Over-Sweetening The Pot? When Selling A Product Bars Patenting The Manufacturing Process Under The AIA

• Published date: 11 March 2024
• Subject Matter: Intellectual Property, Patent
• Law Firm: Axinn Veltrop & Harkrider
• Author: Mr Matthew S. Murphy

The America Invents Act ("AIA") bars a person from obtaining a patent when the "claimed invention" had been "on sale" more than one year before the filing date of the patent. 35 U.S.C. ' 102(a)(1).

Acesulfame potassium ("Ace-K") is an artificial sweetener used in foods, drinks, and medicines. In 2015, Celanese International Corporation ("Celanese") filed a patent claiming an improved method of preparing Ace-K. However, Celanese had secretly made Ace-K by 2011 using the claimed process and sold that Ace-K more than one year before filing its patent application. Based on these facts, the ITC issued a summary determination that the asserted patent claims were invalid pursuant to the AIA's on-sale bar provision.

Next week, the Federal Circuit in Celanese International Corporation v. I.T.C., No. 22-1827, will hear Celanese's appeal. Celanese asserts that a plain reading of the statute requires that the "claimed invention" (i.e., the process) must have been on sale. It also asserts that textual differences between the on-sale bar provisions of pre-AIA 35 U.S.C. ' 102(b) and AIA 35 U.S.C. ' 102(a)(1) (e.g., changing "invention" to "claimed invention" and adding of "otherwise available to the public") show legislative intent to limit the on-sale bar to only the "claimed invention," and weighs against applying pre-AIA precedent to this dispute.

In contrast, the ITC and intervenor Anhui Jinhe Industrial Co. ("Anhui") assert that Congress did not modify the scope of the on-sale bar in enacting the AIA. In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the U.S. Supreme Court affirmed that the AIA's on-sale bar applied where the claimed product had been the subject of a confidential sale. In considering whether the product had been "on sale," the Supreme Court stated that Congress "did not alter the meaning of 'on sale' when it enacted the AIA." Thus, the ITC and Anhui assert that pre-AIA on-sale bar precedent applies with equal force to the AIA and forecloses a patentee from patenting a process when a product made by the claimed process had been on sale. Celanese disagrees that Helsinn controls because that case ultimately addressed a different question than presented here.

Pre-AIA on-sale bar cases foreclosed a patentee from patenting a method of making a product when the product had already been offered for sale.¹ (Our prior article discussed the Federal Circuit's decision in Quest Integrity holding a method patent invalid where the patentee had earlier sold a...