Day One Project: USPTO Proposals for the Biden Administration

Day One Project is not part of the BIDEN Transition, but the organization has put together a strong group of pro-BIDEN IP experts and relative insiders who have drafted and published a Transition Document for the United States Patent and Trademark Office.

The following are a few of the key proposals: 

  • Increase international collaboration during patent examination, including simultaneous examination with IP5 offices.
  • Reorganize our IP engagement with China IP Engagement with a more coherent and effective approach.
  • Review of the non-patentability-factors used by the PTO to deny IPR institution (such as PTO money, and parallel litigation).
  • Expand IPRs to allow for consideration if indefiniteness and also double patenting.
  • Move forward with comprehensive patent eligibility reform.
  • Anonymous examination (examiners don’t know identity / race / gender / national origin of the patent applicant).
  • Fix PTAB Constitutionality (once Supreme Court decides Arthrex).
  • Studying diversity and working to incentivizing minorities (especially African-Americans) to invent and file for patent protection.
  • $$$:
    • Raising patent filing fees to address decline in maintenance fee payments (portfolio pruning) and also to “dampen frivolous filings.”
    • Further increasing maintenance fees to encourage release of patents to the public where the patentee is not making a sufficient return-on-investment.
  • Trademark: Make the process seriously user friendly.
  • Give USPTO Substantive Rulemaking Authority
  • Establish the USPTO Bureau of Economics
  • Small-Claims Patent Court
  • Expand Patents for Humanity Program

Read more here.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Federal Circuit Continues to Remain Silent about its R.36 Opinions

Waterblasting, LLC v. Iancu (Fed. Cir. 2021)

A few years ago, I wrote an article arguing that 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion when it decides cases on appeal from the USPTO.

The … Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.

35 U.S.C. § 144.  [My Article] The provision was amended in 1984 to particularly require a “mandate and opinion.” However, prior to that time the Federal Circuit and its predecessor always wrote opinions associated with every judgment. Although there is no legislative history, I believe that the fact of an opinion was assumed and simply codified into law.

In this case, Waterblasting, LLC appealed an adverse IPR decision cancelling claims 1-4 and 10 of its US7255116 (Stripe removal system).  On appeal, Waterblasting argued that the PTAB had erred in its legal analysis and also made factual conclusions that were not supported by substantial evidence.

The Federal Circuit sided with the PTO and affirmed. However, rather than explaining its decision, the Federal Circuit simply issued its judgment without opinion as permitted under Federal Circuit Local Rule 36.

In its newly filed en banc petition, Waterblasting argues that no-opinion judgments are improper in this situation:

§ 144 should be interpreted consistent with its clear language and the panel’s issuance of an affirmance without opinion is inconsistent with the law.

Waterblasting v Iancu Petition for en Banc Rehearing.

Note here that following my article, more than a dozen parties have asked the Federal Circuit to consider this issue. So far, the court gone meta — remaining silent about its choice to remain silent.

Boom! You Can’t Patent an Escrow Method

Boom! Payments, Inc. v. Stripe, Inc. (Fed. Cir. 2021)

I used to play golf fairly regularly and got into the habit of announcing “BOOM!” on every drive.  It didn’t help my game.  BOOM!’s great name here also didn’t save its patent from dancing the Alice Two Step. (Note: I was 15 years old at the time–on my high-school freshman team getting free-rounds for the season). 

This case is another affirmance of a dismissal for lack of patent eligibility. Under Alice/Mayo, the Supreme Court’s patent eligibility analysis is a two step process.  At Step 1, the court asks whether the claims at issue are “directed to” a patent-ineligible concept, such as an abstract idea. Claims that fail Step 1 can be saved by Step 2, looks for “something more” beyond the ineligible concept sufficient to transform the claim’s nature into a patent eligible invention.

The claims at issue here are somewhat similar to the exchange-settlement process found ineligible in Alice. In particular, Boom’s patents all claim “methods for confirming that a transaction has been consummated prior to releasing electronic payment.”  U.S. Patents 8,429,084; 9,235,857; and 10,346,840. The ‘840 patent issued June 2019 and so the PTO should have gotten this one right.  The examiner initially rejected claims 1 as ineligible (then listed as claim 21).  The patentee made several minor “clarifying amendments” and the examiner then allowed the case.  In its reasons for allowance, the examiner wrote the following:

The claims as amended have been analyzed under 35 U.S.C.101, and although directed at some level to an abstract idea, confirming that a proposed sale transaction has been consummated, the claims as currently amended are found to integrate the abstract idea into a practical application sufficiently that they are patent-eligible under §101.  They do not amount merely to having a computer apply an abstract idea, or using communication between computers to carry out a commercial interaction that could plausibly be done without computers or telecommunication (“could not plausibly be done” does not require that there be no conceivable parallel without computers or telecommunication).

