# Amicus Curiae Brief — Helsinn Healtcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 358 (2018) (No. 17-1229)

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2018

## Text

No. 17-1229

Supreme Court of the United States

HELSINN HEALTHCARE S.A.,

Petiti

v.

TEVA PHARMACEUTICALS USA INC., TEVA
PHARMACEUTICAL INDUSTRIES, LTD.

Respondents.

On Petrrion ror A Warr or CERTIORARI TO THE UNrTED
Srates Court or APPEALS FOR THE FepERAL Cirncurr

BRIEF OF AMICUS CURIAE THE
NAPLES ROUNDTABLE IN SUPPORT

OF PETITIONER
Anprew S. BaLucn Marruew J. Dowp
Sarra BaLtuca LLP Counsel of Record

100 M Street SE, Suite 600 Dowp PLLC

Washington, D.C. 20003 1717 Pennsylvania Avenue NW
(847) 863-1645 Suite 1025

Washington, D.C. 20006
(202) 573-3853

mjdowd@dowdplic.com
Counsel for Amicus Curiae

April 2, 2018
= 6
COUNSEL PRESS
(800) 274-3321 + (B00) 350-6859

TABLE OF CONTENTS
Page
GED oc cescccococcocscccosesse i
TABLE OF CITED AUTHORITIES .............. iii
INTEREST OF AMICUS CURIAE ......... 2.565: 1
REASONS FOR GRANTING THE PETITION...... 1
I. The Correct Statutory Interpretation Must
Consider The Legislative Purpose And
The “Sense Of Congress” Provisions ........ . . 3
Il. The Federal Circuit’s Ruling Incorrectly
Overlooked The Explicit Legislative
Purpose Of The America Invents Act ......... x
A. Abrogating Non-Disclosing
Sales and Uses as Prior Art is
Consistent with Congress’s Stated
“Harmonization” Goal .................- i)
B Bee ccccccccccsccsccocsscveses 11
BR Geibosccccccscccsesesesccecosens 12
3. Republic of Korea.................. 15
O, Ge ccdéccccccsccossescccesvssese 17

i

ua

Table of Contents

B. Abrogating Non-Disclosing Sales and
Uses as Prior Art is Consistent with

Congress’s Stated Goal of Achieving
Greater Certainty Regarding the

200

TABLE OF CITED AUTHORITIES

Cases
Accardi v. Pennsylvania Railroad Co.,

383 U.S. PPPPTTTTITT LITT

Burrage v. United States,

134 S. Ct. 881 (2014)... . 6. eee eee eee eees

Cameron Septic Tank Co. v. Knoxville,

Be CD BP Ge cc cccccccccccccccccccccecs

Deal v. United States,

508 U.S. 129 (1903). .... 2... cece cece ccceees

Eli Lilly & Co. v. Medtronic, Inc.,

496 U.S. 661 (1990)... 2... cece eee e enn

Exxon Mobil Corp. v. Allapattah Services, Inc.,

545 U.S. 546 (2005) ... 2... eee cee eee nee

Gibbons v. Ogden,

22 U.S. (9 Wheat.) 1 (1824) ...........6-0005-

Hanson v. Espy,

8 F.3d 469 (7th Cir. 1993). ..... 2... ... 66 eee

w

Cited Authorities

Mastro Plastics Corp. v. NLRB,
SED ULE, eR ec ccc ccccccccccccccccccccccces

Monahan v. Dorchester Counseling Center, Inc.,
961 F.2d 987 (Ist. Cir. 1992) ... 2.6... eee e eee eees

National Cable Television Association, Inc. v.
United States,
ss and ds nn eos ogeenneenenss
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,
eT
Richards v. United States,
Ee

State Highway Commission v. Volpe,
479 F.2d 1099 (8th Cir. 1973)... 2... ee cece eee

Sturgeon v. Frost,
196 &. Ct. 1061 (BOIG)... wee cree cccccccccscces

Utility Air Regulatory Group v. EPA,

184 S. Ct. 2AZT (BOE)... 0. eee e ec ee een eenee
United States v. Ellis,

714 F.2d 953 (9th Cir. 1983)... . 2... ee cee eens

Vv

Cited Authorities
Page

Yang v. California Department of Social

Services,

183 F.3d 963 (9th Cir. 1999) ............22-eeeees 7
U.S. STATUTES
PU I cece ctcccccccccvcesscccccocsesed 5
ee Es cc wccnccccccccccenccccceccsend 5
Pe Es 66 cc cbcccdcesccctccceccoceesd 5
BD BE Bs cccccccccccccscccccccecescesees 5
SP ly So ccccccdcscecccccccsscccecéceceed 9
NS. Sb ben deceduvheeusiesdccssen passim
See oi cecccccccnvenccsscccecccoceeoss 13
pe obo ectwccccsneddcsesccecscsccoses 13
Leahy-Smith America Invents Act of 2011,

