New IP reading from law professors: 

StarAthleticaPeter Menell and Daniel Yablon, Star Athletica’s Fissure in the Intellectual Property Functionality Landscape.  The article advises courts to “disregard the unsubstantiated dicta in Star Athletica” that potentially promotes the “protection for functional features of useful articles outside the auspices of the utility patent system.”  For practitioners, the professors’ concerns should likely be considered as strategies for layering of intellectual property rights.

Stefano Comino, et al., The Diffusion of New Institutions: Evidence from Renaissance Venice’s Patent System. The article finds that even in ancient Venice, the patent system was used by outsiders while insiders (here, medieval religious confraternities) preferred to regulate entry and competition through guild statutes.  I see this article as an extension of the interesting work by Sichelman and O’Connor. See, Patents as Promoters of Competition: The Guild Origins of Patent Law in the Venetian Republic.

BursteinSSarah Burstein, The ‘Article of Manufacture’ TodayBurstein argues, inter alia, for the historical meaning of the phrase “article of manufacture” in interpreting and applying 35 U.S.C. § 289. The article is relevant to Step 1 of the Supreme Court’s design patent analysis from Samsung v. Apple: identify the ‘article of manufacture’ to which the infringed design has been applied.

Graham Dutfield, Collective Invention and Patent Law Individualism, 1877-2012; or, the Curious Persistence of Inventor’s Moral Right. The book chapter is actually a few years old, but is interesting in how it considers the question of “Why do inventors continue to be named in patents when most are owned by firms rather than individuals?”

Eric Johnson, The Case for Eliminating Patent Law’s Inequitable Conduct Defense. Arguing that, “in the real world, the inequitable conduct defense can make a mess of things.”


Helsinn En Banc Status


Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2017)

An invention that is “on sale” prior to the associated patent’s critical filing date is not patentable. 35 U.S.C. 102.  Although the AIA used the same “on sale” wordage as pre-AIA 102(b), many believe that it should interpreted differently.  The particular question is whether private and non-public offers-to-sell still count as prior art post-AIA. In Helsinn, the Federal Circuit did not fully answer the question since some information regarding Helsinn’s pre-filing sale had been made public — still the invention was not publicly disclosed.  Thus, Helsinn made the limited holding that “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale.”

In its petition for en banc review, Helsinn asks the following question:

Does mere public disclosure of the “existence” of a sale trigger the on-sale bar under 35 U.S.C. § 102(a)(1) of the America Invents Act (“AIA § 102(a)(1)”), even though the invention was not made “available to the public” before the critical date?

In June, Helsinn filed for en banc review with support from the big players:

  • Helsinn-Petition
  • Teva-Response
  • AIPLA (prior “on sale” activity must make the invention available to the public)
  • BIO (negative consequences will flow from the panel decision)
  • Boston (court should take the case and decide the issue)
  • IPO (court should rule en banc, decision is contrary to MedCo)
  • PhRMA (the legislative history “reflects [Congress’s] unmistakable intent to limit the invalidating effect of the on-sale bar to public activities”)
  • Lamar Smith (arguing that the statute now limits “on sale” to sales activity that makes the invention available to the public)


I agree that the Federal Circuit should hear the case en banc, reconcile with MedCo, and substantially settle the law.

Single Reference Obviousness

Idemitsu Kosan Co., Ltd., v. SFC Co. Ltd. (Fed. Cir. 2017).

The decision here is important as one example of a single-reference obviousness decision upheld by the Federal Circuit on appeal.  Here, the prior-art is a published international patent application also owned by the patentee and with overlapping (but not identical) inventorship. 

Idemitsu’s U.S. Patent No. 8,334,648 covers an organic LED and claims priority back to a July 19, 2002 Japanese patent application.  The asserted prior art is an international application (PCT) publication from a two-weeks prior – July 4, 2002. International Publication WO 02/052904 (claiming priority to December 2000 and named Arakane).  At this point it is unclear why, but Idemitsu never challenged the status of prior-art status of Arakane.

In its obviousness analysis, the Board found that Arakane taught all of the elements of ‘648 patent’s challenged claims and that it would have been obvious to combine them in the way claimed. On appeal, the Federal Circuit has affirmed – holding that the Board had made reasonable conclusions both on the facts and the law.

The case includes a couple of procedural findings — importantly the Court permitted (at least in this situation) the PTAB to reach factual and legal conclusions not directly addressed in the petition.

= = = =

Note: The opinion here does not discuss why the single-reference decision was based upon OBVIOUSNESS rather than ANTICIPATION.

Patent Venue: Cyberspace does not Expand Place of Business

Important mandamus order narrowing patent venue. In re Cray (Fed. Cir. 2017) [Read the Case]

Following the Supreme Court’s decision in TC Heartland, the debate has moved to interpretation of the requirement that an infringement defendant have either residence or “a regular and established place of business” in the chosen venue.

Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business. 28 U.S.C. § 1400(b).

