Amicus Curiae Brief — Helsinn Healthcare S.A., Petitioner v. Teva Pharmaceuticals USA, Inc., et al.

No. 17-1229

In the

Supreme Court of the United States

Helsinn Healthcare S.A.,

Petitioner,

v.

Teva Pharmaceuticals USA, Inc., et al.,

Respondents.

On Writ of Certiorari to the United States

Court of A ppeals for the Federal Circuit

Brief Amici Curiae of 45

Intellectual Property Professors

in Support of RespondentS

Mark A. Lemley

Counsel of Record

A dditional signatories are

listed in A ppendix A

Stanford Law School

559 Nathan Abbott Way

Stanford, California 94305

(650) 723-4605

mlemley@law.stanford.edu

Counsel for Amici Curiae

283658

A

(800) 274-3321 • (800) 359-6859

i

taBle of contents

Page

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

INTEREST OF AMICI . . . . . . . . . . . . . . . . . . . . . . . . . . 1

SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . 1

I.

The AIA Did Not Change the Meaning

of the Term On Sale by Reenacting It . . . . . . . . . 2

A. The Terms “Public Use” and “On

Sale” Have a Settled Meaning This

Court Should Not Disturb . . . . . . . . . . . . . . . 2

B. The Distr ict Cour t’s Holding Is

Inconsistent with the Language and

Structure of the AIA . . . . . . . . . . . . . . . . . . . 3

II. The Legislative History Does Not Support

a New “Publicness” Requirement . . . . . . . . . . . . 7

III. The Addition of “Otherwise Available to the

Public” Should Not Change This Result . . . . . . 11

A. Petitioner’s Approach Would Radically

Rewrite the Law of Prior Art . . . . . . . . . . . 11

B. So What Does “Otherwise Available

to the Public” Mean? . . . . . . . . . . . . . . . . . . 20

ii

Table of Contents

Page

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

APPENDIX . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1a

iii

taBle of cited autHorities

Page

CASES

Air Wis. Airlines Corp. v. Hoeper,

134 S. Ct. 852 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Alexander Milburn Co. v.

Davis-Bournonville Co.,

270 U.S. 390 (1926) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Barnhart v. Sigmon Coal Co.,

534 U.S. 438 (2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Barnhart v. Thomas,

540 U.S. 20 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

Buildex Inc. v. Kason Indus., Inc.,

849 F.2d 1461 (Fed. Cir. 1988) . . . . . . . . . . . . . . . . . . 16

Conmar Prods. Corp. v.

