Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit considered whether the AIA §102 bar to patentability of an “invention [that] was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” imposes a new disclosure requirement for the on-sale bar. The court concluded that the “otherwise available to the public” clause of §102 does not require a sale to publicly disclose the details of the invention, and suggested that the on-sale bar will continue to apply to secret sales.
The Federal Circuit rejected the argument that the text of the AIA “otherwise” clause modifies the “on sale” clause. The court noted that to require a triggering sale to disclose the details of the invention “would work a foundational change in the theory of the statutory on-sale bar,” and Congress would not have instituted this change absent clear language to that effect. Additionally, such a disclosure requirement would encourage an inventor to unfairly extend his monopoly by delaying filing while commercializing the invention. The inventor could make, sell, and profit from his invention as a trade secret and only apply for a patent when the strength of the trade secret waned. Requiring a public disclosure of the invention for an on-sale bar would also withdraw inventions that have been placed in the public domain through commercialization once the patent is ultimately granted. Such factors, the court concluded, would “materially retard the progress of science and the useful arts.”
The Federal Circuit did not give much weight in its analysis to floor statements made by individual members of Congress, emphasizing that such statements “are typically not reliable as indicators of congressional intent.” In any case, the court suggested that the statements merely addressed congressional intent to do away with secret use as prior art, as opposed to secret sales. Although the Federal Circuit declined to decide the broader issue of whether the AIA eliminated “secret sales” as prior art because the issue was irrelevant to the case at hand, its statements suggest that the on-sale bar will continue to apply to secret sales.