All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

Licensing by Acquisition: The High-Stakes Dispute Over Whether Intel is Licensed to VLSI’s Patents

The Federal Circuit has issued an interesting nonprecedential order in In re VLSI Technology LLC, denying VLSI’s petition for a writ of mandamus that sought to reverse a district court order allowing Intel to amend its answer to assert a declaratory judgment counterclaim regarding a patent license defense.

The Federal Circuit’s brief order sheds some light on the standards for amending pleadings late in litigation and the propriety of declaratory judgment counterclaims in patent cases even where the underlying infringement claims have been extinguished.

Background: A separate VLSI v. Intel case was before the Federal Circuit in December 2023.  In that case, the court overturned VLSI’s $2 billion patent infringement verdict – and remanded for a new trial on damages.  VLSI Tech. LLC v. Intel Corp., 87 F.4th 1332 (Fed. Cir. 2023).  This appeal involves a separate set of infringement claims based upon a separate family of patents also owned by VLSI (and originating from NXP Semiconductor).

Fortress Investment Group (“Fortress”) created VLSI back in 2016 and subsequently and acquired a number of patents from the Dutch-based NXP Semiconductors. In 2017 VLSI Technology LLC sued Intel Corporation for patent infringement in the Northern District of California, asserting four patents: U.S. Patent Nos. 8,566,836; 8,004,922; 7,675,806; and 8,268,672. Although VLSI’s patent case has vanished, Intel is seeking a declaratory judgment ruling that it has a broad license to all VLSI patents. (more…)

Inventorship Correction Affirmed for Patent on Intermodal Container for Transporting Gaseous Fluids

by Dennis Crouch

In a recent nonprecedential decision, the Federal Circuit affirmed a district court ruling ordering the correction of inventorship for U.S. Patent No. 9,376,049. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The patent at issue, originally naming a single inventor (Steve Campbell), claims a lightweight intermodal container system for transporting refrigerated gaseous fluids.

This post examines the reasoning behind the Federal Circuit’s affirmance as well as the potential applicability of the equitable defense of laches in cases brought under 35 U.S.C. § 256 to correct inventorship on an issued patent.

(more…)

The Judicial Conference and Its Random Assignment “Policy”

Guest post by Professors Jonas Anderson[1] and Paul Gugliuzza[2]

On Tuesday, March 12, 2024, the Judicial Conference of the United States—the self-governing body of the federal judiciary—held a press conference and issued a press release touting the Conference’s “strengthen[ing of] the policy governing random case assignment, limiting the ability of litigants to effectively choose judges in certain cases by where they file a lawsuit.”

As we’ve explained in a series of articles, in many federal courts throughout the country, all or practically all cases are assigned to a single judge, giving litigants the ability to “judge shop”—that is, to choose their own judge.  Many divisional court houses are associated with a single federal judge, and cases filed in that courthouse are assigned to that predetermined judge.

Judge shopping has been a particularly long-standing problem in patent cases and corporate bankruptcy cases. More recently, Republican state attorneys general have filed numerous challenges to federal government actions on matters such as abortion, gun control, and immigration in single-judge divisions in Texas.

After a few days of confusion about the scope and content of the Judicial Conference’s new policy on case assignment, the Conference subsequently released a three-page document titled Guidance for Civil Case Assignment in District Courts.

The Judicial Conference’s interest in stopping judge shopping is commendable—it’s hard to think of any principled reason why a party should be able to pick the individual judge who hears their case. But we see at least three major flaws in the Judicial Conference’s action. (more…)

When is a Government Official’s Social Media a State Action?

by Dennis Crouch

Lindke v. Freed, 601 U.S. ___ (2024) 22-611_ap6c.

This recent decision from the Supreme Court case grapples with the issue of when a public official’s social media activity constitutes state action for purposes of a First Amendment claim under 42 U.S.C. §1983.  I’ve been following the case as part of my work on internet and media law issues.