Universal Slide Fastener Co.,

172 F.2d 150 (2d Cir. 1949) . . . . . . . . . . . . . . . . . . . . . 14

D.L. Auld Co. v. Chroma Graphics Corp.,

714 F.2d 1144 (Fed. Cir. 1983) . . . . . . . . . . . . . . . . . . 15

Egbert v. Lippmann,

104 U.S. 333 (1881) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Elizabeth v. Pavement Co.,

97 U.S. 126 (1877) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

iv

Cited Authorities

Page

FAA v. Cooper,

132 S. Ct. 1441 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . . 3

Freytag v. Commissioner,

501 U.S. 868 (1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Gemmy Indus. Corp. v. Chrisha Creations Ltd.,

452 F.3d 1353 (Fed. Cir. 2006) . . . . . . . . . . . . . . . . . . 17

GPX Int’l Tire Corp. v. United States,

666 F.3d 732 (Fed. Cir. 2011) . . . . . . . . . . . . . . . . . . . . 2

Group One, Ltd. v. Hallmark Cards, Inc.,

254 F.3d 1041 (Fed. Cir. 2001) . . . . . . . . . . . . . . . . . . 18

Gustafson v. Alloyd Co.,

513 U.S. 561 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Hazeltine Research, Inc. v. Brenner,

382 U.S. 252 (1965) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Helsinn v. Teva,

__ F. Appx. __ (Fed. Cir. 2018) . . . . . . . . . . . . . . . 7, 21

In re Hafner,

410 F.2d 1403 (C.C.P.A. 1969) . . . . . . . . . . . . . . . . . . .19

In re Hall,

781 F.2d 897 (Fed. Cir. 1986) . . . . . . . . . . . . . . . . 12, 21

v

Cited Authorities

Page

In re Kaplan,

789 F.2d 1574 (Fed. Cir. 1986) . . . . . . . . . . . . . . . . . . 20

In re Klopfenstein,

380 F.3d 1345 (Fed. Cir. 2004) . . . . . . . . . . . . . . . 12, 18

In re Kollar,

286 F.3d 1326 (Fed. Cir. 2002) . . . . . . . . . . . . . . . . . . 18

In re Vogel,

422 F.2d 438 (C.C.P.A. 1970) . . . . . . . . . . . . . . . . . . . 20

Kinzebaw v. Deere & Co.,

741 F.2d 383 (Fed. Cir. 1984) . . . . . . . . . . . . . . . . . . . 15

Lough v. Brunswick Corp.,

86 F.3d 1113 (Fed. Cir. 1996) . . . . . . . . . . . . . . . . . . . 14

Metallizing Engineering Co. v. Kenyon Bearing

& Auto Parts Co.,

153 F.2d 516 (2d Cir. 1946) . . . . . . . . . . . . 10, 13,, 15, 19

Microsoft Corp. v. i4i Ltd. P’ship,

131 S. Ct. 2238, 2242 (2011) . . . . . . . . . . . . . . . . . . . . . 3

Mims v. Arrow Fin. Servs., LLC,

132 S. Ct. 740 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Moore v. United States,

194 U.S.P.Q. 423, 1977 WL 22793 (Ct. Cl. 1977) . . . 15

vi

Cited Authorities

Page

Nationwide Mut. Ins. Co. v. Darden,

503 U.S. 318 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

Neder v. United States,

527 U.S. 1 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

OddzOn Products v. Just Toys,

122 F.3d 1396 (Fed. Cir. 1997) . . . . . . . . . . . . . . . 13, 14

Patriotic Veterans, Inc. v. Indiana,

736 F.3d 1041 (7th Cir. 2013) . . . . . . . . . . . . . . . . . . . . 9

Pennock v. Dialogue,

27 U.S. (2 Pet.) 1 (1829) . . . . . . . . . . . . . . . . . . . . . 16, 17

Pfaff v. Wells Elec., Inc.,

525 U.S. 55 (1998) . . . . . . . . . . . . . . . . . . . . . . . . . 16, 18

Special Devices, Inc. v. OEA, Inc.,

270 F.3d 1353 (Fed. Cir. 2002) . . . . . . . . . . . . . . . . . . 16

Standard Oil Co. of N.J. v. United States,

221 U.S. 1 (1911) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

Suffolk Techs., LLC v. AOL Inc.,

752 F.3d 1358 (Fed. Cir. 2014) . . . . . . . . . . . . . . . . . . 18

Tilghman v. Proctor,

102 U.S. 707 (1880) . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

vii

Cited Authorities

Page

TRW Inc. v. Andrews,

534 U.S. 19 (2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

United States v. Alaska,

521 U.S. 1 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Voter Verified, Inc. v. Premier Election

Solutions, Inc.,

698 F.3d 1374 (Fed. Cir. 2012) . . . . . . . . . . . . . . . . . . 18

W.L. Gore & Assocs. v. Garlock, Inc.,

721 F.2d 1540 (Fed. Cir. 1983) . . . . . . . . . . . . . . . . . . 15

White Cap Co. v. Owens-Ill. Glass Co.,

203 F.2d 694 (6th Cir. 1953) . . . . . . . . . . . . . . . . . . . . 14

Wis. Educ. Ass’n Council v. Walker,

705 F.3d 640 (7th Cir. 2013) . . . . . . . . . . . . . . . . . . . . . 9

STATUTES AND OTHER AUTHORITIES

35 U.S.C. § 102(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 12

35 U.S.C. § 102(f) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13, 14

35 U.S.C. § 103 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13, 14

35 U.S.C. § 103(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

viii

Cited Authorities

Page

109th Cong. § 3 (2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

154 Cong. Rec. 22,631 (2008) . . . . . . . . . . . . . . . . . . . . . . . 7

157 Cong. Rec. 3415 (2011) . . . . . . . . . . . . . . . . . . . . . . . . 8

157 Cong. Rec. 3423–24 (2011) . . . . . . . . . . . . . . . . . . . . . 8

157 Cong. Rec. H4424 (daily ed. June 22, 2011) . . . . . . . 9

AIA § 102 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

AIA § 102(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 5, 11, 12

AIA § 102(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

AIA § 102(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 4, 13

AIA § 102(b)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4, 5, 11

AIA § 102(b)(1)(A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4, 6

AIA § 102(b)(1)(B) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4, 6

AIA § 102(b)(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

AIA § 102(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

H.R. 1249 - America Invents Act . . . . . . . . . . . . . . . . . . . 9

ix

Cited Authorities

Page

H.R. 1908, 110th Cong. . . . . . . . . . . . . . . . . . . . . . . . . . . 10

H.R. Rep. No. 110-314 (2007) . . . . . . . . . . . . . . . . . . . . . 10

H.R. Rep. No. 112-98 (2011) . . . . . . . . . . . . . . . . . . . . . . 10

S. Rep. No. 111-18 (2009) . . . . . . . . . . . . . . . . . . . . . . . . . . 7

2 D ona l d S. C h i s u m , C h i s u m on Pa t en t s

§ 6.02(5)(b) (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

Daniel Taskalos, Metallizing Engineering’s

For feiture Doctr ine Af ter the Amer ica

Invents Act, 16 Stan. Tech. L. Rev. (2013) . . . . . . . 10

H a rold C. Wegner , T he 2011 Patent L aw :

Law and Practice (4th ed. 2011) . . . . . . . . . . . . . . . . . 8

Ma rk A . Lemley, Does Public Use Mean

t h e S a m e T h i n g It D i d L a s t Ye a r?,

93 Tex L. Rev. 1119 (2019) . . . . . . . . . . . . . . . . . . . . . 10

M a rk A . L em ley, Re a dy fo r Pa t e n tin g,

96 B.U. L. Rev. 1171 (2016) . . . . . . . . . . . . . . . . . . . . . 19

Rober t P. Merges, Pr ior ity an d Novelty

Under the AIA, 27 B erk eley T ech . L.J.

1023 (2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

1

INTEREST OF AMICI

Amici are professors who teach and write about patent

law at schools throughout the United States. We have no

personal interest in the outcome of this case, but have a

professional interest in seeing that the patent law develops

in a clear way that serves its constitutional purpose.1

SUMMARY OF ARGUMENT

The key legal question in this case is simple: did

Congress mean to sweep away scores of established cases

under the 1952 Act even though it reenacted language

unchanged since 1870, and in some cases dating from 1790,

merely because it added the phrase “or otherwise available

to the public” to the list of prior art categories in the new

AIA section 102? We think not. We have three primary

reasons. First, Petitioner’s reading is inconsistent with

the language and structure of the AIA. Second, it is

inconsistent with Congressional intent in readopting the

“on sale” and “public use” language in section 102. Finally,

it would sweep away scores of cases decided over two

centuries and radically rewrite a host of patent doctrines.

1. No one other than the undersigned drafted any portion of

this brief or contributed any money towards its preparation or filing.

The parties have filed blanket consent to amicus briefs.

2

I. The AIA Did Not Change the Meaning of the Term

On Sale by Reenacting It

A. The Terms “Public Use” and “On Sale” Have

a Settled Meaning This Court Should Not

Disturb

Because the terms “public use” and “on sale” have been

in the patent statute since 1836, 5 Stat. 117 (1836), and have

consistently been interpreted during that time to extend

to secret commercial sales and uses, the relevant question

is not simply “what do the terms ‘public use’ and ‘on sale’

mean?” but “did Congress intend to change the settled

meaning of those terms?” It is a well-established principle

of statutory interpretation that when Congress reenacts

existing statutory language it is presumed to acquiesce in

the way the courts have interpreted that language. See,

e.g., Standard Oil Co. of N.J. v. United States, 221 U.S.

