Search

Google v. Oracle: Amici Weigh in on Why the Supreme Court Should Reverse the Federal Circuit’s Rulings

patentlyo.com/patent/2020/01/supreme-reverse-circuits.html

Oracle case, including one written by me and Catherine Crump (of which more below). … Especially significant are IBM’s brief with Red Hat arguing against the copyrightability of computer interfaces and Microsoft’s brief criticizing the Federal Circuit’s unduly rigid fair use analysis and indifference to the need for flexible rules that promote interoperability in today’s highly connected world.

Manufacturers Locking-In Consumers with Design Patents

patentlyo.com/patent/2019/07/manufacturers-locking-consumers.html

Car manufacturers regularly use design patents to control the repair marketplace.  In this case, Ford accused members of the ABPA of infringing its U.S. … The holding here gives a powerful nod of approval to the already rampant use of design patents to lock-in consumers for repair parts and for manufacturers to use design patents to prohibit unauthorized interconnections.  In this form, the case sits closely alongside the Federal Circuit's decision on Google v.

The Rare Beast: Consisting Essentially Of

patentlyo.com/patent/2020/02/consisting-essentially-here.html

(Note – again here, I looked for both the "ing" and "s" form of the terms). … In a recent post, I noted the "trap" for patent prosecutors who use the transitional phrase "consisting essentially of." That phrase has been traditionally interpreted to indicate that an infringing apparatus (or method) would include all of those elements and may also include other elements that "do not materially affect the basic and novel properties of the invention." The more popular and broader "comprising" transition captures as infringement an apparatus that practices all of the claim elements, regardless of what additional elements are also being practiced by the accused. … Close to 1% of claims do not use one of these three traditional transitions.

Claiming a Process Rather than a Mere Principle

patentlyo.com/patent/2019/10/claiming-process-principle.html

What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman's invention, he could not then have claimed anything more than the  particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.… The USPTO is maintaining an updated set of "select eligibility cases" (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. … The eighth claim of Morse's patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle.

“Travel Trailer” Preamble has Meaning — Case Rolls Back to the PTO

patentlyo.com/patent/2019/11/trailer-preamble-meaning.html

On appeal, the Federal Circuit has reversed and remanded -- holding that the preamble term is limiting because it serves as an antecedent basis for terms found in the claims.  The Federal Circuit also noted that a "travel trailer" is known in the industry as a particular type of towable RV -- not simply an intended use of a trailer.… Probably the single most-popular class of towable RV is the Travel Trailer. … PREAMBLE: Note the claim above is not written in the traditional form: [Preamble] comprising [Body].  Here, the applicant argued that the claim does not include a preamble at all because there is no transition phrase.  On appeal, the Federal Circuit quickly rejected that suggestion.

Federal Circuit affirms Obviousness based upon General Knowledge of PHOSITA

patentlyo.com/patent/2020/01/federal-obviousness-knowledge.html

Google & Microsoft (Fed. … 398 (2007).   Under KSR, information deemed within PHOSITA's general knowledge is more powerful than that found buried in a prior art reference because we assume that PHOSITA would consider using their general knowledge in combination with the prior art -- even absent any express motivation to do so.

Disavowal: Case Closed Once the Inventor Manifests That the Invention Includes a Particular Aspect

patentlyo.com/patent/2019/12/disavowal-manifests-particular.html

Chamberlain's patent at issue here claims a garage door opener motor drive unit with two microcontrollers -- one of which is sited in a "wall console" and the other presumably in the head unit, although this second portion is unclaimed. … The accused infringer is Hong-Kong based TTI.

Athena v. Mayo: Using Standard Techniques to Detect an Antibody that Correlates with a Disease

patentlyo.com/patent/2019/11/standard-techniques-correlates.html

Whether patent claims to a method of diagnosis are ineligible under 35 U.S.C. … They posit that patent claims making use of man-made materials; or that require multiple laboratory-based steps, however conventional; or that detect something no one had previously looked for should be patent eligible.

Eligibility: ChargePoint takes its Network-Controlled Charging Station to the Supreme Court

patentlyo.com/patent/2019/10/eligibility-chargepoint-controlled.html

I drive a Honda Clarity -- a Plug-in Hybrid Electric Vehicle (PHEV) -- and use ChargePoint connected charging stations when I travel out of town. … [T]he Federal Circuit and various parties have used the chaos that has trailed the Court’s decision to eliminate numerous patents.

