Supreme Court on Patent Law 2013

The Supreme Court is scheduled to decide four intellectual property cases this term:

  • Bowman v. Monsanto (patent exhaustion in second generation of GM seeds)
  • Kirtsaeng v. John Wiley & Sons, Inc. (international copyright exhaustion)
  • Already, LLC v. Nike, Inc. (impact of limited covenant-not-to-sue on declaratory judgment jurisdiction in trademark law)
  • Gunn v. Minton (whether legal malpractice claims arising out of representation in a patent dispute should be heard by the Federal Circuit)

There are several more pending petitions for certiorari. The most notable of these is Association for Molecular Pathology (AMP) v. Myriad Genetics (patentability of isolated but naturally occurring human DNA). A second important pending petition is Retractable Technologies, Inc. v. Becton, Dickinson and Co. (de novo review of claim construction). More than a dozen other petitions have been filed or are likely within the next two months.

37 thoughts on “Supreme Court on Patent Law 2013

  1. wild and wholly BRI” is an oxymoron.

    The real question is how do you hold the Office to the “R” of BRI.

  2. Guest, obviousness is a question of law but anticipation is not?  

    May I suggest that you read up on where 103 came from.  It came from questions of novelty.  As discussed by Frederico, the law had, in '52, always recognized that novelty did not require the invention to be identically disclosed.  

    The issue of law aspects came out of the procedure under scire facias that derived from English practice.  Invalidity was tried to a court in as a matter of law.  However, the facts, to the extent they were disputed, were first tried to a jury at common law.  The record was then return to the court for a determination of validity as a matter of law.  

    If you trace the cases relied upon by Graham to their source, it goes back to this English procedure.

    Regarding triable issues of fact, every man has a right to assert that a patent is invalid on the grounds specified in 282.  These include that a patent is invalid over the prior art.  However, when the exact same evidence is proffered a second time, the result should not be different.  We are not talking here about infringement.  We are talking about validity and validity affects all.

    Next you contend that claim construction is an issue of fact …………  Really?  What fact?  The patent has a specification.  The patent has a prosecution history.  Documents speak for themselves.  Where are the factual issues?

    The law requires that a specification describe the invention, and the way of making and using it.  It requires claims to be clear, etc.  If the meaning of the claims cannot be easily understood from the record, they may be invalid.  But they should not be twisted like noses of wax in the words of White v. Dunbar.

    In the PTO, new made clear from citation to authority that BRI was an examination "tool."  It was not a rule of construction …at least not until Morris.  But Plager has recognized his error, and has called for an en banc review.

  3. I asked, not that I necessarily disagree with you; but rather, I don’t see the foundation for the Office not using the BRI up to the patent actually is allowed to issue, because until that point (more or less), the ability* to make an amendment is available to the applicant.

    *I put this in an asterisk as I think the original thought on effect-free amendments is a bit of a fallacy that has never been properly addressed.

  4. Blame Congress for making reexamination an ex parte process. The fact that it is ex parte seals the fate of any possible preclusion effects between litigation and ex parte reexamination.

    You say that invalidity is a matter of law, but it is not (except for 101). 102, 103, and 112 are all based on facts, with maybe one or two exceptions. The problem is that the facts can be argued differently and a fact-finder can come to a different conclusion, which necessarily affects the determination of invalidity. 103 is the only “legal” issue, and even that is based on underlying facts. That is why failure of invalidity defenses (except, I would argue, 101) should not be binding on all parties even when the same challenges are raised by other parties – because facts are in dispute.

    As for your comment on claim construction, I disagree with the premise that it is purely a matter of law, but even if it is, it is far from clear that a claim has one “correct” construction (the clear panel-dependence on appeal shows how that is far from true) that has any preclusive effect in later litigation.

  5. Anon, but essentially we were talking about is the level of proof needed to invalidate a patent claim.  It should be by clear evidence.  And it should be convincing.  The level of persuasion needed should be the same as that needed the court.  Which means, of course that the burden of proof between the courts and the PTO is the same so that when the same evidence is before both, there is only one right answer.