Pub. L. No. 112-29, 125 Stat. 284........... passim
FOREIGN STATUTES AND RULES
European Patent Convention Art. 54(2)............. 11

European Patent Office, Guidelines for
Examination in the EPO (Nov. 2017)............. 12

vt

Cited Authorities

Japanese Patent Office, Examination Guidelines
for Patent and Utility Model in Japan (2015) . . .

Korean Intellectual Property Office, Patent
Examination Guidelines (July 2013) ..........

Korean Intellectual Property Office, Understanding
the Patent Act of the Republic of Korea ..... . .

Patent Act (Act No. 121 of April 13, 1959, as
amended up to Act No. 36 of May 14, 2014),

art. 29(1) (1959) (Japan).............-..0000-

Patent Act (Act No. 950, as amended up to Act.
No. 14112), art. 29(1) (2016) (S. Kor.)...........

Patent Law of the People’s Republic of
SE MUM bcvcccecaseccosesecdecccees

Patent Law of the People’s Republic of
Se SD So cécececécsccctacacseccese

State Intellectual Property Office of the
People’s Republic of China, Guidelines for
Patent Examination (2010) ..................

..15

-- 12

vit

Cited Authorities

Page
OTHER SOURCES
157 Cong. Rec. 81360 (Mar. 8, 2011) ............... 22
157 Cong. Rec. $5319 Gaily ed. Sept. 6, 2011)........ 21
1A Norman Singer & J.D. Shambie Singer, Statutes
and Statutory Construction (7th ed. 2008) ........ 5
Antonin Scalia & Bryan A. Garner, Reading Law:
he Interpretation of Legal Texts (2012)............ 4
Jay Erstling & Ryan Strom, Korea’s Patent Policy
and Its Impact on Economic Development:
A Model for Emerging Countries?,
11 San Diego Int’! L.J. 441 (2010) ............... 15

Mark Schafer, Note, How the Leahy-Smith America
Invents Act Sought To Harmonize United States
Patent Priority with the World, a Comparison
with the European Patent Convention, 12
Wash. U. Global Stud. L. Rev. 807 (2013) ......... 11

1
INTEREST OF AMICUS CURIAE'

Amicus curiae The Naples Roundtable, Inc. is a
501(c)(3) non-profit organization whose primary mission
is the exploration of ways to improve and strengthen
the U.S. patent system. To achieve this goal, the Naples
Roundtable supports the advanced study of both national
and international intellectual property law and policy.
The Naples Roundtable fosters the exchange of ideas
and viewpoints among the leading intellectual property
experts and scholars. It also organizes conferences and
other public events to promote the development and
exchange of ideas that improve and strengthen the U.S.

patent system.

More information about the Naples Roundtable
can be found on the organization’s website: http://www.
thenaplesroundtable.org. None of the Naples Roundtable,
the individuals on its Board of Directors, or its counsel
have any personal interest in the outcome of this case.

REASONS FOR GRANTING THE PETITION

The petition for certiorari establishes by itself the
reasons the petition should be granted. Amicus curiae
submits this brief to expand on two particular points that
warrant expanded attention.

1. All parties have consented to the filing of this brief in
letters on file with the Clerk of Court, and the parties were notified
of amicus curiae’s intention to file this brief at least 10 days prior
to the filing of this brief. See Sup. Ct. R. 37.2(a). No counsel for a
party has authored this brief in whole or in part, and no person
other than amici curiae, their members, and their counsel has
made a monetary contribution to the preparation or submission
of this brief. See Sup. Ct. R. 37.6.

2

First, the Federal Circuit’s approach to statutory
construction in this case illustrates the appeals court’s
failure to properly consider the explicit statutory
purpose when construing the statute. Statutory text
remains paramount, of course, but a statute’s purpose
cannot be overlooked when a court also examines other
interpretative evidence in order to construe the statute.

In certain instances, as here, Congress memorializes
the purpose of legislation by including one or more “sense
of Congress” provisions. When Congress includes such a
“sense of Congress” provision, and when that “sense of
Congress” speaks directly to the interpretative question,
then a court should consider this evidence of legislative
purpose when construing the statute. This Court and
other courts have done so in the past, recognizing that a
“sense of Congress” provision is strong evidence of the
legislative purpose of the statute.

