Case: 16-1284 Document: 59 Page: 1 Filed: 04/21/2016
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`2016-1284
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`
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`HELSINN HEALTHCARE S.A., ROCHE PALO ALTO LLC,
`Plaintiffs-Appellees,
`
`v.
`TEVA PHARMACEUTICALS USA, INC.,
`TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
`Defendants-Appellant.
`
`
`
`Appeal from the United States District Court for the District of New Jersey
`in Nos. 3:11-cv-03962-MLC-DEA,3:11-cv-05579-MLC-DEA,
`3:13-cv-05815-MLC-DEA, Judge Mary L. Cooper.
`
`BRIEF OF AMICUS CURIAE CONGRESSMAN LAMAR SMITH
`IN SUPPORT OF APPELLEES
`
`ROBERT A. ARMITAGE
`COUNSEL FOR AMICUS CURIAE
`320 Seaview Court #1811
`Marco Island, FL 34145
`(703) 801-6334
`raarmitage@aol.com
`
`APRIL 21, 2016
`
`
`
`
`
`
`
`
`
`Helsinn Healthcare Exhibit 2088
`Dr. Reddy's Laboratories, Ltd., et al. v. Helsinn Healthcare S.A.
`Trial PGR2016-00008
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`Page 1 of 43
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`Case: 16-1284 Document: 59 Page: 2 Filed: 04/21/2016
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`Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, 16-1284
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`CERTIFICATE OF INTEREST
`
`
`Counsel for the amicus curiae Congressman Lamar Smith certifies the
`following:
`
`1. The name of every party or amicus represented by me is:
`
`
`Congressman Lamar Smith
`
`2. The name of the real party in interest (if the party named in the caption is
`not the real party in interest) represented by me is:
`
`
`Congressman Lamar Smith
`
`3. All parent corporations and any publicly held companies that own 10
`percent or more of the stock of the party or amicus curiae represented by me
`are:
`
`Not Applicable
`
`4. The names of all law firms and the partners or associates that appeared for
`the party or amicus now represented by me or are expected to appear in this
`Court are:
`
`Not Applicable
`
`
`/s/ Robert A. Armitage
`Signature of counsel
`
`Robert A. Armitage
`
`
`
`-i-
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`Date: April 21, 2016
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`Page 2 of 43
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`Case: 16-1284 Document: 59 Page: 3 Filed: 04/21/2016
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`TABLE OF CONTENTS
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`CERTIFICATE OF INTEREST ........................................................... i
`TABLE OF AUTHORITIES ............................................................... iv
`INTEREST OF AMICUS..................................................................... 1
`SUMMARY OF ARGUMENT ............................................................ 1
`ARGUMENT........................................................................................ 3
`I.
`H.R. 1249 Limits 35 U.S.C. § 102(a)(1) Prior Art To
`Disclosures “Available To The Public”. ............................... 3
`
`A. “Publicly Disclosed,” “Disclosed to the
`Public,” And “Available To The Public” Are
`Each Used To Describe The “Publicness”
`Limitation On 35 U.S.C. § 102(a)(1) Prior Art. ......... 3
`
`B. The Contention That H.R. 1249’s Use Of
`“Publicly Disclosed” Implies
`35 U.S.C. § 102(a)(1) Prior Art Includes Non-
`Public Disclosures Is Based On An Incomplete
`Understanding Of H.R. 1249’s Statutory
`Framework. ................................................................. 9
`
`II.
