced him to take out a patent.” 1 WPC at 44,

    1. Fine. R&G’s behavior is contrary to the spirit of the laws in effect in that particular time and that particular sovereign jurisdiction. That is not to say that a different sovereign jurisdiction, in a different era, is somehow constrained against constituting their laws in such a way as to make that behavior permissible.

      The downside of the new AIA is that it tolerates (and rewards) R&G’s shenanigans. The upside is that this more powerfully incentivizes disclosure. That is a reasonable trade-off for a sovereign to make.

      1. Greg, you do realize, I hope, that Story cited and relied on Woods v. Zimmer not only for its holding, but for its rationale. Pennock at 20.

        You speak of other times and other jurisdictions. But it remains that English common law is binding on US courts unless overruled by statute.

        After Pennock came down, Congress enacted its holding in 1836 by putting “on sale” into the statute for the first time. “Public use” was also included as a bar and that clearly meant what it did in both R & G v. Stirling and in Woods v. Zimmer.

        Finally, the problem we have with a Congressional overrule, is that it has to be unambiguously clear given that it will overrule a Supreme Court case. No such lack of ambiguity exists in the AIA, now does it?

        Further, we get holding that providing a patent monopoly as a backup to an indeterminate trade secret monopoly is both contrary to the idea that the public be put into possession of the invention after a fixed term, but also the requirement of the constitution that the period of monopoly have a limited time.

        1. I confess that “otherwise available to the public” seems sufficiently unambiguous to me. Maybe in time we will learn whether the SCotUS finds it so.

        2. Further, we get holding that providing a patent monopoly as a backup to an indeterminate trade secret monopoly is both contrary to the idea that the public be put into possession of the invention after a fixed term, but also the requirement of the constitution that the period of monopoly have a limited time.

          NOT ONLY did such a holding make the mistake of conflating two very different types of protection (under two very different portions of the Constitution), that holding was wiped away by Congress clear statements as to a WHOLESALE reconfiguring of the 102/103 portions of law (rampant throughout Congress’s actions, including – but by no means limited to The Soliloquy), but also look at the fricken heading of the section of law.

          With clear purpose and intent, the personal bar language was removed.

          The only way that people do not see these elements for what they are is if they purposefully clench tight their eyes to them.

          Ignorance of the law is no excuse.
          Purposeful ignorance of the law – by attorneys wanting to discuss the law – is worse, far worse. I daresay it borders on the unethical.

    2. Well yes, Ned. But that was before the Patents Act of 1977 brought into UK law for the first time the notion of “made available to the public”.

      There then followed some years of “debate”, what exactly the expression means.

      But one could see from the outset of the “debate” that there was only ever going to be one outcome. And so it proved. Perhaps that explains the level of confidence bestowed on that expression, in plugging it in to the AIA.

      Be that as it may, perhaps it will turn out to be different, in the USA. It usually does. But in that case, the court’s reasoning will be fascinating.

      1. Max, there is a difference between prior art and an equitable bar. No doubt prior art has to be available to the public.

        Note, the rule that one could not publicly sell the invention before one files an application apparently stems from Wood v. Zimmer, the very case also relied on by Pennock v. Dialogue. That case opined very negatively on prior secret use before one filed for a patent. That sounded in equity, not law.

        What cases in England followed or distinguished Wood v. Zimmer?

        1. Congress eliminated that equitable bar Ned.

          Try to remember: statutory law and the allocation of authority to write that statutory law went to only ONE of the three branches of the government.

          1. anon, whether congress eliminated the equitable bar is actually the question on the table for decision.

            The sale of a product to the public embodying the invention is a public use. One does not even have to know how to make it, just that it embodies the claimed invention. Then why is on sale even required in the statute. It inclusion makes no sense.

            But the sale to the public of products of a patented method virtually never disclose the method. This is why the on sale bar exists. It exists to prevent the inventor from commercially exploiting an invention using secrecy for potentially generations and then seeking a patent only when he knows that others are using the invention so as to shut them down at an arbitrary time of his choosing. The on sale bar is designed to prevent this kind of gross miscarriage of justice. See R & G v. Stirling case as an example.

            Whether Pennock involved a method patent is unclear. But it not unclear from Wood v. Zimmer, where the court clearly held that the “invention” (a method) was on sale and a bar to the inventor’s obtaining a patent when the inventor sold products made by the patented method prior to the obtaining of a patent.

            1. It is NOT a question on the table for decision – in the manner of the judicial branch writing whatever they feel.

              Have you read the Armitage brief yet? Besides your errant “Con law” argument, do you see anything else that you would find fault with?

            2. The on sale bar is designed to prevent this kind of gross miscarriage of justice. See R & G v. Stirling case as an example.

              I would like to quibble here. What R&G did seems squirrley, but I am not convinced that it rises to a level of “gross miscarriage of justice.”