1, 59 (1911) (“[W]here words are employed in a statute

which had at the time a well-known meaning at common

law or in the law of this country they are presumed to have

been used in that sense . . . .”); Neder v. United States,

527 U.S. 1, 21 (1999) (“‘[W]here Congress uses terms that

have accumulated settled meaning under . . . the common

law, [we] must infer, unless the statute otherwise dictates,

that Congress means to incorporate the established

meaning of these terms.’” (quoting Nationwide Mut.

Ins. Co. v. Darden, 503 U.S. 318, 322 (1992))); GPX Int’l

Tire Corp. v. United States, 666 F.3d 732, 739 (Fed. Cir.

2011) (identifying Supreme Court cases that support

this principle). Indeed, the Supreme Court applied this

principle to the Patent Act as recently as 2011, when it

concluded that the phrase “a patent shall be presumed

valid” in the 1952 Act required the application of a clear

3

and convincing evidence standard because courts before

1952 had interpreted the presumption to be rebutted only

with clear and convincing evidence. Microsoft Corp. v.

i4i Ltd. P’ship, 131 S. Ct. 2238, 2242, 2246 (2011). So it is

reasonable to apply a strong presumption that both “public

use” and “on sale” mean the same thing in the AIA as they

meant in the 1952 Act (or the Patent Act of 1870, for that

matter). “‘[I]t is a cardinal rule of statutory construction

that, when Congress employs a term of art, it presumably

knows and adopts the cluster of ideas that were attached

to each borrowed word in the body of learning from which

it is taken.’” Air Wis. Airlines Corp. v. Hoeper, 134 S.

Ct. 852, 861–62 (2014) (quoting FAA v. Cooper, 132 S.

Ct. 1441, 1449 (2012). This Court should ignore that rule

only if there is simply no way to make sense of the statute

otherwise. As we show in the next section, that is not true

of “public use” and “on sale.”

B. The District Court’s Holding Is Inconsistent

with the Language and Structure of the AIA

The purpose of AIA § 102(b) is to provide exceptions to

the general rule of AIA § 102(a), the new first-to-file novelty

rule. The exceptions are in the form of a grace period. In

drafting AIA § 102(b), Congress made “disclosures”

(i.e., prior art events) the focus of the grace period. This

is important for two reasons. First, “disclosure” means

any prior art event – including a “public use” or “on

sale” event. Under venerable and voluminous case law,

this includes non-informing public uses; use or sale of a

machine’s output (rendering the machine itself in “public

use”); and secret or confidential sales of a patented item.

See Section III, infra.

4

Under the AIA, all of these prior art events, as

traditionally defined, are disclosures. To be precise, under

the AIA there are two types of disclosures that qualify

for the grace period exceptions: (A) the inventor’s own (or

“first party”) disclosures; and (B) third party disclosures.

In both § 102(b)(1)(A) and (B), “disclosure” means the same

thing: any prior art falling within the categories listed in

§ 102(a)(1) (“patented, described in a printed publication,

or in public use, on sale . . . ”). Those terms have been

carried over from 1870 intact, and in some cases from

the Patent Acts of 1790 and 1836. The meaning of each

category naturally incorporates all the well-settled case

law interpreting it. Put simply, “disclosure” means “prior

art as traditionally defined.”

S e c ond , t he st at ut e d i st i ng u i she s b et we en

“disclosures” and “public disclosures.” The exception in

102(b)(1)(B) says third party disclosures (stated passively,

as “the subject matter disclosed,” with no limitation on

who is doing the disclosing) are also not part of the prior

art, if made within one year of filing – and if preceded

by a “public disclosure” by the inventor. Disclosures, in

other words, are specifically defined to be different from

public disclosures.

AIA § 102(b) is therefore inconsistent with the idea

that Congress meant to eliminate all non-public categories

of prior art. In particular, the crucial distinction between

“disclosures” and “public disclosures” in AIA § 102(b)(1)

demonstrates that not all prior art events (“disclosures”)

are public disclosures. 2 It is crystal clear from the text of

2. This is also evident from AIA § 102(b)(2), which defines

prior-filed patent applications as “disclosures” and makes the

information in them (“the subject matter disclosed”) prior art:

5

AIA § 102 that the term “disclosure” in § 102(b)(1) – the

grace period provision – refers to any prior art reference

in any of the categories of prior art listed in AIA § 102(a):

A disclosure made 1 year or less before the

effective filing date of a claimed invention shall

not be prior art to the claimed invention under

subsection (a)(1) if . . . .

The heading for § 102(a), listing the types of references

under the AIA, reads: “Novelty; Prior Art.” So “disclosure”

encompasses any type of prior art. Therefore “public

disclosures” must be a special type of disclosure. Public

disclosure can’t mean the same thing as “disclosures,” as

Petitioner would have it. Otherwise, the word “publicly”

( 2 ) D ISCL O SURES A P P EARI N G I N

APPLICATIONS AND PATENTS.—A disclosure

shall not be prior art to a claimed invention under

subsection (a)(2) if—

(B) the subject matter disclosed had, before

such subject matter was effectively filed under

subsection (a)(2), been publicly disclosed by

the inventor or a joint inventor or another who

obtained the subject matter disclosed directly or

indirectly from the inventor or a joint inventor . . . .

Note that under traditional principles, these secret disclosures

become prior art as of their filing date – but only if they are later

published as patent applications or issued patents, i.e., a nunc pro

tunc effect. The point is, they are defined as “disclosures” as of

their filing date, despite being completely secret at that time. This

provision thus carries forward a category of backdated prior art

mandated in § 102(e) of the 1952 Act, which was itself a codification

of this Court’s analysis and holding in Alexander Milburn Co. v.

