Helsinn: On Sale Bar at the Supreme Court

Helsinn Healthcare v. Teva Pharma (Supreme Court 2018)

Helsinn’s petition for certiorari received strong support this week from a bevy of ten briefs amici.  The missing element now is a call from the Supreme Court for the views of the Solicitor General (CVSG) and a resulting brief from the U.S. Government supporting the petition.

The Patent Act bars the patenting of inventions that were “on sale” prior to to the invention’s filing date.  The question on appeal here is whether the AIA limited “on sale” to only include publicly available information — or instead do secret and confidential business deals also count as invalidating prior art (if ever discovered). Question Presented:

Whether, under the [AIA], an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.

I previously wrote about the petition here:

Helsinn v. Teva: On Sale Bar Post AIA


  • Brief amicus curiae of Congressman Lamar Smith. Brief filed by Robert Armitage who was a major shepherd of the AIA argues that new law eliminates inventor-focused forfeiture provisions.  17-1229 Amicus Brief of Lamar Smith
  •  Amicus brief of American Intellectual Property Law Association. Statute amended the old law — eliminating secret prior art. Final AIPLA Amicus Brief Helsin v Teva 3-30-18
  • Amicus brief of Intellectual Property Owners Association. Federal Circuit approach is at odds with PTO interpretation. 17-1229 Brief for Amicus
  • Brief amicus curiae of Pharmaceutical Research and Manufacturers of America.  Federal Circuit decision here calls into question “countless” issued patents. 17-1229_tsac_PhRMA
  • Amicus brief of Bar Association of the District of Columbia. Decision will chill innovation. 17-1229 Amicus Brief–PDFA.
  • Amicus brief of The Naples Roundtable. The “Sense Of Congress” harmonization portion of the AIA should be helpful in the interpretation.  17-1229 Brief of Amicus Curiae
  • Amicus brief of The Massachusetts Biotechnology Council.  There is currently too much uncertainty in the law. MassBio Amicus Brief Apr 2 2018 Efile Final – PDFA
  • Amicus brief of Boston Patent Law Association.  The case is ripe for review.  17-1229 ac The Boston Patent Law Association
  • Amicus brief of The Biotechnology Innovation Organization (BIO). The Federal Circuit’s “Atextual Interpretation” sends mixed messages. 17-1229 Amicus Brief
  • Amicus brief of US Inventor, Inc. “The ‘little guy’ stands to bear a disproportionate and the most destructive brunt of this “on sale” bar storm.  17-1229 TSAC Brief


14 thoughts on “Helsinn: On Sale Bar at the Supreme Court

  1. 3

    An impressive list of amicus brief organizations. The basic question that needs to be answered is simple enough: did the AIA limit the “on sale” bar [102 and 103 statutory prior art] to only publicly available information? But the somewhat confusing facts of this particular case do not help.
    It is further confused by the insistence of some folks in confusing the above simple issue with the separate issue [NOT IN this case] of AIA elimination [or not] of the non-statutory Metalizing Engineering individual-only equitable-forfeiture of getting a patent on a method after prolonged selling of products made by that method.

    1. 3.1

      It is not a separate issue, Paul, as the removal of the personal bars is very much the driver in both.

      Yet again, we see you cheerleading – and getting the points wrong in your desire to clutch onto the IPR regime (no matter what).

      As you have admitted that you removed yourself from the USPTO registration rolls (and thus, do not do any prosecution to help obtain protection for innovators), it is easy to see how your bias infuses itself into your views on what is and what is not at issue.

      This is also oddly conflated by your own unwillingness to engage on the merits of any of the “bigger” “C” discussions (the cheerleading that you do is more like sniping from the sidelines).

      Rather than (attempt) to dismiss, perhaps you should take the various issues head on.

      And yes, it is evident why you do not do so – your position is simply too weak.

      1. 3.1.1

        Anon, do you have anything to contribute other than attempted personal insults? Note that I have not ever even questioned if you are an attorney versus a patent agent or inventor, or even noted that self-evidently you are spending full time on blogs and thus could not be representing many clients. Since I do not hide my real name, my legal publications and other data are publicly accessible.
        The subject cert petition is not about an IPR issue, and if you had any real substantive interest you would have recalled my previously cited Fed. Cir. decisions clearly distinguishing the Metallizing Engineering (purely personal) forfeiture doctrine from 102 prior art.


          Anon, do you have anything to contribute other than attempted personal insults?


          Try reading my posts.

