All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

Appleton v. Bacon (1862)

Appleton v. Bacon, 67 U.S. 699 (1862)

John North was an employee of American Book and Paper Folding Company, hired to design and improve various paper folding machines.  That company ceased operation in 1857 and Bacon purchased all the patents, including one issued to North.

North kept a machine he had been working on and improved it further in 1858 before filing for patent protection and that patent issued later the same year. And, at that point North assigned rights to Appleton.  One oddity – the patent office actually issued the new patent in Bacon’s name, something that the Supreme Court called “a very grave irregularity” that “has not been explained.”

On appeal, Bacon argued that he owned the invention based upon the prior employment agreement. However, the Supreme Court sided with Appleton, concluding that the keys to the invention came-about after North’s contract had ended.

Parties engaging the services of an inventor, under an agreement that he shall devote his ingenuity to the perfecting of a machine for their benefit, can lay no claim to improvements conceived by him after the expiration of such agreement.

Id. See Catherine L. Fisk, Removing the “Fuel of Interest’ from the “Fire of Genius’: Law and the Employee-Inventor, 1830-1930, 65 U. Chi. L. Rev. 1127, 1198 (1998) (“The question the Court resolved was simply one of fact: who was the inventor working for at the time he developed the patented invention?”).

Intelligent digital assistant in a multi-tasking environment

I held a contest and Apple wins–for having the patent with the largest number of cited prior art references (patents issued 2005-2021).  Apple’s U.S. Patent No. 11,037,565 is directed to a version of Siri that works across devices – an “Intelligent digital assistant in a multi-tasking environment.”   The total, 9,441 cited references — 3 of which were cited by the examiner. Apple.Patent.

Here is claim 1:

1. A non-transitory computer-readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by one or more processors of a first electronic device, cause the first electronic device to:

provide a media output;

while providing the media output: receive a speech input requesting to continue providing the media output at a second electronic device different from the first electronic device;

determine, based on the speech input, whether to continue providing the media output at the second electronic device; and

in accordance with a determination to continue providing the media output at the second electronic device: cause the second electronic device to continue providing the media output by resuming the media output based on where the media output was previously stopped at the first electronic device.

The application claims priority back to a 2016 provisional application and has three additional family member patent already issued.

Congress Moving Forward with Open App Marketplace Legislation

Senate Judiciary Committee is considering two bipartisan legislative proposals focusing on the operation of “app stores” and requiring that large app stores allow for a competitive marketplace without the tight controls that we see today:

There are over 100 proposed amendments from the various committee members on a variety of issues with big questions.  Lots of lobbying is going on behind the scenes and so it is way too early to tell what these bills will end up looking like.

Watch Party Moves to N.D.Cal.

In re Netflix (Fed. Cir. 2022)

This was an easy mandamus transfer.  The plaintiffs, CA Inc. and Avago Technologies Int’l,  are both subsidiaries of Broadcom Corp. The plaintiffs are both headquartered in San Jose and Broadcom is down in Southern California.  Netflix is also Silicon Valley. Still, the plaintiffs sued Netflix for patent infringement in the Eastern District of Texas.  Although Netflix itself does not have a place of business in EDTex, the district court found that its intimate relationship with ISPs to provide local content delivery was sufficient.  The vast majority of Netflix content is delivered directly from local residential Internet Service Providers (ISPs).

The district court also refused to transfer for inconvenient forum. Although N.D. California was certainly the locus-of-relevant-events, the court noted court congestion and access to evidence weighed against transfer.  Although the source code is located in N.D. California, the court saw no evidence showing that it would be difficult to get that data to Texas. Netflix does have more internet traffic than any other company, right!

On mandamus, the Federal Circuit only addressed the inconvenient forum question — ordering the case transferred.   The appellate panel particularly focused on the district court’s apparent bias against transferring venue.  In particular, the district court discounted Netflix arguments of evidence availability because Netflix did not “articulate the precise way that the evidence supports its claim or defense.”  At the same time, the court did not place the same precision requirement on CA regarding its evidence.  This bias was improper:

[W]e see no basis for reasonably demanding more from Netflix than it provided at this stage of the litigation, when a transfer motion must be filed and ruled on. . . . Nor have we been shown any reasons here to doubt that the documents and sources would be relevant and material to the issues here.



