Federal Circuit Moves Another Case Out of W.D.Tex.

In re TracFone Wireless, Inc. (Fed. Cir. 2021)

In its second go-round in the case, the Federal Circuit has ordered District Court Judge Albright to grant TracFone’s motion to transfer its case to the S.D.Fla. on convenience grounds under 28 U.S.C. § 1404(a).  “We conclude that the district court clearly abused its discretion in denying transfer under § 1404(a).”  Generally, Section 1404(a) provides substantial discretion to the district court to determine whether or not to transfer a case to a different venue.  The statutory guidelines focus on “the convenience of parties and witnesses [and] the interest of justice”

In its opinion, the appellate panel walked through the parties/witnesses:

  • Patentee Precis is a Delaware company with “no disclosed place of business.”
  • The key inventor likely to testify (Karvenon) lives in Mankato.
  • The attorney involved in patent prosecution likely to testify lives in Arizona.
  • Defendant TracFone is also a Delaware company, its principal place of business is in Miami Florida. TracFone has identified for Florida-Based witnesses likely to testify.

Effectively, there is no reason for this case to be in Waco, Texas.  Still, the district court explained that the convenience here, in his discretion, did not rise to being “clearly more convenient” so as to demand transfer.   On appeal, the Federal Circuit disagreed — finding the district court’s conclusion “clearly flawed.”

The court did not reach the issue of improper venue that was also raised.

Read it here: TracFone Decision April 2021

TracFone: Mandamus All Over Again

Timing the Venue Inquiry in W.D. Texas

Egregious Delay and Blatant Disregard for Precedent



Sua Sponte Claim Construction

Olaf Sööt Design, LLC v. Daktronics, Inc. (Fed. Cir. 2021)

Sööt’s patent covers a winch system used for major theatre productions.  A jury found Daktronics Vortek product infringed under the doctrine of equivalents and awarded $1 million in damages.

On appeal, the Federal Circuit reversed, holding that “Under the proper construction, the Vortek product does not infringe claim 27 either literally or under the doctrine of equivalents.”

The problem with this decision is that neither party appealed claim construction.  Rather, the adjudged infringer appealed on infringement.  Sööt petitioned for rehearing on the issue of waiver, but that quest has now also been denied.

Whether waiver prevents a challenge to claim construction on appeal sua sponte where a party’s waiver is based on the  act that the original claim construction was (i) sponsored by the party during Markman, (ii) accepted by the district court, and applied by the jury in reaching its verdict; and (iii) not challenged on  appeal by either party. If not, what conditions must exist to overcome such waiver on claim construction.


This case comes just in time to see my new 6 second video explainer on the two ways to argue patent infringement:

Amgen v. Sanofi: Who Decides Full Scope Enablement

by Dennis Crouch

Amgen Inc. v. Sanofi-Aventis (Fed. Cir. 2021)

Patent claims typically cover an infinite number of potential infringing embodiments.  This seemingly renders true full-scope enablement an impossible task.  But the metaphysics are an illusion.  If we want valid patents, then there has to be some “good enough” threshold for enablement.

The focus in Amgen is a particularly tricky type of claim: genus claim with functional limitations.  Here, the claim is directed to an isolated monoclonal antibody defined by its ability to bind with the protein PCSK9 and consequently block PCSK9 from binding to LDL-C.

An isolated monoclonal antibody [that] binds to [one of the residues of PCSK9] and … blocks binding of PCSK9 to LDRL.

US8829165 (US8859741 is also at issue). In its decision, the Federal Circuit found the claims too broad in comparison to the disclosure.  “The functional limitations here are broad, the disclosed examples and guidance are narrow.”  Thus, although the jury found the claims enabled, the appellate majority affirmed the district court’s  post-verdict JMOL (notwithstanding the verdict).  This is a biopharma case, but the decision here can also be seen largely as an attack on functional claim limitations across the spectrum of patent technology fields.

Now, Amgen has filed a strong petition for en banc rehearing arguing that the majority has improperly created a new stiffer test for genus claims with functional limitations.

Question 1: Whether the panel’s new enablement test for genus claims with functional limitations, which has no basis in §112’s text, conflicts with Supreme Court decisions, including Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846); and Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1872), and decisions of this Court and its predecessor, including AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234 (Fed. Cir. 2003), and In re Angstadt, 537 F.2d 498
(C.C.P.A. 1976).

As mentioned above, the question of enablement was given to the jury.  Here, however, the Federal Circuit held that enablement is a question of law.  The distinction is likely dispositive in this type of close case where the jury sided with the patentee.  By treating enablement as a question of law, the Federal Circuit was able to review the issues de novo without impinging upon the reexamination clause of the 7th Amendment.  The second question challenges this approach:

Question 2: Whether enablement is a question of fact, as the Supreme Court has held, see Battin v. Taggert, 58 U.S. (17 How.) 74 (1854); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846), or a question of law, as this Court holds, Op.6.