Davis-Bournonville Co., 270 U.S. 390 (1926).

6

in front of the word “disclosed” in the third-party

grace period of AIA § 102(b)(1)(B) becomes completely

redundant. This conflicts with the well-known canon that

all words in a statute are presumed to have meaning, and

interpretations that render a word redundant are to be

disfavored. United States v. Alaska, 521 U.S. 1, 59 (1997)

(“The Court will avoid an interpretation of a statute that

‘renders some words altogether redundant.’” (quoting

Gustafson v. Alloyd Co., 513 U.S. 561, 574 (1995)); Freytag

v. Commissioner, 501 U.S. 868, 877 (1991) (“Statutory

interpretations that “render superfluous other provisions

in the same enactment” are strongly disfavored.”).

If disclosure is already equivalent to public disclosure,

the third party prior art covered in AIA § 102(b)(1)(B)

could have been handled much more easily by appending

one sentence to AIA § 102(b)(1)(A): After the current text

of (b)(1)(A), Congress could have said simply “An inventor’s

disclosure also eliminates prior art status for subject

matter disclosed after the inventor’s disclosure.” Instead,

it provided a completely separate rule for third party

disclosures. When we understand “public disclosure” as a

subset of prior art “disclosures,” this makes sense. For an

inventor to remove third-party events from the prior art

requires something more than a simple prior disclosure:

it requires a public disclosure. The “super” grace period

of § 102(b)(1)(B) (i.e., eliminating third party prior art) is

“earned” by an act that goes beyond mere prior disclosure

by the inventor: it requires a public disclosure. A public

disclosure makes information readily available to the

public, as opposed to some types of disclosures which do

not. The greater benefit of removing third party prior art

(as opposed to inventor-own prior art) is deserved only

when the inventor makes a greater contribution: a public

(more readily accessible) disclosure.

7

To summarize: There is no escaping the fact that

the district court opinion in the Helsinn case simply

reads the word “public” right out of the statute. In doing

so, it renders the language and structure of section 102

nonsensical. That cannot be the right interpretation.

II. The Legislative History Does Not Support a New

“Publicness” Requirement

The history of the drafting of the AIA suggests that

it did not intend to narrow the universe of prior art to

exclude commercial uses and sales that were not disclosed

to the public. The original bill introduced in Congress in

2005 would have eliminated the categories of public use

and on sale altogether, defining prior art as only things

“patented, described in a printed publication, or otherwise

publicly known.” H.R. 2795, 109th Cong. § 3 (2005). Senator

Kyl expressly noted that the purpose of dropping public

use and on sale in his bill was to “eliminat[e] confidential

sales and other secret activities as grounds for invalidity.”3

But that language was not the language Congress

adopted. During the course of six years of Congressional

debate, Congress added the terms “public use” and “on

sale” back into the definition of prior art. Indeed, Senator

Kyl and two others objected to adding that language

because they said it would add secret uses back to the

definition of prior art.4 To limit those terms only to uses

3. 154 C ong . R ec . 22,631 (2008) (statement of Sen. Jon

Kyl). That statement was in reference to a 2008 Senate bill that

went back to the original 2005 House language, but which was

ultimately not adopted.

4. See S. Rep. No. 111-18, at 60 (2009) (supporting removing

language from the Patent Reform Act of 2009 relating to patentforfeiture provisions “that apply only to non-public prior art”).

8

and sales that were publicly known would render that

decision a nullity—the statute would have precisely the

same effect as if the terms “public use” and “on sale” were

excluded altogether. An interpretation of a statute that

renders a portion of it a nullity is strongly disfavored. 5

That is particularly true when the terms were specifically

added to the bill during the legislative process.

Against the considerable weight of this statutory

interpretation, those who claim the AIA changed the

settled meaning of “on sale” and “public use” offer only a

relatively weak form of legislative history—the statements

of individual Senators. The basis of the argument is a

“colloquy” on the floor of the Senate the day after the

Senate had passed the AIA, in which Senator Leahy

expressed his view to Senator Hatch that “subsection

102(a) was drafted in part to do away with precedent under

current law that private offers for sale or private uses or

secret processes practiced in the United States . . . may

be deemed patent-defeating prior art.”6 Senator Kyl made

similar statements about his interpretation of the statute

the day before.7 This prepackaged “conversation” enabled

certain members of Congress to express their view that

the established case law should be overruled. But the floor

statement of two members of Congress articulating their

5. TRW Inc. v. Andrews, 534 U.S. 19, 31 (2001).

6. 157 Cong. Rec. 3415 (2011) (statement of Sen. Patrick

Leahy). Senator Hatch did not respond to this point, instead

turning to different issues. Id. at 3415–16. Hal Wegner has called

this “faux legislative history” because it was created after the fact

to explain a bill that had already passed. H arold C. Wegner, The

2011 Patent Law: Law and Practice 138 (4th ed. 2011).

7. 157 Cong. Rec. 3423–24 (2011) (statement of Sen. Jon Kyl).

9

personal intent, unexpressed in the statute, to overrule

existing law should not change settled law. Whatever

the merits of legislative history more generally, the

statements of individual members of Congress on the

floor are particularly weak legislative history because

there is no reason to think that they speak for anyone

but themselves. Mims v. Arrow Fin. Servs., LLC, 132

S. Ct. 740, 752 (2012) (“[T]he views of a single legislator,

even a bill’s sponsor, are not controlling”); Barnhart

v. Sigmon Coal Co., 534 U.S. 438, 457 (2002) (“”Floor

statements from two Senators cannot amend the clear and

unambiguous language of a statute.”); Patriotic Veterans,

Inc. v. Indiana, 736 F.3d 1041, 1053 (7th Cir. 2013)

(“[T]he comments of individual senators do not necessarily

reflect Congress’s intent in enacting any particular piece

of legislation.”); Wis. Educ. Ass’n Council v. Walker, 705

F.3d 640, 652 (7th Cir. 2013) (stating that a single comment

“reveals little of the intent of the legislature as a whole”).