Second, the Federal Circuit’s erroneous construction
overlooked two explicit statutory “sense of Congress”
provisions, setting forth the purpose of the statute. By
overlooking these explicit statements, the Federal Circuit
adopted an incorrect interpretation of the statute—one
that impedes the statutory objectives Congress sought to
achieve when it passed the Leahy-Smith America Invents
Act of 2011 (“ALA”), Pub. L. No. 112-29, 125 Stat. 284.

Within the AIA are two “sense of Congress”
provisions that expressly state the objectives and
policies of the legislation. Behind the first-inventor-to-
file regime, as embodied in revised 35 U.S.C. § 102, were
Congress’s expressly stated objectives of achieving both
(1) “harmonization of the United States patent system”

3

with those commonly used throughout the world and (2)
“greater certainty regarding the scope of protection”
provided by U.S. patents. AIA §§ 3(0), 3(p). Regarding
the first objective, because the vast majority of patent
applications filed outside the United States are filed
in jurisdictions where secret commercialization is not
regarded as prior art, the elimination of this category of
prior art brings the U.S. patent system in line with the rest
of the world. As for the second objective, the ALA’s creation
of greater patent certainty was intended by Congress to
occur by making it easier to determine what is or is not
prior art without resorting to expensive discovery, and fits
logically within the policy framework of a first-inventor-
to-file system. Both of these legislative objectives are
furthered by limiting the scope of prior art under § 102 to
that which makes the claimed invention itself “available to
the public.” Both objectives are thwarted, however, by the
Federal Circuit’s erroneous interpretation of that section
of the Patent Act.

I. The Correct Statutory Interpretation Must
Consider The Legislative Purpose And The “Sense
Of Congress” Provisions

Congress's “authoritative statement is the statutory
text, not the legislative history.” Exxon Mobil Corp. v.
Allapattah Servs., Inc., 545 U.S. 546, 568 (2005); see also
Hoffman Plastic Compounds, Inc. v. NLRB, 535 U.S. 137,
149-50 n.4 (2002); Park ‘N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U.S. 189, 194 (1985) (“Statutory construction must
begin with the language employed by Congress and the
assumption that the ordinary meaning of that language
accurately expresses the legislative purpose.”). For this
reason, “the words of a governing text are of paramount

4

concern, and what they convey in their context is what the
text means.” Antonin Scalia & Bryan A. Garner, Reading
Law: The Interpretation of Legal Texts 441 (2012). The
obligation of the courts is thus to interpret the statute as
written. See Burrage v. United States, 134 S. Ct. 881, 892
(2014) (“The role of this Court is to apply the statute as it
is written—even if we think some other approach might
accord with good policy.”).

Even so, a “fundamental canon of statutory
construction that the words of a statute must be read in
their context and with a view to their place in the overall
statutory scheme.” F'DA v. Brown & Williamson Tobacco
Corp., 529 U.S. 120, 133 (2000); accord Sturgeon v. Frost,
136 S. Ct. 1061, 1070 (2016). A word’s meaning exists
only in the context in which the word is used. See Deal
v. United States, 508 U.S. 129, 132 (1993) (explaining the
“fundamental principle of statutory construction (and,
indeed, of language itself)” is that “the meaning of a word
cannot be determined in isolation, but must be drawn from
the context in which it is used”).

Legislative text is not always clear. See, e.g., Utility
Air Regulatory Group v. EPA, 1348. Ct. 2427, 2441 (2014)
(noting that the Clean Air Act “is far from a chef d’oeuvre of
legislative draftsmanship”); Eli Lilly & Co. v. Medtronic,
Inc., 496 U.S. 661, 679 (1990) (“No interpretation we have
been able to imagine can transform § 271(e)(1) into an
elegant piece of statutory draftsmanship.”). When the text
is unclear or subject te multiple interpretations, courts
will and should routinely consider other evidence, such
as the legislative purpose of the statute.

5

This Court and others have regularly turned to

statutory purpose to ensure that the correct interpretation
is reached.

We believe it fundamental that a section of a
statute should not be read in isolation from the
context of the whole Act, and that in fulfilling
our responsibility in interpreting legislation,
“we must not be guided by a single sentence or
member of that sentence, but [should] look to
the provisions of the whole law, and to its object

and policy.”

Richards v. United States, 369 U.S. 1, 11 (1962) (quoting
Mastro Plastics Corp. v. NLRB, 350 U.S. 270, 285 (1956));
see also 1A Norman Singer & J.D. Shambie Singer,
Statutes and Statutory Construction § 25:3 (7th ed. 2008)
(“The statute should be construed according to its subject
matter and the purpose for which it was enacted.”).