19th Century Patent Law: Initial Disclosures for the Defense

by Dennis Crouch

Even if you are not a litigator, you may still remember learning about the R.26(a)(1) initial disclosures required at the start of a lawsuit.  Some areas of law have particular additional disclosure requirements.  One example — old patent law.  The Patent Act of 1836 included a unique disclosure requirement for defendants raising a defense that patent was invalid because the invention was already publicly known or used.  The statutory provision:

Whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, he shall state in his notice of special matter the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used.

Patent Act of 1836, Section 15.  Thus, the defendant is required to automatically identify the names and residence of the people with prior knowledge as well as the location where the item was used.

In Wise v. Allis, 76 U.S. 737 (1869), the Supreme Court was asked to opine on the  level of specificity required by the statute.  The case involved an improvement in balancing millstones for grinding grain.  The defendant had provided notice that the invention had been previously used in “Utica, Rochester, Buffalo, Albany, New York City, and Brooklyn, in the State of New York.”  At the time, New York City had about 1,000 different mills where the millstone might have been used, and so that part of the notice did not really provide much information.  The plaintiff complained that the notice was thus insufficient and that the defense should be barred.

In its decision, the Supreme Court sided with the defendant and found the disclosures sufficient. In particular, the Court suggested that the provision should be read as a whole, and noted that the defendant had provided the name and address of individual people in each of the cities who had knowledge of the prior use.  That individualized disclosure was sufficient to satisfy the purpose of the rule — that is, to allow the patentee ability to respond and/or cross examine the witness.  The Court explained:

The object of the rule is undoubtedly to enable the other party to make such answer … either by way of pleading or of evidence, or such cross-examination of the witness of the party setting up the plea or notice as the facts of his case may enable him to do. In other words, to apprise him fairly of what he may expect to meet under the plea or notice. . . . If [the defendant] fairly puts his adversary in the way that he may ascertain all that is necessary to his defence or answer.

Wise v. Allis, 76 U.S. 737 (1869). Today, Rule 26(a)(1)(A)(i) operates in parallel to this old patent rule, but for all civil actions.  It requires automatic disclosure of the name and address and phone number “of each individual likely to have discoverable information … that the disclosing party may use to support its claims or defenses,  unless the use would be solely for impeachment.”

Exporting Patents: Boiled, Broiled, Barbecued or Fried

by Dennis Crouch

Back in 1969, long before Bubba Gump, Louisiana Judge Alvin Rubin explained the virtues of shrimp: “Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight.”  Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037 (E.D. La. 1969).  The Deepsouth case was about patented equipment for deveining shrimp in order to render them “more pleasing to the fastidious as well as more palatable.” Id.  Deepsouth litigated its case to the Supreme Court, and the Court eventually allowed the company to escape some portion of its adjudged liability based upon the territorial limits of U.S. patent law.

We know that U.S. patents are territorially limited.   Although Deepsouth was barred from using Laitram’s patented inventions throughout the United States, Deepsouth began selling its deveining machine to folks outside of the US in a partially constructed form.  The company explained the setup to one of its customers in Brazil:

We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil.

The Fifth Circuit had sided with the patentee — holding that “Such a dependence on technicality would require us to countenance obvious schemes, perhaps as simple as omitting an important screw, designed to evade the mandate of § 271(a).”  However on certiorari, the Supreme Court felt itself bound by the statute and precedent. The court particularly rejected the notion that “substantial manufacture” can constitute direct infringement ”

[W]e have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts.

Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 528 (1972).  The decision was 5-4, with Justice Blackman writing in dissent and arguing that “The Court has opened the way to deny the holder of the United States combination patent the benefits of his invention with respect to sales to foreign purchasers.”  Bills eliminating this loophole were quickly introduced into Congress, and eventually became law in 1984, creating 35 U.S.C. § 271(f).  Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 98 Stat. 3383.  The new law creates two avenues for liability:

  1. Supplying a “substantial portion” of the uncombined components of the  patented invention from the US in a way that induces combination abroad. 271(f)(1).
  2. Knowingly supplying a part from the US that is especially designed as a component of a patented invention and not a staple article or commodity with substantial non-infringing use. 271(f)(2).

