On Tuesday, January 22, 2019, the Supreme Court upheld the Federal Circuit’s ruling in Helsinn Healthcare v. Teva Pharmaceuticals and confirmed that Congress did not change the meaning of the term “On-Sale” when it passed the AIA in 2012. For a full description of the case’s disposition, see our previous update on the oral argument held at the end of 2018.
In the decision, the Supreme court noted that “On-Sale” had a well-established meaning before the AIA was passed that included confidential sales and that Helsinn was not challenging that pre-AIA interpretation. Instead, the Court explained that the argument Helsinn was advancing was that the addition of “or otherwise available to the public” to § 102 changed the meaning of the term “On-Sale” to require public availability.
The Court disagreed, explaining that “The addition of ‘or otherwise available to the public’ is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term ‘on sale.’… Given that the phrase “on sale” had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent.”
In keeping the meaning the same as under pre-AIA precedent, the Court held that “Because we determine that Congress did not alter the meaning of “on sale” when it enacted the AIA, we hold that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).”
 Helsinn Healthcare v. Teva Pharmaceuticals USA, Inc., Slip Opinion at 8 (2019).
 Helsinn Healthcare v. Teva Pharmaceuticals USA, Inc., Slip Opinion at 9 (2019).
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