              It trespasses against a basic sense of fairness for R&G to keep their process a secret, and avail themselves of the market exclusivity that comes from secrecy for a potentially unlimited time, and then when the public is about to get the benefit of someone having cracked the secret, to leap in and apply for a patent. I can understand, therefore, why a sane legislature might craft the law to punish such behavior (as did the “abandon, suppress, or conceal” language of the old §102(g)).

              On the other hand, fairness is not the only consideration to which patent law needs attend. There are also considerations of what sort of policy and rules will best incentivize disclosure. It might seem unfair to reward R&G’s dilatory behavior, but fundamentally, we want disclosure, and sometime to get what you want, you have to pay bad people for their services. Therefore, it is also understandable why a sane legislature might (as the new §102(a)(1) does with its “otherwise available to the public”) do away with the old statutory bars, and give the reward to whomever discloses first, even if that first discloser is something of a bad actor.

              There is, in other words, a policy trade off here, and the legislature is the body best suited to decide that trade off in its considered judgment. It works against well functioning public policy to try to constitutionalize this issue, because that takes the trade off out of the hands of the legislature (which is well suited to consider the trade-off, and to change its mind if it finds that a given policy is not working), into the hands of the judiciary (which has fewer investigative resources to explore all of the public policy implications of a given choice along the trade-off spectrum, as well as few opportunities to reconsider the choice made if it turns out to be a poor choice).

              1. Greg, I beg to differ with you as to who is the best to determine whether in a particular case ruling one way or the other is better within the policy of the law and the Constitution. Congress, as a whole, is a political body and acts at times against the interest of the majority. Witness the AIA.

                1. Ned,

                  Setting policy by re-writing the statuory law that is patent law runs directly against the Constitutional clause allocating sole authority to the legislative branch.

                  You – having made Separation of Powers arguments yourself recently – of all people, should recognize that the Separation of Powers doctrine applies TO ALL THREE branches.

        2. Thanks Ned. I think I see the public policy difference, between an equitable bar and a lack of novelty. Can’t help you though, on English cases citing W v. Z.

          In your post I see text from W v. Z, namely this:

          “……the whole spirit of the patent laws, which require a disclosure for the benefit of the public”

          Quite so! The Quid pro Quo, in a nutshell!

          Modern patent law in Europe has it that any enabling disclosure (of any subject matter within the ambit of the patent claim the subject of the case) to even one member of “the public” and prior to the filing date at the PTO is enough to disqualify that claim. Is that not the perfect fusion of law and equity which the AIA now belatedly enacts?

        3. Max, there is a difference between prior art and an equitable bar.

          Ned, can you cite a case making this distinction? I am not convinced that this is an accurate statement of the law.

          1. Greg,

            While there might be a “real world” difference (they are technically different things), your question to Ned alights upon the important patent law discussion points that Ned simply refuses to (fully) grasp.

            Congress is the branch of the government allocated the Constitutional authority to write the statutory law that is patent law.

            Ned wants to ignore this fundamental concept.

            In days past (particularly, pre-1952), the Supreme Court had a heavy influence on patent law. In part, this may have been because early law written by Congress punted on the “hard” question of defining “invention,” and Congress permitted the judicial branch to use the judicial tool of common law evolution to set the meaning of the term.

            As has been unequivocally shown, this power was str1pped from the Supreme Court in the Act of 1952.

            Further, most legal minds are more aware today of the (necessary) divisions of power between the branches of the government, and the Separation of Powers doctrine is one even Ned embraces (partially) when he wants to (his own case, denied cert and his follow up comments to Oil States).

            With that backdrop, what Congress did was first to place the equitable bars into the same portion of law as prior art, equating them legally.

            What Congress did was then to radically revamp that section of law (known far and wide as a massive revamping – including but most definitely not limited to The Soliloquy), thus eliminating any need to call out ANY specific Supreme Court cases as particularly being overruled.

            What Congress did as part of that radical revamping was to remove the equitable bars. Perhaps it can be said that mere titles of law sections carry little weight, and often that may be true. NOT SO here when the known fact of the matter was such a massive overhaul of that particular section of law. And yet, certain sAmeones insist on continuing to ignore this point altogether.

            When an architect of that Act speaks up and explains the meaning of the Act (the Armitage written brief for Smith); people NEED to understand what is being said.

            Ned has his dogma that simply makes it impossible for him to even think that his view is not correct (and it is NOT correct, as he elevates dicta into dictatorship, demanding a Constitutional “tie” that is simply not there – as has been explained to him by me previously, and pointed out by you here on this thread).

          2. Re citing a case making a distinction between prior art and an equitable bar.
            Yes, Metallizing Engineering and the Fed. Cir. cases following it which make clear that it is only a personal forfeiture bar and not a statutory bar.

              1. Do you recognize that your attempted reliance is for nought, given that Congress acted (twice)…?

                You, like Ned, seem to want to live in a bygone era inwhich no one made a fuss when the Supreme Court stepped out of line.

