Supreme Court on the On Sale Bar

by Dennis Crouch

The Supreme Court has granted Helsinn’s petition for writ of certiori in the first case focusing on the 2011 rewriting of the prior art and novelty statute 35 U.S.C. 102.

Issue: Whether, under the Leahy-Smith America Invents Act, 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.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., Docket No. 17-1229.  Expect a hearing this fall and a decision early 2019.

A major focus of discussions surrounding the AIA first-to-file provisions was to limit prior art to objective and publicly available references.  However, Congress did not expressly alter the “on sale” bar language that has been used as a source for the rule that an inventor’s pre-filing secret sales activities (or other commercializing uses) will bar later patenting.

My initial expectation is that the Federal Circuit decision will be affirmed — with a holding that Congress did not intend to overrule 190 year old Supreme Court precedent.  But, the conventional wisdom in patent cases is that the Supreme Court does not ordinarily grant certiorari in order to affirm the Federal Circuit.

A key underlying aspect of the focus here is that differential treatment of secret commercialization between the inventor and some random third party has never been express within the statute.  The Court need not wait for a new congressional statement to revisit that non-statutory approach.

In my mind, the biggest question in this area is how sales, offers, or other commercialization should be treated in an obviousness analysis.

93 thoughts on “Supreme Court on the On Sale Bar

  1. 10

    Justice Kennedy is retiring.

    1. 10.1

      Big news for sure.

      1. 10.1.1

        Especially if you’re brown, gay, a woman, a Muslim or if your family is working class. In which case you can look forward to being f ed over for many, many years to come. Because that’s what “The Founders” wanted. Or something.

        But whether you become a second class citizen or not is really just a minor thing. What matters is that we respect the people who rule us and don’t dare to question them — especially on a patent blog — because it’s so uncivilized. Besides, if blacks and Mexicans don’t like this country, they are free to leave.

        1. 10.1.1.1

          It is too bad that we can’t have a political party that has strong patent and strong civil rights.

          The grouping of these issues doesn’t really make a lot of sense to me.

          1. 10.1.1.1.1

            we can’t have a political party that has strong patent and strong civil rights.

            Because it’s always a good bet to base your voting decision on a “strong patent” purity test. Focus on the important stuff!

            1. 10.1.1.1.1.1

              Obtuse. Is it deliberate?

              Night Writer does not want any such “one subject litmus test,” as his comment indicates fully that he wants different combinations from currently available.

              Maybe it’s just your one-bucketing at play (again). Maybe you are just c1ue1ess. Either way, it is beyond a bore and you really should develop a meaningful approach to interactions. 13 years of a habit will take some effort on your part to change, but believe me – everyone (including you, I dare say), would find the change worthwhile.

              1. 10.1.1.1.1.1.1

                his comment indicates fully that he wants different combinations from currently available.

                Why is it so hard to find someone who strongly supports basic human rights and who also wants to make it possible for corporations to own facts and also the logic used to apply those facts to decisions about, e.g., medical treatments and/or how to balance a bank account?

                It’s a total mystery to “anon.” Can anyone out there help him out?

                1. Nice deflection – and that is all that your reply is: a deflection.

                  Maybe now address the point put to you…

          2. 10.1.1.1.2

            Right, some party-blinded readers here have been ignoring how many conservative Sup. Ct. judges have written or supported decisions that are not favorable to patent owners in the last few years.

        2. 10.1.1.2

          What matters is that we respect the people who rule us and don’t dare to question them — especially on a patent blog —

          What a Fn M 0 r 0 n.

          As if, Malcolm, I cower and dare not question the Supreme Court or the people that “rule us” – when it comes to patent law matters.

          Get a clue. This is a patent law blog.
          This is NOT a “whatever bothers Malcolm’s feelings” blog.

          There is a huge difference.

          1. 10.1.1.2.1

            This is a patent law blog.

            And we are human beings.

            Or at least some of us are.

            1. 10.1.1.2.1.1

              Human beings would (or should) understand that a patent law blog is not a proper forum for the type of “feelings” that you insist on injecting here.

              Choose an appropriate forum for your rants.

    2. 10.2

      This will be an epic fight. Probably going to be the biggest fight of our of life times.

      Imagine if Bryer or Ginsburg kicked it too that would be great for patents. Oil States could be revisted.

      1. 10.2.1

        This will be an epic fight.

        I don’t think so. SCOTUSblog told us not too long ago that some very serious people understand perfectly that no new nominees should be considered in an election year. The voters must be able to express their preferences, after all.

        LOL

        1. 10.2.1.1

          I think you are just pointing out some of the fuel that is going to make this an epic fight.

          1. 10.2.1.1.1

            I think you are just pointing out some of the fuel that is going to make this an epic fight.

            No, I’m just being sarcastic and pointing out a position that was incredibly hypocritical when it was first taken. There was no “epic fight” over Gorsuch and there surely won’t be an “epic fight” now.

            Seriously, we can put a fork in this country now.

            All that remains, really, is to constantly tell the i di 0ts and a – wholes who voted for Mango Hairball to go f themselves.

    3. 10.3

      TRUMP IS THE LEAKER.

  2. 9

    The confusion between the Fed. Cir. adopted Learned Hand Metallizing Engineering “forfeiture” doctrine of personal-only forfeiture of a bar date commercial practice of a secret processes, on one hand, versus the statutory “on sale” provision in 35 USC 102 on the other hand, is further confused by comments here arguing that the latter is also only personal and not §103 [obviousness] prior art. The major treatise “Patents and the Federal Circuit” repeatedly, with Fed. Cir. citations to pre-AIA case law, refutes that. In §4.4 on what is prior art for obviousness, in at least 2 places. In §3.4(c) in 4 places. They clearly state that an “on sale” by even a third party can be used as both novelty and obviousness prior art, as long as it was not secret. As the D.C. below here held, and the IPO and others note, the AIA-added end-of-sentence language in AIA §102(a)(1) [quoted below at 2.2.1] clearly reinforces the non-secret requirement. For more detailed case law discussion of this issue see “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act” 2011 Patently-O Patent Law Review 29. But as noted below by someone else, there is no specific reference to the Metallizing Engineering equitable “forfeiture” doctrine in any documentation relating to the AIA enactment. Nor was that an indicated basis of decisions in this case.

