As the Federal Circuit temporarily moved to telephonic oral arguments, the court also began denying more oral argument requests after deciding that “oral argument [are] unnecessary.” In denying oral arguments, the court has generally been citing Fed. R. App. P. 34(a)(2)(C) which allows an assigned appellate panel to decide that oral arguments are not needed based upon a determination that “(C) the facts and legal arguments are adequately presented in the briefs and record, and the decisional process would not be significantly aided by oral argument.” The decision to deny a request for oral arguments must be unanimous.
The Federal Circuit recently completed its April sitting and I used the oral argument schedule to create the chart below. The chart below shows the percentage of cases with oral arguments for each Judge. Chief Judge Prost heard the highest percentage of oral arguments while Judges Lourie and Hughes were on panels that cancelled all of their oral arguments. One interpretation is that Chief Judge Prost sees oral arguments as more important for her decisional process, while Judges Lourie and Hughes find less importance. Although the number of cases was small (10 to 20 per judge), the dramatic shift in distribution is unlikely due to chance.
One thing to recognize here is that the R.34 standard did not change because of COVID-19 and the National Emergency. What did change is the mechanism for oral arguments and potential emergency pressures on various judges. These issues might explain the differences in judicial rates more than whether a judge “cares about oral arguments.”
Moving forward we are going to see lots of results from the “natural experiment” created by the COVID-19 National Emergency and Global Pandemic. While the results may end up being interesting and teach us something, the nature of this experience probably includes too many confounding factors to provide real results.
Attorney Fees following Voluntary Dismissal: I recently posted a note on the Keith Manufacturing decision allowing for an attorney fee motion following a Fed. R. Civ. Pro. R. 41(a)(1)(A)(ii) stipulated dismissal with prejudice. Mossberg involves attorney fees following a R. 41(a)(1)(A)(i) dismissal without prejudice. The appellate court ultimately refused to award attorney fees against Mossberg because the dismissal was “without judicial imprimatur” and thus leaving no “prevailing party.” As I note bellow, Keith and Mossberg are in some tension, even though both were penned by Judge Hughes and published less than 1-week apart.
FRCP Rule 41(a) covers voluntary dismissal of lawsuits:
(a)(1)(A) Voluntary Dismissal by the Plaintiff Without a Court Order:
… [T]he plaintiff may dismiss an action without a court order by filing:
(i) a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment; or
(ii) a stipulation of dismissal signed by all parties who have appeared.
(B) Effect. Unless the notice or stipulation states otherwise, the dismissal is without prejudice.
In Mossberg, the patentee sued Timney for infringement, but the district court almost immediately stayed the action awaiting the outcome of a series of USPTO reexaminations filed by Timney. After 5+ years, Timney ultimately prevailed at the USPTO and the asserted claims were invalidated. Back at the district court Mossberg voluntarily dismissed its lawsuit under R. 41(a)(1)(A)(i) without prejudice. The district court then entered a docket order stating that the case was dismissed without prejudice.
Following dismissal, Timney asked for attorney fees — arguing that it won the lawsuit. Although the lawsuit was dismissed without prejudice, the collateral cancellation meant that Mossberg would not be able to sue again. Complete win for Timney.
The court in exceptional cases may award reasonable attorney fees to the prevailing party.
35 U.S. Code § 285. The district court refused to award attorney fees — holding that the dismissal without prejudice was “not a decision on the merits and thus cannot be a judicial declaration altering the legal relationship between the parties.” O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, No. 3:12-CV-00198, 2018 WL 4398249, at *6 (D. Conn. Sept. 14, 2018).
While the district court’s statement of the law is off a bit, the Federal Circuit affirmed the holding that attorney fees are not available for this type of voluntary dismissal. In particular, the court decision does not need to be “on the merits,” but it must result in a “material alteration of the legal relationship of the parties” and “be marked by judicial imprimatur.” CRST Van Expedited, Inc. v. E.E.O.C., 136 S. Ct. 1642, 1646 (2016). CRST involved a Title VII action for employment discrimination. That provision of the Civil Rights Act of 1964 includes a “prevailing” party provision for attorney fees that is similar to the Patent Act (“the court, in its discretion, may allow the prevailing party … a reasonable attorney’s fee.”).
