All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

Incandescent Lamp Patent Case

The following is simply the text of the Supreme Court’s 1895 decision:

Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895) [16_S.Ct._75]

Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895) 

This was a bill in equity, filed by the Consolidated Electric Light Company against the McKeesport Light Company, to recover damages for the infringement of letters patent No. 317,[6]76, issued May 12, 1885, to the Electro-Dynamic Light Company, assignee of Sawyer and Man, for an electric light. The defendants justified under certain patents to Thomas A. Edison, particularly No. 223,898, issued January 27, 1880; denied the novelty and utility of the complainant’s patent; and averred that the same had been fraudulently and illegally procured. The real defendant was the Edison Electric Light Company, and the case involved a contest between what are known as the Sawyer and Man and the Edison systems of electric lighting. 

In their application, Sawyer and Man stated that their invention related to ‘that class of electric lamps employing an incandescent conductor [e]nclosed in a transparent, hermetically sealed vessel or chamber, from which oxygen is excluded, and … more especially to the incandescing conductor, its substance, its form, and its combination with the other elements composing the lamp. Its object is to secure a cheap and effective apparatus; and our improvement consists, first, of the combination, in a lamp chamber, composed wholly of glass, as described in patent No. 205,144,’ upon which this patent was declared to be an improvement, ‘of an incandescing conductor of carbon made from a vegetable fibrous material, in contradistinction to a similar conductor made from mineral or gas carbon, and also in the form of such conductor so made from such vegetable carbon, and combined in the lighting circuit with the exhausted chamber of the lamp.’

The following drawings exhibit the substance of the invention:

The specification further stated that:

‘In the practice of our invention, we have made use of carbonized paper, and also wood carbon. We have also used such conductors or burners of various shapes, such as pieces with their lower ends secured to their respective supports, and having their upper ends united so as to form an inverted V-shaped burner. We have also used conductors of varying contours,—that is, with rectangular bends instead of curvilinear ones; but we prefer the arch shape.’

‘No especial description of making the illuminating carbon conductors, described in this specification, and making the subject-matter of this improvement, is thought necessary, as any of the ordinary methods of forming the material to be carbonized to the desired shape and size, and carbonizing it while confined in retorts in powdered carbon, substantially according to the methods in practice before the date of this improvement, may be adopted in the practice thereof by any one skilled in the arts appertaining to the making of carbons for electric lighting or for other use in the arts.’

‘An important practical advantage which is secured by the arch form of incandescing carbon is that it permits the carbon to expand and contract under the varying temperatures to which it is subjected when the electric current is turned on or off without altering the position of its fixed terminals. Thus, the necessity for a special mechanical device to compensate for the expansion and contraction which has heretofore been necessary is entirely dispensed with, and thus the lamp is materially simplified in its construction. Another advantage of the arch form is that the shadow cast by such burners is less than that produced by other forms of burners when fitted with the necessary devices to support them.’

‘Another important advantage resulting from our construction of the lamp results from the fact that the wall forming the chamber of the lamp through which the electrodes pass to the interior of the lamp is made wholly of glass, by which all danger of oxidation, leakage, or short-circuiting is avoided.’

‘The advantages resulting from the manufacture of the carbon from vegetable fibrous or textile material instead of mineral or gas carbon are many. Among them may be mentioned the convenience afforded for cutting and making the conductor in the desired form and size, the purity and equality of the carbon obtained, its susceptibility to tempering, both as to hardness and resistance, and its toughness and durability. We have used such burners in closed or hermetically sealed transparent chambers, in a vacuum, in nitrogen gas, and in hydrogen gas; but we have obtained the best results in a vacuum, or an attenuated atmosphere of nitrogen gas, the great desideratum being to exclude oxygen or other gases capable of combining with carbon at high temperatures from the incandescing chamber, as is well understood.’

The claims were as follows:

‘(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material, and of an arch or horseshoe shape, substantially as hereinbefore set forth.’

‘(2) The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and a transparent, hermetically sealed chamber, in which the conductor is inclosed.’

‘(3) The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.’

‘(4) An incandescing electric lamp consists of the following elements in combination: First, an illuminating chamber made wholly of glass hermetically sealed, and out of which all carbon-consuming gas has been exhausted or driven; second, an electric-circuit conductor passing through the glass wall of said chamber, and hermetically sealed therein, as described; third, an illuminating conductor in said circuit, and forming part thereof within said chamber, consisting of carbon made from a fibrous or textile material, having the form of an arch or loop, substantially as described, for the purpose specified.’

The commercial Edison lamp used by the appellee, and which is illustrated below, is composed of a burner, A, made of carbonized bamboo of a peculiar quality, discovered by Mr. Edison to be highly useful for the purpose, and having a length of about 6 inches, a diameter of about 5/1000 of an inch, and an electrical resistance of upward of 100 ohms. This filament of carbon is bent into the form of a loop, and its ends are secured by good electrical and mechanical connections to two fine platinum wires, B, B. These wires pass through a glass stem, C, the glass being melted and fused upon the platinum wires. A glass globe, D, is fused to the glass stem, C. This glass globe has originally attached to it, at the point d, a glass tube, by means of which a connection is made with highly organized and refined exhausting apparatus, which produces in the globe a high vacuum, whereupon the glass tube is melted off by a flame, and the globe is closed by the fusion of the glass at the point d.

Upon a hearing in the circuit court before Mr. Justice Bradley, upon pleadings and proofs, the court held the patent to be invalid, and dismissed the bill. 40 Fed. 21. Thereupon complainant appealed to this court.

Attorneys: Leonard E. Curtis and Edmund Wetmore, for appellant; F. P. Fish, for appellee.

Opinion: Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

In order to obtain a complete understanding of the scope of the Sawyer and Man patent, it is desirable to consider briefly the state of the art at the time the application was originally made, which was in January, 1880.

Two general forms of electric illumination had for many years been the subject of experiments more or less successful, one of which was known as the ‘arc light,’ produced by the passage of a current of electricity between the points of two carbon pencils placed end to end, and slightly separated from each other. In its passage from one point to the other through the air, the electric current took the form of an arc, and gave the name to the light. This form of light had been produced by Sir Humphry Davy as early as 1810, and, by successive improvements in the carbon pencils and in their relative adjustment to each other, had come into general use as a means of lighting streets, halls, and other large spaces; but by reason of its intensity, the uncertain and flickering character of the light, and the rapid consumption of the carbon pencils, it was wholly unfitted for domestic use. The second form of illumination is what is known as the ‘incandescent system,’ and consists generally in the passage of a current of electricity through a continuous strip or piece of refractory material, which is a conductor of electricity, but a poor conductor; in other words, a conductor offering a considerable resistance to the flow of the current through it. It was discovered early in this century that various substances might be heated to a white heat by passing a sufficiently strong current of electricity through them. The production of a light in this way does not in any manner depend upon the consumption or wearing away of the conductor, as it does in the arc light. The third system was a combination of the two others, but it never seems to have come into general use, and is unimportant in giving a history of the art.

For many years prior to 1880, experiments had been made by a large number of persons, in various countries, with a view to the production of an incandescent light which could be made available for domestic purposes, and could compete with gas in the matter of expense. Owing party to a failure to find a proper material, which should burn but not consume, partly to the difficulty of obtaining a perfect vacuum in the globe in which the light was suspended, and partly to a misapprehension of the true principle of incandescent lighting, these experiments had not been attended with success; although it had been demonstrated as early as 1845 that, whatever material was used, the conductor must be inclosed in an art-tight bulb, to prevent it from being consumed by the oxygen in the atmosphere. The chief difficulty was that the carbon burners were subject to a rapid disintegration or evaporation, which electricians assumed was due to the disrupting action of the electric current, and hence the conclusion was reached that carbon contained in itself the elements of its own destruction, and was not a suitable material for the burner of an incandescent lamp.

It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success; that it does not embody the principle of high resistance with a small illuminating surface; that it does not have the filament burner of the modern incandescent lamp; that the lamp chamber is defective; and that the lamp manufactured by the complainant, and put upon the market, is substantially the Edison lamp; but it is said that, in the conductor used by Edison (a particular part of the stem of the bamboo, lying directly beneaty the siliceous cuticle, the peculiar fitness for which purpose was undoubtedly discovered by him), he made use of a fibrous or textile material covered by the patent to Sawyer and Man, and is therefore an infringer. It was admitted, however, that the third claim—for a conductor of carbonized paper—was not infringed.

The two main defenses to this patent are (1) that it is defective upon its face, in attempting to monopolize the use of all fibrous and textile materials for the purpose of electric illuminations; and (2) that Sawyer and Man were not in fact the first to discover that these were better adapted than mineral carbons to such purposes.

Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors? If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad. If, for instance, minerals or porcelains had always been used for a particular purpose, and a person should take out a patent for a similar article of wood, and woods generally were adapted to that purpose, the claim might not be too broad, though defendant used wood of a different kind from that of the patentee. But if woods generally were not adapted to the purpose, and yet the patentee had discovered a wood possessing certain qualities, which gave it a peculiar fitness for such purpose, it would not constitute an infringement for another to discover and use a different kind of wood, which was found to contain similar or superior qualities. The present case is an apt illustration of this principle. Sawyer and Man supposed they had discovered in carbonized paper the best material for an incandescent conductor. Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over 6,000 vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everybody, then, precluded by this broad claim from making further investigation? We think not.

The injustice of so holding is manifest in view of the experiments made, and continued for several months, by Mr. Edison and his assistants, among the different species of vegetable growth, for the purpose of ascertaining the one best adapted to an incandescent conductor. Of these he found suitable for his purpose only about three species of bamboo, one species of cane from the valley of the Amazon (impossible to be procured in quantities on account of the climate), and one or two species of fibers from the agave family. Of the special bamboo, the walls of which have a thickness of about 3/8 of an inch, he used only about 20/1000 of an inch in thickness. In this portion of the bamboo the fibers are more nearly parallel, the cell walls are apparently smallest, and the pithy matter between the fibers is at its minimum. It seems that carbon filaments cannot be made of wood,—that is, exogenous vegetable growth,—because the fibers are not parallel, and the longitudinal fibers are intercepted by radial fibers. The cells composing the fibers are all so large that the resulting carbon is very porous and friable. Lamps made of this material proved of no commercial value. After trying as many as 30 or 40 different woods of exogenous growth, he gave them up as hopeless. But finally, while experimenting with a bamboo strip which formed the edge of a palm-leaf fan, cut into filaments, he obtained surprising results. After microscopic examination of the material, he dispatched a man to Japan to make arrangements for securing the bamboo in quantities. It seems that the characteristic of the bamboo which makes it particularly suitable is that the fibers run more nearly parallel than in other species of wood. Owing to this, it can be cut up into filaments having parallel fibers, running throughout their length, and producing a homogeneous carbon. There is no generic quality, however, in vegetable fibers, because they are fibrous, which adapts them to the purpose. Indeed, the fibers are rather a disadvantage. If the bamboo grew solid, without fibers, but had its peculiar cellular formation, it would be a perfect material, and incandescent lamps would last at least six times as long as at present. All vegetable fibrous growths do not have a suitable cellular structure. In some the cells are so large that they are valueless for that purpose. No exogenous, and very few endogenous, growths are suitable. The messenger whom he dispatched to different parts of Japan and China sent him about 40 different kinds of bamboo, in such quantities as to enable him to make a number of lamps, and from a test of these different species he ascertained which was best for the purpose. From this it appears very clearly that there is no such quality common to fibrous and textile substances generally as makes them suitable for an incandescent conductor, and that the bamboo which was finally pitched upon, and is now generally used, was not selected because it was of vegetable growth, but because it contained certain peculiarities in its fibrous structure which distinguished it from every other fibrous substance. The question really is whether the imperfectly successful experiments of Sawyer and Man, with carbonized paper and wood carbon, conceding all that is claimed for them, authorize them to put under tribute the results of the brilliant discoveries made by others.

It is required by Rev. St. § 4888, that the application shall contain ‘a written description of the device, and of the manner and process of making constructing, compounding, and using it in such full, clear, concise, and exact terms as to enable any person, skilled in the art or science to which it appertains or with which it is most nearly connected, to make, construct, compound, and use the same.’ The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. Grant v. Raymond, 6 Pet. 218, 247. If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.

It was said by Mr. Chief Justice Taney in Wood v. Underhill, 5 How. 1, 5, with respect to a patented compound for the purpose of making brick or tile, which did not give the relative proportions of the different ingredients: ‘But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely; for in such cases it would be evident, on the face of the specification, that no one could use the invention without first ascertaining, by experiment, the exact proportion of the different ingredients required to produce the result intended to be obtained. . . . And if, from the nature and character of the ingredients to be used, they are not susceptible of such exact description, the inventor is not entitled to a patent.’

So in Tyler v. Boston, 7 Wall. 327, wherein the plaintiff professed to have discovered a combination of fusel oil with the mineral and earthy oils, constituting a burning fluid, the patentee stated that the exact quantity of fusel oil which is necessary to produce the most desirable compound must be determined by experiment. And the court observed: ‘Where a patent is claimed for such a discovery, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave a person attempting to use the discovery to find it out ‘by experiment.” See, also, Béné v. Jeantet, 129 U. S. 683, 9 Sup. Ct. 428; Howard v. Stove Works, 150 U. S. 164, 167, 14 Sup. Ct. 68; Schneider v. Lovell, 10 Fed. 666; Welling v. Crane, 14 Fed. 571.

Applying this principle to the patent under consideration, how would it be possible for a person to know what fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation? If, as before observed, there were some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent; but that is not the case here. An examination of materials of this class carried on for months revealed nothing that seemed to be adapted to the purpose; and even the carbonized paper and wood carbons specified in the patent, experiments with which first suggested their incorporation therein, were found to be so inferior to the bamboo, afterwards discovered by Edison, that the complainant was forced to abandon its patent in that particular, and take up with the material discovered by its rival. Under these circumstances, to hold that one who had discovered that a certain fibrous or textile material answered the required purpose should obtain the right to exclude everybody from the whole domain of fibrous and textile materials, and thereby shut out any further efforts to discover a better specimen of that class than the patentee had employed, would be an unwarranted extension of his monopoly, and operate rather to discourage than to promote invention. If Sawyer and Man had discovered that a certain carbonized paper would answer the purpose, their claim to all carbonized paper would, perhaps, not be extravagant; but the fact that paper happens to belong to the fibrous kingdom did not invest them with sovereignty over this entire kingdom, and thereby practically limit other experimenters to the domain of minerals.

In fact, such a construction of this patent as would exclude competitors from making use of any fibrous or textile material would probably defeat itself, since, if the patent were infringed by the use of any such material, it would be anticipated by proof of the prior use of any such material. In this connection it would appear, not only that wood charcoal had been constantly used since the days of Sir Humphry Davy for arc lighting, but that in the English patent to Greener and Staite, of 1846, for an incandescent light, ‘charcoal, reduced to a state of powder,’ was one of the materials employed. So also, in the English patent of 1841 to De Moleyns, ‘a finely pulverized boxwood charcoal or plumbago’ was used for an incandescent electric lamp. Indeed, in the experiments of Sir Humphry Davy, early in the century, pieces of well-burned charcoal were heated to a vivid whiteness by the electric current, and other experiments were made which evidently contemplated the use of charcoal heated to the point of incandescence. Mr. Broadnax, the attorney who prepared the application, it seems, was also of opinion that a broad claim for vegetable carbons could not be sustained, because charcoal had been used before in incandescent lighting. There is undoubtedly a good deal of testimony tending to show that, for the past 50 or 60 years, the word ‘charcoal’ has been used in the art, not only to designate carbonized wood, but mineral or hard carbons, such as were commonly employed for the carbon pencils of arc lamps. But we think it quite evident that, in the patents and experiments above referred to, it was used in its ordinary sense of charcoal obtained from wood. The very fact of the use of such word to designate mineral carbons indicates that such carbons were believed to possess peculiar properties required for illumination, that before that had been supposed to belong to wood charcoal.

We have not found it necessary in this connection to consider the amendments that were made to the original specification, upon which so much stress was laid in the opinion of the court below, since we are all agreed that the claims of this patent, with the exception of the third, are too indefinite to be the subject of a valid monopoly.

As these suggestions are of themselves sufficient to dispose of the case adversely to the complainant, a consideration of the question of priority of invention, or rather of the extent and results of the Sawyer and Man experiments, which was so fully argued upon both sides, and passed upon by the court below, becomes unnecessary.

For the reasons above stated, the decree of the circuit court is affirmed.

The video above comes from QUIMBEE.

When the State is an Involuntary Plaintiff

Gensetix v. Univ. Texas v. Baylor College of Med. (Fed. Cir. 2020)

Here is the three-party setup in this case involving the patentee, licensee, and accused infringers:

  • Invent & Patent: Dr. Decker, a UTexas researcher invented a method for generating anti-tumor immune response and UTexas obtained the patents (US8728806; US9333248);
  • License: UTexas provided an exclusive license to Mr. Mirrow who later transferred the license to Gensetix;
  • Infringe: Dr. Decker later moved his lab to BCM and continued research without license;
  • Sue: Gensetix sued BCM & Decker for infringement, but the patent owner UTexas refused to participate in the case.

The usual rule is that a patent infringement lawsuit cannot proceed unless the patentee — i.e., the patent owner — is a plaintiff.  And, in a normal lawsuit being a plaintiff is voluntary business. However, our rules of civil procedure do also call for “involuntary plaintiffs.”

