Of Brownies and Other Nutty Desserts: Supreme court considers whether the “on sale” bar is limited to public sales

Guest Post by Dmitry Karshtedt, Professor at GW Law.  Prof. Karshtedt attended the Supreme Court oral arguments in Helsinn v. Teva, and provides the following discussion.  A transcript of the arguments is available here: Helsinn Transcript.

The oral argument in Helsinn Healthcare v. Teva Pharmaceuticals had a little bit of everything. First, the Court extensively aired the statutory interpretation question whether the phrase “otherwise available to the public” in the America Invents Act (AIA) expanded or contracted the universe of prior art or perhaps did a bit of both. More to the point of the question presented, the advocates argued extensively over whether the statutory revision modified the meaning of “on sale.” Second, the Justices explored weighty issues of patent policy, such as the role of Section 102 in preventing withdrawal of inventions from the public domain and effective extensions of patent term through pre-patent secret commercial exploitation. Third, undergirding these points were debates on the notion of “congressional ratification” and the role of various facets of legislative history in statutory interpretation—and even what an ordinary consumer would understand “on sale” to mean. As one would expect, there was no shortage of creative hypotheticals, one of which generated an extensive discussion of the meaning of “brownie.” All in all, the Court repeatedly praised the advocates for excellent briefing, and the Chief Justice promised that the Court will issue an excellent opinion—another thing to look forward to in 2019!

Petitioner’s counsel, Kannon Shanmugam, began the argument with the point that the AIA “clarified” the meaning of “on sale” with the phrase “otherwise available to the public.” He explained a that a private offer to his friend on the opposing side, William Jay, should not be a patent-barring event, but an offer to the courtroom audience to sell something to the highest bidder would be. This contention drew immediate, skeptical responses from the Chief Justice and Justice Kavanaugh. Isn’t the phrase “on sale” self-defining, and thus in no need of clarification? And, as relevant to this case, doesn’t a private offer still put something “on sale” under the plain meaning of this term—why should a public availability requirement be read in? Justice Breyer then entered the discussion with the policy argument that, since the time of Pennock v. Dialogue, the purpose of the on sale bar has been to prevent extensions of patent monopolies via initial commercial exploitation of the invention followed by patenting. Petitioner’s response here was that the precedent is better read as focusing on protection the public domain after the public has gained possession of the invention, which implies some level of public availability. In addition, in a point that the government later returned to, the counsel explained that the “extension” policy cannot be all that robust because the on sale bar clearly cannot reach certain pre-patent invention exploitation activities, such as using the invention to draw in venture funding.

Judge Kavanaugh then returned to the statute. If Congress sought to modify the meaning of “on sale,” then weren’t there clearer ways to do this, and didn’t early drafts of the AIA actually have some direct language abrogating the “secret prior art” case law? Further, Justice Ginsburg asked the petitioner to clarify whether or not he thought the AIA was actually a change in the law on the “secret prior art” point. Petitioner’s response here was that Congress wanted to keep the term “on sale” to retain much the underlying jurisprudence around it (such as the “ready for patenting” test) while abrogating certain outlier Federal Circuit cases like In re Caveney and Special Devices, which deemed secret sales to be patent-barring. That, in his view, was not inconsistent with adding an extra “catchall” category of publicly available art that didn’t formally fall into any of the preceding categories. He also maintained that the petitioner’s reading of the AIA was not inconsistent with Supreme Court case law, which has not endorsed the lower-court secret prior art decisions, so there was no clear rule for Congress to ratify in this area. Finally, he explained that the AIA’s first-to-file rule would discourage pre-patent commercial exploitation.

Judge Kavanaugh then referred to the Law Professors’ amicus brief, led by Mark Lemley, which maintained that the Court did indeed endorse the secret prior case law. Petitioner disagreed here, and reiterated that none of the Supreme Court on sale or public use rulings would be disturbed under Helsinn’s reading of the AIA. Justice Breyer countered with a discussion of Bonito Boats, which did address the notion of a “monopoly” going beyond the patent term, though in a different context. He also suggested that perhaps the petitioner’s real argument is that the transaction at issue in this case doesn’t really fit within the definition of the sale. Petitioner offered a variation on this theme, suggesting that a contract with a distributor subject to various contingencies was maybe not the kind of a sale meant to be covered by Section 102.

Malcom Stewart, representing the Solicitor’s office, then argued in support of Helsinn. He emphasized the point that MGI, Helsinn’s “buyer,” was only an intermediary, and there was no assurance of a passage of title to MGI—let alone to the end user of a drug at issue in this case. Indeed, the consumer might not see a transaction at issue in Helsinn as a sale at all. This situation contrasts with Pfaff, which the parties and the government seem to agree remains good law post-AIA, as Pfaff involved a firm offer to an end user. Justice Sotomayor retorted that, surely, commercial entities understand a sale to a distributor to still be a sale, as the product has left the hands of the inventor and begins to wind its way through the stream of commerce. Moreover, she maintained that there seemed to be no precedent, or even textual support, for the government’s definition.

Justice Kagan then picked up on a particularly important point in this case. Was there really settled law in this area, and did it include secret sales as prior art? The government responded that there was no such settled law, and what Congress was doing in the AIA is clarifying and modifying some prior decisions, rather than ratifying any secret prior art rule. Assuming such a rule was in fact settled, the government conceded that the “otherwise available to the public” phrase would be an oblique way to overturn it. Justice Kavanaugh amplified this point, again noting that more direct efforts to overturn the secret prior art case law have failed (which, incidentally, also suggests that such case law was at least somewhat settled). Here, the government responded by contending that the early proposals have failed because they were going so far as to take non-informing sales to the public out of the universe of the prior art, an unpalatable proposal. Instead, Congress reached a happy medium by overturning some outlier secret prior art case law, but not non-informing public sale case law.