Here, the Federal Circuit found no “judicial imprimatur” because the voluntary dismissal is “effective immediately upon plaintiff’s filing of the notice of dismissal.” Here, the district court did include a docket entry dismissing the case — but by that time the case had already been dismissed by the plaintiff. “A properly filed Rule 41(a)(1)(A)(i) voluntary dismissal becomes effective immediately upon plaintiff’s filing of the notice of dismissal.” That make sense since the rule is titled voluntary dismissal “without a court order.” Thus, the court explained that “[a]lthough the district court in this case entered a dismissal order after Timney filed its notice of voluntary dismissal, that dismissal order had no legal effect.”
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Both Mossberg and Keith were penned by Judge Hughes. Hughes is seemingly a good choice for these cases because of his decades of experience as a civil litigator at the Department of Justice. But, the two cases are in tension.
In Mossberg, the court explains that there was not “judicial imprimatur” because the case was voluntarily dismissed by the parties under R.41(a)(1). In distinguishing from prior cases where courts had dismissed cases on non-merits grounds, Judge Hughes writes “[i]n this case, there was no such final court decision [because a] properly filed Rule 41(a)(1)(A)(i) voluntary dismissal becomes effective immediately upon plaintiff’s filing of the notice of dismissal. . . . Because there is no final court decision here, Timney cannot be a prevailing party for purposes of attorney’s fees under § 285.”
Keith also involved a voluntary dismissal under R.41(a)(1) and did not require a court order. Judge Hughes explained this as part of his decision:
In April 2017, the parties filed a stipulation of dismissal with prejudice pursuant to Rule 41(a)(1)(A)(ii). Such a dismissal requires no court order.
In his decision in Keith, however, Judge Hughes held that the voluntary dismissal without a judicial statement counted as a judgment for attorney fees purposes under Fed. R. Civ. P. 54(d)(2)(A).
Judge Hughes should have included a statement in Mossberg distinguishing Keith. There are two basic ways to distinguish these: (1) Keith focused on the “judgment” language found in R. 54(d) while Mossberg focused on the “prevailing party” language of 285. That distinction is strictly true, but both judgment and prevailing party indicate a sense of judicial action and the court offers no reason why that element of the analysis should be different for the two different statutes. (2) A second way to distinguish the cases is that Keith was a dismissal with prejudice; while Mossberg was without prejudice. The dismissal with prejudice is accompanied by substantial judicial action if the parties ever attempt to relitigate; while the dismissal without prejudice is seen as a full reset.
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As you might guess from the parties, the case involves a trigger assembly for a firearm.
Over the past couple of decades, some banks have been making efforts to appear more personal & humane. All that has come to fruition with the Federal Circuit’s decision in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al.In its opinion the court explained that yes, the Federal Reserve is a person too — at least with regards to the right to file an inter partes review (IPR) or post grant review (PGR) petition.
The AIA permits “a person who is not the owner of a patent” to petition for IPR/PGR requesting cancellation of a patent. In 2019, the Supreme Court took-up a case where the US Postal Service (USPS) had filed for review of a patent owned by Return Mail, Inc. Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853 (2018). In its decision, the Supreme Court held that the USPS is not a person under the statute. The court stuck to its “longstanding interpretive presumption” that Congress’s use of the term “person” does not “include the sovereign.”
In the present case, the twelve Federal Reserve Banks jointly petitioned the USPTO to challenge Bozeman’s U.S. Patent Nos. 6,754,640 and 8,768,840. The PTAB complied and cancelled all of the claims — finding them ineligible under Section 101.
On appeal, the patentee asked that the entire case be thrown-out under Return Mail. However, the Federal Circuit refused — finding that the Federal Reserve Banks are sufficiently separate and distinct from the United States Gov’t.