In Raytheon v. Cray, the defendant is a Washington corporation with facilities in Austin and Houston – both of which are outside of the Eastern District of Texas. Still, E.D. Texas Judge Gilstrap found the company to fit within the regular and established place of business venue requirement based upon evidence that. Two Cray sales executives worked from home within the district – developing new sales and accounts worth ~ $350 million over the past 7 years.  The execs received reimbursement for certain utilities and charges within the district and publicly advertised their “office” phone numbers within E.D. Texas.

In the process of deciding its case, Judge Gilstrap also set forth an open four-factor test finding a regular and established place of business: physical presence, defendant’s representations, benefits received, and targeted interactions with the district.

As a general matter, Judge Gilstrap’s interpretation appears fairly broad, and on writ of mandamus, the Federal Circuit has rejected Gisltrap’s analysis and directed that he transfer the case to a more appropriate venue.

As a patent-focused statute, the Federal Circuit applies its own law to interpret the scope of 1400(b).  Here, the Federal Circuit interprets the requirement of a “regular and established place of business” to require three key elements: (1) a physical place within the district (2) that is a regular and established place of business (3) of the defendant.  The key focus here – regular and established place of business – i.e., a place of business that is both regular and established. According to the appellate panel these elements are requirements of the statute and all of them “must be present” for venue to be proper under the provision.   Thus:

The district court’s four-factor test is not sufficiently tethered to this statutory language and thus it fails to inform each of the necessary requirements of the statute.

According to the appellate panel, a court’s venue inquiry walk step-by-step through each of the requirements of the statute to ensure that each is present. “We stress that the analysis must be closely tied to the language of the statute.”

In looking at the application in this particular case, the Federal Circuit found that the home office and local sales were not sufficient to fill the statutory requirements.

= = = = =

The decision here further solidifies the impact of the TC Heartland case — spreading jurisdiction out and away from E.D. Texas.

Of note, in its analysis, the Federal Circuit paid special attention to historical application of the statute that was originally adopted in 1897.  At that time, one congressman indicated its purpose was to “give original jurisdiction to the court where a permanent agency transacting the business is located.” 29 Cong. Rec. 1900 (1897) (statement of Rep. Lacey).  The court favorably cited pre-Federal-Circuit cases from the various circuits. Phillips v. Baker, 121 F.2d 752, 756 (9th Cir. 1941) (“A ‘regular place of business’ is, obviously, a place where such business is carried on ‘regularly’ and not merely temporarily, or for some special work or particular transaction.”); Knapp-Monarch Co. v. Casco Prods. Corp., 342 F.2d 622, 625 (7th Cir. 1965); Remington Rand Bus. Serv. v. Acme Card Sys. Co., 71 F.2d 628, 629 (4th Cir. 1934);  Am. Cyanamid Co. v. Nopco Chem. Co., 388 F.2d 818, 820 (4th Cir. 1968); Grantham v. Challenge-Cook Bros., Inc., 420 F.2d 1182, 1185–86 (7th Cir. 1969); Univ. of Ill. Found. v. Channel Master Corp., 382 F.2d 514, 516 (7th Cir. 1967); Shelton v. Schwartz, 131 F.2d 805, 808 (7th Cir. 1942).  In addition, the court revisited its important Cordis decision on point: In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985).

= = = = =

The opinion here is by Judge Lourie and joined by Judges Stoll and Reyna, and the basic holding is that the statute means the same as it did in 1897 and the same as it did in the 1940s and the same as it did in the 1980s (the last time it was interpreted directly).  Even if taken en banc, I would not expect any significant departure from this result.

Joy, Are you Happy about This Lawsuit?

Daniels v. Disney (C.D. Cal. 2017)

Depending upon your mood, this case might make you happy, sad, angry, or afraid — perhaps even fill you with love.

Daniels is known for creating the Moodsters – five anthropomorphic color-coded, gendered characters each representing a single abstract emotion that live in an world inside a child’s mind.


This might sound familiar if you have watched the Disney/Pixar movie Inside Out.

InsideOut The recently amended complaint alleges Copyright Infringement and Breach of Implied Contract:

Daniels conceived of The Moodsters, a children’s animated television pilot (“The Moodsters Pilot”) starring five color-coded anthropomorphic characters, each individually representing a single emotion: happiness, sadness, anger, fear, and love. These characters live in an abstract world inside a child. For instance, early materials about The Moodsters explain that “[s]omewhere deep down inside every child is a wonderous world where The MoodstersTM live.”

According to the allegations, Moodsters was pitched to several folks at Disney/Pixar 2005-2009. In 2010, Disney began work on Inside Out.

Read the complaint: [First Amended Complaint_Moodsters]


Inventorship and Third-Party Prototype Production

NFC Tech v. Matal (Fed. Cir. 2017)

Following an IPR administrative trial, the Patent Trial & Appeal Board (PTAB) concluded that the challenged claims of NFC’s U.S. Patent 6,700,551 are unpatentably obvious.  The focus of the dispute is on a pre-AIA inventorship claim — The PTAB rejected NFC’s attempt to claim priority to its date of invention.

Although the Patent Act itself has never directly defined inventorship, a substantial body of cases have worked through the problem.  In general, the courts have determined that invention is a two-step process that begins with a complete mental conception of the invention and concludes with reducing the invention to practice (i.e., creating a working model).  Most of the inventions claimed within patent documents are not actually reduced to practice prior to the application filing.  Rather, that substantial majority relies upon the judicially created exception that the filing of a patent application should be deemed (in the eyes of the law) a reduction to practice.

