by Dennis Crouch

The 5th Circuit Court of Appeals recently decided an important convenient venue case.  Granting TikTok’s mandamus petition to have its trade secret case transferred from W.D.Tex to N.D.Cal.  The decision does not really break ground in the venue/mandamus debate, but does solidify the Federal Circuit’s parallel approach in patent cases out of the same district.  In re TikTok Incorporated, — F.4th —-, 2023 WL 7147263 (5th Cir. 2023).  Decision.

A Chinese company – Beijing Meishe Network Tech.Co. (“Meishe”) – sued TikTok for infringing its copyrights and misappropriating traded secrets associated with AV editing software.  Although both companies are Chinese in origin, the plaintiffs sued in Judge Albright’s Waco Texas courtroom.  Judge Albright is seen as tech-plaintiff friendly and so likely was the key driver for the filing location. Still, TikTok has numerous employees within the district, including 300 in the Waco area.  Further, most of the actions associated with the underlying claims took place in China — and so the plaintiffs argued that there was no particular US court that would be clearly better.   The reality though is that TikTok has most of its US employees in California.

Judge Albright denied TikTok’s motion to transfer venue and TikTok then petitioned the 5th Circuit for a writ of mandamus who has now granted the motion and ordered the case transferred to N.D. Cal.

28 U.S.C. § 1404(a) is the federal statutory provision that governs requests to transfer venue in civil cases.  It applies particularly in situations where venue in the original court is “proper,” but still inconvenient or may otherwise frustrate justice. It provides that a district court may transfer a civil action to another federal district court if the court determines the transfer is warranted based on the “convenience of the parties and witnesses” and “the interests of justice.”

Under § 1404(a), district court generally has broad discretion to grant or deny a transfer motion.  But, the party requesting transfer must at least show that convenience and justice factors weigh in favor of litigation proceeding in the proposed transferee district rather than the district where the action was initially filed.  Although a district court has discretion, the Fifth Circuit has held that § 1404(a) motions should be granted if the movant demonstrates that the transferee venue is “clearly more convenient.” In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008). This process requires weighing factors like the ease of access to sources of proof, availability of witnesses, and the connection between the venue and the events underlying the dispute.  Prior Fifth Circuit decisions have emphasized that the analysis focuses on convenience, not on “any particular circumstance in isolation.” In re Radmax, Ltd., 720 F.3d 285 (5th Cir. 2013).  Mandamus is designed as a rare mechanism similar to interlocutory appeal, and only permitted based upon “clear and indisputable” abuse of discretion. In TikTok, the appellate panel explained:

Mandamus is an extraordinary remedy that should be granted only in the clearest and most compelling cases. To obtain mandamus relief, TikTok must show (1) there are no other adequate means to attain the desired relief; (2) the right to issuance of the writ is clear and indisputable; and (3) the issuance of the writ is appropriate under the circumstances.

In re TikTok Inc., 2023 WL 7147263, at *3 (5th Cir. 2023) (internal citations omitted).  In most situations, a district court error can only be appealed after final judgment. But, inconvenient venue (absent a greater due process violation) is generally not appealable post-trial and not a justification for a new trial.  What that means is that mandamus is typically the only mechanism available to obtain reversal of an erroneous inconvenient venue decision.

The Fifth Circuit granted TikTok’s petition. It held that the district court clearly abused its discretion in analyzing multiple § 1404(a) factors. Two examples: (1) The district court erred in finding that access to sources of proof was neutral when the relevant source code and TikTok employees with access were located in California, not Texas. (2) The district court abused its discretion in weighing the cost of attendance for willing witnesses and court congestion against transfer.

The In re TikTok Decision Does Not Reflect a Change in Precedent

In my view, this new decision applies the Fifth Circuit’s established § 1404(a) jurisprudence, and also solidifies the Federal Circuit’s parallel patent cases that purport to apply Fifth Circuit law.   There has been a paucity of 5th Circuit precedent on point, and so this helps back-fill that foundation.