The Federal Reserve Banks were established as chartered corporate instrumentalities of the United States under the Federal Reserve Act of 1913. Unlike the Postal Service, which was at issue in Return Mail, the Banks’s enabling statute does not establish them as part of an executive agency, but rather each bank is a “body corporate.” Like any other private corporation, the Banks each have a board of directors to enact bylaws and to govern the business of banking. Moreover, the Banks may sue or be sued in “any court of law or equity.” . . .
The Banks are not structured as government agencies. The Banks do not receive congressionally appropriated funds. 12 U.S.C. § 244. No Bank official is appointed by the President or any other Government official. 12 U.S.C. § 341. Moreover, the government exercises limited control over the operation of the Banks. Instead, the “direct supervision and control of each Bank is exercised by its board of directors.” 12 U.S.C. § 301. And the Banks cannot promulgate regulations with the force of law. Scott v. Fed. Reserve Bank, 406 F.3d 532, 535 (8th Cir. 2005). For these reasons, we conclude that the Banks are distinct from the government for purposes of the AIA. We recognize that there may be circumstances where the structure of the Banks does not render them distinct from the government for purposes of statutes other than the AIA. For purposes of the AIA, however, we conclude the Banks are “persons” capable of petitioning for post-issuance review under the AIA. The Board therefore had authority to decide the CBM petitions at issue here.
Note here that the court did not mention the Fed Reserve Board of Governors – whose members are appointed by the president – or the fact that the Board of Governors appoint a substantial portion of the directors of each bank. The outcome here is also interesting to consider with respect to the corporate structure of various public universities around the country.
Moving on to the merits, of the eligibility decision, the Federal Circuit affirmed that the claims were directed to the abstract ideas of “collecting and analyzing information for financial transaction fraud or error detection” (‘840 patent).
The Court of Appeals for the Federal Circuit has held that color marks on product packaging can be inherently distinctive. On April 8, 2020, the court issued its opinion in In re: Forney Industries, Inc. It stated that “a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.”
Leaving aside the circularity of that statement—if it’s distinct it can be distinctive?—this holding lowers the bar for the acquisition of exclusive rights over colors. For the first time, color marks are instantly protectable (when used in commerce as a mark) and need not wait until they achieve secondary meaning, so long as they are used on packaging.
Because this ruling comes from the Federal Circuit it controls the how the Trademark Office deals with applications for color marks. Companies that want to acquire exclusive rights in colors now have a blueprint for how get a registration quickly: apply for a product packaging mark. So companies like Christian Louboutin should make those shoeboxes red!
The opinion was authored by Judge O’Malley joined by Dyk and Chen. The court reversed the TTAB, which had affirmed the trademark examining attorney’s refusal to register Forney’s mark.
In its use-based application (Serial No. 86269096), Forney identified its mark as a “color mark.” The mark, represented below, was applied for accessories and tools for welding and machining and described as follows: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.”
Because Forney sought to register the mark without showing secondary meaning, the Examining Attorney refused registration on the principle register. Affirming, the TTAB, in a precedential opinion by Kuczma, held that “a color mark consisting of multiple colors applied to product packaging is not capable of being inherently distinctive.” It stated that Supreme Court precedent does not distinguish between color marks for products and color marks for product packaging; both require secondary meaning to be registrable.
Not a Gray Area
The Federal Circuit’s opinion reads like it thought it had carte blanche to write the rules in this area. It stated that “[t]he Supreme Court has [] provided several data points on inherent distinctiveness of trade dress.” (emphasis added) I’ve certainly never thought of the Supreme Court’s trilogy of cases on trade dress as data points; I always thought they were precedent. It later referred to these cases as “guideposts.”
Surprisingly, the Federal Circuit stated that “[a]lthough Qualitex implied that a showing of acquired distinctiveness may be required before a trade dress mark based on color alone can be protectable, it did not expressly so hold.” (emphasis added) This is just flatly wrong. The Qualitex Co. v. Jacobson Products Co. court did not “imply” the rule at all; it set it out in black and white:
over time, customers may come to treat a particular color on a product or its packaging … as signifying a brand. And, if so, that color would have come to identify and distinguish the goods–i.e. to “indicate” their “source”–much in the way that descriptive words on a product … can come to indicate a product’s origin.