[Petition for Rehearing]

The brief cites and discusses a really well researched and written article by Professors Karshtedt, Lemley, and Seymore titled The Death of the Genus Claim (forthcoming 2021).  The article notes that today “it is no longer possible to have a valid genus claim. . . . [This] represents both bad law and bad policy.” Id.  In its decision, the majority seemed to largely agree, but declined to expressly foreclose the possibility of genus claims.

This is a very important case for pharma and biotech patenting, but will also likely have an impact on the doctrine of enablement generally — especially its relationship to functional claim limitations since those are found in most patents.  I expect a number of amicus briefs will be filed in the case over the next few weeks.

More to come.

Functional Claim “Raises the Bar for Enablement”

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 on Patent Law for April 2021

by Dennis Crouch

Here is a rundown of what’s happening with US Supreme Court cases:

Decided: The court recently decided Google LLC v. Oracle America, Inc., holding that Google’s use of Oracle’s Java API was a fair use and therefore not copyright infringement.  The court made no determination as to whether the API was actually copyrightable in the first place. The case does not expressly decide any patent law issues, but does provide some guidance as to how courts should approach mixed questions of law and fact (such as claim construction) and the right to a jury trial. The jury trial issue was interesting.  Although a number of juries were given fair use questions pre-1791, the court held that our current version of fair use claims its ancestry from the equity rather than common law. Thus, no right to a jury trial on the question of fair use under the Seventh Amendment. “In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”

Argued: On March 1, 2021, the court heard oral arguments in US v. Arthrex regarding  it is proper for the Secretary of Commerce to appoint the PTAB judges as inferior officers of the United States. Or, instead, are they principal officers of the United States that must be appointed by the US President and confirmed by the Senate (as we do with Article III judges).  Nobody likes the Federal Circuit’s decision, and the question really is which way it should fall. (My guess is that these judges will be seen as inferior officers).  I expect that part of the majority decision (whichever way it goes) will involve interpreting the role and involvement of the PTO Director in PTAB decisions.  An inferior officer decision will interpret the statute as providing the PTO director with substantial authority; a principal officer decision will downplay the role of the PTO director.  Decision should be released by Mid-June 2021.

Argument Pending: One final case is set to be argued this term: Minerva Surgical, Inc. v. Hologic, Inc., focusing on the issue of assignor estoppel.  Can a prior owner of a patent right (such as an inventor) who transfers title to another (typically the employer) later assert in court that the patent is invalid?  In this case, the employee started his own competing company and was sued for patent infringement.  The lower court barred an invalidity defense. Now the question presented:

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.

Oral arguments are set for April 21, 2021 with a decision by Mid-June 2021.

Other pending petitions:

Arthrex Issues: There are a large set of pending petitions awaiting the outcome of Arthrex. Some of these raise interesting additional issues, but most of them are pure follow-on cases : Iancu v. Luoma, et al., No. 20-74; Polaris Innovations Limited v. Kingston Technology Company, Inc., et al., No. 19-1459; Comcast Cable Communications, LLC v. Promptu Systems Corporation, et al., No. 20-92; Vilox Technologies, LLC v. Iancu, No. 20-271; Rovi Guides, Inc. v. Comcast Cable Communications, LLC, et al., No. 20-414; RPM International Inc., et al. v. Stuart, No. 20-314; Fredman Bros. Furniture Company, Inc. v. Bedgear, LLC, No. 20-408; Micron Technology, Inc. v. North Star Innovations, Inc., No. 20-679; Iancu v. Fall Line Patents, LLC, et al., No. 20-853; Immunex Corporation v. Sanofi-Aventis U.S. LLC, et al., No. 20-1285; Comcast Cable Communications, LLC v. Promptu Systems Corporation, No. 20-1220; Wi-LAN, Inc., et al. v. Hirshfeld, No. 20-1261

Patent Eligibility: Of the pending eligibility cases, I find American Axle and Ariosa the most interesting:  American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891; NetSoc, LLC v. Match Group, LLC, et al., No. 20-1412; NetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289; Ariosa Diagnostics, Inc., et al. v. Illumina, Inc., et al., No. 20-892.

Inventorship & OwnershipOno Pharmaceutical Co., Ltd., et al. v. Dana-Farber Cancer Institute, Inc., No. 20-1258; In re Martillo, No. 20-1126 (suit to quiet title).

