Patent applicants must submit known prior art to the USPTO to assist in examination. The average number of references has grown tremendously, but not the median. The growth is driven by a small subset of applicants submitting a large number of documents. pic.twitter.com/nXQlUvU1LN
— Dennis Crouch (@patentlyo) January 27, 2022
by Dennis Crouch
Nature Simulation Systems v. Autodesk (Fed. Cir. 2022)
We have an interesting split decision focusing on the doctrine of indefiniteness in the context of an “examiner’s amendment.” Judge Newman wrote for the majority and favored the patentee; Judge Dyk wrote in dissent and concluded that the patent claims were indefinite. The judges particularly differed on what level of deference should be given to USPTO examiners with the majority holding that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions.” The dissent argued instead that deference has no role in the definiteness inquiry:
The test …is whether the claims ‘inform those skilled in the art about the scope of the invention with reasonable certainty,’ Nautilus, not whether the claim language was added by a patent examiner or was not indefinite to the examiner.
Slip op. (Dyk, J. in dissent).
You likely know about Boolean logic operations such as AND, OR, and NOR. In CAD software, Boolean operators are similarly used to recognize intersection of geometric objects, using alternative terminology such as INTERSECT, UNITE, and SUBTRACT. Mathematical methods for performing these operators have been known for decades–as developed by “Watson.” NSS created a new version that it calls the “modified Watson method.”
During prosecution, the examiner rejected the claims as indefinite, but then withdrew the rejection based upon his own examiner’s amendment. The original claim required use of the “modified Watson method,” but the examiner suggested that was not definite enough, and suggested adding additional definitional requirements:
wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
Exr. Amendment found in Notice of Allowance.
Later, NSS sued Autodesk for infringement, and the defendant responded that the language added by the examiner was actually indefinite and created confusion as to what is actually included within modified Watson. The parties consented to have the local Magistrate Judge (Sallie Kim) hear their case, and Kim sided with the defendant. The Magistrate opinion is notable in that it does not cite to the leading precedent on definiteness – Nautilus v. Biosig (2014). Rather, the court appeared to primarily rely upon Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) or no precedent at all. The district court’s approach appears to be looking for “unanswered questions” of claim scope:
Thus, the question is thus: if the PTO issues a patent after amendment to clarify an indefinite term, but an expert later opines that a POSITA would not understand the term, how does the Court determine whether the term is indefinite? The only way to do so here is to look at each argument to see if Autodesk raises any unanswered questions.
[Nature_Simulation_Systems_Inc._62]. The Magistrate clearly missed the mark on its explanation and application of the law of definiteness. (Although Judge Dyk calls the opinion detailed and thorough).
Since indefiniteness is seen as a question of law, the court also took the second step of determining whether the erroneous application of law also led to an erroneous outcome. Yes it did. On this point, Judge Newman pointed to the specification’s offering of two algorithmic charts showing the modified Watson method and also the patent examiner’s specific determination on this very point.
The district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. . . .
Actions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.
Slip Op (majority). The court has written on this very point in some prior cases — perhaps most pointedly in Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011, 1020 (Fed. Cir. 2018) (“We presume that an examiner would not introduce an indefinite term into a claim” with an examiner’s amendment). Judge Newman cited Tinnus, but did not mention that the case was non-precedential.
For his part, Judge Dyk argues that the test for indefiniteness is an objective test based upon the understanding of those skilled in the art “not whether the claim
language was added by a patent examiner or was not indefinite to the examiner.” The majority responded to this criticism by noting that an examiner is presumptively a person of skill in the art.
Here is a fun chart showing the percentage of U.S. patents that cite to Wikipedia as prior art. I created this from data downloaded from the USPTO.
by Dennis Crouch
Masimo Corp. v. True Wearables, Inc. (Fed. Cir. 2022) (nonprecedential)
This trade-secrecy decision includes a few interesting holdings:
The companies here compete in the market for creating specialized finger-LED equipment and accompanying data analysis services. This case focuses on calculating total hemoglobin (“SpHb”) based upon light absorption readings from the finger-LED.