William Jay argued for respondent. He started with the plain language argument that the phrase “on sale” just means “sold” or “subject to an offer for sale”—no public availability is required. The “otherwise available to the public” art is an entirely different category. Here, justice Alito zeroed in on the meaning of “otherwise available to the public.” That phrase would seem incompatible with the notion that “on sale” means “on sale publicly or on sale privately.” Indeed, the string “on sale publicly, on sale privately, or otherwise available to the public” seems incoherent. The response was that some “on sale” events are surely public, and if the “otherwise available to the public” does refer back to “on sale,” it concerns only those the public sales (of course, a possible response here is that a sale, any sale, is simply deemed in the eyes of the law to make the invention “available to the public”). Petitioner further contended that the new Section 102 is better read as mainly adding an extra category of prior art, such as oral presentations, with the “otherwise available to the public” language—and it would be odd to have a category broadening the definition of prior art that at the same time narrowed it by eliminating secret sales from the definition.

After noting that other countries do not seem to recognize secret art as patent-barring, Justice Sotomayor returned Mr. Jay to Justice Alito’s “otherwise” question. He responded that the role of “otherwise” is, in part, to avoid the potential for interpreting terms like “printed publications” so as to include non-public documents and, more generally, to prevent unsettling the other categories by making clear that “otherwise available to the public” is a residual category of its own. Justice Breyer continued with an inquiry into the phrase by noting that a hypothetical string of “basketball, running, swimming, or otherwise -­ or games that otherwise involve a ball” as being incoherent. Respondent explained that, while awkward, this phrase doesn’t change the meaning of “swimming” into something like water polo. Justice Kagan added a particularly insightful hypothetical: “suppose I say don’t buy peanut butter cookies, pecan pie—this is the key one, ready—brownies, or any dessert that otherwise contains nuts. Do I—do I violate the injunction if I buy nutless brownies?” The implication, of course, is that nutless brownies are ok to buy, and maybe by analogy then non-public sales (like nutless brownies) are not a danger from the inventor’s perspective. The response here was that, while brownies might have nuts or be nutless, a notion of sale encompasses both public and private sales, though Justice Kagan retorted than maybe the meaning sale is not so clear. Justice Kavanaugh returned to point that maybe “otherwise available to the public” is there to summarize the preceding terms, but Mr. Jay’s response that “on sale” has a definitive meaning—”make available to a willing purchaser”—that this phrase could not unsettle.

Justice Gorsuch asked whether, assuming “on sale” is at all ambiguous, the PTO is entitled to some deference to its interpretation, which excludes secret prior art. The respondent countered that, as a plain language matter, that interpretation is just not persuasive. He then maintained that there is no dispute that the transaction at issue in Helsinn was a sale, and that the industry would so understand it. Indeed, he noted that most drugs are sold to distributors, and rule that such a transaction is not a sale will be unduly lenient to the pharmaceutical industry. Justice Kagan then finally brought up the point of third-party secret sales (the fact that Section 102 is party-neutral always seemed important to me), and Mr. Jay responded that they are patent barring. This is correct—the holding in Caveney supports this point. But the implication of this law for the “inventor forfeiture” view was unfortunately not further explored.

In rebuttal, petitioner emphasized the context of the phrase “on sale” and maintained that respondent’s reading would read the word “otherwise” out of the statute. The next “otherwise” string was from a case called United States v. Standard Brewery, which concluded that the phrase “beer, wine, and other intoxicating liquor” excluded alcohol-free beer. After presenting this example, Mr. Shanmugam maintained that there is no legislative history support for respondent’s interpretation. Perhaps more importantly for making the Court comfortable with its position, he reiterated that Pfaff would not be overruled under Helsinn’s interpretation of the AIA. Thus, the parties and the government all agree at least on that. As a patent law Professor, I took this to heart because, whatever happens in Helsinn, my Section 102 notes will not be completely upended by whatever the Supreme Court decides.

 

90 thoughts on “Of Brownies and Other Nutty Desserts: Supreme court considers whether the “on sale” bar is limited to public sales

  1. 9

    Ron you should move this to the top of the page.

    Malcolm’s penchant for “look at me look at me” extends to ANY time he sees some disagreement with me (my, how Tr011ish).

    So let’s take a look at Ron’s latest (cognitive) reply – noting that just because Ron and I disagree on this issue, that neither Ron nor I throw the other into some “enemy” bucket and ascribe all types of other people’s attributes to each other.

    Down at 6.3.2.1.1.1.1, Ron replies:

    Anon, We will continue to disagree.

    Perfectly fine with that – even reasonable people disagree from time to time.

    (a little out of order):
    You simply avoided answering this question.

    Not at all – I merely reasserted what is a factual matter and what is not a factual matter. They plain fact (whether I like it or not), is that the personal bars were expressly removed. I have yet to see any explanation as to how this is not so and then Congress deciding to change the titles of the revamped sections of law.

    If, as you claim, the personal bars are removed, and one “absolutely” has to have that as a “starting point,” what substantive dispute now remains before the Court?

    I provided an answer to this as well: “ You may want to make it a question of law as to whether other sections or rewritings recapture some of what was removed and that would be a different thing.

    Yours is a leap to far. That 3 out of 535 members of Congress had a Colloquy expressly stating that they intend removal of the personal bar, is indeed a “fact.” Also a “fact” is the AIA’s change in the heading of Section 102 (merely) implying as much.

    That’s not my leap. Hey, I fully “get” that you do not like the tactic, but as I have pointed out to you vis a vis the timing, the rest of the 532 members had FULL opportunity, both in the House and in the Senate after that soliloquy to put a rejoinder on the record.

    No one did.

    And again, there is no “my implying” – the fact of the matter is that Congress DID change the section titles.

    Why would they do that if NOT those items no longer there? No one has ever directly answered that question. Not even you. Instead (and this is why I added the caveat), all that we have seen is an attempt to diminish the importance of titles.

    THAT is just not an answer.

    But 3 members of Congress do not make the law. Nor does an oblique heading change (without a substantive change to the text of the statute) constitute an “express” change of well-settled statutory terms.

    As noted, the rest of Congress had a chance to add a rejoinder and did not. Further, the heading change is anything BUT “oblique” – especially given that one of the major announced changes to patent law was a revamping of the prior art sections. This is NOT like something that was buried and highly tangential.