Here, NFC’s near-field communication patent application claims priority back to an original French patent application filed March 25, 1999, while the primary prior art reference has an effective date of February 8, 1999.   If the patent in question was a post-AIA patent, NFC would easily lose.  Here, however, NFC has the opportunity to claim back to its date of invention because its patent fits under the old law.

Under the old law, the inventor could claim priority back to that initial date of conception. However, that was generally a difficult prospect because the courts also required extensive post-conception diligence on the part of the patentee to reduce that invention to practice.  It is much simpler if the patentee did actually reduce the invention to practice prior to filing because diligence is no longer required post-RTP (just no suppression, abandonment, or concealment).  Although this ability to claim back to a date-of-invention is a benefit to patentees, it is usually thought of as something of a trap because of the high evidentiary burden placed on the inventor for proving prior conception, diligence, and reduction to practice.


Here, NFC argued that the named inventor (Charrat) and his team had reduced the invention to practice as of November 1998 by creating a device embodying the invention.  The PTAB rejected the argument — holding that a portion of the prototype had been built by a third party chip fabricator (Concept Electronique – CE) and, therefore, Charrat isn’t the one who reduced it to practice.  According to the Board, when a third-party reduces the invention to practice, that RTP only inures to the inventor if the inventor can show that he had already conceived of the invention and communicated that to the third party.  “For Charrat to receive the benefit of that reduction to practice, the Board read [the Federal Circuit] precedents as requiring that Charrat conceived the claimed invention and communicated the underlying subject matter to CE.”

On appeal, the Federal Circuit has reversed – finding that NFC had provided sufficient evidence of conception.

Here, Charrat provided testimony of his conception, but oral testimony alone is insufficient to prove prior invention.  Charrat also provided a data-sheet order to CE. The Board found that the data sheet had “no named author” – on appeal, however, the Federal Circuit credited the document’s statement “By BC” (BC are Charrat’s initials).  “Thus, contrary to the Board’s finding, the data sheet does name an author.”

The PTAB also found it odd that there was not more specific evidence (such as an email) from Charrat to CE that provides information on how to build the circuit (if Charrat had actually been the inventor).  The Federal Circuit rejected that analysis:

Here … Charrat’s account of a period of a few months, nearly twenty years ago, is nonetheless supported by documentary evidence. The relevant period and presence of documentary evidence places this case closer to Loral Fairchild Corp. v. Matsushita Electric. . . . [W]e characterized the inventor’s inability to submit [production] documents as “not surprising” given the amount of time that had passed. Here, similarly, Charrat’s account is corroborated by the initial data sheet that began the project, communications with CE, and documents generated after Charrat and INSIDE received the prototype and began to test it. “[C]orroboration of every factual issue contested by the parties is not a requirement of the law.” In re Jolley, 308 F.3d 1317, 1328 (Fed. Cir. 2002). On these facts, and particularly considering the amount of time that has passed, we determine that Charrat’s account was adequately corroborated.


In a typical murder mystery plot, the accused criminal wins by successfully pointing the finger toward the true killer.  Here, the appellate panel suggests that the the PTAB should have also considered that approach.  In particular, the Federal Circuit asks “who, if not Charrat, designed the prototype. . . . Charrat is the only source identified by the evidence for the design of the prototype. Indeed, there is no record evidence of any other INSIDE employee communicating with CE. Under the rule of reason, the totality of the evidence establishes the credibility of Charrat’s account.”

On remand, it looks like the IPR case will continue — in its original analysis, the PTAB did not actually determine whether the prototype embodied the claimed invention since it dismissed on other grounds.  Thus, NFC is simply one step closer to success.


The Alternate Reality of Prior Art

Thought pioneer Dan Abelow fits within an interesting designation.  So far in 2017, his U.S. Patent Publication No. 2012/0069131 – mysteriously titled “Reality Alternate” – is the Most-Oft examiner cited U.S. prior art reference.  The document – now patented as U.S. Patent No. 9,183,560 – covers a method of providing “a portal for a user … to be present simultaneously in two or more different non-fictional alternate realities that are distinct from a non-fictional physical reality of the user.”  [Here, I’m looking at Examiner citations rather than those submitted by Applicants]

The Abelow document reads something like science-fiction novel — defining a new Alternate Reality world both in terms of its incredible impact and technical specifications.  From the abstract:

Just as fiction authors have described alternate worlds in novels, this introduces an Alternate Reality—but provides it as technical innovation. This new Alternate Reality’s “world” is named the “Expandaverse” which is a conceptual alteration of the “Universe” name and a conceptual alteration of our current reality. Where our physical “Universe” is considered given and physically fixed, the Expandaverse provides a plurality of human created digital realities that includes a plurality of human created means that may be used simultaneously by individuals, groups, institutions and societies to expand the number and types of digital realities—and may be used to provide continuous expansions of a plurality of Alternate Realities. To create the Expandaverse current known technologies are reorganized and combined with new innovations to repurpose what they accomplish and deliver, collectively turning the Earth and near-space into the equivalent of one large, connected room (herein one or a plurality of “Shared Planetary Life Spaces” or SPLS) with a plurality of new possible human realities and living patterns that may be combined differently, directed differently and controlled differently than our current physical reality.

