Hrdy: A Response to ‘Innovation Kills Jobs’

Last week I posted a discussion of Prof. Hrdy’s intriguing new article on Technological Un/employment.  Prof. Hrdy has now provided a short response that basically explains how I took a portion of her article (automation killing jobs) while ignoring other aspects of the 79-page article (e.g., many positive benefits of innovation, including job creation).  – DC

by Prof. Camilla Hrdy

I am so honored that you found my article worth a post on Patently-O.  In the nature of academic discussion and in good fun, I would like to briefly respond. (And please do feel free to post this).

First, I really appreciate the provocative title, “Prof. Hrdy: When Inventions Kill Jobs“, but want to add a bit more color. My thesis, as reflected by the title of my paper, Technological Un/employment, is that innovation, and thus intellectual property, both create and eliminate jobs. Historically, we have had more of the former than the latter.

Second, I think some readers may have come away with the idea that I am a bit of a Luddite, when I am the opposite. Innovation is good. No: innovation is great! It is the secret to economic prosperity and where the good jobs will come from in the future. I also believe IP is, on aggregate, good for innovation. As you astutely noted, my belief in the need for some form of regulation is motivated, at present, largely by distributional concerns, not by a fear of innovation itself. Even if technology won’t be doing all work by the year 2048, the number of humans needed to build, maintain, and operate that technology is dwindling, and access to jobs is increasingly restricted to highly educated people with unique opportunities — which most people do not enjoy. (Please see Part II of the Article). Those opportunities are also unequally distributed geographically, an issue I have raised in much of my work, particularly in my papers Cluster Competition and Patent Nationally, Innovate Locally. If current trends continue, the job market will more and more resemble a pyramid consisting of a select few at the top with high quality jobs —  and a lot of IP —  and the rest of humanity unemployed or consigned to “gap filling” for the machines. I also think that when inventions make others’ skills completely obsolete, this resembles a negative externality not unlike pollution. (Please see Part IV). There is at least a case to be made that those who profit should have to internalize some of the harms their inventions impose on others.

Third, while I do support some form of regulation to help avoid these outcomes, I do not support denying patents on labor displacing inventions. While it (might have) made sense in Queen Elizabeth’s time, I reject a “labor displacing patent bar” in favor of more effective tools. Likewise, I oppose fully banning labor displacing inventions like self-driving cars. Instead, I suggest a small —  key word small —  tax on profits from certain innovations that are found, upon adoption, to displace a significant number of workers.

This “labor displacing IP tax” would have a two-fold effect. First, it would permit giving back to workers at least some of what they lose, either in the form of skills training or — hopefully we won’t come to this — a universal basic income in the scenario where skills training doesn’t help because machines are capable of performing most tasks in the economy. Second, a small tax on underlying IP would at most marginally slow down the pace at which companies take advantage of improvements in machine learning and develop ever-more sophisticated forms of automation. The leading alternative proposal is a “robot tax” levied on businesses that adopt labor displacing inventions. To me, it makes far less sense to tax the mom-and-pop restaurant that adopts software to keep costs low than it does to tax whichever mega company owns the intellectual property covering the software.

The reason I turn to regulation is not to halt innovation. It is so that we can innovate with abandon. Also, I have a video to respond to your creative use of the Mr. Rogers’ segment, courtesy of Daniel Day Lewis in There Will Be Blood  

In any event, thanks again for your thoughtful post. It is great to have this opportunity to engage in discussion on Patently-O.

= = = =

Prof Hrdy: When Inventions Kill Jobs


Blogs: The Newest Form of Communication

Although the point of the new ABA Formal Ethics Opinion is important–“don’t reveal information relating to the representation”–its first paragraph appears at least a decade behind.  The article begins:

Lawyers comment on legal topics in various formats. The newest format is online
publications such as blogs . . .

The line included a footnote explaining the term “blog.”  As a an FYI – “Blog” was Merriam-Webster’s word-of-the-year in 2004.

“The newest format is online publications such as blogs . . . “ (followed by a FN explaining the term).



For Predictable Arts: Written Description of Genus Satisfied by Single Species Disclosure and Fact that Other Members of Genus are Well Known in the Art

by Dennis Crouch

35 U.S.C. 112(a) requires that a patent specification include a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms.”  That statutory language serves as the basis for the written description requirement — whose purpose is to ensure that “the inventor actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc). Claims that were not sufficiently described in the originally filed specification will be deemed invalid or, if a priority filing is involved, the patentee will be barred from relying upon that document for its filing date.

Most often, the written description requirement arises in situations where the patent applicant substantially modified its patent claims during prosecution in a way that creates some distance between the original disclosure and the new claims.  Commonly, the application will include a set of specific disclosures and the patentee will attempt to later amend its claims to cover a broad genus.  (Recognize that in Ariad, the Federal Circuit explained that there can be a failure of written description with never-amended claims.)

In Hologic v. Smith & Nephew (Fed. Cir. March 14, 2018), patentee (Smith & Nephew) claimed the use of a light-guided endoscope for uteral surgery.  The original specification of the parent application did not include the “light guide” language, but did explain that the endoscope included “a fibre optics bundle which provide for lighting at the end of [the] lens.”  During prosecution, the examiner objected to the use of “light guide” in the claims since that term was never discussed in the specification — in response, the patentee amended the specification to state that the aforementioned firbre optics bundle is an example of a light guide: “a light guide such as, a fibre optics bundle which provide for lighting at the end of [the] lens.” (underlined language added to specification during prosecution).  The disclosure also included drawings showing the connection between the lens and the light source.

The specification amendment satisfied the original examiner and U.S. Patent No. 8,061,359 was duly issued to Smith & Nephew.  However, on inter partes reexamination, the new examiner raised the problem again – concluding that the disclosed single example of “fibre optics bundle” language did not satisfy the broad genus of “light guides.”  The PTAB (Board) sided with the patentee.  Although the Board identified the case as a “close call,” it ultimately held that the disclosure was sufficient to satisfy the written description requirement.  On appeal here, the Federal Circuit has affirmed.

The written description inquiry begins with the “four corners” of the original patent specification as read from the perspective of a person of ordinary skill in the art.  To satisfy test, the specification must describe the invention in a way understandable to that PHOSITA and that shows possession of the invention now being claimed.  This is an objective inquiry and the court applies a reasonableness test — does the specification reasonably convey possession of the invention?  Here, the question is whether the disclosure of fibre-optics reasonably conveyed the claimed “light guide.”  As part of the analysis of the test, the court also considers the level of predictability — finding that this field (at least as far as equipment construction) is predictable. That conclusion means that “a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.”

On appeal, it is also important to recognize that satisfaction of the written description requirement is deemed a question of fact.  As such, Board conclusions are given substantial deference on appeal.

In walking through its analysis the Federal Circuit appeared to fully base its decision on two agreed-upon facts:

  1. Everyone agrees that the patent discloses one light guide – the fibre optic bundle: “Board properly relied on the fact that the parties do not dispute that a
    “fibre optic bundle” is a type of light guide.”
  2. Everyone agrees that various types of light guides are well-known in the art: “Nor did the parties dispute that various types of light guides were well-known
    in the art.”