    In any event, these “facts” did not change unambiguously the meaning of the statute itself with respect to personal bars. It is merely your opinion that they have.

    No. It is YOUR opinion that the facts that I present may mean something else. The facts that I have presented mean what they mean.

    In contrast, also relevant is the “fact” that the very language that would have expressly removed the personal bars from the latest bill version of the AIA – leaving in “available to the public” but removing “on sale” – was expressly removed from the Managers’ language by a committee majority prior to passage, with a very clear explanation by Rep. Lofgren as to why they were removed.

    You do have some facts buried in there, but I have addressed those facts with my presentation of facts: to wit: “ and even whether tied to a direct political move or not” – this distinguishes opinions (how one may feel – in either direction) from the facts involved.

    The plain fact of political maneuvering and law making is that there are more than one way to put something into law. It is true as you say that a first attempt did not make it. But that changes NO FACTS about later and different tactics used.

    Another “fact” is that the SCOTUS decision in Bernhardt explains why, as a matter of statutory construction, the term “otherwise available to the public” should not be read as a modifier of the preceding terms. I have written in amicus briefs about these and other “facts” supporting the proposition that the personal bars were not eliminated. Like you, I have my opinion based on “facts.”

    Your opinion here is not properly the same as fact (as you indicate with quotes) and I doubt that any SCOTUS decision, especially one from 1956, can be even remotely stretched to cover what Congress did in the AIA. Unless you can make the time jump link and provide something (anything) on point to the later Congress, Bernhardt is simply inopposite.

    But our opinions differ; and the SCOTUS will decide which opinion is consistent with the law as interpreted by the Court.

    I have to chuckle at that. As I think that we both realize that just because the Supreme Court says something, does NOT mean that even they have gotten the law correct.

    1. 9.1

      Wow. Does anybody know what he thinks he’s talking about? Theories?

      1. 9.1.1

        Wow, another glib comment from my ever-shifting historical pseudonym friend with nothing more than a truly oblique attempt to diminish the conversation.

        How about this instead, my friend: provide a cogent reply either taking issue with one (or more) of the points, or advance a solid position of your own. These little snipes of yours do — and add — nothing.

      2. 9.1.2

        It is YOUR opinion that the facts that I present may mean something else. The facts that I have presented mean what they mean…… You do have some facts buried in there, but I have addressed those facts with my presentation of facts: to wit: “ and even whether tied to a direct political move or not” – this distinguishes opinions (how one may feel – in either direction) from the facts involved.

        How could one not be convinced? We are not worthy.

        1. 9.1.2.1

          difficult day at the Tr011 mines for Malcolm today…

    2. 9.2

      Anon,
      Indeed, reasonable minds can disagree, as we do here. I will not get into every point you raised with which I disagree, except to illustrate the nature of our disagreement in two areas.

      First, I regret misspelling the SCOTUS case I referred to, perhaps leading you incorrectly to address an old 1956 case. Rather, Barnhart v. Thomas, 540 U.S. 20, 26 (2003), explains the statutory construction canon known as the “last antecedent,” according to which a pronoun, relative pronoun, or demonstrative adjective generally refers to the nearest reasonable antecedent. Applying Barnhart‘s “last antecedent” doctrine to post-AIA § 102(a)(1), the phrase “to the public” modifies only the last antecedent—“otherwise available”—leaving the settled meaning of “on-sale” and “public use” unchanged.

      Second, your contention on the Colloquy of 3 members of Congress that “the rest of Congress had a chance to add a rejoinder and did not,” is factually incorrect because Rep. Lofgren made counter remarks in Committee. Moreover, your contention is unavailing as a statutory construction tool precisely because legislators were well aware that floor remarks are not statutory text; they were aware that 3 out of 535 legislators do not make the law; nor do any opposing floor remarks by another handful of legislators. Nothing can be inferred from silence of others. Where it counted in Committee, Rep. Lofgren was not silent.

      Therefore, yours is a myopic leap too far: you dismiss as “politics” the critical point of the failure of the bill managers to amend the actual text of the statute – an amendment that was intended to, and would have removed the personal bars. But “politics” determines the substance of legislation. You seem to ignore the simple fact, long recognized by the Courts: floor remarks are not statutory text; the Colloquy participants were unable through “strategic manipulations of legislative history to secure results they were unable to achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 568 (2005).

      I note that among all matters of controversy in patent law over the years, including SCOTUS decisions that we both agreed were wrongly decided, I found this issue to be the only matter on which we actually disagree. I suspect that no matter what the SCOTUS decides here, we will continue to respectfully disagree…

      Thanks for the thoughtful exchange.

      1. 9.2.1

        ..and thank you for the corrected site (as well as the statutory construction cannon, albeit, that cannon is NOT in place here for various reason, including a detailed language analysis previously provided by Joachim (if I recall correctly) and the the notion that the grammar does not support a “last antecedent” parsing.

        As to Lofgren’s committee remarks and the failed first attempt, as I pointed out, these do not touch later attempts. We can disagree as to their “effect,” but we must agree on their factual presence. I will take to heart your provision of Exxon Mobil Corp. v. Allapattah Servs., Inc.,” and will checkout the context there.

        Finally (albeit still a minor item), I note that the title change remains actually unaddressed on its merits (with only the distraction of “titles are not that important” offered up yet again.

        The problem here is that the title WAS changed. If anything, a lack of change in title would actually lean towards my position with the notion that titles are not that important (in a “oops, they forgot to change it” sense), but here, this was a positive action, and one that need only be taken if the personal bars were part of the law of prior art being revamped.

        1. 9.2.1.1

          Again, a leap to far on the heading: one must look to the actual text of the statute itself. “The title of a statute and the heading of a section cannot limit the plain meaning of the text.” Brotherhood of R. R. Trainmen v. Baltimore & O. R. Co., 331 U.S. 519, 528–29 (1947). This is particularly true when textual amendments to conform the body of the statute to the meaning behind the heading are expressly rejected in a congressional committee vote, as I explained above.

          1. 9.2.1.1.1

            Does not explain the change.

            I am still waiting for that explanation.