On the one hand, the Fifth Circuit explained that mandamus should be rare. But, on the other hand, the panel still granted the mandamus and transfer.  The insight then is that rare things happen — perhaps more often than we think.  Here, the appellate court identified this case as an “unprecedented situation” with no connection between the plaintiff’s claims and the Western District of Texas.  This, the case turns on the case’s unique lack of any connection between the forum and the dispute. As the court stated, “[o]ur holding today is restricted to the outlandish facts of this case.”  The appellate panel did not mention that the plaintiffs had alleged that copyright infringement occurred in the W.D.Tex.

The Fifth Circuit’s decision in In re TikTok provides support for the Federal Circuit’s approach to venue transfer in patent cases. Like the Fifth Circuit, the Federal Circuit has shown a willingness to grant mandamus to transfer patent cases out of the Western District of Texas in situations where the convenience factors strongly favor another venue.  Although the Federal Circuit applies Fifth Circuit precedent to the issue, there has been limited Fifth Circuit authority directly on point regarding venue transfer and mandamus in civil suits.  The In re TikTok decision thus lends support to the Federal Circuit’s body of law.

by Dennis Crouch

Actelion Pharmaceuticals Ltd v. Mylan Pharmaceuticals Inc., No. 2022-1889 (Fed. Cir. Nov. 6, 2023) [decision]

The Federal Circuit’s bread-and-butter over the years has been claim constructions that often surprise or confuse district court judges. Part of the issue here is that most Federal Circuit judges have construed thousands of patents and are deeply immersed in the law of claim construction — while most district court judges see claim construction as a small part of a patent case, which itself is a small part of their overall docket. The other part of the issue, of course, is that no deference is given to the district court’s claim construction on appeal. The ensuing appeal then regularly turns out like that law school class where students seemed to provide really good answers in the Socratic game, but the professor could never resist tweaking — “almost right.”

The Actelion case involves a common situation where the patent claims include a measurement but do not state the level of precision, and the court is forced to decide whether values slightly outside the claimed range might be covered.

Actelion’s U.S. Patent Nos. 8,318,802 and 8,598,227 are directed to a new formulation of epoprostenol, a substance that naturally occurs in the human body and that is useful for treating cardiovascular diseases.  The claims appear directed to a product-by-process — a freeze dried powder (lyophilisate) formed from a solution that contains epoprostenol and that “has a pH of 13 or higher.” Mylan’s ANDA proposes a generic version that would have a pH made from a solution with pH slightly under 13.

The question for claim construction is whether the requirement of “13 or higher” pH encompasses something akin to a pH 12.6.  For abstract mathematicians, it is quite clear that 12.6 is less than 13 — the opposite of what is claimed. But, experimental scientists understand that a measurement of 12.6 might often be properly rounded to 13. The district court adopted Actelion’s proposed construction that “a pH of 13” includes values that round to 13, such as 12.5 and concluded that Mylan’s approach was infringing.  Mylan argued on appeal that the term requires an pH of “exactly” 13 — not values that are about or approximately 13.

The Federal Circuit opinion walked through various factors to help it understand the proper construction. As the court has held, the analysis begins with the claim language, as it is of primary importance. Additionally, “the specification is always highly relevant to the claim construction analysis” and is  often “the single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

Claim Language: The court examined whether the language setting a lower limit of “13” precludes rounding or not. The claim is written as a whole number, rather than in decimal form. The district court noted that this involved “two significant figures’ without implying any higher level of precision.”  At oral arguments, the patentee’s counsel explained:

[The inventor] did not say 13.0, which is a figure that would have 10 times the greater precision, and certainly didn’t say ‘exactly 13’, which is not scientifically possible in the context of pH, because you’re talking about measurement of billions of ions in a liter of water of hydrogen ions and determining their concentration.

Oral args at 18:00. On the other side, in places the specification appeared to equate 13.0 to the whole number 13.