Deepsouth has important implications beyond the component-export arena.  The case is an important example of the Supreme Court refusing to fill a gap in statutory language. However, the court majority was also clear that the refusal to gap-fill was one-sided — the majority did not want to expand patent rights without Congressional input:

[W]e should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought. No such signal legitimizes respondent’s position in this litigation.”

Deepsouth at 531.  The dissent suggested that the precedent was not so clear and so the demand to overrule or modify was fairly slight.

The anti-patent-right-expansion policy of Deepsouth was repeated in Parker v. Flook, 437 U.S. 584, 596 (1978) (“we must proceed cautiously when we are asked to extend patent rights into areas wholly unforeseen by Congress”) and again in Justice Brennan’s dissent in Diamond v. Chakrabarty, 447 U.S. 303, 319 (1980) where he wrote:

[W]e must be careful to extend patent protection no further than Congress has provided. In particular, were there an absence of legislative direction, the courts should leave to Congress the decisions whether and how far to extend the patent privilege into areas where the common understanding has been that patents are not available.

Chakrabarty.  See also, Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 195 (1995) (“A statutory restraint on this basic freedom [of Farmers to have right to collect and replant seeds] should be expressed clearly and unambiguously.” Stevens, J. in dissent).

Deepsouth was decided before the PCT became available and well before TRIPs and  the global expansion of patent rights. We might question whether there is still a need for the US to extend rights to overlap those available abroad, especially as it tends to injury U.S. manufacturing capability.




Snow Brakes

We have snow on the ground here in Missouri. That makes me think of Gary Reinert’s new patent entitled “method and apparatus for rapid stopping of a motor vehicle particularly on snow or ice.” U.S. Pat. No. 11,091,154.  The image below from the patent tells the story.  Conventional brakes are awful. Antilock Brakes are much better, but the Reinert Snow Brakes take the cake.  Rather than just stopping the wheels, the Reinert Snow Brakes actually shift the car into reverse and spin the tires backward to slow-down the car.  I feel like I saw this in Cannonball Run II, but I’m probably misremembering.

Here is claim 1:

A method for emergency stopping of a motor vehicle comprising the steps of:

activating the emergency stopping of the motor vehicle;

stopping the forward rotation of each wheel immediately following the activation of the emergency stopping of the motor vehicle;

activating a transmission of the vehicle, which shifts an engine of the motor vehicle between driving the wheels in the forward rotation direction, a neutral park position and a reverse rotation direction, immediately after the forward rotation motion of each wheel has ceased such that each wheel maybe driven in the reverse rotation direction;

rotating each driven wheel in the reverse rotation direction until the vehicle is stopped;

activating the transmission of the vehicle once the vehicle is stopped to place the transmission into the original forward rotation position or into the park position,

wherein the step of activating the transmission includes using an on board electronic control unit whereby the method for emergency stopping of a motor vehicle is controlled by an on board electronic control unit, and

wherein the step of activating the transmission includes using sensors on each ground engaging wheel.

The examiner found several on-point references, including US5492512A – Brake system with wheel-reversing means for an automobile (Wu). Reinert distinguished those references by requiring a particular shifting through “neutral park position” before heading to reverse, and also requiring sensors on the wheels that are used to activate the emergency stop.

Admitted Prior art in 1886

Field v. De Comeau, 116 U.S. 187 (1886)

Field’s patent uses a spring to make it easier to slip on tight-fitting gloves.  The case reached the Supreme Court in 1886, but the court sided with the accused infringer.  The case involved admitted-prior-art.  In particular, the patent specification admitted “that springs had been combined before with the wrists of gloves” in the past. That admission assured the court that the patent cannot cover “the combination of springs in every form with the wrists of gloves to close them.”  The accused infringer was also using a spring-glove combination, but a different form than that claimed. As such, no infringement.

In this case, the court primarily used the admitted-prior-art to limit the scope of the patent in the infringement context, after recognizing that a broader interpretation would render the patent invalid.  That approach is common of the era.  Today, courts rarely rely upon the prior art when interpreting claim scope.  Still, admitted prior art would seemingly be quite relevant as part of the intrinsic analysis of claim scope.