ObviousnessAmarin Pharma, Inc., et al. v. Hikma Pharmaceuticals USA Inc., et al., No. 20-1119 (secondary indicia); Sandoz Inc., et al. v. Immunex Corporation, et al., No. 20-1110 (obviousness type double patenting).

Willful InfringementNetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289 (this case also raises an eligibility question).

ProcedureEricsson Inc., et al. v. TCL Communication Technology Holdings Limited, et al., No. 20-1130 (is pre-trial denial of summary judgment appealable absent post-trial JMOL); Warsaw Orthopedic, Inc., et al. v. Rick C. Sasso, No. 20-1284 (abstaining in favor of state court jurisdiction); PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (preclusion under the Kessler doctrine); Tormasi v. Western Digital Corp., No. 20-1396 (does a convicted state inmate have standing to sue for patent infringement).

Retroactive Application of IPRs: Security People, Inc. v. Hirshfeld, No. 20-1380.

Attorney FeesRoadie, Inc. v. Baggage Airline Guest Services, Inc., No. 20-1420; WPEM, LLC v. SOTI Inc., No. 20-1291.

Antitrust: Abbvie Inc v. FTC (standard for showing objectively baseless “sham litigation” exception to Noerr-Pennington immunity).


Non-Transitory Innovation?

The (revised) chart above shows the percentage of issued utility patents whose claims include at least one reference to the term non-transitory.

The chart does not reflect any kind of innovation transformation.  Rather, in a February 2010 memo, PTO Dir. Kappos announced that claims directed toward information stored in computer readable memory would be rejected as ineligible under Section 101.

   The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter.  In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach.  A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim.  Cf.  Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101).  Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.  See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

Note on the data:

  • Limited to only US utility patents;
  • Limited to only look at independent claims;
  • Search included “non transitory”; “non-transitory” and “nontransitory”.

In the vast majority of cases, only one of the independent claims uses the non-transitory language.  97% of the patents included at least one additional independent claim that does not use the language.  Are those claims directed to code-stored-on-a-disk valuable and important?

US vs China – Moving toward Global Injunctions

by Dennis Crouch

Ericsson v. Samsung, Docket No. 21-1565 (Fed. Cir. 2021)

I wanted to briefly highlight this important pending Federal Circuit appeal involving parallel litigation in both the US and China. The Swedish company wants to litigate in the US, while the Korean company wants to litigate in China.

  • US Case: Ericsson Inc. v. Samsung Elecs. Co., No. 2:20-CV-00380-JRG (E.D. Tex. Jan. 11, 2021)
  • Chinese Case: Samsung Electronics Co., Ltd. et al. v. Telefonaktiebolaget LM
    Ericsson, (2020) E 01 Zhi Min Chu No. 743.

The Chinese court issued an anti-suit injunction order that would force Ericsson to stop litigating the case in the US (and globally anywhere but in Wuhan).  The US court then issued an anti-interference order that bars Samsung from attempting to enforce the Chinese order against the US actions.  Litigation between the parties is apparently also ongoing in the USITC, Netherlands, Germany, and Belgium.

Ericsson believes it has the stronger IP rights.  There is a general indication that those rights will be more strongly protected and with a higher royalty rate if determined by a US court rather than a Chinese court.  The following timeline from Samsung’s brief offers some historic perspective:

The basic setup here is as follows:

  • Both parties have committed to license their standard essential patents (SEPs) for 2G, 3G, 4G, and 5G cellular communication according to  “Fair, Reasonable and Non-discriminatory” (“FRAND”) principles
  • 2014 global cross-license of the SEPs between the two companies.  This agreement expired at the end of 2020.
  • December 7, 2020: Samsung sued Ericsson in Wuhan People’s Court seeking a declaration of global licensing terms in accordance the FRAND principles.
  • December 11, 2020: Ericsson sued Samsung in USA (E.D.Tex.) alleging Samsung failed to comply with its FRAND patent licensing commitments (and for declaratory judgment that Ericsson is not in breach).  In January 2021, Ericsson amended its complaint to include assertions of patent infringement — this ensures Federal Circuit jurisdiction over the appeal.
  • December 25, 2020: On request from Samsung, the Wuhan court issued an global “anti-suit injunction” — enjoining Ericsson from seeking relief from any other court, either in China or Globally.  And also ordering withdrawal of any claims already filed (such as the Texas action).  The order expressly indicates that violations of the order by Ericsson will be punished by with substantial fines.
  • December 28, 2020: Ericsson successfully petitioned the Texas Court to  issue a temporary restraining order (TRO) against Samsung.
  • January 11, 2020: Texas court issued a fairly narrow “anti interference injunction” — sometimes known as an “anti-anti-suit injunction.”  The court ordered that Samsung take no actions in the Chinese case that would interfere with the US lawsuit.  In addition, Samsung must indemnify Ericsson against any penalties levied by the Wuhan Court associated with Ericsson’s efforts to litigate the US case.