Supporting Amendment to 35 U.S.C. Section 102(a) Clarifying Public Disclosure

patentlyo.com/patent/2020/01/supporting-clarifying-disclosure.html

628 (2019) and remove undisclosed sales activity & commercialization from the scope of prior art. … Europe uses this approach found in Article 54 of the European Patent Convention:… The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

A Decade of Federal Circuit Decisions

patentlyo.com/patent/2020/01/decade-federal-circuit-decisions.html

Another way to assess a court’s output is in terms of its precedential opinions, as these constitute law on which future courts and parties rely.  Below is a chart showing the Federal Circuit’s annual number of precedential opinions by major source of origin.  The “other” group here includes the “other” category from the above graphs plus the Court of Appeals for Veterans’ Claims, Court of International Trade, and International Trade Commission.… Figure 1 shows the distribution of Federal Circuit decisions by major source.  A "decision" in the Compendium is defined as an opinion or Rule 36 affirmance.  I’ve grouped origins with small numbers of appeals, including the Board of Contract Appeals, Department of Justice, and Department of Veterans’ Affairs, into the “other" category. … You’re welcome to play around with the data on your own.  If you do use it for something that you publish, please include a citation to the Compendium.  There’s a convenient cite form on the landing page for the database.  You’re also welcome to use the above graphs in presentations, provided that you give credit to PatentlyO and the Compendium of Federal Circuit Decisions (https://empirical.law.uiowa.edu/compendium-federal-circuit-decisions).

Ladders of Abstractions: How Many Rungs Till the Threshold?

patentlyo.com/patent/2020/01/ladders-abstractions-threshold.html

The Supreme Court particularly warned against undue generalization in Alice -- writing that at some level of generalization, all inventions involve an abstract concept. … to digital audio/visual content using control information and rules sent to the user with the audio/visual file.

Supreme Court to Take-On Software Copyright Case

patentlyo.com/patent/2019/11/supreme-software-copyright.html

Issues: (1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

Oracle’s brief: More competing questions

patentlyo.com/patent/2020/02/oracles-competing-questions.html

Under §102(a), computer programs, like all “works of authorship,” have “[c]opyright protection,” as long as they are “original.” The merger doctrine does not make any expression unprotectable except in the rare circumstance where there were very few ways to express the idea. … Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

Big Big Big Case: Oracle v. Google

patentlyo.com/patent/2019/11/case-oracle-google.html

Odds are good that the biggest patent case of the year will be a copyright case. … The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before.

Garmin: Applying Facts-to-the-Law vs Law-to-the-Facts

patentlyo.com/patent/2019/09/27930.html

Cellspin Soft, Inc. … The patent challengers begin their petition with the following line: "This is the kind of case that gives patent litigation a bad reputation." The problem, according to the petition is that Cellspin uses its "exceptionally weak patents" to obtain "licensing fees."  The patents allow a user to connect "a digital camera to[] a mobile device so that a user can automatically publish content from the data capture device to a website.

Pre-Possessory Interests in Patent Law

patentlyo.com/patent/2020/02/possessory-interests-patent.html

18, 2002).  The case involves a Barry Bonds record-setting home run baseball.  Alex Popov almost caught the ball, but as it entered his glove he was immediately engulfed by the crowd of fans who were deemed an "out of control mob, engaged in violent, illegal behavior."  The ball came-out and Patrick Hayeshi (who was also knocked to the ground) picked up the ball and took possession. … There was no credible evidence that Hayeshi took part in any of the violent or illegal behavior. Because of the oddity of fandom, the $6 ball was boosted to an expected value $1.5 million based upon its record-setting experience.

DoEPHETAN: Applying the “merely tangential” exception to the “prosecution history estoppel” limitation of the “doctrine of equivalents” expansion of the definition of infringement

patentlyo.com/patent/2019/08/prosecution-equivalents-infringement.html

Instead of continuing to define the covered proteins in terms of amino acid sequence variations from SEQ ID NO: 2, the patentee deliberately chose to redefine the claimed proteins in terms of the ability of their encoding nucleotide sequences to hybridize with SEQ ID NO: 1 under the claimed conditions. … Under PHE, a narrowing limitation during prosecution is "presumed to be a general disclaimer of the territory between the original claim and the amended claim." Festo Corp. … literally infringe claim 9 because it produces a protein with an amino acid sequence that differs from SEQ ID NO: 2.