(2) Joinder by Court Order. [A required party] who refuses to join as a plaintiff may be made either a defendant or, in a proper case, an involuntary plaintiff.

Fed. R. Civ. Pro. R. 19(a)(2).  This happens occasionally in patent cases such as this where the patentee has promised to enforce the patent, but then later refuses.  In that situation, the licensee files the lawsuit as plaintiff and joins the patent owner as an involuntary plaintiff.  The problem here — UTexas is part of the State of Texas and claims sovereign immunity in this case.

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State.

U.S. Const., Amendment XI (1795). Although the 11th Amendment offers only a limited amount of State Sovereign immunity, the Supreme Court has repeatedly written that the structure and nature of Federal system includes additional State immunities.

In its appellate decision in the case, the Federal Circuit answered two questions (1) Does sovereign immunity protect TX from being joined as an involuntary plaintiff; (2) If TX cannot be joined as a party, may the case proceed without the patentee? The court then issued three separate opinions with Judge O’Malley’s approach garnering a majority on each issue:

 Thus, in the end, the court found that TX is immune from being joined, but that the case should proceed with the licensee suing BCM for infringement.

BCM subsequently petitioned for en banc review on the following question:

Can a party who is not a patentee “have remedy by civil action for infringement”?

BCM En Banc Petition.  That petition has now been denied — setting up potential Supreme Court review.

The basic framing of the appeal is that there is some tension between the language of R.19 and the Supreme Court decision in Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).

First, R. 19:  The text of the rule expressly allows a court to continue with a lawsuit even though a “required party” cannot be joined. The basic approach is that the court must apply “equity and good conscious” to determine whether to dismiss the case or to proceed.

19(b) When Joinder Is Not Feasible. If a person who is required to be joined if feasible cannot be joined, the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed.

Id. (listing factors to consider).

On the other hand, in Pimentel, the court appeared to endorse a stark limit on continuing suits such as this where the sovereign is absent but will be potentially injured by an adverse decision:

A case may not proceed when a required entity sovereign is not amenable to suit. [Our prior] cases instruct us that where sovereign immunity is asserted, and the claims of the sovereign are not frivolous, dismissal of the action must be ordered where there is a potential for injury to the interests of the absent sovereign.

Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).

The patent act creates a cause-of-action for patent infringement, and the en banc question presented quotes from from the statute:

A patentee shall have remedy by civil action for infringement of his patent.

35 U.S.C. 281. The petition mentions that on remand it will be able to raise this issue and dismiss the case since Gensetix is not a “patentee.” The FedCir has held that exclusive assignees can be considered a patentee if they have “all substantial rights” to the patent. In this case, Gensetix originally argued that it had all substantial rights, but now admits that it does not. Thus on remand this may become a standing issue.

Patent Eligibility: Advantages over the Prior Art are Not Sufficient without Meaningful Technological Improvements

Tenstreet v. DriverReach (Fed. Cir. 2020) (nonprecedential)

In a terse opinion, Judge Hughes has affirmed the demurrer (12(b)(6) decision by Judge Sweeney (S.D. Ind) holding Tenstreet’s U.S. Patent No. 8,145,575 invalid as directed toward an abstract idea.

The holding: even if the invention provides “advantages over the previous method,” it is not patent eligible without a “technological improvement beyond the use of a generic computer.”  In essence, “do it on a computer” is not enough for patent eligibility.  Judge Hughes writes:

[The patent claims arguably] provide three advantages over conventional processes for employment verification: (1) a single channel for routing transmissions; (2) the ability for job applicants to monitor the verification process; and (3) database storage of employment history.

The test for patent-eligible subject matter is not
whether the claims are advantageous over the previous method. Even if the ’575 patent provides advantages over manual collection of data, the patent claims no technological improvement beyond the use of a generic computer network. Accordingly, the district court correctly determined that the ’575 patent claims are directed to the abstract idea of collecting, organizing, and storing data on a conventional computer network, and that the ’575 patent claims recite no elements that transform them to patent-eligible applications.

Slip Op.

Claim 1. A method for peer-to-peer sharing of job applicant verification data over a network, the network comprising; a computerized exchange being in communication with one or more requesters, providers, and job applicants; the exchange managing one or more interactions of each requester, provider, and job applicant with the exchange; each requester being an entity seeking verification data about one or more job applicants, each provider being an entity in possession of the verification data of one or more job applicants and providing the verification data in response to a request for the verification data, the verification data disclosing a status of the job applicant during a period of time; said method comprising the steps of:

allowing one or more communication channels to interface with the exchange;

assigning an attribute to each requester, provider, and job applicant, the attribute defining the communication channel accessible to each requester, provider, and job applicant in transmitting data to the exchange and receiving data from the exchange;

receiving a verification request from a requester through the communication channel of the requester;

comparing, by the computerized exchange, the verification request with requirements;

routing the verification request to a provider through the communication channel of the provider;

receiving verification data provided by the provider in response to the verification request through the communication channel of the provider; and

routing the received verification data through the communication channel of the requester;

wherein at least one requester is also a provider for a second requester and at least one provider is also a requester for a second provider, the at least one requester providing verification data to the exchange for a period of time in which a respective job applicant was employed by the at least one requester and the second provider providing verification data to the exchange for a period a time in which the same or a different respective job applicant was employed by the second provider.

IP Issues with Judge Barrett

The following comes from the Amy Coney Barrett Senate Confirmation Hearing Day 3 Transcript

Senator Tillis: (54:08)

I was talking with Senator Coons, who is the ranking member on a committee that I chair, a sub-committee here on intellectual property. We’ve done a lot of work and we’re working on a bipartisan bicameral basis. And I have to thank Senator Blumenthal for probably being one of the more active members in this committee. I think it’s an area where we really are working on a bipartisan basis.

Moving to [an] area that’s been addressed on the committee on intellectual property and patent law eligibility. As chairman of the subcommittee, I’m really interested in protecting the intellectual property of the American innovation economy. There’s no question that we’re the leader in the world. But in recent years we’ve seen a lot of Supreme Court cases that have waded into patent eligibility, producing a series of opinions that have really muddled the waters. And in some cases, I agree with the decision but I worry about the methodology that they used to get there. So, I’m curious about your thoughts. In my committee, we’ve talked about specific cases that we could potentially abrogate if we could get bipartisan support and we’re in those discussions. But what are your thoughts on the Supreme Court’s rulings on patent eligibility? And do you think that the court should go back and clarify at least the method that they use to reach their opinion?

Amy Coney Barrett: (57:01)

So, without commenting on any particular cases, which actually I have to be completely honest and confess to, I can’t think of what particular cases you might be thinking of in the patent eligibility. But without commenting on those cases in any event, I think I would say that clarity in decision-making is always something that courts should strive for. And I know on the seventh circuit, we try and I’m trying to be attuned to in writing opinions, whether it gives good guidance to lower courts and then to also those who are trying to order their conduct in compliance with the law. So, I think clarity is certainly a virtue in this context.

Senator Tillis: (57:38)

And I think that we’re working, like I said, on a bipartisan bicameral basis to help or do it on our part. Copyright law and technology is other area that we’ve focused quite a bit on. I think I had one witness say that our current laws are MySpace laws in a TikTok world. There’s a lot of changes that have occurred. And we feel like there’s a need for us to maybe move forward with some clarity and some protections. The Supreme Court has spent more than a century answering questions about whether copyright law covers new technologies like cameras, player pianos, moving pictures, the list goes on, several internet enabled technologies. Do you think that the Supreme Court is the best institution to answer these questions or is that a role Congress should play?

Amy Coney Barrett: (58:29)

Most of the things you’re identifying sound to me like matters of policy. And so, those seem like matters that are best addressed by the legislature, a democratically elected body, not policy made by courts.

Broadest Reasonable Interpretation in Light of the Specification

by Dennis Crouch

Although this case comes from an inter partes review, it is one that could be used by patent prosecutors when discussing claim meaning with examiners.  The basic principle here is that the “broadest reasonable interpretation” of a claim must be considered “in light of the specification.”  Here, the claims did not spell-out a sizing limitation for an artificial heart valve, but the size was apparent from the specification. 

St. Jude Medical, LLC v. Snyders Heart Valve LLC (Fed. Cir. 2020)

Amazon.com: Snyders Honey Mustard Onion Pretzel Pieces 125g: Home & KitchenI feel really bad about this, but whenever I see a Snyders lawsuit, I cant stop thinking back to the late 1990’s when I used to eat Snyder’s mustard flavored pretzels.

This case is not about pretzels, but rather focuses on Snyders artificial heart valve patent US6540782. Eat your heart out?

Snyders sued St. Jude for infringement in D.Minn and St. Jude responded with a pair of inter partes review (IPR) petitions.  The PTAB initiated the IPRs and eventually ruled that some of the claims were anticipated by a prior patent.

