Stoll: Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint

In our newest Patently-O Patent Law Journal article, former Commissioner of Patents Robert Stoll considers and rejects the call for legislative reforms that would weaken the estoppel associated with post-grant review filings.  In the abstract, Stoll argues:

Critics of this [estoppel] provision seek to strike reasonably-could-have-raised estoppel as applied to subsequent civil litigation. This position is mistaken, because limiting the estoppel only to issues actually raised in the post-grant review would encourage petitioner gamesmanship to the detriment of (i) the courts, whose busy dockets will be burdened with more complex and time-consuming validity questions that the petitioner reasonably could and should have raised in the post-grant review, (ii) the USPTO, whose post-grant review decisions will lose their finality with respect to the same petitioner vis-à-vis a later court challenge, and (iii) the patent owner, who will be forced to defend the validity of the same patent claim against the same petitioner in piecemeal proceedings rather than in a single forum. Post-grant review estoppel, as originally enacted, should be maintained for these and other reasons discussed in this Article.

Read the article: Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Review 1 at /media/docs/2012/11/stoll.2012.estoppel.pdf

Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act

In our newest Patently-O Patent Law Journal article, former Xerox patent counsel Paul Morgan highlights two important ambiguities in the new 35 U.S.C. § 102(a)(1) as defined by the Leahy-Smith America Invents Act. This provision replaces Sections 102(a) and 102(b) and, beginning in March 2013 will serve as the fundamental definition of prior art in the US patent system. Under the new statute, no patent can issue if "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." The language "otherwise available to the public" is new to the patent statute. Morgan makes the counterintuitive case that the catchall phrase actually serve the purpose of limiting limit the scope of prior art under the statute. In particular, the language suggests that the other types of art identified in the statute are also "available to the public." If so, this statutory change could be seen to overrule doctrines that bar patent rights based upon secret commercialization by the patentee. See, for example, Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F. 2d 516, 520 (2nd Cir. 1946).

Read the article: Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Review 29.  Download Morgan.2011.AIAAmbiguities

 

Sarnoff: Derivation and Prior Art Problems with the New Patent Act

In a new Patently-O Patent Law Journal essay, Professor Joshua Sarnoff (DePaul) highlights a set of important problems in the Leahy-Smith America Invents Act. The essay, titled Derivation and Prior Art Problems with the New Patent Act focuses primarily on the elimination of 35 U.S.C. § 102(f) and its implications regarding the patentability of material that was either wholly or partially derived from another source.

Legislation sometimes is enacted that obviously requires either immediate revision or creative administrative and judicial interpretation.  The new Leahy-Smith America Invents Act’s derivation and prior art provisions fall in that category.  Whether or not the move from a first-to-invent to a first-inventor-to-file system is viewed as good policy and as authorized by the Constitution, the particular changes made to the prior art provisions may not prevent or invalidate patents on inventions derived from others, i.e., when the applicant has obtained knowledge of an invention from another, original inventor and then files for a patent on the same or a similar invention.  In particular, obvious inventions made with unauthorized derived knowledge will now be patentable, given the elimination of prior art section § 102(f).  Absent creative interpretations by the U.S. Patent and Trademark Office (PTO) and the courts, the new derivation proceedings will not prevent a first filer from obtaining a patent even if the first filer’s invention is merely an obvious extension of information derived from another.  Further, the new act adds a narrow and poorly understood category of prior art that may generate years of needless litigation to re-settle the currently well-understood boundaries of the public domain.  I discuss these problems in detail below. 

There is some hope that Congress and the Administration will take Professor Sarnoff’s concerns to heart. 

Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Review 12 at /media/docs/2011/10/sarnoff.2011.derivation.pdf

 

 

Bernard Chao: Not So Confidential: A Call for Restraint in Sealing Court Records

University of Denver law professor Bernard Chao argues here that courts should do more to ensure open access to patent litigation documents. The Court of Appeals for the Federal Circuit already requires the parallel submission of non-confidential versions of any briefs filed under seal. Professor Chao argues that same approach could work in the district courts and would go a long way in solving the current problem of overly-sealed records.