Numbering System in Drawings Used to Interpret Claims

patentlyo.com/patent/2020/02/numbering-drawings-interpret.html

Means Plus Function: Disputed claim construction in the '239 patent centered on two means plus function terms:… Slip Op.  The primary difficulty with this construction comes from the most detailed figure relating to the camera -- Figure 5 (below).  Figure 5 shows the camera and includes the battery and interface and the specification states that "the structure of both camera card 15 and camera unit 14 conforms to the block diagram shown in Fig. … On appeal, the Federal Circuit refused to limit "camera unit" to the design found in the figure.

Short 101 Decision

patentlyo.com/patent/2020/02/short-101-decision.html

So far in 2020, the Federal Circuit has issued judgment on 30+ appeals from the USPTO.  The majority of these issued without opinion under the Federal Circuit's "Rule 36" that allows for no-opinion judgments. … A tangible computer-readable storage medium comprising instructions that when executed by a computer processor, cause the computer processor to:

Validity Goulash: Functional Claim Language, Patent Eligibility, and Pick-up Truck Drive Shafts

patentlyo.com/patent/2019/12/validity-functional-eligibility.html

In American Axle, the Federal Circuit found the patented method of manufacturing drifeshafts to be patent ineligible.  U.S. … Truthfully, these questions are rather weak because they they have all been addressed by most members of the court in some form.

Guest Post by Emil J. Ali and David E. Boundy: Executive Orders 13891 and 13892: changes we can expect at the USPTO

patentlyo.com/patent/2019/10/editorial-executive-changes.html

On October 9, 2019, the White House issued two executive orders, Promoting the Rule of Law Through Improved Agency Guidance Documents, (E.O. … 13892 § 3 and § 4 remind agencies that the APA allows agencies to use sub-regulatory guidance documents to “articulate the agency’s understanding” of other law, or announce tentative positions, but may not apply those soft-edged understandings as if they were hard-edged enforcement standards, unless the agency has followed certain procedures required by the APA.

Zoltek Patent Takings Rehearing Denied: No Fifth Amendment Protection

patentlyo.com/jobs/2006/09/zoltek_patent_t.html

Second, the two judges argue that because patent rights are created by relatively recent federal statute, it is difficult to characterize limitations of those rights as a “taking of established property rights.”   In dissent, Judge Newman laid out the holding in simple terms: The panel majority holds that there is no jurisdiction [in any court] of a Takings claim for compensation for unauthorized use by the government of a patented invention. … Just last week, Patently-O highlighted Professor Mossoff’s historical analysis of patent-takings jurisprudence.  That article took the CAFC to task for its continuation of the untrue myth that “patents were never secured as constitutional private property in the nineteenth century.”  In fact, argues Mossoff, “nineteenth-century courts applied the Takings Clause to patents, securing these intangible property rights as constitutional private property.” “It is time to set the historical record straight.” Mossoff’s article was prompted by the April 2006 decision in Zoltek v. … Without opinion (as is usual in denials), the petition for rehearing was denied.  However, two opinions were released.  Judges Dyk and Gajarsa filed a concurring opinion arguing first that there is no need for a taking claim because private parties already have a right to sue the government for unauthorized patent infringement under 28 U.S.C.

Contact List Appeal Not Frivolous

patentlyo.com/patent/2020/02/contact-appeal-frivolous.html

Microsoft (Fed. … An appeal premised on such new arguments—arguments waived because they were not presented to the first tribunal—is futile and, therefore, frivolous.