Lack of Approximation Terms: The court noted that the claim lacks words like “about” that would imply approximation and that are often included within patent claims. As the court explained, “Unlike other claim terms, the disputed claim term lacks approximation language like ‘about.'”

Nature of pH Measurements: The court considered whether pH values can be measured precisely or inherently require some margin of error. The court noted Actelion’s argument that “it is not practically possible to measure exact pH values” because it would require counting every hydrogen ion in solution.

Specification: The specification alternately uses approximation terms like “about” or lacks decimal points when describing pH values. For example, the specification states the pH is “preferably adjusted to about 12.5-13.5, most preferably 13.” This shows the inventor knew how to use “about” to imply approximation, but did not for the “13” value.  The statement also suggests that 12.5 is different from 13.  As the court summarized, “the specification is inconsistent, also describing pH values like ‘13.0’, ‘11.58’, and ’13’ without clear precision.”

Prosecution History: During patent prosecution, the patentee had distinguished its invention from a formulation with pH 12 — arguing that pH 13 exhibited substantially more stability. But the prosecution history did not compare pH 13 with values in between 12 and 13. As the court explained, the examiner “drew a distinction between the stability of a composition with a pH of 13 and that of 12” but this did not address whether pH 13 includes values rounding to 13.

With claim construction, the Federal Circuit has ruled that courts can quite often construe claims based solely upon intrinsic evidence. But, at times courts are permitted to go further and access extrinsic evidence like scientific texts.  Here, the Federal Circuit concluded that this is a case where extrinsic evidence  is necessary to understand how a skilled artisan would view the claim language in terms of pH precision and significant figures.  As the court explained, “this case is one where the proper claim construction cannot be reached without the aid of extrinsic evidence.” The appellate panel thus vacated the claim construction and infringement judgment and remanded for the district court to consider the extrinsic evidence like scientific textbooks and perhaps expert testimony in the process of reconsidering the claim construction.

The panel consisted of Circuit Judges Reyna, Stoll, and Stark. Circuit Judge Stoll authored the opinion.

= = =

This case highlights an issue that has led to claim construction disputes in numerous cases involving measurements and precision with billions of dollars turning on so-called rounding errors. The lack of clarity stems from applicants not specifying the precision or margin of error for claim terms either in the original application or during prosecution. This ambiguity could be avoided if the USPTO were to put the onus on patent applicants to identify the precision and error margin for any measurements recited in the claims. For example, the USPTO examiner could reject the claims as ambiguous based upon the broadest reasonable interpretation and require the applicant to clarify whether “a pH of 13” allows for values that round to 13 and if so, the acceptable variance (e.g. ± 0.1, ± 0.01 pH units).

Requiring patent applicants to explicitly identify the precision and error margin for measurements during prosecution would prevent the need for courts to resort to extrinsic evidence to resolve ambiguity that should have been addressed before issuance. This would increase certainty around claim scope and reduce unnecessary litigation.

What do you think, should the USPTO consider more ways to have applicants clarify claim term precision when filing and prosecuting applications involving numerical measurements?

by Dennis Crouch

In re PersonalWeb Techs, — F.4th — (Fed. Cir. Nov 3, 2023)

A few years ago, I published an article along with Homayoon Rafatijo explaining our perspective of how the Federal Circuit has improperly extended the Kessler doctrine in cases like PersonalWeb Tech.  Law school classes teach two types of preclusion: res judicata and collateral estoppel. The Kessler doctrine is an additional patent-specific preclusion doctrine that the Federal Circuit applies against patentees in certain patent situation.  The basics of the doctrine is that it applies like non-mutual collateral estoppel to bar future litigation of infringement claims. But in PersonalWeb, the Federal Circuit removed some of the key safeguards of collateral estoppel — such as requiring that the issue have been actually litigated and decided  in a first case prior to precluding further litigation of the issue in a different context and against different parties. We spent a lot of time researching the history of the doctrine and its creation in the early 1900s and then walked through how the historical expansion the “claim” via notice pleading as well as expansion of non-mutual issue preclusion overtook any original justification for the doctrine.  Our article had some legs and was also awarded the Shook, Hardy & Bacon LLP Excellence in Research Award.  The Gov’t brief  in the subsequent Supreme Court petition did agreed that the Federal Circuit had improperly extended the doctrine.  Unfortunately, the Supreme Court denied certiorari in the case.

