BlogLine

U.S. Supreme Court denies petition regarding on-sale bar for secret processes

5/7/25

By: James V. Lovett

On April 28, 2025, the U.S. Supreme Court declined to hear an appeal in Celanese International Corp. v. International Trade Commission. 111 F.4th 1338, 1340 (Fed. Cir. 2024), cert. denied sub nom. Celanese Int’l Corp. v. ITC, 24-635, 2025 WL 1211791 (U.S. Apr. 28, 2025). This case involved the ITC’s ruling that secret sales of products made by a claimed process more than one year before the patent claims were filed invalidated the patent. This refusal to hear the petition cements a line of case law which includes the Supreme Court’s prior ruling in Helsin Healthcare v. Teva Pharmaceuticals.  

In this case, Celanese International Corporation and a number of affiliated entities (“Celanese”) filed an action with the ITC against Anhui Jinhe Industrial Co. and related entities (“Anhui Jinhe”), alleging unfair competition based on utilization of a process to make artificial sweetener that infringed Celanese’s patents. The relevant patents had an effective date of September 21, 2016, and so were governed by the America Invents Act (“AIA”). However, it is clear that Celanese had secretly been using the patented process in Europe prior to September 21, 2015, and had sold products resulting from this process in the United States prior to this date. Since 1836, every patent statute in force has included an on-sale bar, which precludes the issuance of a patent if the invention was on sale or otherwise available to the public more than one year before the date of the application. See Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S. Ct. 628, 633 (2019); 35 U.S.C. § 102(b) (2006 *130 ed., Supp. IV); § 102(a)(1) (2012 ed.). 

Celanese attempted to avoid the on-sale bar, arguing, among other things, that the claimed process was not on sale, rather, the resulting good was on sale and that the good itself was not claimed (only the process). Celanese further argued that because there was no disclosure of the process itself in its sales (and therefore remained secret), the on-sale bar would not be triggered. These two arguments boiled down to a single inquiry – what does it mean for a process to be “on-sale” for purposes of the § 102 bar? The ITC held that the rationale behind the on-sale bar is to preclude one from commercially exploiting an invention and then continuing the exploitation through a patent, which would artificially extend the patent term. Whether it is the process or the product on sale, the commercialization of the invention is the key factor. Specifically, the ITC noted that “for patented processes, the on-sale bar applies when one commercially exploits the process by seeking compensation from the public for carrying out that process before the critical date.” Accordingly, the ITC invalidated Celanese’s patents because of its prior utilization of the claimed process.  

The Celanese decision, and the U.S. Supreme Court’s subsequent decision to leave that decision in place, underscores the importance of seeking patent advice quickly, as business activities can unintentionally become a bar to later protections. For legal practitioners, this case reinforces that assessing all uses of a claimed invention is critical in formulating a strategy in infringement cases, as well as in assessing available protections for clients.  

If you have any questions about the Celanese case, patent protections or other intellectual property matters, please contact James Lovett at james.lovett@fmglaw.com, practicing in FMG’s Intellectual Property Law Practice Team.  

Information conveyed herein should not be construed as legal advice or represent any specific or binding policy or procedure of any organization. Information provided is for educational purposes only. These materials are written in a general format and not intended to be advice applicable to any specific circumstance. Legal opinions may vary when based on subtle factual distinctions. All rights reserved. No part of this presentation may be reproduced, published or posted without the written permission of Freeman Mathis & Gary, LLP.