It was undisputed that Celanese’s patented process was in secret use in Europe before the critical date and that Celanese had sold the article made using the patented process in the United States before critical date. In an investigation at the ITC brought by Celanese, the Administrative Law Judge (ALJ) concluded that Celanese’s prior sales triggered the on-sale bar and that the AIA did not overturn settled pre-AIA precedent regarding the on-sale bar. Therefore, the ALJ determined that the patent was invalid and the Commission affirmed.
The Federal Circuit agreed with the Commission that the AIA did not alter the jurisprudence regarding the on-sale bar developed in the pre-AIA context. The court noted that, under long-settled pre-AIA precedent, the on-sale bar applies when the patentee sells, before the critical date, products made, even if using a secret process. By reenacting the “on sale” language in the AIA version of 35 U.S.C. § 102(a), the court presumed that Congress did not intend to abrogate the settled construction of the term or alter the effects of judicial precedent.
The court was unpersuaded by citations to minor textual changes in the AIA version of § 102(a). Celanese pointed to the use of the phrase “claimed invention,” which replaced the word “invention” in the pre-AIA version of the statute, and the addition of the catchall phrase “otherwise available to the public” in the AIA version. The court reasoned that nothing in these changes affected the meaning of the statute. And the Supreme Court explicitly rejected such textual arguments in Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 586 U.S. 123 (2019), noting that the on-sale bar has never required that a qualifying commercial sale reveal to the public the details of the claimed invention.
The court also discussed the rationale behind on sale bar and found support for its conclusion there. The court noted that the on-sale bar applies when one commercially exploits the process by seeking compensation from the public for carrying out that process before critical date.
The court also rejected Celanese’s arguments related to comments made in a footnote in a committee report in the AIA’s legislative history. The court noted that individual legislators’ views do not meaningfully establish congressional intent. And the Federal Circuit noted that the Supreme Court has repeatedly cautioned against relying on legislative materials like committee reports containing individual legislators’ views to interpret statutory text.
This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.
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