  3. 8

    Be that as it may, anon, I should still like to know as of what date a novelty reference falls to be assessed, under the patent law of the USA, for its disclosure content.

    It’s not that hard to give me the answer, is it?

    1. 8.1

      Be that as it may – how about you skip the dissembling and get to the major point?

      Stay out of the weeds (or brier patch), please.

  4. 7

    In this thread, on the issue of patentable novelty, I have been advancing a proposition which I thought was axiomatic, but anon professes himself unable to understand it. It does happen, of course, that something one supposes to be axiomatic isn’t at all. I mean, the general rule of construction of any document, is it not, is that it shall be performed “as of” the publication date of the document?

    You see, the Rule matters when an old document, let’s call it D1, is asserted to prejudice the novelty of a claim. What exactly does D1 “disclose” to the PHOSITA? What if the PHOSITA at the date of the claim has a lot more background knowledge of the art than the PHOSITA had, at the date of publication of D1? That knowledge differential might be decisive, as to what the PHOSITA derives from D1, and so whether D1 succeeds as a novelty attack.

    Suppose, for example, that D1, published in 1990, teaches process AB-X-CD in which it teaches to perform step X “conventionally”. In 1995, an invention Y was made available to the public, that revolutionised how to carry out process X. By the date of the claim, the “old” way to do step X had fallen into disuse. X(Y)had become the new “conventional”. AB-X(Y)-CD destroys novelty, AB-X-CD not.

    As the White Book of the Established Caselaw of the Boards of Appeal of the EPO has it:

    “For the purposes of determining novelty, a prior document should be read as it would have been read by a person skilled in the art on its “relevant date”. The relevant date of a previously published document is its publication date”
    link to epo.org

    Tell me, is the established caselaw of the EPO’s Appeal Boards different in this respect from that of SCOTUS, or the Federal Circuit? If so, it would be nice to know, for it would disabuse me of my thinking, that the point is axiomatic.

    In ROW the difference between novelty and obviousness is a sharp intellectual (as opposed to practical) distinction. For the USA however, I suspect that the answer is: Who cares, for if D1 doesn’t wipe out the claim under 102, 35 USC 103 will surely bring it down anyway.

    For the time being, I will suppose that the date one deems D1 to be construed, under 35 USC 102, is something yet to trouble the Courts of Appeal of the USA.

    Incidentally, for Australia, see:
    link to manuals.ipaustralia.gov.au

    And for the UK, see from its MPEP, on patentable novelty, this:

    “A prior disclosure must be construed as it would have been understood by the skilled person at the date of the disclosure and not in light of the subsequent patent (held by the House of Lords in SmithKline Beecham Plc ’s (Par oxetine Methanesulfonate) Patent [2006] RPC 10). A prior disclosure should be read in light of the common general knowledge of the skilled person at the date of the disclosure. (This compares with the situation when determining obviousness, where the common general knowledge should be determined at the priority date of the invention (see paragraph 3.11). See Teva UK Limited & Anor v AstraZeneca AB [2014] EWHC 2873 (Pat).”

    1. 7.1

      Your continued spin is only kicking up more dust, MaxDrei.

      You are attempting to switch the focus and now are only making a sub-argument to a position on novelty, while the main point remains that there is a LACK of consistency in employing the legal fiction of PHOSITA between novelty and obviousness.

      Other sovereigns have chosen – as is their right – an INconsistent view, switching (for obviousness) a focus to real inventors (but hiding the switch in focus FROM the legal fiction of PHOSITA).

      You want to paint this as some “lack” on my part, but such is just not the case. The lack remains on your part. The efforts that you are going to to HIDE that lack (rather than simply admit it, and move on based on the right of a sovereign to choose to NOT be consistent) is impressive.

      I do have a “lack” of understanding WHY you are expending such efforts, though. It’s not as if at the end of the day, that one cannot easily see that you have (once again) avoided the point put to you.

      By the way – your additional quotes here are only highlighting the fact that other sovereigns are not using PHOSITA consistently between novelty and obviousness – read again the “UK, see from its MPEP, on patentable novelty, this:” paragraph.

      Further still, you have not paid attention to what I have been saying all along as to the REAL differences in the US between 102 and 103. Your statement of “In ROW the difference between novelty and obviousness is a sharp intellectual (as opposed to practical) distinction. For the USA however, I suspect that the answer is: Who cares, for if D1 doesn’t wipe out the claim under 102, 35 USC 103 will surely bring it down anyway.” carries with it a WRONG suspicion, and it is only those in error that think that 102 and 103 carry no difference (except perhaps whether one or more references are necessary to be cobbled together to reach all claim elements).

      As I stated in the previous thread – NO ONE has been more adamant about correcting that error on these threads than me. You ploy your spin here banking on a “suspicion” of a known error “in the US” as if that known error were NOT a known error.

      Such a fallacy is more commonly known as dissembling.

    2. 7.2

      [T]he EPO has it: “For the purposes of determining novelty, a prior document should be read as it would have been read… on its… publication date”…

      Tell me, is the established caselaw of the EPO’s Appeal Boards different in this respect from that of SCOTUS, or the Federal Circuit?