On occasion, the objective and policy behind a statute
are readily discernible because Congress explicitly stated
as much in provisions describing the “sense of Congress.”
A “sense of Congress” provision will frequently state
what Congress wanted to accomplish with the particular
legislation. The current U.S. Code is replete with “sense of
Congress” provisions. See, e.g.,2 U.S.C. § 151 1(a); 5 U.S.C.
§ 9701(1)(1); 15 U.S.C. § 2221(1(1); 21 U.S.C. § 1961(a).

This Court and other courts have turned to and relied
on “sense of Congress” provisions when interpreting
statutes. In Accardi v. Pennsylvania Railroad Co., 383
U.S. 225 (1966), the Court addressed whether a former
employer had improperly denied World War II veterans

6

their seniority rights guaranteed by the Selective
Training and Service Act of 1940. The Court looked to
the statute’s language, noting that it “clearly manifests
a purpose and desire on the part of Congress to provide
as nearly as possible that persons called to serve their
country in the armed forces should, upon returning to
work in civilian life, resume their old employment without
any loss because of their service to their country.” /d.
at 228. This “continuing purpose of Congress,” as the
Court observed, was further established by a “sense of
Congress” provision that spoke directly to the protection
of employment rights to veterans returning to civilian
life. Id. at 229.

Courts of appeals have similarly relied on “sense
of Congress” provisions when interpreting statutes.
See Hanson v. Espy, 8 F.3d 469, 476 (7th Cir. 1993)
(relying on a “sense of Congress” provision to support
the interpretation of the Disaster Assistance Act of
1988); United States v. Ellis, 714 F.2d 953, 955-56 (9th
Cir. 1983) (relying on a “sense of Congress” provision
when interpreting the Consolidated Farm and Rural
Development Act of 1961). While a “sense of Congress”
provision may not always be controlling, it “ean be useful
in resolving ambiguities in statutory construction” and
in reinforcing the meaning of the law. State Highway
Comm'n v. Volpe, 479 F.2d 1099, 1116 (8th Cir. 1973).

Of course, a “sense of Congress” provision does not
always create legal rights. The plain text of the “sense of
” statement may use non-mandatory language,

such as the word “should.” See, e.g., Monahan v. Dorchester
Counseling Ctr., Inc., 961 F.2d 987, 994—95 (ist. Cir.
1992) (holding as non-binding a “sense of Congress” that

7

each state “should” review and revise its laws to ensure
services for mental health patients); Yang v. Cal. Dep't
of Social Servs., 183 F.3d 953, 958-61 (9th Cir. 1999)
(explaining that the “sense of Congress” that Hmong and
other Lao refugees who fought in Vietnam war “should”
be considered veterans for purposes of receiving certain
welfare benefits). Or the “sense of Congress” provision is
issued in a non-binding House or Senate Resolution.

But in other cases, such as here, the “sense of
Congress” provision is very likely the best evidence of
what the statutory text was intended to achieve. This
Court has long examined the “sense of Congress” when
understanding the purpose of legislation and construing
the terms of the legislation—even in the absence of a
formal “sense of Congress” provision. See, ¢.g., Nat'l
Cable Television Ass'n, Inc. v. United States, 415 U.S.
336, 337 (1974) (relying on a “sense of Congress” provision
in the Independent Offices Appropriation Act of 1952);
see also Cameron Septic Tank Co. v. Knoxville, 227 U.S.
39, 50 (1913) (holding that it was “certainly the sense of

” that the Treaty of Brussels of December 14,
1900 did not affect the expiration of a U.S. patent); McClurg
v. Kingsland, 42 U.S. 202, 207 (1843); Gibbons v. Ogden,
22 U.S. (9 Wheat.) 1, 218 (1824). These examples and
others confirm the objective of statutory interpretation—
understanding the meaning of the statute in the context
of the statutory scheme and legislative purpose.

In short, a “sense of Congress” provision is often a
highly probative interpretative guidepost, which a court
tasked with construing a statute should consider. Yet,
the Federal Circuit expressed no consideration of the
two “sense of Congress” sections included in the AIA.

8

The two “sense of Congress” provisions in the AIA speak
directly to the issue of Congress's intent in adopting a
first-inventor-to-file regime, as embodied in revised 35
U.S.C. § 102. As Petitioner explains, the Federal Circuit
incorrectly focused on certain floor statements instead of
the statute’s text.

