Case: 16-1284 CASE PARTICIPANTS ONLY Document: 85 Page: 1 Filed: 05/02/2016
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`Nos. 16-1284, -1787
`
`(cid:6)(cid:6)(cid:15)(cid:13)(cid:20)(cid:10)(cid:9)(cid:1)(cid:5)(cid:20)(cid:7)(cid:20)(cid:10)(cid:19)(cid:1)(cid:3)(cid:16)(cid:21)(cid:18)(cid:20)(cid:1)(cid:16)(cid:11)(cid:1)(cid:2)(cid:17)(cid:17)(cid:10)(cid:7)(cid:14)(cid:19)(cid:1)(cid:11)(cid:16)(cid:18)(cid:1)(cid:20)(cid:12)(cid:10)(cid:1)(cid:4)(cid:10)(cid:9)(cid:10)(cid:18)(cid:7)(cid:14)(cid:1)(cid:3)(cid:13)(cid:18)(cid:8)(cid:21)(cid:13)(cid:20)
`
`Helsinn Healthcare S.A. and Roche Palo Alto LLC,
`
`Plaintiffs-Appellees,
`
`v.
`
`Teva Pharmaceuticals USA, Inc. and Teva Pharmaceuticals Industries, Ltd.,
`
`Defendants-Appellants.
`
`___________________________________________________________________
`
`Appeal from the United States District Court for the District of New Jersey,
`Case Nos. 3:11-CV-3962, -5579, -5815, Judge Mary Cooper
`
`___________________________________________________________________
`
`BRIEF OF AMICUS CURIAE
`AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION
`IN SUPPORT OF PLAINTIFFS-APPELLEES
`
`Mark L. Whitaker
`AIPLA President-Elect
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, NW
`Suite 6000
`Washington, DC 20006-1888
`(202) 887-1507
`mwhitaker@mofo.com
`
`Date: May 2, 2016
`
`Lynn C. Tyler
`Counsel of Record
`BARNES & THORNBURG LLP
`11 South Meridian Street
`Indianapolis, IN 46204
`(317) 236-1313
`lynn.tyler@btlaw.com
`
`Helsinn Healthcare Exhibit 2090
`Dr. Reddy's Laboratories, Ltd., et al. v. Helsinn Healthcare S.A.
`Trial PGR2016-00008
`
`Page 1 of 36
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`

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`Case: 16-1284 CASE PARTICIPANTS ONLY Document: 85 Page: 2 Filed: 05/02/2016
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`2016-1284, -1787
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`HELSINN HEALTHCARE S.A. AND ROCHE PALO ALTO LLC,
`
`Plaintiffs-Appellees,
`
`V.
`
`TEVA PHARMACEUTICALS USA, INC. AND TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
`
`Defendants-Appellants.
`
`CERTIFICATE OF INTEREST
`In accordance with FED. CIR. R. 47.4 and FED. R. APP. P. 26.1, counsel for
`
`the Amicus the American Intellectual Property Law Association certifies the
`
`following:
`
`1. The full name of every party represented by me is:
`
`American Intellectual Property Law Association.
`
`2. The name of the real party in interest represented by me is: N/A.
`
`3. All parent corporations and any publicly held companies that own 10
`
`percent or more of the stock of the parties represented by me are:
`
`None.
`
`i
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`Page 2 of 36
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`Case: 16-1284 CASE PARTICIPANTS ONLY Document: 85 Page: 3 Filed: 05/02/2016
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`4. The names of all law firms and the partners or associates that appeared for
`
`the party now represented by me and that are expected to appear in this court
`
`are:
`
`Mark L. Whitaker
`MORRISON & FOERSTER LLP
`2000 Pennsylvania Avenue, NW
`Suite 6000
`Washington, DC 20006-1888
`(202) 887-1507
`mwhitaker@mofo.com
`
`Counsel for Amicus Curiae
`
`Date: May 2, 2016
`
`Lynn C. Tyler
`Counsel of Record
`BARNES & THORNBURG LLP
`11 S. Meridian St.
`Indianapolis, IN 46204
`(317) 236-1313
`lynn.tyler@btlaw.com
`
`ii
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`Page 3 of 36
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`

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`Case: 16-1284 CASE PARTICIPANTS ONLY Document: 85 Page: 4 Filed: 05/02/2016
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`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iv
`STATEMENT OF INTEREST OF AMICUS CURIAE...........................................1
`SUMMARY OF ARGUMENT .................................................................................3
`ARGUMENT .............................................................................................................4
`I.