Based upon these two facts (and presumably the predictability of the art), the Federal Circuit found that the validity conclusion appropriate:

Accordingly, we conclude that substantial evidence supports the Board’s finding that Emanuel PCT reasonably conveys to a person of ordinary skill that the inventor had possession of a “light guide.”

The bottom line is suggested by the article title: For Predictable Arts, the written description requirement to a claim for a genus is satisfied by disclosure of a single species of that genus along with the (later proven) fact that other members of the genus are also well known in the art.  

Note here that the challenger also argued that the written description did not show the light guide being “permanently affixed” in the “first channel.” On appeal, the court also rejected those arguments.

Decision here authored by Judge Stoll and joined by Judges Newman and Wallach.

Examples of Linguistic (In)definiteness

After reading his recent law review note on indefiniteness, I asked Michigan Law student Gary Fox to apply his framework to the new Federal Circuit decision of Capital Security Systems, Inc. v. NCR Corp. – DC

Guest Post by Gary M. Fox (, University of Michigan Law School

In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court articulated the standard for indefiniteness under 35 U.S.C. § 112: “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”[1] Since then, courts have had nearly four years to apply this new standard.

I have previously argued that the reasonable-certainty standard might be understood as imposing two separate requirements: linguistic and physical definiteness.[2] Under my proposed framework, a claim is linguistically indefinite if it is open to multiple constructions but one construction is not clearly correct. Additionally, a claim is physically indefinite if it uses a comparative term or involves an ambiguous spatial relationship but is not limited to a narrow range. In this view, a claim that is either linguistically or physically indefinite fails to meet Nautilus’s reasonable-certainty standard.

Last week, the Federal Circuit handed down a nonprecedential decision in Capital Security Systems, Inc. v. NCR Corp.[3] In that case, the court considered whether two different claim terms were definite.

Capital Security holds four patents that are directed to an automated document cashing machine.[4] Three of those patents are continuation patents that share the parent patent’s specification and priority date.

The independent claims in the continuation patents contain the phrase “ascertains an apparent signature” or a highly similar variation.[5] For example, a representative claim includes the following limitation: “the processor reviews images from a legal amount recognition (LAR) line and a courtesy amount recognition (CAR) line and ascertains an apparent signature from the document image in order to validate the document.”[6]

The other term at issue was “transactional operator.” One claim in the parent patent includes the following language: “a transactional operator for operation by the user to perform a transaction upon deposit of sufficient cash by user for the requested transaction.”[7] The parent patent’s specification does not use the term “transactional operator,” but it does describe a microcomputer, keyboard, and display.

On NCR’s motion for summary judgment, the district court held that “ascertains an apparent signature” and “transactional operator” were both indefinite.[8] The court credited NCR’s expert, who offered four possible meanings for “apparent signature.”[9] NCR’s expert also offered three possible meanings for “transactional operator.”[10] In both cases, he testified that a skilled artisan would not have been able to decide amongst the possible options. The district court agreed and found the claims invalid.

In its decision on appeal, the Federal Circuit reversed the district court’s holding that “ascertains an apparent signature” was indefinite. The court reasoned that “a skilled artisan would understand the claimed ascertaining step to correspond to determining the presence of a signature on the signature line of a check.”[11] It found that the claim had been written to encompass all four of the options that NCR’s expert presented. The court rejected NCR’s argument that the term was indefinite because it was not tied to an “objective standard of measure.”[12] It also pointed out that Capital Security had not “muddle[d] the scope” of the term during prosecution.[13]

On the other hand, the Federal Circuit affirmed the district court’s holding that “transactional operator” was indefinite. The court noted that it was unclear whether that term included the microcomputer, the keyboard, and the display, or only a subset of those components.[14] During oral argument, counsel for Capital Security contended that the microcomputer and keyboard counted as the “transactional operator” but that the display did not count. Because “transactional operator” did not have a “commonly-accepted definition,” the court found the term indefinite.[15]

For both “ascertains an apparent signature” and “transactional operator,” NCR presented arguments grounded in linguistic indefiniteness. For each term, it asserted that there were multiple possible constructions but that no construction was clearly correct. That strategy makes sense. After all, the Federal Circuit had previously held claim terms with three or four possible meanings indefinite.[16]

For “ascertains an apparent signature,” the court essentially found that NCR’s expert presented a false choice among four constructions when the claim was drafted to encompass all four options. With one slightly broader construction that was clearly correct, any potential linguistic indefiniteness problem disappeared.

But for “transactional operator,” there was a legitimate linguistic indefiniteness problem. The court could not identify which components counted. For example, the “transactional operator” could have been the microcomputer and keyboard; the microcomputer and display; the keyboard and display; or the microcomputer, display, and keyboard. Even if some of these combinations were likelier than others, a skilled artisan would not have known which construction was correct. Therefore, the term suffered from linguistic definiteness.

As I have said before, my proposed framework of linguistic and physical definiteness might not work for every conceivable case.[17] But it seems to work for Capital Security Systems v. NCR, and it may be a helpful starting point for understanding the reasonable-certainty standard in the wake of Nautilus.

= = = = =

[1] 134 S. Ct. 2120, 2124 (2014).

[2] Gary M. Fox, Note, Understanding Nautilus’s Reasonable-Certainty Standard: Requirements for Linguistic and Physical Definiteness of Patent Claims, 116 Mich. L. Rev. 329 (2017).

[3] Capital Security II, No. 2017-2368, 2018 WL 1181197 (Fed. Cir. Mar. 7, 2018).

[4] U.S. Patent No. 5,897,625; U.S. Patent No. 7,653,600; U.S. Patent No. 7,991,696; U.S. Patent No. 8,121,948.

[5] Capital Security II, 2018 WL 1181197, at *1.

[6] Id. at *2 (emphasis added by court) (quoting U.S. Patent No. 7,653,600 col. 39 l. 35 – col. 40 l. 11).

[7] Id. (emphasis added by court) (quoting U.S. Patent No. 5,897,625 col. 24 ll. 31–53).

[8] Id. at *3 (citing Capital Sec. Sys., Inc. v. NCR Corp. (Capital Security I), 263 F. Supp. 3d 1366, 1375 (N.D. Ga. 2017)).

[9] According to NCR’s expert, the four possible meanings were as follows: “(1) determining if anything in the way of a mark was present in the signature field, useful or otherwise; (2) distinguishing a mark resembling legible text from a mark never intended to be a signature, such as a scratch or smudge mark; (3) determining if the scanned image field corresponds to a handwritten cursive signature versus an otherwise legitimate block letter printed name; or (4) determining if the signature is forged.” Id. (quoting Capital Security I, 263 F. Supp. 3d at 1373).

[10] Again, according to NCR’s expert, the options for this term were “(1) a user interface allowing user selections; (2) an internal computer component like software executing an algorithm; or (3) a computer component that performs” a certain task. Id. at *4.

[11] Id.

[12] Id. at *5.