    The necessary consequence of this is that once a court has ruled on a piece of evidence, that evidence can no longer be the basis for re-examination.

  6. Anon, yes.  At that point, the applicant has had time to clarify the claims through amendment or argument.  The question then becomes what is the proper construction, not what is the most broad construction.,  I suggest you read Newman's concurring opinion.

  7. It was an obviousness case. The printed matter doctrine was not addressed.

    link to caselaw.findlaw.com

    Basically a pre-KSR horrorshow. Classic quote:

    the invention solves the long-standing problem of unsightly trash bags placed on the curbs of America, and, by fortuitous happenstance, allows users to express their whimsical or festive nature while properly storing g-rbage, leaves, or other household debris awaiting collection.

    In fact, the only “expression” taking place is the one on the bag, which is put there by the manufacturer. “Expression” … hmmm. Why does that term ring a bell?

  8. “On 101, until Bilski, the Federal Circuit got it wrong because it was in open defiance of the Supreme Court.”

    Are you referring to In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008),?

    If so, you should has said until Bilski, the Federal Circuit got it right, since it was that case that the Supreme Court reversed for making the MoT the sole test.

  9. and it should not lightly be invalidate except on clear and convincing evidence.

    Blame Congress then for providing a path of removing that clear and convincing requirement by invoking an error-control mechanism that only needed a “significant new question.”

  10. Ned,

    Are you saying that on second office actions (assuming no claim amendments), that the Office must drop its use of BRI?

  11. Question for the resident “experts”: what was the “functional” relationship of that face to the gxrbage bag?

    The face scares away potential thieves that might otherwise carry away that gxrbage bag? (We can’t say gxrbage on this site?)

    I vaguely remember the case, but not its details. Was the issue obviousness, and did they address the printed matter doctrine.

  12. IANAE, you really need to read the recent case where Plager himself, the author of Morris, said in effect that it was wrong after the en banc court held that claim construction was a matter of law.

  13. IANAE, even Plager recognizes his mistake in Morris.  Once the en banc Federal Circuit held claim construction was a matter of law, that in effect overruled Morris.  

    There is one claim construction.  One.  Not one for the PTO and a different one for the courts.

    As explained by Newman, BRI is a examination "tool" that can only be used in an initial review determine prior art.  Amendments or arguments then clarify the claims and the claims then have their final form.  At this point they are construed the same way as in courts.

  14. Not one per defendant or a different one for the PTO.

    When did they ever say there isn’t a different claim construction for the PTO? Are you sure they didn’t actually say the opposite of that?

  15. Guest, while everyone has a right to his defense, when a particular issue is one of law and it has been decided by a controlling court, such as the Federal Circuit or the Supreme Court, I daresay that lower courts or a second panel of the same court cannot come to a different result.  I am sure that if this precise issue were ever presented to the US Supreme Court, they would clearly determine that the prior holding on an issue of law would be binding on future courts unless overturned en banc.

    The Federal Circuit has recently noted that claim construction is a issue of law as well.  There is only one proper claim construction.  One.  Not two.  Not one per defendant or a different one for the PTO.  One.  Why?  It is a matter of law.

    Whether a claim is valid over a reference is one of law, assuming there are no issue of fact involving the reference.  The result must be uniform.  We cannot have one result for one defendant and different result for a next defendant or the PTO.  

    The bottom line reason for the result here in this case is the assumed difference in burden of proof between the court and the PTO in the case of issue patents.  The statute makes no distinction.  The Supreme Court has made no distinction.  There is no distinction.  The Federal Circuit has it wrong.  The burden is statutory, not judge made.  Statutory.  It applies to issued patents.  The statute contains no exceptions as to forum.

    We note that since the decision deciding that the PTO was not subject to the statutory presumption of validity accorded patents, the Supreme Court has decided a case interpreting the statute involved.  There are reasons for the presumption beyond the presumed correctness of the examination.  The patent owner needs his patent to protect his business and it should not lightly be invalidate except on clear and convincing evidence.  There is nothing in that that does not apply to the PTO.

