The On-Sale Bar Still Applies to the Products of Secret Processes

Written by: Brandon G. Smith & Juliana H. Kirby

CELANESE INTERNATIONAL CORPORATION v. ITC

Before Reyna, Mayer, and Cunningham. Appeal from the International Trade Commission.

Summary: Process patent claims are invalid under the on-sale bar (35 U.S.C. § 102(a)(1)) when products of a secret process are sold before the critical date.

Celanese filed a petition in the International Trade Commission, accusing Jinhe of importing a product made using Celanese’s patented process. Jinhe moved for summary determination that the asserted claims were invalid under the on-sale bar, because Celanese made sales in the United States of a product made using its patented process prior to the critical date. Celanese argued that the America Invents Act (“AIA”) changed pre-AIA on-sale bar law such that the on-sale bar did not apply.  The ALJ granted Jinhe’s motion, ruling that the AIA did not change the meaning of “on sale” and that the asserted claims were therefore invalid. The Commission denied review, and Celanese appealed to the Federal Circuit.

The Federal Circuit noted that it “has long held that sales of products made using secret processes before the critical date would bar the patentability of that process.”  It explained that, in Helsinn Healthcare S.A. v. Teva Pharms. USA, 586 U.S. 123 (2019), the Supreme Court determined that the enactment of the AIA did not change the substantial body of law regarding confidential sales under the “on sale” language in Section 102.  Accordingly, the Supreme Court held that the sale of a patented compound that did not publicly disclose the compound’s composition nevertheless triggered the post-AIA on-sale bar.  Applying the same reasoning, the Federal Circuit held that Congress did not intend “to abrogate the settled construction of the term” with respect to sales of products made using secret, patented processes. The Federal Circuit ruled any textual changes in pre-AIA and post-AIA Section 102 were to “reflect[] no more than a clerical refinement of terminology for the same meaning in substance.”  The court also determined that changes in Sections 102(b), 271(g), and 273(a) did not indicate that Congress intended to change the scope of the on-sale bar.  Accordingly, it affirmed the ITC’s determination of invalidity.

Editor: Sean Murray