by Dennis Crouch
If you recall, Celanese v. ITC involves the sweetener known as AceK (acesulfame potassium), a compound discovered back in the 1960s. Celanese began selling the product on the competitive market in 2011, and eventually decided to file for patent protection on its manufacturing process in 2015. In my prior post on Celanese v. ITC, I focused on the key statutory interpretation question of whether, under the AIA’s revised 35 U.S.C. § 102, a patentee’s pre-filing sale of a product made by a secret process starts the one-year clock for patenting that process.
Although Celanese did not patent the product itself, one interesting fact that I failed to mention in the prior post is that Celanese is seeking an exclusion order at the ITC preventing importation of Ace-K. This adds an interesting wrinkle to the policy debate.
The legal hook here is 35 U.S.C. § 271(g) which provides that importing into the U.S. a product made by a process patented in the U.S. is an act of infringement, even if the product itself is not patented. In other words, 271(g) allows the owner of a U.S. process patent to block importation of unpatented products made using that process, even if use of the process was overseas.
Celanese’s invocation of 271(g) at the ITC in this case underscores some of the policy concerns that motivated the judicial forfeiture doctrine expressed in cases like Metallizing Engineering and D.L. Auld. Those cases held that an inventor forfeits their right to patent a process by selling products made by that process for several years while keeping the process secret. And here, the patentee is seeking to take that a step further by claiming that the product itself is infringing.
A key rationale was that allowing the inventor to obtain a patent monopoly after already commercially exploiting the secret invention would improperly extend the exclusivity period. The situation here has echoes of that concern. Celanese secretly used its improved Ace-K manufacturing process for years while selling Ace-K. Now it is asserting its after-obtained process patents to exclude others from importing Ace-K made using that process, even though Celanese enjoyed a head start from its earlier secret commercial use.
However, there are competing policy considerations at play here that arguably make this case potentially distinguishable from the typical forfeiture scenario contemplated by Metallizing Engineering and D.L. Auld. Significantly, Celanese does not and never had patent rights to Ace-K itself. Ace-K has been known since the 1960s and Celanese was selling it on the open market in competition with other manufacturers before patenting its new process. So Celanese’s process patents do not extend a product monopoly here so much as accomplish a time-shift. That result is still not good, but it is also not as bad as a full-on monopoly extension.
The amicus brief filed by Brian Pandya for the National Association of Manufacturers expands on these policy arguments. NAM contends that overruling the prior secret commercial use forfeiture doctrine and allowing process patents in situations like this one would promote important goals, including: 1) encouraging manufacturers to disclose innovative processes that they might otherwise keep as trade secrets; 2) aligning with international patent law norms; and 3) providing certainty to manufacturers who rely on complementary trade secret and patent process protections.
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I expect that a key driver in the outcome will be how the Federal Circuit interprets the Supreme Court’s 1858 decision in Kendall v. Winsor, 62 U.S. 322 (1858). As was common for pre-1952 patent decisions, the Supreme Court focused on the Constitutionally identified purpose of promoting the progress of science and the useful arts as the true policy and end goal of the patent system. The court went on to explain that that an inventor who withholds his invention from the public for his own indefinite and exclusive profit does not promote, and would impede, the progress of science and the useful arts.
In Kendall, inventor Winsor had developed an improved machine for manufacturing harness hames. (A harness hame is a curved metal or wooden piece used in pairs to fit around a horse collar to which the traces of the harness are attached.) Windsor kept the machine secret while using it commercially to produce hames that he sold to the public. Importantly, Winsor’s sales were of the unpatented product (hames), not the machine itself. This parallels Celanese’s sales of acesulfame potassium (Ace-K) produced using its secretly-held manufacturing process. But in the case, the court did not actually decide that this barred patenting of the method of manufacture and instead sided with the patentee.
The Supreme Court in Kendall expressed concern about allowing an inventor to “hold back from the knowledge of the public the secrets of his invention” while commercially exploiting it, only patenting when forced to by competition. The Court said this “would materially retard the progress of science and the useful arts.” This language foreshadows the policy rationale behind the Metallizing Engineering forfeiture doctrine – preventing extension of the patent monopoly by first exploiting an invention in secret. However, the Court in Kendall did not establish a strict rule that any secret commercial use constitutes a bar to patentability. Rather, it focused on the inventor’s intent and left it as a question of fact for the jury to decide whether the delay in filing was appropriate — ultimately agreeing that the jury verdict in favor of the patentee should be sustained. Thus, the court recognize that keeping an invention secret for some period to perfect it before patenting should not necessarily be penalized — especially when delays in patenting may be justified by the need for “completing an invention” or “a test of its value or success by a series of sufficient and practical experiments.” The Court distinguished this from a situation where the inventor intends to indefinitely conceal the invention while profiting from it.