    Newman did raise this issue of law issue in her dissent.  She is right.

  16. “One of the reasons that so many certs. are granted is that the Federal Circuit often gets it wrong.”

    Mr. Heller:

    The CAFC often gets it right, at least on 101. While there is division on the CAFC on 101 in particular, the court has been fairly consistent in following Supreme Court precedent, post In Re Bilski.

    For example, take Alice and Ultramercial cases, the CAFC has focused on looking for claims that begin with a manifestly evident or bare judicial exception, just like in Diehr. In both Alice and Ultramercial none were found and the analysis went forward from an “integration” frame of reference, again, like in Diehr.

    Prior to Alice and Ultramercial cases, Research Corp, also focused on looking to see if the claim started with a manifestly evident or bare abstract concept. And again no bare concept was discovered.

    Now had the CAFC identified a claim in any of those cases, that began with a manifestly evident or bare abstract concept, then the analysis of whether any additional steps in the claims were extra (pre or post) solution activity, would have been appropriate, as was the case in Flook. See my Pin Cite (1) from Prometheus contrasting post solution activity in Flook with “Integration” in Diehr.

    As for as the Court granting certs ( at least for 101) the fact pattern clearly demonstrates the last two certs were granted when the CAFC strayed from Diehr as controlling precedent and relied on the cabined principles in Flook and Benson. Most notably the dicta in Benson of a strict Machine or Transformation test.

    Thus the recent results of the MoT being struck down as the sole test in the Court’s Bilski case, followed by an explicit statement from the Court that it’s precedents ( Flook and Benson) stand for no more the the principles in Diehr. ( See Bilski 14)

    All of this of course was buttressed in Prometheus when the Court identified a claim starting with a bare LoN ( manifestly evident ) and ignored the CAFC using the MoT as a test to save to the claim. The Prometheus Court made it clear and explicit that the way to save that claim was with “Integration” as used in Diehr, and not with MoT, which as we know was dicta in Benson. Again please see my pin cite (1) below, from Prometheus.

    In conclusion the majority of CAFC is on the right track, with the Court upholding the legacy of Rich, and correcting what legal scholars say are the errors of Douglas from Benson.

    Pincite:

    (1) Diehr and Flook, the cases most directly on point, both addressed processes using mathematical formulas that, like laws of nature, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an in- ventive application of the formula. But in Flook, the additional steps of the process did not limit the claim to a particular application..” ) [Cite as: 566 U. S. ____ (2012) 3 Syllabus]

  17. link to wired.com

    Congress doesn’t need to enact new laws; it just needs to interpret the existing statute given the realities of software and modern patent practice. As it did seventy-five years ago, the law should rein in efforts to claim owning a goal itself rather than a particular means of achieving that goal. If an inventor claims to own any means of using a computer to solve a problem, we should read that claim as being limited to the particular algorithm s/he wrote to solve the problem and ones like it.

    All we need to do is recognize that the “structure” of a modern software program is not “a computer” – the hardware on which it runs – but the actual design of the program itself. If someone invents a program, s/he can own that program and ones like it, but not every program that might achieve the same end. While doing so would narrow the scope of software patents (unfairly in a few cases), the social benefits would outweigh those concerns.

    Everything is trending in this direction. Good times ahead!

  18. Remember that gxrbage patent on the old gxrbage bags that went all the way up to the Federal Circuit? Actually, the gxrbage bags weren’t entirely old: they had a jack-o-lantern face printed on them (and of course nobody had ever considered seasonally decorating a utilitarian object before Mr. Dembisack).

    Question for the resident “experts”: what was the “functional” relationship of that face to the gxrbage bag?

    Thanks.

  19. What’s most interesting about two of the grants (Bowman and Kirtsaeng), the petitioners are individuals and seem to have a really good shot at winning. I’m actually rooting for both of them to win.