In its subsequent decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the Court reconfirmed its rule: “with respect to at least one category of mark— colors—we have held that no mark can ever be inherently distinctive.” It also stated: “In Qualitex, . . . [w]e held that a color could be protected as a trademark, but only upon a showing of secondary meaning.” Nope, no innuendo.
Coloring Outside the Lines
The Federal Circuit stated that “Forney’s multi-color product packaging mark is more akin to the mark at issue in Two Pesos than those at issue in Qualitex.” That’s an odd statement given that the mark at issue in Two Pesos, Inc. v. Taco Cabana, Inc. was a restaurant, while the mark at issue in Qualitex was, wait for it, … a color! But the point here was that the Federal Circuit was judging Forney’s mark as a product packaging mark, as in Two Pesos, and not a product design mark, as in Qualitex. And that was its error.
Yes, Qualitex involved a product design mark, but the rule it announced was about color marks, not product design marks. Again, it stated: “over time, customers may come to treat a particular color on a product or its packaging … as signifying a brand. And, if so, that color would have come to identify and distinguish the goods.” (emphasis added). In anticipating color on “packaging,” the court made clear the holding was about color, not product design.
Black Sheep
The Federal Circuit’s decision here creates a new rule for color marks in product packaging. Although it states that it is “not the only court to conclude that color marks on product packaging can be inherently distinctive,” even the case it cites doesn’t support its new rule. It cites a 10th Circuit decision (Forney Industries v. Daco of Missouri), but that court explicitly stated “we hold that the use of color in product packaging can be inherently distinctive … only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design.” (emphasis added). The Federal Circuit stated that the 10th Circuit was “considering a mark very similar to the one at issue here,” but that statement may have involved a bit of whitewashing because the 10th Circuit case involved the very same mark owner and the same mark! The only difference was that the mark was described with more definition in the 10th Circuit case, and the court still denied protection.
Red Flag
To the extent this decision is read to hold that color marks on product packaging can be inherently distinctive; it is at odds with both Qualitex and Wal-Mart. Does that make it ripe for reversal by the Supreme Court? While decisions by the Federal Circuit often make the Supreme Court see red, the Court only grants cert. in trademark cases once in a blue moon. The government, however, has a strong record of having its cert. petitions granted. Recall that most doubted cert. would be granted in Brunetti. Another question is whether the government will even petition for cert. or instead decide not to go chasing rainbows.
True Colors
Is there a narrower reading of this decision? Perhaps the holding is only that certain multi-color product packaging marks that are sufficiently definite can be inherently distinctive. As a policy matter, a single color product design mark is much more problematic for competition than a multi-color product packaging mark is.
Even were the holding so limited, it still begins to undermine the policy orientation of Wal-Mart. It’s hard not to understand Wal-Mart as a course correction. Two Pesos’s holding that trade dress can be inherently distinctive did not foresee any of the problems it created. Although Qualitex further extended trade dress to include color, it did claw back a requirement of secondary meaning. The Wal-Mart Court finally saw the policy mess created by Two Pesos. It meant to build on Qualitex’s limitation, not scale it back. Qualitex saved colors from being inherently distinctive, and Wal-Mart saved product design. The Federal Circuit’s decisions pushes in the opposite direction, by narrowing Qualitex’s carve-out.
Unfortunately, the Federal Circuit is not clear that that its new rule is limited to multi-color marks. It simply states: “we hold that color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design;” and “a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.” Requiring a color mark to be “distinct” is not filling any gaps left open by Qualitex, which specifically sated that the green-gold color was distinct for dry cleaning press pads. If the court had in mind a particular kind of color mark, it missed a golden opportunity to say so.
The rationale for both Qualitex and Wal-Mart was that, unlike product packaging, neither color nor product design prompt consumers to “equate the feature with the source.” Is there reason to believe that either multiple colors function more like product packaging than a single color, or that color on a product conveys something different than color on a package? If so, what do we make of the fact that Forney has been using its multi-color mark on packaging for more almost 30 years and yet chose to litigate in two different courts of appeal rather than simply demonstrating its secondary meaning?