`
`The Legislative History Of H.R. 1249 Confirms That
`35 U.S.C. § 102(a)(1) Is To Be Limited To
`Disclosures Available To The Public. ................................ 16
`
`A. The House Report on H. R. 1249, Inclusive Of
`Its Reference To A Senate Colloquy On
`35 U.S.C. § 102(a)(1), Confirms That A
`“Public Disclosure” Is Synonymous With A
`35 U.S.C. § 102(a)(1) Prior Art Disclosure. ............. 16
`
`B. The H.R. 1249 House Floor Debate Further
`Confirms Non-Public Uses And Offers For Sale
`Lie Outside the 35 U.S.C. § 102(a)(1) Prior Art
`Provisions Requiring Public Availability. ................ 19
`
`C. The IPP Brief Advances An Incomplete And
`Otherwise Deficient Analysis Of The
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`-ii-
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`Case: 16-1284 Document: 59 Page: 4 Filed: 04/21/2016
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`Legislative History That Led To The Enactment
`Of 35 U.S.C. § 102(a)(1). ......................................... 21
`
`III. Giving The Phrase “Or Otherwise Available To The
`Public” Effect As An Overarching Limitation On
`35 U.S.C. § 102(a)(1) Prior Art Represents An
`Important Patent Reform That Has No Unsettling
`Effect On The Patent Laws. ................................................ 25
`
`A. Repealing The Body Of Law Relating To
`“Forfeiture” Leaves The Terms “Public Use”
`And “On Sale” With Long-Established, Long
`Settled Meanings. ..................................................... 25
`
`B. The “Available To The Public” Limitation Was
`One Of Many Reforms To The Patent Law
`Under H.R. 1249 Undertaken To Make
`Patentability Determinations More Objective
`And Certain. .............................................................. 27
`
`C. The Lack of Any Serious Controversy Over
`The Repeal Of Old § 102(b)’s Forfeiture
`Provision Eliminated Any Need For More
`Congressional Deliberations Before Proceeding
`With H.R. 1249. ........................................................ 31
`
`CONCLUSION .................................................................................. 34
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`
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`-iii-
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`Case: 16-1284 Document: 59 Page: 5 Filed: 04/21/2016
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`TABLE OF AUTHORITIES
`
`Cases
`
`Egbert v. Lippmann, 104 U.S. 333 (1881) .................................................... 33
`
`Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co.,
`153 F.2d 516 (2d Cir. 1946) ............................................................... 34
`
`Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998) ............................................... 33
`
`W.L. Gore & Assocs. v. Garlock, 721 F.2d 1540 (Fed.Cir.1983) ................ 31
`
`Woodland Trust v. Flowertree Nursery, Inc., 148 F. 3d 1368 (Fed. Cir.
`1998) ................................................................................................... 31
`
`Statutes
`
`35 U.S.C. § 102 ...................................................................................... passim
`
`35 U.S.C. § 102(a) (2002)............................................................................... 8
`
`35 U.S.C. § 102(b) (2002) ................................................................ 30, 36, 37
`
`35 U.S.C. § 102(e) (2002)............................................................................... 8
`
`35 U.S.C. § 102(f) (2002) ............................................................................. 15
`
`35 U.S.C. § 102(g)(1) (2002) ........................................................................ 11
`
`35 U.S.C. § 103 ................................................................................. 11, 14, 15
`
`35 U.S.C. § 103 (2004) ........................................................................... 11, 15
`
`35 U.S.C. § 112(a) ........................................................................................ 12
`
`35 U.S.C. § 113 ............................................................................................. 12
`
`35 U.S.C. § 122 ............................................................................................. 12
`
`35 U.S.C. § 132 ............................................................................................. 12
`
`35 U.S.C. § 182 ............................................................................................. 12
`
`35 U.S.C. § 251 ............................................................................................. 12
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`-iv-
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`Case: 16-1284 Document: 59 Page: 6 Filed: 04/21/2016
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`35 U.S.C. § 273 ............................................................................... 2, 9, 10, 11
`
`35 U.S.C. § 273 (b)(1) (1999) ......................................................................... 9
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (H.R. 1249) ...................................................................... passim
`
`Other Authorities
`
`154 CONG. REC. S9982-93 (daily ed. Sept. 27, 2008) (statement of
`Sen. Kyl). ............................................................................................ 28
`
`154 CONG. REC. S9992 (Sept. 27, 2008) (statement of Sen. Jon Kyl) ... 28, 36
`
`157 CONG. REC. H4420–H4452 (daily ed. June 22, 2011) and H4481–
`H4500 (daily ed. June 23, 2011) ........................................................ 18
`
`157 CONG. REC. H4429 (daily ed. June 22, 2011) (statement of Rep.