Supreme Court Patent Decisions

by Dennis Crouch

The chart below shows the number of Supreme Court patent decisions broken-up by decade. The ramp-up in the late 1800s is tied to the “second industrial revolution” in the US.  The drop in cases after 1890 is largely procedural. Congress created the regional circuit courts of appeals as a buffer between the trial courts & Supreme  Court.  Subsequently, the Court limited the number of patent cases it heard via the certiorari process.  Read more about this transition in my Kessler Cat paper (with Homayoon Rafatijo).

We are 2 years into the 2020s and have 5 decisions thus far (counting Google v. Oracle, which discusses substantive patent issues).  If that trend continues, then the  final figures for the 2020s would be similar to that of the 2010s.  Of course, thus far in the 2021-22 term, the Supreme Court has not yet granted certiorari in any patent cases.

To get this data, I used Westlaw’s case search and limited the results to Supreme Court decisions identified as “patent” decisions by Westlaw and that have a patent law related WL KeyCite headnote.  Reasonable minds will differ on what counts as a “patent case.”

Overruling the First Patent Case

The Patent Act permits a patent to be divided up regionally within the United States.

The applicant, patentee, or his assigns [may] grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

35 U.S.C. 261.  The allowance for geographic division was added as part of the Patent Act of 1836 and overruled the very first Supreme Court patent law decision, Tyler v. Tuel, 10 U.S. 324 (1810).  In Tyler, the Supreme Court found that a patent assignment excepting a few specific counties was not a “true assignment” and therefore the purported assignees had no right to sue on the case.  The court suggested that exceptions might be found in equity.

If you are curious, the assignment excluded the counties of “Chittenden, Addison, Rutland and Windham, in the state of Vermont.”


Texas Two-Step Cannot Avoid Licensee Liability

by Dennis Crouch

Plastronics Socket Partners v. Hwang (Fed. Cir. 2022) (non-precedential).

There is a lot going in this decision, but the crux of the appeal is a license interpretation question.  Here are the rough facts:

  • Hwang licensed its patent rights to Plastronics Socket.
  • Plastronics Socket split into two companies: Plastronics Socket and Plastronics H-Pin under Texas “divisive merger” statute.   (It is odd, but under Texas law, a division in this way is legally defined as a merger).
  • As part of that split, Plastronics H-Pin took on sole responsibility for the license. Plastronics H-Pin made the licensed products (h-pins) and sold them its sole customer Plastronics Socket at a very low rate — thus greatly reducing the royalties owed.
  • Plastronics Socket resold the product, but argued that it was no longer bound by the contract because the contract liabilities had been shifted to Plastronics H-Pin.

In the appeal, the Federal Circuit confirmed that the “divisive merger” cannot be used to escape from contract obligations.  Thus, Plastronics Socket still owes the 3% that it agreed to pay for its own sales.

= = =

Statute of Limitations: Plastronics also had a counterclaim. In particular, Hwang had a right to further license the patent, but only with approval from Plastronics. Hwang admitted that he had licensed the patent, but that the license occurred 9 years before the lawsuit began and thus was outside of the 4-year statute of limitations under Texas law.  The Texas allowed the claim — since it was an ongoing license.  On appeal, however, the Federal Circuit reversed — holding that the “breach of contract … arose from a single, unauthorized license grant … almost ten years before Plaintiffs filed suit.”  As such, the case was beyond the statute of limitations.  The court distinguished other situations regarding periodic payments of royalties, where each missed payment is seen as another breach and thus can restart the statute of limitations. See Hooks v. Samson Lone Star, LP, 457 S.W.3d 52, 68 (Tex. 2015).

= = = =

These little H-pins are tiny, but have been important to the semiconductor industry:

= = = =

Top 10 Patent Cases: 1891 to 1951

by Dennis Crouch

Prior to 1891, appeals in patent cases went directly to the Supreme Court, and the Court decided lots of patent cases.  In 1891, Congress created the regional circuit courts of appeals as a buffer between the trial courts and the Supreme Court and the number of high-court patent cases began to fall.  The court decided a number of big  patent cases during the period of 1891-1952, although many of them have been rejected or are no longer followed.  Many are also primarily anti-trust cases involving the use (or misuse) of patent rights.