93219_16212317_05-23-2019_NOA.  Claim 1 is pretty long, but it is directed to a computer system “for confirming that a proposed sale transaction has been consummated.”  The system is programmed to do the following:

  • Receive/store a buyer’s payment information;
  • Receive a request from the buyer to purchase an item from an online store;
  • Generate a “transaction-specific buyer acceptance identifier” using human-readable characters
  • Provide the TSBA identifier to the buyer’s computer who apparently provides it to the seller when purchasing.
  • Receive from a seller an identifier of the transaction (as well as the buyer and seller identities);
  • Compare the transaction and identity information;
  • If everything corresponds, then charge an account associated with the buyer.

This is basically a passcode system or checksum.

In its decision, the district court found the claims directed to the abstract idea of authenticating sales through the use of a third-party intermediary, and without any sufficient additional inventive concept.  On appeal, the Federal Circuit affirmed:

Boom argues that the claims are not directed to an abstract idea, but rather to a technological improvement over prior art systems for confirming and processing online payments. Specifically, Boom argues that the elements of the claims provide specific steps for processing an online payment, and therefore are not directed to the general concept of escrow. . . .

We agree with Stripe that the claims are directed to the abstract idea of payment escrow. They only describe steps of passing information back and forth by a computer. The very purpose of the patents, as explained in the written description, is verifying consummation of a transaction before releasing payment by a third party, which is the definition of escrow. . . . Indeed, the claims are reminiscent of those at issue in Alice.

Slip Op.

The patentee also disputed whether the case was properly dismissed at the pleading stage. Although eligibility is a question of law, some aspects of the determination may require a fact-finder to consider evidence (and thus creating a genuine issue of material fact that precludes dismissal on the pleadings). Here, the patentee particularly amended its complaint to allege that the claimed invention was not routine or conventional at the time of the invention. On appeal, the Federal Circuit disregarded those statements as conclusory because they were not supported by particularly “plausible factual allegations.”

Drilling-in on this, the complaint makes the following allegations:

The particularized manner in which the ‘transaction specific buyer acceptance identifier’ and ‘transaction consummation completion identifier’ of the claims of the Asserted Patents are generated, stored, used, and related to other identifiers was not well-understood, routine, or conventional at the time of Mr. Bogaard’s inventions.

The Federal Circuit identifies the assertion here as conclusory and thus gives it no weight in determining whether the complaint generates disputed material facts.  This is a bit odd since we’re asking the patentee to prove a negative, but perhaps the patentee could have cited to the reasons-for-allowance within the complaint itself or submitted an affidavit from an expert on-point as an attachment to the complaint.  At that point though we’re getting pretty far from the “short and plain statement of the claim” required by Fed. R. Civ. Pro. 8.

Conventionality is Irrelevant to Alice Step 1

by Dennis Crouch

iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision)

The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid.

Here, the claims are directed a safety-feature for systems that evaluate body-movement, such as Nintendo’s Wii Sports and Mario Kart 8.  The basic idea is that the system will sense acceleration of a body and determine whether the associated movement is “is within environmental tolerance.”  A “tolerance indicia” is then created and transmitted.  The patent notes that movements beyond tolerance might “be damaging, destructive, crippling, harmful, injurious, or otherwise alarming or, possibly, distressing to the body.”

Eligibility: Pre-trial, Nintendo had also argued that the asserted claims were invalid as directed to the abstract idea of gathering and processing data.  The district court refused to decide that issue pre-trial.  However, after the trial, the court stepped-up and found the claims invalid.  That decision eliminated the damages award.  On appeal here, the Federal Circuit has affirmed.

[ILife’s] claim 1 of the ’796 patent is not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors. It merely recites a motion sensor system that evaluates movement of a body using static and dynamic acceleration information.

Slip. Op.