[13] Id.

[14] Id. at *5.

[15] Id. at *6.

[16] Fox, supra note 2, at 344–45, 345 n.118 (first citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015); then citing Dow Chem. Co. v. Nova Chems. Corp. (Can.), 803 F.3d 620 (Fed. Cir. 2015)).

[17] Id. at 348.

Berkheimer En Banc: HP Asks Whole Court to Consider whether Eligibility is Predominately Factual

by Dennis Crouch

In its February 2018 decision in Berkheimer v. HP, the Federal Circuit – led by Judge Moore – held that fundamental aspects of the patent eligibility test question are based upon questions of fact.  That holding appears in tension with prior Federal Circuit holdings, such as Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332 (Fed. Cir. 2017) and OIP Techs., Inc. v., Inc.,
788 F.3d 1359 (Fed. Cir. 2015).

In its new petition for en banc rehearing, HP asks the court to reconser — raising particular questions:

  1. Is the threshold inquiry of patent eligibility under 35 U.S.C. § 101 a question of law without underlying factual issues that might prevent summary judgment?
  2. Is the appropriate inquiry under Alice’s step 2 whether the claims transform an abstract idea into a patent-eligible application, or merely “whether the invention describes well-understood, routine, and conventional activities”?
  3. Is a statement in a patent specification reciting that the invention is new and improves upon the prior art enough to create a genuine issue of material fact that precludes summary judgment as to patent eligibility under 35 U.S.C. § 101?

The case has good shot at being heard by the whole court.  I expect that the court would agree with Judge Moore that underlying factual issues are possible in the eligibility analysis, but would also hold that the exercise is not “a predominately factual one that ‘opens the door in both steps of the Alice inquiry for the introduction of an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.'” (HP Petition, quoting Judge Reyna’s dissent in Aatrix).

  • Read HP’s petition here: Berkheimer_v._HP_Inc.
  • Amicus filings have a quick timeline for en banc petitions (7 days 14 days?)
  • The brief quoted my blog post statement that the decision is “in substantial tension with prior treatment of eligibility analysis.”

Patent Eligibility: Underlying Questions of Fact


Guest Post: The Substantial Identity Requirement of Patent Infringement

Guest Post by Professor Samuel F. Ernst, Golden Gate University School of Law

Every patent litigator knows that if a product or process accused of patent infringement contains every limitation of the asserted patent claim, there is infringement.  “It is fundamental that one cannot avoid infringement merely by adding elements if each element recited in the claims is found in the accused device.”[1]  In fact, this is not the law.  In 1898 the Supreme Court held in Westinghouse v. Boyden Power Brake Co. that two steps are required for a patent holder to prove infringement.[2]  Yes, the patent holder must prove that the accused product falls within the literal language of the patent claims, but this does not end the infringement analysis.  The patent holder must further prove that there is “substantial identity” between the claimed invention and the accused device, “whether that identity be described by the terms, same principle, same modus operandi, or any other.”[3]  Hence, in Westinghouse, the Court held that although George Boyden’s accused air pressure train brake fell within the semantic scope of George Westinghouse’s patent claims, there was no infringement because the accused device “is a novel one and a manifest departure from the principle of the Westinghouse patent . . . because it solved at once in the simplest manner the problem of quick action, whereas the Westinghouse patent did not prove to be a success until certain additional members had been incorporated into it.”[4]  Hence the Court stated the correct rule for patent infringement as follows:

But even if it be conceded that the Boyden device corresponds with the letter of the Westinghouse claims, that does not settle conclusively the question of infringement.  We have repeatedly held that a charge of infringement is sometimes made out, though the letter of the claims be avoided [i.e., the doctrine of equivalents].  The converse is equally true.  The patentee may bring the defendant within the letter of his claims, but if the latter has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent his actual invention, he is as little subject to be adjudged an infringer as one who has violated the letter of a statute has to be convicted, when he has done nothing in conflict with its spirit and intent.[5]

The Westinghouse case has never been overruled by the Supreme Court.  In fact, the principle of Westinghouse was reaffirmed by the Supreme Court in dictum in the 1950 Graver Tank case.[6]  The Graver Tank opinion held that infringement may be proven by equivalents, even if there is no literal infringement.  But the Court also noted that infringement may be avoided despite literal infringement, under what has subsequently come to be known as the reverse doctrine of equivalents:

The wholesale realism of this doctrine [of equivalents] is not always applied in favor of a patentee but is sometimes used against him.  Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.[7]

In 1997, the Court declined to “speak the death” of the affirmative doctrine of equivalents, rejecting the petitioner’s argument that the doctrine was overruled by the 1952 Patent Act’s requirement that a patent applicant claim her invention in definite terms.[8]  The Court held that “[i]n the context of infringement, we have already held that pre-1952 precedent survived the passage of the 1952 Act.”[9]  This reasoning applies with equal force to the reverse doctrine of equivalents.  It also survived the passage of the 1952 Act.

Despite this history, since its creation in 1982 the Federal Circuit has all but overruled the reverse doctrine of equivalents.  The Federal Circuit has (accurately) warned litigants and the lower courts that “[n]ot once has this court affirmed a decision finding noninfringement based on the reverse doctrine of equivalents.”[10]  The Federal Circuit refers to the reverse doctrine of equivalents as “one anachronistic exception, long mentioned but rarely applied.”[11]  In the process of vacating findings of infringement under the reverse doctrine of equivalents, the Court has also cabined the doctrine in various ways, making it exceedingly difficult to prove.  Specifically, the court has: (1) held that the plaintiff no longer has the burden of proving substantial identity as part of the affirmative infringement case; rather, reverse equivalency is an affirmative defense with the burden on the accused infringer;[12] (2) overruled a previous case to hold that reverse equivalency is a question of fact, not an equitable determination or a question of law,[13] meaning that an accused infringer cannot readily use the doctrine as a tool to obtain summary judgment; and (3) held that the defense is only available when there is literal infringement, not when any of the claim limitations are infringed merely by equivalents.[14]

In a pair of recent law review articles, I argue that the Federal Circuit is wrong that the reverse doctrine of equivalents was an anachronistic exception, long mentioned but rarely applied.  In The Supreme Court Case that the Federal Circuit Overruled,[15] I dig deeply into the facts and reasoning of the Westinghouse case and several regional circuit court cases relying on the doctrine to argue that the reverse doctrine of equivalents is an essential safety valve in the patent infringement analysis to ensure that substantial innovations are not unduly enjoined or taxed by the patent thicket.  And in The Lost Precedent of the Reverse Doctrine of Equivalents, I review every published case finding or affirming non-infringement under the reverse doctrine of equivalents between 1898 and 1988, to conclude that the doctrine was regularly (even if not routinely) applied to find non-infringement in every decade from the 1900s through the 1980s, when the Federal Circuit effectively killed the doctrine.[16]  Of particular importance, opinions in the Second, Fifth, Sixth, Seventh, and Ninth Circuit courts of appeals hold that both literal and substantial infringement must be proven as part of the plaintiff’s prima facie case.[17]  The Second Circuit stated this fundamental, black letter law of patent infringement poetically: “There is no magic in a name, nor in a claim; that the words preferred by a patentee to define his invention apply literally to another’s device suggests, but does not prove, infringement.”[18]  In 1983, the Sixth Circuit bemoaned the fact that some courts “continue to pay lip service to the doctrine of literal infringement as though it were the rule…. Perhaps we are embarrassed to expose the ‘wholesale realism’ which controls many infringement cases, and we choose instead to present the facade of precision and certainty which attends the doctrine of literal infringement.”[19]

