Supreme Court Affirms AIA Did Not Change Meaning of On-Sale Bar

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  • January 23, 2019

On January 22, 2019, the U.S. Supreme Court held that the 2011 America Invents Act (AIA) did not narrow the scope of the on-sale bar in patent cases, leaving intact the rule that confidential sales of an invention can be used to invalidate a patent.  In the matter of Helsinn Healthcare v. Teva Pharmaceuticals, the Court affirmed a Federal Circuit court decision that invalidated a Helsinn nausea drug patent, which Helsinn claimed Teva had infringed. Helsinn had entered into a licensing agreement with MGI Pharma, which the Federal Circuit ruled triggered the on-sale bar, invalidating the patent.

In the opinion, which was by unanimous decision, Justice Clarence Thomas wrote, "Given that the phrase 'on-sale' had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent." The decision resolves questions about the scope of the on-sale bar that have been raised since the AIA was enacted.

To read the analysis posted to SCOTUSblog

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