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


SCOTUS Docket No. 17-1229

FC Docket No. 2016-1284, -1787
DYK, MAYER, O’MALLEY
May 1, 2017

Brief Summary: In its May decision, an FC panel reversed the DC and found the asserted claims invalid under the § 102(b) on-sale bar, the “sale” being made under a confidentiality agreement. The FC panel concluded that the AIA did not change the meaning of the on-sale bar (it may “encompass secret sales”) and “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale.”

Update: SCOTUS granted certiorari on June 25, 2018 (17-1229). The question presented is “[w]hether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.” Helsinn argued that the AIA change from the ““on sale in this country” to “on sale, or otherwise available to the public” means the claimed invention (the subject of the sale) must be available to the public in order to trigger the AIA on-sale bar (arguing that “[i]f the decision below is allowed to stand, the United States would be the only industrialized country to invalidate patents on the basis of ‘secret’ prior art.”)

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