      There is old case law that suggests that prior art must be enabled as of its publication date in order to anticipate. See, e.g., In re Wiggins, 488 F.2d 538, 543 (C.C.P.A. 1973) (“The mere naming of a compound in a reference, without more, cannot constitute a description of the compound, particularly when, as in this case, the evidence of record suggests that a method suitable for its preparation was not developed until a date later than that of the reference”). I am not sure, however, if that rule would actually be followed were the case to present today. Issues of non-enabled art are so rare, however, that there are not a lot of cases to consult on that question.

      1. 7.2.1

        Greg,

        Ran into a situation that reflects your post just a little while back.

        For prior art of patents (and possibly of printed publications), there is a presumption of enablement. This inures based on the pre-Oil States notion that a granted patent – as an item of personal property – carried with it an unmistakable presumption of validity (and importantly, to a level of clear and convincing), such that enablement carried along with that presumption.

        This is NOT the case though with Non-Patent Literature (“NPL”). I successfully challenged an examiner who attempted to use such a piece of NPL for a 103 argument. Notably, the NPL item itself came from a science fiction website.

      2. 7.2.2

        I was looking for something else entirely this afternoon, Max, when I stumbled across the following:

        Elan Pharma. v. Mayo Fd’n. for Med. Res., 346 F.3d 1051, 1057 (Fed. Cir. 2003)

        Elan stresses that Mullan does not suggest which, if any, of the methods and vectors he cites might reasonably be predicted to succeed in producing a mouse operatively harboring the Swedish mutation. As explained in Enzo Biochem, 188 F.3d at 1372, “an enablement determination is made retrospectively, i.e., by looking back to the filing date of the patent application and determining whether undue experimentation would have been required to make and use the claimed invention at that time.” Thus the enablement of the Mullan and Elan mice would be determined separately.

        [emphasis added]

        This would tend to suggest that the U.S. law is just like the EP law on this point.

        1. 7.2.2.1

          Ok, evidently boldface does not work in a blockquote. That “emphasis added” refers to the fact that I had tried to boldface “Thus the enablement of the Mullan and Elan mice would be determined separately.”

        2. 7.2.2.2

          Greg I appreciate your efforts to engage with my question.

          Your answers focus on enablement. As you say, it is rare that a disclosure which is the basis of a novelty attack is held to be non-enabling. But nevertheless we need to distinguish the enquiry as to enablement of the subject matter claimed in a patent filing (A) from the enquiry whether a disclosure (D1) is enabling, where D1 is the published document that is the basis of a novelty attack on A.

          I take from your answers that courts in the USA will i) assess enablement of A as of its PTO filing date and ii) assess whether D1 is enabling as of the date that D1 was published.

          That would indeed appear to be consistent with ROW caselaw. Hoorah.

          And going back to my hypothetical, with three novelty attacks, namely D1 published 1990, D2 published in 2000 and D3 published in 2010, you need (it seems to me) three different PHOSITA knowledge sets, a different one for each of D1, D2 and D3, namely PHOSITA 1990, PHOSITA 2000 and PHOSITA 2010.

          Not only in ROW but also in the USA.

          For enablement of patent applications, of course, there is a respectable argument that it must enable as of its date of PTO publication, but not necessarily at its filing date or, even earlier, its priority date. For that enquiry though, you would need yet a different PHOSITA. Hey Ho.

          Thanks once again.

  5. 6

    It’s funny, but after reading what the SCOTUS did in Oil States and other cases, I have zero faith in any of their decisions. Pretty much they are a group of dishonest judicial activist that have no regard for the Constitution or applying the law.

    So why is that a big deal? Well, now that Trump is pushing the limits of the Constitution there are NO people on the supreme court with any credibility. No one respects them. People can see what they are. Probably better to think about how to replace most of the justices with honest people.

    1. 6.1

      Seriously. Who cares what the justices say? Just a bunch of ly1ng little thieves who will say anything to get the end result they want. The people of the US can see that. They can tell what these people are. They have zero gravitas. That is why Trump can fight them in the mud. Everyone can see that the justices are no better than Trump.

    2. 6.2

      Have you considered the possibility that your definitions of “honest” and “credible” are based on how much a justice agrees with your position? Some might say that this type of definition is dishonest.

      “I have zero faith in any of their decisions.”

      Faith? Do you mean your expectation that a decision will align with your views? Anyway, I suspect that cases where zero or 100% “faith” in the outcome is rational do not often reach the Supreme Court.

      “No one respects them. People can see what they are.”

      Setting aside the hyperbolic nature of this assertion, it is possible that your constituency is not as large as you believe. I have faith that many people can accept an adverse outcome without dismissing the adjudicator.

      “Probably better to think about how to replace most of the justices with honest people.”

      Perhaps, it would be better to consider other reasons why attempts to convince the justices to adopt your views have been unsuccessful. It could be the justices. It could be your views. It could also be the ways in which your views have been advocated. Have you excluded other possibilities? Have you reconsidered your premises?

      1. 6.2.1

        Non Sequitur II: I have given many examples of why the judges/justices are not applying the law and/or not acting in manner consistent with the Constitution. I have done this for many years.

        >>I have faith that many people can accept an adverse outcome without dismissing the adjudicator.

        Except–again–my beef has always been with not applying the laws or following the Constitution. Oil States is a good example where I pointed out how the majority had relied on a law “journal” article for a factual finding that the prevy counsel had the right or did invalidate patents at the time of our Constitution. The dissent said they did not believe this was factually correct. So we have a factual finding by the majority on a dispositive issue based on a law “journal” article that is not peer reviewed and where there is no recourse for unethical conduct by the author.

        There have been 100’s of examples I have given like this through the years.