                To “borrow” the vernacular from Malcolm: the “grown-up” world no longer does that.

            1. Wherein Metallizing Engineering (or some other case) do you see that? I cannot find an unequivocal expression of that supposed distinction in Metallizing Engineering, or any other authority. Near as I can see, prior public use is prior art—full stop. It is as effective against a third party’s attempt at a patent as it is against the public user’s attempt at at patent. Gillman v. Stern, 114 F.2d 28, 31 (2d Cir. 1940) (L. Hand, J., “[T]he statute made any ‘public use’ fatal to a patent, and… thereafter the court held that it was equally fatal, whether or not the patentee had consented to it…”).

              1. Greg, Metallizing Engineering is not statutory public use or prior art – the subject patent was a process that was never publicly disclosed, nor could it be determined from the products made by that process and publicly sold. D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (Fed.Cir.1983), citing Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir.1946); W.L. Gore & Associates Inc. v. Garlock Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), citing D.L. Auld (supra) and Metallizing Engineering; Kinzenbaw v. Deere & Co., 741 F.2d 383, 390 (Fed. Cir. 1984), citing Metallizing Engineering.

                1. Fine, but what language in the case gives us to understand that the bar against patentability of the claimed invention operated only against the patentee? Where in the case do I look for an indication that the patentees sales of the method would not have stood as an obstacle to a third party trying to patent the same method (or an indistinctly similar method)?

                2. Ned, a third party’s patent was not at stake in Pennock. The only party whose patent was at stake in Pennock was Pennock, so it cannot possibly be the holding of Pennock that Pennock’s sales cannot prejudice party C’s patent.

                  You (I gather) are reading Pennock as if the bar to patentability is limited to the inventor who made sales before filing. I read Pennock to say that a sale of the invention is prejudicial to anyone who files after that sale. To what text (in Pennock or elsewhere) can you point to show that my reading is wrong?

          3. In addition to the cases cited by Paul Morgan, all you have to do is read Pennock v. Dialogue. The activities of the inventor prior to filing a patent application were deemed a forfeiture of his right to obtain a patent under principles of equity.

            In the same case, the Supreme Court also decided that “use” the statute had to be a public use – a use by the public. A use by the inventor himself was not deemed to be a public use.

            1. Where in Pennock do you locate the distinction you allege between public use as an “equitable bar” and as “prior art”? I have read Pennock, and I do not see such a distinction made.

              1. Greg, See, Pennock at 23-24. The focus was on the defense that the invention was in use (by others) prior to the discovery. That was deemed “prior art.” It operates as a general bar. Consider 35 USC 103, until mangled by the AIA, also said limited the effect of prior art to that which was prior to the invention. (It is also true that this part of the statute was ignored.)

                But the applicant was required to affirm that the invention was not in use prior to his application. The court held that sale to the public of items manufactured using the invention to be a public use. And, if that public use was caused by the inventor, it was his own fault.

                “But it is not inconsistent with this doctrine, that although he is the first, as well as the true inventor, yet if he shall put it into public use, or sell it for public use before he applies for a patent, that this should furnish another bar to his claim. In this view an interpretation is given to every clause of the statute without introducing any inconsistency, or interfering with the ordinary meaning of its language. No public policy is overlooked; and no injury can ordinarily occur to the first inventor, which is not in some sort the result of his own laches or voluntary inaction.

                …[T]he first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be 24*24 publicly sold for use, before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right; or rather creates a disability to comply with the terms and conditions on which alone the secretary of state is authorized to grant him a patent.”

                Pennock at 23-24

                1. or rather creates a disability to comply with the terms and conditions on which alone the secretary of state is authorized to grant him a patent.”

                  Those terms and conditions to which the ability to comply have been changed by the branch of the government allocated authroirty per the Consitution to so change.

                  AGAIN Ned – read Pennock without your preconceptions of what that case means.

                2. Ned, what I see in pgs. 23 & 24 is that the bar acts against the inventor. What I do not see is that the bar does not act against others, which is what I take you to be saying (please correct me if I am misunderstanding). That is the part on which I want clarification. Where, in Pennock or elsewhere, do you see the assertion that public use by inventor A does not stand as a bar to inventor B?

              2. Greg, the issue never really came up in Dialogue, but it did come up in Metallizing, where the she could use of the invention to produce products that were sold that did not disclose the invention was deemed not to be prior art to third parties.

                1. Where in Metallizing do you see that? I see exactly the opposite. As I quoted in 6.2.1.3.2.2, Metallizing Engineering relies on Gillman v. Stern, 114 F.2d 28, 31 (2d Cir. 1940) (L. Hand, J.) which tells us that “the statute made any ‘public use’ fatal to a patent, and… equally fatal, whether or not the patentee had consented to it… .” Maybe I am missing the part in Metallizing where Judge Hand explains that these public use and on sale bars operate only against the one using or selling, but if so I would be obliged if you could point it out to me.