          2. 9.2.1.1.2

            Ron,

            I will expand on my immediate response at 9.2.1.1.1 (which stands for its own directness and simplicity), with the following which flows from my review of the Trainmen case.

            Railroad Trainmen is easily distinguishable given the context of that case:

            Second. The right of intervention granted to such a representative by § 17(11) applies to a court proceeding under § 16(12) of the Act, the plain language of § 17(11) extending its reach to “any proceeding arising under this Act.” On this point, however, the appellee railroads contend that § 17(11) must be confined to proceedings before the Interstate Commerce Commission, to the exclusion of court proceedings. In support of this contention, they point to the fact that § 17 as a whole is primarily concerned with Commission procedure and organization. That fact is emphasized by the heading of § 17 as it appears in the Statutes at Large, 54 Stat. 913, and the United States Code, 49 U.S.C. § 17, a heading that reads: “Commission procedure; delegation of duties; rehearings.” The inference is then made that paragraph (11), with which we are concerned, must be limited by that heading and by the general context of § 17 as a whole. The result of the contention is that the phrase “any proceeding arising under this Act,” as found in paragraph (11), is rewritten by construction to refer only to “any proceeding before the Commission arising under this section.”

            We cannot sanction such a construction of these words. It is true, of course, that § 17 is concerned primarily with the organization of the Commission and its subdivisions and with the administrative disposition of matters coming within that agency’s jurisdiction. At least ten of the twelve paragraphs of § 17 deal with those matters. And, before § 17 was cast into its present form in 1940, all five of its paragraphs related exclusively to those matters. Congress rewrote the section when it enacted the Transportation Act of 1940, 54 Stat. 898, continuing and modifying previous provisions and consolidating and including matters which had formerly been scattered throughout the Act. [Footnote 7] At the same time, however, it was expressly recognized that certain paragraphs were being added which were entirely new — paragraphs which went beyond purely administrative matters.

            And further

            By such language in their reports, the framers of § 17 recognized the obvious fact that certain provisions of that section deal with something more than might be indicated by the heading.
            That the heading of § 17 fails to refer to all the matters which the framers of that section wrote into the text is not an unusual fact.

            The argued for interpretation there had to do with “under this Act” being constrained to not be for the entire Act, but only portions of a particular section, to which the title of that section was being discussed.

            This is almost the opposite of the present case, in which the resetting of “prior art” by and large was fully known to be one of the principal aims of the AIA legislation.

            What drove the Court to decide as it did in Railroad Trainmen was the larger context, which here supports my views for the AIA.

            Again, here, the changed from text of the title would have been less dispositive had it remained in place, based on the larger context of revamping what “prior art” meant. But it is the combination of changed text and professed aim of the legislation that makes the need for discounting the title to be more imperative than the case of Railroad Trainmen suggests. In Railroad Trainmen, the context there was known to include the addition of provisions that exceeded the title text’s “shorthand reference” (paragraphs 9 and 11 and accompanying footnotes).
            There is no such indicators in the AIA. Quite in fact, as noted, the indicators all point in the opposite direction.

            To wit, from Railroad Trainmen: “Where the text is complicated and prolific, headings and titles can do no more than indicate the provisions in a most general manner” simply does not – and cannot – square with the professed aim of simplifying the “text” of what constitutes prior art. The “factors of this type” do NOT support the use of Railroad Trainmen to support what you want.

            All of which then circles back to the point that I made in the first comments here: no one has ever supplied a cogent reasoning WHY the section titles would be changed in the AIA in the first instance if those personal bars were not being considered in the avowed simplification and streamlining of the definition of “prior art.” The context in the AIA drives – through the logic and applied context in Railroad Trainmen – for support of my proposition and a need to explain (and not just depend on the “titles are not meaningful”) just why the AIA changed the titles in its avowed simplification and streamlining efforts pertaining to the reshaping of prior art.

            To date, there has been NO cogent reasoning offered as to why the AIA would change the titles.

            Do titles matter ALL THE TIME…? No.
            Do they matter sometimes? Absolutely.

            It is the larger context that informs this point. That larger context supports my views. I am open to being convinced otherwise, but it will need more than the mere possibility that titles MAY sometimes be not dispositive to persuade that in this instance and in this context, such must be the case.

            1. 9.2.1.1.2.1

              Anon,
              I agree with you that there is no doubt that the drafters’ purpose in amending the heading was to create the appearance that the personal forfeiture bars are repealed. I know that first hand because they told me so before the AIA’s passage. They also told me that their purpose for introducing the phrase “or otherwise available to the public” was to modify (narrow) the meaning of “on sale” and “public use.” They introduced this modifying phrase when they realized that they were getting push-back from other lawmakers who objected to removing the terms “on sale” and “public use” and their settled connection with the personal bars. The drafters then crafted a colloquy more than a year before passage in the Senate but refused to disclose it. Then, in the markup of the last version of the AIA (HR 1249) they again tried a “Hail Mary” amendment to remove “on sale” and “public use” and failed. This was part of their tortured path of legislation by obfuscation. I was there and have written about it in 2011. See my analysis at link to bit.ly .

              Your observations are precisely what the drafters wanted to convey – there is nothing wrong with your logic in pointing out these attributes. But these attributes are a tad short of making the law. This was no simple lawmaking; my 2011 analysis shows that there was more there than meets the eye. The drafters were in a minority – they could not change the body of the statute and therefore tried every cosmetic tool they could devise. But cosmetics alone do not make the law. It is now the Courts that will decide whether their legislation by stealth and obfuscation succeeded.

              1. 9.2.1.1.2.1.1

                Thank you for the cognitive exchange.

                Your points (and admissions) all make sense.

                All along I have maintained that what I view in the AIA (at point here) was not based on any personal desire of mine to have “what I want” to be considered the law. Rather, I have aimed for a cognitive total picture of the (admittedly awfully drafted) AIA, with its expressed intents and final package, including the various political machinations.

                My usual antagonists here have steadfastly refused to engage. It takes someone with whom I may typically agree with, but not on the present point, to engage fully and provide that better overall picture.