I was surprised to see today that in a 2-1 decision, the Federal Circuit thought so little of our argument (and the SG brief) that it determined PersonalWeb’s lawsuit was objectively baseless — thus serving as a basis for an exceptional case finding and attorney fee award of $5 million to the accused infringers.

I’ll begin with Judge Dyk’s dissent that sets out the problem:

The majority’s opinion rests on the remarkable proposition that PersonalWeb’s arguments were objectively baseless (and supported a fee award) despite the Solicitor General’s agreeing that those very same arguments were correct. The majority’s opinion effectively awards fees for a lack of success, which is not an appropriate use of section 285, and will likely chill legitimate advocacy.

Dyk, J. in Dissent.  The majority opinion authored by Judge Reyna and joined by Judge Lourie defended the Federal Circuit’s caselaw and appears to reject any notion that the Federal Circuit has expanded the doctrine beyond its original bounds.  Notably, the Federal Circuit did not contend with any of the arguments suggested either in our article or the SG brief.  The majority also did not explain its effective conclusion that the SG brief was itself objectively baseless.

The Federal Circuit’s newest decision PersonalWeb is concerning. By penalizing reasonable legal arguments and showing little regard for scholarly critique or even the Solicitor General’s briefing, the majority opinion signals an overt hostility towards rethinking existing patent doctrine and legitimate litigation that endeavors to challenge existing law.

by Dennis Crouch

One of the ambiguities with contemporary claim construction is how courts deal with loosely implied limitations from the specification. These do not rise to the level of ‘disclaimer’ but we’re never entirely sure whether the specification-forward approach of Phillips v. AWH will have traction.  The courts tend to strongly oppose importing limitations into the claims absent a disclaimer, but claim-language hook can often lead to interpretative narrowing.  This becomes even more interesting in situations where the patentee is using a coined term but without an express definition of scope.  In those instances it seems appropriate to read more into the the specification — but how much more?

The Federal Circuit’s decision in Malvern Panalytical Inc. v. TA Instruments-Waters LLC, No. 2022-1439 (Fed. Cir. Nov. 1, 2023) offers some guidance — and also rejects the use of prosecution history from a non-family-member application in interpreting patent claim scope.

At issue was the meaning of the term “pipette guiding mechanism” as used in a pair of patents owned by Malvern.  U.S. Patent Nos. 8,827,549 and and 8,449,175. The district court limited the term to only “manual” embodiments based on statements made during prosecution of an unrelated patent.  With that narrow construction, the accused automated devices clearly did not infringe — and the patentee stipulated as such. On appeal, the Federal Circuit vacated the district court’s claim construction, holding that the term was not limited to manual embodiments and that unrelated prosecution history should not have been used to construe the claims.

The patents relate to microcalorimeters, which are instruments used to measure the heat absorbed or released during a chemical reaction. Specifically, the patents describe an isothermal titration calorimeter (ITC) that contains several components including an automatic pipette assembly, a stirring paddle and motor, and a “pipette guiding mechanism.” The pipette guiding mechanism moves the pipette assembly between different positions, such as inserting the pipette into a sample cell for measurements or into a washing apparatus for cleaning. The key dispute was whether this pipette guiding mechanism included both manual and automatically operated embodiments. The Federal Circuit ultimately held that the plain meaning of the term encompassed both manual and automated guiding mechanisms.

