Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (17-1229)

argument 17-1229

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

Supreme Court of the United States 53 min 6 speakers 8 chapters transcribed 7 days ago official recording ↗

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What is the Supreme Court’s interpretation of the “on‑sale” bar under the America Invents Act?

John G. Roberts 0:00

We'll hear argument next in case seventeen twelve twenty nine, Helsin healthcare versus

Unknown 0:05

Tava. Mr. Shamnagam? Thank you, Mr. Chief Justice, and may it please the court. In the America Invents Act, Congress transformed the nation's patent laws. As part of its shift from a first to invent to a first to file system, Congress revised the definition of prior art and clarified the proper understanding of the phrase on sale. The on sale bar, like the other bars in the definition, reaches only a disclosure that makes the claimed invention available to the public. That interpretation is consistent with the plain text of the definition and its legislative history. It's consistent with the predominant objective of the on sale bar, as repeatedly articulated by this court. namely to preserve the public's access to inventions that have entered the public domain.

John G. Roberts 0:50

Well it might not be consistent with the actual meaning of the word sale though, right? The critical five years. If you're if something's on sale, it doesn't have to be on sale to everybody. It could be just I'm gonna sell something to you.

Unknown 1:02

Well the critical phrase, Mr. Chief Justice, is not sale, it is on sale. And I do think that the more natural understanding of on sale is that something has been made available for purchase by the public. And so for instance, if after this argument in the lawyer's lounge I turned to my friend Mr. J and I say, I see that you didn't bring a coat today, I'll sell you my coat for five dollars. I'm not sure that that would be putting my coat on sale in the same way that it would be if I turned around to the audience and said, I'll sell this coat to the highest bidder. Why not? I don't

Brett M. Kavanaugh 1:34

I don't it And if it's sold, it's pretty hard to say something that has been sold was not on sale.

Unknown 1:41

I think that the concept of on sale, Justice Kavanaugh, conveys some sense of broader availability, or at a minimum that there's some ambiguity about that. That is to say, I think I'm willing to recognize that perhaps you could make the argument that even offering something privately to one person could be said to be putting something on sale. Our view as a textual matter is that to the extent that there is any other thing.

Brett M. Kavanaugh 2:10

It's on sale.

Unknown 2:13

I think I would say, Justice Kavanaugh, that something can be on sale regardless of how widely it is in fact sold. So for instance, if you put something in the shop window and no one in fact wants to buy it and no one in fact buys it, it can still be on sale. But again, to the extent that there's any doubt about the phrase on sale in Vacuo, I think that that doubt probably was eliminated before the AIA by the surrounding phrases, all of which by respondents recognition convey some notion of public availability. And then any lingering doubt was completely completely removed by the inclusion of the catch all phrase in the AIS.

Stephen G. Breyer 2:52

You said that the uh opinions of this court support you But of course you know perfectly well is we only have just a story. uh learned hand. uh and I guess various others, maybe John Marshall for all I know, who has said that that isn't the sole purpose, that the purpose of this on sale rule, including private sales, is to prevent people from benefiting from their invention prior to and beyond the twenty years that they're allowed. Just a lot of people. I've read that. I Had my clerk look it up, seems right.

Unknown 3:33

Justice Bryor, respondents' whole argument before this court, I would respectfully submit, is really a junior varsity version of congressional ratification. No fewer than six times in their brief they refer to the two centuries of precedent. I would respectfully, vigorously disagree with that, particularly with regard to this court's decisions, and let me get to Judge Hahn, but let me start with this court's decisions, starting with Justice Story's opinion in Pennick. This court Has consistently articulated the predominant purpose of the on-sale bar as preserving the public's access to inventions that have entered the public domain. Indeed, if you go back to Penick, Justice's story, at a time when the on-sale bar was not yet codified in the statute, articulated the purpose in precisely that term, both with regard to the public use bar and with regard to the on-sale bar.