Your Patent License Likely Includes an Implied License to Other Patents

patentlyo.com/patent/2020/02/license-includes-implied.html

In personal terms, because the uncle and grandparent of the ’836 patent, are licensed, is the ’836 patent also licensed?… 2011) and builds upon the parallel doctrine of legal estoppel discussed in AMP Inc. … I'll pause here to note how the Federal Circuit's question shifts the focus from the way I presented the case above.  Although the license agreement discusses everything in relation to the patent-in-suit (the uncle '714 patent), the Federal Circuit concludes that an important relationship is the "grandparent" relationship between the '836 patent and the ''925 patent, neither of which were the patent in-suit.  That shift to the '925 patent is important for two reasons (1) we have prior precedent implying a license to grandchildren patents but not to 'uncles.' General Protecht; and (2) the linkage between the '836 and the uncle '714 patent is tenuous because of the continuation-in-part status, whereas the grandchild lineage is straight continuation all the way down.

Guest Post: Against the Design-Seizure Bill

patentlyo.com/patent/2020/01/against-design-seizure.html

This bill is not reasonably tailored to address its purported goal of "stem[ming] the flow of counterfeit goods." Instead, it will allow design patent owners to foist their private enforcement costs onto taxpayers, under circumstances that are unlikely to result in accurate determinations of infringement. … The first step requires a comparison of the claimed design (i.e., what's illustrated in the patent) and the accused product.

When a Library Holding is not Meaningfully Indexed

patentlyo.com/patent/2019/11/library-holding-meaningfully.html

The cover of the magazine lists a date of May/June 1996. … Subsequently, TCL found Doris Michel -- the "only individual TCL found who has personal knowledge of the record-keeping procedures used in 1996, was willing to sign a sworn declaration, and is willing to travel to the U.S.

Executive Orders on Agency Practice

patentlyo.com/patent/2019/10/executive-orders-practice.html

3.  Proper Reliance on Guidance Documents.  Guidance documents may not be used to impose new standards of conduct on persons outside the executive branch except as expressly authorized by law or as expressly incorporated into a contract. …  When an agency uses a guidance document to state the legal applicability of a statute or regulation, that document can do no more, with respect to prohibition of conduct, than articulate the agency’s understanding of how a statute or regulation applies to particular circumstances.

Guest post by Prof. Chien: Comparative Patent Quality and the Prior Art Gap

patentlyo.com/patent/2019/10/comparative-patent-quality.html

As Congress charts its path for the rest of the year, many in the patent community are eagerly awaiting new legislation on patentable subject matter. … But to the extent that the Supreme Court’s jurisprudence can be understood as a clumsy response to the proliferation of weak patents, reversing these decisions will not address the underlying root causes of poor patent quality.

Tale of a Patent: Seeking Permission to File a Motion to Petition for Correction

patentlyo.com/patent/2019/10/permission-petition-correction.html

On appeal, the Federal Circuit has vacated and remanded -- holding that the PTAB should allow the Certificate of Correction petition. In particular, the court found that the PTAB had "abused its discretion by assuming the authority that 35 U.S.C. … Patent 9,157,017 ("method for producing an automobile air conditioning system for use with 2,3,3,3-tetrafluoropropene").

Patently-O Bits and Bytes by Juvan Bonni

patentlyo.com/patent/2020/01/patently-o-bits-and-bytes-by-juvan-bonni-35.html

Matthew Bultman: Apple Loses Bid To Move Mobile Wallet Patent Suit Out of Texas (Source: Bloomberg Law)… Stern, and Gwen Fisher: VASCEPA® Approved in Canada to Reduce the Risk of Cardiovascular Events (Source: BioSpace)

Avoiding Judge Hughes

patentlyo.com/patent/2019/11/avoiding-judge-hughes.html

Judge Hughes deprives civil plaintiffs of a fair forum, forcing them to waste money on appeals that should be unnecessary, settle on unfavorable terms, or simply quit. … In a short opinion, the Federal Circuit has denied Extreme Tech's petition for writ of mandamus directing transfer of its case before S.D.Tex Judge Hughes to S.D.Tex Judge Bennett. … Judge Hughes has been found many times by the Fifth Circuit to have abused his discretion.

Athena v. Mayo: Strong Amicus Support

patentlyo.com/patent/2019/11/athena-strong-support.html

In its decision, the Federal Circuit found that the core discovery here is the relationship between MuSK antibodies in the body and MG.  That relationship though is a natural law.  The court then looked to the particular steps in the method and found no inventive concept.  Even though the claims required specific chemical reactions, the specification also made clear that development of the particular steps would be within reach of one skilled in the art -- once they understand that MuSK is important. … The Federal Circuit decision was penned by Judge Lourie and joined by Judge Stoll.  Judge Newman wrote in dissent.  A 7-5 court then denied Athena's petition for en banc rehearing -- writing effectively that its hands were tied by Mayo & Alice.  The Athena denial is interesting because it includes eight opinions (seven substantive) that generally lament the current situation.… Yes, they show support, but they also include useful legal analysis.