It is now time for the en banc Federal Circuit or the Supreme Court to overrule the erroneous doctrine of literal infringement and revive the reverse doctrine of equivalents.  As properly applied, the reverse doctrine of equivalents allows for accused innovations to escape infringement when they are substantially superior, practically and commercially, to the invention claimed by an asserted patent. [20]  Opponents of legislative patent litigation reform often argue that prospective legislation could have unforeseen adverse consequences on the incentive to invent.  An invigorated doctrine of equivalents would therefore be a more sensible, cautious, patent law reform than prospective legislation because it is applied by the courts on a case-by-case basis, with the court weighing the value of the patented invention against the value of the allegedly superior accused innovation and only granting relief in unusual cases.  Because the doctrine is not applied prospectively, it does not raise the concerns with unknown consequences that prospective litigation does.  Finally, the doctrine is a proven commodity because it was the law in this country from at least the 1900s through most of the 1980s, a period that saw substantial innovative advances, from the airplane to the rocket ship to the internet.  If a proper litigation vehicle is identified, a petition for certiorari arguing for the revival of the reverse doctrine of equivalents may well attract the attention of the Supreme Court.  The Supreme Court has been inclined to review the work of the Federal Circuit in recent years in cases where the Federal Circuit has applied a rigid rule (like the doctrine of literal infringement), given insufficient deference to district court determinations (as occurs when the district court is not permitted to weigh the principle of the asserted patent against the accused substantial innovation), and disregards or cabins Supreme Court precedent (as has been done with Westinghouse v. Boyden).[21]

= = = = =

[1] Stiftung v. Renishaw PLC, 945 F.2d 1173, 1178 (Fed. Cir. 1991).

[2] Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568 (1898).

[3] Id. at 568 (internal citations omitted).

[4] Id. at 572.

[5] Id. at 568 (emphasis added) (internal citations omitted).

[6] Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-611 (1950).

[7] Id. at 608-09.  It appears that this fundamental principle of infringement analysis came to be known as “the reverse doctrine of equivalents” due to a 1966 article by Charles F. Pigott, Jr.  See Charles F. Piggott, Jr., Equivalents in Reverse, 48 J. Pat. Off. Soc’y 291 (1966).

[8] Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21, 26 (1997).

[9] Id.  at 26-27 ((citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 342 (1961) (new section defining infringement “left intact the entire *27 body of case law on direct infringement”).

[10] Tate Access Floors v. Interface Architectural Res., Inc., 279 F.3d 1357, 1368 (Fed. Cir. 2002).

[11] Id.

[12] SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1123-24 (Fed. Cir. 1985) (en banc).

[13] Id. at 1126 (overruling Kalman v. Kimberly-Clark Corp., 713 F.2d 760 (Fed. Cir. 1983)).

[14] Texas Instruments, Inc. v. United States Int’l Trade Comm’n, 846 F.2d 1369, 1372 (Fed. Cir. 1988).  It should be noted that the Federal Circuit once mercifully vacated a sanctions award of over $10 million and attorney’s fees of over $400,000 that the district court had imposed on a defendant for the offense of merely raising the reverse doctrine of equivalents.  See DePuy Spine, Inc. v. Medtronic Sofamar Danek, Inc., 567 F.3d 1314, 1337-39 (Fed. Cir. 2009).  The Court acknowledged (incorrectly, in this author’s opinion) that “The Supreme Court has recognized it to be a viable defense, even if it is rarely asserted.”  Id. at 1339.  As set forth above, lack of substantial identity is not a defense; proving substantial identity is part of the affirmative infringement case.

[15] Samuel F. Ernst, The Supreme Court Case that the Federal Circuit Overruled: Westinghouse v. Boyden Power Brake Co., 68 Syracuse L. Rev. 53 (2018).

[16] Samuel F. Ernst, The Lost Precedent of the Reverse Doctrine of Equivalents, 18 Vand. J. Ent. & Tech. Law 467 (2016).

[17] See The Supreme Court Case that the Federal Circuit Overruled, 68 Syracuse L. Rev. at 62-66.

[18] Linde Air Prods. Co. v. Morse Dry Dock & Repair Co., 246 F. 834, 838 (2d Cir. 1917).

[19] Mead Digital Sys., Inc. v. A.B. Dick Co., 723 F.2d 455, 462 (6th Cir. 1983) (quoting Graver Tank, 339 U.S. at 608).

[20] By “innovation” I am referring to a practically and commercially functional product or process that has overcome the hurdles of financing, market-testing, regulatory approval, production, and other obstacles to become available for the benefit of the public.  This is distinguished from an “invention,” which is the articulation of an inventor’s idea, but not necessarily a fully realized innovation.  See Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 Cal. L. Rev. 803, 807 (1988).

[21] See also John F. Duffy, Counterproductive Notice in Literalistic Versus Peripheral Claiming, 96 B.U. L. Rev. 1197, 1221 (2016) (opining that the Supreme Court may review the Federal Circuit’s “literalistic claiming approach” in the next five to ten years).

Eligible: Method of Measuring Body Temperature

by Dennis Crouch

Exergen Corp. v. Kaz USA (Fed. Cir. 2018)

Following trial, a jury sided with the patentee Exergen – finding the asserted body thermometer claims infringed and not-invalid.  Post trial, the District Court confirmed the judgment and denied Kaz’s motion for invalidity under Section 101.  On appeal, a divided Federal Circuit has affirmed-in-part — with Judges Moore and Bryson siding with the patentee (valid under 101) and Judge Hughes arguing invalidity.  Although nonprecedential, the decision offers a key explanation for when medical diagnostic methods can be patent eligible and highlights a major split between members of the Court.  I would recommend that you read both the majority and dissenting opinions.

Claim 14 of U.S. Patent No. 6,292,685 is probably the most – borderline claim at issue. Below, I have listed claim 14 against Claims 54/55 of Exergen’s U.S. Patent No. 7,787,938, whose invalidity was previously affirmed by the Federal Circuit (judgment without opinion).

Claim 14 of ‘685 Patent – VALID

14. A method of detecting human body temperature comprising

making at least three radiation readings per second while moving a radiation detector to scan across a region of skin over an artery to electronically determine a body temperature approximation, distinct from skin surface temperature.


Claims 54/55 of the ‘938 Patent — INVALID

54. A method of detecting human body temperature comprising:

measuring radiation as target skin surface of the forehead is viewed, and
processing the measured radiation to provide a body temperature approximation based on heat flow from an internal body temperature to ambient temperature.