Samsung has now appealed the case to the Federal Circuit — arguing that the anti-antisuit injunction should be vacated or significantly narrowed.  Here are briefs filed:

I am generally sympathetic to Ericsson in this case with the big caveat that Ericsson committed its patents to FRAND licensing on a global level.  It does not seem reasonable (the R in FRAND) to expect that the result will be a separate lawsuit regarding the global license in each individual country.

Law School Canons: Summer-y Judgment

Editor’s Note: Avery Welker is a 1L at Mizzou and likely a future patent attorney. He is starting a new series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch

By Avery Welker

Grilling weather is coming up soon! You may be in the market for a new grill to set up in your backyard. Well, now you have to make a choice: will you go with the “Backyard Grill” or the “Backyard BBQ?” That’s not a choice that Variety Stores, Inc. (Variety | Plaintiff) wants you to need to make. Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651 (4th Cir. 2018).

Variety sued Wal-Mart Stores, Inc. (Wal-Mart | Defendant) over Wal-Mart’s use of “Backyard Grill” (logo shown above1) to promote their line of grills and grilling supplies. Id. at 656. Variety brought a plethora of federal claims, including trademark infringement and unfair competition. Id. at 658. Both parties filed motions for summary judgment and each adduced evidence in support of their own motion. Id. Variety showed evidence of more than $56 million of sales with their mark, which they have been using since 1993. Id. Wal-Mart, while submitting plenty of evidence in their own support, also brought forth evidence that their marks were not confused with Variety’s, whereas Variety did not bring any evidence of confusion at all. Id. The district court then granted partial summary judgment for Variety holding that Variety’s mark was protectable, Wal-Mart’s mark could create confusion, and that Wal-Mart’s choice to not follow their counsel’s advice showed intent to confuse consumers. Id. In part, Wal-Mart appealed the award of partial summary judgement for Variety. Id. at 659.

The “extraordinary” remedy of summary judgment has some deceptively ordinary rules: (1) there must be no genuine issue of material fact and (2) the movant must be entitled to judgment as a matter of law. Fed. R. Civ. P. 56 (2021). Courts, as the gatekeepers of summary judgment, must ensure fairness in the motion by crediting all evidentiary inferences in favor of the nonmovant when investigating any issues of material fact. Tolan v. Cotton, 572 U.S. 650, 656-57 (2014).

Tolan arose from a claim of excessive force, in violation of the Fourth Amendment. Id. at 651. Officer Edwards believed that Tolan (Plaintiff) and his cousin had stolen a car, which the two exited at Tolan’s home. Id. at 651-52. Tolan’s parents came out of the house when they noticed the brewing situation. Id. Officer Cotton (Defendant) arrived, responding to a request for backup from Edwards. Id. at 652. From here, the parties had differing stories. Id. at 653. The two parties disputed how Cotton handled Tolan’s mother during the incident, and as to how Tolan responded to Cotton’s interactions with Tolan’s mother. Id. The stories converge around an unfortunate ending, however: Cotton fired three shots towards Tolan, striking him in the lung. Id.

Cotton moved for summary judgment with the district court, who granted it for Cotton, later affirmed by the Fifth Circuit. Id. at 654. In upholding summary judgment, the Fifth Circuit relied on Cotton’s version of Tolan’s response to Cotton’s interactions with Tolan’s mother (that Tolan rose to his feet) and to the lighting conditions of the porch where the shooting occurred (that it was dimly lit). Id. at 655. The Supreme Court noted that this was in error: the lower courts had failed to credit Tolan’s versions of the facts, vacating the Fifth Circuit’s judgment. Id. at 660. The Supreme Court expressed this message by pointing out the importance of juries:

The witnesses on both sides come to this case with their own perceptions, recollections, and even potential biases. It is in part for that reason that genuine disputes are generally resolved by juries in our adversarial system. By weighing the evidence and reaching factual inferences contrary to Tolan’s competent evidence, the court below neglected to adhere to the fundamental principle that at the summary judgment stage, reasonable inferences should be drawn in favor of the nonmoving party.


The Fourth Circuit applied this fundamental principle from Tolan to Variety Stores, Inc.  Variety Stores, Inc., 888 F.3d at 662. The court noted that Wal-Mart’s evidence purporting to show weaknesses in Variety’s trademark was improperly uncredited. Id. Both parties had produced evidence, that in the Fourth Circuit’s view, genuinely disputed the strength of Variety’s “Backyard” trademark, an issue that should have been resolved by a jury. Id. at 663-64. The court vacated the judgment for partial summary judgment for Variety. Id. at 667.

