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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1827.OPINION.8-12-2024_2365402.pdf"><em>Celanese Intl. Corp. v. Intl. Trade Comm’n</em>, No. 22-01827 (August 12, 2024)</a>, which affirmed a finding of the International Trade Commission that the appellant’s asserted patent claims were invalid under the on-sale bar. 

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In the proceedings below, it was undisputed that Celanese’s patented process was in secret use in Europe before the critical date, and that Celanese had sold products made using the patented process in the United States before the critical date.&nbsp; While the patentee did not dispute that sales of products made using a secret process would preclude patentability, it argued that under the AIA the sales did not trigger the on-sale bar.

Celanese contended that when it enacted the AIA, Congress intended to alter the on-sale bar, based on changes in the text of Section 102 and other AIA sections, and selected portions of the legislative history.  As its gating argument, the patentee argued that the use of the phrase “claimed invention” rather than the use of “invention” in the pre-AIA provision indicated a narrower scope to the on-sale bar.  The Federal Circuit rejected the argument, finding instead that the addition of the word “claimed” did not support the foundational change advanced by Celanese and represented only a “clerical refinement of terminology.” 

The Federal Circuit next rejected Celanese’s suggestion that the grace period for “disclosure” of the invention of Section 102(b)(1) limited Section 102(a) to sales of the patented invention itself, noting that the sales at issue did not fall under the grace period and declining to construe the additional language.&nbsp; Arguments directed to the specific species of infringement and defenses under Sections 271 and 273 were dismissed as presenting “scant merit.”

Celanese’s final argument—that the Senate’s intent to exclude private sales from the on-sale bar was demonstrated in a colloquy from the Senate’s discussion of the bill—fared no better.&nbsp; The Federal Circuit noted that individual legislators’ views do not establish congressional intent, and concluded that pre-AIA precedent left Celanese’s patents invalid based on sales of products made using the patented method.

CAFC Confirms Pre-AIA Precedent Applies to AIA: Patent on Secret Process Invalid Based On Sales of Product

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