Pending Supreme Court Patent Cases 2016 (February 17 Update)

by Dennis Crouch

Justice Scalia died this week. May he rest in peace. Although he (as well as Justice Kagan) had left the University of Chicago before I arrived, their influence continues to be felt in that institution.  (Posner, Obama, Sunstein, Meltzer & Epstein, etc. were all still around). On her blog, Professor Ouellette (Stanford) has a nice post about the mixed bag of Justice Scalia’s IP scholarship legacy.  Most recently, Justice Scalia may be best remembered for calling-out Federal Circuit jurisprudence on obviousness as “gobbledygook.”  In many cases, I would expect that his ‘vote’ was less important than the ideas he brought to the table and the way he changed the debates.

I don’t see Scalia’s death having any impact on Halo/Stryker — where I predict the Federal Circuit will be reversed.  Cuozzo is perhaps a different story where I expect a divided court to affirm in a situation where Justice Scalia may have voted to reverse.  Oral arguments are still set for February 23, 2016 in Halo and Stryker. Tony Mauro has an interesting article on the case titled “Coin toss decides which advocate will argue key patent case.”  Professor Mann provides an argument preview on SCOTUSblog.

New petitions this week include the reappearance of Limelight v. Akamai.  The Supreme Court previously shot-down the Federal Circuit’s expanded definition of inducing infringement, but on remand the Federal Circuit expanded its definition of direct infringement (to include joint enterprise liability).  The case is interesting and I hope that the court grants certiorari, but I would side with the patentee here.

In Medinol v. Cordis, the patentee questions whether the laches doctrine still applies in patent cases. This case parallels SCA Hygiene and comes on the heels of the Supreme Court’s Petrella decision which eliminated the laches defense for back-damages in copyright cases.

Briartek IP v. DeLorme, delves into interesting separation of powers and jurisdiction issues, asking: Whether a binding consent order, entered between the federal government, the ITC, and an ITC respondent, deprives federal district courts of jurisdiction over a declaratory judgment action, seeking to invalidate the patent at issue, filed by the ITC respondent … against the patent holder: a non-party to the consent order.  The Federal Circuit had affirmed without substantive opinion.

Finally, last but not least, is Click-to-Call Tech v. Oracle Corp. who has copied the questions from Cuozzo and the recently denied Achates v. Apple.  These questions challenge the seeming the absolute bar on judicial review of Patent Trial & Appeal Board’s power to institute IPR proceedings.  Although this particular petition is unlikely to be granted. It lends additional credence to the other two.  The petition is also a mechanism for the patentee here to keep the issue alive.

1. Petitions Granted:

2. Petitions Granted with immediate Vacatur and Remand (GVR)

3. Petitions for Writ of Certiorari Pending:

  • Infringement by Joint EnterpriseLimelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 15-993 (can a defendant be held liable for the collective performance of method steps by multiple independent parties?)
  • Post Grant AdminCooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers).
  • Post Grant AdminClick-to-Call Tech, LP v. Oracale Corp., No. 15-1014 (Same questions as Achates v. Apple and Cuozo)
  • LachesMedinol Ltd. v. Cordis Corporation, et al., No. 15-998
  • Laches: SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, et al., No. 15-927
  • Post Grant AdminInterval Licensing LLC v. Michelle K. Lee, No. 15-716 (Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?)
  • Design Patents: Samsung Electronics Co. v. Apple Inc., No 15-777 (design patent scope and damages calculation)
  • Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple). []
  • InducementLife Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (whether an entity can “induce itself” under 271(f)(1))(CVSG, awaiting government brief)
  • Inducement: Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commil re-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
  • Claim Construction: Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC, No. 15-893 (intrinsic vs extrinsic evidence for claim construction).
  • Preclusion or Jurisdiction:  BriarTek IP, Inc. v. DeLorme Publishing Company, Inc., et al., No. 15-1025 (Preclusive impact of ITC consent judgment).
  • Preclusion or Jurisdiction: Vermont v. MPHJ Technology Investments, LLC, No. 15-838 (Federal court jurisdiction in anti-troll consumer protection case)
  • Preclusion or JurisdictionAlexsam, Inc. v. The Gap, Inc., No. 15-736 (appellate jurisdiction over patents that were dropped from case pre-trial)
  • Preclusion or Jurisdiction: ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
  • Preclusion or Jurisdiction: Biogen MA, Inc. v. Japanese Foundation for Cancer Research, et al., No. 15-607 (Whether AIA eliminated federal district courts’ jurisdiction over patent interference actions under 35 U.S.C. § 146.)
  • Eligibility Challenges: Retirement Capital Access Management Company, LLC v. U.S. Bancorp, et al., No. 15-591 (Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2))
  • Eligibility ChallengesJoao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., No. 15-974 (defining an abstract idea)
  • Claim Construction: Media Rights Technologies, Inc. v. Capital One Financial Corporation, et al., No. 15-725 (Claim Construction: whether there a strong presumption against construing terms as subject to 35 U.S.C. § 112p6 that do not recite the term “means.”)
  • Patent Term Adjustment Dispute: Daiichi Sankyo Company, Ltd. v. Michelle K. Lee, No. 15-652 (Patent Term Adjustment – whether the 180 day deadline applies; could bleed into admin law issues)
  • Damages: STC, Inc. v. Global Traffic Technologies, No. 15-592 (Whether marking the packaging of a patented article with patent notification satisfies the marking provision of 35 U.S.C. § 287(a) where the patented article itself is undisputedly capable of being marked.)
  • Damages: Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on – potential wait-and-see)
  • Low Quality Brief: Morales v. Square, No. 15-896 (eligibility under Alice)