This error was compounded when the Federal Circuit
overlooked the two “sense of Congress” provisions in the
AIA. The two provisions are the strongest evidence—
beyond the text of § 102(a)(1) and the
House Committee Report No. 112-98 (2011)—about what
Congress intended when it enacted the AIA. Instead
of considering the “sense of Congress” provisions, the
Federal Circuit looked to—and dismissed the value of —
certain floor statements by several members of Congress.
The court's error was to look to only these floor statements
and not consider the “sense of Congress” provisions. The
incomplete consideration of the interpretative evidence
is not a correct method of construing statutes. It leads to
a misinformed view of legislative purpose. As explained
below, in the present case, the Federal Circuit adopted a
construction of the AIA that is directly undermined by
the “sense of Congress” provisions.

II. The Federal Circuit’s Ruling Incorrectly Overlooked

The Explicit Legislative Purpose Of The America
Invents Act

In the present case, the Federal Circuit's i
of 35 U.S.C. § 102(a)(1), as enacted by the AIA, is directly
in tension with Congress's stated purpose for enacting
the AIA. The purpose of the legislation is set forth in two
“sense of Congress” provisions. In the first, Congress

9

stated its intent was to harmonize U.S. patent law with
“the patent systems commonly used in nearly all other
countries” by converting the U.S. patent system from
a first-to-invent system to a first-to-file system. In the
second provision, Congress stated its intent was to provide
“greater certainty regarding the scope of protection.”
Both provisions underscore Congress’s affirmative
decision to eliminate the category of so-called “secret
prior art,” that is, any sales and uses that do not make
the subject matter defined by a claim in a patent or an
application for patent available to the public, as the term
“claimed invention” is defined in 35 U.S.C. § 100()).

A. Abrogating Non-Disclosing Sales and Uses as
Prior Art is Consistent with Congress's Stated

“Harmonization” Goal

One purpose of the ALA was to harmonize U.S. patent
law with the patent systems of other major countries. This
purpose is expressly stated in the AIA:

SENSE OF CONGRESS. —It is the sense
of the Congress that converting the United
States patent system from “first to invent” to
a system of “first inventor to file” will improve
the United States patent system and promote
harmonization of the United States patent
system with the patent systems commonly
used in nearly all other countries

the world with whom the United States
conducts trade and thereby promote greater
international uniformity and certainty in the
procedures used for securing the exclusive
rights of inventors to their discoveries.

10

AIA § 3(p).

Because Congress enacted 35 U.S.C. § 102 with
the express intention of harmonizing U.S. law with
foreign patent systems, the Federal Circuit should have
considered what the other major patent systems in the
world require for prior art in order to determine which
interpretation of § 102 best accords with Congress’s intent
in enacting that section.

The top five national intellectual property offices are
the European Patent Office, the Japan Patent Office, the
Korean Intellectual Property Office, the State Intellectual
Property Office of the People’s Republic of China, and the
United States Patent and Trademark Office. These five
intellectual property offices collaborate as the “IP5,” which
is “a forum of the five largest intellectual property offices
in the world that was set up to improve the efficiency of the
examination process for patents worldwide.” The national
patent offices of the IP5 “handle about 80 per cent of the
world’s patent applications, and 95 per cent of all work
carried out under the Patent Cooperation Treaty (PCT).”*

Examining the foreign patent systems would have
revealed that in all major jurisdictions in the world, a sale
or use of an invention does not constitute prior art unless
the invention itself was available to the public. In none of
these jurisdictions is it sufficient that the mere fact of the
sale was public when the details of the claimed invention
were not publicly available. If the Federal Circuit’s
decision is allowed to stand, the United States will be the
outlier among the IP5, despite the AIA’s stated objective

2. See http-//www.fiveipoffices.org/about.htm!.
3. Id

11

of harmonizing this country’s patent laws with the rest of
the world. See Mark Schafer, Note, How the Leahy-Smith
America Invents Act Sought To Harmonize United States
Patent Priority with the World, a Comparison with the
European Patent Convention, 12 Wash. U. Global Stud.
L. Rev. 807 (2013).

1. Europe

Examination of patent applications in Europe is
governed by the European Patent Convention, formerly
known as Convention on the Grant of European Patents
(“EPC”). Article 54(2) of the EPC recites:

The state of the art shall be held to comprise
everything made available to the public by
means of a written or oral description, by use,
or in any other way, before the date of filing of

the European patent application.
(emphasis added).