  • IPR2018-00105: PTAB sided fully with the patentee on obviousness and anticipation challenges based upon Leonhardt
  • IPR2018-00106: PTAB sided partially with the challenger — finding claims 1, 2, 6, and 8 anticipated by the Bessler patent, but finding the remaining claims patentable.

Both parties appealed, and the Federal Circuit has fully sided with the patentee Snyders.

The focus of the appeal was on construction of the following claim term

… a flexibly resilient frame sized and shaped for insertion in a position between the upstream region and the downstream region…

Basically, the artificial valve includes a bendable frame that will fit in the natural valve position.  It also includes attachment hooks to hold it in place.

An important aspect of Snyders valve is that it can be inserted into place without removing the native damaged valve.  The key prior art (Bessler) also disclosed a valve insert, but it was sized to fit the valve location after removal of the damaged valve. The problem for Snyders is that the claim language does not make this distinction explicit. Rather, the claim only requires that the frame fit in the position between the upstream and downstream regions (i.e., the original valve location). Thus, the PTAB broadly interpreted the claim language to also cover a frame “sized and shaped” to fit in the location after removal of damaged heart material.

On appeal, the Federal Circuit reversed the claim construction — holding that sized to the native-valve-space should be read into the claim, even when applying the broadest reasonable interpretation:

The claim’s reference to “repairing a damaged heart valve,” without any reference to removal, suggests that the native valve remains. So too does the claim’s reference to the damaged heart valve “having a plurality of cusps,” which appears superfluous if claim 1 is interpreted to include embodiments where the damaged valve and its cusps are removed. . . .

The specification states that “the frame is sized and shaped for insertion between the plurality of cusps C of the damaged heart valve in a position between an upstream region and a downstream region.” . . . Moreover, the specification stresses that the artificial heart valve it discloses can be inserted without removing the native valve and that this is an improvement on the prior art.

Slip Op. The specification actually particularly references Bessler as problematic prior art that requires “removal of the native valve, cardiopulmonary bypass and
backflushing of the coronary arterial tree.” Snyders explains that its approach avoids those major procedures.

Finding of anticipation reversed. Now the case will go back to Minnesota to consider infringement and perhaps other invalidity arguments.

 

Certiorari granted in Arthrex

by Dennis Crouch

The Supreme Court has granted Certiorari in Arthrex on the questions of whether Administrative Patent Judges (APJs) were properly appointed under the U.S. Constitution and, if not, what is the proper remedy.

None of the appellants were satisfied with the Federal Circuit’s decision in the case and each petitioned for Supreme Court review. Subsequently, the U.S. Gov’t filed a memorandum walking through what it saw as the three unifying questions presented in the case. The court has granted hearing on only the first two questions.

Questions Presented:

1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.

2. Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

3. Whether the court of appeals in Arthrex erred by adjudicating an Appointments Clause challenge that had not been presented to the agency.

July 22 Memorandum of U.S. Gov’t. I have marked-through the third question because the Court is directing its review only to the first two questions.

The case stems from an inter partes review (IPR) conducted by Administrative Patent Judges (APJs) at the Patent Trial & Appeal Board (PTAB).  Arthrex is the owner of U.S. Patent No. 9,179,907 — a patent claiming an assembly for securing soft tissue (such as a tendon) to a bone without requiring the surgeon to tie any knots.  Smith & Nephew successfully challenged the patent via IPR, with the PTAB APJs concluding that the challenged claims were unpatentable as anticipated.  On appeal, Arthrex challenged the decision on constitutional (appointments clause) grounds; Smith & Nephew defended the decision, and the USPTO (U.S. Gov’t) also intervened to support the decision of its PTAB judges.

At the Federal Circuit, the original decision was authored by Judge Moore and joined by Judge Reyna and Chen. The court subsequently denied en banc rehearing.  The denial include five separate opinions, including an additional opinion by Judge Moore defending her original opinion and a concurring opinion by Judge O’Malley. Judge Dyk wrote in dissent as did Judge Hughes and Judge Wallach.  Four of the Judges did not indicate their vote (Chief Judge Prost and Judges Lourie, Taranto, and Stoll). Based upon the result (en banc denial), at least two of them voted to deny rehearing.

Where is the preemption test?

The newest Supreme Court patent eligibility case was recently filed by Rudy Telscher in Consumer 2.0, Inc., D/B/A Rently v. Tenant Turner, Inc. (Supreme Court 2020).  Rather than directly challenging Alice Corp., Rently argues that the Federal Circuit has done a poor job of implementing the Supreme Court’s guidance.  The Supreme Court decisions on eligibility are focused on avoiding improper preemption. While mouthing the word preemption as a goal, the Federal Circuit has repeatedly ruled that preemption forms no part of its eligibility test.

Questions presented:

In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), this Court laid out the standards for analyzing patent eligibility under 35 U.S.C. § 101, and explained the main concern undergirding the analysis was one of preemption. This Court did not lay out the exact boundaries of the test, but rather had previously instructed the Federal Circuit may expand on the test so long as it was consistent with the statute. The Federal Circuit however routinely skips the preemption analysis, and has imported a quasi-section 103 analysis into Step Two of the test for determining whether the claims recite only “conventional” features or amount to “something more” than a claim on the abstract idea itself.

The questions presented here are:

1) Whether preemption is a threshold and defining consideration that the lower courts must consider in determining whether a claimed invention is directed to patent eligible subject matter under Section 101, and

2) Whether the courts below have erred in conflating the Step Two conventionality analysis of Alice with the factual prior art patentability analysis of Section 103, without the evidentiary opportunities and protections against hindsight bias afforded by Section 103 and in conflict with this Court’s precedent in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)

[Petition]

An interesting aspect of this case is the newness of the patent at issue.  U.S. Patent No. 9,875,590.  During prosecution, the examiner cited to Alice and rejected the claims as ineligible.  The patent applicant then amended the claims to overcome the rejection.  Then, during litigation the district court found the claims ineligible as a question of law and that determination was affirmed on appeal.

Claim at issue:

7. A method for providing automated entry to properties, comprising:

making properties available for viewing to invited visitors;

providing an application interface of an application running on a computing system to a property manager, the property manager being a manager, a listing agent or an owner of the property, the application interface prompting the property manager to enter a visitor name and contact information for a visitor, wherein upon receipt of the visitor name and contact information, the application provides the visitor with an invitation to receive automated entry information including code information that is valid during a specified period of time so that the visitor can enter a property by themselves, the invitation being delivered to the visitor electronically, the invitation being applicable only to the property and the invitation requesting identification from the visitor;

placing a lock box or an automated door lock at or near each property;

upon the application receiving and confirming identification information for the visitor, providing, by the application, automated entry information to the visitor that allows the visitor to enter the property, the automated entry information including code information that is valid during the specified period of time;

upon the visitor providing the code information to the lock box or the automated door lock at the property within the specified period of time, the lock box or automated door lock opening to facilitate automated entry to the property;

tracking visitor activities at the properties; and

making information about the properties available within a user interface.

 

Submissions by third parties in applications

In my patent class, I just had my students act like patent-examiners and write rejections for pending patent claims.  These are all real-cases that recently published and have not yet been examined. My question what should I do with their results:

  1. Have the students submit their prior art to the PTO under 37 CFR § 1.290 and 35 U.S.C. § 122(e)?
  2. Have the students send their prior art to the patent attorney who filed the cases? or
  3. Just sit on it and see whether the Examiner finds the same or better prior art?

Where have all the Inventors Gone?

This 30 second clip comes from a recent Federal Circuit oral arguments in a case captioned In Re Google Technology Holdings LLC (2019-1828).  The voices you hear are Judge Chen asking a question and Kathryn Kayali representing Google.

Until recently, patent applicants have always been the human inventors.  Now the law allows the patent owner to serve as the applicant.  Thus, rather than identifying Bogdan Carbunar as the inventor, the caption as well as the briefing identify Google as the innovative entity.  The following quote is just one from Google’s briefing:

Google explains here that it (not the inventor) recognized the networking congestion problem and that it was the company (rather than the inventor) who developed a solution.

$2 billion judgment

Centripetal Networks, Inc. v. Cisco Systems, Inc. (E.D. Va. 2020)

Here is the punchline of this recent decision:

The Court FINDS the actual damages suffered by Centripetal as a result of infringement total $755,808,545; that the infringement was willful and egregious and shall be enhanced by a factor of 2.5x to equal $1,889,521,362.50. … The Court, additionally, imposes a running royalty of 10% on the apportioned sales of the accused products and their successors for a period of three years followed by a second three year term with a running royalty of 5% on said sales upon the terms described supra. It DENIES any further relief to Centripetal at the termination of the second three year term.

FinalJudgment.

