Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.

Summary

The Supreme Court held that a commercial sale of an invention to a third party who is contractually obligated to keep the invention confidential may place the invention "on sale" under 35 U.S.C. § 102(a)(1). The Court concluded that the America Invents Act retained the pre-AIA meaning of "on sale" and affirmed the Federal Circuit's judgment concerning the validity of Helsinn's patent.

Holdings

1. A commercial sale to a third party who is required to keep the invention confidential may place the invention on sale and qualify as prior art under 35 U.S.C. § 102(a)(1).
2. The AIA did not alter the established meaning of the phrase on sale by adding the phrase or otherwise available to the public.

Questions Presented

1. Whether a commercial sale of an invention to a third party subject to a confidentiality obligation places the invention on sale under the America Invents Act's 35 U.S.C. § 102(a)(1) prior-art provision.
2. Whether Congress altered the established meaning of the statutory phrase on sale by reenacting it in the AIA and adding the phrase or otherwise available to the public.

Disposition

affirmed