Federal Circuit’s Quirky (and Incorrect) Doctrine of Retroactive Preclusion

patentlyo.com/patent/2019/11/incorrect-retroactive-preclusion.html

[This is my restatement of the holdings] See XY, LLC v. … On remand, the district court dismissed the challenged claim after Chrimar provided ALE with a covenant not to sue on that claim.  ALE then appealed again -- arguing that the disclaimer was insufficient because it did not expressly cover ALE's customers.

Guest Post by Prof. Rai: In the Constitutional Cross-Hairs: PTAB Judges and Administrative Adjudication

patentlyo.com/patent/2019/11/constitutional-administrative-adjudication.html

Greene’s Energy Group, an ideologically diverse coalition of seven Justices ultimately concluded that administrative adjudication of granted patents survived constitutional scrutiny.  But Justice Gorsuch, joined by Chief Justice Roberts, dissented in strong terms, warning against the perils of adjudication by judges who don’t enjoy Article III protections.… 2019), a panel of the Federal Circuit held that the administrative patent judges (APJs) at the PTAB are “principal officers” who must, under the Appointments Clause of the Constitution, be appointed by the President and confirmed by the Senate.  In contrast, the current patent statute provides for APJs to be appointed by the Secretary of Commerce in consultation with the PTO Director. … Of course, as the Arthrex opinion illustrates, under more formal versions of Appointments Clause jurisprudence, decisions made by actors who are not subject to significant direction and control by a presidentially appointed official may themselves be unconstitutional.  The Supreme Court’s 2018 decision in Lucia v.

This week in Property: Efficient Infringement

patentlyo.com/patent/2020/01/property-efficient-infringement.html

At trial, Jacque proved about $200 in damages to the land (extra plowing time in the spring), but those damages were suffered by his tenant (Jacque's son) and thus not awarded to Jacque.  Steenburg Homes argued that this is a case of efficient infringement. … As long as they cause no compensable harm, the only deterrent intentional trespassers face is the nominal damage award of $1, the modern equivalent of Merest's halfpenny, and the possibility of a Class B forfeiture under Wis.

Parallel District Court and ITC Litigation

patentlyo.com/patent/2020/01/parallel-district-litigation.html

ARM's US Patent 8,720,320 covers a Keurig coffee-machine adapter.  Typical cartridges are single-use -- rendered ineffective after being pierced by the brewer during operation. … On appeal, the Federal Circuit has affirming the claim construction and thus the resulting non-infringement and obviousness decisions.  In the process, the appellate panel reiterated the lower court's statement that "ARM’s insistence on trying [the case] was largely a charade used for the purpose of extending the life of the earlier ITC.

Opening a Closed Markush Group

patentlyo.com/patent/2020/01/opening-closed-markush.html

Amgen's patent at issue covers a drug formulation for treatment of hyperparathyroidism in particular situations sold under the trade name Sensipar with about $1b annual sales. U.S. … [The claim] is satisfied when an accused product contains a component that is from the Markush group and that meets the limitation’s requirements for the component.

Special Rights for Inventor Owned Patents

patentlyo.com/patent/2019/12/special-inventor-patents.html

Injunctions would now be likely against infringers of inventor-owned patents.

Nexus: Product must be “Essentially the Claimed Invention”

patentlyo.com/patent/2019/12/product-essentially-invention.html

Obviousness: The bulk of the obviousness analysis is focused on more direct evidence of obviousness -- looking at importance of differences between the claimed invention and the prior art. … On remand, SRAM cannot rely upon the presumption of nexus because of the lack of coexistence.  However, the patentee may still be able to rely upon secondary considerations, but to do so must prove that "the evidence of secondary considerations is attributable to the claimed combination of wide and narrow teeth with inboard or outboard offset teeth, as opposed to, for example, prior art features in isolation or unclaimed features."