`The “Big Picture” Confirms The AIA Intentionally Limited Prior
`Art to What is Publicly Available. ........................................................4
`
`A.
`
`to
`The AIA Reflects Congress’s Overall Objective
`Simplify Patent Law, Making
`it More Objective,
`Predictable, and Transparent.......................................................5
`
`B.
`
`The Incentives of The First-Inventor-To-File System................8
`
`The Plain Language of § 102(a)(1) Excludes Secret Sales as
`Prior Art...............................................................................................11
`
`The Legislative History Establishes Prior Art Must Be Publicly
`Available. ............................................................................................18
`
`Section 102(b)(1)(B) Is Not to the Contrary.......................................19
`
`Allowing Secret Sales to be Prior Art Would be Antagonistic to
`the AIA’s Objectives...........................................................................22
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI. Other Policy Considerations Support The District Court’s
`Decision...............................................................................................25
`
`CONCLUSION........................................................................................................26
`PROOF OF SERVICE.............................................................................................28
`CERTIFICATE OF COMPLIANCE.......................................................................29
`
`iii
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`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`Allen Engineering Corp. v. Bartell Industries, Inc.,
`299 F.3d 1336 (Fed. Cir. 2002)................................................................................12
`
`Beachcombers International, Inc. v. Wildewood Creative Prods, Inc.,
`31 F.3d 1154 (Fed. Cir. 1994)....................................................................................9
`
`Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009)..................17
`
`Egbert v. Lippman, 104 U.S. 333 (1881) ................................................................9, 17
`
`Evans Cooling Systems, Inc. v. General Motors Corp.,
`125 F.3d 1448 (Fed. Cir. 1997).................................................................................7
`
`EZ Dock v. Schafer Systems, Inc., 276 F.3d 1347 (Fed. Cir. 2002)............................12
`
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008)...............12, 15
`
`General Electric Co. v. United States, 654 F.2d 55 (Cl. Ct. 1981)...............................7
`
`Graham County Water and Conservation District v. U.S. ex rel. Wilson,
`559 U.S. 280 (2010)...................................................................................................5
`
`Gustafson v. Alloyd Co., 513 U.S. 561 (1995)..............................................................5
`
`Hall v. Macneale, 107 U.S. 90 (1883)...........................................................................7
`
`In re Lister, 583 F.3d 1307 (Fed. Cir. 2009)..............................................................17
`
`JumpSport, Inc. v. Jumpking, Inc., 191 Fed. Appx. 926 (Fed. Cir. 2006) ....................9
`
`Metallizing Engineering Co. v. Kenyon Bearing & Automobile Parts Co.,
`153 F.2d 516 (2d Cir. 1946)...........................................................................7, 17, 25
`
`Pfaff v. Wells Electronics., Inc., 525 U.S. 55 (1998) .................................... 5, 8, 11-12
`iv
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`Resource Conservation Group, LLC v. United States,
`597 F.3d 1238 (Fed. Cir. 2010).......................................................................... 12-13
`
`Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001).............................7
`
`Strom v. Goldman, Sachs & Co., 202 F.3d 138 (2d Cir. 1999), overruled on other
`grounds, Pereira v. Farace, 413 F.3d 330, 340 (2d Cir. 2005)...............................13
`
`TRW Inc. v. Andrews, 534 U.S. 19 (2001) ..................................................................12
`
`Trading Technologies International, Inc. v. eSpeed, Inc., 507 F. Supp. 2d 883
`(N.D. Ill. 2007), aff'd, 595 F.3d 1340 (Fed. Cir. 2010) ...........................................24
`
`Universal City Studios, Inc. v. Reimerdes,
`111 F. Supp. 2d 294 (S.D.N.Y. 2000) ............................................................... 13-14
`
`Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998) ......7, 24
`
`Williamson v. Southern Regional Council, Inc.,
`223 Ga. 179, 154 S.E.2d 21 (1967)..........................................................................14
`
`Statutes