The following are the most cited Supreme Court patent cases during this period:

  1. U.S. v. U.S. Gypsum Co., 333 U.S. 364 (1948).  U.S. Gypsum is an antitrust minimum-price-fixing case. The U.S. Gov’t wanted to show that the patent covering the products was invalid, and therefore that the price fixing was improper. The district court prohibited the Gov’t argument, but the Supreme Court reversed.  The case is primarily cited for its explanation of the “clearly erroneous” standard for reviewing factual findings by a judge. A finding can be clearly erroneous even if based on some evidence if the reviewing court “is left with definite and firm conviction that mistake has been committed.”
  2. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950).  Graver Tank is generally cited for its statement of the function-way-result test for the doctrine of equivalents. “A patentee may invoke [DOE] against … a device if it performs substantially the same function in substantially the same way to obtain same result as patentee’s device.”
  3. Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806 (1945).  Precision describes inequitable conduct as form of unclean hands — holding that the patentee had committed fraud and thus lost access to the court of equity — “closing doors of equity court to one tainted with inequitableness or bad faith relative to matter in which he seeks relief.”
  4. Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944). Hazel-Atlas is another fraud case. The lower court found that the defendant had not done enough to fully uncover the fraud. However, the Supreme Court found that patents are special because they implicate a great public interest. “The public welfare demands that the agencies of public justice be not so impotent that they must always be mute and helpless victims of deception and fraud.”
  5. Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). The A&P case is a precursor to KSR v. Teleflex (2007). The Supreme Court explained that a collection of known elements cannot be patented unless “the whole in some way exceeds the sum of its parts” — something that is usually not the case in mechanics.
  6. The Fair v. Kohler Die & Specialty Co., 228 U.S. 22 (1913).  This short decision by Justice Holmes was cited hundreds of times for the principle that a patent infringement lawsuit has proper jurisdiction in Federal Court despite a lack of diversity between the parties, and that the party making the claim decides what law is being asserted.
  7. American Well Works Co. v. Layne & Bowler Co., 241 U.S. 257 (1916). The defendant had been telling people that plaintiff was an infringer; plaintiff sued for defamation.  The Supreme Court confirmed that the patent laws did not create Federal Jurisdiction for the case.
  8. Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933). In this case, the court explained that the inequitable conduct (unclean hands) only applies when the unconscionable act has “immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.”  In the case, the court found that bad acts with regard to two patents in-suit did not tarnish three other asserted patents (despite being from the same “family”).
  9. Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275 (1892). This famous case is most cited for the Supreme Court’s rejection of oral evidence as sufficient to invalidate an issued patent.  Rather, proof must be “clear, satisfactory, and beyond a reasonable doubt.”
  10. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). In Eibel, the court found that a continuous-sheet paper machine invention did not rise to the level of a “pioneer patent, creating a new art.”  However, the court determined that the improvement was of such merit that it was still “entitled to liberal treatment.”  The court also held that the invention’s “immediate and successful use” across the industry was “convincing proof” that the specification was sufficiently detailed and precise.

Note here, I ranked these according to the number of citations by courts.  We would get a different sorting if ranked by law review citations — a case such as Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), would rise up toward the top of the list and the Barbed Wire case would fall off.


Copyright of Software API

This week, the Federal Circuit is hearing oral arguments in an important software copyright case, SAS Institute, Inc. v. World Programming Ltd., Docket No. 21-1542The SAS is an important follow-on to the Supreme Court’s 2021 decision in Google v. Oracle, 141 S. Ct. 1183 (2021).  In Google, the Supreme Court sided with the accused infringer on fair use grounds, but did not decide the broader issue of whether Oracle’s API naming convention was copyrightable.

WPL created a clone version of SAS that allows users to use SAS-style inputs and receive SAS-style outputs.  SAS argues that those input and output formats are protected by copyright. However, the district court (E.D.Tex. Judge Gilstrap) sided with the accused infringer — holding that WPL presented unrebutted evidence that these elements were not protectable by copyright. On appeal, SAS raises four arguments:

  1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
  2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
  3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
  4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

Lots of amicus briefs on both sides:

Supporting SAS: Mathworks & Oracle; Ralph Oman, former Register of Copyrights; Pro-Copyright professors; Copyright Alliance; Computer scientists group; and Creator’s Rights Groups.