3. Petitions for Writ of Certiorari Denied:

  • Achates Reference Publishing, Inc. v. Apple Inc., et al., No. 15-842 (IPR institution decisions unreviewable, even when addressed in a final written decision by PTAB)
  • Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567
  • Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538
  • OIP Technologies, Inc. v. Amazon.com, Inc., No. 15-642
  • Fivetech Technology Inc. v. Southco, Inc., No. 15-381
  • Tyco Healthcare Group LP, et al. v. Ethicon Endo-Surgery, Inc., No. 15-115
  • Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561
  • Chunghwa Picture Tubes, Ltd., et al. v. Eidos Display, LLC, et al., No. 15-288
  • Kenneth Butler, Sr. v. Balkamp Inc., et al., No. 15-273
  • Arthrex, Inc. v. KFx Medical Corporation, No. 15-291
  • Daiichi Sankyo, Inc., et al. v. Apotex Inc., No. 15-281
  • Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307
  • Luv N’ Care, Ltd. v. Munchkin, Inc., No. 15-242
  • Automated Merchandising Systems, Inc. v. Michelle K. Lee, Director, United States Patent and Trademark Office, No. 15-326
  • I/P Engine, Inc. v. AOL Inc., et al., No. 14-1358
  • Interval Licensing LLC v. AOL Inc., et al., No. 14-1362
  • Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, et al., No. 14-1473
  • W.L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., et al., No. 15-41
  • NetAirus Technologies, LLC v. Apple Inc., No. 14-1353
  • Muffin Faye Anderson v. Kimberly-Clark Corporation, No. 14-10337
  • MobileMedia Ideas LLC v. Apple Inc., No. 15-206
  • SpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kessler doctrine)
  • Rodney K. Morgan, et al. v. Global Traffic Technologies LLC, No. 15-602
  • Lakshmi Arunachalam v. JPMorgan Chase & Co., No. 15-691

4. Prior versions of this report:

 

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

110 thoughts on “Pending Supreme Court Patent Cases 2016 (February 17 Update)

  1. link to arstechnica.com

    In what appears to be the second-largest payment ever over technology patents, Marvell Technology has agreed to pay Carnegie Mellon University $750 million to end a patent infringement case.

    After a massive win at the district court level, CMU was on track to collect as much as $1.54 billion. The university won a $1.17 billion jury verdict in 2012, to which a judge added penalties and interest. But an appeals court cut the win significantly, approving $278 million in damages and ordering other damages issues to be re-tried at the district court level.

    Rather than further litigate the case, the two sides reached the deal for the $750 million payment, which was announced late yesterday.

    CMU said in a statement that a “substantial share” of the proceeds will go to the two named inventors on the patents, José Moura and Aleksandar Kavcic. …In the university’s account, the duo created a solution to the problem of increasing “noise” as data storage grew exponentially. They created “a new read channel detector that accounts for noise associated with each particular pattern of bits recorded,” which was “widely recognized by the industry.”

    ….The settlement didn’t seem to affect the stock price of Marvell, which had $2.5 billion in cash and cash equivalents at the beginning of 2015.

    The $750 million payment is the largest payment ever for a patent case involving a computer science invention.

    1. PRML, but with a twist. An algorithm invented by Viterbi of the IEEE Hall of Fame, but applied here in an inventive fashion.

      A good example of a valuable invention.

      A better example of why the patent system incentivizes invention.

      1. B-b-but Ned, Marvel actually made product and the University made no product and is just a “Tr011” here….

        /off sardonic bemusement

    2. This claim is patentable under Alice, how? (From United States Patent 6201839)

      1. A method of determining branch metric values for branches of a trellis for a Virterbi-like detector, comprising:

      selecting a branch metric function for each of the branches at a certain time index; and

      applying each of said selected functions to a plurality of signal samples to determine the metric value corresponding to the branch for which the applied branch metric function was selected, wherein each sample corresponds to a different sampling time instant.

      It’s a bunch of math (i.e., an “abstract idea”). Moreover, a “Viterbi-like detector” can easily be implemented in software (and what is “Viterbi-like”).

      The same can be said for United States Patent 6438180:

      1. A method of determining branch metric values in a detector, comprising: receiving a plurality of time variant signal samples, the signal samples having one of signal-dependent noise, correlated noise, and both signal dependent and correlated noise associated therewith; selecting a branch metric function at a certain time index; and applying the selected function to the signal samples to determine the metric values.

      How does this remain patentable under Alice?

      That’s the problem with Alice: claims that apparently are new, useful, and very valuable are invalid.

      1. The machine or transformation test is a relevant factor in determining whether something is an abstract idea. Here, the invention is “directed to a particular machine”, a signal detector–not a general purpose computer in a nonconventional(in this case novel) manner.

        It wouldn’t even get through step 1 of Alice.

        1. Sorry Ryan,

          But your wanting to depend on a MoT “test” is clear legal error.

          First, you ig nore the fact that the Court has found that MoT is neither sufficient nor necessary.