`
`35 U.S.C. § 102 (2006)................................................................................................15
`
`35 U.S.C. § 102(a)(1) (2013) ...............................................................................passim
`
`35 U.S.C. § 102(b) (2006) ..............................................................................15, 16, 22
`
`35 U.S.C. § 102(b) (2013) ............................................................................. 19-22, 24
`
`35 U.S.C. §§ 112, 116, 251, 253, 256, 257, and 258 ....................................................6
`
`Legislative Materials
`
`157 Cong. Rec. (daily ed. March 1, 2011) ............................................................17, 21
`
`157 Cong. Rec. (daily ed. March 8, 2011) ............................................ 9-13, 17, 19, 22
`v
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`157 Cong. Rec. S1496 (daily ed. March 9, 2011)........................................... 18-19, 20
`
`157 Cong. Rec. (daily ed. June 22, 2011) ....................................................... 19, 20-21
`
`157 Cong. Rec. (daily ed. Sept. 6, 2011).........................................................16, 22, 23
`
`H.R. Rep. No. 112-98 (2011) ..................................................................5, 6, 18, 22, 26
`
`Other Authorities
`
`Robert A. Armitage, Understanding the America Invents Act and Its Implications for
`Patenting, 40 AIPLA Q.J. 1 (2012).................................................................6, 8, 11
`
`1 Donald S. Chisum, Chisum on Patents § 3.01 (2012)..............................................15
`
`Examination Guidelines for Implementing the First Inventor to File
`Provisions of the Leahy-Smith America Invents Act,
`78 Fed. Reg. 11059 (Feb. 14, 2013) ...................................................... 14, 17, 24-25
`
`Joe Matal, A Guide to the Legislative History of the America Invents Act:
`Part I of II, 21 Fed. Cir. B.J. 435 (2012) .................................................................24
`
`Merriam-Webster's Collegiate Dictionary (10th Ed. 1998)........................................11
`
`vi
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`STATEMENT OF INTEREST OF AMICUS CURIAE
`
`The American Intellectual Property Law Association (“AIPLA”) is a national
`
`bar association of approximately 14,000 members who are primarily lawyers
`
`engaged in private and corporate practice, in government service, and in the
`
`academic community. AIPLA members represent a wide and diverse spectrum of
`
`individuals, companies, and institutions involved directly or indirectly in the
`
`practice of patent, trademark, copyright, and unfair competition law, as well as other
`
`fields of law affecting intellectual property. Our members represent both owners and
`
`users of intellectual property. AIPLA’s mission includes providing courts with
`
`objective analysis to promote an intellectual property system that stimulates and
`
`rewards invention while balancing the public’s interest in healthy competition,
`
`reasonable costs, and basic fairness.
`
`AIPLA has no stake in any of the parties to this litigation or in the result of
`
`this case.1 AIPLA’s only interest is in seeking correct and consistent interpretation of
`
`the law as it relates to intellectual property issues. This brief is filed with the
`
`1 After reasonable investigation, AIPLA believes that (a) no member of its Board
`or Amicus Committee who voted to prepare this brief, or any attorney in the law
`firm or corporation of such a member, represents a party to this litigation in this
`matter, (b) no representative of any party to this litigation participated in the
`authorship of this brief, and (c) no one other than AIPLA, its members who
`authored this brief, and their law firms or employees, made a monetary contribution
`to the preparation or submission of this brief.
`
`1
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`Page 8 of 36
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`consent of Appellants Teva Pharmaceuticals USA Inc. and Teva Pharmaceutical Industries
`
`Ltd., and Appellees Helsinn Healthcare S.A. and Roche Palo Alto LLC.
`
`2
`
`Page 9 of 36
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`SUMMARY OF ARGUMENT
`
`With the enactment of the Leahy-Smith America Invents Act (“AIA”), U.S.
`
`patent law was substantially changed to achieve increased objectivity, predictability,
`
`simplicity, and transparency. Among the most significant changes, the United States
`
`shifted from awarding patents based on the date of invention (a “first to invent” or
`
`FTI system) to giving priority based on the date an inventor files an application for a
`
`patent (a “first-inventor-to-file” or FITF system).