55. The method of claim 54 wherein the region of the skin is over an artery.

According to the Federal Circuit, the claims “employ a natural law to achieve their purpose.” The dispute in the case related to Alice/Mayo step-two — whether the claims include an inventive concept beyond the temperature calculations “sufficient to transform the claims into a patent-eligible application.” The difference here is that the valid claims include the additional technique of “scanning while moving a radiation detector.”  Now, it turned that the approach was found in the prior art — i.e., was “well understood,” but not in a clear enough form to be “routine and conventional.”   Judge Moore has previously explained that the question of whether aspects of a claim are “well understood, routine, and conventional to a skilled artisan in the relevant field” is a question of fact.  Here, that meant that the district court decision was not disturbed.

More to come on this one.

As you read the opinions here, you’ll see that these are good candidates for being precedential.  FedCir R.32.1(e) provides a mechanism to request to make an opinion precedential – open to any person within 60 days of opinion.


Dismissed with Prejudice

Ottah v. Fiat (Fed. Cir. 2018)

On appeal, the Federal Circuit has affirmed the lower court’s dismissal of Chikezie Ottah’s infringement claim against Fiat, Toyota, Nissan, GM, Ford, and other auto manufacturers — holding it not infringed.

Acting pro se, Ottah alleged that his U.S. Patent No. 7,152,840 (“book holder”) was being infringed by the back-up cameras installed on various vehicles.  The problem for Ottah is that the Federal Circuit previously ruled that the patent claim language (“removable attachment”) coupled with prosecution history statements meant that the claims only covered attachments removable by hand — all of the accused devices required specialized tools for removal.

Even after liberally construing the pleadings (for pro se benefit), the court found no plausible claim based upon the patent — as such the dismissal with prejudice was proper.


What are the Rules for Assessing Patent Eligibility?

In Front Row Tech. v. MLB Advanced Media, the patentee has filed a petition for writ of certiorari – asking the Supreme Court flip the lower court rulings on its sports-data-app patents. [Petition including Lower Court Decisions][Supplemental Appendix Including the Patents]

The petition asks two questions:

1. What are the rules, both procedural and substantive, for assessing patent-eligible subject matter under 35 U.S.C. § 101 for patents claiming inventions described as new and useful combinations of existing components and technologies?

2. Should the Federal Circuit be required to revisit its decision in this case in light of its Berkheimer and Aatrix Software decisions?

In this case, the New Mexico district court granted the accused infringer’s motion for judgment on the pleadings (R.12(c)) based upon the only evidence of record – the patents themselves. In making its decision, the court ruled that it was empowered to make a number of factual findings on the pleadings and without the submission of evidence — noting that “courts routinely make similar findings while evaluating§ 101 challenges.”  On appeal, the Federal Circuit affirmed without opinion.


Asserted Claim 15 of Patent No. 7,812,856 is shown below:

15. A method for displaying a particular perspective of a venue-based activity at least one authorized hand held device having a display screen, said method comprising the steps of:

simultaneously capturing a plurality of video perspectives of a venue-based activity utilizing more than one camera located at a sports and entertainment venue;

processing said plurality of video perspectives at a server into encrypted video data packet for display on a touch-sensitive display screen associated with said at least one authorized hand held device provided in the form of at least a smart phone or personal digital assistance, said at least one hand held device further comprising at least one 802.11 wireless module for access to a wireless local area network and a cellular communications module for communication with a wireless cellular communications network;

wirelessly transmitting said encrypted video packet over an 802.11 wireless local area network to said at least one authorized hand held device said plurality of video perspectives of a venue-based activity from said server;

processing said plurality of video perspectives at said at least one authorized hand held device into decrypted video data packet for display on said touch-sensitive display screen associated with said at least one authorized hand held device; and

displaying a particular video perspective on said touch-sensitive display screen, in response to a user selection of said particular video perspective from among said plurality of video perspectives.

The petition was filed by Michael Shore and his team at Shore Chan DePumpo

Termination Rights and the Stormy Daniels Lawsuit

The Stormy Daniels v. Donald Trump lawsuit includes an interesting copyright angle.  [Read the Complaint].  At its core, the so-called “hush agreement” requires Daniels to keep secret “all intangible private information . . . relating to any of [Donald Trump’s] alleged sexual partners, alleged sexual actions or alleged sexual conduct” and also turn over any “tangible materials” that include related information or other physical personal property.

The agreement also includes a copyright transfer – so that any related copyright to works created by Daniels will transfer to Trump.  The clawback or “termination rights” under Section 203 make a permanent transfer a bit difficult.

Notwithstanding the foregoing, if any of the rights herein granted are subject to termination under section 203 . . . [Daniels] hereby agrees to re-grant such rights to [Trump] immediately upon such termination.

Section 3.2 of the Agreement.

Termination Rights: For those not practicing copyright law, the statute provides termination rights that permits authors or their heirs to terminate copyright assignments and licenses 35-40 years after execution of the transfer (notice of termination must to be provided earlier).

The provision in the Agreement purports to skirt around the termination right by requiring a re-granting.  However, I wouldn’t think this work-around would be effective since 203(a)(5) states that “Termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to . . . make any future grant,” followed by 203(b)(4) which clearly states an “agreement to make a further grant, of any right covered by a terminated grant is valid only if it is made after the effective date [or at least service of the notice] of the termination.”  The Agreement does include a severability clause – the fact that some provisions are unenforceable “shall not affect the validity or enforceability of the remaining provisions.”

* Thanks to Prof. Sean O’Connor for highlighting this issue for me.

Haptic Feedback Patents: Some Survive Eligibility Challenge by Fitbit

Immersion Corp. v. Fitbit (N.D.Cal. March 5, 2018)

On 12(b)(6) motion for dismiss, Judge Koh has thrown out some of Immersion’s asserted claims covering various haptic feedback approaches. However, some claims survived:

Invalid as Abstract Idea (claims from U.S. Patent No. 8,638,301):

 27. A system comprising

a processor configured to:

receive a first sensor signal from a first sensor, the first sensor configured to detect a movement of a first mobile device;

receive a second sensor signal from a second sensor, the second sensor configured to detect an interaction with the first mobile device;

receive a first data signal from a network interface, the network interface configured to receive signals transmitted by a second mobile device;

determine a change in a display signal based at least in part on the first data signal and the second sensor signal;

determine a haptic effect based at least in part on the first data signal; and

outputting [sic] the haptic effect.

28. The system of claim 27, wherein the first sensor and the second sensor are each configured to detect one or more of: contact, pressure, acceleration, inclination, inertia, or location.

29. The system of claim 27, wherein the second sensor comprises a touch-screen.

31. The system of claim 27, wherein the processor is further configured to transmit a second data signal to the network interface, and the network interface is further configured to transmit the second data signal to the second mobile device.

