42 IP Profs: AIA Didn't Change Meaning of "On Sale" and "Public Use" in § 102

Mark Lemley and Rob Merges just filed a Federal Circuit amicus brief on behalf of 42 IP professors in Helsinn v. Teva, arguing that the AIA did not change the meaning of "on sale" and "public use" in 35 U.S.C. § 102(a)(1). Under pre-AIA caselaw such as the classic Metallizing Engineering, secret commercial use is not prior art against a third party, but it does start a one-year clock for the inventor to encourage the inventor to disclose. The district court opinion in Helsinn held that the AIA changed this rule: sales and offers for sale only count as prior art if they are "available to the public."

The district court decision is based on the addition of "or otherwise available to the public" to § 102(a)(1), but the IP prof brief notes that this interpretation is hard to square with the statutory text of § 102(b)(1), which distinguishes between 102(a)(1) art that is (A) "disclosed" by the inventor (or those who obtained the subject matter from the inventor) versus (B) "publicly disclosed" by third parties. Under the district court's Helsinn's opinion, this distinction between disclosures and public disclosures becomes "nonsensical."

The legislative history of this provision is complicated. For the pro-overturning-Metallizing view, see p. 470-71 of this account by Joe Matal, who was a staffer to Senator Jon Kyl. But the IP profs argue that Senator Kyl tried and failed to make this change in the statutory text, and that the supporters of overturning Metallizing are now trying to use ambiguous statutory text and manufactured legislative history to accomplish what they didn't have the votes to accomplish by clear statutory amendment. Preventing this kind of gambit is the underlying rationale for statutory interpretation canons such as "Congress does not hide elephants in mouseholes."

The IP prof amicus brief concludes with a thorough explanation of how the district court's reading of § 102(a) "attributes a quite radical intent and effect to the new prior art provision" that "would sweep away scores of cases" and cause "decades of uncertainty as to the scope of prior art." Congress reenacted the same statutory terms—"on sale" and "public use"—which is normally presumed to ratify judicial interpretations of those terms. There were no legislative hearings on eliminating secret prior art, and the IP profs argue that it is implausible that Congress intended "a major sea change in this very old and very much relied-upon body of law" without clear notice or explanation.