                2. Greg, the secret commercial use by the inventor was deemed by the district court not invalidating based on case law that secret uses were not public uses. Metallizing at 518.

                  The infinger appealed, and Hand reversed. He in effect continued the prior case law with respect to third parties, but held that when the secret commercial use is by the inventor, it acts as a forfeiture citing Pennock. Id. at 520.

      1. The patent in Wood v Zimmer was for a method of making Verdigrease. Verdigrease is a powder used as a paint pigment or fungicide.

        The patentee has sold the powder made from the patent for four months prior to obtaining his patent. The court ruled his patent void.

        “Some things are obvious as soon as they are made public. Of others, the scientific world may possess itself by analysis. Some inventions almost baffle discovery. But to entitle a man to a patent, the invention must be new to the world. The public sale of that, which is afterwards made subject of a patent, though sold by the inventor only, makes the patent void. It is an evidence that a great quantity was sold in the course of four months before the patent was obtained; and that the [patentees] were in the habit of selling this manufacture. …

        His Lordship left two questions to the Jury : – 1. [Omitted]. – 2. Whether the invention was in public sale before the patent.…

        The jury found both questions in the affirmative – verdict for the defendant. ”

        Id. at 25.

            1. Congress has made it clear: the new “new” is “New to you.”

              Just to be clear, Congress actually said that “novel” (not “new“) is “novel to you.”

              Congress never actually uses the word “new” in §102, either pre- or post-AIA. The AIA version of §102, however, does use “novelty.”

              Intriguingly, where Congress uses different terms in the same statute, it is presumed to mean different things. Burlington N&SFR Co. v. White, 548 U.S. 53, 63 (2006).

                1. It is not clear to me that you have shown any such thing. Congress speaks through statutory text. Congress does not speak through revisers notes. Revisers (that is to say, individual Congress members or staff, not Congress, as such) speak through revisers notes.

                2. I have already addressed this concern of yours, Greg, showing BOTH the “nonstatutory” as well as the “statutory,” in that 101 segues to those other controlling portions of law.

                3. You will please forgive my unnatural density, but I am not following your argument here. How is a “segue” to other code sections evidence that “new” in §101 means the same thing as “novelty” in §102? This seems like a non sequitur to me.

        1. Thanks Ned. This quote reminds me of the early EPO caselaw on prior sale of products, not only those that were susceptible of analysis (reverse engineering) but also those that defied any such analysis.

          Hardly surprising, that whenever it is impossible to get from inspection of the product what is the subject matter of the claim, the prior sale, as such, doesn’t prejudice the novelty of the seller’s patent claim.

          However, purchasers usually require to know what they are buying and usually are not bound by contract to keep that knowledge secret. In this way, the sale of a product that defies any analysis nevertheless typically destroys patentable novelty simply because the purchaser is free, in law and equity, to tell others what is in the product.

          Conversely, if the purchaser is a business associate of the seller, with an obligation (in law or equity) not to break the secret, the sale does not prejudice novelty. But that’s only as it should be, no, for promoting progress in the useful arts, striking the balance between what exclusive rights inventors should be able to accrue, and what exclusive rights are an impediment to progress.

            1. (by the way, the “equity” considerations involved in this topic are not for the courts to readjust – here in our sovereign, our Constitution made it clear that the power of writing the statutory law that is patent law was allocated only to one of our three branches of government, with such “equity concerns” tied into the policy considerations “best suited” for the legislative branch)

  3. What I hear Armitage and others arguing is that statute was amended to permit secret commercial exploitation of an invention for an unlimited period of time and still allow the inventor to obtain a patent if it appears that others are getting close.

    Joseph Story and the Supreme Court of the United States that created the on sale bar in 1828 would be rolling in their graves.

    I have read one of the briefs about allowing secret prior art in China to invalidate American patent as if the secret prior art of a Chinese inventor could invalidate an American inventor’s patent. That never was law (regardless of the former “in this country” limitation) and the person wrote that is trying to mislead.

    However, and let me make this clear, AIA did make secret prior art invalidating prior art to third parties when they are patent applications that eventually end up filed in United States.

    I fundamentally believe that the people behind this are not arguing honestly because they are not talking about and refuse to talk about Pennock v. Dialogue and the consequences of effectively removing the on sale bar from the law.

    Now there is a problem with the on sale bar jurisprudence of the Federal Circuit and that is its idea that sales to an inventor constitute on sale activity when under Pennock v. Dialogue, point was commercial exploitation of the invention by the inventor by sales to the public was the problem being addressed. That part of the Federal Circuit jurisprudence needs en banc review.