Tolan expresses a fundamental principle that makes summary judgment such an “extraordinary” remedy. Crediting the non-movant with permissive inferences is crucial to allowing both sides an opportunity to be heard in a dispute.

= = = =

1The Backyard Grill branding is all but disappeared from Wal-Mart stores. This is a photo of a friend’s Backyard Grill from Wal-Mart. A search of “Backyard BBQ brand” ironically came up with a Wal-Mart listing for grills. Wal-Mart’s new branding appears to be “Expert Grill.”

Grant Rate by Size and Representation

by Dennis Crouch

The chart below shows a measure of patent grant rate for a group of 30,000 recently completed patent prosecution cases. I reported earlier on the grant-rate differential based upon entity size classification: Large>Small>Micro. For this chart, I also added-in a second variable of whether the patent application filings were submitted by a registered US patent attorney or agent. As you might expect, those non-represented cases showed a much lower grant rate.

The most surprising result: Overall in this sample, I found that over 99% of patent applicants were represented by a US patent practitioner. An important note here is that the focus of this study was non-provisional utility application filings. I expect that the rate of true pro-se applications would be much greater if we looked at provisional patent applications.

I collected data of “disposals” for a four-week period during early 2021. I coded my database to consider each published patent application and whether (1) a patent issued in the case; or (2) the application was abandoned during the four-week period. I also coded each case according to its entity size and also whether a US patent attorney/agent had participated in the case. To calculate the grant rate, I simply divided the number of issued patents by the total disposals (issued patents + abandoned applications). Note here that this calculation is a bit different from the disposals that the USPTO uses for its examiner counts.

Entity type (Micro, Small, Large) is available from USPTO documents for each published patent application. It was more difficult to determine whether a particular applicant was represented. About 90% of the cases include a listing of one or more registered practitioners representing the parties. That linkage is typically created when the applicant files a power of attorney. For about 8% of the cases, I was able to look through the correspondence addresses for law-firms, individual attorneys, and applicants known to employ patent attorneys in order to conclude that they were represented. The final 2% required a case-by-case inspection. For each of those, obtained a copy of the application data sheet (if any) to see whether an attorney/agent had signed. In cases without an application data sheet, I looked for some responsive filing to determine whether it had been so signed.

I limited the scope of cases to only those that had been published because the files unpublished abandoned applications are not available for inspection. This likely skews the data somewhat because Small & Micro entities are somewhat more likely to file non-publication requests. However, about 90% of applications are published and so the impact of unpublished cases should not be too great.

In this sample, 74% of cases were tied to large entities; 23% to small entities; and 3% to micro entities. There are some important caveats regarding these entity sizes. Generally, a small entity can still be quite large. The basic cutoff is 500 employees. In addition, patent application at issue cannot have been licensed (obligated) to a large entity.

§ 121.802 What size standards are applicable to reduced patent fees programs?

A concern eligible for reduced patent fees is one:

(a) Whose number of employees, including affiliates, does not exceed 500 persons; and

(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.

13 CFR § 121.802. In addition, non-for profits (including universities) count as small entities without any limit on size.

Micro entities are a creation of the America Invents Act of 2011 and allow for reduced fees for individuals without much patenting experience (<5 prior applications filed for themselves) and who are not unduly wealthy (<3x median US household income). Again though, universities can count as micro entities. In my sample, a number of the small and micro entities are universities with a higher grant rate than the average for their category.

Generally, the USPTO requires non-human legal entities to be represented by a patent practitioners.  Of the 22,000+ large entity filings in my sample, I found only 4 that were not represented by a US patent attorney/agent. Those cases appeared to me to be ones where the filer should have claimed small or micro entity status.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Power of Attorney

If you are in-house patent attorney/agent prosecuting cases for your employer-client, do you still need to file a power of attorney? I’m finding that a good percentage of cases have a registered patent professional listed as the correspondence address within the Application Data Sheet, and that individual is being allowed by the USPTO to prosecute the case no behalf of its client.  However, no power-of-attorney is on file with the USPTO.

My question above is focused on in-house counsel.  I’ll note that I’m also finding that this practice is quite common even in cases where outside counsel represents the patent applicant (~10% of applications).


  • Application No. 16/381,289 — Barnes & Thornburg prosecuted this patent application to issuance on behalf of the applicant (Hill-Rom). The file does not show any power of attorney or assignment document filing.
  • Application No. 14/986,530 — Infinera’s in-house counsel prosecuted this application. No power of attorney on record.
  • Application No. 16/381,279 — Iandiorio Teska & Coleman prosecuted this patent application on behalf of the applicant (National Lumber).  No power of attorney on record.
  • Application No. 16/340,010 — Budzyn IP firm has been prosecuting this application on behalf of the owner (Armstrong Flooring).  No power of attorney is on record in the case.