`Lamar Smith) ...................................................................................... 22
`
`157 CONG. REC. H4429 (daily ed. June 22, 29011) (statement of Rep.
`Karen Bass) ......................................................................................... 23
`
`157 CONG. REC. H4430 (daily ed. June 22, 2011) (statement of Rep.
`Zoe Lofgren) ....................................................................................... 23
`
`157 CONG. REC. S1370–71 (daily ed. March 8, 2011) ................................. 19
`
`157 CONG. REC. S1371 (daily ed. March 8, 2011) (statement of Sen.
`Jon Kyl) .............................................................................................. 20
`
`157 CONG. REC. S1496 (daily ed. March 9, 2011) (statement of Sen.
`Orrin Hatch) ........................................................................................ 21
`
`157 CONG. REC. S1496 (daily ed. March 9, 2011) (statement of Sen.
`Patrick Leahy)............................................................................... 20, 21
`
`157 CONG. REC. S1496-97 (daily ed. March 9, 2011) .................................. 19
`
`ABA IPL Section Response to the Recommendations of the National
`Research Council of the National Academies on “A 21st
`Century Patent System” (Appendix), available at
`http://www.americanbar.org/content/dam/aba/migrated/intelpro
`p/reports/NAS_Report_Appendix.authcheckdam.pdf ....................... 37
`-v-
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`Case: 16-1284 Document: 59 Page: 7 Filed: 04/21/2016
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`
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`Brief of Amici Curiae 42 Intellectual Property Professors, Helsinn
`Healthcare S.A., Roche Palo Alto LLC v. Teva Pharms. USA,
`Inc, Teva Pharms. Ind., Ltd. (Fed. Cir.) (No. 2016-1284) .......... passim
`
`Comments Regarding the International Effort to Harmonize the
`Substantive Requirements of Patent Laws at
`http://www.uspto.gov/patent/laws-and-regulations/comments-
`public/comments-regarding-international-effort-harmonize-0 .......... 37
`
`H.R. 1249, 112th Cong. (March 30, 2011) (as introduced) ........................... 18
`
`H.R. REP. NO. 112-98 (2011) ...................................................... 18, 20, 25, 34
`
`Joe Matal, A Guide to the Legislative History of the America Invents
`Act: Part I of II, 21 Fed. Cir. B.J. 435 (2012) .............................. 18, 34
`
`Patent Reform Act of 2007, H.R. 1908, 110th Cong.................................... 25
`
`Patent Reform Act of 2008, S. 3600, 110th Cong. ....................................... 27
`
`Patent Reform Act of 2010, S. 515, 111th Cong. ............................. 25, 26, 27
`
`Request for Comments on the International Effort to Harmonize the
`Substantive Requirements of Patent Laws, 66 FED. REG. 15409
`(March 19, 2001) ................................................................................ 37
`
`Robert A. Armitage. Understanding the America Invents Act and Its
`Implications for Patenting, 40 AIPLA Q.J. 1 (2012) ......................... 33
`
`S. REP. NO. 111-18 (2009) ............................................................................ 26
`
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`Case: 16-1284 Document: 59 Page: 8 Filed: 04/21/2016
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`INTEREST OF AMICUS
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`Congressman Lamar Smith served as Chairman of the Committee on
`
`the Judiciary of the U.S. House of Representatives during the pendency of
`
`various patent reform bills, including H.R. 1249, enacted as the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). He was
`
`lead sponsor of the bill and managed consideration of the bill in the House
`
`through the debate on the House floor.
`
`His sole interest in this appeal is that 35 U.S.C. § 102(a)(1), as
`
`enacted under H.R. 1249, be interpreted in a manner faithful to the
`
`legislative text. He has no personal interest in the result of this appeal. No
`
`party to this appeal drafted any portion of this brief or contributed any
`
`money towards its preparation or filing. Both appellants and appellees have
`
`consented to the filing of this brief.