        I note too that your post is devoid of facts and just drips with attitude. Try to add a fact or two next time.

        1. 6.2.1.1

          “Non Sequitur II: I have given many examples of why the judges/justices are not applying the law and/or not acting in manner consistent with the Constitution. I have done this for many years.”

          Have you considered the possibility that you are wrong and have been for those many years? There is no magic number of examples that will make yours or anyone’s assertions correct.

          I know that I am casually suggesting that you do one of the hardest things humanly possible, but give it a try. Imagine that you could be wrong. Consider the possibility that your foundation is not indisputable. For example, you appear to believe that the existence or non-existence of a privy council was case dispositive. I thought it was an aside. The issue was the nature of the patent validity. Even if privy council’s didn’t invalidate patents at the time of the Constitution, it doesn’t mean that they lacked the ability to do so as opposed to the interest in doing so. Moreover, even if privy council’s lost the ability to invalidate patents, to me, it doesn’t follow that patent validity from its nature must be decided by a court. While you could be correct about the history of privy councils, historical practice sheds light on the nature of patent validity, it doesn’t define it. As long as you stick to your foundation/framework, you will constantly find yourself frustrated when people don’t reach your conclusion.

      2. 6.2.2

        NON

        I also have at length explained why Alice is unconstitutional. The fact is that if you want to argue with me then the battleground should be my contentions against the judges and justices instead of dripping off your attitude on me.

        The fact is that I don’t complain much about decisions where the laws, Constitution, and science are respected.

        1. 6.2.2.1

          “The fact is that I don’t complain much about decisions where the laws, Constitution, and science are respected.” I suppose that you are the one that judges when they are respected. Do you see the irony?

          Unconstitutional? Patents are defined by statute. Are you talking about the Supreme Court’s ability to interpret 101?

          As for the battleground, is there a difference between your contentions about the judges and justices and your contentions about the Constitution? Presumably, if they shared your views, they would be respecting the Constitution.

    3. 6.3

      I think the credibility of the modern Supreme Court with public took a huge hit with Bush v. Gore and the remaining portion of its credibility with most of the public was pretty much finished off with Citizens United, a decision written by Justice Kennedy.

  6. 5

    Friendly reminder: Ned Heller voted for a gaping r@ cist @ hole. In order to do that, you have to be a bit of a r@ cist yourself and Ned surely was. It was never “uncivil” to point that out when Ned was alive and kicking and it isn’t “uncivil” now.

    What’s “uncivil” is pretending that these r@ cists aren’t running around under our feet stinking up the place. It’s always cowardly to fail to point this out on a regular basis (note: assumes you aren’t a r@ cist and in favor of r@ cist policies).

    Wake up, folks.

    1. 5.1

      Your “friendly reminder” is simply not germane to a patent law blog. There is NO sense off “heroic” or “cowardly” for you or for anyone else to NOT rant on and on about your feelings on non-patent law matters. As such, no such assumption that you supply serves as any reason whatsoever for anyone to put up with your off-topic rants.

      Have you not had enough of your rants expunged yet?

      Wake up indeed.

      1. 5.1.1

        simply not germane

        Anybody who thinks this is an idi 0t or a li @r. Anybody who actually SAYS it is a genuine and total pile of sh t and a big part of the problem.

        Or maybe you’re just fine with things continuing right along as they are going. Gosh, wouldn’t that be surprising.

        1. 5.1.1.1

          Anybody who…

          S I G H

          It is not germane to a blog dealing with patent law.

          It’s just not about you are your feelings.

          1. 5.1.1.1.1

            a blog dealing with patent law

            LOL

            Law?

            My “deeply held belief” is that patent infringement suits violate the One True Goddess’s commandments. Besides, everything that has ever been said about patents that I disagree or which negatively affects my bottom line is fake news. Dear Leader will educate us all shortly.

            Game, set, match. Fun! Just look the other way and click your heels.

            Seriously, “anon”, it’s a seamless web. You can’t look the other way and pretend that what’s happening here in the US is “normal.” Oh but wait — it’s a bit different, I suppose, if you’re already white, rich and Christian. Then you might as well just follow the script, “religiously”, as they say.

            1. 5.1.1.1.1.1

              My “deeply held belief” is that patent infringement suits violate the One True Goddess’s commandments.

              THAT would at least be on point.

              Game, set, match. Fun! Just look the other way and click your heels.

              I do not know what it is that you think that THAT means, but it likely does not mean what you think it means.

              Seriously, “anon”, it’s a seamless web.

              No. It is not. Believe it or not, your rants are NOT related to patent law.

              And wtf does “white,” “rich,” or “Christian” have to do with anything? As 6 would say, “your ISMs are showing.”

              Prof – don’t you think enough is enough with Malcolm’s silliness?

    2. 5.2

      Friendly reminder: the MM problem needs an Intermediate Solution.

    3. 5.3

      And we needed this reminder why?

      1. 5.3.1

        So that we don’t have posts like his above.

        1. 5.3.1.1

          ? he reminds us with his post so that we don’t have posts like the one he is using to remind us…?

        2. 5.3.1.2

          I was actually referring to MM’s reminder regarding Ned. I don’t dispute his opinion of Ned, just wondering why he felt the need to remind us.

  7. 4

    Dennis: “In my mind, the biggest question in this area is how sales, offers, or other commercialization should be treated in an obviousness analysis.”

    This statement manifests fundamental confusion created by Helsinn’s false framing of the CAFC holding in their Question Presented – whether a secret sale is “prior art for purposes of determining the patentability.” An inquiry about obviousness would only make sense if the CAFC holding was about prior art. But it was not – it was about the forfeiture of the patent right due to the invention being “on sale” before the critical date. This has nothing to do with prior art. The CAFC held that the AIA did not change the meaning of the term “on sale” from that in pre-AIA law. The pre-AIA forfeiture bars were never about prior art.