(Note – these were just the first few cases that I randomly pulled-up).

Kessler Doctrine: Does it Survive?

In May 2020, the Supreme Court decided the trademark case of Lucky Brand  Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589 (2020) and expressly refused to extend preclusion doctrines in the trademark realm beyond their traditional bounds set by the doctrines of issue and claim preclusion.

One month later, the Federal Circuit decided In re PersonalWeb Techs. LLC,  2020 WL 3261168 (Fed. Cir. June 17, 2020) and happily extended a quirky patent law preclusion doctrine beyond those traditional bounds.  See Kessler v. Eldred, 206 U.S. 285 (1907) (Kessler doctrine). In its decision, the Federal Circuit explained its expansion of Kessler “fills the gap left by claim and issue preclusion.” see Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014).

Now, PersonalWeb has petitioned the Supreme Court for writ of ceritorari — pointing largely to Lucky Brands for its foundation. Questions Presented:

This Court has repeatedly held that, absent guidance from Congress, courts should not create special procedural rules for patent cases or devise novel preclusion doctrines that stray beyond the traditional bounds of claim and issue preclusion. Nonetheless, over the past seven years, the Federal Circuit has created and then repeatedly expanded a special, patent-specific preclusion doctrine that it attributes to this Court’s 114-year-old decision in Kessler v. Eldred, 206 U.S. 285 (1907)—a case this Court has not cited for almost 70 years. The Federal Circuit now routinely applies its so-called “Kessler doctrine” to reject suits like this one that would survive under ordinary preclusion principles.

The questions presented are:

1. Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that may apply even when claim and issue preclusion do not.

2. Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.

The petition does two things here: (1) calls into question whether Kessler still applies and (2) even if Kessler itself is still good law, explains how the Federal Circuit has improperly extended the doctrine in cases such as PersonalWeb and Brain Life.

Read the petition: PersonalWeb petition

Read my prior post below:

Preclusion: Expanding Upon the Kessler Doctrine


Another look at USPTO Allowance Rate

by Dennis Crouch

Here is a different look at the USPTO grant rate that looks at two numbers for each quarterly period: how many patents issued, and how many applications were abandoned.  These can be added together as a total number of applications disposed-of during the period.  The percentage reported in the chart below is the percent of patents out of that total disposal.

These numbers roughly conform to the work that examiners do on a quarterly basis, but I did not count allowances/rejections, but instead looked only at whether a patent actually issued or actually abandoned (typically by failing to respond to an office action).   You’ll note an upward trend since 2010 with allowance rate roughly matching the highs seen 20 years ago.

One caveat on this data. I only used published applications because those records are open.  Unpublished applications tend to have a somewhat lower allowance rate.


MedImmune Licensee Standing Does not Apply to Portfolio License

by Dennis Crouch

The Federal Circuit’s new decision in Apple Inc. v. Qualcomm Inc. (Fed. Cir. 2021) offers an interesting standing puzzle.

After some heated litigation, Apple licensed 20,000+ Qualcomm patents as part of a six-year covenant-not-to-sue which resulted in the litigation being dismissed with prejudice.  Meanwhile, the parallel inter partes reexaminations (IPRs) moved forward with regard to two particular Qualcom patents within the package of 20,000+.

Although the PTAB granted Apple’s IPR petitions, the Board eventually sided with Qualcomm — holding that Apple had not proven that the claims were invalid.  Apple then appealed to the Federal Circuit.  The PTAB does not worry about Article III standing — because the PTAB is not an Article III court.  However, standing comes into play once the case moves from the administrative agency into the appellate court.

In MedImmune, Inc. v. Genentech, Inc., 529 U.S. 118 (2007), the Supreme Court  held that a patent licensee has standing to challenge a patent’s validity even without stopping the royalty payments.  Here, Apple argued that it likewise has standing. The problem, according to the court, is that cancelling of the two Qualcomm patents would not actually impact Apple’s obligations under the license.  This contrasts with MedImmune where an invalidity finding would dramatically impact the royalty owed.

In Apple’s view, a licensee’s obligations to pay royalties for a license to 100,000 patents would provide standing to challenge the validity of any single licensed patent, even if the validity of any one patent would not affect the licensee’s payment obligations. We do not read MedImmune so broadly.

Slip Op.  The basic outcome here is that a broad portfolio license does not, on its own, create MedImmune-style standing for the licensee to sue to challenge the patent rights.

The court also rejected Apple’s argument that it has an interest in invalidating the patents because it might be sued again once the patent expires.  On appeal, the Federal Circuit found that argument too speculative and unsupported by any evidence.