Apart from the $1.8 billion judgment, the  case is interesting because it involved a 22 day bench trial (no jury) via video.  Ironically, Cisco had objected to video conferencing — especially because the court was not using Cisco tech. The patents here relate to secure network communications.

Inducing Infringement by Making a Product Available

GlaxoSmithKline LLC v. Teva Pharmaceuticals (Fed. Cir. 2020)

GSK’s patent at issue here covers a method of treating congestive heart failure with the drug carvedilol (Coreg) along with an ACE inhibitor, a diuretic  and digoxin.  RE40,000. Claim 1 below is representative and shows the limitation added during the reissue process:

1. A method of decreasing mortality caused by congestive heart failure in a patient in need thereof which comprises administering a therapeutically acceptable amount of carvedilol in conjunction with one or more other therapeutic agents, said agents being selected from the group consisting of an angiotensin converting enzyme inhibitor (ACE), a diuretic, and digoxin,

wherein the administering comprises administering to said patient daily maintenance dosages for a maintenance period to decrease a risk of mortality caused by congestive heart failure, and said maintenance period is greater than six months.

RE40,000 (original US Pat 5,760,069). Each of these drugs were already known for treating heart disease, and the narrowing reissue was filed after Teva first challenged the patent.

Teva did a couple of things to avoid infringement. First, Teva waited until 2007 to launch its product — that was when the underlying patent on the drug carvedilol expired.  Second, Teva attempted to avoid directly market its drug for the purposes of treating congestive heart failure.  In particular, its product labelling focused instead on hypertension and Ventricular Dysfunction following MI (two non-patented approved uses of the drug).   However, in 2011 the FDA required Teva to alter its labelling to be identical-in-content to the approved GSK product.  Thus, in 2011 Teva added treatment for heart failure as an indication for treatment.

Once the labeling was changed, GSK then sued for inducing doctors to infringe.

271(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

At trial the jury sided with the patentee — finding the patent valid and willfully infringed and then awarding $234 million in lost profit damages.

Post-trial, the district court flipped the award — finding insufficient evidence that Teva “actually caused” any particular physician to infringe. “Without proof of causation, which is an essential element of GSK’s action, a finding of inducement cannot stand.”  District Ct. Awarding JMOL.  The district court noted lots of publications and promotions informing physicians about how to use the product to treat heart failure — none of which came from Teva.  Practicing doctors don’t read the fine-print on the side of the bottle. In fact, GSK’s MD expert admitted that he did not read the Teva label before prescribing.

On appeal here, the Federal Circuit has reversed — holding that the circumstantial evidence of inducement was sufficient.  In particular, in this situation Doctors relied upon Teva’s statements that its drug was interchangeable with GSK’s — a “complete replacement.”  My Mizzou colleague, Professor Erika Lietzan testified as a FDA-expert for GSK at trial. Her testimony includes the conclusion that (1) the “AB-rating” of the generic indicates that the products are interchangeable; and (2) comparing GSK’s product by-name creates an implication of interchangeability.

The majority opinion here was written by Judge Newman and joined by Judge Moore. Chief Judge Prost wrote in dissent — arguing that the decision here undermines the balance between innovator incentives and the introduction of lower-cost generics.

Teva waited until GSK’s patent covering the carvedilol compound expired to launch its product covering two unpatented indications hypertension and post-MI LVD. So, when GSK’s ’000 reissue patent later issued—reciting a narrow method of treating a third indication, CHF—Teva’s skinny label did not even suggest using its product according to the patented method.

At the FDA’s direction, Teva amended its label years later to include the patented method, but there was still no inducement via the full label. Nothing changed in the market, and doctors’ prescribing decisions were not affected. By that time, GSK could not rely on Teva’s ANDA as an artificial act of infringement. Thus, to prove induced infringement, GSK had to show that Teva actually caused doctors to directly infringe the ’000 patent. It failed to do so.

Dissent.  With regard to Prof. Lietzan’s testimony, the dissent quoted to her same statement regarding AB-rating — noting that “AB rating reports therapeutic equivalence only ‘if the generic drug is used in accordance with the label.'” The AB-rating does not apply to “off-label uses.”

= = = =

The majority also sustained the jury’s damages verdict.  Teva argued that the lost-profit award was improper because there were other generic versions on the market.  If Teva hadn’t been on the market then the sales would have gone to the other generic producer — not back to the higher-priced GSK.  In its decision, the district court identified the other generic versions as “infringing alternatives” (GSK is in a separate lawsuit against them) and thus should not count in the economic picture of lost profits.  On appeal, the Federal Circuit affirmed — holding that “The district court correctly instructed the jury that the availability of carvedilol from other generic producers is not a ‘noninfringing substitute.'”

Thus, in the end, the jury verdict is reinstated and Teva will have to pay the money. Note — the ‘000 patent is also expired and so generics continue to be available.

= = = =

Presumably, Teva could have avoided infringement by sending notices to pharmacies and doctors to avoid proscribing its product for congestive heart failure.

This week at the Supreme Court

by Dennis Crouch

Oral Argument set for October 7, 2020 in Google v. Oracle

  • (1) Whether copyright protection extends to software code and the organizational structure of a programming language; 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.
  • What is the role of the Jury in deciding fair use? (Raised by the Court)
  • What is the role of patents in the protection of a software code? (Raised by Crouch)

Certiorari Denied:

  • Following its first conference, the Supreme Court has denied certiorari in a number of patent cases.  In particular, the court has denied certiorari in all the patent cases ready-for-conference with the notable exception of the Arthrex cases focusing on appointments clause issues are still pending.
  • Still Pending: 
    • Constitutional challenge to Admin Patent Judges: United States v. Arthrex, Inc., No. 19-1434; Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-1452; Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458; Polaris Innovations Limited v. Kingston Technology Company, Inc., No. 19-1459.  These cases remain the most likely for certiorari. 
  • Denied:
    • Retroactive application of IPR to already applied-for patents: Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204.
    • AIA Challenge: Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 19-1451;
    • Divided Infringement and 271(g): Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147.
    • Federal vs State Law for Patent Licensing: Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68.
    • Right to a Jury Trial on Specific Performance of FRAND license: TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269.
    • Patent Eligibility: The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32.
    • Due Process Issues Regarding Sua Sponte Judicial Order: Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351.
    • Appealing IPR Termination:BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381.
    • Power of PTO To Exclude Patent Attorney: Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844.
    • Obviousness – Nexus for Secondary Indicia: SRAM, LLC v. FOX Factory, Inc., No. 20-158.

This Week’s Conference: 

  • Voiding a patent after a damage award: Phazzer Electronics, Inc. v. Taser International, Inc., No. 19-1378
  • Arthrex Appointments Issue: Essity Hygiene and Health AB v. Cascades Canada ULC, et al., No. 20-131; ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228; Customedia Technologies, LLC v. Dish Network Corporation, et al., No. 20-135 (also eligibility question)
  • Trade Secret Inventorship Question and Federal Jurisdiction: Acer America Corporation, et al. v. Intellisoft, Ltd., (Bruce Bierman), No. 20-313.

Response Requested:

  • The “Respondent” has a right to file a response to a petition for writ of certiorari.  However, as a strategy (and money saving device), many repondents waive their right. In cases of interest, the Supreme Court will often request a response.  However, the request for response need only be requested by a single Justice. And, some of the justices have reportedly given authority to their law clerks to file the request.
  • Recent CFR’s
    • Are the Fed. Reserve Banks “People” or “the Government”: Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al., No. 20-333
    • Reasonable Royalty and Apportionment: Cochlear Corporation, et al. v. Alfred E. Mann Foundation for Scientific Research, et al., No. 20-362
    • Notice and Damages: Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al., No. 20-355

 

“Same Claim” and Post-Judgment Infringement

Sowinski v. California Air Resources Board (CARB), Docket No. 19-01558 (Fed. Cir. 2020) (en banc petition)

When I first wrote about this case, I explained my view that the Federal Circuit issued “a really poor decision” in the way that it recklessly expanded-out the scope of claim preclusion without consideration of the impact. The case was decided just after Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 140 S. Ct. 1589 (2020). In that case, the court clamped-down on expansion of issue or claim preclusion beyond their traditional bounds.

The setup is explained in Sowinski’s petition for en banc rehearing:

Petitioner brought an earlier infringement action against the defendant that was dismissed [with prejudice] under the district court’s local rules for failure to prosecute [without addressing] the underlying merits of the infringement allegations.

After that earlier litigation was final, petitioner brought a second suit against the same defendant, asserting the same patent against the same infringing activity—but limited to “damages only for infringement after the decision in Sowinski I.”

Sowinski En Banc Petition.

In this setup, there is no issue preclusion because no issues were actually decided in the first lawsuit — rather the case was dismissed for procedural grounds.  Claim preclusion does apply, but is limited to claims that were brought (or should have been been brought under the same-transaction test) in the first action.