          Second, you ig nore the fact that even in Alice claims that were stipulated by BOTH sides (hence, not even an issue before the Court) to pass the “machine test” of the statutory category portion of 101 were none the less deemed “abstract” (whatever that term might smell like).

          When the claim itself is unmistakably (and not challenged) to be to a machine and yet the “Gist/Abstract” sword cleaves it into nothing, the mouthing of MoT is rather empty of impact.

          1. The court in Bilski held that the machine or transformation test is a useful clue in assessing whether something is an abstract idea. These are not my words. They are SCOTUS’s. MOT isn’t determinative but it is relevant (which is the word I used).

            And who cares that the parties stipulated to it? That doesn’t settle the issue. It just shows an intent to not litigate it.

            1. Ryan: who cares that the parties stipulated to it?

              “anon” thinks it’s really important. And he’s a very serious person! We’re all supposed to pay attention to him.

            2. Ryan,

              You are clearly not paying attention.

              A clue is not a legal requirement (a test)

              And in addition to Bilski you also have Myriad – and now Alice.

              You are not using ALL of the words that SCOTUS has used – instead parsing them to fit your more limited (and thus in error) position.

              The point about stipulation has to do with the reach of the Court’s holding. You know: the case or controversy aspect.

              The Court is not allowed to provide advisory opinions on matters not before it.

              1. Well the court hasn’t provided any other test to determine whether something is an abstract idea. I guess one could look at the other clues given in Alice like whether the the invention involves the generic application of a “fundamental economic practice” or a “natural law. ” This invention is neither of those things. All of these clues put together can lead one to a conclusion without a specific “test” or “bright line rule”

                Every 1st year law student knows what an advisory opinion is anon. Thanks. And everybody knows that this means “The Court is not allowed to provide advisory opinions on matters not before it.”

                My guess is that nobody knows what this has to do with anything.

        2. Ryan: Here, the invention is “directed to a particular machine”, a signal detector

          In fact, these are method claims and are not limited to any “particular machine.”

          The claims recite the use of math on a signal sample (i.e., information) to determine a “metric value”. Certainly with respect to the 6438180 process, those signals can be received by any detector tuned to receive them. The 6201839 may be a bit more narrow but the limitations don’t appear to be meaningful in a way that would affect (in)eligibility.

          1. I see your point w/r/t to both patents. Some of the claims seem broader than what they invented., like claim 1 of both patents. They don’t tie the method to a particular machine in claim 1.

            The 839′ patent ties the methodto a ‘Virterbi-like detector, I was referring to this claim when I made my first point. The specification ties ‘Virterbi like’ to a specific set of hardware arrangements. When the claims are read in this manner, claim 1 can be construed as being tied to these particular arrangements.

            Claim 5 of the 830′ patent seems like it would pass the MOT test though. It states “wherein the detector is selected from a group consisting of a Viterbi detector, a soft output Viterbi detector, a Generalized Viterbi detector, and a BCJR detector.”

            This claim actually identifies the machines with particularity.

      2. Never mind Alice, how is this patentable under Benson (or which ever is the BCD one):

        They created “a new read channel detector that accounts for noise associated with each particular pattern of bits recorded,” which was “widely recognized by the industry.”

        Seems to me that’s only useful in computers, so a claim to it being used in computers effectively pre-empts any use of the method, doesn’t it?

      3. PB: That’s the problem with Alice: claims that apparently are new, useful, and very valuable are invalid.

        Infinite numbers of new useful and valuable process claims were ineligible for patenting before Alice.

        By itself, that’s not a “problem”. On the contrary, it’s a critical feature of a sane patent system.

        1. What does it mean: infinite numbers OF a new useful and valuable process claim….?

          Are you addressing the claim – as a whole – or some parsed and incomplete view of an element or mere piece of a claim…?

          1. What does it mean: infinite numbers OF a new useful and valuable process claim….?

            I don’t know. Those are your words, not mine.

            If you can’t learn to read English, at least learn how to copy and paste. You’re just an endless waste of everybody’s time.

            1. LOL – my words differ from your words with merely an emphasis and the insertion of the single-letter word “a.”

              These are distinctions without a difference.

              If this befuddles you so very much, then please define your own words without the emphasis and remove the single letter word “a.”

              Try to hoist yourself.

              What a putz.

    3. This claim is patentable under Alice, how?

      Was a serious challenge under Alice even made by the accused infringer?

      Note that the amount of money exchanged by two parties who have agreed not to fight over the patent may have little relation to the patent’s validity. It’s likely related to the parties’ perception of the patent’s validity, but that perception can be colored by all kinds of information.

      In other words, whether this patent or any patent like it gets tanked by a proper Alice analysis doesn’t affect the reasonableness of the Alice analysis. These guys might have been first but their “insight” was one that would surely have been made by others, with or without patent protection for that insight.

      1. MM, the claims read on Viterbi detcctors, which are known and very specific hardware that receive noisy analog signals and that remove that noise. Extremely valuable in almost all communications which involve noise.

  2. “Most recently, Justice Scalia may be best remembered for calling-out Federal Circuit jurisprudence on obviousness as ‘gobbledygook.'” I hate to say it, but the CAFC rules prior to KSR actually made sense to me. The rules promulgated in KSR do not. Furthermore, since KSR implied that any problem anywhere, even discovered by the inventors and put into a patent, can be used as reasons for an Examiner to combine prior art, most clients refuse to put any problems or solutions into patent applications. For me, this just makes an opaque document even more opaque, as there is no discussion of problems and their solutions. Instead, many patents simply begin with a description of the invention, devoid of any background, problems, or their solutions. That is problematic to me, but that’s what the Supreme Court’s rules in KSR gave us.

