The Federal Circuit issued its opinion in August in Celanese International Corp. v. International Trade Commission, a patent case that attracted an amicus brief. In this case, the Federal Circuit reviewed a determination by the International Trade Commission that Celanese’s asserted patent claims were invalid under the on-sale bar because Celanese sold products made using a patented process more than one year before the effective filing dates of the asserted patents. In an opinion authored by Judge Reyna and joined by Judges Mayer and Cunningham, the Federal Circuit affirmed the ITC’s judgment. According to the panel, “Celanese fail[ed] to show the [America Invents Act] overturned settled precedent that pre-critical date sales of products made using a secret process preclude the patentability of that process.” This is our opinion summary.
Judge Reyna began by highlighting the procedural and factual background of the case:
Celanese . . . filed a petition before the United States International Trade Commission (the “Commission”), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA (collectively, “Jinhe”) and other entities violated 19 U.S.C § 337. . . . Celanese alleged that Jinhe and other entities were importing Ace-K (an artificial sweetener) made using a process that infringed on Celanese’s patents. . . . The asserted patents are [] governed by the America Invents Act (“AIA”). It is undisputed that Celanese’s patented process was in secret use in Europe before the critical date . . . . It is also undisputed that Celanese had sold Ace-K made using the patented process in the United States before the critical date. . . . Jinhe moved for a summary determination of no violation of 19 U.S.C. § 337 on the ground that the claims at issue were invalid under the on-sale bar provision, 35 U.S.C. § 102(a)(1). . . . Celanese argued that the AIA changed pre-AIA law such that its pre-2015 sales of Ace-K made using its secret process would not trigger the on-sale bar. . . . The presiding Administrative Law Judge . . . conclud[ed] that Celanese’s prior sales triggered the on-sale bar and that the AIA did not overturn settled pre-AIA precedent. The ALJ noted, the Helsinn Court concluded that ‘when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase. . . .’ Accordingly, the ALJ held that Celanese’s claims at issue were invalid because Celanese sold Ace-K made using its secret process more than one year before it sought the asserted patents. . . . On that basis, the ALJ granted Jinhe’s motion for a summary determination of no violation of 19 U.S.C. § 337.
Justice Reyna began his analysis by noting that “[a]pplication of the on-sale bar under 35 U.S.C. § 102 is ultimately a question of law that we review de novo.” Moreover, he explained that, while “[i]nterpreting the pre-AIA ‘on sale’ provision, this court has long held that sales of products made using a secret process before the critical date would bar the patentability of that process.” That interpretation, he explained, was meant to “preclude an inventor’s attempt to profit from commercial exploitation of his invention for more than one year before seeking a patent.” Judge Reyna described how “[a]n inventor’s ‘voluntary act’ of exploiting his invention through a commercial sale before the critical date constitutes ‘an abandonment of his right’ to a patent.”
Judge Reyna then addressed the impact of the AIA, including its amendment to the relevant statutory text. After noting relevant Supreme Court and Federal Circuit precedent, Judge Reyna explained “that Congress reenacted the ‘on sale’ language . . . encompass[ing] the Federal Circuit’s judicial interpretation of the term.” Thus, he concluded, “the on-sale bar applies when a patentee sells, before the critical date, products made using a secret process.”
The panel rejected several of Celanese’s assertions. For example, the panel rejected the argument that, “in enacting the AIA, Congress intended to alter the on-sale bar such that its pre-2015 sales of Ace-K would not invalidate its later-sought patent claims.” Judge Reyna clarified that “[t]he addition of word ‘claimed’ does not support the foundational change Celanese would have [the court] find.” Rather, he noted, “whether ‘invention’ or ‘claimed invention’ is used, the statutory language references the same ‘invention’ that an applicant seeks to patent.” Thus, the altered language, he continued, “reflect[ed] no more than a clerical refinement of terminology for the same meaning in substance.”
Judge Reyna also made clear that, “[w]hatever the type of invention, the on-sale bar precludes one from commercially exploiting the invention and then continuing that exploitation through a patent, effectively extending the statutory patent term.” He thus rejected “Celanese’s proposition that Congress intended to alter the on-sale bar as applied to process inventions, or to disturb the underlying rationale in our caselaw.”
As result of the panel’s analysis, the Federal Circuit affirmed the judgment of the ITC.