    I believe that the SCOTUS will not be distracted by Helsinn’s false framing – the Court will address the real question in this case: whether Congress changed the meaning of the term “on sale” by enacting the AIA.

    We may differ in our opinion as to what the right answer to that question may be, but we should have no disagreement as to what the real question for the Court is in this case. Discussions about prior art or obviousness simply have no place in this case.

    1. 4.1

      That makes it easy: personal forfeitures were deliberately wiped out by Congress.

      Remember: what is “new to you” is the new (legal) “new.”

    2. 4.2

      I welcome that posting from Dr Ron K. This is all about the on sale bar and really ought not to involve obviousness.

      Is it open to SCOTUS here, to i) confirm that the on sale bar continues under the AIA, yet ii) the change of wording of S. 102 does indeed change the definition of the state of the art against which novelty is to be assessed, to include that which has been made available to the public.

      As to obviousness, I suppose that SCOTUS will stay clear of that issue but, if it addresses it at all, will confirm that it is to be assessed with the same prior art basis as novelty ie including the so-called “secret” prior art such as the content of patent applications filed, the day before the claim under consideration, in some Patent Office on the other side of the world.

      I’m looking forward to the outcome with great relish.

      1. 4.2.1

        Let’s revisit the well….

        This is all about the on sale bar and really ought not to involve obviousness.

        Yet again, MaxDrei wants to avoid a critical look at the law undergirding the choices of the US sovereign.

        Under those choices, the legal fiction known as PHOSITA (Person Having Ordinary Skill In The Art) is the consistent notion that applies to any and all scenarios of “prior art.”

        All.

        That is the US Sovereign’s choice – and it has been expressly made.

        With that critical understanding, one then is required to recognize that a fundamental aspect of the AIA was – quite opposite as to what Ron K notes – “The pre-AIA forfeiture bars were never about prior art.“: pre-AIA purposefully folded in the forfeiture bars to be as prior art. Ron K. is simply – and fundamentally – in error as to the pre-AIA forfeiture bars. Congress knew well and easy how to fashion a law that would not have folded the personal forfeitures into the prior art section of the law. It would have been extremely easy for Congress to merely create a separate section of personal forfeitures.

        They did not do so.

        Were they ever “exactly the same?”

        Of course not.

        But they were legally treated as the same.

        Yes. Yes, they were.

        It was the express purpose of the AIA to change that.

        We’ve been over all the various points that I have put on the table for discussion (points, I remind you, that have never been negated: from the direct re-titling of the sections, to various pronouncements -including the Soliloquy that occurred PRIOR to the Senate version being picked up by the House and then returning to the Senate).

        MaxDrei then “asks”:
        Is it open to SCOTUS here,… change the definition of the state of the art against which novelty is to be assessed

        As so very recently pointed out, MaxDrei attempts to spin the US Sovereign’s choice to NOT bifurcate the legal notion of PHOSITA and wants to apply that notion SOLELY to the novelty point.

        Why?

        Why is MaxDrei trying so very desperately to impart a bifurcation where none exists (under the choice of the US Sovereign)?

        And why does MaxDrei phrase this such as the wrong branch of the government rewriting the words of Congress to even arrive at his (desired) bifurcated state?

        As subtle as MaxDrei gets, he then provides that he DOES know and understand that the US sovereign HAS made a particular choice, but leaves a denigrating quip as to his feelings about making such a (bifurcated) use of the notion of PHOSITA, making it appear that an underlying concept of the legal fiction is somehow “silly” when applied to obviousness – but no sense of that silliness is in play when CONSISTENTLY applied to the notion of novelty. He omits the very core point that I so recently pointed out to him: the US has chosen consistency of the legal fiction known as PHOSITA, and does not -as ROW does – mishmash that legal fiction with real inventors and pretend that a mishmash has somehow not been chosen.

        I’m looking forward to the outcome with great relish.

        Hmm, I have to take this as the type of “great relish” that one would see in those morbid onlookers of a train wreck or natural calamity.

        I do not see this as a sign of someone interested in the Rule of Law, or the critical thinking that may underscore the creation, application, or consistency of that Rule of Law.

        1. 4.2.1.1

          Annon: “pre-AIA purposefully folded in the forfeiture bars to be as prior art.” (My emphasis), saying that I am “in error as to the pre-AIA forfeiture bars.”
          With the full respect that I always have for your views Anon, here you are simply wrong, even by your own standards and arguments! You too seem to frame pre-AIA Section 102 as only a “prior art” statute. It is not – it is also a forfeiture bar statute, that encodes a separate policy for early notice of patent rights that has nothing to do with prior art. The fact that failure to meet the requirements of the single Section 102(b) statute may be triggered for prior art reasons does not make it a “prior art” statute any more than a “forfeiture bar” statute, because failure may also be triggered by the personal forfeiture requirements.
          You were the one observing that the change in the title of Section 102 is indicative (in your view) of Congress’ intent to remove the forfeiture bars from Section 102. Indeed, the title under the AIA changed from “NOVELTY AND LOSS OF RIGHT TO PATENT” to merely “NOVELTY.” This shows that you understood that pre-AIA Section 102 was not only about prior art (novelty), but also about the forfeiture bar (loss of right to a patent).
          I get it that you are critical of Congress’ method of combing two separate policies into one section of the Patent Act – criticism with which I actually agree. But that does not mean that Congress “folded in the forfeiture bars to be as prior art” – it folded this provision into a statute that includes provisions on prior art. What I said was that “pre-AIA forfeiture bars were never about prior art,” a correct statement that is self-evident under proper understanding of the meaning of the term “prior art” and the recognition that pre-AIA Section 102 includes two independent and distinct policies.
          The SCOTUS will decide whether both of these policies are still encoded in post-AIA Section 102. If the Court decides as you think it should, than we will know that post-AIA Section 102 is only about prior art. If the Court affirms the Federal Circuit, as my Amicus brief urged ( link to bit.ly ), we will know that Section 102 remains both a “prior art” as well as a “forfeiture bar” statute, as the pre-AIA statute. But in no event should anybody call the pre-AIA Section 102 a “prior art” statute.

