In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought claims on that process.
Patent owner Celanese International Corp. appealed a decision from the International Trade Commission (“ITC”) finding that Celanese’s claims were invalid under Section 102’s on-sale bar. Celanese sold Ace-K, an artificial sweetener made using a secret process, in the United States, more than a year before the effective filing date of Celanese’s patents. Celanese argued to the ITC that the AIA changed the on-sale bar, such that its sale of Ace-K did not trigger the bar. The ITC disagreed and Celanese appealed.
The Federal Circuit found that the AIA did not change the on-sale bar and that Celanese’s pre-2015 sales of Ace-K made using a secret process invalidated the later-sought claims on the process. Under established pre-AIA precedent, sales of products made using a secret process before the critical date would bar patentability of that process.
Primarily, the Federal Circuit applied the reasoning of the Supreme Court’s decision in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 586 U.S. 123 (2019), which addressed the reenactment of the original Patent Act’s “on sale” language in the AIA. In that decision, the Supreme Court presumed that Congress adopted the earlier judicial construction of the term “on sale” when it reenacted the same language in the AIA and rejected the argument that the AIA required a sale to disclose the details of an invention to the public in order to trigger the on-sale bar. The Federal Circuit applied the same presumption to Celanese’s sale of Ace-K made using a secret process more than a year before the effective filing date of the asserted patents.
The Federal Circuit further rejected Celanese’s arguments that the AIA changed the on-sale bar based on textual changes in Section 102(a), other sections of the AIA, and the legislative history. For example, the Court found that the fact that there were some Section 102(a) statutory changes did not alter the meaning of the on-sale bar or indicate a congressional intent to overturn settled law. Nor did language in other sections of the AIA relating to infringement and third-party actions govern the interpretation of the on-sale bar. The Court also held that Celanese’s cited views of individual legislators, taken out of context from the years-long legislative process, were insufficient to establish a congressional intent to change the meaning of the on-sale bar.
The Federal Circuit therefore affirmed the ITC’s determination that Celanese’s patents were invalid, with costs against the appellant.
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