The case arose after James Freed, the city manager of Port Huron, Michigan, deleted comments and blocked a Port Huron citizen (Kevin Lindke) from commenting on Freed’s personal Facebook page after Lindke used the forum to criticize the city’s handling of the COVID-19 pandemic. Lindke sued Freed, arguing that Freed had violated his free speech rights by censoring him in a public forum.

In a unanimous opinion authored by Justice Barrett, the Supreme Court created a two step test, holding that that a public official’s social media conduct only qualifies as state action under §1983 if the official:

  1. possessed actual authority to speak on the State’s behalf on the particular matter at issue, and
  2. purported to exercise that authority when speaking in the relevant social media posts.

(more…)

Banning TikTok: Protecting Americans from Foreign Adversary Controlled Applications Act

by Dennis Crouch

Along with my work in intellectual property, I also spent a lot of time focusing on internet law issues and their interrelation with AI, privacy, speech and security.  We have seen growing calls for action surrounding Section 230 modifications and social media censorship, and several pending Supreme Court cases could reshape the legal landscape governing online platforms.

Banning TikTok: The U.S. House of Representatives passed a bill this week, with a vote of 352-65, that could potentially ban TikTok in the United States. The bill, called the Protecting Americans from Foreign Adversary Controlled Applications Act, would require TikTok to divest from its China-based parent company ByteDance or face consequences such as being cut off from app stores and hosting services in the U.S. (more…)

The Analogous Art Doctrine Post-KSR: Insights from the Federal Circuit’s Daedalus Decision

by Dennis Crouch

In a short nonprecedential decision, the Federal Circuit affirmed a PTAB IPR decision finding claims 15-25 of U.S. Patent No. 8,671,132 (‘132 patent) unpatentable under 35 U.S.C. § 103 over combinations of prior art references. Daedalus Blue LLC v. Vidal, No. 2023-1313, slip op. at 2 (Fed. Cir. Mar. 13, 2024).  The key issue on appeal was whether the Gelb reference qualified as analogous art for the purposes of the obviousness analysis.  Daedalus unsuccessfully argued that the PTAB erred in two respects: (1) by finding Gelb to be in the same field of endeavor as the ‘132 patent, and (2) by determining that Gelb is reasonably pertinent to the problems addressed by the ‘132 patent.  This post discusses the analogous arts test and provides key guidance to patent attorneys in today’s post-AIA world.

(more…)

Timeliness in Supreme Court Practice

The recent case of Purdue Pharma v. Collegium Pharmaceutical, Case no. 23A766, highlights the importance of adhering to the Supreme Court’s rules and presenting compelling reasons when requesting an extension of time to file a petition for certiorari. The Supreme Court’s denial of Purdue’s request for a 30-day extension serves as a reminder that even in cases involving significant legal questions, the Court expects parties to follow its procedural rules and provide strong justifications for any deviations.

(more…)

When ‘Interlock’ Causes Gridlock: Lessons from the Federal Circuit’s Decision in CoolIT Systems v. Vidal

by Dennis Crouch

In a nonprecedential decision, the Federal Circuit has vacated and remanded a PTAB decision siding against the patentee.  The key issue on appeal was the proper construction of the claim term “matingly engaged,” which appears in the limitation “a compliant member matingly engaged with the second side of the housing member.” CoolIT Sys., Inc. v. Vidal, No. 2022-1221 (Fed. Cir. Mar. 7, 2024). Coolit v Vidal.

One of the take-aways from the case is that parties should be cautious about using terms that may themselves require construction, as this can lead to a “construing the construction” problem. Courts aim to adopt constructions that clarify the meaning of the disputed term without introducing new ambiguities.   See Jason Rantanen, Construing Claim Constructions, Patently-O (Sept. 28, 2011, 4:13 PM).