In addition to being written in a way that draws diverse connections (helpful for obviousness conclusions), the reference is also 750 pages long! (The patentee paid an extra $4,000+ in filing costs for the extra page length).  One of the best patent attorneys in the country – David Feigenbaum – filed this case and helped push it through to issuance.


The second-most examiner cited reference thus-far in 2017 is a much more mundane “Control Channel Interference Management and Extended PDCCH for Heterogeneous Network” from Canadian-Based Research-in-Motion. 


No Federal Cause of Action in Patent Assignment Dispute

First Data Corp. and Frank Bisignano v. Eric Inselberg and Inselberg Interactive (Fed. Cir. 2017).

Interesting tale: Back in 2010 Frank Bisignano loaned Inselberg Interactive (Interactive) $500,000 – a loan personally guaranteed by the company’s owner Eric Inselberg as well as by a security interest in the patents owned by Interactive at the time.

INselberg Patent Image

By 2011, the federal authorities were after Inselberg and charged him with criminal sports memorabilia fraud.  Those charges were later dropped after witnesses recanted Inselberg convinced prosecutors that the witnesses had lied.  [UPdate  By that time, however, Interactive had defaulted on the loan to Bisignano.  As a consequence, “Inselberg and Bisignano entered into an agreement that purported to convey Interactive’s patent portfolio to Bisignano.”  [USPTO Assignment Records]

Bisignano later became CEO at First Data and First Data (arguably) began to make use of some of the patents in Inselberg’s former portfolio.  Inselberg then approached Bisignano and requested that First Data pay a license fee (and also claiming that the prior assignment was invalid).   After being threatened with a lawsuit, Bisignano and First Data filed for declaratory judgment in Federal Court upholding the assignment and thus denying infringement.  Inselberg responded with a New Jersey state court action asserting that – under N.J. State Law – that the assignment was invalid.  In the state court case, Bisignano asserted non-infringement as a counter claim and then removed that case to federal court as well.

The two federal cases were both docketed before Judge McNulty who dismissed them both — finding no federal cause of action.  McNulty wrote:

Inselberg and Interactive acknowledge that they are not now the owners of the patents. They agree that they do not currently possess standing to sue for infringement. [Rather, they seek] a declaratory judgment that the assignment was invalid under state law.

Thus, according to the district court, the only issue truly at hand now is who owns the patents (with a side issue of whether the assignment included further duties).   Since transfer of patents is a matter of state law – there is no federal cause of action.  [Inselberg District Court Dismissal].

On appeal, the Federal Circuit has affirmed the dismissal – following its prior Jim Arnold decision. Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567 (Fed. Cir. 1997).

[In Jim Arnold], the plaintiff attempted to assert an infringement claim, but that claim was contingent on the success of the plaintiff’s state law claim that its prior assignment of the patents was void. We concluded that the district court did not have jurisdiction over the infringement claim . . . until ownership is restored in the assignor.

The approach here then is for the State Court to first figure out ownership.  Then, if it decides that Interactive is the owner, an infringement case can return to Federal Court.

Brian Brooks founder of Clinton Brooks represented the prevailing party Inselberg while William Adams led the Quinn Emanuel team on the other side. 

Foreign Lawsuit Does not Itself Create DJ Jurisdiction in US over Family-Member Patent

Allied Mineral v. OSMI and Stellar Materials (Fed. Cir. 2017)

US-based Allied manufactures a cement specially designed for lining aluminum furnaces.  Allied distributes both in the US and in Mexico (through Ferro Alloys and Pyrotek).  The patentee Steller is also US-based.  However, rather than suing Allied for infringing its US patent, Steller sued only the Mexican distributors in Mexico on its Mexican family member patent. U.S. Patent No. 7,503,974; Mexican Patent No. 279757.


Allied then filed a declaratory judgment action in the US — asking for a declaration that, inter alia, the US patent is invalid, not infringed, and unenforceable.  In the appeal here, the Federal Circuit has affirmed a lower court ruling that the DJ action is not based upon a “case of actual controversy” as required both by the Declaratory Judgment Act as well as the US Constitution.

Courts consider a totality-of-the-circumstances on the case-or-controversy question — asking whether “there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”  Citing to MedImmune v. Genentech, 549 U.S. 118 (2007).

Here, the Mexican lawsuit was quite relevant since a parallel patent was asserted accusing Allied products.  Those same products are also sold Allied in the US, and the main parties are all in the US.   However, after reviewing those facts, the Federal Circuit ruled that they were insufficient to create a sufficient controversy.  Importantly, there was no evidence that (1) the patentee had ever approached Allied; or (2) ever threatened to sue on its U.S. patent.   In Arkema Inc. v. Honeywell International, Inc., 706 F.3d 1351 (Fed. Cir. 2013), the Federal Circuit relied on foreign litigation in finding the a case-or-controversy.   Here, the court distinguished Arkema by pointing to parallel US litigation in that case.  There, “the combination of the German litigation and the U.S. litigation over a related patent” were sufficient to find a case-or-controversy.