    1. anon, you would be more convincing if you could show anywhere in the congressional history where the current law was accurately discussed, or where Pennock v. Dialogue was discussed. I saw a lot of discussion in congressional history about Chinese secret prior art invalidating an American patent as if the extension to China of the on sale bar could have that effect. Obviously, the people backing the AIA did not understand the law or they were trying to mislead Congress. You can see that in the current briefs. Congress was misinformed. And intentionally so it appears to me.

      The backers of the AIA as a whole should not be trusted. We know they systematically excluded contrary opinion and argument from hearings. They gave us, after all, IPR as some sort of improvement to inter partes review. On the whole the work of those behind the AIA has proven to be a disaster to the patent system.

    2. “Joseph Story and the Supreme Court of the United States that created the on sale bar in 1828 would be rolling in their graves.”

      Joseph Story was a judge, not a legislator, so I’m not sure why he would or should be upset if Congress cancelled or modified the on sale bar. That’s Congress’ prerogative.

      1. Atari, you simply have to read Pennock. The basis of its holding was the constitution’s requirement of “limited times.” To permit in inventor a monopoly for an indefinite term by statute would be unconstitutional. Once the commercial exploitation begins, the obligation to file a patent application begins. Congress extended that time up to two years, then one. But it cannot allow indefinite exploitation.

        The interpretation at Armitage argues for is simply unconstitutional. Thus, to preserve constitutionality, the Federal Circuit followed Pennock.

        1. You (yet again) are conflating different time periods under different sections of the Constitution Ned.

          I have explained this previously.

          Trade Secret time is simply different than time of protection afforded under the patent section of the Constitution. Once someone avails themselves of THAT protection under THAT section, the limited times notion is completely satisfied.

        2. Ned, I *have* read Pennock. And to paraphrase the words of the great Inigo Montoya, Pennock does not mean what you say it means.

          Pennock is a straightforward statutory interpretation case, interpreting the 1793 statute. And the holding was this one sentence: “We think, then, the true meaning [of the first part of the 1793 Act] must be, not known or used by the public, before the application.” Justice Story then immediately went on to explain how there’s a good policy reason for the statute saying what it says, but that’s dictum. The holding is sentence quoted above.

          This is NOT a case about an on-sale bar. Although at one point the decision, discussing an earlier English decision, says, “There the inventor had suffered the thing invented to be sold, and go into public use for four months before the grant of his patent; and it was held by the court, that on this account the patent was utterly void.”, that’s talking about there being public use prior to filing the patent application.

          Bottom line: there’s no constitutional mandate for an on-sale bar. Congress can choose to set, or not set, an on-sale bar. Pennock simply doesn’t say what you say it says.

          1. Once upon a time it was Ned Heller himself who presented a link to an article warning of the danger of not understanding the difference between dicta and holding and then trying to a court’s (or Court’a) dicta into actual law.

            He continuously violates the warning from the reference that he himself presented as he loses touch with reality on his Windmill Chase.

      2. Ned has always had a hard time understanding the different roles associated with statutory law and has refused to recognize the proper limitations of the Supreme Court to write patent law.

  4. What about an agreement to agree? e.g., an announcement by Company A that it has “reached an agreement with Company B to enter into an agreement involving the sale of all intellectual property, including not-yet-filed applications?” Under Helsinn, would that announcement mean the end of the patentability of all the inventions in those not-yet-filed apps?

    1. Thanks for that question, MM. Truly, I laughed out loud. What a laugh, I must say.

      Well, readers in the USA, would it? What say you?

      1. Under contract law in many statements, an agreement to agree is void. So that means no contract; thus, patentability is still possible.

        1. I think that’s a reasonable argument.

          What about an announcement that an actual agreement was made to “transfer all IP, applied for or waiting to be applied for”? Does that wipe out the patent rights for all the un-applied for innovation?

    2. I think that there is a fundamental misunderstanding at the base of your question: the on-sale bar does not and has never applied to the sale of the IP. Moleculon Res. Corp. v. CBS Inc., 793 F.2d 1261, 1267, (Fed. Cir. 1986) (“[A]n assignment or sale of the rights in the invention and potential patent rights is not a sale of ‘the invention’ within the meaning of [pre-AIA] section 102(b)”). The on-sale bar is triggered by the sale of the invention itself, not IP rights in the invention.

      A prospective assignment of patent applications may or may not be a valid contract, but it is totally irrelevant to the operation of the on-sale bar.

      1. Thanks Greg. Saved me looking that case up.

        Ned, yes, Bob Armitage and some others do think the AIA statute overruled the Metallizing Engineering equitable forfeiture doctrine so as to “permit secret commercial exploitation of an invention for an unlimited period of time and still allow the inventor to obtain a patent [for 20 more years] if it appears that others are getting close.” If that argument ever gets to the Sup. Ct. it would be a very unappealing one.
        But that is not necessarily the same issue as being able to buy or sell secret prototypes for testing for a limited time that is not really a “commercial exploitation” It is not the same as using a secret commercial process to mass-produce and sell products for many years, and then trying to patent the same process when about to lose secrecy for it.