                That being said, I welcome your admissions as part of that bigger picture, and while I still have questions on some of the timing (the Soliloquy was prior to the HR version), we have a cogent explanation of the title change (the title change indeed reflects the drafter’s intents). The admission of the narrowing phrase is also worthy of note, since that phrase did make it into the final version.

                I will admit (not difficult to do) that the AIA was written poorly. I think that we can both agree that writing so poorly as to invite legislating from the bench is poor form. I would advance that that poor form may even rise to a dereliction of duties.

                So while the direct path was refuted, the intent remained, the title change remained, the Soliloquy (for whatever its worth) remained, the introduction of the narrowing phrase remained; and now (again, I agree with you), we have to leave it to members of the judicial branch to (re)write the section of statutory law to pronounce what all that is there remaining actually amounts to.

                With Breyer blindingly inserting judicial policy power, I have a feeling which direction the outcome here will go.

                Thank you again for taking the time – I will dive into your latest link to contemplate your views further.

              2. 9.2.1.1.2.1.2

                I have remarked recently that the AIA is more than a bit like sausage making.

                In addition to the rat tails, rat droppings (Lundgren ad champion?), and perhaps more than just a few human fingers in the sausage, there are additional elements not yet discussed that portend to just what “prior art” is supposed to be in the AIA.

                First and possibly foremost is the move to “race,” and removal of being able to swear back. While not quite First to File (as understood in Rest Of the World — no doubt at least to me based on our Sovereign’s retention of Lockeian notions of Private personal property moving from an inchoate right to a full legal right), this move includes the notion of removal of personal bars.

                Secondly, the strengthening (its a different story as to any use or intrinsic value) of the Prior User Right (submarine) defense also goes hand in hand with the notion of the removal of personal bars.

                All of these scraps have been thrown into the sausage grinder.

              3. 9.2.1.1.2.1.3

                As Ron indirectly notes, the sausage-making process of the AIA, like any other legislation, is of little interest to the Sup. Ct., which is going to exercise its right to interpret the finally enacted words of the statute. Especially as here where there is not a clear Congressional Record.
                [An even better example of the former activity was the AIA leaving “best mode” in the statute but stating that it cannot be used in litigation.]

                1. I do not disagree with you (mostly) here Paul, as the Supreme Court will decide how to write (for clarity**) the AIA section.**

                  Yes, here (especially), the Congressional record reflects a lack of clarity (and this is directly traceable to what you state as the item that the Supreme Court will not care about: the political machinations of making that sausage).

                  As Ron and I both arrive at the same conclusion that political machinations were afoot, my points remain that the lack of clarity – when all those political machinations are evaluated in total – leans toward the effect being a (professed) streamlining of what constitutes prior art.

                  The better view is that the Supreme Court should care about those political machinations as those machinations laid out the final result (which includes the admitted narrowing phrase as well as the retitled sections in line with the professed intent of the legislation itself). To contrast with a case that Ron provided, you have other political machinations (for a few examples, the failed direct attempt and the Lofgren statement), but in the end ALL of the tidbits that make up the sausage should be accounted for (including the change to “race,” and the broadened power of Prior User Rights). These items should be contrasted with explicit paragraphs and objective footnotes that SHOW in that other case explicitly why the title was not controlling.

                  As I have noted – such indicators are not only absent for showing why the AIA title should be discounted, the fact of the matter in that the title remained CHANGED in the immediate instance AND all of the other sausage bits clearly align with my professed position.

                  This is NOT to say that the Court will come to that same view. As we have seen many times now, the Court will do whatever the Court wants to do, no matter what type of Gordian Knot is created.

                  Whether this objective view will be reflected in the subjective desires of the Supreme Court is not something that can be reliably predicted. As I have noted, certain members of the Court still want to insert political policy power into their decision scope.

                  As to “better example,” meh, the best mode oddity is hardly a better example. This is because, at least for starters, the impact of that item is far smaller than the item of the current discussion.

                  **and anytime Congress “punts” on writing clearly, we are all worse for that.

                2. Re your below, as Bismark noted many years ago, everyone is usually better off not questioning the ingredients that went into the sausage or were intended to go in but did not. In this case, particularly from such unreliable sources as the recollections or opinions of individual members of Congress who were not patent law experts.

        2. 9.2.1.2

          As to the Barnhart case, the particulars there are very much syntactically different.

          There: An individual shall be determined to be under a disability only if his physical or mental impairment or impairments are of such severity that he is not only unable to do his previous work but cannot, considering his age, education, and work experience, engage in any other kind of substantial gainful work which exists in the national economy. . . .”

          Or in pieces:

          An individual shall be determined to be under a disability

          only if his physical or mental impairment or impairments are of such severity

          that he is not only unable to do his previous work

          but cannot [_] engage in any other kind of substantial gainful work

          which exists in the national economy. . . .”

          Further,

          The parties agree that the latter requirement is qualified by the clause that immediately follows it—”which exists in the national economy.” The issue in this case is whether that clause also qualifies “previous work.”

          The syntax here in Barnhart is NOT a serial clause, but a simple compound clause, and one which is interposed with a “but” (as well as a internal qualifier of the bracketed [_]). Additionally, the punctuation (placement and lack of commas would indicate that the modifying phrase NOT being set apart on its own is indeed a part of the phrase that is set off with a comma.

          Additionally, as that case states: “The issue presented is whether this agency interpretation must be accorded deference.

          The deference question is not the question immediately at point here.

          The case does go on to explain the last antecedent rule with some serial clause examples — which interestingly may be more on point than the Supreme Court case of Barnhart itself.

          That will take some additional reflection.

      2. 9.2.2

        I should add that the SCOTUS decision that I argue for – confirming that the AIA did not change the settled meaning of “on sale” and “public use” – would make very clear that the AIA actually gutted the robust American grace period. It would make clear that there is absolutely no grace period for any “on sale” or “public use” inventor activity, whether or not it discloses the invention. It will thus remove the ambiguity of the meaning of Section 102, that for more than 5 years prevented effective advocacy for legislative restoration of the American 1-year grace period.