The patent itself includes more specific hardware and logical elements.  Consider, for instance Figures 1 and 5 below.  However, the asserted claims here were directed to a much broader abstraction.

As the district court held, the elements of claim 1, considered individually and as an ordered combination, fail to recite an inventive concept. Aside from the abstract idea, the claim recites only generic computer components, including a sensor, a processor, and a communication device. The specification’s description of
these elements confirms they are generic.


= = = =

Separating Out the Steps: The one quirk of this decision comes from the following statement: “The conventionality of the claim elements is only considered at step two” of the Alice/Mayo analysis.  In finding the claims directed to an abstract idea, the district court had noted that claim 1 does not require “anything other than conventional sensors and processors performing conventional activities previously known to the industry.”  It was error to consider conventionality at that stage of the analysis.  Despite that error, the appellate panel still found the claim directed toward an abstract idea.  Note that this is a non-precedential decision and so this line from the case won’t help yours.

= = = =

1. A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising:

a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and

a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance

wherein said processor generates tolerance indicia in response to said determination; and

wherein said communication device transmits said tolerance indicia.

= = = = =

Michael Wilson (Munck Wilson Mandala) represented the patentee at trial and on appeal; Stephen Smith (Cooley) for the successful defendant.

Free Speech Tuesday: Regulating Internet “Tyranny”

by Dennis Crouch

July 4, 1776, the “united States of America” met and declared independence from Britain and its King who had worked to establish “an absolute Tyranny” over the thirteen colonies.  Ever since, in the American mindset, tyranny demands revolution. “[W]henever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government.”

My Missouri Sen. Josh Hawley grabs hold of this rhetoric in his new book – Tyranny of Big Tech.  Although Hawley’s publishing contract has been publicly cancelled, I’m sure he’ll find a way to publish it — even if it means he receives less money.  Hawley is way-off the mark.  As a person-in-power, he should have taken care to avoid revolutionary rhetoric for what is really a regulatory issue.  He unfortunately raised tensions, raised them again, and then again.

BUT, the power of big tech is real. This week, Trump’s soap-box (twitter account) was been removed; Stripe stopped processing his donations; Parler was removed from major app stores (Google + Apple) and its web host denied (Amazon AWS) until the company complies with moderation policies. Parler says it won’t comply.  You could imagine the owners of the internet backbone (Tier-1 ISPs) and as direct-to-customer-providers blocking communications from these services as well.  This is the most public flexing of US internet might, but lower-key actions have been going on for years — especially toward traditional vices such as sex-workers, pornography, gambling, and marijuana sales.  You could imagine next-level ramping up of tensions with pro-Trump shipping companies refusing to deliver for these companies.  Ahh, but the legality of all of this may depend upon regulatory controls on speech and on common carriers.

Hawley has been calling these recent actions a violation of free speech rights.  That is obviously wrong when it comes to First Amendment protections. The First Amendment does not require private companies publish Donald Trump’s speech or provide internet service Parler.  That said, for years liberals have been calling for network neutrality regulations that would go a long way toward this end.

Free speech law does not begin-and-end with the U.S. Constitution.  Rather, our internet has been structured as a reaction to common law principles later adapted by Congress.  Those rules and regulations can change, and likely will change over the next four years.

For now though, I’m just looking for our democracy to survive the next 9 days. Good luck everyone!

= = = =


Next Steps in Eligibility.

Two competing patent eligibility petitions have been filed with the Supreme Court.  In American Axle, the patentee argues that the Federal Circuit has gone too-far in finding its claimed method of manufacturing a frequency-tuned vehicle drive-shaft to be directed to a natural law (namely Hooke’s law).  In Ariosa Diagnostics, the petition goes the other way and argues that the Federal Circuit has unduly narrowed its conception of a product-of-nature under Myriad.  It would be interesting for the Supreme Court to take these cases as a pair in order to reconcile the law and explain the extent that product-of-nature analysis fits within the Mayo framework.


Sequenom Back Again: This time Patent Eligible

Federal Circuit Narrows Application of Hooke’s Law, but Still Wields the Ineligibility Hammer

Hey Mechanical Engineers: Your Patents are Also Ineligible


Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Supreme Court will hear Assignor Estoppel Case

Minerva Surgical Inc. v. Hologic Inc. (Supreme Court 2021)

The Supreme Court has granted certiorari in this case involving the traditional doctrine of assignor estoppel.

