Federal Circuit Patent Update - January 29, 2019

Supreme Court Opinion

Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. (No. 17-1229, 1/22/19)

Thomas, J. Affirming judgement of invalidity of patent related to drug that treats chemotherapy-induced nausea and vomiting. Sale of an invention to a third party, who is obligated to keep the invention confidential, can qualify as prior art under the America Invents Act. "We granted certiorari to determine whether, under the AIA, an inventor's sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. [citation omitted]. We conclude that such a sale can qualify as prior art." The language "or otherwise available to the public," which was added to §102 by the AIA, did not change this result. "Because we determine that Congress did not alter the meaning of "on sale" when it enacted the AIA, we hold that an inventor's sale of an invention to a