        In contrast, a SCOTUS reversal of the CAFC and a final holding that the AIA repealed Metallizing Engineering – that the AIA enacted an indefinite grace period only for secret commercialization – would appear on the surface to provide partial relief. It would thus undermine and detract from attempted advocacy for congressional restoration of the full and robust 1-year grace period that would be applicable to broader circumstances including non-secret or disclosing use.

        It is far more important for startup inventors when raising capital or seeking strategic partners for commercializing their inventions, that they have a full year grace period for “on sale” and “public use” activities that disclose the invention, than have no such grace period, even if an indefinite grace for secret activities is available instead.

        The latter indefinite grace favors large incumbent companies who do not need external resources to fund development and commercialize their new inventions. But it harms the smaller early market entrants in seeking external resources for those purposes, where they must go to trade shows and speak to many potential investors and strategic partners.

        1. 9.2.2.1

          Ron, how does your statement about one possible Sup. Ct. 102(a) interpretation that “It would make clear that there is absolutely no grace period for any “on sale” or “public use” inventor activity, whether or not it discloses the invention” square with the AIA 102(b) “Exceptions-
          (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
          (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
          (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

          1. 9.2.2.1.1

            Paul,

            An obvious variant that happens to fall outside of the “obtained directly” WOULD negate the first inventor “on sale” or “otherwise” (for the sake of argument) – in that case, neither would be awarded a patent, and competition would revert to non-innovation practice means.

            Exactly what those who captured Congress wanted.

  2. 8

    So who wants to play the prediction game? I always like doing this to illustrate that I know patent law (and better than the lot of you.)

    1. 8.1

      I don’t see how using the same word as in a previous version of the statute can show an intent to change the law from what the Supreme Court previously said it is … but I wouldn’t put money on the current court agreeing.

    2. 8.2

      OK NW, but what is your Your prognostication? Mine was pragmatic at 4 below. But I have no idea how the statutory sentence construction issue here will come out after the weird oral argument questions noted. That is, what effect does the new 102 end clause of “or otherwise available to the public” have on the proceeding list of items in the sentence including “on sale?” If not fully effective then what effect does it have? How can it be completely meaningless? [But then what about “for a well regulated militia”?]

      1. 8.2.1

        If not fully effective then what effect does it have?

        Could be a “catch-all” to capture the unimaginable and amazing signal-free information dissemination technologies that will transform our future and provide jobs for zillions of people.

  3. 7

    How long does it take for oral argument recordings to go up on Oyez? link to oyez.org

    1. 7.1

      Usually Friday of the week the case is argued.

      1. 7.2.1

        I am reminded of sausage making…

  4. 6

    I did not see a discussion about the incapacity of the USPTO to learn about secret sales, and thus to issue valid patents. It does not seem to me that the parties are practical.

    1. 6.1

      The Soliloquy – whether “liked” or not and whether “deemed underhanded” or not and even whether tied to a direct political move or not provides a critical tie to the purpose of the very much announced reconfiguring of what “prior art” means, and coupled with the express removal of the personal bars that served as personal equivalences to prior art SHOULD make it crystal clear that the element of the public being informed and thus “in possession” differentiates from the “concern” of the Trade Secret then patent protection timing “issue.”

      It is truly dissapointing to see old canards being attempted to be reinserted.

      1. 6.1.1

        >>It is truly dissapointing to see old canards being attempted to be reinserted.

        It is never ending. (Again, we have no idea whether this person is working for a corporation or not.)

        1. 6.1.1.1

          My disappointment is with the exchanges in the oral arguments. Both for what was said and for what was not said.

          1. 6.1.1.1.1

            I get it anon. My point is that we can’t trust anything that is published on this blog as we have no idea whether the people publishing are merely employees of corporations.

            1. 6.1.1.1.1.1

              My only employer is the George Washington University Law School.

              1. 6.1.1.1.1.1.1

                So you say, Dmitry! A likely story.

                You’re going to have to show Night Wiper your long form employee contract, and also you will need to prove that you have never used Google.

              2. 6.1.1.1.1.1.2

                You seem like an honorable person. The problem is corporations pay professors to write articles and even to write articles to abstracts the corporations write. Additionally, there is very little recourse if a professor acts unethically. For example, if a professor write a law journal article and does not quote to case law that is clearly directly against their point, etc. Some notable people have said that there is currently no recourse against a law professor who acts unethically because the law schools don’t care.

              3. 6.1.1.1.1.1.3

                But looking at some of your writings makes me think that you are honorable.

    2. 6.2

      What incapacity of the USPTO to learn about secret sales? Why couldnt they learn about secret sales? Remember, it is the duty of the patent applicant to disclose the existence of these sales (assuming it is the applicant that offered the secret sale, which it almost always is)… Therefore, there is no problem with the USPTO being incapable of learning about them.

      1. 6.2.1

        IF (and let’s take it so if only merely for argument’s sake) it is determined that the personal bar of secret sales is NOT an item of prior art, then there would be no such requrement for an applicant to report them.

        (I realize that this is a bit of “chicken and egg”)

    3. 6.3

      That goes to my question at 2 below, which is how could the PTO have the alleged statutory interpretation position on secret sales legitimately when those issues almost never arrive in the PTO? Especially the gratuitous PTO FR comment accompanying AIA rules re the equitable Metallizing Engineering doctrine on commercial product manufacturing use of a secret process, which is not even prior art, only a personal forfeiture.

      1. 6.3.1

        Personal equitable bars were expressly removed by the AIA.

        How is that not a clear (and clearly objective) held view?

        1. 6.3.1.1

          Show where it expressly says that in the AIA and more folks would agree with your personal opinion.

          1. 6.3.1.1.1

            It’s not an opinion Paul – and the absence says so.

            Your wanting to call it an opinion says more about you than you might realize.

      2. 6.3.2

        Paul Morgan, you are raising a cogent and strong argument – the PTO has no institutional mandate nor expertise to peer into commercial activity and product offerings to decide issues of “on sale.” Moreover, it has no substantive rulemaking authority on the law of patentability. Therefore, its Examination Guidelines on Section 102 under the AIA are not entitled to any deference – neither Chevron nor Skidmore.