Supporting WPL: CCIA; Intellectual Property Law Scholars; another set of Computer Scientists; Github; and EFF.

Arguments set for this Thursday (Jan 13).


Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

Back in 2010, I wrote an article with Prof Rob Merges titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.  We suggested that patent examiners often lack capacity to judge metaphysical questions centered around abstractness and laws of nature. In addition, we noted that many eligibility questions substantially overlap with bread-and-butter patent doctrines such as obviousness, enablement, and indefiniteness.  What that means is that delaying eligibility decisions can often result in entirely avoiding eligibility decisions.  In a 2019 article, Professor Chien provided more detailed guidance on how this could be accomplished.

The US Patent Office obviously did not follow our suggestions back in 2010, but did quickly recognize that Supreme Court’s eligibility jurisprudence was not really administrable by patent examiners.  The Office solution was to create its own narrowly tailored eligibility guidelines examiners can actually follow in a predictable way.  It turns out that patent applicants tend to like the PTO solution because the guidelines strategically err on the side of eligibility.  In many ways, the guidelines obviated the need for our ordering approach because the PTO created an administrable mechanism that does not push the boundaries or epistemology of abstractness.

Still, the patent office is going to try something of a deferred approach – and has recently published its Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. To be clear, the examiner will still consider eligibility in the initial office action, but participants in the program permits the applicant to defer responding to the eligibility rejections in the initial office action response.

In a 2021 letter, to the PTO, Senators Tillis and Cotton has suggested a sequencing approach that followed the Crouch+Merges proposal with examiners delaying rejections until later.  The PTO Pilot is obviously different in that examiners are still making the rejections on record, and the Federal Register notice does not explain why the PTO did not follow the Tillis+Cotton or Crouch+Merges proposal.

The program is a test run and requests for participating is only via invitation.

2021 Patent Grants

Total utility patent grants are down about 7% for calendar year 2021. Still the total ranks as the third highest of all time.  The Office has almost eliminated unwanted delay in examination.  Right now the delay is about 17 months from filing to first office-action. They really don’t want that to go below 14 months in order to capture 102(a)(2) prior art (former 102(e)).

Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success

by Dennis Crouch

Apotex Inc. v. Cephalon, Inc. (Supreme Court 2022)

In its petition for writ of certiorari, Apotex asks the Supreme Court to revisit motivation to combineobvious to try and whether the non-obvious contribution needs to be an improvement over the prior art.   The petition argues that KSR v. Teleflex (2007) requires a flexible analysis, but that “over the ensuing decade-and-a-half, the Federal Circuit has … reverted to its old rigid ways.”  The petition also complains that the Federal Circuit has again masked its jurisprudence via Summary Affirmance without opinion.

The accused infringers here were seeking to market a drug treatment for chronic lymphocytic leukemia covered by several Cephalon patents and sold as Bendeka.  The defendants challenged the patent claims as obvious, but the district court sided with the patentee — finding a lack of motivation to combine the references with a reasonable expectation of success.  This test has become the sina non quo of post-KSR Federal Circuit obviousness decisions.  See, for example, Accorda Therap. v. Roxane Labs., 903 F.3d 1310 1328 (Fed. Cir. 2018) (“motivation to modify or combine with a reasonable expectation of success”);  In re Stepan, 868 F.3d 1342, 1345-46 (Fed. Cir. 2017) (“requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so.”), etc. Apotex’s petition explains this as follows:

[T]he Federal Circuit seems to believe that if there is any uncertainty about whether an obvious-to-try approach will succeed, that potentially compromises the motivation to try an obvious solution to a pressing problem, and therefore produces patent monopolies for what is obvious to try. Indeed, so ingrained has the motive-to-try-what-is-likely-to-succeed test now become in the Federal Circuit’s obviousness psyche, that the Federal Circuit now sometimes includes motivation as a fifth Graham factor.

I also write about this same issue in the Federal Circuit’s recent decision in Teva v. Corcept (Fed. Cir. 2021). Cephalon’s response is due in about 2 weeks.