Patentlyo Bits and Bytes by Anthony McCain

Get a Job doing Patent Law                  

Waymo v. Uber: Federal Circuit Denies Uber’s Arbitration Claim – Trial Moves Foreward

Waymo v. Uber (Fed. Cir. 2017)

The Federal Circuit has released a pair of decisions (2017-22352017-2130) in this patent / trade secret case.  Waymo (Google) sued Uber (Ottomotto) for patent infringement and trade secret misappropriations. “Specifically, Waymo alleges that its former employee, Mr. [Anthony] Levandowski, improperly downloaded thousands of documents related to Waymo’s driverless vehicle technology and then left Waymo to found Ottomotto, which Uber subsequently acquired.”

Arbitration: In this lawsuit, Waymo sued Uber but not Levandowski himself.  However, Levandowski intervened into the lawsuit to defend his personal interests.  Uber then filed a motion to compel arbitration based upon the arbitration clause found in the employment agreement between Levandowski and Waymo. Although the agreement’s terms do not extend to Uber, Uber argues that the agreement should equitably apply since the complaint alleges that the misappropriation was conducted “by virtue of [Levandowski’s] job at Waymo.”  In order to avoid an arbitration order, however, Waymo promised that it would not affirmatively rely upon “any employment or other agreement with Levandowski containing an arbitration clause” throughout the lawsuit (unless the documents are first raised by Uber).  The District Court (Alsup) then rejected the motion to compel arbitration.   Under the Federal Arbitration Act, denial of arbitration is immediately appealable.

On appeal here, the Federal Circuit affirmed — holding that as a matter of California Contract Law, the arbitration clause did not apply to Uber, and that equitable estoppel does not apply since Waymo has disclaimed any affirmative use of the employment contract in its case against Uber.

California law establishes that reliance on the contract bearing the arbitration clause is fundamental to compulsion by a non-party to arbitrate.

Here, Waymo has expressly stated that it is not relying upon the contracts containing the clause — thus successfully foreclosing the estoppel theory arbitration.

The second case involves a petition for Writ of Mandamus by Levandowski fighting-off a discovery order.  The particular document at issue is a report created by the Stroz Friedberg firm in the lead-up to the Uber-Otto merger regarding prior Waymo employees.  Importantly, the report was requested by Uber and Otto – not Lefandowski himself. The district court ordered discovery of the Stroz Report.  In the appeal, the Federal Circuit rejected the petition — holding that Levandowski failed to show the urgent nature of the interlocutory appeal.

Mr. Levandowski contends that disclosure of the Stroz Report would be “particularly injurious or novel.” . . .  His arguments are unpersuasive, for it is apparent that Mr. Levandowski cannot invoke attorney-client privilege or work-product protection.

Regarding injury, Mr. Levandowski fails to articulate any persuasive reasons why disclosure of the Stroz Report should be barred in this civil litigation, for the possibility of admissions against his interest is a valid function of civil discovery.  While Mr. Levandowski claims that the District Court would be unable to “cleanse the trial of all taint from the improper disclosure,” such an unsupported assertion is insufficient. Moreover, we take note that the District Court, reviewing the Stroz Report in camera, declined to exclude it, and as explained above, the Supreme Court has indicated that appellate courts can remedy an improper disclosure of privileged information by vacating an adverse judgment and remanding for a new trial.

Slip opinion, internal citations removed.   Thus, the outcome here is that the lawsuit will continue before the district court without interruption.  The court is preparing for trial, with ongoing allegations of discovery abuse as well as a pending partial summary judgment motions.  A recent order from the court is as follows:

By SEPTEMBER 15 AT NOON, counsel for plaintiff Waymo LLC shall file a declaration under oath responding to each and every accusation of discovery misconduct by Waymo [made by] defendants Uber Technologies, Inc., and Ottomotto LLC’s (collectively, “Uber”).

Respond fully to each and every allegation therein. Be complete and accurate. Counsel shall also state the extent, if any, to which it is true that Waymo “still has not produced a privilege log” (id. at 4).

Also by SEPTEMBER 15 AT NOON, counsel for Uber shall file a declaration under oath in support of the aforementioned accusations.

Further, a fascinating article by Mark Harris was published this week in IEEE’s Spectrum about the lawsuit titled: Could a Pair of Earrings Hurt Waymo’s Lidar Trade Secrets Lawsuit?


Claim construction by any other name…

By Jason Rantanen

is still claim construction in my book.  This is true even when the claim construction focuses less on the specific meaning of individual words or phrases and more on construing the invention as a whole.


One of the most enjoyable things about teaching a course like Patent Law, which I’m doing again this fall, is that you get to re-read all the old classics and work through them from first principles with students who are not (yet) locked in the dogma of accepted narratives.  In other words, to see cases such as Mayo, Myriad, and Alice through fresh eyes, or to explore the evolution of post-Markman claim construction from Markman to Cybor to Phillips to Teva.  Today we worked through some of the examples that the PTO has published–for those who aren’t aware, there’s a host of them on the PTO’s website.