          1. 4.2.1.1.1

            Forfeiture predates 102 by at least 75 years: forfeiture dates back at least to Consolidated Fruit Jar Company v. Wright, 94 U.S. 92 (1876) link to supreme.justia.com. 35 U.S.C 102 was enacted in 1952. I don’t see where Congress stated in pre AIA section 102(b) that it intended section 102(b) to also codify forfeiture (I see forfeiture codified in pre AIA 102(c)). And I don’t see where Congress stated in the AIA that it overturned Consolidated Fruit Jar Company. Congress simply did not codify it.

            1. 4.2.1.1.1.1

              Dear PiKa, in Consolidated Fruit Jar Company v. Wright, 94 U.S. 92 (1876), for which you kindly provided a link, the fruit jars at issue were publicly sold more than two years before the application for patent was filed in contravention of the then existing patent statute. The Court simply applied the statute to find the patent invalid. The Court did use the word “forfeit”, but not in the sense of a personal bar. The statute was later amended to provide the one year period which appears in pre-AIA 102. Interestingly the inventor was Mason so the jars at issue were probably Mason jars.

              1. 4.2.1.1.1.1.1

                My bad. This opinion is entirety about the statute, that had clauses equivalent to 102(b) and (c). The Consolidated Fruit Jar Company does not exemplify a judicially created doctrine that was not codified. My belief that such doctrine exists independently from the statute is probably incorrect, at for sure, is not supported by Consolidated Fruit Jar.

          2. 4.2.1.1.2

            Good points Ron – I will have to mull this over.

    3. 4.3

      I think the salient point is that the issue of when sales, offers or commercialization of a 3rd party become public and thus prior art is much more commonly encountered than the question presented in this case (which most inventors avoid by being sure to file within one year of the earliest imaginable critical date). It may technically be dicta, but no doubt some people are hoping for an answer on that issue in this case.

    4. 4.4

      Ron, you have it precisely right. A secret sale by the patentee invokes a judicial forfeiture doctrine; it does not create prior art. Judge Markey could not have been clearer on this point in DL Auld v. Chroma Graphics. And he also made the explicit point that a secret sale by a third party was not prior art in W.L. Gore v Garlock

      1. 4.4.1

        Is that so? I thought these cases held that the secret use of a process, which itself was not on sale, was not prior art under 102(b) to a claim directed to the process. However, sales of any invention by independent 3rd parties were prior art. What did I miss?

  8. 3

    AIA conflated prior art with novelty. A person of “ordinary” skill now has infinite knowledge of every language and every secret. Add in “common sense” and “obvious to try” and everything is obvious.

    1. 3.1

      “infinite knowledge” – per se – was a pre-AIA item, IR.

      You should check out some of my teachings to MaxDrei on recent threads (vis a vis the application of the legal fiction known as Person Having Ordinary Skill In The Art).

    2. 3.2

      The AIA was intended to reduce secret communications as being prior art, and it was the pre-AIA KSR decision, not the AIA, that stressed “common sense” and “obvious to try.”
      The AIA did remove the U.S.-only limitation for prior art on “public use” and “on sale”, and foriegn priority filing dates.

    3. 3.3

      The term “prior art” had nothing to do with §102 pre-AIA. It appears five times in §102 AIA. Here the Professor in the last paragraph rightly wonders how secret sales will impact obviousness. Not a secret sale of the claimed invention – a secret sale of the prior art to the claimed invention! How could the invention be obvious to a person of ordinary skill – or even the inventor possessing extra-ordinary skill – how could it be obvious if everyone agrees it was a secret unknown to the inventor? It is because the AIA conflated novelty and obviousness.

      Prior art is the art that existed prior to the invention. An applicant cannot claim the prior art. He can only claim (non-obvious) improvements in or combinations of the prior art.

      Under AIA a secret sale to which the inventor was not a party can render his actual non-obvious discovery to be legally obvious. Another absurd and destabilizing product of the AIA.

      1. 3.3.1

        The term “prior art” had nothing to do with §102 pre-AIA.

        That is not a defensible statement – care to try again with whatever you are trying to say?

        1. 3.3.1.1

          The term “prior art” does not appear in pre-AIA §102. For an invention to be novel it did not matter if it was described in another language or secret document – if it was not new it was not patentable. Prior art was irrelevant to the inquiry.

          Pre-AIA prior art was only relevant to §103. The claimed invention had to be sufficiently different from the prior art such that it was not obvious. The definition of prior art was provide by case law on obviousness.

          AIA shoehorned a new statutory definition of prior art into §102, confusing everything.

          1. 3.3.1.1.1

            The term “prior art” is a term of art.

            That term most definitely existed pre-AIA.

            1. 3.3.1.1.1.1

              It used to be a term of art. Now it appears to be a statutory term defined by §102.

              1. 3.3.1.1.1.1.1

                It’s a statutory term reflecting the term of art.

                Have you heard heard the phrase “distinction without a difference?”

                Also, part of what you are seeing is the effect of the removal of the statutory treatment of personal forfeitures AS “prior art,” and the emphasis (by Congress) in its choice of wording to reflect that personal forfeitures not only have been taken out, but that what remains is true prior art.