Question Presented by Minerva: The question is whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.

Question Presented by Hologic: The question presented is whether the longstanding common-law doctrine of assignor estoppel should be abrogated by this Court.

Petition for Writ of CertiorariOpposition to CertiorariReply Brief;
Amicus by IP Professors (Lemley) – Engine Advocacy.

= = = = =

The appellate panel in the case upheld the doctrine of assignor estoppel, but also found that an assignor could collaterally attack via IPR since the PTO does not enforce the doctrine.  The panel – led by Judge Stoll — also called for reconsideration of the doctrine “as it applies both in district court and in the Patent Office.”

= = = = =

There are several related doctrines here: Estoppel by Deed, Assignor Estoppel; Licensee Estoppel. Licensee estoppel in the patent context was ended by Lear v. Adkins, 395 U.S. 653 (1969).  Prior to the Federal Circuit, some courts expanded Lear to also eliminate Assignor Estoppel.  See., e.g., Coastal Dynamics Corp. v. Symbolic
Displays, Inc., 469 F.2d 79 (9th Cir. 1972) (per curiam).  However, the Federal Circuit did not agree and has applied assignor estoppel over the decades to bar validity challenges by inventors and prior owners who are later sued for infringement.  While licensee estoppel is contract focused, its property law parallel is estoppel by deed which bars a prior-owner from “denying the truth of the deed.” Estoppel by deed servers as the doctrinal foundation for assignor estoppel in patent law.  Assignor estoppel is seemingly strengthened because the patent applicant publicly assures the USPTO of the patent’s validity by claiming patent rights.

In the end though, I believe that assignor estoppel only creates a strong presumption.  I expect that no estoppel would apply in cases where the seller expressly reserves the right to later challenge the patent. Of course, most employee-inventors will not have the negotiation power or awareness to demand such a provision.

= = = = =

Moot on Appeal: Patentee’s Infringement Disclaimer Remove’s Challenger’s Ability to Appeal IPR

ABS Global, Inc. v. Cytonome/ST, LLC (Fed. Cir. 2021).

In a split opinion, the Federal Circuit has dismissed ABS Global’s appeal of its failed IPR trial — finding the appeal moot. U.S. Patent No. 8,529,161.

The simple story here is that Cytonome sued ABS for infringement of the ‘161 patent but lost on summary judgment of non-infringement.  ABS Cytonome did not pursue an appeal, and expressly “disclaim[ed] such an appeal.”

Meanwhile ABS had filed an Inter Partes Review proceeding that resulted in most of the claims being cancelled.  The PTAB did side with the patentee on two of the claims — finding that they had not been proven obvious.  ABS wanted all of the claims invalidated and so appealed to the Federal Circuit.

Appellant must have Standing to Appeal: Although the Patent Act provides a right to appeal to all parties of an IPR, the Federal Circuit also requires standing — a “concrete” and “particularized” harm associated with the patent’s existence — an actual case or controversy.  This is akin to ordinary declaratory judgment jurisdiction, but a bit lighter because of participation in the PTAB trial and the express statutory right.  Mootness is also wrapped-up in the standing discussion.  A court has no jurisdiction over a moot controversy.

When ABS appealed its IPR (partial) loss, the patentee (Cytonome) responded with an argument that the case was moot because Cytonome lost its infringement lawsuit already and expressly abandoned any right to appeal.  Going forward, claim & issue preclusion would prohibit Cytonome can sue ABS for infringement of the ‘161 patent (at least for the same infringement that ABS was already doing).

ABS argued that the case is not truly moot because Cytonome might sue ABS for a modified version of its product.  The viability of those claims creates a cloud for the company.   On appeal, the Federal Circuit asked whether ABS had any plans — concrete plans — in connection with products that might infringe the patent.  ABS had none and so the court concluded that the case has become moot.

Cytonome’s disavowal therefore estops Cytonome from asserting liability against ABS for infringement of the ’161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely. [Under the Kessler doctrine]. Cytonome’s disavowal would also bar a future suit for infringement of the ’161 patent claims covering ABS products that are “essentially the same” as ABS’s currently accused products. [Under Brain Life’s extension of Kessler]. . .