As I’ve read through the patent eligible subject eligibility cases again, I’m struck by the extent to which the courts engage in what I can only describe as claim construction–but a very different type of claim construction than what’s contained in the countless opinions deciding the meaning of individual claim terms over the last two decades.  Those cases address the meaning of individual terms or phrases in a patent claim, often in a way that is dispositive of an infringement, novelty or nonobviousness issue.

The different type of claim construction that I’m talking about is what courts necessarily do when conducting a patent eligible subject matter analyses (and perhaps nonobviousness and enablement as well): construe the invention from the claims rather than interpret a particular word or phrase. None of the judicial opinions talk about what they’re doing as claim construction, but that seems to me to be exactly what it is.

The idea that courts describe patent claims in words other than those of the claims themselves during patent eligible subject matter inquiries is nothing new–to the contrary, it’s a frequent complaint about the Supreme Court’s patent eligible subject matter cases.  Usually, it’s referred to as determining what the claims are “directed to,” or, in the second part of the Mayo/Alice inquiry, the search for an “inventive concept.”

But if claim construction is understood as the translation  of the words of a patent claim into text that will have meaning for the person deciding a legal issue such as infringement or validity, then discussions of the patent claims in the context of patent eligible subject matter analyses would seem to be exactly that.  Alice offers an obvious example: there, the Supreme Court explained that “[o]n their face, the claims before us are drawn to the concept of intermediated settlement,” (an abstract idea, failing Mayo step 1), and that “viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer” (thus failing Mayo step 2).  Put another way, the Court took the words of the claim, gave them legally operative meaning, and then assessed whether that legally operative meaning against the criteria of abstract idea and inventive concept.  That’s claim construction.

I can see some pushback here from folks who think of claim construction solely as the process of determining the meaning of individual words or phrases in a claim–in other words, as  questions of accuracy about the meaning of words.  The sharp focus on the meaning of individual claim terms has dominated thinking about patent law for the last two decades, but I think it’s a mistake to view claims only as individual limitations.  That approach is useful for inquiries such as literal infringement or novelty, but it’s of less use when conducting other types of patentability or validity analyses.  I’m not suggesting that claim term interpretation is irrelevant to patent eligible subject matter or enablement inquiries–sometimes the meaning of individual terms matters quite a bit.  But what I see courts doing again and again in the patent eligible subject matter cases is to read the claims to arrive at a construction of the invention, rather than resolve disputes about the meaning of particular terms.

My thinking in this area is heavily influenced by Andres Sawicki’s forthcoming article The Central Claiming Renaissance.  Professor Sawicki argues that the Supreme Court’s re-invigoration of patent eligible subject matter has been accompanied by a rebirth of “central claiming”: the idea that “courts use both the specification and the claims to situate the inventor’s work in the context of the technological field to understand just what it is that the inventor contributed.”  Id. at 10.  Sawicki observes that the Mayo/Alice analysis necessarily requires a determination of the inventor’s contribution–and particularly, whether that is the type of thing that is patent eligible subject matter.  Consistent with the idea of central claiming, he suggests that in identifying the inventor’s contribution, the Supreme Court looked mostly to the the specification when making this determination in Bilski, Mayo, and Alice,  even as he acknowledges the important role the claims play in what the Court was doing.  Id. at 23-35.

While I mostly agree with Professor Sawicki’s analysis of the Supreme Court’s patent eligible subject matter cases,  I think the article gets over-invests in the concept of “central claiming.”  As Sawicki recognizes, even when conducting the Mayo/Alice analysis, courts are still construing the actual claims, not the written description, to identify the invention.   They draw on the written description, but so too does conventional claim term interpretation.  I’m also hesitant because what’s involved isn’t “claiming;” it’s the process of construing an existent claim.   That said, I don’t have any sticky words to describe this alternate approach to claim construction.  The best I’ve come up with are “whole claim construction,” “invention-focused construction,” or “inventive contribution construction” as contrasted with “claim term interpretation.”


Why does it matter whether we call what the court’s doing “claim construction?” After all, a rose by any other name still smells as sweet.

There are a few reasons.  First, the old adage that “the name of the game is the claim” is just as true when courts are construing the claims in a general sense as it is when courts are engaged in term-based constructions.  As patent practitioners know, how the court articulates the claims for Mayo steps 1 and 2 matters–and can even be dispositive, as the recent case of Visual Memory LLC v. NVIDIA Corp. shows.  Recognizing that the courts are engaged in type of claim construction has the benefit of focusing the parties’ arguments on an issue that may determine the outcome of the case.

A second benefit from recognizing that courts are engaged in claim construction in the patent eligibility inquiry is that the discussion can then turn to what constitutes an abstract idea.  Sure, the court’s construction matters, but so too does the question of what an abstract idea actually is.  Untangling these two issues–the construction of the claim and the meaning of “abstract idea”–may bring clarity to the second one.

