In Celanese International Corp. v. ITCThe Federal Circuit considered whether the America Invents Act (“AIA”) modified the prohibition on sales to provide that the sale of a product manufactured using a secret process no longer invalidates subsequent claims to that process.

Patent owner Celanese International Corp. appealed a decision by the International Trade Commission (“ITC”) that found Celanese’s claims invalid under the Section 102 sales ban. Celanese sold Ace-K, an artificial sweetener produced using a secret process, in the United States more than a year before the effective filing date of Celanese’s patents. Celanese argued to the ITC that the AIA had modified the sales ban so that sales of Ace-K did not trigger the ban. The ITC disagreed, and Celanese appealed.

The Federal Circuit found that the AIA did not modify the sales ban and that Celanese’s pre-2015 sales of Ace-K using a secret process invalidated later asserted claims to the process. Under established precedent before the AIA, sales of products made using a secret process before the critical date would preclude patentability of that process.

First and foremost, the Federal Court of Justice applied the reasoning of the Supreme Court’s decision in Helsinn Healthcare SA v Teva Pharm. USA, Inc.586 U.S. 123 (2019), which involved reinstating the original patent statute’s “on-sale” language in the AIA. In that decision, the Supreme Court assumed that Congress had adopted the previous judicial interpretation of the term “on sale” when it reinstated the same language in the AIA, and rejected the argument that the AIA required a sale to disclose the details of an invention to the public in order to trigger the on-sale prohibition. The Federal Circuit applied the same presumption to Celanese’s sale of Ace-K, which occurred using a secret process more than a year before the effective filing date of the asserted patents.

The Federal Circuit also rejected Celanese’s arguments that the AIA changed the sales ban because of textual changes in Section 102(a), other sections of the AIA, and legislative history. For example, the court found that the fact that there were some statutory changes in Section 102(a) did not change the meaning of the sales ban or indicate an intent of Congress to repeal existing law. Nor did language in other sections of the AIA relating to infringement and third-party claims affect the interpretation of the sales ban. The court also held that Celanese’s cited views of individual legislators, taken out of the context of the years-long legislative process, were insufficient to establish an intent of Congress to change the meaning of the sales ban.

The Federal Circuit therefore affirmed the ITC’s decision that Celanese’s patents were invalid and awarded costs to the appellant.

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