        The lack of such deference was correctly pointed out at oral argument in response to Justice Kavanaugh’s question.

        Anon’s view stated @6.2.1 that “Personal equitable bars were expressly removed by the AIA” suggests that no consideration of deference is warranted because, ostensibly, there is no ambiguity – no “gap” to be filled – in interpreting the statute. But that is merely an opinion (Anon’s opinion) that is not shared by many others; the case would not have reached SCOTUS had it been unambiguously clear that those personal bars “were expressly removed by the AIA.” Whatever the Court decides, it cannot be on account of any deference to the PTO’s position.

        1. 6.3.2.1

          My statement is a statement of fact, Ron.

          The “opinion” that you project from that fact should not be used to obscure neither the fact that I provide or that I provide an actual fact.

          1. 6.3.2.1.1

            Anon, whether or not the AIA removed the personal bars is a question of law – not fact. Had this been a question of fact, the question would not have reached the Federal Circuit and the SCOTUS.

            1. 6.3.2.1.1.1

              The removal is a question of fact.

              They were removed.

              That’s a fact.

              You may want to make it a question of law as to whether other sections or rewritings recapture some of what was removed and that would be a different thing.

              But make no mistake: the factual matter here is that personal bars were removed.

              You absolutely have to have that as your starting point.

              1. 6.3.2.1.1.1.1

                Anon,
                We will continue to disagree. If, as you claim, the personal bars are removed, and one “absolutely” has to have that as a “starting point,” what substantive dispute now remains before the Court? You simply avoided answering this question.

                Yours is a leap to far. That 3 out of 535 members of Congress had a Colloquy expressly stating that they intend removal of the personal bar, is indeed a “fact.” Also a “fact” is the AIA’s change in the heading of Section 102 (merely) implying as much. But 3 members of Congress do not make the law. Nor does an oblique heading change (without a substantive change to the text of the statute) constitute an “express” change of well-settled statutory terms. In any event, these “facts” did not change unambiguously the meaning of the statute itself with respect to personal bars. It is merely your opinion that they have.

                In contrast, also relevant is the “fact” that the very language that would have expressly removed the personal bars from the latest bill version of the AIA – leaving in “available to the public” but removing “on sale” – was expressly removed from the Managers’ language by a committee majority prior to passage, with a very clear explanation by Rep. Lofgren as to why they were removed. Another “fact” is that the SCOTUS decision in Bernhardt explains why, as a matter of statutory construction, the term “otherwise available to the public” should not be read as a modifier of the preceding terms. I have written in amicus briefs about these and other “facts” supporting the proposition that the personal bars were not eliminated. Like you, I have my opinion based on “facts.”

                But our opinions differ; and the SCOTUS will decide which opinion is consistent with the law as interpreted by the Court.

              2. 6.3.2.1.1.1.2

                No human being would be this dense. I need to speak to your supervisor.

                1. My historical pseudonym’d friend, your ad hominem is noted. As is any connection of the insult to the discussion.

                2. No answer from you on particulars of “bad posters,” and yet here now you insinuate that I am the “bad AI”….

                  My historical pseudonym friend, you need to up your game.

  5. 5

    What’s the difference between non-alcoholic beer and vegetable broth?

    1. 5.1

      Brett Kavanaugh likes vegetable broth.

    2. 5.2

      A grain broth is not a vegetable broth.

      1. 5.2.1

        Barley soup then, surely?

        1. 5.2.1.1

          Not surely.

          The comment was to broth and not soup.

          For barley soup, all recipes dot com lists:

          Add the barley, carrots, celery, tomatoes, zucchini, garbanzo beans, onion, and bay leaves. Season with garlic powder, sugar, salt, pepper, parsley, curry powder, paprika, and Worcestershire sauce. Bring to a boil, then cover and simmer over medium-low heat for 90 minutes. The soup will be very thick.

          You have a mix of grains and vegetables.

  6. 4

    My mere personal speculation as to the outcome is that in view of Pfaff and human nature why would the Court want to reward a wealthy company for filing a patent application late when this whole problem could have been avoided by filing earlier, when the invention was already sufficiently developed and defined to be able to sell it to a distributor? [Was that effectively argued?]

    1. 4.1

      What does “wealthy” have to do with “late filing?”

      Does your “answer”’change if “poor” is inserted in its place?

      Sadly, the better explication and noting that different times of protection available under entirely different sections of law STILL appear to be being conflated was NOT pointed out to the Court.

      1. 4.1.1

        What does “wealthy” have to do with “late filing?”

        I think the presumption is that wealthy applicants have all kinds of means (e.g., wealth) available to them to prevent these kinds of errors from happening. You know, you hire some really smart and competent people whose main job is to make sure that stuff gets filed by the patent attorneys before statutory barring disclosures occur.

        I know: really unfair to wealthy people! Because they are oh so very busy.

        1. 4.1.1.1

          That presumption line does not fly.

          You also did not answer the point presented with exchange of “poor.”

          If you are going to inject yourself, at least try to provide a cogent point.

  7. 3

    Petitioner’s response here was that the precedent is better read as focusing on protection the public domain after the public has gained possession of the invention, which implies some level of public availability.

    But if that’s the concern, then surely the “sale” must be a routine and conventional part of commerce, and not just a single public sale.

    Is the CAFC paying attention now?

    1. 3.1

      Nice attempt to “denigrate” the term “conventional.

      1. 3.1.1

        No idea what you’re talking about, Billy (because you aren’t saying anything, as usual).

        But this issue (a requirement that the prior art be “routine, conventional” in order for that prior art to “really” be considered … prior art) will ultimately end up as yet another example of me being right, 9-0.

        [shrugs]

        Just keep digging and playing the f0 0l like you usually do. It only shows everyone how desperate and wrong you are.

        1. 3.1.1.1

          By the way, Billy: would love to hear more about Charles Duell, since you’re such an expert on “history.” Especially as it seems you’ve given up on the “Chamberlin-esque” “appeasement” silliness that infected your discourse here for about five years straight.

