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Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.

“On Sale” Bar May Be Invoked by Sales Not Disclosing the Invention to the Public

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., __ U.S. ___, 2019 WL 271945 (Jan. 22, 2019) (THOMAS, J., for the unanimous Court) (Fed. Cir. (855 F.3d 1356): DYK, Mayer, O’Malley)(D.N.J.: Cooper) (5 of 5 stars)

Supreme Court affirms Fed Cir determination that under post-AIA § 102, a “secret sale”—i.e., a “commercial sale to a third party who is required to keep the invention confidential,” Op. at 1—may invoke the on sale bar. The opinion rejects the argument that the AIA changed the meaning of the “on sale” bar. It recites various pre-AIA precedent holding that “secret sales” can invalidate a patent, and reasons that Congress would have been aware of that interpretation when enacting the AIA. While the AIA did add a provision to § 102(a) barring patentability for any invention “on sale, or otherwise available to the public,” the “otherwise available” language does not overwhelm the history of precedent regarding the on sale bar. “Given that the phrase ‘on sale’ had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent.” Op. at 8.

KEYWORDS: AMERICA INVENTS ACT; ON SALE BAR; SECRET SALES