`
`An important feature of the patent system is the grant of exclusive rights in
`
`exchange for full and early disclosure of the invention to permit unlimited public
`
`use of the invention at the end of the patent term. The first-to-invent system
`
`achieved this with provisions designed to encourage inventors to seek patents
`
`promptly and to discourage delayed filing and secret use of the invention that would
`
`unfairly extend the exclusive period in which the invention could be commercially
`
`exploited. Thus, it included provisions that prohibited the patenting of an invention
`
`that was “in public use” or “on sale” more than a year before the application was
`
`filed. Those provisions, however, sometimes led to harsh and anomalous results, and
`
`expensive litigation, particularly for small and/or unsophisticated inventors.
`
`The first-inventor-to-file system, by contrast, inherently provides a powerful
`
`incentive for inventors to file patent applications promptly after making an
`
`invention. Moreover, delayed filing and secret use of the invention are deterred by
`
`3
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`amendments stating that any public use or on-sale activity will have no prior art
`
`effect unless they are “available to the public.” Thus, such behavior could permit a
`
`competing inventor to win the race to the Patent Office, unencumbered by any
`
`priority effect of a secret use.
`
`The district court’s conclusion that the language of 35 U.S.C. § 102(a)(1)—
`
`“or in public use, on sale, or otherwise available to public” (emphasis added)—
`
`applies a public availability requirement to the on-sale doctrine is borne out both in
`
`the plain language of the statute and in the purposes outlined above that the statute
`
`was intended to accomplish, as evidenced in the legislative history of the AIA.
`
`Retaining an inventor’s the right to obtain a patent, under the first-inventor-to-file
`
`system, notwithstanding a secret sale was not only consistent with the purpose of
`
`encouraging prompt filing and discouraging extensions of period of exclusivity; it
`
`was also consistent with the goals of the legislation to increase objectivity,
`
`predictability, simplicity, and transparency in the acquisition and enforcement of
`
`patent rights.
`
`ARGUMENT
`The “Big Picture” Confirms The AIA Intentionally Limited Prior Art to
`What is Publicly Available.
`
`I.
`
`The district court held that AIA section 102(a)(1) required that a sale be
`
`public to qualify as prior art and that certain agreements at issue did not qualify. As
`
`4
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`a matter of statutory construction and policy, the district court was correct in its
`
`interpretation of section 102(a)(1).
`
`Courts have a “duty to construe statutes, not isolated provisions.” Graham
`
`County Water and Conservation Dist. v. U.S. ex rel. Wilson, 559 U.S. 280, 290
`
`(2010) (quoting Gustafson v. Alloyd Co., 513 U.S. 561, 568 (1995)). Thus, to put the
`
`issue here regarding section 102(a)(1) in context, this brief examines some other
`
`provisions of the AIA which support the district court’s decision that limits prior art
`
`to information which was publicly available.2
`
`A.
`
`The AIA Reflects Congress’s Overall Objective to Simplify Patent
`Law, Making it More Objective, Predictable, and Transparent.
`
`Along with converting U.S. patent law to a first-inventor-to-file system, the
`
`AIA made a variety of amendments to improve the process of obtaining and
`
`enforcing patent rights. According to the House Report on H.R. 1249, “[t]he
`
`legislation is designed to establish a more efficient and streamlined patent system
`
`that will
`
`improve patent quality and limit unnecessary and counterproductive
`
`litigation costs.” H.R. Rep. No. 112-98, at 40 (2011). Some of the major changes
`
`2 Also to add context, the issues in this case are distinguishable from the on-sale
`issues currently before the en banc court in The Medicines Company v. Hospira
`Inc., Fed. Cir., No. 2014-1469,-1504, en banc order November 12, 2015 (“TMC”).
`Whereas this case concerns an amendment to the patent statute and its effect on
`secret sales, the issue in TMC is whether a secret sale between a patent owner and a
`supplier meets the requirement under the prior statute that a prior art sale must be a
`“commercial” sale that exploits the value of the invention in the marketplace. Pfaff
`v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
`5
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`along these lines included eliminating fact-sensitive, discovery-intensive, and
`
`subjective elements such as the “best mode” defense from pre-AIA section 112 and
`
`“deceptive intention” from pre-AIA sections 116, 251, 253, 256, 288, and adding
`
`new (i.e., post-AIA) section 257 on supplemental examination to address the fact-
`
`sensitive, discovery-intensive, and subjective inequitable conduct doctrine.3
`
`To further promote predictability, simplicity and transparency, the AIA
`
`revised section 102(a)(1) to introduce the new statutory requirement of “public
`
`availability” for the sale of an invention more than one year before the application
`
`filing date to qualify as prior art. The change brought the on-sale doctrine into
`
`conformity with the public nature of the other prior art items listed in the statute
`
`(patents, printed publications, and public use). As amended, Section 102(a)(1)
`
`provides as follows:
`
`(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—
`
`(1) the claimed invention was patented, described in a printed
`publication, or in public use, on sale, or otherwise available to the
`public before the effective filing date of the claimed invention;
`
`As the accompanying House Report explained, “the phrase ‘available to the public’
`
`[was] added to clarify the broad scope of relevant prior art, as well as to emphasize
`
`the fact that it must be publicly accessible.” H.R. REP. NO. 112-98, at 42-43 (2011).
