by Dennis Crouch
Return Mail recently filed its petition for certiorari with the Supreme Court, seeking a broader scope of patent eligibility under 35 U.S.C. § 101. You may remember that Return Mail won its case before the Supreme Court a few years ago. Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) (federal agencies are not “any person” under the AIA and therefore cannot challenge patents via IPR). (more…)
by Dennis Crouch
This is our second discussion of collateral estoppel in as many days. Yesterday I wrote about Koss v. Bose, a case where the Federal Circuit concluded that a district court’s final judgment of invalidity had a preclusive effect on USPTO IPR analysis — rendering the patentee Koss’s appeal moot. Today’s focus is on SoftView v. Apple, and a focus on the USPTO’s estoppel regulations as they apply between an IPR and reexamination proceeding. Case No 23-1005 (Fed. Cir. July 26, 2024). (more…)
by Dennis Crouch
Koss Corporation v. Bose Corporation, 22-2090 (Fed. Cir. July 19, 2024)
In its final written decisions, the PTAB found a number of Koss patent claims invalid and Koss appealed to the Federal Circuit. In the end, though the appellate panel found the appeals moot because all the claims had been invalidated in parallel district court litigation. Although the prior litigation involved a different party (Plantronics), Bose was able to take advantage of that invalidation decision under the doctrine of non-mutual collateral estoppel established by the Supreme Court in Blonder-Tongue Lab’ys, Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971).
Koss attempted a clever pleading trick (more…)
Guest post by Arti K. Rai, Elvin R. Latty Distinguished Professor of Law and Co-Director, Center for Innovation Policy at Duke Law
In a flurry of recent decisions, the Supreme Court has continued its skepticism of administrative agencies. Although these decisions may not have as significant an impact in patent law as in other areas, they do pose interesting puzzles with respect to stare decisis as well as agency rulemaking and discretion that will provide many litigation opportunities going forward. (more…)
For several years, the most controversial part of the design patent world was patenting of portions of a display screen. But, things have moved forward with a steady flow of animated portions of a display screen. The chart above shows the year-over-year numbers of design patents issued claiming some form of an animated or transitional display. (more…)
by Dennis Crouch
In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies.
Our data reveals a dramatic drop in the percentage of assistant examiners over the past decade. Prior to 2015, over 35% of patents were examined by assistant examiners. Since 2020, this number has plummeted to less than 20%. But these assistant examiners did not simply disappear. (more…)
by Dennis Crouch
Although not a patent case, Feliciano v. Department of Transportation merits attention as one of only two Federal Circuit cases granted certiorari for the October 2024 Supreme Court term, alongside the veterans benefits case of Bufkin v. McDonough.
In Feliciano, the Supreme Court will consider whether federal civilian employees who are called to active military duty are entitled to differential pay even if their service is not directly connected to a declared national emergency. The case stems from the Federal Circuit’s interpretation of the differential pay statute, 5 U.S.C. § 5538, which requires federal agencies to provide supplemental pay to federal employees called to active duty when their military salary is less than their civilian salary.
By Dennis Crouch
In Miller Mendel, Inc. v. City of Anna, Texas, No. 2022-1753 (Fed. Cir. July 18, 2024), the Federal Circuit affirmed a district court’s judgment on the pleadings that the asserted claims of Miller Mendel’s U.S. Patent No. 10,043,188 (‘188 patent) are ineligible for patent protection under 35 U.S.C. § 101. The court also affirmed the denial of the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285.
In a recent decision out of the Southern District of Texas, Judge Lee Rosenthal found the patent infringement case brought by VDPP against Volkswagen to qualify for sanctions under the Patent Act 35 U.S.C. § 285. The court also relied upon 28 U.S.C. § 1927 and its inherent powers to directly sanction VDPP’s attorney William P. Ramey (Ramey LLP). VDPP, LLC v. Volkswagen Group of America, Inc., No. H-23-2961 (S.D. Tex. July 11, 2024).
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by Dennis Crouch
Earlier this week I was reviewing some of the USPTO’s eligibility examples, noting that they were all quite old. As if on cue, the Office has released a new set of updated guidelines – focusing on Artificial Intelligence related inventions and including three new examples. In Bilski, the Supreme Court explained that the best way to understand whether a particular claimed invention is directed to an “abstract idea” is to look back on old examples for guidance. The USPTO has found that a good way to administer this approach is to provide examples of situations that pass or fail the test. Here, they introduce three new examples 47, 48, and 49. And, while the Alice/Mayo test for analyzing subject matter eligibility has not changed, the new guidance is helpful as AI technology rapidly develops. The USPTO continues to be open to issuing patents on AI inventions, including the use of AI. However, there must be a technical solution to a technical problem.
Although the guidance is effective July 17, 2024, the USPTO is open to comments via the regulations.gov portal. The agency has provided two updated flow charts for its analysis that are included below. Although the USPTO guidance is not binding law, it is the guidebook that examiners will be trained upon and required to use. As such, any patent attorney operating practicing in the AI area should dig through these examples and the particular cases chosen by the Office as representative. (more…)
by Dennis Crouch
In Backertop Licensing LLC v. Canary Connect, Inc., the Federal Circuit addressed the scope of a district court’s inherent authority to investigate potential litigation misconduct. Chief Judge Connolly of the District of Delaware had initiated an inquiry into dozens of patent infringement cases filed by plaintiff LLCs associated with IP Edge, a patent monetization firm, and Mavexar, an affiliated consulting shop. The district court was concerned that the real parties in interest may have been concealed, that fictitious patent assignments were filed with the USPTO to shield those parties from liability, and that the plaintiff LLCs’ attorneys may have violated the Rules of Professional Conduct by taking direction from Mavexar without their formal-clients’ informed consent. (more…)
by Dennis Crouch
In the recent case of Zimmer Biomet Holdings, Inc. v. Insall, No. 23-1888 (7th Cir. July 12, 2024), the Seventh Circuit affirmed an arbitration award requiring Zimmer to continue paying royalties to the estate of Dr. John Insall even after the expiration of the underlying patents. This decision highlights the significant deference afforded to arbitration agreements and the limited ability of courts to vacate arbitral awards, even when they conflict with Supreme Court precedent.