                Now, on the other hand, if you want to make sure that no conflation occurs between the prior art that is permitted for a 102 rejection and the different “universe” of prior art that is permitted for a 103 rejection – THAT I believe we would find ready accord.

      2. 3.3.2

        Re:”the AIA conflated novelty and obviousness.”
        Actually, the first paragraph of 103, both before and after the AIA, makes that connection.

        1. 3.3.2.1

          And line 3 of old 103 after referring to 102 used the words “prior art.”

        2. 3.3.2.2

          There is most definitely a connection.

          In fact, if you go back a few threads, I explain to MaxDrei that the US Sovereign – more than anyone else in the world – has chosen to be consistent in its use of the legal fiction known as Person Having Ordinary Skill In The Art across the connected landscape of 102 and 103.

          Other sovereigns have chosen differently – as is their right. But it still pays to have a critical mind and recognize that it is the US sovereign choice that is in fact most thoroughly consistent and logical in how that legal fiction is used.

          1. 3.3.2.2.1

            To explain the ROW exclusion of secret prior art from the obviousness examination you, anon, see say there is inconsistency in the definition of the PHOSITA. One for novelty, a different PHOSITA for obviousness.

            I see it otherwise.

            I see in ROW just one definition of the PHOSITA, common to both novelty and obviousness. But that single entity is the touchstone in not one but two tasks, which the Examiner must (irrespective how we define the PHOSITA) be kept scrupulously separate.

            First, novelty. Then, obviousness. For the novelty examination, the Examiner (through the eyes of the PHOSITA, and as of the relevant date) interrogates one data set. Then, when assessing (outside the USA) for obviousness, the Examiner interrogates (through the same eyes) a smaller set of data. The USA is unique, in that it has the same data set for both 102 and 103. Conversely, ROW chooses to present different data sets to the PHOSITA. This is different from having two different PHOSITA entities.

            Unless of course, one wants to argue that with every change in the date of assessment of a document, the PHOSITA changes. That would mean that you need a different PHOSITA for each different novelty attack, irrespective whether in the USA or outside the USA.

            1. 3.3.2.2.1.1

              Your spin does not suffice, MaxDrei.

              Go back and read again our prior exchange. Note carefully what each of us state – and how the words being chosen reflect on which entities are under consideration for each point being desired.

              I am explicit as to exactly when the notion of the legal fiction is being exchanged for the notion of the real inventor.

              While the fact remains that the legal question to which (consistent or not consistent) the legal notion of PHOSITA is applied to is – and must be – different for the different sections of law of novelty and obviousness, that fact does NOT change the fact that other sovereigns have chosen to apply the legal notion INconsistently (as is there right to make such a choice under the law that those sovereigns employ).

              What you do NOT get to do is make such an inconsistent choice and pretend that you have not made an inconsistent choice.

              It is odd just how much you fight owning up to the choice of inconsistency.

              There exists valid reasons for making such a choice. I have made it clear that I recognize those reasons.

              As to OUR choice, and how our law works, your statement of “”the Examiner interrogates (through the same eyes) a smaller set of data. The USA is unique, in that it has the same data set for both 102 and 103.” is simply in error.

              The “universe” – or data set – is NOT the same for both 102 and 103.

              The universe – or data set – for 102 is ALL prior art.
              The universe – or data set – for 103 is NOT all prior art.

              The universe – or data set – for 103 is a subset of the 102 universe, constrained by the Graham Factors, which is the interpretation (note this IS interpretation and not rewriting) from the Court.

              Your last paragraph is unclear.

              Unless of course, one wants to argue that with every change in the date of assessment of a document, the PHOSITA changes. That would mean that you need a different PHOSITA for each different novelty attack, irrespective whether in the USA or outside the USA.

              The legal notion of PHOSITA is not what changes when new or different items are brought to bear for any assessment. Your implication here that this “moving target” of the legal notion is somehow something that I am wanting or suggesting has no tether whatsoever to anything that I have ever posted. I have no idea where you would get such an inkling or why you would advance this type of argument, or to what point you think that such an advancement makes.

              1. 3.3.2.2.1.1.1

                Good. At least it is only my last para that is condemned as “unclear”. I will extrapolate on it.

                The normal rule of construction of a document is that it be construed as of its date of publication.

                Suppose we are talking novelty, and that we have three prior publications, D1, D2 and D3, respectively published in 1970, 1990 and 2010, each asserted as a distinct and different novelty attack on one and the same claim. To examine whether each succeeds as a novelty attack on that single claim, step forward three different notional PHOSITA entities, one with the background knowledge of 1970, one who has the 1990 background general knowledge, and the third having the common general knowledge that the skilled person had assimilated up to the publication date in 2010.

                But this is all unproblematic and controversy-free, is it not?

                1. “The normal rule of construction of a document is that it be construed as of its date of publication.”

                  The key date is that of the patent application against which the art is cited, not the publication date of the art itself. Thus if your hypothetical D1, D2, and D3 were applied against an application filed in 2014, it is the 2014 PHOSITA-perspective from which all three references would be viewed in order to assess novelty per your hypothetical.

                2. Still not clear, MaxDrei.

                  It appears that the words that you tried to put into my mouth are now forming the start of your own argument. But I am not certain why you want to “step forward three different notional PHOSITA entities, one [ ] of 1970, one [ ] 1990 [ ], and the third [ ] 2010.” Why the time-traveling or multiple versions of the single legal fiction?

      3. 3.3.3

        IR, “Under AIA a secret sale to which the inventor was not a party can render his actual non-obvious discovery to be legally obvious” is NOT
        what the AIA says, per this cert petition seeking to overrule a Fed. Cir. decision.

        1. 3.3.3.1

          In a same world, the outcome of this petition would have no bearing on obviousness, yet Prof Crouch correctly wonders it if will.