Not improperly claiming an abstract idea (Claims from U.S. Patent Nos. 8,059,105 and U.S. Patent No. 8,351,299 respectively): 

14. An apparatus comprising:

a sensor that senses motion of at least a portion of the apparatus and provides a sensor output based on the sensed motion;

a timer that provides a periodic timer output;
a vibrotactile device responsive to the timer that provides a corresponding periodic haptic output; and

a processing device that receives the sensor output and accumulates counts associated with the sensor output, the processing device providing an output to the vibrotactile device providing an output to the vibrotactile device once a threshold associated with the accumulated counts is reached.

19. A haptic feedback device, comprising:

one or more processors configured to receive an input signal and generate a force signal based on the input signal, wherein the input signal is associated with a user-independent event,
the user-independent event comprising one or more of a reminder event, an initiation of a task, a processing of the task, a conclusion of the task, a receipt of an email, or an event occurring in a game; and

one or more actuators configured to receive the force signal and impart a haptic effect based on the force signal.

= = = =

Read the Order: ImmersionDismissal

Prof Hrdy: When Inventions Kill Jobs

Camilla HrdyProf. Hrdy has an interesting new blog post to accompany her paper titled Technological Un/employment.  Her work focuses on the intersection between jobs and intellectual property – looking both historically and toward the future of automation. “[T]he impact of technology on employment has historically been “skill-biased”—demand for high skills workers rises; demand for low skill workers falls.”

Although I disagree with some aspects of Prof. Hrdy’s work. I absolutely agree that the Strong IP => More Jobs statements have been largely propaganda.  It may also be true that “inventions humans make today could end up meaning there are [very few] jobs left for their grandchildren.”  The difficulty for automation is that – even in a world of plenty – that hyper-accumulation results in scarcity for the populace.

Hrdy proposes regulation to help avoid these outcomes. Her approach is actually not unique. As she explains:

The basic idea is to deprive the innovator of the benefit of an exclusive right. Believe it or not, Queen Elizabeth thought this was a good idea. She denied William Lee a patent on his spinning loom, which reduced the amount of human labor needed to spin cloth, because she feared the implications for employment of her subjects. In Queen Elizabeth’s time, no patent meant no permission. Today, the effect would be less dire – no patent just means no exclusivity; it doesn’t mean no permission to practice at all. Still, if we accept the Incentive Effect, this would still dampen incentives to automate.

Hrdy’s proposal here is not based upon an idea that efficiency is bad, but rather that it has potentially harmful distributive effects.  My own take is that “jobs” in the form we see them today need not be a societal goal.  I do have to admit though that I watched the new Mr. Rogers documentary last night at the True/False film festival where he explained that love should not be treated as a scarce resource.


SCOTUS: Damages for Foreign Lost Profits Stemming from US Infringement

by Dennis Crouch

For the most part, U.S. patent law is territorial with U.S. patents only being infringed when the invention is practiced within U.S. borders.  The law does, however, include some fuzzy borders.  One exception is 35 U.S.C. § 271(f), which creates a cause of action for supplying “components” of a patented invention from the U.S.

In WesternGeco v. ION Geophysical, the question before the Supreme Court is the level of damages available for § 271(f) infringement:

Whether … lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).

As presented by WesternGeco, the question presented includes a false assumption –the “combinations” at issue here do not themselves violate any law. Rather, what we are talking about here are combinations that would be prohibited if made on US soil. In its brief, the U.S. Government offers a parallel statement of the question that avoids this problem:

Whether a patent owner that has proved a domestic act of patent infringement may recover lost profits that the patentee would have earned outside the United States if that domestic infringement had not occurred.

In the usual § 271(f) cases, courts are concerned with offending other nations regulating cross-border actions.  As such, the longstanding approach of comity has led to a strong presumption against extraterritorial application of US law.  Here, however, the competition between WesternGeco and the infringer ION Geophysical takes place on the high-seas outside of the coverage of patents. The patents at issue involve marine survey equipment using lateral steering equipment.  See U.S. Patent Nos. 6,691,038; 7,080,607; 7,162,967; and 7,293,520.  A jury awarded $100 million in lost profit damages, which the Federal Circuit decision would dramatically trim.

The Supreme Court has some history with § 271(f).  First, in the pre-271(f) decision of Deepsouth Packing Company v. Laitram Corporation, 406 U.S. 518 (1972), the Supreme Court held that shipping components of an invention from the US was not infringement within the US.  That spurred Congress to amend the statute to create Section 271(f), which includes two overlapping actions:

  • (f)(1) Supply Substantial Portion + Induce: suppl[y] in or from the United States all or a substantial portion of the components of a patented invention … as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.
  • (f)(2) Supply Special Components + Knowledge: suppl[y] in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention … knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.

In Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Supreme Court held that “components” did not include electronic files shipped abroad. Then, in Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 742 (2017), the court held that (f)(1)’s “substantial portion” requirement could not be satisfied by shipment of a single commodity component.

Damages for Patent Infringement: The damages statute for patent infringement is straightforward. A prevailing patentee is entitled to “damages adequate to compensate for the infringement” with a floor of reasonable royalty.

Rather than allowing for full consequential damages in this case, the Federal Circuit applied the general “presumption against extraterritoriality” to hold that Congress did not intend for the U.S. patentee to collect damages for actions that occurred abroad.  Thus, the patentee can collect a reasonable royalty for the export of components, but cannot claim its lost business due to ION’s use of those components outside of the US jurisdiction.  One way to frame this is that the decision finds the foreign actions to be intervening acts that cut-off the proximate cause analysis.

A few Predictions: WesternGeco has asked the Supreme Court to expand-out available damages, and I expect will win here — the Court will likely at least hold that the categorical preclusion goes too far.  Because Section 271(f) is rarely used, most patentees (and potential infringers) will be looking for what the decision says about patent damages in general.

Top Side Briefs have been filed in the case, led by WesternGeco’s merits brief but accompanied by amici, including a strong brief by the U.S. Government.  Briefs in opposition will be filed within the next few weeks.

Petitioner Brief: Paul Clement’s team at Kirkland & Ellis have presented a straightforward brief that challenges the Federal Circuit’s logic:

  1. The presumption against extraterritoriality should not apply here because the statutes are clear in terms of both infringement and damages.
  2. Even if the presumption applied, it should only apply at the infringement stage, not the damages stage.
  3. Concerns regarding overreach are properly limited by traditional proximate cause analysis.

A major difficulty with WesternGeco’s analysis stems from Microsoft (2007) where the court invoked extraterritoriality principle in narrowly interpreting the statute as well as the recent non-patent decision in RJR Nabisco, Inc. v. European Community, 136 S. Ct. 2090 (2016), holding that a RICO cause of action is not available to persons who suffer only foreign injuries.

U.S. Government Brief:  The US Solicitor’s brief strongly supports WesternGeco’s position – arguing that the Federal Circuit’s prohibition on lost-profits damages is “inconsistent with the text and purpose of Section 284.”  Rather, the Federal Circuit’s rule would “systematically undercompensate[] U.S. patent owners for infringement when the patent owner derives profits from cross-border commerce.”

The US Government Brief includes some linguistic tricks — arguing on the one hand that the statute only regulates U.S. conduct but at the same time that damages should flow based upon actions taken abroad.