(more…)

Magic Language in Patent Applications

by Dennis Crouch

The Federal Circuit handed down a mixed decision in Chewy, Inc. v. International Business Machines Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) ChewyvIBM. The district court had ruled against the patentee (IBM) — finding one patent ineligible and the other not infringed.  On appeal, the Federal Circuit largely affirmed, but found one claim that passes through the pre-trial gauntlet.  The patents at issue were IBM’s U.S. Patent Nos. 7,072,849 and 7,076,443, relating to improvements in web-based advertising.  On remand, a jury may need to decide whether claim 12 of the ‘849 patent is valid and infringed.

The first half of the post focuses on eligibility and is fairly standard.  The second half of the post is what all patent prosecutors need to read because it delves into “magic language” – binding statements – in describing the invention. (more…)

Newly Released CBP Ruling Reveals Apple Watch Pulse Oximetry Redesign

by Dennis Crouch

In January 2024 a then-secret order from US Customs and Border Protection (CPB) had a major impact in the Masimo v. Apple case. That opinion from CBP’s Exclusion Order Enforcement (EOE) Branch has now been released in redacted form and provides some insight into how Apple was able to quickly modify its Apple Watch designs to avoid the ITC’s limited exclusion order that would have blocked import of the infringing devices. The CBP EOE ruling determined that Apple’s redesigned watches, which disabled the infringing pulse oximetry functionality, were sufficiently modified to fall outside the scope of the ITC’s exclusion order, allowing them to be imported and sold in the US.

(more…)

Celanese v. ITC: The Overlooked 271(g) Wrinkle and Competing Policy Concerns

by Dennis Crouch

If you recall, Celanese v. ITC involves the sweetener known as AceK (acesulfame potassium), a compound discovered back in the 1960s.  Celanese began selling the product on the competitive market in 2011, and eventually decided to file for patent protection on its manufacturing process in 2015.  In my prior post on Celanese v. ITC, I focused on the key statutory interpretation question of whether, under the AIA’s revised 35 U.S.C. § 102, a patentee’s pre-filing sale of a product made by a secret process starts the one-year clock for patenting that process.

Although Celanese did not patent the product itself, one interesting fact that I failed to mention in the prior post is that Celanese is seeking an exclusion order at the ITC preventing importation of Ace-K. This adds an interesting wrinkle to the policy debate. (more…)

No Contradiction ⇒ No Indefiniteness

by Dennis Crouch

The Federal Circuit recently issued a decision in Maxell, Ltd. v. Amperex Technology Limited, No. 2023-1194 (Fed. Cir. Mar. 6, 2024), reversing Judge Alan Albright’s finding that certain claims of Maxell’s patent covering rechargeable lithium-ion battery indefinite under 35 U.S.C. § 112, ¶ 2 (112(b)). U.S. Patent No. 9,077,035.

The case provides important cover for patent prosecutors who inelegantly add narrowed limitations from the dependent claims into the independent claims without rewriting or deleting the corresponding broader element descriptions already there.

(more…)

Pfizer v. Sanofi: Applying the Results-Effective Variable Doctrine in Obviousness Analysis

by Dennis Crouch

The Federal Circuit has affirmed the PTAB’s finding that Pfizer’s pneumococcal vaccine patent is obvious, but has vacated and remanded the Board’s denial of Pfizer’s motion to amend certain claims. Pfizer Inc. v. Sanofi Pasteur Inc., No. 19-1871 (Fed. Cir. Mar. 5, 2024); U.S. Patent No. 9,492,559. Pfizer v. Sanofi Opinion.

(more…)

AI and Society: Government, Policy, and the Law at Mizzou

I am super excited to be part of a big interdisciplinary conference this week here at the University of Missouri where we’ll be focusing on AI and Society: Government, Policy, and the Law. Co-hosted by the Truman School of Government and Public Affairs and the University of Missouri School of Law, this two-day event on March 7-8, 2024, will bring together a diverse group of experts to explore four main themes: AI in Government, Impact of AI on Democracy, Government Regulation and AI, and Creating an AI Ready Public Sector; and a collection of the papers will be published in the Missouri Law Review. (more…)

The AGI Lawsuit: Elon Musk vs. OpenAI and the Quest for Artificial General Intelligence that Benefits Humanity

By Dennis Crouch

Elon Musk was instrumental in the initial creation of OpenAI as a nonprofit with the vision of responsibly developing artificial intelligence (AI) to benefit humanity and to prevent monopolistic control over the technology. After ChatGPT went viral in late 2022, the company began focusing more on revenue and profits.  It added a major for-profit subsidiary and completed a $13+ billion deal with Microsoft — entitling the industry giant to a large share of OpenAI’s future profits and a seat on the Board. 