    1. PatentBob, a problem is pertinent to the obviousness question, I think, if it was a known problem for which there was no known solution. I do not think that discovering an unknown problem is itself grounds for patenting an invention which is no more than non-inventive engineering: combining known elements in known ways to produce known solutions.

      1. “I do not think that discovering an unknown problem is itself grounds for patenting an invention which is no more than non-inventive engineering: combining known elements in known ways to produce known solutions.”

        IDK about that. One of ordinary skill in the art cannot apply known solutions to unknown problems. You should read KSR again. More closely. It’s pretty clear that the “problem,” “market demand,” “design need,” etc. has to be known before one of ordinary skill in the art can apply “ordinary creativity” to solve/meet it.

        The case law is clear that discovery of the source of a known problem and subsequent solution of the problem is non-obvious no matter how “obvious” the solution is. That’s the old stopper in the bottle case.

        1. AAA JJ One of ordinary skill in the art cannot apply known solutions to unknown problems.

          That depends on what you mean by an “unknown problem.”

          I can think of an infinite number of specific problems that are unknown to everyone except me. Nearly all the solutions to those problems are obvious, however, and reciting the problem with greater specificity doesn’t change a thing (absent some great evidence of unexpected results).

          I recognize this is a very difficult concept for certain practitioners to understand — especially practitioners in the computer-implemented arts because (as everyone knows) they’ve been operating for years with a PTO that coddles them endlessly and is happy to look the other way whenever a shiny compooter is recited somewhere in the claim.

            1. No you can’t.

              Are you objecting to the term “infinite”? If so, I’m happy to rephrase: I can think of specific problems that are unknown to everyone except me at a rate that is limited only by my boredom, my need to sleep, and my lifespan. That’s a lot of specific problems.

              But as I already noted: this is a difficult concept for certain practitioners to understand. I’m not surprised that you or Ken are experiencing that difficulty.

        2. Well, AAA JJ, this really was the debate the Supreme Court had in Morse about the Nielson v. Harford decision. link to en.wikipedia.org The discovery that hot air assisted the furnace is akin, if not the same thing, as discovering an unknown problem. In either case, the patent cannot be on principle, but must be on an inventive application, something really not known before.

          1. “In either case, the patent cannot be on principle,…”

            No duh, Ned. Thanks for explaining that to me.

            “… but must be on an inventive application, something really not known before.”

            The silicone coating applied to the butyl rubber stopper to prevent evaporation of the contents of the bottle was known, however the cause of the problem was thought to be evaporation of the liquid around the stopper (i.e. between the interface between the stopper and the bottle), rather than through the stopper. So despite the existence of an “obvious solution” the claim was found non-obvious. Of course everything is obvious once somebody explains it to you. If that were the standard, however, nothing would be patentable. Fortunately, that’s not the law.

            1. You still don’t understand the point that’s being made, AAA JJ. I recommend trying harder because it’s straightforward and important.

              despite the existence of an “obvious solution” the claim was found non-obvious

              Yes, that’s a possibility when the applicant provides evidence of unexpected results.

              If the general solution to the previously unspecified problem was known, however, and the solution operates just as everyone knew that it would have operated — without any unexpected results — you have a big obviousness problem.

              everything is obvious once somebody explains it to you. If that were the standard, however, nothing would be patentable.

              Nobody is arguing for that standard. Try to stay focused, AAA JJ.

                1. The fact that a silicone coating would make any difference.

                  If one were to assume, as was thought at the time of invention, that the problem was the fluid leaking from the sides of the bottle, it would not have been expected that protecting the fluid from permeating through the stopper by adding a coating would help.

                  1. No. If the “problem” was that liquid was evaporating through the stopper, rather than around it, the application of a silicone coating to the butyl rubber stopper would be expected to stop evaporation through the stopper. The “solution” was completely “obvious” once the source of the problem was known. But the claim was still non-obvious. No unexpected results. No flash of genius. No “synergistic effects” whatsoever. Non-obvious.

                  2. The results were unexpected given how the problem was formulated at the time of invention–i.e. what was known to a PHOSITA. 103 does not allow you to look at how the problem was formulated in hindsight, with the benefit of the knowledge gained from the patented invention.

                    Also unexpected results has nothing to do with “synergistic effects.” Often in the pharmaceutical setting—or any setting where complex, nonlinear systems are involved for that matter, “synergy” is often expected.

                  3. Ryan states: “Also unexpected results has nothing to do with ‘synergistic effects.’

                    Here we are in complete agreement.

                    Many fields of engineering encounter – and expect – synergistic effects from non-linearity.

                  4. The “result” of coating a butyl rubber stopper with silicone was 100% completely and totally “expected.” No liquid would evaporate through the stopper.

                    Still non-obvious. To this day.

                    Feel free to put the shovel down.

                  5. “The “result” of coating a butyl rubber stopper with silicone was 100% completely and totally “expected.” No liquid would evaporate through the stopper.

                    Still non-obvious. To this day.