        1. Note that the Sup. Ct. favorably cited Metallizing Engineering’s public policy basis in Pfaff v. Wells Electronics, Inc., where the Court quoted Learned Hand, saying that: “[I]t is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly.” [Note the “either”]

          1. Judge Hand’s quote seems fine—as far as it goes—as a statement of what the law is, but it is scarcely compelling as an explanation as to why the law ought to be this way. The old Pennock rule (with all due respect to Judge Story, who was one of the few patent law geniuses ever to sit on the Supreme Court) was a bad rule, although maybe it was the best that could be done against the background of a first-to-invent system.

            It is perfectly rational, however, for Congress to say “we want to incentivize enabling disclosure of know-how, and we want so badly to incentivize it that we are willing to offer a bounty to the first person to make the relevant knowledge publicly available. Even if the results of the know-how in question have been circulating publicly for over a year, we will grant a patent to the first person to put that know-how into the public domain.” That is what the new § 102 was intended to do, and what it will do once the CAFC reverses the (poor) panel outcome in this case.

            1. Hear hear. The Quid pro Quo. Time-limited exclusive rights as a reward for an enabling disclosure comparable in scope with the width of the claim.

              Not only perfectly rational but also brings the USA into harmony with the patent law of the rest of the world.

              1. This seems like a stretch, Ned. The constitution authorize the Congress to grant monopolies for a limited time. If one goes down the trade secret track, no monopoly has been granted, so one does not trespass against the IP clause. If one goes down the patent track, then there is a time limit, so once again, no trespass.

                I gather that you think it a trespass if I am allowed to go for an unspecified number of years down the trade secret track, and then switch over the patent track, but I do not see the problem. At the moment that you jump onto the patent track, you acquire a term limit. That is to say, you still only have your monopoly for a limited time.

                You never get a monopoly for an unlimited time, no matter how you jump between tracks, so you cannot trespass against the provisions of the IP clause under the interpretation of AIA § 102 that I am advancing.

                1. I just read Pennock. Sorry, Ned, I think you’re really reaching here. No way is a law unconstitutional that allows a trade secret-to-patent switch for an otherwise novel, nonobvious, described, and clearly claimed commercial manufacturing process.

                2. PYT,

                  Do not conceded the AIA so quickly.

                  Read the Armitage written brief for Smith (architect of the AIA).

                  The AIA does – and was intended to do – the very thing that Ned protests.

        2. Paul, regarding “limited time” for commercial exploitation and other secret sales, that is why Congress passed the two year grace period back in the 1830s. The grace period still exists in the AIA, but limited to one year.

          The problem is the Federal Circuit holding sales to the inventor himself under a development contract or the like to be an on sale bar. That is what has to be fixed.

          But, I am also sure that Bob long advocate allowing secret commercial use not to be a bar regardless of how long that secret use extended. That would effectively, I believe, overrule Pennock and perhaps that corset case where inventor has used the invention for 10 years in public (but in a non informing manner) before applying for a patent application. The only reason he did so was to capitalize on the fact that the corset invention had gone into widespread public use by others.

      2. Greg, I believe there are cases involving commercial exploitation of patented processes where the bar occurred when products of the process were sold.

        1. Definitely. What there are not, however, are cases where the sale of the intellectual property triggered the on-sale bar.

          That was my only point.

          You can have an agreement in place for years in advance of a patent’s filing date to the effect of “party X agrees to assign to party Y all rights in intellectual property stemming from research project K” without triggering the on-sale bar, because the IP is not the invention, and the on-sale bar is about the sale of the invention, not the IP around the invention.

        2. That is what Metallizing Engineering is about. Using a secret process to commercially mass-produce and publicly sell products made by that process for many years, and then patenting that same process.
          It was never a statutory bar, it is only a purely personal forfeiture, and there was no express overruling of it in the AIA enactment, and it should not be confused with a a secret sale of a patented product.

            1. Fine, show us anywhere it appears in the Congressional Record for the AIA any discussion specifically referring to “Metallizing Engineering.”

              1. Comment still held…

                (Basically, I certainly hope that as an attorney you realize that there is no specific need to mention an individual case when Congress undertakes a substantial change to law, right?)

              2. Hm, I am with anon here. I concede that there is no reviser’s note in the U.S. code that says “this section was intended to contradict Metallizing Engineering, but the most straightforward reading of the revised statutory text has that effect.

  5. If Helsinn does get taken en banc, and reversed, will it not still leave considerable risk in using such “secret sales” [or other “beta testing” of prototypes or samples of new products] before filing patent applications? Such testing by non-employees increases the scope of the risk that someone involved in such use does not actually maintaining their security/secrecy from public access and analysis, which could generate a “public use” issue. E.g., I had one case in which the prototype testing organization had signed a confidential test agreement, but I found that they had left one prototype in an area of their facilities that was freely accessible to the public.

