SCOTUS Watch: Challenge to Secret AIA On-Sale Bar as Helsinn Granted Certiorari

102 AIA fed circuit watch on-sale bar patent pre-AIA scotus watch

On June 25, 2018, the United States Supreme Court granted the petition for writ of certiorari requested by Helsinn Healthcare S.A.  In the appellate case which had been winding its way through the federal courts, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,[1] the Court of Appeals for the Federal Circuit ruled against Helsinn in finding a secret sale ten months prior to the critical date constituted a sale for purposes of 35 U.S.C. §102(b) (pre-AIA).  We discussed the Fed Circuit’s ruling earlier on our blog.  Helsinn’s petition for rehearing en banc was also denied by the Fed Circuit earlier this year, which we also covered on the blog.

The question presented before the high court is whether Helsinn’s sale agreement, made in confidentiality to a third party, more than one year before filing its patent application, constitutes an on-sale bar to patentability under 35 U.S.C. §102(a) (AIA).  Respondent Teva filed its opposition to writ of certiorari in May 2018.

This case has the potential to be a major case because of its potential to affect the very basis of novelty under §102.  The “otherwise available to the public” language of the AIA §102(a), which did not exist in the pre-AIA §102(b), is specifically what is at-issue.  Most of the amici curiae filed with this case were supportive of Helsinn’s arguments, so that should reflect the general consensus of the patent community on this matter.

Oral arguments are scheduled for sometime in the Fall, and a ruling is expected sometime in Spring 2019.


[1] 855 F.3d 1356 (Fed. Cir. 2017), reh’g en banc denied, ___Fed. App’x___ (Fed. Cir. 2018), cert. granted, 584 U.S.___ (2018).