In a new lawsuit, Elon Musk alleges that OpenAI and its CEO Sam Altman have breached the organization’s founding vision. [Musk vs OpenAI]. 

(more…)

Eligibility and Physical Products

by Dennis Crouch

The six PTAB decisions reviewed below provide insight into the application of 35 USC 101 in cases involving more than just computer hardware and software. While the claims in each decision recite physical devices or molecules, the PTAB still found most to be ineligible as directed to an abstract idea and lacking an integrated inventive concept beyond well-understood, routine conventional activities. A core parallel across the decisions is the PTAB’s focus on whether the additional elements in the claims, including the physical components, integrate the judicial exception into a practical application or provide significantly more.

  • Ex parte Ezerzer: CKRD peptides that can modulate immune system activity for treating autoimmune diseases – fragment of naturally occurring protein.
  • Ex parte Magatti: Beverage preparation system (Nespresso) which monitors container consumption to enable convenient reordering.
  • Ex parte Demou: System for predicting occurrence of adverse cardiovascular or cerebrovascular health conditions, including use of sensors attached to an artificial pump in a human body.
  • Ex parte Mitchell: Automated beer brewing system that modifies beer recipes to adjust sensory characteristics based on user inputs.
  • Ex parte Facchinetti: Continuous glucose monitor and insulin pump system that detects failures in glucose monitoring or insulin treatment in real-time.
  • Ex parte Masherah: Claims a system for distributing physical trading cards by scanning them and offering electronic versions for purchase online.

= = =

Ex parte Ezerzer, Appeal 2022-004253 (February 7, 2024) (Symthera Canada Ltd.)  Decision_2022004253_02-05-2024.

The claimed invention claims specific CKRD peptides that can modulate immune system activity for treating autoimmune diseases. Citing Myriad, the examiner rejected the claims under Section 101 after concluding that the claims covered a fragment of polypeptides that naturally occur within the human body.  On appeal, PTAB agreed that there is “no dispute that the peptides themselves are fragments of larger naturally occurring proteins.”  However, the panel found “market differences” between the claimed peptide and the naturally occurring form.   The patentee particularly provided evidence that its claimed sequence had a much higher ability to bind to inflammatory targets — suggesting an important practical and likely structural difference from the naturally occurring larger molecule. For example, it  is likely that this protein fragment folds in a different way than the larger molecule from which it is derived.

The PTAB also recognized that there is some likelihood that the claimed invention has shown-up in nature.  Relying on Myriad, the PTAB found that “the mere possibility that the peptides of claim 1 might have existed as a natural phenomenon is insufficient to establish that the composition is a product of nature and therefore a judicial exception” The Examiner had not shown that the specific peptides of SEQ ID NOs: 2 and 16 necessarily existed in nature.

= = =

Ex parte Magatti, Appeal 2023-000550 (February 20, 2024) (Society des Produits Nestle) Decision_2023000550_02-15-2024.

The claimed invention in Ex parte Magatti relates to a beverage or foodstuff preparation system (including a Nespresso machine) which monitors container consumption to enable flexible and convenient reordering for the end user.  The system includes subsystems for preparing containers, controlling preparation, monitoring consumption, and networking with external devices.