Supreme Court: PTO Cannot Recoup its Attorney Fees in Defending §145 Civil Actions

patentlyo.com/patent/2019/12/attorney-defending-%c2%a7145.html

The question presented in this case is whether such “expenses” include the salaries of attorney and paralegal employees of the United States Patent and Trademark Office (PTO). … The last line of § 145 states: "All the expenses of the proceedings shall be paid by the applicant."  The Lanham Act has a parallel provision for times with the PTO refuses to register a mark: "Unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not." 15 U.S.C.

Added DoE Flexibility Sticks: Federal Circuit Denies Rehearing in Ajinomoto

patentlyo.com/patent/2019/11/doephetan.html

coli.  During prosecution the claims were narrowed to avoid a particular prior art references.  However, the accused bacteria is also different from the amended-around prior art and so the Federal Circuit found the amendment merely tangential to the equivalent and therefore did not bar the patentee from relying upon the Doctrine of Equivalents. … In Ajinomoto, the Federal Circuit found that the patentee had found its way through the DoEPHETAN maze.  As originally filed, the patent claims covered the accused genetically engineered E.

BEAST MODE vs. BEAST MODE SOCCER

patentlyo.com/patent/2019/11/beast-mode-soccer.html

In this situation, the PTO asks whether the applicant's mark is likely to cause confusion with another registered mark. § 2(d) of the Lanham Act (15 U.S.C. … Factor 6 - number and nature of similar marks -- Copeland argues that Lynch's mark is weak because "Beast Mode" is a well known American slang referring to using "high effort or energy in exercise or sport." (Citing the UrbanDictionary).

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

patentlyo.com/patent/2019/10/supreme-introduction-patent.html

Speaking of Section 101 -- there are a number of pending petitions on the subject. … 19-353 (patentability of an improved user interface)… 19-414 (when is a process-invention "ready for patenting" so that a public use or offer to sell would create a bar to patentability)

PTO Informative Decisions: Patent Eligibility Rejection — Look to what is expressly “RECITED” in the claims

patentlyo.com/patent/2020/01/informative-decisions-eligibility.html

This post will focus on Linden, which is a patent application owned by BAIDU spun out of Prof. … The Board here is saying that the claim would be problematic only if it actually and expressly recited the algorithm that it uses.  Since the claim is drafted more broadly (i.e., at a higher level of abstraction), it cannot be seen as abstract.… The PTAB went on to explain that even if the claims did recite a mathematical concept -- they are still not problematic because the claims as a whole are not "directed to an abstract idea" but rather any abstractions are "integrated into a practical application."

Historic Underpinnings of the Inventor Rights Act of 2019

patentlyo.com/patent/2019/12/historic-underpinnings-inventor.html

Profit Disgorgement - Reset to 1946: I will start with the profit disgorgement provision - which is a major change away from the current compensatory scheme in U.S. … In eBay, the Supreme Court ruled, inter alia, that no injunction should issue absent proof of irreparable harm caused by the infringement as well as inadequate remedy at law.

Elijah E. Cummings Lower Drug Costs Now Act

patentlyo.com/patent/2019/12/elijah-cummings-lower.html

Gov't to negotiate on Medicare drug prices for insulin and >25 of the top-125 drugs (by national spending). … The House recently passed H.R.

Supreme Court Hears Appealability Appeal

patentlyo.com/patent/2019/12/supreme-appealability-appeal.html

18-916).   The focus of the case is statutory declaration that the PTO Director's decision of whether to institute an IPR is "final and nonappealable."  35 U.S.C. § 314(d).  This same issue - albeit slightly different context - was already addressed in Cuozzo Speed Techs., LLC v.

Quick Action to Fix Appointments Problem?

patentlyo.com/patent/2019/11/action-appointments-problem.html

The IP Subcommittee of the House Judiciary Committee is meeting [Tuesday] afternoon to look at this.

Wyeth v. Stone: Art or Principle in the Abstract

patentlyo.com/patent/2019/11/wyeth-principle-abstract.html

In ChargePoint, the Federal Circuit discussed the 19th Century patent case of Wyeth v. … The case involved a patented ice-cutting invention created by Nat Wyeth who was known to have invented "practically every implement and device used in the ice business." The disputed patent in the case issued in 1829 and is now identified as No.