The Federal Circuit has an internal practice of only issuing R.36 affirmances-without-opinion in cases where the court holds oral arguments. Most of the oral arguments have been cancelled for the court’s April sitting. The result then is that either (1) the court is going to write a lot more opinions or (2) the court will shift its practice to now start issuing no-opinion judgments even without oral arguments.
Todays short decision in In re Thomas (Fed. Cir. 2020) (per curiam) suggests to me that the court will be writing the opinions. Douglass Thomas is a patent attorney and his claimed invention is a “computer-implemented method for notifying users having patents of subsequent publications that reference the patents.” The examiner rejected the claimed invention as ineligible and that decision was upheld by the PTAB (along with finding the claims anticipate/obvious).
The Federal Circuit has now affirmed the rejections — offering the following 1-paragraph analysis:
Applying the two-step framework set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Board found that the claims are directed to the abstract idea of “alerting by notification message notice of a new publication indicated as relevant to the notifiee.” The Board also found that the claims do not contain an inventive concept beyond the abstract idea. We agree with the Board on both points. We therefore adopt the Board’s reasoning in its decision and its decision denying rehearing.
Slip Op.
Despite being short and lacking depth of analysis. The decision is helpful in a number of ways — most importantly has to do with the potential alternate reasons for affirmance. If the case had been simply affirmed without opinion then we would not know if the court affirmed eligibility or instead on obviousness/anticipation. That would allow Thomas to avoid issue preclusion and potentially raise the same arguments again in this or a different case. The court’s 1-paragraph will foreclose that avenue.
Keith Manufacturing Co. v. Larry D. Butterfield (Fed. Cir. 2020)
This is another prevailing-party case following a settlement.
Butterfield is a former employee of Keith Mfg. After leaving the company, Butterfield filed a patent application that eventually resulted in US9126520. The patent covers a mechanism for unloading trailers — which also happens to be the focus of Keith’s business. The lawsuit alleges various causes of actions, including trade secret misappropriation, breach of contract, invalidity, inventorship correction, etct.
Butterfield issued a covenant-not-to-sue Keith on the patent; and the parties then settled the case. The lawsuit officially ended with the filing a stipulation of dismissalwith prejudice pursuant to Rule 41(a)(1)(A)(ii) (voluntary dismissal without court order based upon agreement of the parties).
The stipulated dismissal did not mention costs or attorney fees, and Butterfield subsequently moved for attorney fees under the Patent Laws (section 285) as well as FRCP 54(d) and Oregon state statute.
The district court rejected the request for fees — holding that a stipulation-of-dismissal without a court order does not count as a “judgment” and that R.54(d) implicitly requires a “judgment” as a prerequisite to awarding fees. No judgment; no attorney fees. In particular, the rule states that the motion for attorney fees must be filed within “14 days after the entry of judgment” and must also “specify the judgment.”
On appeal, the Federal Circuit has reversed — explaining that the use of “judgment” in R.54(d) has the “prudential purpose” of avoiding R.54(d) requests of attorney fees all throughout the litigation and the subsequent piecemeal appellate litigation. Rather, in this case, “judgment” in the provision should be seen as including “dismissal.” Thus, on remand the district court may now consider the attorney fee motion.
Note – the Federal Circuit outcome here is the same as that reached by the 10th Circuit in Xlear, Inc. v. Focus Nutrition, LLC, 893 F.3d 1227 (10th Cir. 2018) (Lanham Act case).
In his Sermon on the Mount, Jesus reportedly provided a set of anti-hypocrite statements all centered around cleaning-out human eyeballs:
3 “Why do you look at the speck of sawdust in your brother’s eye and pay no attention to the plank in your own eye? 4 How can you say to your brother, ‘Let me take the speck out of your eye,’ when all the time there is a plank in your own eye? 5 You hypocrite, first take the plank out of your own eye, and then you will see clearly to remove the speck from your brother’s eye.
Matthew 7:3-5 (NIV). The Federal Circuit’s new decision in Myco Industries v. BlephEx, LLC (Fed. Cir. 2020), offers a modern and less-metaphorical treatment of the same issues.