Regarding the 101 rejection entered by the PTAB, the claimed system was determined to be directed to an abstract idea of “keeping an inventory record of food or beverage containers for use with food or beverage preparation equipment.” Limitations reciting tracking stock state information and comparing order identifiers were found to be mental processes of observation, evaluation, and judgment. For example, a coffee shop barista tracking coffee pod usage and purchase orders with pen and paper.

The additional elements like the beverage preparation machine, computer subsystem, and networking subsystem did not integrate the abstract idea into a practical application or provide “significantly more.” Instead, these elements merely used generic components such as a (“generic beverage or foodstuff preparation machine”) as tools to implement the inventory management abstract idea without shifting the invention’s true focus from managing inventory.

= = =

Ex parte Demou, Appeal 2023-004366 (February 27, 2024) (HeartWare) Decision_2023004366_02-23-2024.

The claimed invention relates to a system for predicting an “occurrence of an adverse cardiovascular or cerebrovascular health condition.”  The claims particularly require an implantable pump having a variety of sensors attached to a rotor.  But, the novel features of the invention is the capability to process the sensor data using a particular algorithms to predict a likely future cardiac event.

In its decision, the PTAB affirmed the examiner’s eligibility rejection under 35 USC § 101 — finding that the claim was directed to an abstract idea of “mental processes” because many of the claimed steps could be performed in the human mind but for the recitation of a generic computing device. The PTAB relied on CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (holding the claims that could be “performed in the human mind . . . or by a human using a pen and paper” were directed to patent-ineligible mental processes).   Although the patentee’s actual process involves quite complex data manipulations, the claim itself was “broad enough to encompass straightforward situations that involve little more than mental observations, calculations, and comparisons of features from a plot.”

The PTAB further determined that the additional elements in the claims, including the implantable pump, sensors, communication circuitry, memory, input/output interface, and processor, did not integrate the judicial exception into a practical application. The additional elements were described generically in the specification to perform well-understood functions such as gathering, transmitting, and processing data — finding that “the Specification does not indicate in any manner that the recited ‘one or more sensors,’ first and second ‘communication circuitry,’ and ‘processor’ of claim 32 are anything other than generic, off-the-shelf components.”

= = =

Ex parte Mitchell, Appeal 2023-003309 (P.T.A.B. Feb. 21, 2024) (PB Funding Group) Decision_2023003309_02-21-2024.

The invention here is an automated beer brewing system that modifies beer recipes to adjust sensory characteristics of beer based on user inputs. The claimed invention allows users to select a baseline beer recipe and adjust its characteristics, such as bitterness, flavor, and aroma, to suit their preferences. The system then modifies the recipe accordingly, using a performance model to predict the outcome of these adjustments.  The specification notes that beer making is an old practice, and the question here is whether the claimed invention constitutes an abstract idea rather than a patent eligible invention.

The PTAB affirmed the Examiner’s rejection of the claims — finding them directed to a mental process that could be performed by a human using pen and paper, involving thinking about and modifying a beer recipe. The Board found that the claims did not integrate the abstract idea into a practical application and did not add an inventive concept beyond the abstract idea itself. The use of a computer to automate this process was deemed insufficient to transform the claims into patent-eligible subject matter.  In particular, the claims did not recite new technology. The Board concluded that mere automation of manual processes using generic computers does not satisfy the requirements for patent eligibility. “Nothing in claim 1 provides an inventive concept as the creation of beer recipes and determination of characteristics from a recipe are well-understood, routine, and conventional in the beer making arts and are more than capable of being performed in the human mind.”

= = =

Ex parte Facchinetti, Appeal 2023-001547 (Feb. 28. 2024) (Dexcom) Decision_2023001547_02-26-2024

DexCom is a leader in continuous glucose monitoring. The claimed invention here relates to a method a safety method – looking for real-time failures of monitoring or insulin treatment. Claim 1 is directed to a “device” that includes a continuous glucose monitoring system and an insulin infusion pump, but the key advance is in the data processing that creates individualized model based upon patent data using a discrete  reiterative filter to predict glucose levels with confidence intervals and then create an alert if the actual levels deviate.