Federal Circuit Confirms “Consisting Essentially Of” Trap for Patent Applicants

patentlyo.com/patent/2020/02/consisting-essentially-applicants.html

HZNP's claim at issue here is directed to a pain-treatment ointment "consisting essentially of" 2% diclofenac sodium; 40% DMSO; etc. … This outcome is clearly problematic for current patent application drafting practice because only a minority of patent applications expressly identify and explain the novel features of the invention.  One reason why those are not explained apriori is that the inventor's understanding of novelty shifts as the patent application moves through the patenting process (or even later during litigation) and more prior art is unearthed.  Although not entirely clear, it looks to me that the proposed method of claim interpretation uses a more subjective novelty -- what did the patent applicant think was the novel feature.

Competing Questions in Supreme Court Petitions

patentlyo.com/patent/2020/02/competing-questions-petitions.html

5,952,714 issued in September 1999, the Patent Act provided only two avenues for challenging the validity of the patent's claims: ex parte reexamination and district court litigation. … Notice the competing preambles that talk-past each other without addressing the same key points; The US Gov't then reordered and rewrote the questions.  On the takings question -- petitioner uses the trigger keyword "retroactive application" of IPR while the Gov't refers to the more neutral "cancellation."  Cancellation is an important term here because cancellation was already allowed pre-AIA under the reexamination statutes.

IP in State of the Union Address:

patentlyo.com/patent/2020/02/state-union-address.html

I also promised our citizens that I would impose tariffs to confront China’s massive theft of American jobs. … They respect what we have done because, quite frankly, they could never believe what they were able to get away with year after year, decade after decade, without someone in our country stepping up and saying: Enough.

Certiorari Denied in Eligibility Cases

patentlyo.com/patent/2020/01/certiorari-denied-eligibility.html

Although there are several other pending eligibility petitions, I gave these three the highest potential for certiorari.  The result here is that the Supreme Court is now highly unlikely to take up eligibility anew this term.  The one exception is the copyright case of Google v.

En Banc: Power of Customs & Border Protection

patentlyo.com/patent/2020/01/customs-border-protection.html

The Orders in this case cover certain solar modules and expressly exclude others, without providing a definition of the class expressly excluded. … The ambiguity was important because CBP enforcement is seen as a ministerial action -- CBP is not authorized to interpret or fill gaps in ambiguous orders.  The court explained in its original opinion: "Ambiguity is the line that separates lawful ministerial acts from unlawful ultra vires acts by Customs."

Principal Officers: Three En Banc Petitions in Arthrex v. Smith & Nephew

patentlyo.com/patent/2019/12/principal-officers-petitions.html

None of the parties were happy with the outcome in Arthrex v. … In its decision, the Federal Circuit held that the appointment process for PTAB judges (APJs) violates the Appointments Clause of Article II of the U.S.

Copyright: When the Case Summaries are “Official” Works Authored by the State

patentlyo.com/patent/2019/12/copyright-summaries-official.html

JOHNSON: The crux of the parties' dispute is whether this Court's 19th-century precedents support a decision different from the one that would be reached by applying standard interpretive principles to the Copyright Act's plain text. … It's being used as a performative.

Collabo: v. Sony: Due Process Violation and a Takings

patentlyo.com/patent/2019/11/collabo-process-violation.html

After Collabo sued Sony for infringement, Sony responded with petitions for inter partes review.  The PTO instituted review and found the claims unpatentable by a preponderance of the evidence and the Federal Circuit affirmed.  With regard to Collabo's due process and takings claim, the court found itself bound by a parallel decision in Celgene Corp. … Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA violate the Takings Clause of the Fifth Amendment?… Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA violate the Due Process Clause of the Fifth Amendment?

Facebook is Prevailing Party Even Though Case Dismissed as Moot

patentlyo.com/patent/2019/10/facebook-prevailing-dismissed.html

Sued Facebook for infringing the claims of its U.S. … Numerous federal statutes allow courts to award attorney's fees and costs to the “prevailing party.” The question presented here is whether this term includes a party that has failed to secure a judgment on the merits or a court-ordered consent decree, but has nonetheless achieved the desired result because the lawsuit brought about a voluntary change in the defendant's conduct.