Could you be more specific about this? What exact language gives you reason to suppose that the Court might entertain that notion. The holding is wholly at odds with such a notion.

No, it’s not.

More than 20 years ago, this Court determined that an invention was “on sale” within the meaning of an earlier version of §102(a) when it was “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. WellsElectronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public.

Statement of fact as to what the law was. Note that the second sentence, like the first one, is a statement of fact. We’re not in the analysis step yet.

In light of this earlier construction,

Statement of criticality of fact.

we determine that the reenactment of the phrase “on sale” in the AIA did not alter this meaning.

Rule.

Accordingly, a commercial sale to a third party who is

required to keep the invention confidential may place the

invention “on sale” under the AIA.

Application of Rule/Conclusion.

We said a thing, we conclude the thing wasn’t changed. Previous thing applies. To highlight this, jump to section IIB, which I won’t quote in its entirety here, but suffice to say it is “We said a thing” (pgs. 6-7, first para), “CAFC expanded on our thing” (pg. 7 second para), “Thing wasn’t changed, previous thing applies” (Pg. 7, last para to pg. 8)

The opinion could have been over after Section IIB. That’s all the lower courts need in order to properly apply the rule. But there’s a Section III. The denouement is always an invitation to the next debate.

Helsinn does not ask us to revisit our pre-AIA interpretation of the on-sale bar. Nor does it dispute the Federal Circuit’s determination that the invention claimed in the ’219 patent was “on sale” within the meaning of the preAIA statute.

I’m editorializing here, but Statement of critical fact.

Because we determine that Congress did not

alter the meaning of “on sale” when it enacted the AIA,

Rule.

we hold that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).

Application of Rule, Conclusion.

Bluntly, the question decided was “did the AIA change the meaning of the on sale bar.” i.e. is Pre-AIA and post-AIA non-harmonized? The answer is no.

What was the previous meaning of the on sale bar? You’re told up front. More than 20 years ago, this Court determined that an invention was “on sale” within the meaning of an earlier version of §102(a) when it was “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. WellsElectronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public.

So why do these words exist? Helsinn does not ask us to revisit our pre-AIA interpretation of the on-sale bar. Nor does it dispute the Federal Circuit’s determination that the invention claimed in the ’219 patent was “on sale” within the meaning of the preAIA statute.

The reason they exist is to point out that it is, at a minimum, the court is non-unanimous on whether this fact pattern is “on sale,” but the issue is not before them. There are some members of the court who agree that the CAFC correctly applied prior on sale jurisprudence, but that jurisprudence leads to the wrong conclusion on these facts. That’s why Section III exists.

Helsinn did hit on a persuasive argument, it just formulated it the wrong way, from the CAFC opinion:

Helsinn argues that the AIA did more than overrule the “secret sale” cases, and relies on the “otherwise available to the public” language in the statute and the floor statements. Helsinn argues that those statements suggest that the on-sale bar does not apply unless the sale “disclose[s] the invention to the public” before the critical date. 157 Cong. Rec. 3424 (2011) (remarks of Sen. Kyl). It urges that since the 0.25 mg dose was not disclosed, the invention was not disclosed and the on-sale bar does not apply. The suggestion is that Congress required that the details of the claimed invention be publicly disclosed before the on-sale bar is triggered.

That’s the critical fact that distinguishes the case from Pfaff and makes the Pfaff rule incomplete. In Pfaff the inventor disclosed the invention to TI, then sold embodiments of the invention to TI, so the sale to TI imparted enabling knowledge after conception (so no 102(a)) but before the 102(b) critical date. The argument that the AIA changed the law is unavailing. The persuasive argument (to at least some members) was that the on-sale bar does not apply, not because of the secrecy but because of the non-enabled disclosure, and the non-application would be in both pre-aia and aia cases.

The only Supreme support for on sale absent the knowledge actually transferring to the public is one sentence in Pennock. Pfaff’s citation to Pennock couches in terms of the public already having the knowledge. The fact that Pfaff did not include that as part of the rule is simply a statement of jurisprudential fact and not an endorsement that the test should not have it.