That is particularly true here because other members of

Congress who supported the AIA, notably Representative

Zoe Lofgren, publicly took a different view. 8

A somewhat stronger form of legislative history lies

in the official reports written by the Committee that

8. 157 Cong. Rec. H4424 (daily ed. June 22, 2011) (statement

of Rep. Zoe Lofgren). Representative Lofgren sought to submit

an amendment to H.R. 1249 on the floor of the House to clarify

that all existing categories of prior art were subsumed in the

term “disclosure,” but the Rules Committee would not allow the

amendment to be presented, so there was no opportunity for

Congress to discuss or vote on the question. H.R. 1249—America

Invents Act, House of Representatives Committee on Rules,

http://rules.house.gov/bill/112/hr-1249, archived at http://perma.

cc/W5S-FTRW.

10

advanced the legislation to the floor.9 Those reports, unlike

a colloquy, at least purport to speak for the Committee as a

whole. Notably, the House Report accompanying the 2007

bill—the one that reintroduced the “public use” and “on

sale” language—expresses an intent to adopt the “public

use” and “on sale” language “primarily because of how the

terms ‘in public use’ and ‘on sale’ have been interpreted

by the courts.” H.R. Rep. No. 110-314, at 57 (2007). That—

coupled with the fact that the bill was changed to add those

terms over the objections of the Senators who wanted to

overrule Metallizing—suggests that the best reading of

that history is that Congress did not deliberately throw

out the definitions of “public use” and “on sale” as they

have existed for decades, even if a few Senators wished

it were otherwise. See Mark A. Lemley, Does Public Use

Mean the Same Thing It Did Last Year?, 93 Tex. L. Rev.

1119, 1129-30 (2014) (reaching this conclusion); Daniel

Taskalos, Metallizing Engineering’s Forfeiture Doctrine

After the America Invents Act, 16 Stan. Tech. L. Rev. 657,

685–93 (2013) (same).

9. Courts are generally hesitant about looking at the

legislative history of a bill from a prior Congress. But here there

is a more compelling case for looking at it because the only report

for the enacted AIA states “the bill is a 6-year work in progress”

and cites hearings from 2005 to 2010. H.R. Rep. No. 112-98, at 57

(2011). That is particularly true where, as here, the final statutory

language was settled on in the 2007 term and did not change

thereafter. Compare H.R. 1908, 110th Cong. (as introduced in

House of Representatives, Apr. 18, 2007), with 35 U.S.C. § 102(a)

(1) (2012).

11

III. The Addition of “Otherwise Available to the Public”

Should Not Change This Result

A.

Petitioner’s Approach Would Radically Rewrite

the Law of Prior Art

Petitioner’s reading of AIA § 102(a) will cause all

manner of mischief. As noted above, it eliminates the

disclosure/public disclosure distinction that is so central

to AIA § 102(b)(1). It also attributes a quite radical intent

and effect to the new prior art provision in the AIA: it

would sweep away scores of cases, accumulated over two

centuries, defining in great detail each of the specific

categories of prior art listed in AIA § 102(a). Opinions by

giants in the patent field, from Joseph Story to Learned

Hand to Giles Rich – gone, by virtue of one added word

in the new statute. With no legislative hearings on this

radical move, despite Congress’s decision to reenact

the very language that has been in the Patent Act for a

century without alteration, without even any legislative

history describing why the definition of prior art is being

changed so radically, we are to assume that Congress

just decided on a major sea change in this very old and

very much relied-upon body of law, and implemented it by

reenacting the very language that gave rise to that body

of law? That seems highly unlikely.

In a vacuum, Petitioner’s reading of “or otherwise

available to the public” is plausible. But to see why it is

so disruptive, it is helpful to lay out the details of this

interpretation. Under the district court’s reading, the

statute as written is taken to mean, in effect:

12

(1) the claimed invention was [a] patented [in a

manner available to the public], [b] described

in a printed publication [in a manner available

to the public] , or [c] in public use [in a manner

available to the public], [d] on sale [in a manner

available to the public], or [e] otherwise available

to the public. . . .

35 USC § 102(a)(1) (with insertions and annotations).

How much change would this reading work in existing

caselaw? We consider this by prior art reference types,

annotated [a] through [e]. Patents and printed publications

([a] and [b]) would not change much if at all. A patent is, by

its nature, open to the public; the word “patent” derives

from the Latin patere meaning “open or lying open.”

And under a long line of cases, a “printed publication”

is defined as a reference that is accessible to the public.

In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004)

(“[T]he key inquiry is whether or not a reference has been

made ‘publicly accessible.’”). Perhaps the advent of the

new statute would cause courts to revisit “borderline”

cases, such as In re Hall, 781 F.2d 897 (Fed. Cir. 1986), in

which a single copy of a graduate thesis in one library in

Germany was ruled a “printed publication.” But in general

it is quite plausible that the law under the 1952 Act would

for the most part carry forward cleanly under the district

court’s reading of AIA § 102(a).

Not so for prior art references [c] and [d]: ‘public use’

and ‘on sale’ prior art. The district court reading of AIA

§ 102(a) would result in the overturning of a huge body of

case law for both types of references. In particular, the

AIA would be found to have impliedly overruled cases in

13

three major areas: (1) “noninforming public use” cases,

where an invention is used in public but in a way that is not

ascertainable by (and hence arguably not “available to”)

the public; (2) “output of a patented machine or process”

cases, such as Metallizing Engineering; and (3) secret,

confidential, and nonpublic sales transactions, which under

the on sale cases cover the vast majority of on sale events.