`
`SUMMARY OF ARGUMENT
`
`This appeal should be decided by holding nothing more than
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`35 U.S.C. § 102(a)(1) means what it plainly says. Subject matter can qualify
`
`as prior art under § 102(a)(1) only if a disclosure has made the subject
`
`matter “available to the public.” This overarching public availability
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`limitation applies to “public use” and “on sale” activities, thereby
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`-1-
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`Case: 16-1284 Document: 59 Page: 9 Filed: 04/21/2016
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`eliminating an aspect of the old patent statute that had treated certain non-
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`public use or on-sale activities, when attributable to the inventor, as a
`
`forfeiture of the inventor’s right to patent. In effect, § 102(a)(1) simply
`
`extends the long-recognized definition of “in public use or on sale” that
`
`applied under the old statute to activities unrelated to the inventor to
`
`inventor-related activities.
`
`This § 102(a)(1) limitation is confirmed in the new patent statute itself
`
`in two subparagraphs of § 102(b) that make reference to § 102(a)(1) prior art
`
`as subject matter that been “public disclosed.” To a similar effect is
`
`language, added by H.R. 1249 to 35 U.S.C. § 273, that identifies § 102(a)(1)
`
`prior art as subject matter “disclosed to the public.”
`
`The most relevant legislative history for H.R. 1249’s amendment
`
`enacting § 102(a)(1) confirms that all § 102(a)(1) prior art is limited to
`
`publicly available subject matter. This history is found in H.R. 1249’s
`
`committee report and the H.R. 1249 floor debates.
`
`Contentions that Congress did not fully understand or appreciate the
`
`consequences of changing the patent law in this respect fail to recognize that
`
`repeal of the forfeiture bar was widely supported within the patent
`
`community and consistent with recommendations made by the National
`
`Academies for harmonizing U.S. patent law with that of other countries.
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`I.
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`Case: 16-1284 Document: 59 Page: 10 Filed: 04/21/2016
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`ARGUMENT
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`H.R. 1249 Limits 35 U.S.C. § 102(a)(1) Prior Art To Disclosures
`“Available To The Public”.
`
`H.R. 1249 repealed 35 U.S.C. § 102 and substituted a new provision
`
`specifying that prior art can arise only from only two sources. One source of
`
`prior art consists of non-public disclosures made through patent filings. The
`
`other source is public disclosures, i.e., disclosures “available to the public.”
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`Subject matter that is in public use or sale can now constitute prior art only if
`
`it is available to the public. This publicness limitation for use/on-sale
`
`activities to qualify as prior art formerly applied only to activities not
`
`inventor-related. Under H.R. 1249, the same standard now applies to
`
`inventor-related activities as well. By so extending the existing publicness
`
`limitation to inventor-related activities, H.R. 1249 has the effect of ending
`
`the “forfeiture” of the inventor’s right to patent that had applied under old
`
`§ 102, based upon the inventor’s secret use/on-sale activities taking place
`
`more than one year before seeking a U.S. patent.
`
`A. “Publicly Disclosed,” “Disclosed to the Public,” And
`“Available To The Public” Are Each Used To Describe The
`“Publicness” Limitation On 35 U.S.C. § 102(a)(1) Prior Art.
`
`The table below offers a summary of the two categories of disclosures
`
`that can represent prior art under 35 U.S.C. § 102(a), as well as the operation
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`of the relevant prior art exceptions under 35 U.S.C. § 102(b):
`-3-
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`Case: 16-1284 Document: 59 Page: 11 Filed: 04/21/2016
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`PRIOR ART:
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`§ 102(a)(1)
`
`§ 102(a)(2)
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`DISCLOSURES
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`Public disclosures—
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`Non-public disclosures—
`
`QUALIFYING
`
`under (a)(1) must be
`
`through patent filings under
`
`AS PRIOR ART
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`“available to the public”
`
`(a)(2) that later publish/issue
`
`EXCEPTIONS:
`
`§ 102(b)(1)
`
`§ 102(a)(2)/§ 102(b)(2)
`
`INVENTOR’S
`
`1-Year “Grace period”
`
`“Same inventive entity”
`
`OWN
`
`under (b)(1)(A) excludes
`
`non-public patent filings
`
`DISCLOSURES
`
`(a)(1) public disclosures
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`excluded under (a)(2) itself
`
`DERIVATION
`
`Included explicitly
`
`Included explicitly
`
`PROTECTION
`
`under (b)(1)(A)
`
`under (b)(2)(A).