  20. There is or there should be no difference in result whether the trier is a court or the PTO.

    Except that the claims are broader before the PTO. Having different claims is a pretty compelling reason to not apply the same result as a matter of law.

    But its terms, the PTO director is not relieved of the requirements of this statute.

    I think you’ll find that a patent application under (re-)examination is relieved of its presumption of validity, at least as we understand it to apply in court.

    On the same evidence it upholds a patent and then find its invalid. This result is absurd and cannot stand.

    If you think only one of those two decisions should be enforced, I’m sure the Federal Circuit would be more than happy to agree.

  21. When i brought up previous to in the earlier place, the condition you could have is usually that an ex-mate parte reexamination is usually filled out by way of gathering regarding a supposed infringer with suit… that’s absolutely some sort of loophole with preclusion rules, although one which was developed from the ex-mate parte reexamination statutes by means of Our lawmakers. The most effective is usually not saying of which ex-mate parte reexaminations usually are precluded by means of before suit, mainly because that has to be not fair as soon as a ex-mate parte reexamination seemed to be basically inquired by way of gathering that had been definitely not with before suit (such that it’d function afoul on the guidelines connected with preclusion rules.

  22. Now: if the product is made in Japan and sold in the US, does the product infringe if all the steps are performed? What if some of the steps are performed by different parties.

    Does any of this change for pure method claims. Does the same of a product produced by the patented method infringe? Does it make any difference who or where the steps are performed if the product is sold in the US?

    Off the top of my head, I don’t know. I will say this, however: if the product to be imported is old (i.e., unpatentable) and it can (or is) made by some other commercially viable method (as opposed to a purely theoretical method that nobody would actually implement), then patent laws shouldn’t be applied to bar the imported product, period, IMHO. The proper course of action for the inventor of the method at issue is to file a patent on his/her awesome method in the countries where the method is likely to be practiced.

  23. Ned, the problem is that the preclusive effect of a judgment depends on both the legal issues and the parties involved. Putting aside the issue of whether the PTO should have the clear and convincing standard in a reexamination (which was not the issue in Baxter), every traditional principle of preclusion law would tell you that a judgment that a patent is not invalid (not that a patent is valid, but that it is not invalid) in a suit between two parties does not bind any other party from asserting an invalidity defense, whether it is on the same evidence or not, especially when the factual issues could easily go the other way. (And, in fact, saying that failure to succeed on the merits when the burden of persuasion was higher would bar a suit under a lower burden of persuasion is ludicrous. For example: an acquittal in a criminal case does not ever bar a civil suit on the criminal conduct by the victim. What you are saying would be a similar situation to that – someone is accused of assault and acquitted, and the acquittal bars the victim from a civil suit on the theory of assault). I assure you that if the Federal Circuit said that the reexamination in Baxter was barred by preclusion from the litigation that the Supreme Court would issue a 9-0 opinion stating that the Federal Circuit that its law was not in accordance with every other area of law. I am sure that Baxter will file a cert petition raising this exact issue, but I have little reason to believe that it will be granted because the Federal Circuit’s law here is in accordance with every other circuit.

    I agree with you that it makes little sense that a reexamination is only subject to the preponderance of the evidence standard when it is used in the same way as litigation, but that is not the issue presented or raised in Baxter. The question in Baxter is whether litigation precludes an ex parte reexamination on the same issues and evidence, and to that, under the current rules of preclusion and the relevant legal standards, the answer must be no.

  24. Guest, let’s stop talking about parties. Let’s talk about law.

    When an issue of law is decided, it applies to all, regardless of who you are. Period.

    We discussed 101 briefly. If the Supreme Court has considered a patent and the Supreme Court has found it to be patentable subject matter, should a district court judge allow a defendant to try that issue at all? It is decided. It is over. There is no possibility of a different answer. The matter decided is a matter of law.

    When there is no dispute regarding facts, issues are decided as a matter of law. If the evidence is the same and what it shows is undisputed, such as with a patent reference, the issues involved become one of law. The claims are anticipated or rendered obvious as a matter of law.