Houston IPLA: With help from Prof. Sapna Kumar, the Houston brief disagrees with the DOJ on the foreign conduct – yes foreign conduct is being regulated.  However, the brief argues that such regulation is permissible and fits nicely with the two step test provided in 2016 RJR Nabisco decision.  Further reading, Sapna Kumar, Patent Damages Without Borders, 25 Tex. Intell. Prop. L. J. 73 (2017).

Power Integrations: Power Integrations, Inc., has a “profound interest” in the outcome of this case because it was also barred from pursuing damages in a parallel Federal Circuit decision. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371-72 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 900 (2014).  In its brief, the company provides its version of a tutorial on the doctrine of Superseding Causation – something needed based upon the Federal Circuits errors “fundamentally misconstruing the doctrine.”

NYIPLA Brief: The NY brief differs somewhat from Power Integrations – arguing that 2013 Federal Circuit decision did not offer a prohibition on foreign profits, but instead a limit on proximate cause — i.e., causal link must be proven between the infringing acts outlined above and any damage.

Professor Yelderman: Professor Yelderman’s brief walks through several traditional principles of law that should apply here, notably:

  • Rightful Position Principle: “The proposition that actual damages should return the plaintiff to the pecuniary position she would have been in but-for the wrong is unimpeachable—it is the founding principle of the compensatory damages remedy.” (Later Yelderman does write “To be sure, the principle that a plaintiff should be restored to her rightful position is not absolute.”)
  • Remedial Practice: “Longstanding remedial principles provide no basis for drawing a line at the water’s edge, requiring a factfinder to don blinders against the very real harms Smith may have suffered in foreign markets as the direct result of Jones’s tortious acts in the United States.”

IPLA Chicago: The Chicago Brief supports petitioners position – adding to the argument a statement that the refusal to permit liability will have a significant adverse impact on U.S. businesses.  I would have some debate over that analysis – a decision for the patentee here seems most likely to have the impact of further shifting component manufacture to foreign shores.

Finally, the Law Professor Brief: Professor Tim Holbrook led a law professor brief (joined by Jason Rantanen, et. al) arguing, inter alia, that the presumption against extraterritoriality should apply at multiple levels, including interpreting the damages statute and limiting the scope of proximate cause.  Timothy R. Holbrook, Boundaries, Extraterritoriality, and Patent Infringement Damages, 92 NOTRE DAME L. REV. 1745 (2017).

Helsinn v. Teva: On Sale Bar Post AIA

by Dennis Crouch

Helsinn Healthcare v. Teva Pharma (Supreme Court 2018) [Helsinn cert petition]

Helsinn has now filed its much anticipated petition for writ of certiorari focusing on the question of how exactly the 2011 AIA changed the “on sale bar.”

Question Presented:

Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.

The well drafted petition from Williams & Connolly top Supreme Court lawyer Kannon Shanmugam has a good shot of being granted — especially if supported by a strong amicus brief from the Federal Government.  The difficulty here is that the petition asks the Supreme Court to shed an approach it has developed over the past 200 years without (in my view) a clear statutory statement from Congress.

Prior to the AIA, the On Sale Bar prevented the patenting of inventions that had been on-sale more than one year before the application’s filing date. 35 U.S.C. 102(b).  Pre-AIA, on sale activities include non-enabling secret offers to sell the invention (so long as the invention was otherwise ready-for-patenting).  Because most companies outsource elements of product development and manufacture — the rule has created potential for trapping the unwary.

I will return to this in a separate post, but the basic statutory question is whether the statutory revision eliminates secret or non-enabling sales (or some aspect thereof) from the scope of prior art.

Pre-AIA 102: A person shall be entitled to a patent unless … (b) the invention was … on sale in this country [before the critical date]

Post-AIA 102: A person shall be entitled to a patent unless . . . (1) the claimed invention was … on sale, or otherwise available to the public before the [critical date]

The statutory hook is the “otherwise available to the public” clause that the patentee here argues should be seen as also limiting the scope of the on sale bar to only include publicly available sales activity.  This statutory hook is coupled with supporting evidence from the AIA’s passage and about making prior art  is coupled with the USPTO’s interpretation of the statute in accord with Helsinn’s approach.

Cutting Down Prior Appropriation: How Paolo Bacigalupi’s The Water Knife Warns Us About Water Rights in the West

This is the second guest post coming from Michigan Law Professor Nicholson Price‘s seminar merging science fiction and legal analysis.  The author here – Kamie Cashette points her sights on the 2015 novel by American SciFi author Paolo Bacigalupi – The Water Knife. – DC

Guest Post by Kamie Cashette

Paolo Bacigalupi’s novel The Water Knife depicts the American Southwest in the not-so-distant future. Climate change has exacerbated an already scarce water supply, corporate interests have severely weakened the federal government, and states fight for water rights in ways that put Don Corleone to shame. State water agencies send employees to engage in guerrilla warfare-style tactics, like blowing up water-treatment plants and bombing dams, to make sure their territories come out on top. The places that do not manage to secure enough precious water rights, like Arizona, house masses of refugees desperate to escape to water-wealthy havens.

The world portrayed by The Water Knife strikes a particularly terrifying chord, mostly because of how plausible it seems. Bacigalupi makes painstaking efforts to incorporate modern day references into the book, from the third intake valve in Lake Mead that finished construction in 2015 to the image of a toothless Britney Spears. Moreover, the impending disappearance of the water supply in major cities like Cape Town, South Africa[1] further bridges the gap between the dystopian universe portrayed in the book and reality.


Bacigalupi’s world also seems to fit into a potentially realizable legal sphere. Today, Western states follow the prior appropriation doctrine to allocate water rights: someone who established a use of water decades or even a century ago has a higher priority over that usage than someone who begins tapping into that water today.[3] In other words, all junior water rights holders lose all of their water before the senior water rights holder has to give up a single drop. In a world of water scarcity, that makes senior water rights invaluable.

The Water Knife takes the legal framework of water rights in the West and realistically portrays the incentivized behavior in situations of extreme resource scarcity. The book centers around water rights “senior to God” that give Phoenix, Arizona some of the most senior rights on record. If Phoenix had knowledge of those rights, it would have legal claim to the water before any other state, giving it the ability to rise from its drought-induced ashes and to lay waste to its neighboring competitors. The lengths people are willing to go to in the book to get their hands on the water rights illustrates how a system of senior water rights in a situation of resource scarcity compels actors to fight each other tooth and nail instead of cooperating. As one of the characters remarks, a “[l]ot of people end up dead around these rights.”

Moreover, while the book’s portrayal of militant states and the practically non-existent role of the federal government seems outrageous, it may be within the realm of possibility. In The Water Knife, Congress passes a piece of legislation called the State Sovereignty Act, which allows states to stop U.S. citizens from other states from crossing into their borders. Freedom of movement between states has long been recognized as a fundamental constitutional right, and any suspension of that right is subject to strict scrutiny.[4] However, as the infamous decision of Korematsu v. United States[5] illustrates, rights subject to strict scrutiny have yielded to emergency and security concerns in the past. A drought so severe that it causes entire states to utterly collapse as Bacigalupi depicts could arguably fit that bill.