          1. 3.1.1.1.1

            It would be a drastic mistake to confuse current non-use with improper prior use.

            That type of logical fallacy should be self-evident.

        2. 3.1.1.2

          You are aware (or should be) that “prior” is not conventional for 102/103.

          Let me know if you need help with that.

          1. 3.1.1.2.1

            This denseness of yours is going to come back to bite you in a big, big way.

            1. 3.1.1.2.1.1

              The very same thing can be – and is – said of your Accuse Others meme.

    2. 3.2

      And I just want to counter my sarcasm at 3 with some crystal clarity: the point here is that when a description of an alleged innovation is made public by virtue of it being described publically or sold via a non-secret sale, that innovation belongs to the public unless the innovation is patented (or about to be patented), in which case the innovation can be purchased and freely used by the purchaser.

      The Supreme can not introduce a judicially penned caveat into subject matter that has been dedicated to the public in the above-mentioned manner because doing so would be tantamount to taking that subject matter out of the public domain. This is why the doctrine of equivalents is limited to equivalents that weren’t disclosed or forseeable or otherwise given up. And this is also one of the reasons why a heightened requirement for defendants to show that tangible prior art elements in an otherwise ineligible claim were not just obvious but also “routine and conventional” is never, ever going to withstand even modest Supreme Court scrutiny.

      Take it to the bank. Any counsel for defendants who don’t push back on the CAFC on this issue are failing miserably, to the point of malpractice.

      1. 3.2.1

        You are again confusing and conflating prior art (102/103) and conventional.

        1. 3.2.1.1

          You are again confusing and conflating prior art (102/103) and conventional.

          No, I’m not.

          I’m telling you, Dennis, Jason, and everyone reading this to be prepared for the CAFC to get face-sl@pped with the 9 fingered hand all over again.

          More specifically, I’m advising defendants to challenge this ridiculous and non-workable “routine and conventionality” b.s. on its face as the CAFC-concocted, judicial activist, junk patentee-coddling nonsense that it is.

          1. 3.2.1.1.1

            It was not the CAFC that “concocted” it.

            Try to keep up.

  8. 2

    Thank you Prof. Karshtedt!

    One question: did the PTO ever actually take a position in any actual case or in the MPEP that the AIA 102 change adding “or otherwise available to the public” made no change as to secret sales?
    [This is re “Justice Gorsuch asked whether, assuming “on sale” is at all ambiguous, the PTO is entitled to some deference to its interpretation, which excludes secret prior art.”]

    1. 2.1

      Thanks! The PTO issued a reg with this interpretation.

      1. 2.1.1

        Right, and if that reg had been the subject of this challenge (or it had been a facial challenge) then deference would have been a live issue. But this was a district court case interpreting the statute (and the subsequent appeal). Right?

        1. 2.1.1.1

          Yes and see 6 and 6.2 above on that point.

        2. 2.1.1.2

          I guess one way the reg could have been subject to a direct challenge would be if the patent had issued under the reg and the patentability of the claims were challenged in PGR?

          1. 2.1.1.2.1

            Still not sure which “reg” is meant here, but for discussion purposes note that the PTO’s view is now in PTO MPEP 2152.02(d) as: “The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.”
            Some of the problems with challenging this, unless the Supremes effectively overrule it: There is no reason for an applicant to disclose a secret sale to an examiner given this MPEP instruction to examiners. Nor can PTO examiners issue discovery orders on the subject. Nor can this issue be raised in an IPR. Last but not least, the PTO PTAB consider itself bound by the MPEP!

            1. 2.1.1.2.1.1

              Oops. The PTAB considers itself NOT bound by the MPEP.

              1. 2.1.1.2.1.1.1

                Oops. The PTAB considers itself NOT bound by the MPEP.

                Interesting – and troubling – comment, one that probably deserves its own thread!

            2. 2.1.1.2.1.2

              See also my post at 2.1.2.

              The FACT that the executive agency did so, well, is a fact.

              One can have various opinions of that fact, but the fact remains.

            3. 2.1.1.2.1.3

              78 Fed. Reg. 11059, 11062 (2013).

      2. 2.1.2

        To clarify, the Reg from the USPTO was to the effect that the AIA did change the meaning of “prior art” in relation to secret sales (The Soliloquy was an accurate reflection of the new law).

        1. 2.1.2.1

          It is interesting to note how Ron and Paul are playing the interchange above when it comes to the (gratuitous…?) FR Notice from the Patent Office remarking on (opining…?) the fact that the AIA changed the game in regards to prior art.

          You want opinion? Plenty there between Paul and Ron.

          You want facts?
          Look at what I posted.

          As an adder (and certainly not the main or only item), can anyone recall anyone else providing a cogent reason why Congress would change the section headings of the law for one of the main drivers of the AIA?

          I put the question this way because answers of “it’s only a heading” is NOT an answer. The fact of the matter is that a change WAS made, and a change was made for an area of patent law that was expressed — by Congress — as an area being overhauled. When Congress announces a major change to a section of law, even (especially) titles of sections of the overhauled areas have import.

          The facts are there. They cannot be wished away. They cannot be “reclassified” as opinions and made to disappear.

          1. 2.1.2.1.1

            That’s a typical misrepresentation of what we were talking about, which was whether or not [or to what extent] a PTO statutory interpretation on a matter not in dispute in any PTO proceeding and not arising from any PTO proceeding should affect that non-PTO case decision.

            1. 2.1.2.1.1.1

              No Paul, this is NOT a misrepresentation of anything.

              Try reading what I wrote on its merits instead of merely reacting to what you perceive to be a “misrepresentation.”

              The points I present are clearly contributing to your conversation points without misrepresenting those points. Ron correctly characterized my point as being one of “no consideration of deference is warranted” BECAUSE my points are purely factual in nature.

              I “get” that you are aiming at some other point, but in your aim, you are spinning, and spinning a bit incorrectly. What I am doing is providing a proper factual basis from which you then can attempt to advance your propositions.

              But you, like Ron, STILL need to start with the facts of the matter.

  9. 1

    I like non-intoxicating beer!

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