Argument Preview

Five cases being argued in March at the Federal Circuit attracted amicus briefs. One of these cases is Celanese International Corporation v. International Trade Commission. In it, the Federal Circuit will review a determination by the International Trade Commission that, under the post-America Invents Act on-sale bar provision, the sale of products made by a secret process invalidates a subsequently-filed patent application on that process. This is our argument preview.

In their opening brief, the appellants–Celanese International Corporation and related parties–first argue that the “plain language and structure” of the on-sale bar and related provisions demonstrate that, “under the AIA’s on-sale provision, sales of products made by a secret process do not invalidate patent claims on the process.” They contend use of the phrase “claimed invention” on sale, as opposed to “product of the use of the claimed invention,” demonstrates an intentional choice by Congress to exclude sales of the “end result of the patented process.” Appellants argue their interpretation also furthers the objectives of the AIA, which were to “harmonize United States and foreign patent laws and reduce costliness of litigating prior art issues.” They also argue that, when finding sales produced by a secret process triggered the on-sale bar, the ITC relied on a pre-AIA interpretation that “treated sales by patentees differently from sales by third parties.” They contend that, after the AIA, Congress ‘engrafted no such textual interpretation” and, “instead, it unambiguously provided that the ‘claimed invention’ itself must be ‘on sale.'”

In its response brief, the International Trade Commission argues this appeal “involves only the unremarkable application of controlling law.” It argues it did not err in finding that appellants sweetener product, Ace-K, manufactured by the process asserted in the claimed patents, was sold “more than a year before the effective filing date” and, as a result, was “on-sale.” The ITC asserts the appellants’ argument “cannot stand in the face of the Supreme Court’s decision in Helsinn.” The ITC maintains the argument that “the AIA narrowed the scope of the on-sale bar fail for two reasons.” First, it fails, says the ITC, because “there is no difference in scope between the pre AIA ‘invention’ and the modified wording ‘claimed invention.'” Second, it contends, the argument that “the sale of a product that does not disclose the details of the inventive process with which it was made does not place the process ‘on-sale'”, is foreclosed by Helsinn

In their response brief, the interveners–Anhui jinhe Industrial Co. and Jinhe USA LLC–contend the ITC did not err. They argue the Supreme Court’s decision in Helsinn already addressed whether “the on-sale bar applies when a patentee sells a product made by a secret process.” They maintain the “rule that a patentee’s sale of a product made using a secret process triggers the on-sale bar was well established before the AIA.” And, they argue, this interpretation follows the “main purpose” of the provision in question, “to prevent a patentee from commercializing an invention before seeking a patent . . . extending the term of the patent.” Moreover, they argue, “nothing in the AIA’s text, history, or purposes shows that Congress intended to abrogate this Court’s longstanding rule.”

In their reply brief, the appellants maintain the “plain language” of the provision requires the claimed invention itself to be on sale, instead of the “product of its use.” They contend “the structure of § 102, including its grace period, shows Congress did not intend § 102(a)(1)’s on-sale provision to apply to sales of products made by secret, inventive processes.” They argue, moreover, that this case should be distinguished from Helsinn, where the patented invention itself was for sale to a third party. Finally, the appellants argue their interpretation, not the intervenors’ or the ITC’s, is supported by Congress’s objectives and legislative history. 

The National Association of Manufacturers filed an amicus brief in support of the petitioner and reversal. It argues that clarification of the applicability of the on-sale bar is “vitally important,” and it maintains the ITC’s decision “disturbs settled expectations of manufacturers.” 

Oral argument will be heard on Monday, March 4. We will continue to keep track of this case and report on any developments.