`
`NEW JOINT
`
`Joint inventor’s prior
`
`Joint inventor’s non-public
`
`INVENTOR
`
`public disclosures
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`prior patent filings excluded
`
`EXCLUSION
`
`excluded under (b)(1)(A)
`
`under (b)(2)(A)
`
`INDEPENDENT
`
`Applies under (b)(1)B)/(b)(2)(B) when the inventor’s
`
`DISCLOSURE
`
`publicly disclosed subject matter is later disclosed by
`
`EXCLUSION
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`another inventor during the (b)(1)(A) “grace period”
`
`
`
`The first row of the above table describes the public and non-public
`
`disclosures that may qualify as prior art. The non-public prior art
`
`disclosures under 35 U.S.C. § 102(a)(2) arise from non-public patent filings
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`Case: 16-1284 Document: 59 Page: 12 Filed: 04/21/2016
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`based upon the date they were effectively filed, provided such patent filings
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`later publish or issue as U.S. patents. Public disclosures qualifying as prior
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`art are those under 35 U.S.C. § 102(a)(1) that are “patented, described in a
`
`printed publication, or in public use, on sale, or otherwise available to the
`
`public.”
`
`The shaded portions of the table above relate to various aspects of the
`
`inventor’s so-called “grace period” protection. The § 102(b)(1)(A) “grace
`
`period” is triggered when (and only when) the inventor has made a
`
`§ 102(a)(1) public disclosure before making a patent filing. Under
`
`§ 102(b)(1)(A), such inventor-made disclosures are excluded as prior art if
`
`less than one year from the inventor’s patent filing.1
`
`When H.R. 1249 was enacted, it modified the old § 102’s “grace
`
`period.” in two respects. First, it made explicit the formerly implicit prior
`
`art exclusion for disclosures that were derived from the inventor, but not
`
`made by the inventor.2 Second, it provided an enhancement of the “grace
`
`
`
`1 As noted in the table above, § 102(a)(2) itself eliminated the inventor’s
`own prior patent filings as prior art, precluding any need for a § 102(b)
`exception to do so.
`2 The explicit derivation language in § 102(b)(1)(A) reads, “by another who
`obtained the subject matter disclosed directly or indirectly from the
`inventor or a joint inventor.”
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`period” that excluded a joint inventor’s3 public disclosures as prior art if
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`made during the “grace period” prior to the joint inventor’s later patent
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`filing.4
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`In addition, H.R. 1249 addressed an extremely rare situation in which
`
`a second inventor, acting independently, has made a disclosure of the same
`
`subject matter that the “grace period” inventor had earlier disclosed to
`
`trigger the start of the “grace period.” H.R. 1249 incorporated an
`
`“independent disclosure exclusion” in 35 U.S.C. § 102(b)(1)(B) and
`
`§ 102(b)(2)(B) eliminating such subsequent disclosures as prior art. Since
`
`they would not have constituted prior art under the old patent statute’s
`
`“grace period,”5 § 102(b)(1)(B) and § 102(b)(2)(B) do no more than
`
`continue a prior art exclusion afforded under old § 102.
`
`
`
`3 This enhancement of the “grace period” protection was made through the
`addition of the words “or a joint inventor” at two locations in
`§ 102(b)(1)(A).
`4 Parallel statutory exclusions were provided in § 102(b)(2)(A) that applied
`to § 102(a)(2) prior art.
