Celanese Int'l Corp. v. Int'l Trade Comm'n

111 F.4th 1338

CELANESE INTERNATIONAL CORPORATION, Celanese (Malta) Company 2 Limited, Celanese Sales U.S. Ltd., Appellants v. INTERNATIONAL TRADE COMMISSION, Appellee Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC, Intervenors.

2022-1827

United States Court of Appeals, Federal Circuit

Decided: August 12, 2024

Appeal from the United States International Trade Commission in Investigation No. 337-TA-1264.

Deanne Maynard, Morrison & Foerster LLP, Washington, DC, argued for appellants. Also represented by Seth W. Lloyd, Brian Robert Matsui; Aaron Gabriel Fountain, Austin, TX.

Benjamin S. Richards, Office of the General Counsel, United States International Trade Commission, Washington, DC, argued for appellee. Also represented by Dominic L. Bianchi, Wayne W. Herrington.

Nicole A. Saharsky, Mayer Brown, LLP, Washington, DC, argued for intervenors. Also represented by Clark Bakewell, Gary Hnath, Bryan Nese, Minh Nguyen-Dang; Scott McMurry, New York, NY.

Brian Pandya, Duane Morris LLP, Washington, DC, for amicus curiae National Association of Manufacturers.

Before Reyna, Mayer, and Cunningham, Circuit Judges.

Reyna, Circuit Judge.

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. appeal a decision of the United States International Trade Commission. The International Trade Commission found Celanese's asserted patent claims invalid under the on-sale bar, 35 U.S.C. § 102(a), because Celanese sold products made using the patented process more than one year before the effective filing dates of the asserted patents. We affirm.

BACKGROUND

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, "Celanese") filed a petition before the United States International Trade Commission (the "Commission"), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC (collectively, "Jinhe") and other entities violated 19 U.S.C. § 337. See In the Matter of Certain High-Potency Sweeteners, Processes for Making Same, & Prod. Containing Same, Inv. No. 337-TA-1264, Order No. 29, 2022 WL 142328, at *1 (Jan. 11, 2022) ("ITC Decision"); J.A. 53. Celanese alleged that Jinhe and other entities were importing Ace-K (an artificial sweetener) made using a process that infringed Celanese's patents. J.A. 63. Relevant to this appeal, Celanese asserted claims 11 and 27 of U.S. Patent No. 10,023,546, claims 7, 28, and 33 of U.S. Patent No. 10,208,004, and claims 1, 19, and 34 of U.S. Patent No. 10,590,095.¹ITC Decision, 2022 WL 142328, at *1, *4. The asserted patents each have an effective filing date of September 21, 2016, and are thus governed by the America Invents Act ("AIA"). Id. at *1.

It is undisputed that Celanese's patented process was in secret use in Europe before the critical date of September 21, 2015, i.e., one year before the effective filing date of the asserted patents. Id. at *3. It is also undisputed that Celanese had sold Ace-K made using the patented process in the United States before the critical date. Id.

Jinhe moved for a summary determination of no violation of 19 U.S.C. § 337 on the ground that the claims at issue were invalid under the on-sale bar provision, 35 U.S.C. § 102(a)(1). According to Jinhe, because Celanese sold Ace-K more than one year before it applied for the asserted patents, those sales triggered the on-sale bar. Celanese did not dispute that under pre-AIA precedent, sales of products made using a secret process triggered the on-sale bar, precluding the patentability of that process. See ITC Decision, 2022 WL 142328, at *3-4. Rather, Celanese argued that the AIA changed pre-AIA law such that its pre-2015 sales of Ace-K made using its secret process would not trigger the on-sale bar. See id. at *3.

The presiding Administrative Law Judge ("ALJ") rejected Celanese's argument, concluding that Celanese's prior sales triggered the on-sale bar and that the AIA did not overturn settled pre-AIA precedent. In arriving at that conclusion, the ALJ found the Supreme Court's decision in Helsinn instructive. Id. (citing Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 586 U.S. 123, 139 S.Ct. 628, 202 L.Ed.2d 551 (2019)). Under well-settled pre-AIA precedent, the ALJ explained, a patentee's sale of products made using a secret process, as here, would trigger the on-sale bar to patentability. Id. at *3 (collecting relevant pre-AIA precedent). In Helsinn, the ALJ continued, the Supreme Court addressed whether Congress altered the on-sale bar when it enacted the AIA. See id. at *5. The Supreme Court held that Congress did not. Rather, as the ALJ noted, the Helsinn Court concluded that "when Congress reenacted the same language in the AIA, it adopted the earlier judicial construction of that phrase." Id. (quoting Helsinn, 586 U.S. at 131, 139 S.Ct. 628). The ALJ found the Court's reasoning applied equally to the facts here and supported that the AIA did not overturn long-established judicial precedent as applied to the facts here. Id.