                    Feel free to put the shovel down.”

                    AAA JJ you said this already. I already addressed that the result was indeed unexpected when looking at the issue from the perspective of one skilled in the art at the time of the invention.

                    The problem at as it was understood at the time of the invention was that the vapor went through the gap between the bottle stopper and the bottle, not that the vapor went through the stopper.

                2. AAA JJ, is this not a way (problem not known) to focus the trier of fact in the state of knowledge at the time of the invention — primarily to prevent hindsight reasoning.

                  One can combine X and Y in manner Z to product A result; but if there was no reason at all to combine them?

                  Yeah, I now tend to agree that there is something missing from the simple KSR formula.

                  1. …the context of awareness (as pointed out to Ryan), and how that context necessarily involves what AAA JJ and I are talking about.

                    One (obvious – pardon the pun) problem is that certain people are just TOO gung ho to be anti-patent and do not recognize the limitations of 103, instead seek to make it out to be some type of “Flash of Genius or pure serendipity ONLY” type of patent bar.

              1. “Yes, that’s a possibility when the applicant provides evidence of unexpected results. ”

                What were the unexpected results in the bottle stopper case?

                The invention was in identifying the SOURCE of the problem. Even if the solution is obvious once you know the SOURCE of the problem, you get a patent.

            2. AAA JJ thanks for your kind patience.

              In the silicone coating case, do I really understand you correctly to say that silicone coated butyl rubber stoppers were known and yet, despite being known, they were re-patented because of the discovery of that the theory of why they worked was wrong?

              1. That’s not what I said. Butyl rubber stoppers were known. Silicone coatings were known. Their combination was not known. Combining a butyl rubber stopper with a silicone coating had the expected result of preventing liquid from evaporating through the stopper. Still non-obvious.

                1. AAA JJ: This is a direct quote:

                  “The silicone coating applied to the butyl rubber stopper to prevent evaporation of the contents of the bottle was known…”

                2. AAA JJ, I think the better argument was that it was unexpected that the combination would be effective in the way it way effective.

      2. Can you (by definition) have a known solution to an unknown problem?

        Half the time, figuring out what exactly IS the problem is what is an advance.

        1. Yes.

          Lets say your drain is broken. You throw some drain cleaner in there. The drain is fixed. The draino was the solution.

          However, you have no idea what the problem is i.e. why the sink was clogged to begin with.

          A more recent example is SSRI antidepressants. We don’t know what the problem in the brain is that causes depression. It has been theorized that the problem is a “chemical imbalance” but nobody has proof that this is the case. The chemical imbalance theory is based on the fact that because inhibition of serotonin re-uptake seems to help depression that the underlying cause must be a serotonin deficiency.

          1. “KSR implied that any problem anywhere, even discovered by the inventors and put into a patent, can be used as reasons for an Examiner to combine prior art”

            Huh? Where is this “implied” in KSR?

              1. KSR does not say that the recognition of the problem that the inventors are trying to solve in their own application can be used against them.

                The analogous art doctrine also exists and limits scope of the prior art to a subset of art less than “any problem anywhere.”

                “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

                Note the term –field of endeavor.

          2. Sorry Ryan – you over thought the question.

            Unless you go about randomly throwing drain cleaner into drains, you have already known that you have A problem.

            It is a different type of “unknown” to know the level of the problem.

            You HAVE to have that first level to even be aware of anything that even COULD BE a solution. If you do not have even that awareness, you cannot be aware that you have a solution.

            1. you over thought the question.

              More accurately, the question asked was worded poorly and could be answered in any number of ways depending on how one inteprets it.

              The problem with the drain at 3432 Sycamore Street in Topeka was described nowhere in the prior art because nobody knew the drain existed until I disclosed it in my specification. Regardless, a method of clearing that specific drain (again: a specific problem that was utterly unknown to you at the time of filing) reciting a prior art step that was known to unclog drains is an obvious method and therefore unpatentable.

              You HAVE to have that first level to even be aware of anything that even COULD BE a solution.

              The capitalization adds nothing here except to make you appear even less articulate than usual.

              1. No.

                He over thought it.

                It really is simple Malcolm – you have to be FIRST aware of the fact that some problem needs a solution.

                If you are unaware – then you cannot even be aware that you have a solution.

                Wake up son.

                And while you jest with the form of my posts – your content is ever more the joke. You really want to double down on the “specificity” angle?

                1. Repeating a broad assertion with capitalization and italics does not make the broad assertion less false (as broadly asserted) or more coherent.

                  I know that is going to be a tough one for you to understand. We’ve all been watching you struggle for years.

                  If you are unaware – then you cannot even be aware that you have a solution.

                  Deep stuff. Try addressing the point that was actually presented to you. I know that’s difficult when your awesome reputation is on the line. LOL

                  1. More typical Malcolm tripe.

                    My assertion (broad or otherwise) is simply not false, nor is it incoherent.

                    The assertion is made with a short declarative sentence that even you should understand.

                    It is easy to understand that you are off base, because you fall back to your C R P “deep stuff” line. That typically happens when you just feel like disagreeing, but do not have anything substantive to say to negate the point presented.

                    Instead of simply declaring that it is either false or not coherent, maybe you want to point to a particular aspect that you disagree with.

                    What? Nothing? So you actually agree with me and only feel like you need to be an arse?

                    Yeah, thought so.