District Judge Andrews (D.Del.) sided with the accused infringers in finding that the claimed “pipette guiding mechanism” should be limited only to manual operation forms.  On appeal, the TA defended the judgment and raised the following arguments: (1) The specification discloses two embodiments of the guiding mechanism, both of which are operated manually and refers to a “user skills” as an aspect of operating the machine.  (2) The specification goes on to describe other automated portions of the assembly, but did not do so with the guiding mechanism. (3) The term “pipette guiding mechanism” is a coined term without a plain meaning, so it can’t be broader than the embodiments in the specification. (4) that the patentee’s provided evidence that a product guide being distributed “included” the “relevant features” of their claimed invention.  That product guide only described manual operation.  (5) Finally, during prosecution of a separate non-family-member patent (US9103782), the patentee had argued that it was describing a ‘purely manual guiding system’ as an attempt to avoid prior art from an automated reference.   Although perhaps not a complete disclaimer, TA argued that these factors come together to narrowly construe the claim to cover only manual guiding mechanisms.  The Federal Circuit dismantled these arguments individually.

Claim Construction Analysis

The Federal Circuit began its analysis by looking to the plain and ordinary meaning of “pipette guiding mechanism” as would be understood by a person of ordinary skill in the art. The court found that the plain meaning encompassed both manual and automatic guiding mechanisms. This was based on examining the individual words in the claim term, as well as the overall context provided by the claims and specification. The court found no clear disavowal or redefinition in the specification or the arguments made during prosecution and so gave the claims their full ordinary meaning.

As to the coined-term argument, the court found that even coined terms can have a discernible plain and ordinary meaning based on the intrinsic evidence of the patent. There is some tension among the cases on this issue.  Compare Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1357–58 (Fed. Cir. 2016) (coined terms without a plain and ordinary meaning in the art can be limited more readily by prosecution statements) with Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1381 (Fed. Cir. 2022) (“[T]he district court was correct in seeking to give meaning to the term ‘fastening stem’ by looking to the meaning of the words ‘fastening’ and ‘stem’ as used in the patent.”).  The appellate panel first noted that the doctrine is “sparingly applied” and, as here, the patent uses the individual words “pipette” “guiding” and “mechanism” in a manner that can be readily understood and does not suggest a manual limitation.  Rather, “the plain and ordinary meaning of ‘pipette guiding mechanism’ is a mechanism that guides a pipette, which can be either manual or automatic.”

In this case, the claims lack a textual hook for a manual requirement and the court found no “clear and unmistakable” disavowal.  As such, the proper construction is the full scope.

Use of Unrelated Prosecution History

A significant aspect of the Federal Circuit’s decision was rejecting the district court’s reliance on prosecution history from a non-family member patent to construe the claims. Although not an official  ‘family member,’ the parallel application had a shared assignee, was being prosecuted by the same law firm, and and also covered a pipetting system. In that non-family-member case, the patentee had distinguished its invention from the prior art by arguing that its guiding mechanism operated manually rather than automatically.  The district court treated the statements as admissions limiting “pipette guiding mechanism” to manual embodiments.  That office action rejection was then submitted to the PTO in these cases as part of an IDS.

On appeal, the Federal Circuit rejected the district court analysis, holding that  statements in an “unrelated” application do not guide meaning or serve as a disclaimer and further that submission of the OA in an IDS is insufficient to incorporate those statements for purposes of construing the claims at issue.

Although this answer here is probably correct, it makes me uncomfortable because it allows patentees to tell different stories in different cases.  Here, the cases were being handled by different examiners in different art units — it might be a different story though if the same examiner was looking through all the  similar but “unrelated” cases.