`5 Under the 35 U.S.C. § 102 (2002), an inventor who had triggered the start
`of the one-year “grace period” by publicly disclosing an invention was
`entitled to rely on a date no later than this “grace period” disclosure date
`as its “date of invention” to eliminate any later, independent disclosure of
`the same subject matter during the 1-year “grace period” as prior art under
`either old 35 U.S.C. § 102(a) (2002) or 35 U.S.C. § 102(e) (2002).
`-6-
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`Because H.R. 1249’s independent disclosure exclusion applied only to
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`“grace period” inventors, the statutory text implementing this exclusion was
`
`limited in a manner to avoid the possibility that this exclusion might apply to
`
`an inventor who had, for example, made an earlier non-public, patent-filing
`
`disclosure that was of no relevance to the “grace period.” Expanding the
`
`independent inventor exclusion to non-public disclosures, e.g., an inventor’s
`
`earlier patent filing, would have produced manifestly undesirable
`
`consequences.6
`
`The H.R. 1249 statutory text applies the exclusion only if “the subject
`
`matter [independently] disclosed had, before such [independent] disclosure,
`
`been publicly disclosed by the inventor…”7 (emphasis supplied). The term
`
`publicly disclosed—rather than just the unmodified term “disclosed”—was
`
`used in the new statute to assure this remedial provision applied broadly
`
`enough to encompass all § 102(a)(1)-type disclosures, but could not be
`
`
`
`6 One such consequence of removing a subsequent disclosure as prior art is
`that it would have allowed the “grace period” inventor to then manipulate
`the start of the 20-year patent term through a later patent filing that would
`otherwise be barred by such subsequent disclosure.
`7 35 U.S.C. § 102(b)(1)(B). A parallel provision appears in
`35 U.S.C. § 102(b)(2)(B), “the subject matter [independently] disclosed
`had, before such [independently disclosed] subject matter was effectively
`filed under subsection (a)(2), been publicly disclosed by the inventor…”
`-7-
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`asserted based upon an inventor’s § 102(a)(2)-type non-public disclosure. In
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`this manner it reflects the equivalency between the § 102(a)(1) disclosures
`
`constituting prior art and publicly disclosed subject matter.
`
`This same equivalency arises from the use of the term “disclosed to
`
`the public” in H.R. 1249’s amendment to the prior user defense to patent
`
`infringement.8 Under H.R. 1249, the old invention-date qualification for the
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`defense9 was repealed and in its place a new provision was enacted to assure
`
`that an inventor who made use of the § 102(b)(1)(A) grace period before
`
`filing for a patent would secure immunity from the applicability of the prior
`
`user defense to the same extent as though a patent been sought on the date
`
`the “grace period” commenced.
`
`The statute lays out this rule through a reference to “the date on which
`
`the claimed invention was disclosed to the public in a manner that qualified
`
`for the exception from prior art under section 102(b).”10 Since the “grace
`
`period” exception from prior art under § 102(b) applies only to § 102(a)(1)
`
`prior art, this provision—like the § 102(b)(1)(B) and § 102(b)(2)(b)
`
`
`
`8 35 U.S.C. § 273.
`9 The prior user must have “acting in good faith, actually reduced the subject
`matter to practice at least 1 year before the effective filing date of such
`patent…” 35 U.S.C. § 273 (b)(1) (1999).
`10 35 U.S.C. § 273(a)(2)(B). (emphasis added.)
`-8-
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`provisions above—reflects the identity in meaning between disclosures
`
`representing § 102(a)(1) prior art and subject matter “disclosed to the
`
`public.”
`
`Taken collectively, H.R. 1249’s consistent use of the terms “publicly
`
`disclosed,” “disclosed to the public,” and “available to the public”
`
`conclusively demonstrates that the publicness requirement that formerly
`
`limited use/on-sale activities not related to the inventor now applies to
`
`inventor-related activities.
`
`B. The Contention That H.R. 1249’s Use Of “Publicly Disclosed”
`Implies 35 U.S.C. § 102(a)(1) Prior Art Includes Non-Public
`Disclosures Is Based On An Incomplete Understanding Of
`H.R. 1249’s Statutory Framework.