In each of these cases, notwithstanding the suggestion

of the United States to the contrary, the law has always

treated “secret” sales and uses as prior art.10

10. It might be tempting to conclude that the word “disclosure”

in AIA § 102(b) implies a degree of widespread access, but this is

not correct. A disclosure can be limited to a very few people yet

still be a disclosure. We know this, for example, because of the

widespread use of “nondisclosure agreements” in trade secret

law, which prohibit unauthorized transfers of information to third

parties no matter how secret or limited. See generally Robert P.

Merges, Priority and Novelty Under the AIA, 27 Berkeley Tech.

L.J. 1023, 1036 (2012) (“There is room . . . for the idea of a ‘secret

disclosure’—a disclosure that goes beyond absolute nondisclosure

but not nearly all the way to wide-open and free dissemination.”).

Indeed, the term “disclosure” has long been understood by

patent lawyers, Congress, and the courts as synonymous with

“prior art references.” Section 103 of the 1952 Patent Act said

that “[a] patent may not be obtained, though the invention is not

identically disclosed or described as set forth in section 102 of

this title . . .” 35 U.S.C. §103(a) (2000). That statute uses the term

“disclosed” to refer to everything that was prior art under the

public use and on sale prongs in the 1952 Act, including non-public

art. Court opinions similarly use the term “disclosure” expansively

to refer to all prior art. Thus, in OddzOn Products v. Just Toys, the

court addressed whether a § 102(f) confidential disclosure could

also be used as prior art under § 103. 122 F.3d 1396 (Fed. Cir.

1997). OddzOn Products argued that “because these disclosures

are not known to the public, they do not possess the usual hallmark

14

There are many noninforming public use cases. The

classic is Egbert v. Lippmann, 104 U.S. 333 (1881). The

inventor’s corset stay, worn inside his fiancee’s wellcovered corset (it was 1881; pre-Lady Gaga) was used

without any express restriction for over 10 years – a

public use, according to the Court. Modern cases such as

Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996)

(involving the unrestricted use of inboard-outboard boat

engines containing an unobservable internal engine seal)

follow Egbert. All these cases are arguably swept away

by the district court’s interpretation. It is impossible to

say how many cases would be eliminated, though the

main holding of Egbert has, according to Westlaw, been

cited 45 times for the proposition that it was a public use.

of prior art, which is that they provide actual or constructive

public knowledge.” Id. at 1401. This Court rejected that argument,

concluding that derivation under old (pre-AIA) section § 102(f)

was prior art that could be used for an obviousness inquiry. Id. at

1401-02. Notably, both the court and the party arguing against

prior art status for secret information used the term “disclosures”

to refer to that secret prior art. That usage by both courts and

litigants is consistent with the idea that “disclosures” in patent

law has traditionally meant “anything that qualifies as a prior art

reference,” not a particular level of publicness. Other cases use the

term consistently. See, e.g., Hazeltine Research, Inc. v. Brenner,

382 U.S. 252, 253, 256 (1965) (finding a filed patent application to

be prior art for § 103 purposes even though “its disclosures were

secret and not known to the public”). Thus, in Conmar Prods. Corp.

v. Universal Slide Fastener Co., 172 F.2d 150 (2d Cir. 1949), Judge

Hand referred to a putative piece of prior art as “Poux’s disclosure”

even though it was not in fact public as of the priority date. Id.

at 152–53. Similarly, White Cap Co. v. Owens-Ill. Glass Co., 203

F.2d 694 (6th Cir. 1953), speaks of a rejected patent application

that never became public, and therefore did not qualify as prior

art, as the “Armstrong disclosure.” Id. at 696.

15

The upshot is the same regardless: a well-settled rule of

law, established for over 125 years, would be swept away.

Until the contours of the new “[c] public use [in a manner

available to the public]” type of prior art are established,

uncertainty would reign.

A second category of public use cases would be wiped

away by the district court holding: those where the output

of a patented machine is used publicly. The classic here is

Metallizing Engineering Co. v. Kenyon Bearing & Auto

Parts Co., 153 F.2d 516 (2d Cir. 1946). In Metallizing

Engineering, Judge Learned Hand identified the crucial

policy behind a strict reading of the public use bar:

“[I]f [an inventor] goes beyond that period of probation,

he forfeits his right regardless of how little the public may

have learned about the invention . . . .” Id., at 520. Again,

it is difficult to say with precision how much precedent

Petitioner’s approach erases; but the main holding in

Metallizing has been cited in 30 cases and explicitly

adopted in numerous patent cases. See, e.g., Kinzebaw

v. Deere & Co., 741 F.2d 383, 390 (Fed. Cir. 1984); W.L.

Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.

Cir. 1983); D.L. Auld Co. v. Chroma Graphics Corp., 714

F.2d 1144, 1147 (Fed. Cir. 1983); see also Moore v. United

States, 194 U.S.P.Q. 423, 428, 1977 WL 22793, at *5–6 (Ct.

Cl. 1977) (endorsing Metallizing); 2 Donald S. Chisum,

Chisum on Patents § 6.02[5][b], at 6–61 (2014) (“[I]t is

now well established that commercial exploitation by the

inventor of a machine or process constitutes a public use

even though the machine or process is held secret.”).

A final category of cases the district court sweeps

away are “on sale” cases where the sale or offer is secret,

confidential or non-public. Because public availability has

16

never been a requirement in on sale cases, it is difficult to

say with precision how many cases are affected. It is quite

clear, however, that the confidential nature of a sale under

the 1952 Act has always been irrelevant in determining

whether the on sale bar applies. E.g., Pfaff v. Wells Elec.,

Inc., 525 U.S. 55 (1998) (nowhere mentioning whether the

purchase order that constituted the on sale event was ever

made public; presumably it was not); Special Devices, Inc.

v. OEA, Inc., 270 F.3d 1353, 1357 (Fed. Cir. 2002) (“the

on-sale bar would apply even if a patentee’s commercial

activities took place in secret.”); Buildex Inc. v. Kason

Indus., Inc., 849 F.2d 1461, 1464 (Fed. Cir. 1988) (holding

that a firm offer sent to prospective purchaser was an “on

sale” event, despite the fact that the offer was marked

“confidential”). The district court here explicitly required

that a sale be public to be prior art, not only ignoring that

history but ignoring the plain language of the term “on

sale” itself, which requires no such publication.