BlephEx has a patent on a particular method using a swab to remove debris from a human eye. U.S. Patent No. 9,039,718 (treatment method for blepharitis). Myco is an unwelcome newer competitor with its AB (anterior blepharitis) MAX product. However, rather than suing for infringement, BlephEx apparently started threatening lawsuits against both Myco and also Myco’s customers (typically opthalmic/optometric medical professionals).
Myco filed suit – asking for a declaratory judgment of no infringement and also invalidity as well as seeking unfair-competition damages for bad-faith patent infringement statements by BlephEx. In the lawsuit, Myco also asked for and was a preliminary injunction against BlephEx’s ongoing speech. In particular, the district court enjoined BlephEx or its people
from making allegations of patent infringement and from threatening litigation against [Myco’s] potential customers.
Grant or denial of a preliminary injunction is immediately appealable and BlephEx appealed. The Federal Circuit has now reversed the lower court decision — holding that the injunction was an improper limit on speech.
The Federal Circuit has previously held that preliminary injunctions preventing a company from “communicating its patent rights” requires a showing of “bad faith” supported by “a finding that the claims asserted were objectively baseless.” “An asserted claim is objectively baseless if no reasonable litigant could realistically expect success on the merits.” The basic idea here is that someone with a patent has a legal right to communicate with infringers and others to tell them “stop and/or get a license.” Note here that the “bad faith” requirement goes well beyond the usual “likelihood of success on the merits” prong for preliminary relief.
Here, the reversal was easy because the district court did not consider whether the BlephEx’s statements were baseless and in bad faith. “This alone warrants reversal.”
Speech is not to be enjoined lightly. Here, there is not even a finding, let alone a finding supported by evidence and a correct view of the law, that the speech restrained was either false or misleading. The district court abused its discretion when it granted a preliminary injunction enjoining BlephEx from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading. It also abused its discretion in enjoining BlephEx from threatening Myco’s potential customers with litigation where there was not only no finding of bad faith but no evidence in the record that any such threats had even been made. We therefore reverse and vacate the district court’s preliminary injunction, and remand.
Allegations against the doctors: 35 USC 287(c) immunizes “a medical practitioner’s performance of a medical activity” from being charged with infringement under 35 U.S.C. 271(a) or (b). Under the statute, the patentee will not have a case against the medical practitioner or against a related health care entity. Judge O’Malley – who authored the opinion here – would likely quibble with my aforementioned statements. In the opinion she writes that “[t]he plain text of the statute does not state that a medical practitioner is ‘immune from infringement,’ . . . [Rather, t]he act provides immunity to certain infringers, but it does not render them non-infringers.” The Judge’s point here is really that there might be some other third parties who are liable for indirect infringement based upon the medical practitioner’s underlying infringement.
In any event, the court’s ruling here is that it is OK to tell Doctors that they are infringing and that you may “take action” to stop the infringement. Even though you can’t sue the doctor, you might sue the supplier for contributory infringement.
Before finishing, the court also took the district court to task for faulty claim construction — offering the kind “reminder” that “limitations from different dependent claims should not be interpreted as if they were general statements of disavowal from the written description.”
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As with many Judge O’Malley decisions, this one has several other important learning points. One of note is that BlephEx apparently did not suggest to the lower court that Bad Faith was needed for a preliminary speech injunction. On appeal, Myco argued waiver. The Federal Circuit disagree — holding that “there can be no waiver here of the Judge’s duty to apply the correct legal standard.”
We’re in a strange job market in the USA. While many areas have virtually stopped working, other areas are busier than every. Certainly, inventors have not stopped inventing. The COVID-19 global pandemic has shocked us all into new ways of thinking and offered glimpses into new problems to be solved. Here are some new job listings on Patently-O Jobs:
DePaul Professor Joshua Sarnoff has a new article addressing a recently reinvigorated subject: the doctrine of equivalents. In Correcting Misunderstandings of Literal Infringement Scope Regarding After-Arising Technologies Protected By the Doctrine of Equivalents, forthcoming in the Akron Law Review, Professor Sarnoff argues that while it is conventional wisdom that, for purposes of ‘literal’ infringement, interpreted claim meaning and the application of such meaning can expand over time to encompass after-arising, equivalent technologies, this conventional wisdom is wrong: “current case law regarding literal infringement does not authorize claims to literally encompass or apply to after-arising technologies.” Id. at 6.