A third reason why we should acknowledge that there’s a type of claim construction going on in patent eligible subject matter analysis is because the Federal Circuit’s opinions don’t.  Recognizing that the courts are engaged in a type of claim construction raises an important question: we have a complex methodology and approach to interpreting claim terms; what then is the methodology for this other type of claim construction that the courts are doing?  As the patent eligible subject matter jurisprudence develops, methodological variants are emerging that reflect sharp differences in the way that claims are being construed when conducting the patent eligible subject inquiry.  Some of these divisions present the same types of issues as the conventional claim term interpretation cases raise, such as “how much weight to give the specification?,” while others present new divisions, such as the question of “at what level of generality the claims should be read?”

As a first pass at this idea, here are a few different ways that “invention-focused construction” can be done:

  • At one extreme is the ipsis verbis methodology: to repeat the words of the claim and nothing but.  Only those words, and perhaps interpretations of some key terms, suffice.  One might picture an attorney standing before a judge who repeatedly asks “what’s the invention?” while the attorney dutifully recites the words of the claim again and again, neither understanding why the other doesn’t get it.
  • At the other extreme is a claim construction untethered from the claims themselves.  An example might be to construe a claim to a typewriter as being to a hot dog.  While this example is absurd, the point is to illustrate that there is a range from ipsis verbis to a construction of the invention that has no connection to the claims.
  • Another dimension of the invention-focused construction involves the degree to which the construction hones in on the inventor’s contribution.  To borrow from the USPTO’s gunpowder example, the “inventive concept” of a claim to “an intimate finely-ground mixture of 75% potassium nitrate, 15% charcoal and 10% sulfur” isn’t the individual ingredients; those already exist in nature.  Rather, the “invention” is the combination of the ingredients, or the specific ratios, or that they are finely ground in the mixture.
  • Alternately, the court may treat the claim as a whole as the “invention,” not caring about which part of it constitutes the inventor’s contribution to the art.  I struggle with applying this approach: how do you conduct an analysis of whether the invention is eligible subject matter when you aren’t focusing in on what is new?

In my next post I’ll write more about how these different approaches recently manifested in the Visual Memory case that Dennis blogged about last month.

Prosecution Histories as Prior Art

Perhaps the most debated issue in obviousness disputes is the question of whether a person of ordinary skill in the art would have been motivated to combine prior art references in order to form the invention as claimed. In KSR, the Supreme Court made the process a little bit easier for patent examiners by permitting a common sense analysis. Still, 10 years later, the issue arises on a daily basis for patent attorneys and in the vast majority of obviousness challenges to issued patents.

I have long felt that prosecution history files may serve as key evidence in justifying the motivation to combine. As an example, consider a patent prosecution file history from several years ago that that includes an office action rejection based upon the patent examiners conclusion the two prior art references should be combined. Regardless of whether the examiners assertions were correct at the time, that document seems to be pretty good evidence someone actually considered combining references together.  In general, a prior art statement that expressly suggests and provides reasons for combining Reference A with Reference B is really good evidence for combining the two.

There are several difficulties with my “patent prosecution as prior art” theory.  A first problem is that, although patent prosecution files are open to the public once a patent issues or the application publishes, the prosecution history files are not well indexed or searchable in any meaningful way. As far as I know, there is no publicly accessible database of prosecution history files that is either indexed or searchable.  That problem is becoming a historic problem.

Beginning this week, the USPTO has transitioned its Private Pair system to include text versions of its office action rejections as well as notices of allowances (actual XML and DOCX versions).  It is a straightforward step to move these documents into a searchable database available for public consumption.

I’ll note here that the XML/DOCX files are quite nice and, although not well tagged, will make it easy for patent attorneys to cut & paste from the OA in their responses or client emails. The system also includes a new mechanism for submitting documents to the PTO.

Is the Federal Circuit Under Water?: In re Aqua still Awaiting Decision

As a placeholder – I’ll note here that the pending en banc case of In re Aqua Products regarding amendments during IPR Proceedings is still pending before the Federal Circuit. The court asked two questions:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them?  Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim?  If so, where would the burden of persuasion, or a burden of production, lie?

The en banc order was released in August 2016, and oral arguments heard in December 2016.  The 8-month delay in writing the opinion is unusually long.

In re Aqua: Amending Claims Post Grant in an IPR

In re Aqua: Ambiguity in the Statute Means Deference to the PTO

In re Aqua Products

Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

En Banc Query: Must the PTO Allow Amendments in IPR Proceedings?






Claiming Said Invention


The chart above provides an update to my prior post – looking at patents issued over the past 40 years and finding the proportion of patents that use the word “SAID” within the patent claims.

During this time, there has been a general trend in legal writing toward the use of Plain English rather than legalese, and I believe that the chart here is generally representative of that trend.  Some agencies, such as the SEC, have required the use of plain English in documents submitted for public disclosure. The USPTO has not yet taken that route. However, the USPTO is required to ensure that its own publications are “clear, concise, and well organized.” Plain Writing Act of 2010.

How I describe Said Invention

More on Tribal Immunity: Is a Tribal-Owned Patent Immune from IPR Challenge?

US Law generally holds that Indian Tribes are “Sovereign Powers” that “possess immunity from suit,” although only “to the extent that Congress has not abrogated that immunity and the tribe has not clearly waived its immunity.”  Breakthrough Management Group, Inc. v. Chukchansi Gold Casino and Resort 629 F.3d 1173 (10th Cir. 2010), cert denied.  As the Supreme Court wrote, “without congressional authorization,” the “Indian Nations are exempt from suit.” United States v. United States Fidelity & Guaranty Co., 309 U.S., at 512 (1940).