In the cases under [c] and [d], public use and on sale

prior art, the lack of any “publicness” requirement under

the 1952 Act makes sense in light of the original policy

rationale for the statutory bars. Going all the way back

to the foundational case of Pennock v. Dialogue, 27 U.S.

(2 Pet.) 1 (1829) (Story, J.), the rationale for the statutory

bars has been to prevent the extension of the patent

monopoly. Indeed, in the Pennock case itself, Justice

Story specifically mentioned the lack of comprehensive

public disclosure during the pre-filing exploitation of an

invention:

If an inventor should be permitted to hold back

from the knowledge of the public the secrets

of his invention; if he should, for a long period

17

of years, retain the monopoly, and make and

sell his invention publicly; and thus gather the

whole profits of it, relying upon his superior

skill and knowledge of the structure; and then,

and then only, when the danger of competition

should force him to procure the exclusive right,

he should be allowed to take out a patent, and

thus exclude the public from any further use,

than what should be derived under it, during his

fourteen years; it would materially retard the

progress of science and the useful arts; and give

a premium to those who should be least prompt

to communicate their discoveries.

27 U.S. at 10. Requiring that sales be public to be prior

art would permit just the sort of mischief Pennock was

intended to prevent – patent owners who commercialize

their inventions for years without risk of losing the ability

to patent the technology years or even decades later. The

government’s position would be even worse; so long as the

public as a whole couldn’t obtain the products, companies

that sold specialized products to restricted audiences

could do so indefinitely without giving up their right to

file a patent. That is the opposite of what the statutory

bars were intended to do.

Further, were this Court to revisit the public aspect

of “on sale” despite the reenactment of that term in the

AIA, who is to say other courts would not also revisit

the detailed case law on what constitutes an offer for

sale11 or the rule that the on sale bar is triggered when

11. See, e.g., Gemmy Indus. Corp. v. Chrisha Creations Ltd.,

452 F.3d 1353, 1359–60 (Fed. Cir. 2006) (holding that statement

18

the invention is ready for patenting, even if it hasn’t yet

been built?12 None of those rules flows inexorably from

the meaning of the words “on sale,” and if the “on sale”

of the AIA is different than the “on sale” of the 1952 Act,

all those interpretations are open to question. So too are

the obviousness cases that depend on these categories of

prior art.

Nor does the uncertainty end there. Section 102 is

full of terms that have taken on a judicial gloss that alters

what the terms might mean to the untutored. A “printed

publication” does not by its terms include a website or a

PowerPoint presentation, but courts have interpreted both

to fit within the meaning of the term.13 If reenacting old

statutory language is an invitation to revisit the meaning

of that language, we will lose all the benefit of more than a

century of case law interpreting those terms. We will have

to start over, with no guarantee that the settled meaning

by patentee’s president did not establish date of first sale for

purposes of on sale bar); In re Kollar, 286 F.3d 1326, 1333 (Fed.

Cir. 2002) (holding that license agreement was not a “sale”); Group

One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir.

2001) (holding that “[o]nly an offer which rises to the level of a

commercial offer for sale . . . constitutes an offer for sale under”

the on sale bar).

12. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67–68 (1998).

13. E.g., Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364–

65 (Fed. Cir. 2014) (holding that unindexed Usenet newsgroup

posting is a printed publication); Voter Verified, Inc. v. Premier

Election Solutions, Inc., 698 F.3d 1374, 1379–80 (Fed. Cir. 2012)

(holding that unindexed web page is a printed publication); In re

Klopfenstein, 380 F.3d 1345, 1352 (Fed. Cir. 2004) (holding that

a PowerPoint presentation and posters presented temporarily at

a conference are a printed publication).

19

of these old terms will carry over into the new statute.

And because it will be years before patents issue and are

regularly litigated under the AIA, it will be a very long

time before we can know for sure whether the scope of

prior art is the same as it was before the AIA.

The problems don’t even end there. The definition

of prior art includes not only terms like “public use”

and “printed publication” but also many judiciallycreated doctrines that refine the scope of prior art. The

inherency doctrine, for example, like the Metallizing

rule, is not articulated expressly in either the old or new

statute. Tilghman v. Proctor, 102 U.S. 707 (1880). If the

reenactment of the term “public use” opens the door to

revisiting Metallizing, it also opens the door to revisiting

inherent prior art, which by definition isn’t “available to

the public.” The same is true of the experimental use

exception to the on sale and public use bars. That exception

doesn’t exist in the statute; it was created by the Court

in the nineteenth century. Elizabeth v. Pavement Co., 97

U.S. 126, 137 (1877). But if the touchstone for the new

meanings of public use and on sale is public availability,

there is no reason to think those new terms should include

an unarticulated exception for uses and sales that are

public but nonetheless experimental.14 Similarly, the rule

that prior art must be enabling exists nowhere in the

statute;15 courts would be free to revisit that requirement

and conclude that a public description of the invention was

prior art whether or not it was enabling, so long as the

14. For a discussion of whether and under what circumstances

experimental use survives the AIA, see Mark A. Lemley, Ready

for Patenting, 96 B.U. L. Rev. 1171 (2016).

15. In re Hafner, 410 F.2d 1403, 1405 (C.C.P.A. 1969).

20

publication was available to the public. And litigants might

also question the doctrine of double patenting,16 which is

similarly not articulated anywhere in § 102.

Patent law would be much better served by leaving

existing precedent interpreting unchanged statutory

terms in place. The AIA creates enough uncertainty with a

variety of new language. Concluding, as the district court

did here, that we must revisit all our old decisions even

where Congress chose to reenact old language would doom

us all to decades of uncertainty as to the scope of prior art.