Prof. Crouch,
You’ve re-gurged the errant reasoning. Have you tasked either an AI bot or a student to find my detailed and on-point explanations as to why that reasoning is errant?
What’s the hold-up? There’s gold to be found.
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In the past I provided detailed reasoning regarding why Metallizing was conflating two different times of protection from two very different portions of the Constitution – in the days of AIA debate and consequences of its passage (and stated simplification and removal of the personal bars).
This stuff was hashed through long ago now.
George Santos has entered the chat.
What was your whine the other day about non-sequiturs….?
What is your position on the Israel/Hamas fiasco?
Are you celebrating International Women’s Day for the Israel women still being held hostage?
That made me LOL.
link to journals.aps.org
professor couch, meet anon. Anon, we agreed about taking your medication.
A fal$se statement from my pal Shifty.
Thank you for your choice.
yes, Snowflake. take some of the meds and slow down and explain to everyone once again the details of how you get paid to post.
Another coin for me from your choice.
Thank$
i’m sorry i embarrassed you.
i know Snowflake makes me lol too.
:
:
Snowflake he apologized. just move on ok?
Yay more coin from my pal with the shifting historical pseudonyms.
And in Prime Time at that (seeing that you show your 0bsess10n on aged threads).
?
?
:Dull:
if only Snowflake were able to cut and paste from the internets.
maybe even Wikipedia?
Thank$$$
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No wrinkle here. Nothing to see. Move on.
Pretty standard to apply the law that a product made by a patented process infringes the process. This is international and a TRIPS obligation.
“Rath’s invocation of the Trade-Related Aspects of Intellectual Property agreement (“TRIPs”) (which incorporates the Paris Convention) is also unavailing. TRIPs is also not self-executing as 19 U.S.C. § 3512(a)(1) specifically provides that “[n]o provision of any of the Uruguay Round Agreements [including TRIPs], nor the application of any such provision to any person or circumstance, that is inconsistent with any law of the United States shall have effect.” 19 U.S.C. § 3512(a)(1) (2000). Congress has also specifically precluded any person other than the United States from using TRIPs as a cause of action or a defense, and from challenging government action on the ground that such action is inconsistent with TRIPs. 19 U.S.C. § 3512(c)(1) (2000).”
In re Rath, 402 F.3d 1207 (Fed. Cir. 2005).
Have you met my friend Tree?
+1
Does anyone know whether the prior sale of product was brought to the attention of the Examiner in an IDS?
As the claims (AFAIK) did not touch the product itself, why would sales of the product be germane to an IDS?
There was a 1990s CAFC decision, Eli Lilly v American Cyanamid, in which the court created a huge loophole in 271(g)…but the facts there may have been slightly different. There, the accused infringer, acting abroad, made an intermediate compound by a process that was covered by a US patent. It then converted that intermediate to the active compound and imported the active compound to the USA. The CAFC said that if there were other commercially viable ways to make the intermediate, then 271(g) couldn’t be used to prevent importation of the final active compound, even if the intermediate was made abroad by the process claimed in the US patent. (Judge Rader was not happy with that reasoning.) Here, I understand from Dennis that the patent covers the manufacture of the final product, not an intermediate. So I don’t know if the CAFC’s reasoning from the Eli Lilly case would apply to render 271(g) irrelevant.
It’s been a while since I’ve thought about this interesting case, but as I recall the key to understanding it was the interpretation given to 271(g)(1) which serves to limit what can be considered a “product made by a patented process.” Specifically, 271(g)(1) states that such a product does not include a product that was “materially changed by subsequent processes”. That definition was interpreted by the CAFC to include situations where there was both a change in the product (any change) and where the patented process was non-essential for commercial manufacture of the product being imported. Definitely a strange case, as I recall.
Another ‘policy consideration’ is that you used to be able to use your date of invention. Now, you’re running a much larger risk that someone will beat you to the patent office and/or the secret will become publically known.
>it focused on the inventor’s intent and left it as a question of fact for the jury to decide whether the delay in filing was appropriate
That’s interesting. I didn’t relize Metallizing(?) changed it from an equitable defense to a bar.
OC,
We both know that it did not.
Some, however, are stuck. Pray tell what is the animus for their being stuck?
Re: “you used to be able to use your date of invention.”
Not to win an interference and get a patent over someone who filed earlier if you deliberately delayed filing your patent application.
Correct – and such reflected Patent protection times.
Trade secret protection times are explicitly different.
As are the AIA sua generis Use in Secret “prior user rights” shield.
And yet, some STILL want to conflate these.
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