Questions in patent law remain, primarily: (1) Does the exemption from suit extent to exemption from an administrative action to cancel a tribal owned patent?; and (2) by purchasing a patent does a Tribe implicitly waive sovereign immunity regarding validity challenges to the patent.

In 2006, an en banc Federal Circuit decided the somewhat parallel case of Intel v. CSIRO, holding that the Foreign Sovereign Immunities Act (FSIA) permitted suit against Australia’s national science agency based upon the agency’s commercial activity — attempting to licence its WIFI patents. The Statute provides that:

[a] foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case … in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States. . . . Here, we are persuaded that these declaratory-judgment actions are “based on” CSIRO’s commercial acts of obtaining and asserting a United States patent.

My understanding is that FSIA does not apply directly to the Tribal immunity, which is judge-made-law.


Did the Abrogation of Form 18 Raise Pleading Standards?

by Dennis Crouch

Lifetime Indus v. Trim-Lok (Fed. Cir. 2017)

The district court dismissed Lifetime’s infringement complaint for failure to state a claim. Fed. R. Civ. Pro. 12(b)(6).  On appeal, the Federal Circuit reversed – holding that the inducement and contributory infringement claims were sufficiently pled.

The most interesting aspect of the decision is actually a bit of dicta regarding the now abrogated Form 18. Prior to December 2015, the Federal Rules of Civil Procedure included a set of Form complaints – the patent complaint (Form 18) was truly bare-bones.  Following Iqbal and Twombly, many of us saw a real tension between the permissible forms and the plausibility requirements of Twiqbal. Thus, when the forms were eliminated in 2015, I assumed that pleading standards had been effectively raised. Here, the Federal Circuit pushes back against that assumption:

The parties assume that there is a difference between the requirements of Form 18 and Iqbal / Twombly; however, we have never recognized such a distinction. See KTech (“That Form 18 would control in the event of a conflict between the form and Twombly and Iqbal does not suggest, however, that we should seek to create a conflict where none exists.”). In any event, we need not resolve the question whether there is a difference between the two standards here because, as we explain, the SAC met the Iqbal / Twombly standard for pleading direct infringement.

When they think you are wrong, double-down.

Lifetime’s U.S. Patent 6,966,590 claims a two-part seal used in RV slide-out rooms.  In 2013, two of Lifetime’s seal-designers left the company and joined Trim-Lok.  Although neither were named inventors on the asserted patent, Lifetime alleged that both had knowledge of the patent.  Although the accused infringer only manufactured only one of two components of the claimed invention, the Federal Circuit ruled that the patentee pled facts sufficient to reasonably infer that an infringing combination was created once installed in a Forest River RV. (Two components: a seal installed on an RV).



  • Direct Infringement Properly Pled: Lifetime did allege that TrimLok installed the seal onto the RV; that is, Lifetime alleged that Trim-Lok made an infringing seal-RV combination.”
  • Inducement Properly Pled: Alleged prior knowledge of the patent by the two former employees which allows us to presume intent.
  • Contributory Infringement Properly Pled: Knowledge of patent sufficiently alleged.

To be clear, the patentee did not simply allege these conclusively but went well beyond a typical Form-18 complaint to specify:

  • where the alleged infringement occurred (the Forest River plant);
  • when it occurred (in or around June 2013);
  • who performed the allegedly infringing act (an agent or employee of Trim-Lok); and
  • why (to test fit the seal onto the RV and to solicit sales).

These particular factual allegations – according to the court – easily push the complaint over the plausibility threshold.

Dismissal Reversed and remanded – the district court should now pick-up the case again and give the patentee a chance.



Allergan: Creating Sovereign Immunity with Tribal Pass-Through

by Dennis Crouch

It appears that Allergan’s attorneys have been working overtime.  In a bold move, Allergan has transferred title to all of its Restasis patents to the Saint Regis Mohawk Tribe.  I don’t know if I’m laughing or crying, but there’s not a dry eye in the house.

Image result for Restasis

The move is designed to prop the patents up against challenge via a tribal sovereign immunity claim.   (Several of the transferred patents are being challenged before the PTAB in AIA Trials). Parallel claims have been quite successful for public universities in fending of both IPR and declaratory judgment lawsuits – even when the patents are exclusively licensed to commercial entities.  In fact, this is one reason why public universities almost never sell their patent assets, but instead merely license them.  Of course, a major difference with the university situation is that the university patents are the outcome of original university research.  In Allergan’s case one question will be whether the ownership structure creates a sham that can be pierced as if a fraudulent corporate veil. I’m confident, however, that Allergan’s lawyers worked through the analysis.  One element of the potential sham – the Tribe reports that it is being paid $13.75 million to buy the patents and will receive up to $15 million in annual royalties.

Allergan is a frequent player of jurisdictional games.  Its corporate “headquarters” is in Dublin for the tax benefits, although it is “actually” sited in New Jersey.

Patents involved: United States Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930 and 9,248,191.