Cite as Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent L.J. 6 at /media/docs/2011/07/chao.sealedrecords.pdf

 

Levi & Sweetland: The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC): Unsound, Unmeasured, and Unauthoritative

In March 2011, the FTC issued a Report entitled “The Evolving IP Marketplace:  Aligning Patent Notice and Remedies with Competition” (Report). In it, the FTC recommends that the ITC adopt the view that “only those licensing activities that promote technology transfer ‘exploit’ patented technology within the meaning of Section 337, and therefore satisfy the domestic industry requirement.” Also, the FTC recommends that the ITC “incorporate concerns about patent hold-up, especially of standards, into the decision of whether to grant an exclusion order in accordance with the public interest elements of Section 337.”

In this essay, Benjamin Levi and Rodney Sweetland review the FTC's recommendations for FTC action and argue that "the recommendations appear to be outcome-driven, as they overlook legal and policy-based factors that counsel against implementation of the recommendations." 

Cite as Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent L.J. 1, at /media/docs/2011/04/levi.ftcunsound.pdf

Kevin Collins: An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories

On August 2, 2010, the Federal Circuit affirmed the district court’s summary judgment of patent invalidity in King Pharmaceuticals, Inc. v. Eon Labs, Inc. King Pharmaceuticals is most notable for its extension of the printed matter doctrine from objects claims that recite written texts as limitations to method claims that recite speech acts as limitations.

This Essay proceeds in three parts. Part I summarizes the King Pharmaceuticals opinion. Part II argues that the opinion was correctly decided, and it offers an original thesis about the role that the printed matter doctrine should play to enforce patentees’ disclosure obligations and preserve the deep structure of the Patent Act. Assuming that King Pharmaceuticals was correctly decided, Part III addresses the necessary next step in the continuing refinement of the printed matter doctrine. The Federal Circuit must explain why claims like the claim at issue in Prometheus Laboratories v. Mayo Collaborative Services are novel.

Cite as Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent L.J. 111 at /media/docs/2010/08/Collins.KingPharma.pdf.

Robert Matthews: When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking

Robert Matthews discusses the law controlling false-marking suits when multiple plaintiffs sue for the same act of false marking. Matthews extrapolates the case-law to make two primary points: (1) a false-marking defendant cannot be subjected to multiple penalties for the same act of patent false marking; and (2) based on the first-to-file tradition, federal comity, and standing principles, the second-filed suit should be dismissed. 

Cite as Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent L.J. 95 at www.patentlyo.com/matthews.falsemarking.pdf.

Kristen Osenga: Patent Office Fast Track

Professor Kristen Osenga (Richmond) has written a new essay for the Patently-O Patent Law Journal entitled The Patent Office's Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89.  In a 2005 article, Professor Osenga proposed a multi-tiered approach to patent examination. In her Patently-O essay, Professor Osenga explains why her suggestions are “better than the system proposed by the Patent Office.”

  • Download the Patently-O Patent Law Journal Essay: [File Attachment: Osenga.pdf (32 KB)].
  • Cite as Kristen Osenga, The Patent Office's Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89.
  • Read Osenga’s 2005 Article titled Entrance Ramps, Tolls, and Express Lanes – Proposals for Decreasing Traffic Congestion in the Patent Office [Link].

Peter Menell: Authority of the International Trade Commission

We have published a new Patently-O Patent L.J. essay by Berkeley Law School professor Peter Menell that discusses the Section 337 authority of the International Trade Commission (ITC).

The ITC now conducts more full patent adjudications on an annual basis than any district court in the nation. The ITC’s six Section 337 administrative law judges (ALJs) focus almost exclusively upon patent investigations, making the ITC the only specialized trial-level patent adjudication forum in the nation. Given the importance of international trade to high technology markets, the ability to exclude goods at the border provides a valuable strategic option for patent owners. 