The key precedents underlying the dispute in Zimmer v. Insall are Brulotte v. Thys Co., 379 U.S. 29 (1964) and Kimble v. Marvel Entertainment, LLC, 576 U.S. 446 (2015). In Brulotte, the Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” (more…)
by Dennis Crouch
The Supreme Court has requested a response to a pending petition for certiorari in United Therapeutics Corp. v. Liquidia Technologies, Inc., indicating that at least one justice sees potential merit in the case. The petition challenges the Federal Circuit’s application of the statutory limits on the Patent Trial and Appeal Board’s (PTAB) authority in inter partes review (IPR) proceedings. I believe that there is a potential that the Court will issue a grant-vacate-remand (GVR) order, asking the Federal Circuit to reconsider its deferential decision based upon Loper Bright.
UTC owns the patent at issue, U.S. Patent No. 10,716,793, which is directed to methods of treating pulmonary hypertension using treprostinil. (more…)
By Dennis Crouch
This case would be great for a 2L law review note.
Back in May 2024, the Federal Circuit issued an important decision holding that a patentee’s use of Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state – despite no direct contacts with that state. SnapRays, LLC v. Lighting Defense Group, LLC, No. 2023-1184 (Fed. Cir. 2024). The patentee has now petitioned for en banc rehearing, arguing that the opinion conflicts with prior Federal Circuit precedent and makes a holding that the Supreme Court at least implicitly rejected in Walden. The case is important as APEX and other similar private sales-channel enforcement processes become increasingly popular. SnapRays En Banc Petition.
My view: The Federal Circuit erred here. (more…)
Guest post by Professors Mark A. Lemley and Lisa Larrimore Ouellette of Stanford Law School.
Two of the most controversial patent law changes of the past year have involved obviousness-type double patenting, which allows applicants to patent obvious variants of their earlier patents by disclaiming the extra term of the later-expiring patent. First, the Federal Circuit held in In re Cellect that patents tied by double patenting must expire on the same day even if one of the patents has received a patent term adjustment (PTA) giving it a more-than-twenty-year term. The en banc denial and pending cert petition in Cellect have attracted substantial interest from amici and commenters. Second, the USPTO proposed that terminal disclaimers include a commitment to not enforce the patent if any claims in the patent to which it is tied are found to be obvious or not novel. Early commentary on the proposal was “overwhelmingly negative.”
In our new draft article, Fixing Double Patenting, we argue that this outcry is unwarranted. (more…)
by Dennis Crouch
I recently provided a set of interesting data on the large number of patents that are “at risk” of being invalidated based on the Federal Circuit’s Cellect decision. This post follows up with a discussion of a recent article titled “Fixing Double Patenting” released in draft form by Stanford Professors Mark Lemley and Lisa Larrimore Ouellette. The article takes a critical look at the practice of obviousness-type double patenting in the U.S. patent system.
by Dennis Crouch
Many have been thinking of the potentially large impact of Cellect v. Vidal, which is now pending before the Supreme Court. This week I uncovered striking data that a very large number of patents have been impacted.
Some background: (more…)
by Dennis Crouch
The Federal Circuit’s practice of issuing no-opinion affirmances under Rule 36 is facing renewed scrutiny in two recent petitions for rehearing en banc. In UNM Rainforest Innovations v. ZyXEL Communications Corp. and Island Intellectual Property LLC v. TD Ameritrade, Inc., the petitioners argue that the court’s use of one-word Rule 36 judgments allowed it to sidestep key legal and factual issues raised on appeal. These petitions highlight ongoing concerns about the Federal Circuit’s frequent use of Rule 36 and its impact on patent law development. The failure to provide an explanatory opinion is an appellate-procedure issue – the two patentees also argue that the lower tribunal made substantive legal errors.
I don’t see the court as having a truly nefarious reason for its common no-opinion judgments, but the situation does call to mind the ancient fable about the emperor’s new clothes adapted and popularized by Hans Christian Andersen. (more…)
by Dennis Crouch
This is just a first look at how overturning Chevron may impact patent practice.
In the past, both the USPTO and patent attorneys have largely ignored the larger scope of administrative law, but in recent years USPTO operations have been under tighter control from the White House, and courts have increasingly asked whether the agency is following the rules. Administrative patent law was truly launched with the American Invents Act of 2011 and the resulting administrative patent trials by the PTAB — resulting in hundreds of appeals arguing that the USPTO’s procedural approach is an abuse of administrative power. Importantly, the Supreme Court in Cuozzo Speed Techs. v. Com. for Intell. Prop., 579 U.S. 261 (2016) provided the patent office with Chevron deference for its determinations regarding AIA trials, including issues such as its approach to claim construction. But Chevron has now been overruled, and many are wanting the Federal Circuit to revisit the USPTO approach.
Although I expect that the outcome (more…)
