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« Valeant Pharmaceuticals Int'l v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2020) | Main | Webinar on Dosage Patents »

April 09, 2020


Did this decision just fly past last year's Supreme Court decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S. Ct. 628 (2019)? Helsinn is only cited once, in a footnote.

How can this stand in light of Helsinn?

The difference is that in Helsinn the issue was the Patentes’s activities before the critical date, and here it is a third party.

The opinion discusses the policy grounds for the rule when it is the patentee’s actions that do not arise from third party actions, and indeed would be contrary to them

Here in BASF Corp. v. SNF Holding Co. the Fed. Cir. clearly distinguished between the 102 "on sale" bar which the Sup. Ct. said in Helsinn Healthcare S.A. v. Teva Pharmaceuticals still applies to secret commercial sales, versus the "PUBLIC use" bar and Learned Hand's Metallizing Eng'g Co. v. Kenyon Bearing & Auto Parts Co., plus the Fed. Cir. Gore v. Garlock.

So, all the clamor in the wake of Helsinn that it expanded 102(a)(1) prior art to encompass evidence of secret "commercial use," "offers of sale," and "sales" by anybody (including third parties) anywhere in the world for any length of time was unfounded gibberish?

So, if party patents a purportedly novel chemical (that has alleged utility as an additive for gasoline) and evidence arises that the chemical had actually been made secretly by a third party in the US, offered for sale, and sold confidentially as an additive for gasoline several years before the patent was first applied for, then such evidence would not amount to prior art against the patent under 102(a)(1)? What if evidence of the same activity in, say, a third party in Germany comes to light?

I don't see anything in 102(a)(1) that appears to limit its reach to activities of the inventor, and I believe everyone agrees the absence of any geographical limitation causes it to reach pre-filing evidence of the noted activity anywhere in the world.

When will we stop putting a gloss on statutory language like 102(a) by reading words into it that are not there? If we interpret these things the way they are written, then maybe it will cause Congress to get its act together.

Mr. Graham,

You hint at (but do not name) the aspect of the America Invents Act that was made PRIOR TO full passage of that act by the writers (timing IS an important consideration):

Metallizing was abrogated.
The (long errant) conflation of protection under two different Constitutionally based protections (trade secret under the Commerce Clause and patent protection under the Intellectual Property Clause) being INDEED separate and distinct, were corrected by the AIA.

Of course, this comment can only introduce a concept that has been explicated in far more detail previously.

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