Regarding the 35 USC § 101 rejection, the PTAB determined that claim 1 was directed to an abstract idea of “mathematical concepts and concepts that can be practically performed in the human mind or with the assistance of pen and paper (including an observation, evaluation, judgment, opinion).” The PTAB further determined that the additional elements in the claim, including the continuous glucose monitoring system, insulin infusion pump, alert device, and processor, did not integrate the judicial exception into a practical application. The additional elements were described in the specification as generic computer components being used in a conventional manner to manipulate data. The PTAB stated that “[m]erely adding generic data generating hardware and computer components, namely a generic processor, to perform an abstract idea does not integrate the abstract idea into a practical application.” Thus, the claims cannot be patented.

= = =

Ex parte Masherah, Appeal 2022-004158 (P.T.A.B. March 4, 2024)  (The Upper Deck Company) Decision_2022004158_02-29-2024.

The claimed invention relates to an electronic distribution system for physical trading cards that can be scanned into electronic trading cards and placed on a website for purchase.  The claimed method involves first manufacturing “physical trading cards” and then “scanning” their images.  At that point then we have an online inventory system that then facilitates orders and shipping of the physical cards.

Regarding the 35 USC § 101 rejection, the PTAB determined that claim 22, which was representative of the claims on appeal, was directed to an abstract idea of “offering trading cards for purchase and sale” by reciting certain methods of organizing human activity in the form of commercial interactions.

Although the claims require printing/scanning/shipping steps, the specification specifically identified that the invention “generally relates to an electronic distribution system for physical trading cards that can be scanned into electronic trading cards and placed on a website for purchase.”  After finding the claims directed to an abstract idea, the PTAB the determined that the additional elements in the claim, including the recited scanner, website, and device, did not integrate the judicial exception into a practical application.

 

Four Funerals: Recent PTAB 101 Decisions

I wanted to consider some recent PTAB jurisprudence on patent eligibility under 35 U.S.C. § 101. The following post reviews four recent eligibility cases. In all four cases the PTAB found the claims lacked eligibility. Two of the cases affirmed examiner rejections while the other two added eligibility as a new grounds for rejection after finding that the examiner erred in their 102/103 rejections. All four cases here involve communications technology where the patent applicant was seeking to claim the functional operational steps without describing any new “technology.”  I have a second post coming with recent device 101 cases from the PTAB.

(more…)

Covenant to not sue “at any time” terminated with the license agreement

by Dennis Crouch

The recent Federal Circuit decision in AlexSam, Inc. v. MasterCard Intl. Inc. provides a lesson into the importance of carefully drafting—and understanding—the scope of licensing terms, especially covenants not to sue.  Of importance to this case is understanding both their scope and their duration.  The second half of the post delves into the jurisdictional hook that allowed the Federal Circuit to hear this case, even though it originated as a state law breach of contract claim, as well as analyzing whether MasterCard’s invalidity declaratory judgment counterclaim was truly compulsory, as required for Federal Circuit appellate jurisdiction.  The post also notes a curious empaneling of judges. 22-2046.OPINION.2-28-2024_2277625.

Background (more…)

Making a Proper Determination of Obviousness

by Dennis Crouch

Earlier this week, the USPTO published updated examination guidelines regarding obviousness determinations under 35 U.S.C. §103. While these new guidelines are not legally binding, they offer important insight into how the Office plans to apply an even more flexible approach to obviousness — something Director Vidal sees as mandated by the Supreme Court’s 2007 decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). (2500 words).

Read the Guidance Here.

Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility.  Still, the guidelines spend some time on the requirements of a prima facie case; the necessity of both evidence and reasoning to support any obviousness rejection; and consideration of all evidence before the examiner.  Obviousness is already the most common rejection – with the vast majority of applications being initially rejected as obvious.  It will be interesting to see whether the rates go up even further following this new guidance. 

This post breaks down the guidelines and walks through some potential strategies for patent applicants. 

(more…)