    1. Correct, Paul. I don’t think there’s a practical way to eliminate the risk you describe with a statute (at least not the kind of statute we’re used to seeing). We still live in a society of human beings. Hire competent, ethical people and treat them fairly and the risk of events such as the one you described will be minimized.

    2. Paul, all of the parade of horr1bles you discuss were actually discussed in Pennock. Where the action is that of a third party without the consent of the inventor, it is not attributable to the inventor.

      It is only the acts of the inventor himself, or by others with his consent, that count. The acts must be amount to a sale to the public.

      Where the Federal Circuit has gone off the rails is by ignoring Pennock and allowing purchase by the patented from one of its contractors to count as an on sale bar. Those cases are plainly wrong and wrong-headed.

  6. Armitage’s brief for Smith reads exactly as how I have tried to explain the new “new” to Ned.

    The effort was unequivocally meant to separate the prior conflated times of protection under the two different legal regimes of Trade Secrets and Patents, with each of these two different timings from two different legal regimes drawing their respective legal force from two different Constitutional clauses.

    By the by, this also provides a side note to discredit Ned’s attempts to read some type of different “new” requirement into 101.

    1. By the by, this also provides a side note to discredit Ned’s attempts to read some type of different “new” requirement into 101.

      How so? I read and enjoyed the Smith brief, but I do not see anything in there that even obliquely touches on section 101.

      1. It dispels Ned’s version of “new” in 101.

        Of course, the brief won’t spell that out (nor should it), but that shouldn’t stop you from understanding the implications of what it DOES say in relation to the separate discussions on this blog.

        1. It dispels Ned’s version of “new” in 101.

          How?

          Of course, the brief won’t spell that out…

          Er, o.k. Are you sure that the brief is really making this (supposed) argument, or are you just reading your priors into it?

          I happen to endorse (something like) Ned’s view that “new” in §101 should be understood differently than “novel” in §102. If the Smith brief included a take-down of this understanding, I confess that it was too subtle for me.

          1. perhaps salvaged…

            our comment is awaiting moderation.
            September 25, 2017 at 3:58 pm

            I happen to endorse (something like) Ned’s view that “new” in §101 should be understood differently than “novel” in §102.

            LOL – I remember that – you too did not bother commenting when I showed legislative history of the Act of 1952 dispelling that notion.

            1. You make that point so often that I have responded in the past, but have ceased to bother responding (why endless retread the same points). If, as I gather from 2.1.1.1.1, you have forgotten the response, it would simply be that (1) the language of “new and useful” is carried over from the pre-1952 statute, so I am not sure why a 1952 reviser’s note should carry much weight as to the meaning of the phrase; and (2) I think rather little of legislative history as a tool for statutory construction in any event.

              The code text is law. The revisers notes are mere commentary, and indifferently helpful commentary at that.

              The only reason why I bothered to respond to your #2 here is that you alluded to some new argument in Smith’s brief against the substantive reading of “new.” I gather from your evasive responses since, however, that this was mere bluff.

              1. Not a bluff at all, Greg.

                Part and parcel of Ned’s ongoing insistence on reading “new” in 101 is some type of requirement of “new” IN 101 – in separate isolation (from the rest of 101’s words of “may obtain a patent therefor, subject to the conditions and requirements of this title.

                His insistence on the “Constitutional” nature of that (non-worded) “requirement” ties directly to how he views Pennock AND how he views the ability of the Supreme Court to write patent law in a first instance.

                The rest of the 101 phrase (actual words of Congress) directly reflecting that other sections of the Act deal with “new” AND the Congressional record snippet (which you DID not reply to previously – but I take now as you not ascribing any weight to the fact of its existence) taken together clearly indicate that Ned’s insistence on some (separate, but nowhere defined) Constitutional-based requirement of “new” IN 101 falters even morein light of the fact that Congress has taken upon itself – under its actual Constitutional authority – to set the meaning of the word “new” to be “new to you” in the AIA (as reflected in the Armitage brief for Smith, the architect of the AIA.

                Elsewhere (and in more than one sense) we are in agreement. I do not see why you then want to hold onto this remaining aspect of “new” and align yourself with Ned’s (unsubstantiated) view.

                The brief by Smith (to which you appear to largely agree) takes you two thirds of the way from how Ned wants to use the word “new.”

                I am curious though – what, other than perhaps a feeling that you like the “new” in 101 to be some (unstated) requirement, keeps that last leg “viable” in your mind.

  7. Smith’s brief was written by…Bob Armitage. Don’t think I’ve ever seen an amicus brief supporting en banc rehearing that in effect says, “We wrote the statute, stop screwing it up!”