                    As to the “tough year,” there is no possible “understanding” to your baseless accusation, and it is entirely unclear who YOU think this “we” are. Does it make you feel better to pretend that you are a “plural?”

                    Your other ramblings include such nonsense as wanting me to address some mythical point actually presented to me – when I am the one that presented the point to begin with, and my comments directly show the error that Ryan made in missing the point that I presented. Not sure what is it that makes you think that my “awesome reputation is on the line,” when my direct and declarative and easy to understand sentence already shows Ryan’s error.

                    It is so sad, too bad, that you don’t like the fact that Ryan missed a basic step in his over thinking of the question and failing to realize he needs awareness to be factored in. I do ‘get’ that you yourself like to NOT have awareness present in order to “sell” your short script, but hey, awareness IS a good thing.

            2. Anon. I hate to say this but “there are unknown knowns and unknown unknowns…”

              You seem to be referring to the unknown unknowns, where you don’t even know that the problem exists. I am referring to the unknown knowns. Where we know the problem exists but we can’t formulate it.

              The way the question was worded, it was unclear, which one you meant. Regardless, most of the time in patent law, we are not dealing with problems that we don’t know exist. Nobody gets a patent for discovering that people are depressed or that there is a clog in the sink.

              1. In your own words “Half the time, figuring out what exactly IS the problem is what is an advance.”

                You are accusing me of over complicating the issue by using the definition of “unknown problem” that you implied by this post. It does not appear you were referring to discovering the existence of a problem but rather formulating the specific nature of the problem.

                1. No – I am not accusing you of over-complicating the issue – I am accusing you of over thinking the question and NOT getting that question correct.

                  You need awareness of the problem in the first place. Some here would have it that obviousness applies to items that may have been “old” in some other art, but are now applied to a problem that itself was unknown.

                  That is just not how the law of obviousness works.

                  1. “Some here would have it that obviousness applies to items that may have been “old” in some other art, but are now applied to a problem that itself was unknown.”

                    I’m not quite sure what you mean by this. Do you have an example?

                  2. You cannot choose to be unaware of the need for awareness.

                    Well, you can, but that just means that you are choosing to be flawed.

                    Not a great choice.

                  3. “It is really simple and direct: you need to be aware of BOTH the problem and the supposed solution. It is also really simple as to why: if you are not aware of the problem in the first place, you will not be aware that a solution is either possible or to be effected.”

                    Yes you did say this about 10 times. I stand corrected. I thought you had something more profound to say.

                    Now that you seemingly have made clear that this is your one and only point (though for reasons below it really isn’t clear at all but lets pretend). Let me use your exact words to explain to you why you are wrong.

                    “Unless you go about randomly throwing drain cleaner into drains, you have already known that you have A problem”

                    Well there you go. Sometimes you can stumble on the solution to a problem before it exists. This happens all the time. Chemist invents chemical X while playing around with design software and nobody knows what it is used for. Later, it is found that chemical X is useful for previously unknown problem Y. The invention of chemical X is therefore a solution to an unknown problem.

                    So there is such thing as a solution without a problem. Whether the use of chemical X to treat Y is nonobvious, given the discovery that problem Y exists and can be treated by using X, is a wholly different question.

                    W/r/t to your comment that
                    “You need awareness of the problem in the first place…. ”

                    For what exactly? It seems like you are conflating two questions.

                    1) Whether awareness of the problem is a prerequisite for obviousness of the solution to that problem.

                    or

                    2) whether it is possible, as a matter of ontology, to have ‘a solution without a problem.’

                    I have been addressing your second point, which is the point that you initially made.

                  4. Well there you go. Sometimes you can stumble on the solution to a problem before it exists.

                    your logic remains flawed.

                    Yes, You can stumble upon something and obtain a patent for serendipity.

                    But that does not say what you think it says.

                    Unless you are aware that you HAVE solved something, even your serendipity will not help you, because you will be unaware of the problem to begin with.

                    Even serendipity requires that you FIRST require the awareness that a problem actually did exist – and that something (here, you may not know the specifics) changed that problem state.

                    You are wrong in dealing with me.
                    You are wrong in dealing with AAA JJ.

                    I suggest that you stop and think about why you are so tracked in believing that you are correct. You are focusing on some type of “ontology” while completely disregarding the context here that we are talking about the law of obviousness.

                    You must be extremely dehydrated.

              2. I know of what you are referring to Ryan.

                It is you that needs to recognize why your selection creates a fallacy.

                That is why both AAA JJ and I made comments in reply to Ned’s statement.

                That statement simply cannot stand on its face.
                That statement is at the same breadth as my rejoinder.

                Further, 103 explicitly was put into place to remove the type of “thinking” that your comment aligns with.

                Your “most of the time in patent law” is just not correct. Your view of the law is flawed and lacks appreciation of the historical contexts which have long been discussed on this blog.

                1. Sure it’s an oversimplification, I’ll give you that.

                  But it is generally true and reflected by the law.

                  Nobody has gotten a patent on identifying a problem with an absurd level of generality. Oh wait a minute…

                  1. Sadly, Ryan it is neither generally true, nor is it reflected by the law.

                    As I said: this is an indication that you do not understand the law.

                    (and please, do not move the goalposts with a “patent at level of generality” – we are NOT talking here about level of specificity or generality of any individual claims)

                    Stay focused.