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`The foregoing analysis equating § 102(a)(1) prior art with subject
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`matter “publicly disclosed” and “disclosed to the public” reflects two
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`predicates. First, all § 102(a) prior art now arises from disclosures (albeit
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`not all disclosures qualify as § 102(a) prior art). Second, the terms
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`“disclosed” and “disclosures” in § 102(b) and § 273 have their plain,
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`dictionary meaning—to make known.
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`Case: 16-1284 Document: 59 Page: 17 Filed: 04/21/2016
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`As to the first predicate, under the old statute not all prior art arose
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`through “disclosures.”11 H.R. 1249, however, amended 35 U.S.C. § 103 to
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`confirm that all H.R. 1249 § 102 prior art would arise through disclosures.
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`H.R. 1249 removed old § 103’s12 characterization of subject matter
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`“described as set forth in section 102” as constituting prior art and limited
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`§ 103’s reference to § 102 prior art subject matter as that “disclosed as set
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`forth in section 102…”13
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`With respect to the second predicate, the terms “disclosed” and
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`“disclosure” had long been used in the patent statute with their plain,
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`dictionary meanings. For example, these terms are specifically used to
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`reference a patent filing and its technical contents in 35 U.S.C. § 122, i.e., a
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`patent applicant seeking to avoid the otherwise mandatory publication of an
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`application for patent must certify “that the invention disclosed in the
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`application has not and will not be the subject of an application filed in
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`another country…”14 To a similar effect is 35 U.S.C. § 132, dealing with the
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`
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`11 The mere making of (rather than disclosing) an invention could be a
`source of prior art under 35 U.S.C. § 102(g)(1) (2002).
`12 35 U.S.C. § 103 (2004).
`13 In amending § 103, H.R. 1249 changed the phrase “disclosed or
`described” to the word “disclosed.”
`14 35 U.S.C. § 122(b)(2)(B)(i).
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`Case: 16-1284 Document: 59 Page: 18 Filed: 04/21/2016
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`amendment of a pending patent application, “No amendment shall introduce
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`new matter into the disclosure of the invention.”15 Other provisions of the
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`patent statute similarly reference a patent filing as a disclosure or the
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`contents of the application as subject matter disclosed.16
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`H.R. 1249’s amendment of § 102, in choosing to use these very same
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`terms that had long been used elsewhere in the statute, avoided any possible
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`statutory ambiguity or confusion because such words could have no different
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`meaning in § 102 than they had—and would have—elsewhere in the statute.
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`Hence, giving effect to the “available to the public” limitation in § 102(a)(1)
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`produces no uncertainty, ambiguity, or inconsistency in the statutory
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`framework—the language and structure of § 102 as amended by H.R. 1249
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`operates in complete harmony with the remaining statute by treating
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`§ 102(a)(1) prior art as limited to public disclosures.
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`
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`15 35 U.S.C. § 132(a).
`16 35 U.S.C. § 113 (limiting the use of patent drawings made after the patent
`filing “to overcome any insufficiency of the specification due to lack of an
`enabling disclosure or otherwise inadequate disclosure therein” or “to
`supplement the original disclosure thereof…”), 35 U.S.C. § 112(a)
`(referencing an “application for patent for an invention disclosed in the
`manner provided by the first paragraph of section 112 of this title…”),
`35 U.S.C. § 182 (“[t]he invention disclosed in an application for patent
`subject to an order made pursuant to section 181…”), and
`35 U.S.C. § 251(a) (permitting the USPTO to “reissue the patent for the
`invention disclosed in the original patent…”) (emphasis supplied)
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`Case: 16-1284 Document: 59 Page: 19 Filed: 04/21/2016
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`The IPP Brief,17 however, contends otherwise. It posits that
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`§ 102(a)(1) prior art cannot be—as the statute says on its face it must be—
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`limited to subject matter “available to the public” because so limiting
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`§ 102(a)(1) prior art is “inconsistent with the language and structure” of
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`H.R. 1249.18
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`The core of the problem with the IPP Brief’s analysis is its
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`unsupportable contention that “disclosures” as used in § 102(b) means “prior
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`art events.”19 If the term “disclosure” means—as the IPP Brief apparently
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`suggests—“to be made prior art,” then other statutory provisions containing
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`this term (e.g., § 112, § 113, § 122, § 132, § 182, and § 251) become
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`uninterpretable.