How does it work: The LED emitter sends out a pulse of light through the fingertip; a sensor on the other side then measures how much light passed through at various wavelengths. Hemoglobin has a particular light adsorption pattern, and so those results can be used to calculate a relative amount of Hemoglobin. They do this with a simple linear aggregation: “SpHb = Ax + By + Cz . . .,” where x, y, and
z are various absorption measurements from the monitoring device (such as different wavelength readouts) and A, B, and C are coefficients that reflect the relative importance of the different measurements.
Each product line will have a different equation because it will likely have a different LED configuration; have different sensors; and have a different physical form. So, a product developer needs to run a clinical trial of its product in order to estimate the most accurate coefficients. For each person in the trial, you do a blood test for SpHB level (the gold standard) and then also take measurements with the finger LED.
What is the Trade Secret: The trade secret at issue here is the optimization algorithm for determining all the equation coefficients. How do you take data from the clinical trials and turn that into an operational equation for measuring SpHB?
Answer, if you have studied linear algebra this is all straightforward and largely developed in the 1960s. Math and engineering students across the country take classes on linear programming and linear optimization and have done so for decades. These same models are a basis for most of the system we call “AI.”
The defendants pointed to a particular 2008 IEEE article that spells out the particular approach claimed to be a trade secret here — – the parties refer to this algorithm as “TSS.” We don’t know the title of this article (it is redacted), but we do know that this is a very well known article with 1,200+ citations. The description below comes from the appellate briefing:
The footnote explains: “[T]he complete citation for this publication is not reproduced in this brief as Masimo has asserted that the identity of the publication is confidential.”
Under California law, information that is “generally known” cannot be a trade secret. Here, however, the Federal Circuit affirmed the lower court ruling that the publication did not render the information “generally known” to folks in the particular field in question.
Under some circumstances, the publication of an alleged trade secret will clearly be sufficient to indicate that the information is generally known. However, the fact that the trade secret has been revealed in some publication somewhere [even if highly cited] does not necessarily compel a finding that the information cannot maintain its status as a trade secret for a party in an entirely different field from the one to which the publication was addressed.
Slip Op. The Federal Circuit previously wrote that disclosure in a patent renders information “generally known” for trade secrecy purposes, but endeavored to distinguish that conclusion here. Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., 587 F.3d 1339, 1355–56 (Fed. Cir. 2009).
I’ll note here that there are some other factors at play – namely, the founder of True Wearables (Dr. Lamego) is a former Masimo employee. He is the one that mathematically derived implemented the TSS algorithm at Masimo. And, while there, labeled it a “trade secret.” These actions of the parties tend to make it look like a trade secret.
I have a Serious Question: On appeal, the Federal Circuit did conclude that the trade secret issue was questionable, but still found that the plaintiff had raised a “serious question as to the validity of the trade secret” which is apparently sufficient for a preliminary injunction. That appears to be a lower standard than the more traditional “likelihood of success.”
The Preliminary Injunction: Lamego has several patent applications pending, and the preliminary injunction orders Lamego to make sure that those applications do not become public. Here, the court found the remedy appropriate since “Once the information is in the public domain and the element of secrecy is gone, the trade secret is extinguished.” (Quoting Ultimax). In this portion of the opinion the court did not contend with its statement a few paragraphs before that publication does not necessarily extinguish a trade secret.
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?”).
* Note – the quote above comes from the syllabus of the case as issued by the court in 1862.
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.
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.
I just pre-ordered The Right to Repair: Reclaiming the Things We Own by Prof. Aaron Perzanowski.
Resolved: Public school curriculum should include repairing of consumer goods.
— Dennis Crouch (@patentlyo) January 20, 2022
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.
Id.
Venue – we have a very broad federal venue statute, except that it is super-narrow for patent lawsuits. Should we expand patent venue?
— Dennis Crouch (@patentlyo) January 19, 2022
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.”
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:
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.
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.
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.
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.”
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.”
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:
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:
= = = =
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:
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.
I've been looking at pre-1952 patent cases (1891-1951). The following are the top-ten most often relied upon in law review articles:
1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (function-way-result test for the doctrine of equivalents); pic.twitter.com/DvGjkI1LXL
— Dennis Crouch (@patentlyo) January 12, 2022
This week, the Federal Circuit is hearing oral arguments in an important software copyright case, SAS Institute, Inc. v. World Programming Ltd., Docket No. 21-1542. The 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:
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).
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.
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)).