The European Patent Office has issued examination
guidelines that further establish that non-public use or
sale of the invention does not constitute prior art. One
section of the guidelines, reproduced below, highlights the
European rule that the use of an invention must be public
in order to qualify as a bar to patenting.

7.2.2 Agreement on secrecy

The basic principle to be adopted is that subject-
matter has not been made available to the public
by use or in any other way if there is an express
or tacit agreement on secrecy which has not
been broken.

12

In order to establish whether there is a tacit
agreement, the division must consider the
particular circumstances of the case, especially
whether one or more parties had an objectively
recognisable interest in maintaining secrecy.
Important aspects in this regard are, inter
alia, the commercial relationship between the
parties (e.g. parent company and subsidiary,
good faith and trust, joint venture or ordinary
commercial transaction) and the exact object
of the purported secrecy agreement (e.g. test
specimens or parts for serial production).

A party alleging that subject-matter was not
made publicly available due to an express or

tacit agreement on secrecy must substantiate
and, if contested, prove this allegation. A party
alleging that an undisputed or proven agreement
on secrecy was broken must substantiate and,
if contested, prove this allegation.

European Patent Office, Guidelines for Examination in
the EPO, Part G I'V-7.2.2 (Nov. 2017).*

2. China

The patent laws of China similarly require public use
or sale of the invention in order for that activity to qualify
as a bar to patenting.

Article 22.1 of the Patent Law of the People’s Republic
of China establishes the patents can issue only for those

4. https://www.epo.org/law-practice/legal-texts/htm|/
guidelines/e/g iv 7 2 2.htm

13

inventions that “are novel, creative and of practical use.”°
These requirements are similar to the U.S. requirements
of novelty, nonobviousness, and utility encoded in 35 U.S.C.
§§ 102, 103, and 112, respectively. Article 22.2 defines
“novelty” to “mean|] that the invention or utility model
concerned is not an existing technology.”

Article 22.5 then states: “For the purposes of this
Law, existing technologies mean the technologies known
to the public both domestically and abroad before the
date of application.” This provision thus establishes that
an invention lacks “novelty” only if it was “known to the
public.”

The examination guidelines for patent applications
under Chinese law confirm this view. Section 2.1 of the
Chinese guidelines, titled “Prior Art,” provide:

According to Article 22.5, the prior art means
any technology known to the public before the
date of filing in China or abroad. The prior
art includes any technology which has been
disclosed in publications in China or abroad, or
has been publicly used or made known to the
public by any other means in China or abroad,
before the date of filing (or the priority date
where priority is claimed).

The prior art shall be the technical contents
that are available to the public before the date

5. An English-version of the Patent Law of the People’s
Republie of China is available on the website of the State
Intellectual Property Office of the People’s Republic of China. See
~~ "ees eee eee

14

of filing. In other words, the prior art shall be
in such a state that it is available to the public
before the date of filing and shall contain such
contents from which the public can obtain
substantial technical knowledge.

It should be noted that technical contents in
the state of secrecy are not part of the prior
art. The state of secrecy includes not only
the situation where the obligation to keep
secret arises from regulations or agreements
regarding confidences but also the situation
where the obligation to keep secret arises from
social customs or commercial practices, that is,
from implicit agreements or understandings.

or implicit understanding, rendering the
technical contents disclosed and making the
technologies available to the public, these
technologies shall form part of the prior art.

State Intellectual Property Office of the People’s Republic
of China, Guidelines for Patent Examination 171-72 (2010).*

The Chinese guidelines also explain that a

“[djisclosure by use means that by use the technical
solution is disclosed or placed in the state of being
available to the public.” /d. at 173. The disclosure must
be one through which “the relevant technical content is
placed in such a state that the public can know it if they
wish, disclosure by use can be established, and it is of

6. http-//www.sipo.gov.cn/zisqzn/sezn2010eng.pdf

15

no relevance whether the public had actually known it.”
Id. If “at an exhibition or demonstration of a product no
explanation of the technical contents thereof is provided
so that the structure and function or compositions of
the product is not known to person skilled in the art,
the exhibition or demonstration does not constitute a
disclosure by use.” /d.

3. Republic of Korea

Along the same lines, the patent laws of the Republic of
Korea, z.e., South Korea, require public disclosure in order
to rise to the level of a patent-barring event. A non-public
use or sale will not foreclose patenting of a novel invention
in South Korea. See Jay Erstling & Ryan Strom, Korea’s
Patent Policy and Its Impact on Economic Development:
A Model for Emerging Countries?, 11 San Diego int’!
L.J. 441, 450-51 (2010) (describing the Korean Patent
Act as “provid[ing] that an invention has novelty unless
it is publicly known, used, or described in a ‘distributed
publication’ or published through ‘telecommunication
means”).