                  2. Focused on what exactly? Following your train of thought so I react your desired conclusion? No thanks.

                    You keep stating my approach is flawed but you cannot point out these flaws. What are they exactly?

                    And don’t give me the “I’m too awesome to explain it to you” attitude anymore please. It just makes you appear like you are the one who doesn’t know what you are talking about.

                    I mean, why are you even here anon? Some of us, like me want to debate the issues. Don’t you? This would actually involve putting forth counterpoints rather than putting down anybody who disagrees with you as an ignoramus.

                    You seem like you would be an interesting and thoughtful person to debate with if you were ever to shred this persona of opaqueness and mystery and actually openly engage with others.

                    Criticize MM and Ned all you want but, unlike it is with you, at least it is clear where they stand on the issues. And at least they are willing to have an open, honest, and transparent debate.

                  3. You keep stating my approach is flawed but you cannot point out these flaws. What are they exactly?

                    Asked and answered.

                    You need awareness in your thinking about both the problem and the solution.

                    I have been abundantly clear about this – and this has NOTHING to do with any “desired conclusion” that I may have. This is not how you are now trying to spin it.

                    The explanation is right there Ryan. The counterpoint is right there. I am not – as you are attempting to spin here – NOT giving it to you.

                    You may want to debate, but you have a decidedly odd way of going about it. You may not like the fact that awareness is necessary – you may not like that having such is part and parcel of what you do not want to recognize – but that just does not change the fact that such must be present and that your statements – continuing to ig nore this aspect – are necessarily wrong.

                    I am more than willing to have an open and honest debate with you. I have been attempting to do so. You just don’t like how I have pointed out that your view starts out wrong. That’s not a “me” item – that is a “YOU” item.

                  4. No anon, I just have no idea what you are talking about. That is because you insist on writing in this cryptic style rather than saying what you mean in plain English.

                    When you “provided a counterpoint,” you just lazily pointed me to another thread without describing why it is relevant to the dialogue we are having, let alone why it proves me wrong. Try again please. I would appreciate it.

                  5. I have said what I mean in plain English several times now.

                    You appeared (almost) to grasp it when you admitted that your view was an over-simplification – which means that at least you recognize that something is amiss in your view.

                    It is really simple and direct: you need to be aware of BOTH the problem and the supposed solution.

                    It is also really simple as to why: if you are not aware of the problem in the first place, you will not be aware that a solution is either possible or to be effected.

    2. The Supreme Court in KSR overturned a ridiculous CAFC precedent and replaced it with a reasonable rule.

      Blaming the Court for the reactionary behavior of lawyers and their transparent attempts to avoid the reach of that reasonable rule is pretty silly.

      I do look forward, however, to your continued advocacy for new rules that mandate the inclusion in the specification of a clear statement of (1) the problem to be solved and (2) the inventive solution. Because it’s really important to you. Sure it is.

      1. I mean, the TSM test is a great way to make sure that parents are easily granted and that the granted patents stay valid in litigation. So if that’s what you’re after…

        Also, where was all the complaining about the CAFCs attempted imposition of its’ made up “TSM test” onto our beloved statutory law?

  3. Arrrgh!

    Another case that will go up: LISMONT v. ALEXANDER BINZEL CORPORATION, No. 2014-1846 link to cafc.uscourts.gov

    A consultant invents X process, discloses it to German firm Y who files in Germany naming its employee Z. The case is then filed PCT, and a US patent issues. The consultant pursues litigation in Germany and in Europe from 2002 , but where the German Supreme Court in 2009 affirmed a lower court decision that the consultant had not proven inventorship of the subject matter of the patent in question. In 2012, the consultant filed suit under 35 USC § 256(a) seeking correction of inventorship. The district court dismissed based upon laches, and the Federal Circuit affirmed. The Federal Circuit specifically held that the serial litigation excuse for laches did not apply here because the consultant never informed the defendants that he intended to file suit in the United States in due course. The court also dismissed the consultant’s argument that he thought that the lawsuit in Germany resolve the inventorship in the United States. Federal Circuit said that the proposition was unheard of and said that the consultant had failed to supply legal authority, as if such a case it ever happened before. (One can see that the fix was in.)

    But what bothers me is that this is one more case where laches was used to bar a legal remedy. The case relied on Aukerman and the most recent case of SCA Hygiene Prods, both en banc. The latter case of course is going up to the Supreme Court most assuredly. This case go up the Supreme Court as well because I think the consultant got shafted in more ways than one.

  4. There are big policy arguments against this type of unreviewable administrative agency authority, which may lead some members of the court to want review.

    Policy like conforming to constitutional protections….

    😉

  5. Dennis Crouch wrote: ” In many cases, I would expect that his ‘vote’ was less important than the ideas he brought to the table and the way he changed the debates.”

    Are you kidding me? Need I remind you and everyone that Justice Scalia was the pivotal vote in a 5-4 decision to uphold so called ” Business Methods” as a statutory category of patent eligible subject matter?!?!?

    Who knows why he really voted the way he did. After all, more than one of the justices seemed flippant in their logic for justifying the life or death of business methods; from Scalia’s Horse Whispering, to Sotomayers Speed Dating service. In the end maybe Scalia just couldn’t stomach siding with an ultra Liberal like Stevens. So for now Business Methods live on paper only, since not one process or method, involving physical steps and using some type of non computer apparatus, or hardware, in one of more of those steps has been approved by the PTO, or appealed to the Federal Circuit.