The term “after-arising technologies” refers to the idea that there are technologies that are developed after an application is filed or a claim is written. Due to the centrality of time to patent law, a central question in patent law is whether a patent’s claims can (and should) encompass technologies that were unknown–and indeed may have been unforseeable–at the time the claim was drafted. Excellent examples of this problem can be found in Kevin E. Collins, The Reach of Literal Claim Scope into After-Arising Technology: On Thing Construction and the Meaning of Meaning, 41 Conn. L. Rev. 493 (2008) and Robert P. Merges & John F. Duffy, Patent Law and Policy: Cases and Materials, 7th ed. (2017), at 273-277 (discussing the “temporal paradox” mostly in the context of enablement).
Professor Sarnoff advances his premise through several arguments, drawing from the Federal Circuit’s precedent in Schering Corp. v. Amgen, which “limits the temporal meaning and scope of application for literal infringement to equivalent technologies known to be embodiments of the claim language as of effective filing date of the claim,” as well the statutory interpretive rule of § 112(f). Sarnoff at 3.
Central to Professor Sarnoff’s premise is the corollary that:
If claim meaning or the scope of application of such meaning can expand over time for literal infringement purposes, then there is less need to resort to the doctrine of equivalents to protect against after-arising technologies. However, if claim meaning or application scope is limited to technologies that were known as of the filing date to be claim embodiments, then the doctrine of equivalents is necessary for any such protection.
Id. at 1. Thus, Professor Sarnoff argues, decreased ability to rely on literal claim scope to reach after-arising technologies puts more pressure on the doctrine of equivalents–indeed, it’s ability to encompass after-arising technologies has been offered as a primary justification for the doctrine. But this additional pressure creates its own problems given the fuzziness of scope that the doctrine of equivalents allows. Restricting literal claim scope to known embodiments may also conflict with the ‘”pioneering invention patent doctrine,” to the except that doctrine continues to be viable.
As courts continue to streamline their operations, the Federal Circuit has denied three petitions for en banc rehearing:
19-1177 Koninklijke Philips N.V. v. Google LLC (obviousness: propriety of using a prior art reference to show ‘general knowledge’ and thus avoid the the need to consider limitations on combining prior art.)
18-1768 Polaris Innovations Limited v. Kingston Technology Co. Inc. (Arthrex redux)
19-2026 Mirror Imaging, LLC v. Fidelity Information Services (Arthrex redux)
The question I’m posing in civil procedure: What are other ways that we can streamline our legal process to still provide equal protection and substantial justice while avoiding the current difficulties created by COVID-19? Can we use this as an inflection point to build a better system?
The USITC sided with Rovi against Comcast and barred importation of the set top boxes that Comcast uses for its X1 cable service. Comcast has now petitioned its case to the U.S. Supreme Court with three questions:
Should the case be vacated as moot since the patents are now expired?United States v. Munsingwear, Inc., 340 U.S. 36 (1950).
The statute focuses on “articles that . . . infringe.” Here, the accused set-top boxes themselves don’t infringe and are not infringing when imported. The infringement only occurs when used by customers. What gives?
The ITC found that Comcast did not actually import the set top boxes, but should still be liable for “importation” of the boxes. What gives?
[Petition] The petition explains that the ITC’s approach here has shifted over the past few years:
The Commission has increasingly asserted authority over purely domestic patent infringement that is the province of Article III courts and juries. Here, the Commission issued an order banning importation of set-top boxes that are integral to Comcast’s X1 cable service, even though those boxes are staple articles of commerce that infringe no patents; the purported inducement and infringing uses occurred domestically after importation; and Comcast did not itself import the boxes.
Id. The petition repeatedly notes that ITC actions allow patentees “to evade limitations on injunctive relief in litigation” setup by the Supreme Court in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