This is where we get into some patent law doctrine regarding post-judgment acts of infringement:

[T]raditional notions of claim preclusion do not apply when a patentee accuses new acts of infringement, i.e., post-final judgment, in a second suit—even where the products are the same in both suits.

Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014).

This is where the Kessler doctrine comes into play (although not actually cited or addressed in the opinion).

Under the panel’s disposition, petitioner’s infringement suit is barred despite presenting new issues and new claims that no court has ever resolved. In past cases, this Court readily acknowledged that this result is squarely at odds with ordinary principles of issue and claim preclusion. But this Court has nevertheless barred such actions entirely, applying its own unique understanding of the so-called Kessler doctrine: under this Court’s decisions, once a defendant obtains any prior judgment of non-infringement, all future litigation over the same product is forever barred, even if it involves issues unadjudicated by any court and claims arising after the initial judgment (i.e., post-judgment acts of infringement)—a fact-pattern that would permit litigation to proceed in every other circuit in all non-patent cases.

Petition. Note here that the Federal Circuit decision does not cite to the Kessler Decision, but instead appears to shift its approach to capturing the post-judgment actions as captured by claim preclusion.  That shift makes sense when considering the Lucky Brand warning against non-uniform preclusion principles.

As the Supreme Court just reiterated, the world of preclusion “comprises two distinct doctrines”—issue preclusion and claim preclusion. There is no third doctrine “unmoored from th[ose] two guideposts.” Lucky Brand (“our case law indicates that any such preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion”).

Id.

R. 11 Sanctions and Serving “the Motion”

The following question is one I taught in Civil Procedure earlier this semester:

May a motion for Rule 11 sanctions be granted when the moving party fails to serve the motion on the nonmoving party prior to filing?

In my class, I taught that R.11(c)(2) prohibits a party from filing a R.11 motion for sanctions without first serving “the motion” on the non-moving party (and waiting 21 days).

  • My students: What if we the moving party provides notice by sending an email to say that they are planning to file a motion and explaining the reasons?
  • Crouch: No, the rule says that you have to serve “the motion;” not just provide notice of your concern.

In Khan v. Hemosphere, Inc., the Federal Circuit disagreed with my analysis of the rule. In particular, the court held that the Khans were sufficiently “on notice of [defendants’] intent to seek sanctions” based upon a series of letters sent to the Khans indicating that a sanctions-motion was coming. Thus, although the Khans were not served with “the motion” they were sufficiently on notice.

Khan Petition for Rehearing: In their petition, the Khans argue that the Federal Circuit’s “conclusion that warning letters of the type at issue here can take the place of the ‘motion’ required by Rule 11(c)(2) breaks sharply with the text of the Rule, and with every other Court of Appeals to consider the issue—including the Seventh Circuit.” Here, the 7th Circuit is important because this case arose in Illinois and the regional circuit’s law should apply to this non-patent related issue.  The 7th Circuit is also important because it is an outliner in allowing “substantial compliance” with the R. 11 rather than sticking to “the motion” rule. The 7th Circuit’s approach appears to have begin with a flippant ruling by Judge Easterbrook in Nisenbaum v. Milwaukee County, 333 F.3d 804, 808 (7th Cir. 2003). In that case the court decided without any analysis that “substantial compliance” with the notice requirement is sufficient.

In its decision, the Federal Circuit cited to Matrix IV, Inc. v. Am. Nat’l Bank & Tr. Co., 649 F.3d 539, 552–53 (7th Cir. 2011), which stated that “a letter informing the opposing party of the intent to seek sanctions and the basis for the imposition of sanctions” was sufficient.  In its petition for rehearing, Khan explains that the Matrix IV statement was dicta and insufficient to overcome other 7th Circuit decisions which require the to-be-sanctioned-party an “opportunity to withdraw or correct the challenged pleading within 21 days without imposition of sanctions.”  Khan argues that the 21-day opportunity was not given here.

Wright & Miller suggest that informal notice as provided here is insufficient:

Note that informal notice—rather than formal service—of a potential violation is insufficient to trigger the beginning of the twenty-one day safe harbor period. The Advisory Committee Note explains that although informal notice does not trigger the safe harbor period, it usually is expected that informal notice will be given before a party prepares and serves a formal motion under Rule 11 for sanctions.

§ 1337.2Procedural Aspects of Rule 11 Motions—The Safe Harbor Provision, 5A Fed. Prac. & Proc. Civ. § 1337.2 (4th ed.).

I hope the Khans win here, otherwise I’ll be forced to change my syllabus.

Structuring Assignments to Avoid Obviousness-Type-Double-Patenting

Immunex and Roche v. Sandoz (Fed. Cir. 2020) [SandozEnBancPetition]

The court just denied Sandoz’s petition for en banc rehearing in this case, but the issue is pretty interesting and is set-up for a Supreme Court petition. The basic question in the case is whether companies are permitted to work-out an ownership scheme that avoids court scrutiny for obviousness-type-double-patenting.

The basic setup here is that folks at Immunex invented a tumor necrosis factor (TNF) blocker known as etanercept and obtained two patents on the protein and methods of use. U.S. Patent Nos. 5,605,690 and 7,915,225.  Roche separately patented its own fusion protein, and Immunex (Amgen) effectively purchased this third patent.  However, rather than receiving a formal assignment, Immunex “insisted on styling the U.S. agreement as a license.”  Although a license, the grant included sole rights to make, use, sell, import products covered; grant sublicenses; and exclude others (including the patent owner) from commercializing the invention. The license also included a right to sue to enforce the patent and control any litigation including authority to determine any settlement as well as the right to control patent prosecution. En banc petition.   This was a complete assignment – except that Roche continued to hold legal title even though Immunex effectively held all rights.

Why license instead of assign?: One reason is obviousness-type-double-patenting. Without common-ownership, the doctrine has no application. The following excerpt comes from the testimony of Stuart Watt, Immunex’s lead negotiator for the agreement:

After taking control of the patents, Immunex amended the claims to focus on its own activity rather than Roche’s prior approach.  The benefit is that these new patents expire in 2028-2029 — ten years after expiry of Immunex’s other patent. Of importance — the drug at issue here (Enbrel) generated $5 billion in US sales in 2019.

In its decision, the Federal Circuit agreed with Sandoz that a strict common-ownership test for OTDP could allow for “unjustified patent term extensions” and “harassments” of defendants from multiple lawsuits.  In particular, the court focused on transfer of right to control prosecution of the patents as a key feature.  In the end, however, the court found that all-substantial-rights had not been granted since Roche retained a “secondary right to sue” infringers “if Immunex fails to rectify any infringement within 180 days after written request by Roche.”  The distinction here of course is not actually meaningful in any way with regard to Immunex’s attempt to extend its exclusive rights over its product.

In its now failed petition for rehearing Sandoz asks the following:

A party that obtains an exclusive license conveying “all substantial rights” to a patent, including the right to control prosecution, is effectively that patent’s owner for purposes of obviousness-type double patenting.

May a party nonetheless avoid becoming an effective owner under the all-substantial-rights test, and thereby evade double-patenting scrutiny, merely by leaving the nominal owner with a theoretical secondary right to sue, which the licensee can prevent from ever ripening by issuing a royalty-free sublicense?

Petition.  The petition was supported by amicus briefs from Samsung Bioepis (who is being sued on the same patent); the Association for Accessible Medicines; and America’s Health Insurance Plans, Inc.

Product-by-Process Within a Method Claim

by Dennis Crouch

Biogen MA, Inc. v. EMD Serono, Inc. & Pfizer Inc. (Fed. Cir. 2020) [BiogenSerono]

After a five-week-trial, the jury returned a verdict that Biogen’s asserted claims were anticipated by two prior art references. In the lawsuit, Biogen had asserted infringement of its US7588755 against Serono and Pfizer based upon their sale of Rebif (IFN-β used for MS treatment).

In a post-judgment order, the District Court rejected this portion of the jury verdict–holding that no reasonable jury could have found anticipation. In addition to JMOL, the district court also conditionally granted a new trial on anticipation under R.59.  The jury had sided with Biogen on other grounds of infringement/validity and so it looked like a win for the patentee. Because the original jury had found the patent invalid, it did not award any damages.  Thus, the district court entered a “partial judgment” and scheduled a new trial on damages.

Appeal before a Damages Trial: 28 U.S.C. § 1292(c)(2), provides appellate jurisdiction once a patent case is “final except for an accounting.”  In Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013)(en banc) the court determined that “accounting” as used in that provision included a jury trial on damages.  Thus, appeal was appropriate at this point.

Product-by-Process Within a Method: On appeal, the Federal Circuit agreed with the jury that prior administration of native IFN-β anticipates the claims here.  The district took issue with the conclusion since the claims expressly require treatment using “recombinant” inf-β produced in a “non-human host” and that had been “transformed by a recombinant DNA molecule.”