          Just because I also knock you off of your pedestal (and deservedly so, oh cheerleader of the IPR), does not mean that all my posts are geared to you, or putting you where you belong. Quite in fact, part of my putting you in your place here is BECAUSE I contribute to the substance of discussions (i.e., Constitutionality discussions) that you appear to be afraid of partaking – while you are only too eager to snipe from the sidelines.

          And please, let’s not try the “I use my real name” gambit. That is meaningless claptrap.

          As to “recalled my previously cited Fed. Cir. decisions clearly distinguishing the Metallizing Engineering (purely personal) forfeiture doctrine from 102 prior art” – you were incorrect then (in so far as my comment here) and remain incorrect now. Repeating an errant view does not change that errant view into a correct view.

          Bottom line here is that the AIA sought to remove personal forfeiture bars – as deemed prior art, and this affects BOTH sets of issues.

          Your denial of this just does not change the factual and historical nature of it.


            by the by Paul – had you actually read my posts and recognized my contributions, you would see that this “impressive list of amicus brief organizations” LARGELY adopt the views that I have put forth.

            Maybe instead of whining as you do (or cheerleading your precious IPR), you pay better attention…


            For an objective and balanced study of the “on sale” issue here, as well as the Metallizing Engineering doctrine’s Learned Hand and Fed. Cir. decisions distinctions therefrom, see “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act” 2011 Patently-O Patent Law Review 29.” Contrary to your typical miss-representations, I also supported an interpretation of AIA 102 as eliminating secret sales of a product as being 102 or 103 prior art.


              Contrary to your typical misrepresentations…” is itself a serious misrepresentation.

              That you may have written a separate article does not impact my statements as to your (lack of) engagement on this blog.

              That’s a big whiff from you Paul.


                further, your article here only provides a self-contradiction to your own post at the beginning of this sub-thread.


  2. 2

    Scotusblog had a piece (not mentioning patents explicitly) on how the current “slowdown” in decisions may indicate some upcoming releases with breathtaking changes by a VERY divided Court.

    1. 2.1

      Of note, some rancor from the Liberal members of the Court has been seen lately: the Notorious G (Ginsburg), Sotomayor and even Breyer (as the latest) each have “leaked” notes of discord and backbiting at “the Court as a whole” (easily seen to be aimed “at the other side”).

      It remains to be seen how such discord and “in-fighting” will affect the image of the Court and its use of that image to “write” law and infuse its policy viewpoints into today’s world. Much of this does go beyond the little corner of patents.

      In that little corner, the Oil States case may be receiving a few different spins.

      One spin may be the power of the administrative state in opposition to the power of the judiciary. That spin would NOT be well-received by the Court (noting the Court’s addiction to putting its fingers into the wax nose of 101, for example).

      Another spin may be the very nature of what a patent is: is it property, or is it a “license” (by any other name)? As has been amply pointed out, the Court would have to reverse many of its prior cases if it were to buy into the “patents are not property” mantra. Not only would this have an immediate and widespread effect, as I have pointed out over the last few years, MANY aspects of patent law are built on the premise of “patents are property” and there would be an immense Second Wave effect of the Court now switching its view of the nature of patents. Maybe – just maybe – one of the clerks has noted this aspect.

      1. 2.1.1

        I think you are daydreaming anon. Get back to work. It is a nice fantasy, but stop the gold bricking.


          gold bricking…?


          Not at all.

          The first aspect is a very real aspect (looking at a bigger picture than just patents).

          Think about it for a second.

          You have an incredible power within the executive agency in the form of administrative agencies.

          NOW more than ever, there is a serious discord between the Liberal Left and the particular holder of that executive branch power.

          Do you really think that the Liberal Left members of the Court are unaware of the power shift to the Executive if they deem that patents are not property?

          It is one thing to have a blanket view of the “State” as power (as opposed to “power to the individual”) wherein that view might find some accord with socialistic or even communistic tendencies, and a pragmatic view that the Court would be giving away its OWN hold on that power were it to allow the migration into that domain of the Executive – and away from the domain of the Court – with a decision that patents are not property.

          Both of these spins reinforce each other. But I do grant that the second spin (and the Second Wave effects) may NOT be being recognized. As is often the case, it is this lack of recognition that creates the concept of what is called patent profanity (the “untoward” effects of the judicial branch mockery). But that will NOT stop those secondary effects if indeed patents are deemed to be “not property.”

  3. 1

    This is somewhat off-topic, but the Court is eerily quiet today. No new opinions. No usual-Monday-orders-list. Nothing happening. They must be really busy with something else. Dare we hope that it is the Oil States opinion coming soon?

    1. 1.1

      As I mentioned previously, the longer the wait for Oil States, the more likely that that case will be tossing (at least that portion of) the AIA as unconstitutional.

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