ABS acknowledged during oral argument that there was no evidence in the record that ABS engaged in or had concrete plans to engage in activities not covered by Cytonome’s disavowal. . . . Here, the evidence in the record fails to establish that ABS had a “particularized, concrete stake in the outcome” of its IPR appeal.

Dismissed as Moot.

The dissent by Chief Judge Prost does not dispute the mootness, but argues that the court should have taken the second step of vacatur:

Time and again the Supreme Court has explained that vacatur is in order when the prevailing party below unilaterally moots an appeal. The Majority today departs from that established practice, concluding that dismissal is the proper course here. It is not.

In particular, the dissent would have vacated (essentially marked-out) the challenged portion of the Board’s decision.  That would seemingly eliminate the potential estoppel effect of IPR determinations.

UPDATED: Must a Plaintiff Investigate a Patent’s Validity Prior to Suing for Infringement?

Updated below to correct an error in my original analysis. -DC

WPEM LLC v. SOTI Inc. (Fed. Cir. 2021)

WPEM sued SOTI for patent infringement based upon its mobile-device software management “Speed Lockdown” tool. The complaint cites MobiControl Version 11 as infringing.  In its answer, SOTI responded with information from its Version 10, which predates the asserted patent as well as other prior art references.  Settlement discussions ensued:

  • Offer 1: P offers to settle for $429k; D says “no, the patent is invalid.”
  • Offer 2: P offers to settle for $150k; D says “no, the patent is invalid” and also sent P a R.11 notification (alleging that the complaint was filed without sufficient investigation and thus in violation of R. 11).
  • Offer 3: P offers to settle for $75k; D says “no, the patent is invalid.”
  • Offer 4: P offers to dismiss the case with prejudice and grant a license if D agrees to dismiss its counterclaims and abandon its request for attorney fees; D says “no.”

P (WPEM) subsequently asked that its case be dismissed with prejudice.  The district court dismissed the case, but also found it exceptional under 35 U.S.C. 285 and awarded attorney fees of  $180k. The primary basis of the district court’s award was WPEM’s failure to conduct sufficient pre-filing investigation and also continuing the case after learning of its frivolous case.  The court wrote:

WPEM conducted no pre-filing investigation into the validity and enforceability of the Asserted Patent.

WPEM, LLC v. SOTI Inc., 2020 WL 555545 (E.D. Tex. Feb. 4, 2020).

UPDATE – I read through the district court case again and found that I had erred in my statement above (now with strikethrough).  Rather, the district court particularly concluded that it “finds nothing exceptional about WPEM’s post-filing conduct.”  The district court considered the progressive settlement offers, but did not find them improper in any way. Id.  

On appeal, the Federal Circuit affirmed — giving deference to the district court’s judgment on exceptional case awards and finding no abuse of discretion. WPEM, LLC v. SOTI Inc., 2020-1483, 2020 WL 7238458, at *1 (Fed. Cir. Dec. 9, 2020)

WPEM’s argument on appeal was that a patentee need not conduct any investigation regarding the validity of its patents prior to filing a lawsuit because a patent is presumed valid and enforceable.  Any invalidity defense is for the defendant.  On appeal, the Federal Circuit did not disagree, but appears to have twisted the district court opinion somewhat.

Contrary to WPEM’s assertion, we do not read the district court’s opinion as failing to account for the presumptions of validity and enforceability. Instead, the court based its award of attorneys’ fees, in part, on the frivolous nature of WPEM’s infringement position (i.e., the substantive strength of WPEM’s litigation position)—an issue that could have easily been foreseen with an adequate pre-suit investigation (i.e., the unreasonable manner in which the case was litigated). As the court reasoned, because the Accused Technology is prior art to the ’762 patent, “if WPEM prevailed on its assertion that the Accused Technology is covered by the Asserted Patent, it would have had the effect of invalidating, rather than infringing, the Asserted Patent.” Because it is undisputed that the Accused Technology is prior art to the ’762 patent, see id., WPEM could not bring a successful infringement suit.

Id. The appellate decision makes logical sense but for the recognition that infringement analysis is a separate and distinct doctrine from anticipation and that the complaint (apparently) does a reasonable job of showing how the accused product actually practices the invention.