Although the claim is a method claim, it requires use of a particular product (IFN-β) produced by a particular process (recombinant transformation in a non-human host). Of note, the claim does not appear to require the manufacturing step, only that administration of a product created in that manner.  On appeal, the Federal Circuit determined that this setup is appropriate for the product-by-process rule: an old product is not patentable even if it is made by a new process. See Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938).

In applying the product-by-process rule to a method claim, the court reasoned as follows:

If the novelty of the recombinant IFN-β composition requires comparing its structure to the structure of native IFN-β, as Amgen requires, it would defy all reason to excuse that analysis for a method of administration claim using that composition. Such a rule could have the absurd result that a recombinant composition could be non-novel, the method of administration could be non-novel, but the method of administration of the composition defined by the process of its manufacture would be novel as a matter of law.

There is no logical reason why the nesting of a productby-process limitation within a method of  treatment claim should change how novelty of that limitation is evaluated. Indeed, we have previously applied product-by-process analysis to a nested limitation. . . . The nesting of the product-by-process limitation within a method of treatment claim does not change the proper construction of the product-by-process limitation itself.

Slip Op. (Citing Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016)).

Biogen also argued that the prior art was inadequate because there was no proof that it was had the same structure.  Although the native molecule had the same polypeptide sequence, there was no evidence that it had folded in the same manner — and thus did not necessarily meet the “therapeutically effective amount” limitation.  On appeal, the court noted that the prior art was the same polypeptide sequence as required by the claim and had also shown therapeutic activity — the claim did not require that it be the identical therapeutic activity or identical folding pattern as the patentee’s product.

After reviewing these issues, the appellate panel found the jury had a reasonable basis for its invalidity decision.

= = =

The new trial issue is a bit trickier.  The rule states that the court my grant a new trial “for any reason for which a new trial has heretofore been granted.” R. 59.  Here, the new trial was apparently justified on “the same legal errors” as the JMOL determination. “None of the additional considerations noted by the district court in support of its conditional grant of a new trial are independently sufficient to support its decision.”  Thus, the new trial is also reversed.

On remand, the defendant wins and the patent claims are invalid.

Supreme Court Patent Law 2020: Long Conference Preview

by Dennis Crouch

While the country is still mourning the loss of Justice Ruth Bader Ginsburg and arguing over her replacement, the Supreme Court itself is set to begin its October 2020 term this week.  One of the first orders-of-business will be the Long Conference set for September 29, 2020. At that first conference of the term, the court is set to consider the pile of certiorari briefing completed over the summer.

There are a few key patent cases in the pile:

  • Constitutional challenge to Admin Patent Judges:
    • United States v. Arthrex, Inc., No. 19-1434;
    • Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-1452;
    • Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 19-1451;
    • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458;
    • Polaris Innovations Limited v. Kingston Technology Company, Inc., No. 19-1459.
    • I believe that it is highly likely that the court will grant certiorari in Arthrex. 
  • Retroactive application of IPR to already applied-for patents: 
    • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204.
  • Divided Infringement and 271(g):
    • Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147.
  • Federal vs State Law for Patent Licensing:
    • Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68.
  • Right to a Jury Trial on Specific Performance of FRAND license:
    • TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269.
  • Patent Eligibility
    • As a whole: The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.
    • Software: Thomas v. Iancu, No. 19-1435.
    • Significantly more: Primbas v. Iancu, No. 19-1464.
    • Flash of Genius: Morsa v. Iancu, No. 20-32.
  • Due Process Issues Regarding Sua Sponte Judicial Order:
    • Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351.
  • Appealing IPR Termination:
    • BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381.
  • Power of PTO To Exclude Patent Attorney:
    • Polidi v. Lee, No. 19-1430;
    • Piccone v. United States Patent and Trademark Office, No. 19-8844.
  • Obviousness – Nexus for Secondary Indicia:
    • SRAM, LLC v. FOX Factory, Inc., No. 20-158.

= = =

The court has not granted certiorari to any patent cases this term. However, Google LLC v. Oracle America, Inc., No. 18-956 is set for oral arguments on October 7, 2020.  The case focuses on copyright protection in functional aspects of software and thus may well impact patent law.  In December, the court will hear Facebook v. Duguid. Facebook is arguing that the statutory prohibition on certain debt-collection telephone calls is a violation of its free speech rights. A third case that I am watching is Van Buren v. US, which is set for oral arguments at the end of November.  In that case, the question asks “Whether a person who is authorized to access information on a computer for certain purposes violates Section 1030(a)(2) of the Computer Fraud and Abuse Act if he accesses the same information for an improper purpose.”  Here, Van Buren was a police officer who was running searches on the internal databases for a “friend.”

Estoppel of Any “Ground”

by Dennis Crouch

Network-1 Techs. v. Hewlett-Packard Co. (Fed. Cir. 2020)

In this case, the E.D. Tex. jury came back with a win for the defendant — finding that HP did not infringe Network-1’s US6218930 and that the patent was invalid.  Post-Verdict, the district court flipped on validity — holding that HP was estopped from raising its obviousness challenge because it had joined an (unsuccessful) IPR against the patent.

The invention here relates to logic for sending a power-supply on the same twisted-pair used for data transmission (Power over Ethernet or PoE). The basic approach is that the ethernet cable will start-off with a low-level current. If a particular access-device signals that it can handle higher power, then the server will raise the power level being sent.  The patent here issued in 2001 (1999) priority and the lawsuit was originally filed in 2011.

Statutory Estoppel: The big issue in the case for the patent world is statutory estoppel. One reason why this lawsuit took so long to complete was that there were two intervening reexaminations and one inter-partes-review.  HP was time-barred from bringing its own IPR, but was able to join one filed by Avaya.  The instituted IPR challenged the patent claims for anticipation and obviousness based upon two prior art references Matsuno and De Nicolo. Although the PTAB granted the IPR, it eventually upheld the validity of the challenged claims.

One result of losing an IPR challenge is estoppel under 35 U.S.C. § 315(e)(2).

(2) Civil actions and other proceedings. The petitioner in an IPR … that results in a final written decision … may not assert … that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

Id.  Following the IPR final written decision, the district court eventually determined that HP was generally estopped from raising an obviousness challenge (this ruling unfortunately came post-verdict after the obviousness challenge had already been raised).

On appeal, the Federal Circuit vacated — finding that the district court too broadly applied estoppel. In reading the statute, the appellate panel concluded that “a party is only estopped from challenging claims in the final written decision based on grounds that it ‘raised or reasonably could have raised’ during the IPR.”  Slip Op. In this case, HP was time-barred from brining new claims and was limited to simply joining the claims brought by Avaya.  “Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.” Id.

What is a “Ground.” The USPTO has a way that it treats a “ground” in inter partes review, but how should the term really be construed?  The estoppel provision applies to “any ground” raised in the IPR, but the statute does not go on to define the meaning of the term “ground.” Here, the court interpreted the term as any invalidity contention against the challenged claims in the IPR based upon the prior art that served as the basis for the IPR.  The court writes:

When the Board reached a final written decision …, HP was statutorily estopped from raising invalidity grounds based on Matsuno and De Nicolo against claims 6 and 9 in a district court action. HP, however, was not estopped from raising other invalidity challenges against those claims because, as a joining party, HP could not have raised with its joinder any additional invalidity challenges.

Slip Op. Remember, the jury found the patent invalid and that verdict was rejected by the court on JMOL (JNOV).  That JMOL decision has been vacated. On remand, the district court will now need to decide whether to (1) give effect to the verdict; or (2) hold a new trial on validity.

The Federal Circuit got this right according to the Statute — and it also serves as a signal to folks who are deciding whether to join a pending IPR that the estoppel consequences will be quite limited.

Claim Construction: On appeal, the Federal Circuit provides the patentee with potential shot at winning by shifting the claim claim construction. In particular, the court found error in construction of the term “main power source.”  In particular, the district court construed the phrase as requiring a “DC power source” and on appeal the Federal Circuit expanded the definition:

We conclude that the correct construction of “main power source” includes both AC and DC power sources. There is no dispute that the ordinary meaning of “power source” includes both AC and DC power sources. And neither the claims nor the specification of the ’930 patent require a departure from this ordinary meaning.

Slip Op.  On remand, we’ll see if a new jury changes its mind based upon this difference.

Claim Broadening: The third question on appeal involved HP’s argument that the patentee had improperly broadened claim 6 during a reexamination in a way prohibited by statute:

No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding

35 U.S.C. § 305. A claim is “enlarg[ed]” if it covers any embodiments not covered by any original claim.

Some facts:

  • Two prior district courts interpreted Claim 6’s “secondary power source” to be physically separate from the claimed “main power source.”
  • In the reexamination, two dependent claims were added to to require that the two power sources be “the same physical device.”