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`More significantly, the use of the term “disclosed” in the H.R. 1249-
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`amended version of § 103—if construed as a reference to § 102 “prior art
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`events”—would render the words in the statute that follow “disclosed,” i.e.,
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`“as set forth in section 102,” entirely unnecessary. Indeed, the IPP Brief
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`
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`17 Brief of Amici Curiae 42 Intellectual Property Professors, Helsinn
`Healthcare S.A., Roche Palo Alto LLC v. Teva Pharms. USA, Inc, Teva
`Pharms. Ind., Ltd. (Fed. Cir.) (No. 2016-1284), herein the “IPP Brief.”
`18 Id. at 2.
`19 Ibid.
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`Case: 16-1284 Document: 59 Page: 20 Filed: 04/21/2016
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`explains why its own proposed construction of the terms “disclosed” and
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`“disclosure” cannot be squared with § 103, i.e., by rendering words in a
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`statute superfluous, the IPP Brief’s construction “conflicts with the well-
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`known canon that all words in a statute are presumed to have meaning, and
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`interpretations that render a word redundant are to be disfavored.”20
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`While the IPP Brief contains an extensive analysis in support of the
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`proposition that “the term ‘disclosure’ has long been understood by patent
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`lawyers and this Court as synonymous with ‘prior art references,’”21 the only
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`statutory provisions referenced in the brief’s analysis are the version of
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`§ 103 that was repealed by H.R. 1249 and old 35 U.S.C. § 102(f)22, a
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`statutory provision also repealed by H.R. 1249. Significantly, the version of
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`§ 103 enacted under H.R. 1249 that clearly demands the opposite conclusion
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`is nowhere mentioned—and the IPP brief nowhere discusses the collection
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`of statutory provisions in which the terms “disclosed” and “disclosure”
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`appear with an entirely inconsistent meaning.
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`The IPP Brief uses this misconstruction of the term “disclosed” as
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`meaning “prior art disclosures” to errantly conclude that “publicly
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`
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`20 Ibid.
`21 Id. at 11-12.
`22 35 U.S.C. § 102(f) (2002).
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`Case: 16-1284 Document: 59 Page: 21 Filed: 04/21/2016
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`disclosed” necessarily implies, first, that non-public disclosures can
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`constitute prior art (or “publicly” would be superfluous) and, second, that
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`§ 102(a)(1) prior art specifically must be inclusive of non-public disclosures.
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`The foregoing analysis is correct in only one respect. It is self-evident that
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`prior art under § 102(a)(2) can arise from non-public disclosures, i.e.,
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`confidential patent disclosures that represent prior art as of their disclosure
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`date in the United States Patent and Trademark Office under § 102(a)(2).
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`However, simply because all § 102(a)(2) prior art result from non-public
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`disclosures does not support the conclusion that the term “publicly
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`disclosed” in § 102(b) demands that § 102(a)(1) prior art also include non-
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`publicly disclosed subject matter.
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`The IPP Brief further supports its errant contention by asserting that
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`the independent disclosure exclusion is a “‘super’ grace period” that must be
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`“‘earned’ by an act that goes beyond mere prior disclosure by the
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`inventor.”23 Supposedly, therefore, the “grace period”—and § 102(a)(1)
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`prior art—must cover both public disclosures that earn the “super grace
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`period” and non-public activities that do not. The “super grace period”
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`conjecture, while assuredly creative, is at odds with the actual effect of this
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`
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`23 Id. at 3-4.
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`Page 21 of 43
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`Case: 16-1284 Document: 59 Page: 22 Filed: 04/21/2016
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`provision. As discussed above, this exception is far from “super” as it
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`merely eliminates as prior art subject matter that was inherently excluded as
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`prior art under t