The patentee has now petitioned for en banc rehearing with the following two questions:

  1. When a plaintiff is not aware of any reason to question the validity of an issued United States Patent, is that plaintiff allowed to rely on the statutory presumption of validity when filing a patent infringement lawsuit?
  2. While invalidating the claims of a validly issued United States Patent requires clear and convincing evidence, is a District Court allowed to base a finding of exceptionality under §285 for an inadequate pre-suit investigation of patent validity using the lesser standard that the patent is likely invalid when the plaintiff is not aware of any reason to question validity?

[WPEM Petition for Rehearing].

= = =

Fees on Fees: The defendant had asked for $267k in attorney fees, but the district court only knocked-off about $87k of that — but awarding $180k. That $90k portion was the amount SOTI’s attorneys racked-up in drafting and arguing its motion for fees. The district court refused to award fees-on-fees in this case.

The Court understands that, in pursuing a § 285 recovery, parties will inevitably incur additional attorneys’ fees. However, in this case a near doubling of the amount already incurred in fees is simply unreasonable. At some point, a party must be mindful of the use and conservation of judicial and party resources and cannot (after it realizes it will prevail) continue to incur fees far in excess of any proportional relationship to the fees incurred in the merits portion of the case.

WPEM, LLC v. SOTI Inc., 2020 U.S.P.Q.2d 38024 (E.D. Tex. 2020).

= = = =

Bill Ramey is representing the patentee in the appeal; Robert Greeson for the defense.  SOTI has not yet responded to the petition.

Easing into 2021 with PTAB Affirmance

Comcast Cable Communications v. Promptu Systems Corporation (Fed. Cir. 2021)

The Federal Circuit’s first decision of 2021 comes as a boring 5-page non-precedential opinion upholding a PTAB Final Written Decision that Promptu’s claims had not been proven invalid.  Love it! 💓💓🌼🌼🌼. 

Promptu’s U.S. Patent No. 7,260,538 claims voice-recognition processing using a cable-TV remote-control but processed server-side (cable head-end unit).  The chart below shows the communications pathway from the Remote Control via the Set-Top Box then to the Cable Company’s Head-End Unit where the speech processing actually occurs.

The cited prior art was quite similar in that it allowed speech processing via the remote.  However, the key difference appears to be the content of the messages. In particular, the invention here focused on receiving “command functions” that control the set-top box while the prior art involved accessing information over the network and causing actions at the server.  That difference was sufficient to win the day for the patentee.

Comcast raises a panoply of arguments challenging the Board’s final-written decisions. Primarily, it claims the Board erred by rejecting its construction of “command function” as overly broad and by finding no motivation to combine Houser with the primary references. We do not agree.

Slip Op.

= = = =

In a separate opinion, the Federal Circuit vacated-in-part another Comcast vs Promptu case — this one involving Promptu’s U.S. Patent No. 7,047,196. [Decision]  The court found that the PTAB had too-narrowly construed the claim term “received back channel.”

Federal Circuit Statistics – 2020 edition

By Jason Rantanen

This post uses data from the Compendium of Federal Circuit Decisions to provide a quick statistical overview of the Federal Circuit’s decisions this year, particularly in appeals arising from the district courts and USPTO.

Decisions by origin

Figure 1 shows the total number of Federal Circuit opinions and Rule 36 summary affirmances by origin.  The increase in decisions in appeals from the USPTO (orange) over the past decade is clearly visible, although last year there was a slight decline.  Decisions in appeals arising from the USPTO dropped about 17% (254 in 2019 versus 2010 in 2020), while decisions in appeals arising from the district courts increased slightly (182 in 2019 versus 199 in 2020).  Overall, the Federal Circuit’s docket is a lot more patent-heavy today than it was in 2010.  The court is issuing more decisions as well.

Figure 1

Decline in Rule 36 Summary Affirmances

Figures 2 and 3 show the number of written opinions and Rule 36 summary affirmances in appeals arising from the district courts and USPTO.  Both figures show a decrease in the number of Rule 36 summary affirmances and increase in written opinions in 2020.  This change is especially dramatic in decisions arising from the USPTO.

Figure 2

Figure 3

In addition, as figures 4 and 5 show, the increase in written opinions has primarily come in the form of more nonprecedential opinions.  The number of nonprecedential written opinions in appeals from both the district courts and USPTO have increased while the number of precedential decisions has remained about the same or declined.