Apple offers the sparsest of declarations in  support of standing, which are devoid of any of the specificity necessary to establish an injury in fact. Without more, we are left to speculate about what activity Apple may engage in after the expiration of the license agreement that would give rise to a potential suit from Qualcomm. This is insufficient to show injury in fact. . . . What products and product features Apple may be selling at the expiration of the license agreement years from now are not the kind of undisputed facts we may take judicial notice of because they may be reasonably questioned. . . . We are not fortune-tellers. Accordingly, we must decline Apple’s invitation to take judicial notice.

Slip Op.

In the end, I expect that Apple could have established standing, but chose instead to withhold details from the license and it upcoming product line that could have changed the outcome.


Google v. Oracle and the Mixed Question of Law and Fact

by Dennis Crouch

In Google LLC v. Oracle Am., Inc., 593 U. S. ____  (2021), the Supreme Court spends a few pages walking through procedural aspects of the fair use defense.

Like many patent law doctrines, fair use is a mixed question of law and fact. The defendant’s use of the asserted copyrighted work and its impact on the plaintiff are typically factual issues that must be proven by evidence as weighed by the factfinder (often a jury). These are questions such as “how much of the copyrighted work was copied” and “whether there was harm to the actual or potential markets for the copyrighted work.” Google at 19.  However, the questions of law emerge when we are categorizing the importance of the factual findings as well as asking the ultimate question of whether the use was a fair use.

The fact-law divide comes up in various ways: Is there a Constitutional right to a jury trial on the issue; lacking that may a jury still decide the issue; does proof require evidence (as defined by the Federal Rules of Evidence) proven to a particular standard; or instead do we simply look for the ‘right’ answer; on appeal, what is the standard of review — deference or not?  Fact/Law also comes up in patent prosecution, but examiners are not charged with making the distinction and the rules of evidence don’t apply.

At the trial court this leads to the very practical question of how easily a judge can dispose of the issue pre-trial.  Questions of law are often easy to determine pre-trial; some mixed questions are also relatively easy to determine pre-trial if there is no right to a jury determination; mixed questions involving substantial factual disputes and a right to a jury trial are hard.  In patent cases, courts are regularly making pre-trial determinations on claim construction and eligibility, both of which are ultimately questions of law but that can involve underlying factual determinations.  Obviousness is another mixed question.  Although  the ultimate determination of obviousness is a question of law, it is treated differently from claim construction and eligibility.  Rather than being decided by a judge, obviousness is typically decided by a jury as fact-finder.  The difference is that obviousness typically requires detailed factual determinations that are hard to separate from the ultimate conclusion of obviousness and that are subject to a Constitutional right to a jury trial.

In deciding an issue, a district court will typically separate its analysis between findings-of-fact and conclusions-of-law. This separation is expressly required in FRCP 52(a)(1) when a judge determines the facts without a jury.  District courts also decide other substantive questions pre- and post-trial.  However, those determinations are typically purely questions-of-law.  (Failure to state a claim; Summary Judgment; Judgment as a Matter of Law).

Back to Google: Oracle sued Google for copyright infringement, and Google raised a defense of Fair Use.  The district court gave the question of fair use to the jury who sided with Google.  On appeal, though the Federal Circuit reversed and found no fair use.  Although the jury had decided the issue, the Federal Circuit gave no deference to the jury’s legal conclusions.  In its subsequent analysis, the Supreme Court agreed with the Federal Circuit’s  procedural approach of de novo review of the legal conclusions but ultimately disagreed on the substance. Rather, the Supreme Court concluded that Google’s use was a fair use as a matter of law.

One typical difficulty in the law-fact divide is that the questions are often not easily separable. In Markman, the Supreme Court called claim construction a “mongrel practice” because it is a mixed question that is hard to separate-out.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).   In Google, the court determined that the big questions of fair use should be treated as questions-of-law because they “primarily involves legal work.”

The Google court went on to cite Markman in concluding that there is no 7th Amendment Right to a Jury Trial on the doctrine of fair use. “As far as contemporary fair use is concerned, we have described the doctrine as an ‘equitable,’ not a ‘legal,’ doctrine.” Google at 20.  See U.S. Const. 7th Amd. (“In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”).

The Court’s general approach to mixed questions of law is explained in some detail within its 2018 bankruptcy decision of U. S. Bank N. A. v. Village at Lakeridge, LLC, 583 U. S. ___, 138 S. Ct. 960 (2018). In that case, the mixed-question was whether a creditor qualified as a “non-statutory insider.”  In U.S. Bank, the court explained that “mixed questions are not all alike.”  Some mixed questions are more like questions of law requiring an “amplifying or elaborating on a broad legal standard.”  Those should be treated as questions of law.  Other mixed questions require analysis of narrow facts “that utterly resist generalization.”  Those should be treated as questions of fact.  “In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”

For the fair use analysis in Google, the court followed the U.S. Bank standard and determined that the fair use questions at issue in the case were primarily legal and thus should be reviewed de novo on appeal.