The ALJ considered Celanese's contrary arguments and found them unpersuasive. Celanese relied on the AIA's textual changes, primarily Section 102's substitution of "claimed invention" for the pre-AIA reference of "invention." Id. at *6. This change, Celanese argued, meant that the AIA on-sale bar could only be triggered by sales of the claimed process itself, not by sales of products made using the claimed process. Id. The ALJ found Celanese's position lacked merit. Id. Pre-AIA precedent, the ALJ explained, recognized the distinction between a process and a product of a claimed process. Id. That precedent established that "a product could embody commercialization of a method invention sufficiently to trigger the on-sale bar." Id. Following the reasoning in Helsinn, the ALJ concluded that the addition of the word "claimed" was insufficient to show the AIA overturned settled law as applied here. Id.

The ALJ also rejected Celanese's argument on the AIA's removal of pre-AIA Section 102(g) and the expansion of prior-user rights under Section 273. Id. at *6-7. The ALJ reasoned that these changes were driven by distinct policy rationales, and those sections addressed issues unrelated to patentees' actions or the on-sale bar. Id. Lastly, the ALJ rejected Celanese's argument on legislative history. Id. at *7-8. Evaluated in context, the ALJ reasoned, the passages cited by Celanese did not show that Congress "thr[ew] out the [existing] understanding of the on-sale bar ..., even if a few senators wished it were otherwise." Id. at *8.

The ALJ concluded that the AIA did not alter the pre-AIA rule that "a patentee's sale of an unpatented product made according to a secret method triggers the on-sale bar to patentability." Id. at *9. Accordingly, the ALJ held that Celanese's claims at issue were invalid because Celanese sold Ace-K made using its secret process more than one year before it sought the asserted patents. Id. On that basis, the ALJ granted Jinhe's motion for a summary determination of no violation of 19 U.S.C. § 337.

Celanese petitioned for review of the ALJ's decision by the Commission, which the Commission denied. See In the Matter of Certain High-Potency Sweeteners, Processes for Making Same, & Prod. Containing Same, Inv. No. 337-TA-1264, 2022 WL 1043922, at *1 (Apr. 1, 2022). The ALJ's decision thus became the final decision of the Commission.

Celanese appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(6).

DISCUSSION

"Application of the on-sale bar under 35 U.S.C. § 102 is ultimately a question of law that we review de novo." Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc. ("Helsinn I"), 855 F.3d 1356, 1363 (Fed. Cir. 2017), aff'd, 586 U.S. 123, 139 S.Ct. 628, 202 L.Ed.2d 551 (2019).

The question before this court is whether the AIA changed Section 102's on-sale bar such that Celanese's pre-2015 sales of Ace-K made using a secret process would not invalidate its later-sought claims on that process. Consistent with the Supreme Court's holding in Helsinn, we agree with the Commission that the AIA did not effect such a change.

I.

Congress first codified the on-sale bar in the Patent Act of 1836. See Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, 119. Since then, every patent statute has retained the on-sale bar as a condition of patentability. Helsinn, 586 U.S. at 129, 139 S.Ct. 628; Medicines Co. v. Hospira, Inc., 827 F.3d 1363, 1371-73 (Fed. Cir. 2016) (en banc) (reviewing historical development of the on-sale bar). Before the AIA, Section 102(b) of the predecessor statute barred one from patenting an invention that was "in public use or on sale in this country, more than one year prior to the date of the application for patent." 35 U.S.C. § 102(b) (2006) (emphasis added); see also id. § 102(b) (1952).

Interpreting the pre-AIA "on sale" provision, this court has long held that sales of products made using a secret process before the critical date would bar the patentability of that process. In D.L. Auld, a case we decided four decades ago, we addressed facts strikingly similar to what we have here. D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147 (Fed. Cir. 1983). D.L. Auld involved Auld's patent drawn to a method of making cast decorative emblems. Id. at 1145-46. More than one year before Auld applied for the patent, Auld used that method to make sample emblems and offered them for sale, while keeping the method secret. Id. at 1147. We found Auld's patent invalid. Id. We explained that the intent behind the on-sale bar is to preclude an inventor's attempt to profit from commercial exploitation of his invention for more than one year before seeking a patent. Id. (citing Metallizing Eng'g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2nd Cir. 1946)). Because Auld offered for sale emblems made using its method and attempted to profit from such use before the critical date, Auld forfeited "any right to the grant of a valid patent on the method." Id. We...