    If and when that happens, and a so called pure business method case, not involving software or computers makes it’s way to the Supreme Court, the new Justice will have an unique opportunity to make patent law history and perhaps help or do great harm to the United States system of capitalism and the American dream!

      1. Says the man who cannot see the crisis of the Court itself violating the separation of powers doctrine….

        Not compelling at all, Ned.

    1. The starting point whenever the Court takes a patent case is a likely reversal. Since there are no circuit splits to be resolved, the court primarily only takes what it sees as problematic decisions.

      However, there are several things going on in Cuozzo that make me believe that the court will affirm.

      First, the statute is clear that there is no appeal of the decision of whether or not to institute an IPR: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In my view, the most natural reading of the statute would bar an appeal of the institution decision, interlocutory or otherwise. Cuozzo did not present any law or superior precedent that controls interpretation of the statute here and so I would think that the majority would go with this most natural reading of the decision. There are big policy arguments against this type of unreviewable administrative agency authority, which may lead some members of the court to want review.

      On the claim construction issue, the USPTO has put forward a strong case for deference to its decisionmaking that I suspect will carry the day. For this conclusion, it may be important that the SCOTUS see the opportunity-to-amend-claims during IPRs as real.

      1. see the opportunity-to-amend-claims during IPRs as real

        Not sure “real” is the correct thing to see. Perhaps “as of right”….?

          1. Malcolm,

            You are absolutely correct that under the law as currently written by Congress there is no such right.

            You are also absolutely incorrect as to that right needing to exist.

            The ability of the Executive branch appartaus to – at its discretion – allow or not allow amendments has very real takings impact. If the stated aim is to have a “correct” patent through this process, and there is a mere discretion as to meeting that goal, the property right that is a granted patent loses that very same “correct” level as a matter of right.

            Just as the institution decision cannot violate property protections afforded by the constitution, this type of mere discretion likewise raises the constitutional issues. An item, once made property, is protected from changes in the law that violate constitutional protections. The initiation decision is definitely such a violation. The lack of right to amend to protect that portion of a patent grant that may have NOT been “wrong from the grant” – while a closer call – is most likely a violation as well.

            If you were not so adamant in your ad hominem ways, and stopped and actually gave the matter some critical thinking, you just might be able to see this.

            I will not be holding my breath for you to unclench your eyes.

      2. Dennis, I think they will reverse on the authority issue for certain. The point of non reviewability of any discretionary decisions is obvious – such decisions are inherently not reviewable – and that is exactly the purpose for 314(d). But that non reviewability clause cannot stand in face of a clear violation by the PTAB of other statutory requirements that the PTAB must abide by in order to institute. Even the Federal Circuit agreed that the PTAB did not abide by these other statutory requirements. I do not think that the Supreme Court has any choice but to reverse the Federal Circuit.

        On the claim construction issue, the question really is whether the rule adopted by the PTO is consistent with the purpose for the legislation. But the real problem in this case is that there is no showing that I know of that the outcome depends upon the construction of any claim term. The patent owner, after all, argued for broader construction than that proffered by the petitioner.

        1. Ned,

          The affording of that very same discretionary power to effect a takings of sticks in the property that is a granted patent is itself a violation of constitutional protections.

          While the government does have the power to take sticks out of the bundle of property rights, here, this taking is improper as there is NO remuneration of any kind made, and Congress was extremely clear in “taking” away any due process protection (Article III review of the separate initiation decision itself) with the direct and unambiguous words that they used.

      3. What in the world does an opportunity to amend claims have anything at all to do with the construction and possible revocation of a claim in an issued patent?

        New claims: Well they must be examined with no presumption of validity. The same does not apply to claims in issued patents.

        Now you say, but the statute says so in IPRs, that issued cliams might be revoked based on preponderance of evidence. But the statute is unconstitutional because it allows the executive to revoke the claims in issued patents that are the vested legal property of their owners.

        We are not England where patents were privileges. Every patent issued until 1902 in England with a reservation clause allowing the Privy Council, the executive, on petition, to revoke an issued patent for being invalid over the prior art, not being worked, or for abuse.* The US Supreme Court held that US patents were not privileges at all, but legal rights. US v. American Bell (1888). Further, I sincerely doubt that Congress has the power to grant revocable privileges under our constitution.

        * Bracha, Oren. Owning ideas: A history of Anglo-American intellectual property. Diss. Harvard Law School Cambridge, Massachusetts, 2005 at 21 and note 129.

        1. Further, I sincerely doubt that Congress has the power to grant revocable privileges under our constitution.

          They very much have that right Ned.

          But such a thing will not be a patent, and will not flow from the patent clause.

        2. It is interesting to read the Microsoft v i4i case again concerning the presumption of validity and to note the careful words used by the Court.

          They were clear as to what the issue there was that they were speaking of.

          But their precision also (strongly) indicates that the presumption (which was confirmed as a Clear and Convincing presumption) was inured AT grant, making that selfsame presumption a part of the property right – a stick in the bundle.

          As I have also explicated, the AIA did not change this aspect of property.

          At all.

          The presumption was NOT addressed, nor any indication made that the selfsame presumption did not attach at the time of grant post-AIA.

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