    I suppose that with Judge Rich on the bench for all those years, until his passing in 1999 it wasn’t generally necessary for someone to tell the CAFC it screwed up in parsing the 1952 statute. There were certainly times *after* his death when it would have been nice to be able to bring him and P.J Frederico into court to tell the judges where they’d gone wrong.

    1. Rich not only championed the Act before the CAFC, but he even bucked the Supreme Court above him, permitting the (sadly temporary) Chakrabarty and Diehr rays of sanity to shine through the upper levels of the Judicial Branch.

      It’s no wonder that anti-patentists so often try to denigrate Rich.

        1. What others have done TO the statute (think a nose of wax so mashed as to be unrecognizable) should not be attributed to Judge Rich (or Congress that actually passed the law).

          You seem to confuse the fact that you merely want a different law of eligibility for the one that we have in not seeing who is to blame for the patent eligibility mess that we have.

          1. On its face, the statute covers “processes”, which includes mental processes and processes of writing.

            So either Rich was st 00 pit or he was a malevolent d ir t b@g.

            You pick. I don’t really care. You’re the one who’s always polishing his b u ttons.

              1. … further, you only offer a false dichotomy of choice, neglecting the fact that I am entirely correct as to the law as (helped) written (by Judge Rich) and passed (by Congress).

                Your feelings merely present in your typical areseness because you want a different law.

              2. the other part of 101 dealing with the proper utility

                Last time I checked it was deemed quite useful to use logic and write instructions.

                Maybe Judge Rich would disagree? He was a very deep thinker! After all, you and five other blogtr 0lls never stop praising him. Oh, except when you change topics and rant about how “PC is the worst thing ever.” Very serious people.

                1. LOL – you conflate “logic” yet again.

                  Tell me about that copyright project (my rebuttal to your ever present intended conflation and obfuscation).

                2. And just like that “anon” and his strawman and his goalpost disappear across the horizon. Nobody could have predicted!

                  But he’s a very serious person. He’s all about improving “patent quality.” Sure he is!

                  Tune in next time when this blog’s self-proclaimed champions of “citizen’s rights” meltdown over the adminstration’s neglect of Puerto Rico. Because they really care and they’re totally not just self-serving hypocrites! Watch and see, folks. Watch and see.

                3. And just like that “anon” and his strawman and his goalpost disappear across the horizon. Nobody could have predicted!

                  Utter B$ – you mischaracterize exactly the point that I bring to counter your “logic” B$.

                  We BOTH know that your view cannot stand.

                  Copyright on software is for a certain aspect.
                  Patents on software is for a certain aspect.

                  YOU want to pretend that software is nothing more than logic itself.

                  It is just not so.

    2. The legislature screwed up when they wrote the statute, leaving the judiciary with ambiguous language to interpret. . .

    3. Haven’t read Smith’s brief and not taking either side at the moment, but my response is, “if you don’t want the courts messing up your statutes, then write a statute that is clear on its face for once.”

      1. The statutory language is”made available to the public”. We in Europe have litigated under that language since 1973. Even though various litigators tried initially to muddy the waters, I think it was all abundantly clear from the get go.

        Which part of the statutory language is unclear, in your opinion, pray?

        1. No, the statutory language is:

          “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public …”

          Note how there is no “public” adjective with respect to “sale.”

            1. Subtle – but important – point:

              Not the “invention,” but the “claimed invention.”

              By distinguishing and adding a focus on claimed invention, Smith (per the brief) indicates that the legislation was intending an enabling public disclosure (of all items, including sales).

            2. In my mind, both are reasonable interpretations, since English is a fairly ambiguous language. Ilwhile what you say is a valid point, it’s also notable to me that you have publication, public use, otherwise available to the public, but then for sale there is no “public” modifier.

              1. but then for sale there is no “public” modifier.

                Not needed given that BOTH the term “claimed invention” rather than merely “invention” is used as well as the phrase “or otherwise available to the public” indicates that all items must be such that the claimed invention is available to the public.

                Have you read the Armitage written brief for the architect of the AIA Smith yet?

                If you read it – and then notice that the structure is as has been discussed by several of us here, then the two interpretations will no longer have equal degrees of reasonableness.

      2. Or better yet, have Congress employ their Constitutional power of jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court…

        1. As others have remarked, anon, you are no constitutional lawyer. That you can get away with your demonstrated lack of understanding of constitutional law on that other site because no one there is qualified to provide a rejoinder, does not permit you to pollute this blog with your obvious lack education and perspicacity.

          1. salvaged… (but very much still on point to Ned’s “drive-by” insult that he refuses to back up with ANY substance….

            Your comment is awaiting moderation.
            September 27, 2017 at 10:04 am

            As expected Ned – you walk away from the conversation at a point where you need to put up or sh ut up.

            I take your screaming silence to be a retraction of the “your demonstrated lack of understanding of constitutional law ” comment.

            But feel free to actually engage in a conversation if you ever do come up with a weakness in my constitutional law discussion points.

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