While the predicted Water Knife world is plausible, it is certainly not set in stone. State and local governments are trying to step in to mitigate the effects of climate change where the federal government has not. Among these efforts are lawsuits filed by cities across the country against oil companies for their contributions to global warming.[6] Additionally, on the national level, Professor Rhett Larson proposes shifting from an environmental policy paradigm hinging on climate change to one based on water security.[7] Larson also suggests using a regional approach to water security based around water basins instead of a state-by-state prior appropriations system. A book like The Water Knife that highlights the dangers of the Western water rights system and water insecurity in general makes an approach like the one advocated for by Larson more salient, and it sends a clear warning about what the future could hold. Whether the United States heeds that warning remains to be seen.

= = = = =


[1] James Longman, The Apocalyptic Atmosphere in Cape Town as Residents Struggle to Survive: Reporter’s Notebook, ABC News (Feb. 21, 2018, 1:06 PM),

[2] Jon Kerrin, Theewaterskloof Dam, South Africa, South African (2017),

[3] See, e.g., Prior Appropriation Law, Colo. Dep’t Nat. Resources, (last visited Feb. 23, 2018).

[4] See, e.g., United States v. Wheeler, 254 U.S. 281, 293 (1920); Saenz v. Roe, 526 U.S. 489, 500 (1999).

[5] 323 U.S. 214 (1944).

[6] See, e.g., David Zahniser, L.A. Lawmakers Look to Sue Big Oil Companies Over Climate Change—And the Costs that Stem from It, L.A. Times (Jan. 13, 2018, 5:00 AM),

[7] Rhett B. Larson, Water Security, 112 Nw. U. L. Rev. 139 (2017).

PTAB Reconstruing Claims: Estoppel?

Knowles Electronics v. Cirrus Logic (Fed. Cir. 2018) [Knowles Case]

Construing Claims: In a 2011 decision, the Federal Circuit construed the claims of Knowles Electronics’ U.S. Patent No. 6,781,231, including the claim term “package” as used in the claimed microelectromechanical system to mean a “self-contained unit that has two levels of connection, to the device and to a circuit (or other system).” MEMS Tech. v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). When passing judgment on the same patent five years later, the PTAB offered a slightly different construction during an inter partes reexamination. In Judge Newman’s view, that difference allowed for the PTAB to find the claims anticipated while the 2011 Federal Circuit decision found the patents valid. She writes:

The difference between [the two] constructions may not appear to be large, but the PTAB’s construction sufficed to hold claims 1–4 invalid on the ground of anticipation whereas the Federal Circuit’s construction sustained validity on the ground of anticipation

The problem, for Judge Newman, is that a decision from the PTAB’s controlling court should control the actions of the PTAB and limit its power. For its part, the PTAB generally refuses to be bound by prior claim construction decisions by District Courts, but this is the first case where the PTAB has disregarded a prior interpretation by the Federal Circuit.

Although I began with Judge Newman’s opinion. Her opinion was in dissent, the Majority (Judges Wallach and Chen) avoided the question of whether the PTAB’s must follow Federal Circuit claim construction decisions. Rather, the majority held that the PTAB construction is in “accord with the definitions adopted in Mems Tech.” Based upon this claim construction, the majority agreed that the claims were anticipated by the proffered prior art.

Written Description: The patentee also added several claims during the reexamination. However, those were rejected for lack of written description. On appeal here, the Federal Circuit affirmed – holding that the newly added limitation that “solder pads are ‘configured to mechanically attach … the package to a surface of an external printed circuit board using a solder reflow process'” was not supported by the original specification. In particular, the specification did not identify the “solder reflow process” as the connection mechanism. Here, the PTAB held that such a process was not so well known in the art that the disclosure shows possession of that process. This factual conclusion by the PTAB was easy to defend on appeal since it need only be supported by substantial evidence. Judge Newman did not offer any dissenting opinion on this aspect of the judgment.

Electronic Medical Records: Not Eligible

Ex parte Naeymi-Rad (PTAB 2018)

Intelligent Medical Objects, Inc. (IMO) has an interesting business of capturing, standardizing, and simplifying medical documentation used in 3,500 hospitals and by 450,000 doctors.  This process is critical for both treatment and payment — all in an environment where mistakes can lead to death and bankruptcy.  In the U.S., companies have spent billions of dollars on designing electronic medical record systems — yet major problems remain.

IMO’s CEO Frank Naeymi-Rad along with 11 others are listed as inventors of the company’s pending Application No. 13/622,934 – recently rejected on eligibility grounds.  The claims are directed to a software system for “implementing a controlled vocabulary” within a longitudinal medical record.   The examiner finally rejected all 14 claims for on eligibility grounds (withdrawing the obviousness rejection) — concluding that the claims are directed to the abstract idea of “providing healthcare by generating and processing medical records.”

On appeal, the PTAB sided with the examiner – holding that – at a high level of abstraction, the claims “can be characterized as collecting, storing, and organizing … and transmitting information.”   Although the examiner acknowledges that the claims are novel and non-obvious, the PTAB still found no inventive concept.

Although the second step in the Mayo/Alice framework is termed as a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness.

On this point, the PTAB quoted Diamond v. Diehr:

The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Section 101 categories of possibly patentable subject matter.

Rather than focusing on novelty as the “inventive concept” language suggests, the PTAB indicated its second step goal is a search for something “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself” quoting Alice/Mayo.  One approach that works for patentees is to show that their invention is an improvement of computer functionality.  Here, however, the PTAB ruled that the claims simply use computer technology — “generic components … employed in a conventional manner.”

IMO argued (through its attorney Richard Beem) that the addition of patient-by-patient controlled vocabulary was a key feature that allowed the longitudinal medical records possible because it allowed for relational storage — reducing memory and increasing speed.  I expect an appeal to the Federal Circuit on these (and other) points.

I list claim 1 below:

1. A method of implementing a controlled vocabulary in a longitudinal electronic medical record, comprising:

generating a first instance of a plurality of data objects during a first encounter, said plurality of data objects comprising data elements further comprising a first instance identifier and temporal identifiers;

linking a data object in said first instance to a summarization reference with a pointer, where the plurality of data objects and the summarization reference are related as part of a directed graph data structure;

creating an additional instance of a plurality of data objects during a later encounter, said additional instance of a plurality of data objects comprising data elements further comprising an additional instance identifier and temporal identifier;

providing continuity for said plurality of data objects of said first instance over time[, wherein said providing step comprises tracking a relationship between said data object of said first instance and a data object of said additional instance];

capturing said controlled vocabulary using a computer by forming a list of medical terms and list of associated descriptions;

creating a list of codes internal to said controlled vocabulary[, wherein said controlled vocabulary maps to at least one of a reference terminology or an administrative terminology];

storing said codes, said medical terms, and said descriptions using a computer in a format suitable for use in the longitudinal electronic medical record; and

tagging elements within a domain within the longitudinal medical record with said controlled vocabulary[.]