Article 29 of the South Korea Patent Act sets forth
the requirements of patentability. Article 29(1).1 prohibits
patents on “[iJnventions publicly known or worked in the
Republic of Korea or in a foreign country prior to the filing
of the patent application.” Patent Act (Act No. 950, as
amended up to Act. No. 14112), art. 29(1) (2016) (S. Kor.).’

The guidelines applying South Korean patent law
expand on what is meant by “publicly known”:

7. http://www.kipo.go.kr/upload/en/download/PATENT |
ACT 2016.pdf.

16

A “publicly known” invention means an
invention the contents of which have been known
to an unspecified person without obligation of
secrecy in the Republic of Korea or a foreign
country prior to the filing of the application. The
time of filing in the “prior to the filing of the
application” refers to the exact point of time of
filing, even to the hour and minute of the filing
(if the invention is publicly known, the time is
converted into Korean time). It does not mean
the concept of the date of filling. “Unspecified
persons” refers to the general public who does
need to abide by secret observance duty.

Korean Intellectual Property Office, Patent Examination
Guidelines 208—09 (July 2013)*; see also Korean Intellectual
Property Office, Understanding the Patent Act of the
Republic of Korea 49 (2017) (“If an invention is disclosed
to a person who is obligated to keep it confidential, it is
not public knowledge.”)’.

Similarly, the Korean patent guidelines describe what
is meant by “publicly worked” and when an invention
cannot be patented because it has been “publicly worked.”

A “publicly worked” invention means an
invention which has been worked under the
conditions where the contents of the invention
are to be publicly known or can potentially
be publicly known in the Republic of Korea

8. http://www.kipo.go.kr/upload/en/download/patent |
examination guidelines 2013 07.pdf

9. https-//tinyurl.com/UnderstandingKoreaPatent Act

17

or a foreign country (Definition of “working”
refers to the Patent Act Article 2). Also, “being
public” means a situation where it is no longer
kept in secret. So, even when a small fraction of
inner part of an invention is kept in secret with
regard to working of the invention, it shall not
be considered as a publicly worked invention.

Korean Intellectual Property Office, Patent Examination
Guidelines, supra, at 209.

4. Japan

Finally, Japanese patent law applies the same
approach to public use and sale as the other IP5 countries.
Article 29(1) of the Japanese Patent Act establishes the
requirements for patentability:

An inventor of an invention that is industrially
applicable may be entitled to obtain a patent
for the said invention, except for the following
cases:

(i) inventions that were publicly known in Japan
or a foreign country prior to the filing of the
patent application;

(ii) inventions that were publicly worked in
Japan or a foreign country prior to the filing of
the patent application; or

(iii) inventions that were described in a
distributed publication, or inventions that
were made publicly available through an

Patent Act (Act No. 121 of April 13, 1959, as amended up
to Act No. 36 of May 14, 2014), art. 29(1) (1959) (Japan)."°
Japanese law uses the same phrases “publicly known” and

18

electric telecommunication line in Japan or a
foreign country prior to the filing of the patent
application.

“publicly worked” as South Korean patent law.

law

The guidelines for patent examination under Japanese
expand upon the meanings of “publicly known” and

“publicly worked”:

3.1.3 Publicly known prior art (Article 29(1)(i))

“Publicly known prior art” means prior art
which has become known to anyone as an art
without an obligation of secrecy (Note).

(Note) Prior art disclosed by a person on whom
obligation of secrecy is imposed to another
person who are not aware of its secrecy is
“publicly known prior art” irrespective of the
inventor’s or applicant’s intent to keep it secret.
Generally, an article of academic journal would
not be put in public view even if it was just
received. Therefore, prior art described in the
article is not “publicly known prior art” until
the article is published.

pdf).

10. http://www.wipo.int/edocs/lexdocs/laws/en/jp/jp198en.

19

“Publicly known prior art” often become
known in lecture, briefing session and so on
generally. In this case, the examiner specifies
the prior art on the basis of the matters
explained in the lecture, briefing session and

so on. In interpreting the explained matters,
the examiner may use the matters derived by a

person skilled in the art as a base for specifying
“publicly known prior art” by considering the

Japanese Patent Office, Examination Guidelines for
Patent and Utility Model in Japan, Part III, ch. 2, § 3, at
6 (2015)."' This guidance is similar to the guidance under
the patent laws of Europe, China, and South Korea.