Bringing all this back to patent law, I don’t see anything in this analysis to disturb our current approaches to obviousness, claim construction and eligibility.  But, both Google and U.S. Bank are clear that they are focusing on the particular issues in the case at hand.  It may well be that the mixed question analysis will come out differently on a different set of facts.

The Next Chief Judge: Judge Moore

Chief Judge Prost took over as Chief at the end of May 2014 just after Judge Rader stepped-down from the position.  The position lasts for seven years and that date is approaching in May 2021. In addition, the statute prohibits a judge from being Chief Judge once they turn 70 years old.  Judge Prost is also turning 70 toward the end of May 2021.  28 U.S.C. 45. Thus, we’ll have a new Chief Judge within the next 7 weeks or so.

The next chief is defined by statute:

(1) The chief judge of the circuit shall be the circuit judge in regular active service who is senior in commission of those judges who—

(A) are sixty-four years of age or under;

(B) have served for one year or more as a circuit judge; and

(C) have not served previously as chief judge.

Judge Moore is the most senior active judge that satisfies the three statutory requirements and thus is the chief-apparent.  Judges Newman, Lourie, and Dyk are the three most-senior active judges.  However, they are all over the age of 64 and thus do not qualify to become the next Chief Judge.  Judge O’Malley is next in line following Judge Moore, but turns 65 in November 2021. Assuming that Judge Moore takes to the role and remains Chief Judge for her full 7 year term, the next Judge on deck will be Judge Chen in 2028. Since all of the current Judges are >50 years old, none would be eligible for the subsequent go-round in 14 years.

* I also apologize for openly discussing ages of these humans in such an uncouth way, but it is required by the statute.

Studying Nonobviousness

By Jason Rantanen

There are lots of quantitative studies of patent litigation appellate court decisions, going all the way back to P.J. Federico’s 1956 article Adjudicated Patents in the Journal of the Patent and Trademark Office Society.  One of the big limitations of these studies, though, is that there hasn’t really been any work done to examine how replicable their observations are – even for variables as seemingly simple as whether the court affirmed or reversed on a particular issue, or reached a particular outcome, such as whether a patent’s claims was obvious.  New studies compare their aggregate results to previous studies, but not the actual data themselves–even when studying the same set of cases.

In an article forthcoming in the Hastings Law Journal, Abigail Matthews, Lindsay Kriz and I set out to do exactly that: to examine the amount of agreement between two studies on nonobviousness around the time of KSR v. Teleflex, one that I did that was published in 2013 and one that was recently published by Judge Ryan Holte and Prof. Ted Sichelman.

Our reliability assessment reveals a complex picture.  Somewhat reassuringly, the results from the two studies are largely consistent for decisions from the same time period.  Surprisingly, however, fewer than 2/3rds of the decisions analyzed in both studies were the same—even when limited to the identical time period and using the same criteria.  Within that set of cases, however, the core data coding was largely identical, with a few notable exceptions.  Specifically, we find differences in the coding for procedural postures and in some coding related to judicial reasoning.

In addition, since the period covered by those two studies ended several years ago, we also updated the dataset through the end of 2019.  Here are some highlights from our findings:

  • The number of Federal Circuit decisions in appeals arising from the district courts that involved a § 103 issue peaked between 2010 and 2015, and in recent years has declined to half of that peak.
  • The percentage of Federal Circuit decisions with an outcome of “obvious” in appeals arising from the district courts remained high between 2006 and 2014, but since 2015 the number of “obvious” outcomes has fallen dramatically.
  • The Federal Circuit continues to affirm district courts on the issue of obviousness at a high rate (around 80% of the time since 2013), and—in contrast with the immediate post-KSR period studied Holte & Sichelman (2019) and Rantanen (2013)—since 2013, affirmances have been equally high for district court outcomes of “nonobvious.”
  • The number of grants of summary judgment involving § 103 that were reviewed by the Federal Circuit in its decisions has fallen substantially in recent years. Nearly all § 103 decisions arising from the district court that were reviewed by the Federal Circuit between 2016 and 2019 involved a bench or jury trial.

In the paper we talk about some possible explanations for this decline, including two obvious causes: the rise of inter partes review and patent eligible subject matter issues.  You can read the full preprint on SSRN here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3818466.  I’m hoping to have the data posted within the next few weeks.