by Dennis Crouch
Helsinn Healthcare S.A. v. Teva Pharma USA, Inc. (Supreme Court 2018)
In Helsinn, the Supreme Court will focus on the new definitions of prior art found in the Leahy-Smith America Invents Act of 2011 (AIA). The language and history of Section 102(a)(1) suggest that the provision is limited only to prior art that is “available to the public.” However, pre-AIA precedent held that secret sales activity and commercial uses by the patentee could negate patentability. And nothing in the AIA directly addresses that old precedent.
In its interpretation of the statute, the USPTO determined that secret sales and other secret commercialization activities do not count as prior art under the new statute. However, the Federal Circuit rejected that statutory interpretation (giving no deference to the PTO) and instead held that the new law did not change the meaning of “on sale.”
The question before the Supreme Court:
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.
The Supreme Court granted certiori in June 2018. Helsinn has now filed its merits brief as has Rep. Lamar Smith (Namesake of the Leahy-Smith Act) and the Intellectual Property Owners Ass’n. (IPO).
We’ll provide a broad review of the petitioner’s side next week once all the Amicus briefs have been filed.