Although claim 6 was not itself amended, the dependent claim strongly suggested that the claim should be interpreted differently. As the lawsuit progressed, Network-1 subsequently disclaimed these newly added claims and the district court gave Claim 6 its narrow interpretation.

On appeal, the Federal Circuit looked at the final result — the scope of Claim 6 has not changed. “Where the scope of claim 6 has not changed, there has not been improper claim broadening, and HP’s argument fails.”

The court went on to explain that the addition of those dependent claims would not have changed the scope of claim 6.

Thus, even were dependent claims 15 and 16 broader than unamended, independent claim 6, the remedy would not be to find claim 6 invalid as broadened, but to invalidate added claims 15 and 16 [for improper broadening].

Slip Op.  This decision sits well here, but will lead to further odd results when applied to ordinary prosecution because it allows for dependent claims that are broader than the independent version.

I just Googled “Improper Venue Texas”

This post serves as a complement to Prof. Gugliuzza’s new remarks on a parallel case of In re Apple. – DC

by Dennis Crouch

In re Google (Fed. Cir. September 18, 2020) (Google III)

Google’s business pervades the lives of most Americans, including most citizens of the E.D. of Texas.  Google has millions of customers in the district; serves terabytes of data to, from, and within the district; and keeps detailed files on the activities of its citizens. Google also has lots of Texas lawyers.  Google is doing everything it can to move this case out of E.D.Texas.  The reality is though that Google doesn’t mind being in Texas, it just doesn’t want Texas style justice — where patent cases are on a direct path to a jury trial.

28 U.S.C. 1400(b) has a specific test for proper venue. An infringement lawsuit can only be filed in a district where either: (more…)

The Federal Circuit, Judge Shopping, and the Western District of Texas

Guest Post by Prof. Paul R. Gugliuzza (Temple U.)

A rare thing happened at the Federal Circuit today. The court heard oral argument on a petition for a writ of mandamus. The petition was filed by the tech behemoth, Apple, in a patent infringement case filed against it in the Western District of Texas. In the petition, Apple seeks an order sending the case to the Northern District of California under 28 U.S.C. § 1404, which permits transfer “[f]or the convenience of parties and witnesses, in the interest of justice.”

Though transfer petitions are relatively common in patent cases, the Federal Circuit almost always decides them on the briefs alone. That the court scheduled oral argument—in a case arising out of the Western District of Texas, no less—has been interpreted as reflecting concern by the Federal Circuit about the judge shopping occurring in the Western District.

As Jonas Anderson and I showed in a recent Patently-O post and discuss in more detail in a draft article, the Western District’s case assignment rules permit plaintiffs to predict, with absolute certainty, which judge will hear their case. And plaintiffs are overwhelmingly choosing Judge Alan Albright, whose procedural rules and substantive decisions they find quite favorable.

That said, the Federal Circuit’s decision to hold oral argument on Apple’s petition could also reflect the fact that, in the midst of the COVID pandemic, it’s a pretty easy thing to do. For the past six months—and for the foreseeable future—the Federal Circuit has been conducting oral argument entirely by telephone. Indeed, that’s how I was able to listen to today’s arguments, live.

Before getting to a summary of that argument, some background about the case. The plaintiff is, like many plaintiffs in the Western District, a prolific non-practicing entity, Uniloc 2017 LLC. In September 2019, Uniloc sued Apple for infringing a patent on a system for controlling software updates.

Like more than 800 other patent cases over the past two years, Uniloc filed its case in the Waco Division of the Western District of Texas and—like 100% of cases filed in the Waco Division—it was assigned to Judge Albright. Apple sought transfer to the Northern District of California, noting that, out of 24 prior cases Uniloc had filed against it in the Eastern and Western Districts of Texas, 21 had been transferred.

But Judge Albright denied Apple’s motion in an order from the bench in May 2020. As covered here on PatentlyO, it took Judge Albright more than a month to issue an order explaining why he was doing so. When that order eventually issued, it noted, among other things, that Apple has stronger connections to the Western District of Texas than to the Eastern District and that the cases previously transferred out of the Western District (by Judge Lee Yeakel) were distinguishable because Apple’s activities in the Western District had grown significantly over the past couple years.

The Federal Circuit argument, it’s worth noting, wasn’t part of the court’s normal calendar of arguments, which typically take place during the first week of the month. Rather, it was the only case heard by a panel consisting of Chief Judge Prost, Judge Moore, and Judge Hughes.

Mel Bostwick, from Orrick, Herrington & Sutcliffe’s Washington, D.C., office, presented argument for Apple. In her view, the district court made two critical errors in denying transfer: First, it relied too heavily on the progress it had already made in the case as well as its already-scheduled trial date (which, under Judge Albright’s extremely speedy default schedule, is less than 18 months after the initial case management conference).

Second, according to Apple, the district court erred in applying the “cost to willing witnesses” factor in the transfer analysis. Though both Apple and Uniloc identified witnesses in California, Judge Albright, according to Apple, inappropriately discounted the relevance of those witnesses because they were willing to travel. But, Apple contended, the relevant question is the cost of their travel, not their willingness to do so.

Apple faced skeptical questioning from Judge Moore, who was, in fact, the only judge to ask a question of Apple until rebuttal. Judge Moore focused initially on the standard of review. To receive the extraordinary writ of mandamus, a party must show a “clear abuse of discretion” by the district judge. The fact that this case has some factual connection to the Western District—namely, Apple has a campus in Austin and a third party makes accused products in the district—seemed to raise doubts in Judge Moore’s mind about whether any error by the district court met that high bar.

Christian Hurt of the Davis Firm in Longview, Texas argued on behalf of Uniloc. He began by emphasizing the concerns about parties and witnesses located in the Western District that were initially raised by Judge Moore. Apple didn’t dispute, Uniloc noted, that it has an 8,000 employee campus in Austin, technical witnesses work there, and a third-party contractor makes accused products in the district.

Almost all the questions for Uniloc came from Chief Judge Prost. She asked about matters including: the exact location of the witnesses, whether it was clearly an abuse of discretion for the district court to rely on its progress and projected schedule in denying transfer, and whether Apple might have an alternative means of seeking relief, such as through a later mandamus petition or by seeking a stay pending related litigation elsewhere.

Toward the end of Uniloc’s argument, Judge Moore chimed in to ask whether, if the court found the district court had made errors in its transfer analysis, it would be appropriate for the Federal Circuit to vacate the decision and remand the case for further proceedings, rather than ordering transfer—a step the very same panel of Federal Circuit judges basically took in a  recent Western District case filed against the file storage company, Dropbox.

During Apple’s rebuttal argument, Judge Moore asked why transfer to California was warranted given the local interest in the case. Apple, Judge Moore observed, is one of the largest employers in the Western District—a far cry from the Eastern District, where Apple doesn’t even have stores anymore, for fear of aiding patent plaintiffs in establishing venue there. Judge Moore was unconvinced (to put it mildly) by Apple’s assertion that the local interest isn’t the interest of Western District of Texas and its residents, but the interest of “the people who created the accused technology,” in Cupertino.

*          *          *

So, what’s my take? The atmospherics are clearly troubling. There’s no doubt that Judge Albright is successfully courting patentees to file in his courtroom both by explicitly advertising to them and by adopting procedural rules and making substantive decisions that clearly favor them. But those larger dynamics, though they were discussed in Apple’s brief, weren’t even mentioned at oral argument. (Bostwick, Apple’s attorney, seemed to want to go there during rebuttal, but ran out of time.)

In this case, the Federal Circuit might struggle to find a legal justification for ordering transfer, particularly given high standard for mandamus. That said, the Federal Circuit rarely hesitated to transfer cases out of the Eastern District during its heyday as the nation’s patent litigation capital. In several cases, the Federal Circuit used the extraordinary writ of mandamus to engage in what seemed like pure error correction. It’s not out the question that the Federal Circuit would do something similar with the Western District, whether in this case or one of the other nearly 600 filed before Judge Albright this year alone.

Moreover, though the court competition and judge shopping that’s going on in the Western District is troubling, interlocutory appeals like the one Apple is pursuing can be costly and disruptive. That will be even more so if the Federal Circuit makes a habit of simply vacating orders denying transfer and remanding for further consideration, as Judge Moore suggested. The end result would be another round of briefing and argument—and possibly even discovery—on an issue entirely tangential to the merits of the case.

Whatever the outcome, this case between Apple and Uniloc shows how difficult it will be for the Federal Circuit, which can only hear the disputes that come before it, to change the systemic incentives that encourage judges to compete for patent cases and for plaintiffs to shop for those judges. As we suggest in our article, legislation or administrative rules mandating random case assignment and more particularly defining plaintiffs’ venue choices may be the only solution.

Paul Gugliuzza is Professor of Law at Temple University Beasley School of Law