Figure 4

Figure 5

Despite the decrease in Rule 36 summary affirmances, the court’s overall affirmance rate measured by decision (i.: the outcome of a given opinion or Rule 36 affirmance) remained about the same in 2020.  As Figure 6 shows, over the last ten years the Federal Circuit fully affirmed about 70% of its decisions arising from the district courts and affirmed at least in part about 80% of the time.  Similarly, as Figure 7 shows, the court has full affirmed the USPTO around 80% of the time and affirmed at least in part about 90%.  This data is inconsistent with the hypothesis that the Federal Circuit is issuing fewer Rule 36 summary affirmances because it is reversing less often.

Figure 6

Figure 7

My takeaway is that the Federal Circuit judges are writing more nonprecedential opinions instead of issuing Rule 36 summary affirmances.  Hopefully this will provide some additional information for parties on the court’s reasoning when it affirms.

As always, the data for this post (and much more data) is available via the Compendium of Federal Circuit Decisions website.  In calculating the affirmance rate I did not include decisions coded as “dismissed” or “other.”  Thanks to my research assistants for their work coding Federal Circuit decisions, particularly Lindsay Kriz who did the lions share of the coding for 2020 decisions.

Patently-O Bits and Bytes by Juvan Bonni

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Commentary and Journal Articles:

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Toothbrush walks into a bar

by Dennis Crouch

Maxill, Inc. v. Loops, LLC (Fed. Cir. 2020)f [Maxill v. Loops]

The Loops patent covers a flexible toothbrush — and the claims require “an elongated body being flexible throughout the elongated body.”  US8448285 (Claim 1). Apparently, these brushes are sold primarily to “institutional” settings such as prisons.

Early in the case, the patentee moved for summary judgment of infringement.  The district court denied the motion, and acted sua sponte to enter summary judgment of non-infringement.  Apparently, the judge had inspected the accused product and found that the head-portion of the elongated body wasn’t flexible. Although the body was made of flexible rubber, once the stiff head (with bristles) was molded-in, the body was no longer flexible.

On appeal, the Federal Circuit has reversed and remanded — finding that the district court erred in  its claim construction of “elongated body being flexible throughout the elongated body.”  The appellate court found that the flexibility requirement does not require the whole assembly to be flexible, but rather only that the elongated itself be flexible.

Loops argues that the accused toothbrush’s elongated body is made of orange flexible material that is flexible throughout (a position that Maxill does not dispute) and that this component is separate from the more-rigid head component. . . . We agree with Loops and conclude that, based on the claim language and structure, as well as the specification, the district court misunderstood the flexibility limitation to pertain to the elongated body when combined with the head as opposed to the elongated body alone. . . . Reversed.

Slip. Op. Read the claim and tell me what you think? Does the body need to be flexible when assembled, or only pre-assembly?

1. A toothbrush, comprising:

an elongated body being flexible throughout the elongated body and comprising a first material and having a head portion and a handle portion;

a head comprising a second material, wherein the head is disposed in and molded to the head portion of the elongated body; and

a plurality of bristles extending from the head forming a bristle brush, wherein the first material is less rigid than the second material.

Claim 1.

= = = =

The appellate panel also took issue with the sua-sponte summary judgment without first providing the party with a “full and fair opportunity to present its case.”  Here, although Loops had presented its summary-judgment argument of infringement, the appellate panel found that summary-judgment of non-infringement to be an entirely different matter. “Under the circumstances, we conclude, Loops did not have a full and fair opportunity to respond to Maxill prior to the district court’s sua sponte grant of summary judgment.”

= = = =

I was researching old inventors, but couldn’t find the burial place of William Addis, the toothbrush inventor. . . No plaque.

Federal Circuit: User Experience is not Computer Functionality

by Dennis Crouch

Simio, LLC v. FlexSim Software (Fed. Cir. 2020) (opinion by Chief Judge Prost and joined by Judges Clevenger and Stoll).

In this case, the Federal Circuit has affirmed the lower court’s summary dismissal of Simio’s infringement lawsuit on eligibility grounds.  The appellate panel also upheld the lower court’s refusal to permit the patentee to amend its complaint — seeing the proposed amendment as “futile.”