`
`This change legislatively overruled the line of judicial precedent that had allowed
`
`3 See generally Robert A. Armitage, Understanding the America Invents Act and Its
`Implications for Patenting, 40 AIPLA Q.J. 1, 10-14 (2012) (“Armitage”).
`6
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`the on-sale doctrine to reach “any commercial use, public or not, even where the
`
`subject matter of the offer is unavailable for purchase by members of the public”
`
`and thereby barred patentability.4 Gen. Elec. Co. v. United States, 654 F.2d 55, 61
`
`(Cl. Ct. 1981). An important source for much of the judicial analysis on secret prior
`
`art was the Second Circuit’s decision in Metallizing Eng’g Co. v. Kenyon Bearing &
`
`Auto Parts Co., 153 F.2d 516 (2d Cir. 1946). In that case, the issue was the secret
`
`use of a process before the grace period and the sale of the unpatented products of
`
`that process. One basis for giving the secret use a prior art effect apparently was the
`
`court’s concern that the patent owner was simultaneously benefitting from trade
`
`secret and patent protection. As Judge Hand wrote, “it is a condition upon an
`
`inventor's right to a patent that he shall not exploit his discovery competitively after
`
`it is ready for patenting; he must content himself with either secrecy, or legal
`
`monopoly.” Metallizing Eng’g Co., 153 F.2d at 520 (emphasis added).
`
`4 For example, Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353, 1357-1358 (Fed.
`Cir. 2001) (refusing to recognize a “supplier” exception to the on-sale bar);
`Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir. 1998)
`(finding an inventor’s own secret commercial use before the grace period may be a
`public use barring patentability); Evans Cooling Systems, Inc. v. General Motors
`Corp., 125 F.3d 1448, 1454 (Fed. Cir. 1997) (refusing to create an exception to the
`on sale bar for sales before the grace period that result from a misappropriation of
`the invention by a third party); Metallizing Eng’g Co. v. Kenyon Bearing & Auto
`Parts Co., 153 F.2d 516 (2d Cir. 1946) (applying the on-sale bar to sales before the
`grace period of unpatented products made by the secret use of the patented process);
`Hall v. Macneale, 107 U.S. 90, 96 (1883) (finding the sale of “burglar-proof” safes
`to be a public use despite testimony that technology was completely concealed
`within the safe).
`
`7
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`The introduction of a requirement of “public availability” to the on-sale
`
`doctrine is entirely consistent with the underlying purpose of the AIA to transform
`
`the U.S. patent system “from one of non-transparency, subjectivity, unpredictability
`
`and excessive complexity, to one that will operate with near-complete transparency,
`
`objectiveness, predictability and simplicity….” Armitage, 40 AIPLA Q.J. at 9. The
`
`addition of the “public availability” requirement to the on-sale doctrine eliminated
`
`the need for time-consuming and expensive discovery into an inventor’s pre-filing
`
`activities, the results of which could not be predicted in advance.
`
`Reading the “public availability” requirement out of the on-sale doctrine
`
`would abrogate Congress’s intent to simplify patent law by restoring the on-sale
`
`doctrine to its accepted role: to encourage inventors to promptly file for patent
`
`protection and to discourage them from exploiting the value of their invention for
`
`more than one year before seeking a patent. Pfaff, 525 U.S. at 63.
`
`B.
`
`The Incentives of The First-Inventor-To-File System.