Federal Circuit Draws a Hard Line Against “Obvious to Try” Analysis


Timing of CVSG Briefs: American Axle Coming Soon

by Dennis Crouch

Although patents are a form of private property, they are also expressly a tool of public policy.  When a private patent lawsuit of interest reaches the Supreme Court,  the Court regularly turns to the President’s administration for its views on how a decision may impact patent law and innovation writ large. That request for an amicus brief from the government is termed a CVSG – Call for the Views of the Solicitor General.   One problem with CVSGs is that they typically add several months to the certiorari process because the DOJ spends substantial time collecting input from various government branches and outside interests before drafting and filing its brief.  In patent cases, a Gov’t amicus brief is often the most important at the certiorari stage — or at least the most predictive of the outcome.

We are currently waiting CVSG amicus briefs in two patent cases pending before the Supreme Court:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (patent eligibility); and
  • PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (res judicata)

Of these, the Personal Web request is fairly recent, but American Axle has been spinning since May 3, 2021 – just over 8 months.

To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief.  The median timing was 5 months, and all the briefs were submitted in less than 9 months.  What this means is that the DOJ still has a few more weeks to complete its task and still be within these historic guideposts.

I truly do not know what the DOJ is going to say in its American Axle brief.  Back in 2019, the Solicitor General filed a powerful brief in Hikma v. Vanda arguing that Mayo and Alice led to substantial confusion, especially when attempting to reconcile prior cases such as Diehr.  But, the Gov’t brief in Hikma was filed by President Trump’s SG (Noel Francisco) and the big question is whether President Biden’s Solicitor Elizabeth Prelogar (and the Biden Admin generally) will follow the same course.  Although the top-signatories have changed, the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.  In addition, Malcolm Stewart remains the Deputy SG at the Department of Justice (as do others).

Resorbing Patent Law’s Kessler Cat – Request for Comments

I have a new draft article on the Kessler Doctrine co-authored with my former student Homayoon Rafatijo and welcome comments and suggestions before it is formally published later this month.

Kessler is a 1907 Supreme Court decision that we argue should be seen as simply implementing defensive issue preclusion. At the time, the case involved some additional novelties having to do with confusion over both the new appellate federal court structure and the scope of potential anti-suit injunctions. Meanwhile, the scope of issue and claim preclusion have expanded with the merger of law & equity, creation of the Federal Rules Rules of Civil Procedure, as well as the expansion of Declaratory Judgment jurisdiction.

As issue and claim preclusion expanded, Kessler fell from fashion and was basically unneeded and unused for several decades. But, since 2014, the Federal Circuit has steadily expanded Kessler as a patent law specific form of preclusion that is separate and distinct from the traditions of claim and issue preclusion.  We argue argue this approach is wrong.

The cat: We parallel our article alongside a short parable from Paulo Coelho titled the “Importance of the Cat in Meditation.”  The basic punchline is that once people started thinking the cat was an important element of mediation, it was easier for them to scientifically explain the importance rather than let go of the meaningless attachment.  We argue that the Kessler Doctrine is following the same pathway, the Federal Circuit’s explanations do not make sense, and that it is time to resorb the doctrine into the general law of preclusion.

Thanks! Dennis Crouch

Supreme Court and Judicial Conference Considering Judge Albright’s Problematic Patent Court

The following comes from Chief Justice John Roberts’ end-of-year Report on the Federal Judiciary for 2021.

The third agenda topic I would like to highlight is an arcane but important matter of judicial administration: judicial assignment and venue for patent cases in federal trial court. Senators from both sides of the aisle have expressed concern that case assignment procedures allowing the party filing a case to select a division of a district court might, in effect, enable the plaintiff to select a particular judge to hear a case. Two important and sometimes competing values are at issue. First, the Judicial Conference has long supported the random assignment of cases and fostered the role of district judges as generalists capable of handling the full range of legal issues. But the Conference is also mindful that Congress has intentionally shaped the lower courts into districts and divisions codified by law so that litigants are served by federal judges tied to their communities. Reconciling these values is important to public confidence in the courts, and I have asked the Director of the Administrative Office, who serves as Secretary of the Judicial Conference, to put the issue before the Conference. The Committee on Court Administration and Case Management is reviewing this matter and will report back to the full Conference. This issue of judicial administration provides another good example of a matter that self-governing bodies of judges from the front lines are in the best position to study and solve—and to work in partnership with Congress in the event change in the law is necessary.