Dennis Pegden has received many awards for his work developing software (and programming languages) for simulating real-life processes in order to optimize decisionmaking; perform risk analysis, etc.  He was a professor who then developed his own company that was bought-out by Rockwell. Later, he formed the new company Simio, that owns the patent at issue here: U.S. Patent No. 8,156,468.  The ‘468 patent is effectively an object-oriented simulation programming tool that allows users to develop simulation models of process flows using a graphical framework.

In December 2018, Simio sued its competitor FlexSim for infringement of the ‘468 patent; FlexSim responded with its successful motion-to-dismiss on eligibility grounds.  The district court found the claims directed to the unpatentable abstract idea of the “decades old computer programming practice of substituting text-based coding with graphical processing.”

On appeal, the Federal Circuit affirmed — finding that the claims were indeed directed to transitioning from text-based coding to icon-based.  In making its “directed to” conclusion, the court repeatedly quoted the specification’s explanations that

[A]n object in the present invention is simple and completely graphical. There is no need to write programming code to create new objects. . . . Simio™ objects can be created with simple graphical process flows that require no programming. . . . [T]his invention can bring an improved object-oriented modeling approach to a much broader cross-section of users. . . . [etc.]

Quoting the patent specification.  And, the court agreed that “Simply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.”

Prior decisions have found innovations that improve computer functionality to be non-abstract (and thus patent eligible). Here, the court admitted that the claimed innovation may well improve the ability of many individuals to create simulations, but found that such a usability improvement does not count as an improvement to the computer’s functionality.

[Simio’s] argument does not explain how the computer’s functionality is improved beyond the inherent improvement of the experience of a user who cannot (or maybe, would rather not) use programming.

Slip Op. Quoting Customedia, the court explained its position that “user experience” is not “computer functionality.”

Simio pointed to particular improvements of user behavior offered by its invention such as faster simulation model development (a major selling point of the products in this area). Again, the court found that an abstract idea is still abstract, even if done quickly.

In Alice Step 2, the court admitted that the claim may include novel features, but those novel features are the abstract idea.

And that’s really what we have: a claim directed to the idea of using graphics instead of programming to create object oriented simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim’s eligibility.

Slip Op.

The rules of civil procedure allow for flexible pleading. Rule 8 simply requires “a short and plain statement of the claim.”  And, defects in a complaint are regularly fixed via amendment.  The rules of Civil Procedure require courts to “freely give leave” to amend pleadings “when justice so requires.”

Here, the district court refused to allow the patentee to amend its pleadings with specific allegations regarding the uniqueness of various claim elements.  On appeal, the Federal Circuit affirmed — finding that the proposed amendment were “conclusory statements” to be disregarding when ruling on a Rule 12(b)(6) motion.

Simio had delayed in its request to amend until after the deadline set by the district court in the R. 16(b) scheduling order.  On appeal, the Federal Circuit found that the district court was within its rights to deny amendments after that deadline absent presentation of good cause. Here, the court’s granting of the motion-to-dismiss didn’t count as good cause.

Free Speech Tuesday: Tinker on Snapchat

Mahoney Area School District v. B.L. (Supreme Court 2020)

This case is about whether the First Amendment protects high-school students and their Snaps against punishment and regulation by public school officials.

Question Presented by the School: Whether Tinker v. Des Moines Independent Community School District, 393 U.S. 503 (1969), which holds that public school officials may regulate speech that would materially and substantially disrupt the work and discipline of the school, applies to student speech that occurs off campus.

Competing Question by the kid: Whether the court of appeals correctly held that a public high school violated the First Amendment when it punished a student for her colorful expression of frustration, made in an ephemeral Snapchat on her personal social media, on a weekend, off campus, containing no threat or harassment or mention of her school, and that did not cause or threaten any disruption of her school.

B.L. apparently was a varsity cheerleader during her freshman year, but was relegated to J.V. during her sophomore year.  After receiving that news, B.L. posted a photo of herself and several friends raising their middle fingers and including the following quote: “Fuck school fuck softball fuck cheer fuck everything.”  Although the post was only temporarily on Snapchat, at least one student took a screenshot and provided it to a school official.  In addition, at least one person accessed the vulgarity from a school computer.

B.L. was then kicked-off the team. According to the school, a good cheerleader must have “have respect for the school, coaches, teachers, [and] other cheerleaders” and must also avoid “foul language and inappropriate gestures.”  ACLU sued on B.L.’s behalf and won, including a 3rd Circuit decision limiting School’s control over student off-campus speech.