B. Abrogating Non-Disclosing Sales and Uses
as Prior Art is Consistent with Congress's
Stated Goal of Achieving Greater Certainty
Regarding the Scope of Patent Protection

Another goal of the ALA was to increase certainty in
the scope of legal protection provided by issued patents.
Congress's objective was set forth in one of the two “sense
of Congress” provisions included in the AIA.

SENSE OF CONGRESS.—It is the sense
of the Congress that converting the United
“tates patent system from “first to invent” to
a system of “first inventor to file” will promote

ll. https://www.jpo.go.jp/tetuzuki e/t tokkyo e/ files
guidelines e/03 0203 e.pdf

20

the progress of science and the useful arts by
securing for limited times to inventors the
exclusive rights to their discoveries and provide
inventors with greater certainty regarding the
scope of protection provided by the grant of
exclusive rights to their discoveries.

AIA § 3(0).

With § 3(0) of the ALA, Congress sought to eliminate
“secret” prior art that has, for decades, caused problems
in the U.S. patent system. The “sense of Congress”
provision in § 3(0) embodies Congress's deliberate decision
to eliminate an entire area of contention and inquiry
regarding the scope of confidential sales and uses as prior
art. As Senator Ky! stated before passage of the AIA, this
change will have particular benefit in increasing certainty
and reducing litigation discovery costs:

Public uses and sales of an invention will remain
prior art, but only if they make the invention
available to the public. An inventor's confidential!
sale of his invention, his demonstration of
its use to a private group, or a third party's
unrestricted but private use of the invention
will no longer constitute private [sic, prior] art.
Only the sale or offer for sale of the invention to
the relevant public or its use in a way that makes
it publicly accessible will constitute prior art.

The main benefit of the ALA public availability
standard of prior art is that it is relatively
inexpensive to establish the existence of events
that make an invention available to the public.

21

Under current law, depositions and litigation
discovery are required in order to identify al!
of the inventor’s private dealings with third
parties and determine whether those dealings
constitute a secret offer for sale or third party
use that invalidates the patent under the
current law’s forfeiture doctrines. The need for
such discovery is eliminated once the definition
of “prior art” is limited to those activities that
make the [invention] accessible to the public.
This will greatly reduce the time and cost of
patent litigation and allow the courts and the

[ USPTO] to operate much more efficiently.

157 Cong. Rec. 85319, 5319-21 (daily ed. Sept. 6, 2011)
(statement of Sen. Kyl). This statement thus directly links
Congress's stated objective in AIA § 3(0) of achieving
greater certainty, with Congress's redrafting of 35 U.S.C.
§ 102(a)(1), limiting prior art to those sales and uses that
make the invention itself available and known to the public.

Notably, the above statement of Senator Kyl refers
to both categories of prior art—“offer for sale or third
party use.” 157 Cong. Rec. at S5320 (“Public uses and
sales of an invention will remain prior art, but only if they
make the invention available to the public.”). The Federal
Circuit’s opinion below, however, dismissed Senator Ky!'s
floor statements because the specific examples of judicial
decisions the senator mentioned would be abrogated upon
enactment of § 102(a)(1) were, according to the Federal
Circuit, “public use” cases, not “sale” cases. App. 38a
(“The floor statements do not identify any sale cases that
would be overturned by the amendments.” (emphasis in
original)). It seems trivial to quibble about the specific

cases cited by the senator on the Senate floor when the
statements explicitly and unambiguously referred to
both categories of prior art—“[p]ublic uses and sales.”
157 Cong. Rec. at S5320; accord 157 Cong. Rec. 81360,
$1371 (Mar. 8, 2011) (statement of Sen. Kyl) (“A contrary
construction of section 102(a)(1), which allowed private and
non-disclosing uses and sales to constitute invalidating
prior art, would be fairly disastrous for the U.S. patent
system.” (emphasis added)).

Thus, the AI A’s abrogation of non-disclosing uses and
sales as prior art in § 102(a)(1) was an intentional policy
decision, one that achieves greater certainty in the scope
of prior art and decreases litigation costs.

CONCLUSION

For the above reasons and those stated in the petition,
this Court should grant a writ of certiorari.

Respectfully submitted,

Anprew S. BaLuca Matruew J. Dowp
Surra Batuca LLP Counsel of Record
100 M Street SE, Suite 600 Dowp PLLC
Washington, D.C. 20003 1717 Pennsylvania Avenue
(847) 863-1645 NW

Suite 1025

Washington, D.C. 20006
(202) 573-3853

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0820%3A11. Public record. Not legal advice.