B. So What Does “Otherwise Available to the

Public” Mean?

It is most important to reverse the holding that

“otherwise available to the public” implies a new publicness

requirement for all categories of prior art. But this leaves

the question of the proper interpretation of this phrase.

The best understanding is that it is a residual category

meant to capture all publicly accessible prior art that

does not fit into one of the other enumerated categories.

For example, this residual category would cover a future

technology which permits widespread public access but

which may not be a “publication” or public “use.” It might

cover a situation where someone makes available a digital

file that, when downloaded, prompts a 3-D printer to

print out a certain design. The file might not itself be a

“publication”; and it may not be “used” to print a product

16. In re Kaplan, 789 F.2d 1574, 1578–79 (Fed. Cir. 1986); In

re Vogel, 422 F.2d 438, 441–42 (C.C.P.A. 1970).

21

right away. But mere public availability would make it

prior art as of the date it is first made available.17

This reading is consistent with Judge O’Malley’s

concurrence below. Terminal limiting clauses or phrases

ordinarily should be read to modify only the noun or

phrase that immediately precedes them. See Barnhart

v. Thomas, 540 U.S. 20, 26 (2003). “This is especially

true where, as here, the phrase at issue is separated

from the preceding phrases with a comma, followed

by use of the word “or,” implying that what follows the

comma is something different from and independent of

the preceding concepts. This doctrine implies that ‘to the

public’ limits only ‘otherwise available.’ In other words,

“otherwise available to the public” is a catchall provision

that encompasses means by which the claimed invention

can be disclosed to the public that are not otherwise

accounted for in § 102(a).” Helsinn v. Teva, __ F.Appx.

__ (Fed. Cir. 2018) (O’Malley, J., concurring in denial of

en banc rehearing).

In any event, even if it is not completely clear what

the residual category covers, it is imperative not to read

a new “publicness” element into preexisting prior art

categories. To do so would be wildly out of step with the

tradition of continuity in patent law and would cause

17. Notably, cases under the 1952 Act already speak of prior

art as being “reasonably accessible to the public.” Hall, supra. But

that is a term of art that does not exclude from the definition art

either nominally accessible to the public but practically unlikely to

be found or art that is the basis of internal commercial use for more

than a year. In that context, adopting the language “accessible to

the public” would seem to reflect Congressional intent to maintain

that definition, not contradict it.

22

extreme uncertainty in the world of patent law. It is

unnecessary and unwise, in light of the overall structure

of AIA § 102. Given that the district court’s reading of

the phrase “or otherwise available to the public” is not

the only plausible one, and given that the district court

chose the interpretation that is at odds with the rest of the

statute, the legislative history, and principles of statutory

interpretation, as well having far more disruptive and

radical effects, the best conclusion is that “public use” and

“on sale” mean the same things they have always meant.

CONCLUSION

The Federal Circuit’s interpretation of “on sale”

should be affirmed. The term should be construed to

have the same meaning it had in the 1952 Patent Act.

The language, structure and logic of AIA § 102 dictate

this result, and it would preserve intact case law (and

expectations based on it) developed over a very long period

of time.

Respectfully submitted,

Mark A. Lemley

Counsel of Record

A dditional signatories are

listed in A ppendix A

Stanford Law School

559 Nathan Abbott Way

Stanford, California 94305

(650) 723-4605

mlemley@law.stanford.edu

Counsel for Amici Curiae

1a

Appendix

aPPendiX — list

of siGnatories1

Professor John r. allison1

university of texas-austin mccombs school

of Business

Professor clark asay

BYu school of law

Professor margo Bagley

emory law school

Professor stephanie Bair

BYu school of law

Professor ann Bartow

university of New Hampshire school of law

Professor Jeremy Bock

tulane university law school

Professor Dan l. Burk

university of california irvine law school

Professor michael a. carrier

rutgers law school

Professor tun-Jen chiang

George mason university antonin scalia law school

1. the undersigned sign in their individual capacity.

Institutional names provided for affiliation purposes only.

2a

Appendix

Professor colleen v. chien

santa clara university school of law

Professor andrew chin

university of North carolina college of law

Professor ralph D. clifford

university of massachusetts school of law

Professor thomas cotter

university of minnesota school of law

Professor lisa a. Dolak

syracuse university law school

Professor rochelle Dreyfuss

NYu school of law

Professor samuel F. ernst

Golden Gate university law school

Professor William Gallagher

Golden Gate university law school

Professor shubha Ghosh

syracuse university law school

Professor Yaniv Heled

Georgia state university college of law

Professor camilla a. Hrdy

university of akron school of law

3a

Appendix

Professor Jay P. Kesan

university of illinois college of law

Professor amy landers

Drexel university thomas r. Kline school of law

Professor Peter lee

university of california-Davis school of law

Professor Yvette Joy liebesman

st. louis university school of law

Professor lee ann Wheelis lockridge

louisiana state university law center

Professor Brian J. love

santa clara university school of law

Professor Glynn s. lunney, Jr.

texas a&m university school of law

Professor Jonathan masur

university of chicago law school

Professor stephen mcJohn

suffolk university law school

Professor mark P. mcKenna

Notre Dame law school

Professor robert P. merges

Berkeley law school

4a

Appendix

Professor Joseph scott miller

university of Georgia school of law

Professor michael s. mireles

University of the Pacific McGeorge School of Law

Professor susan Barbieri montgomery

Northeastern university school of law

Professor craig Nard

case Western reserve school of law

Professor tyler t. Ochoa

santa clara university school of law

Professor michael risch

villanova law school

Professor sharon sandeen

mitchell Hamline school of law

Professor Joshua sarnoff

DePaul university college of law

Professor Jason schultz

NYu school of law

Professor ted sichelman

university of san Diego school of law

Professor Brenda simon

thomas Jefferson law school

5a

Appendix

Professor Katherine J. strandburg

NYu school of law

Professor r. Polk Wagner

university of Pennsylvania law school