Affirming the Federal Circuit, the Supreme Court on January 22 held that post-AIA section 102(a)(1)’s provision,
A person shall be entitled to a patent unless . . . 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,
(emphasis added), does not require that the invention “on sale” be “available to the public.”
To be sure, the “on sale” bar historically has not required public availability, at least according to the Federal Circuit. (As the Supreme Court acknowledged, the Court itself had not addressed that precise question.) It may be true, as the Court suggested, that Congress did not mean to upset the “well-settled” meaning of “on sale” when it enacted the AIA in 2011. And it may be true, as Teva argued, that requiring availability to the public to qualify as “on sale” would be bad policy, since it might enable secret sales having the practical effect of extending the patent term.
But none of that matters much (if at all) analyzed in pure textualism terms. Before the AIA, the pertinent statute provided
that a patent could not issue if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.”
“On sale” and “public use” then were connected disjunctively. Now, through “otherwise,” they are likened.
We have commented (here and here) on the Court’s recent foray into textualism. Here, it ran aground. According to the Court, “[t]he addition of ‘or otherwise available to the public’ is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term ‘on sale.’” Query how much more, besides picking the words in the statute, Congress had to do.