        2. 3.3.3.2

          sane world

          1. 3.3.3.2.1

            You are correct – for this petition.

            What Prof. Crouch does – is kowtow to a larger “error.” It is not altogether surprising that THAT is the “desired narrative” here, now is it?

            See post 1.

      4. 3.3.4

        As is explicitly stated in W.L. Gore v Garlock a secret sale to which the inventor was not a party is irrelevant to the inventor’s right to a patent. Of course, this 1983 case pre-dates the AIA, but I’ve yet to see an argument that the AIA overruled or otherwise obviated this case.

        1. 3.3.4.1

          I’ve yet to see an argument that the AIA overruled or otherwise obviated [W.L. Gore].

          I have not seen an argument that the AIA overruled W.L. Gore either. No one contends that the AIA expanded the category of secret prior art (or the putative category of personal bars that are not prior art, but nonetheless exist as a function of §102).

          The argument that the AIA obviated W.L. Gore, however, is that the AIA has done away with the category of so-called “personal bars” altogether. This does not change the rule that you formulate above (“a secret sale to which the inventor was not a party is irrelevant to the inventor’s right to a patent,”) but it does somewhat obviate that rule. Instead of “a secret sale to which the inventor was not a party is irrelevant to the inventor’s right to a patent,” the AIA’s “otherwise available to the public” text in §102 makes it possible to shorten your rule to “a secret sale is irrelevant to the inventor’s right to a patent,” without consideration of whether the inventor is or is not a party to that secret sale.

          1. 3.3.4.1.1

            Elsewhere Lawrence has expressed the incorrect notion that a piece of legislation such as the AIA – which announced an extensive remake of a section of law – must nonetheless talley up all of the court decisions that are obviated by the new legislation.

            Where he gets that notion is unclear.

  9. 2

    Re: “My initial expectation is that the Federal Circuit decision will be affirmed — with a holding that Congress did not intend to overrule 190 year old Supreme Court precedent.”
    But, the Court could treat this as a straight issue of patent law statutory interpretation (of the NEW 102 statute’s ADDED languge), as in their most recent patent decison, giving little weight to Fed. Cir. statutory interpretation?

    1. 2.1

      But, the Court could… giv[e] little weight to Fed. Cir. statutory interpretation?

      There is a scene in the old sitcom “Taxi” in which Danny DeVito’s character muses on an ineluctable law of the universe that losers must lose. Therefore, when a loser sets out to lose, he must win, in order this natural “losers lose” law of the universe not be upset. This created a logical paradox that occasioned much discussion and confusion among those listening to DeVito.

      Mutatis mutandis, it seems to me that the same problem is at work here. The ineluctable law of the universe is that the CAFC’s statutory interpretation must be wrong. However, there is another rule, which is that the SCotUS’s statutory interpretation must be sustained against anything other than an explicit statutory reversal of the older SCotUS holding. in this case, the CAFC’s interpretation is simply to sustain the SCotUS’s interpretation, so the CAFC can only be wrong by virtue of making the SCotUS wrong. No doubt, this paradox will occasion as much confusion in the SCotUS as DeVito occasioned in the taxi office.

      1. 2.1.1

        Lets see if the Court can “get it right” concerning the fact that Congress has (statutorily) set the meaning of the word “new” to be “new to you.”

        Important here is the honest appreciation that there are real differences – substantively and tied to different portions of the Constitution – with regards to time of protection under Trade Secret law (typically state by state, indefinite, that is, forever if you can keep it that way, and tied to the Commerce clause), as opposed to the time of protection under Patent law (purely Federal, once committed – that is, published – most definitely time limited, and tied to Article I, Section 8).

        1. 2.1.1.1

          the time of protection under Patent law (purely Federal, once committed – that is, published – most definitely time limited

          Limited, like 70 years after the death of the inventor.

          1. 2.1.1.1.1

            MM, there are some readers here who will not understand that you are making a sarcastic comment about copyright law, not patent law.

            1. 2.1.1.1.1.1

              [Albiet at their PTO prosecution rate there may still be some Hyatt patents that will still be enforceable for back damages for more than 40 years after their original filing dates, like so many of Lemelson’s were.]

            2. 2.1.1.1.1.2

              I note his sarcasm – it is that he still lacks a point with that sarcasm.

      2. 2.1.2

        Greg, the new and concluding line of AIA 102 is:
        “.., or otherwise available to the public before the effective filing date of the application for patent in the United States of the claimed invention.”
        If, as effectively argued, this modifies the whole new 102 sentence, that is indeed “an explicit statutory reversal of the older SCotUS holding.”

        1. 2.1.2.1

          Sure. I happen to agree that the AIA text evidences Congress’ intent to reverse the Pennock rule. If you look at how hard the Court worked in Graham v. John Deere to avoid admitting that Congress had overruled Cuno Engineering, however, I would not necessarily bet on the idea that the Court will admit that Congress intended to overrule Pennock. On the other hand, in this case the road toward slapping the CAFC runs through admitting the Congressional reversal, so maybe that will take the bitter edge off of having to admit that Congress has slighted their judge-made law.

          1. 2.1.2.1.1

            Greg, numerous ancient Sup. Ct. cases by long-dead authors have been overruled by numerous subsequent Federal statutes without modern Sup. Ct. concern or nostalgia.
            Also, a major part of the Sup. Ct. docket, and a subject on which they consider their own expertise to be greater than most lower courts, is statutory interpretation.

  10. 1

    In my mind, the biggest question in this area is how sales, offers, or other commercialization should be treated in an obviousness analysis.

    Indulging in the ROW dissimilar treatment of the legal fiction of Person Having Ordinary Skill In The Art?

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