Consequently, all patent litigators and in-house patent counsel should be familiar with the ITC’s Section 337 authority. This article summarizes its key elements and calls attention to an upcoming conference – The ITC Comes to Silicon Valley (May 18, 2010) in San Jose – and the development of a comprehensive, up-to-date treatise: Section 337 Patent Investigation Management Guide.

Documents:

Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis. 

There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.

Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72.

An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology

Following on the heels of the Federal Circuit en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., Professor Kevin Collins asks "What next?"

The nine-judge majority reaffirms that the written description requirement applies to original claims and that its scope and purpose are to be determined by examining the relevant Federal Circuit precedent. Indeed, but for the fact that it removes the uncertainty caused by the vociferous dissents in earlier written description opinions, the en banc opinion in Ariad could readily be framed as a non-event in the evolution of the written description requirement. However, the importance of removing the uncertainty about the existence of a written description requirement as applied to original claims should not be lightly dismissed. Before Ariad, the uncertainty channeled much of the scholarly conversation about the written description doctrine into a binary debate, pitting those who it applied to original claims versus those who believed that it did not. After Ariad, the stage is now set for greater participation in more nuanced conversations about the role that the written description requirement does and should play in curtailing patent protection. Ariad may end one facet of the debate over written description, but it would be a lost opportunity if Ariad were interpreted to end the debate over written description more broadly and cut off these more nuanced conversations.

In this short (but nuanced) essay, Professor Collins suggests that the next steps in patent law scholarship should adopt a "trans-doctrinal approach" that reaches the broader purposes and limitations of the law rather than being confined to doctrinal silos.  The essay suggests that this holistic approach may also be helpful in explaining a perception that patent law varies greatly according to the area of technology. [Download Collins.Ariad]

Cite as Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24.

Investigating Patent Law’s Presumption of Validity—An Empirical Analysis

Etan Chatlynne reports post-KSR patent validity decisions with a special focus on the presumption of validity and the clear and convincing standard for rebutting that presumption. He finds that the presumption and evidentiary standard did not affect thirty-eight of forty-five (84%) Federal Circuit invalidity determinations made between April 2008 and June 2009. The standards may have affected the remaining seven of forty-five (16%) determinations. [Download Chatlynne.PresumptionofValidity.Final]

Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37.

Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards

Michael Kasdan and Joseph Casino discuss recent shifts in reasonable royalty jurisprudence with a particular focus on the recent cases of Cornell, Lucent, and Lansa.  Together, these decisions "indicate an emerging trend to more carefully scrutinize the evidentiary and economic basis of reasonable royalty-based patent damages awards in the setting of the appropriate royalty base, the application of the entire market value rule, and the calculation of the appropriate royalty rate." [Download Kasdan.Casino.Damages]

Cite as Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24.

Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases

Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 PATENTLY-O PATENT LAW JOURNAL 19 (2010). 

Abstract: Federal Circuit patent jurisprudence has typically focused on Federal Circuit law and Federal Circuit precedent. However, recent Supreme Court decisions such as eBay v. MercExchange, MedImmune v. Genentech, MGM v. Grokster, and KSR Intl. v. Teleflex cases have challenged that default position. These cases represent a directive from the Supreme Court that the interpretation of patent law doctrine requires a consideration of history and doctrines that arise from other areas of law. In this essay, I examine the recent Federal Circuit decision of SEB v. Montgomery Ward and consider whether that case represents a shift in Federal Circuit jurisprudence toward an increased influence of non-patent considerations when deciding patent cases and patent issues.

Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity

Gregory Landis and Loria Yeadon discuss the role of ethnic diversity in the process of choosing upcoming nominees for the Court of Appeals for the Federal Circuit. Read Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010). Read the Article here: [Nominee Diversity]