`
`As noted above, with the enactment of the AIA, the United States joined the
`
`rest of the industrialized world in having a system which awards patents to the first
`
`inventor to file an application covering the claimed invention. To the extent that
`
`patent systems provide exclusive rights in exchange for disclosure of inventions to
`
`the public, incentives for prompt and complete disclosure are necessary to the
`
`bargain between the inventor and the government. The needed incentives to file
`
`8
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`promptly are particularly important where an invention can be kept secret while it is
`
`being commercialized. In the first-to-invent system, inventors had a compelling
`
`incentive to defer seeking a patent. The inventor could wait to seek a patent until the
`
`invention became public, through either another’s (1) public disclosure of the
`
`invention or (2) efforts to obtain a patent for the invention.
`
`The incentive provided under the first-to-invent system was that an inventor
`
`that used or sold its invention more than a year before filing was at risk of losing his
`
`patent. The harm of that loss, however, far outweighed the benefit of encouraging
`
`prompt filing. “The current forfeiture doctrines have become traps for unwary
`
`inventors and impose extreme results to no real purpose.” 157 Cong. Rec. S1371
`
`(daily ed. March 8, 2011) (Remarks of Senator Kyl discussing section 102 of S. 23,
`
`which was identical to section 102 of House bill 1249 that became the AIA). 5 Small
`
`and/or unsophisticated inventors, for example, forfeited their right to a patent
`
`because of limited and private uses that did not disclose the claimed invention to the
`
`public.6 “The only effect of rulings like these is to create heavy discovery costs in
`
`5 All citations to the Congressional Record in this brief are to volume 157 of the
`daily edition. Future citations will be abbreviated “Cong. Rec. [page] (date)).”
`6 As examples, the Congressional Record cites Egbert v. Lippman, 104 U.S. 333
`(1881) (corset spring inherently hidden from view and given to only one woman
`held to be “in public use”), Beachcombers Int’l, Inc. v. Wildewood Creative Prods.,
`Inc., 31 F.3d 1154, 1159-60 (Fed. Cir. 1994) (improved kaleidoscope “in public
`use” because shown to guests at private party), and JumpSport, Inc. v. Jumpking,
`Inc., 191 Fed. Appx. 926 (Fed. Cir. 2006). See Cong. Rec. S1371 (1st & 2d col.).
`9
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`every patent case, and to punish small inventors who are unaware of the pitfalls of
`
`the [pre-AIA section 102(b)].” Cong. Rec. S1371 (March 8, 2011) (1st col.).7
`
`Under a first-inventor-to-file standard, however, the reasons for barring an
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`inventor from seeking a valid patent after a prolonged period of non-informing or
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`secret commercial use disappear:
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`There is no need to also require forfeiture of patents
`simply because the inventor has made some use of the
`invention that has not made the invention available to the
`public. And the current on-sale bar [of pre-AIA section
`102(b)] imposes penalties not demanded by any legitimate
`public
`interest. There
`is
`no
`reason
`to
`fear
`“commercialization” that merely consists of a secret sale
`or offer for sale but that does not operate to disclose the
`invention to the public.
`
`Id.
`
`By maintaining an inventor’s right to obtain patent protection even after
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`secret commercial use of an invention, post-AIA section 102(a) provides a
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`continuing incentive to disclose an invention that can then be more readily and
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`rapidly improved by others and otherwise progress the useful arts. If Congress had
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`not acted to retain an inventor’s right to a patent despite a secret sale, inventors
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`would have a continuing incentive to maintain and use their invention in secret as
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`soon as the one-year period after the disclosure had expired. Encouraging such
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`secrecy would actually have the effect of retarding rather than promoting the
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`7 See also cases discussed at note 4 supra.
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`progress of the useful arts. Thus, instead of discouraging disclosure by maintaining
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`the old loss of right provisions, Congress “provide[d] ample incentive for an
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`inventor to enter the patent system promptly” in the AIA “[b]y adopting the first-to-
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`file system.” Id.
`
`II.
`
`The Plain Language of § 102(a)(1) Excludes Secret Sales as Prior Art.
`
`As noted above, post-AIA section 102(a)(1) both implements the “first-
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`inventor-to-file” system and, along with section 102(a)(2), defines the prior art.
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`Section 102(a)(1) reads:
`
`A person shall be entitled to a patent unless (1) the
`claimed invention was patented, described in a printed
`publication, or in public use, on sale, or otherwise
`available to the public before the effective filing date of
`the claimed invention.