    There is or there should be no difference in result whether the trier is a court or the PTO. We have a statute, mind you, a statute that imposes a legal result. It is the presumption of validity. It requires a certain level of proof and persuasion to overturn an issued patent. But its terms, the PTO director is not relieved of the requirements of this statute.

    The bottom line is this, the original Federal Circuit holding that the limited the statute to court proceedings was in error. The absurdity that resulted from this mistake is that the Federal Circuit has made itself into a laughingstock. On the same evidence it upholds a patent and then find its invalid. This result is absurd and cannot stand.

  25. Then we have the whole issue of the Federal Circuit not following its prior rulings on the validity of patent claims over the very same evidence. That has got to stop and probably will be stopped.

    You should go re-read what Blonder-Tongue is about – it’s a case about defensive non-mutual issue preclusion on the issue/claim of invalidity. Once one court finds a patent held by the patentee invalid, that judgment of invalidity can be used in defensive non-mutual issue preclusion by an alleged infringer against the patentee as a defense in an infringement suit (where the patentee was in both suits). There is a very large difference between that and offensive non-mutual issue preclusion, where a patentee can use a judicial decree that a patent is not invalid offensively against an alleged infringer to preclude them from raising an invalidity defense on the same grounds, especially when that alleged infringer is not in that suit.

    As I pointed out before in the previous thread, the problem you have is that an ex parte reexamination can be filed by a party associated with an alleged infringer in litigation… which is certainly a loophole in preclusion law, but one which was created in the ex parte reexamination statutes by Congress. The solution is not to say that ex parte reexaminations are precluded by prior litigation, because that would be unfair when an ex parte reexamination was actually requested by a party that was not in prior litigation (such that it would run afoul of the principles of preclusion law). The solution really is to eliminate ex parte reexaminations altogether, because there is a (mutual) preclusive effect between inter partes reexaminations and litigation where an invalidity defense is raised.

    The facts of Baxter are suspect because they show all of the problems with the ex parte reexamination process being used as a way to avoid declaratory judgment suits or to bring concurrent challenges to the validity of a patent. However, as the Judges concurring with the denial of a rehearing en banc pointed out, the PTO invalidating a patent would not allow an infringer in an earlier suit to escape damages imposed based on the judgment of that suit.

  26. And, MM, you are happy to suggest that with product by process claims that one must perform all the elements of the process.

    Now: if the product is made in Japan and sold in the US, does the product infringe if all the steps are performed? What if some of the steps are performed by different parties.

    Does any of this change for pure method claims. Does the same of a product produced by the patented method infringe? Does it make any difference who or where the steps are performed if the product is sold in the US?

  27. Your crusade against the CAFC is misplaced. As we have discussed prior, the Supremes are just as likely (if not moreso) to make a mess of patent law.

    What you really have going on here is a p1ssing match between two courts as to which one is the top “Patent Court.”

    I blame Congress.

  28. One of the reasons that so many certs. are granted is that the Federal Circuit often gets it wrong. On 101, until Bilski, the Federal Circuit got it wrong because it was in open defiance of the Supreme Court. I think the same could be said of Prometheus, where one noted professor noted that the handwriting had been on the wall when Breyer dissented from the dismissal of cert. in a previous case.

    On exhaustion, the Federal Circuit held that it did not apply to method claims despite the fact that Univis Lens concerned method claims.

    I would just like to note that the Federal Circuit’s rule that a present assignment of a future invention is a legal assignment flies in the face of well established case law as was noted by several justices in Stanford. That was a warning shot, Federal Circuit. Do not ignore it.

    Another problem child for the Federal Circuit is divided infringement of method claims. The issue is so important and the Federal Circuit’s position so bizzare that the Supreme Court is bound to take it up.

    Then we have the whole issue of the Federal Circuit not following its prior rulings on the validity of patent claims over the very same evidence. That has got to stop and probably will be stopped.

  29. In addition to Myriad (likely to be granted) and Retractable (unlikely, but you never know) you have to think that Akamai/McKesson is going to have a cert petition filed, don’t you?

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