We previously published a post on the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Helsinn’s subsequent petition for certiorari.
On January 22, 2019, the Supreme Court affirmed the Federal Circuit in a unanimous decision, holding that a commercial sale to a party who is required to keep the invention confidential can still constitute prior art under AIA 35 U.S.C. § 102(a). See Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., — S. Ct. —, No. 17-1229, 2019 WL 271945 (2019) [SCOTUSblog case file].
In arriving at its decision, the Court noted that legal precedent had previously defined the term “on sale” under the pre-AIA statute, and Congress’s use of the same term in the AIA maintained that meaning. Id. at *4–5. The Court reasoned that the addition of the phrase “or otherwise available to the public” was insufficient to overturn that body of precedent. Id. at *5–6. At the end of the day, the Supreme Court maintained the approach to confidential sales under the on-sale bar that applied before the AIA was enacted.