`35 U.S.C. § 102(a)(1) (emphasis added).8 “Otherwise” means “in a different way or
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`manner.” Merriam-Webster’s Collegiate Dictionary, at 823 (10th Ed. 1998). For the
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`last category to be available to the public “in a different way or manner,” the prior
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`categories, including “on sale,” must also be available to the public. The position
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`that secret sales may qualify as prior art9 reads the word “otherwise” out of section
`
`8 For a detailed review of the changes from pre-AIA section 102 to post-AIA section
`102, see Armitage, supra, 40 AIPLA Q.J. at 39-60.
`9 The position that secret sales qualify as prior art under pre-AIA section 102(b) is
`over-simplified. Under Pfaff, supra, an offer for sale must be “commercial” and the
`invention must be “ready for patenting” to implicate the statutory bar. 525 U.S. at
`67. In contrast, an “experimental” offer for sale does not implicate the on sale bar of
`pre-AIA section 102(b). One factor used to determine if a sale or offer for sale was
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`102(a)(1), contrary to a basic canon of statutory construction. E.g., TRW Inc. v.
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`Andrews, 534 U.S. 19, 31 (2001) ("It is a cardinal principle of statutory construction
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`that a statute ought, upon the whole, to be so construed that, if it can be prevented,
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`no clause, sentence, or word shall be superfluous, void, or insignificant.”).
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`A clause, such as “or otherwise,” that is set off from a series of antecedent
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`clauses by a comma applies to each of the preceding antecedents. In Finisar Corp. v.
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`DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008), this Court wrote that “when a
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`modifier is set off from a series of antecedents by a comma, the modifier should be
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`read to apply to each of those antecedents.” Id. at 1336-37 (citation omitted).
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`Moreover, both Finisar and the preceding quotation are included in the Senate’s
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`record from the day it voted on its version of the Act. Cong. Rec. S1370 (March 8,
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`2011) (3d col.). Finisar is cited in support of the conclusion that “although different
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`categories of prior art are listed, all of them are limited to that which makes the
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`invention ‘available to the public.’” Id. (2d col.) (also stating at col. 1-2 that “[t]he
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`word ‘otherwise’ makes clear that the preceding clauses describe things that are of
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`the same quality or nature as the final clause”). See also Res. Conservation Group,
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`experimental is whether there was a secrecy obligation in connection with the sale
`or offer. E.g., Allen Eng’g, Inc. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed.
`Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357 (Fed. Cir.
`2002) (Linn, J., concurring)). Determining whether a sale was commercial or
`experimental requires fact-intensive discovery and the associated expense, both of
`which Congress sought to minimize when enacting section 102(a)(1), as noted
`above.
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`LLC v. United States, 597 F.3d 1238, 1245 (Fed. Cir. 2010) (holding that the
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`language “in connection with a procurement or a proposed procurement” at the end
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`of a statutory paragraph applied to all preceding antecedents, and not only to the one
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`immediately preceding it).
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`Further, as also recognized in the Congressional Record on the same day,
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`Cong. Rec. S1370 (March 8, 2011) (3d col.), courts have consistently interpreted
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`such an “otherwise” or “other” clause to limit the meaning of preceding clauses. For
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`example, Strom v. Goldman, Sachs & Co., 202 F.3d 138 (2d Cir. 1999), overruled
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`on other grounds, Pereira v. Farace, 413 F.3d 330, 340 (2d Cir. 2005), construed
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`the phrase “may include * * * back pay, * * * or any other equitable relief” and
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`held:
`
`The position of the phrase “or any other equitable relief”’
`in the sentence in which it appears indicates that it
`modifies one or both of the two specific remedies referred
`to just before it in the same sentence * * * [T]he use of the
`words “other” immediately after the reference to back pay
`and before “equitable relief” demonstrated Congress’
`understanding that the back pay remedy is equitable in
`nature.
`
`Id. at 146–47.
`
`Similarly, Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294
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`(S.D.N.Y. 2000), construed the phrase “offer to the public, provide, or otherwise
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`traffic in any technology” and concluded:
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`The statute makes it unlawful to offer, provide or
`otherwise traffic in described technology. To ‘traffic’ in
`something is to engage in dealings in it, conduct that
`necessarily involves awareness of the nature of the subject
`of the trafficking. * * * The phrase ‘or otherwise traffic i