Although the logic of this case all seems clear from hindsight, I continue to be concerned that this situation offers lots of wiggle room for each side to push  for advantage — akin to a nose of wax.

by Dennis Crouch

The Federal Circuit’s new claim construction decision in Monterey Research, v. STMicroelectronics highlights the ongoing difficulty of patentees to obtain narrow claim construction at the PTAB during IPR. Typically, patentees are seeking narrow claim construction in order to better differentiate the patent claims from the asserted prior art.  And, although a patentee could expressly amend the claims, such an action could create problems in litigation such as eliminating back damages and potentially creating an estoppel problem. Broad claim interpretation at the PTAB was rampant in the early days as the administrative court applied the PTO standard “broadest reasonable interpretation.” More recently, the PTAB has moved to the narrower ordinary meaning standard, but the change has not been enough for many patentees to survive the IPR process.

Monterey’s U.S. Patent No. 6,534,805 covers an improved SRAM cell design for computer memory.  The claim requires “a single local interconnect layer comprising local interconnects corresponding to bitlines and a global wordline.”  Although not expressly included in the claim, the patentee argued that the interconnect layer should be construed to require lateral routing of signals along the interconnect layer.  Monterey pointed to several elements from the prosecution history that support its contention.

• Figure 3 of the patent (above) shows the type of lateral routing of signals  being discussed. During prosecution, Monterey distinguished its claim from the prior art by referencing Figure 3 and stting that “all the runs [i.e. interconnects] for the bitlines, Vcc, Vss and the wordline are provided in the single layer of Fig. 3” in contrast to Osada’s multi-layer arrangement.
• In fact, the “single local interconnect layer” limitation was specifically added to the claims in order to distinguish the invention from Osada.

The majority opinion authored by Judge Chen and joined by Judge Taranto rejected the patentee’s arguments — providing two key conclusions:

1. The prosecution history statements did not clearly limit the claim scope but rather were too ambiguous and vague to constitute a disavowal of claim scope.
2. Figure 3 does not clearly require lateral routing.  Rather, Figure 3 only showed a single contact point on each relevant interconnect, rather than contacts on both ends that would necessitate lateral routing along the length.

Judge Dyk’s dissent, on the other hand, pointed to the prosecution history statements referencing Figure 3 as limiting the claim scope to lateral routing to overcome the prior art.  Unlike the majority, Judge Dyk looked more to the purpose and context of the prosecution history rather than just the plain language.

Unpatentability Affirmed.

= = =

The standard conventional wisdom for patent prosecution is that a more limited record is better than one full of prosecution history statements and declarations.  That approach has the benefit and tendency to lead to broader claim construction. But, this case represents another example of how that broad approach can come back to bite the patentee — especially in today’s world of AIA trials.

The conventional patent prosecution wisdom has long been that fewer prosecution history statements are generally better — because they allow for broader claim construction down the road. This approach stems from the desire to avoid unintentional disavowals or limitations on claim scope. However, as this case illustrates, that strategy can come back to haunt patentees in AIA trials.

In the current post-AIA environment, patent claims are frequently challenged in inter partes reviews (IPRs) before PTAB judges who are ready and willing to delve into the prior art to in a detailed obviousness analysis. Thus, patentees today find themselves arguing for narrower interpretations to avoid prior art — but are lacking clear prosecution history support. Vague or ambiguous statements meant to preserve claim scope have been be inadequate for this task as are intentionally broad and ambiguous claim limitations. This approach left Monterey’s claims vulnerable to invalidity in light of the broader interpretation.

by Dennis Crouch

The idea of “techno-optimism” has been gaining traction lately, thanks to wealthy venture capitalist Marc Andreessen. In his recent essay “The Techno-Optimism Manifesto,” Andreessen lays out his vision of how constant technological development leads to to abundance, progress, and human flourishing.

At its core, techno-optimism is the belief that technological innovation is an inherent good that we should actively encourage as a society.  Many go further and view technological advance as the only way for humanity to survive and thrive.

We believe that there is no material problem – whether created by nature or by technology – that cannot be solved with more technology. . . . Give us a real world problem, and we can invent technology that will solve it.

Andreessen’s sees a potential future of unlimited clean energy, material abundance, and exponential progress driven by AI.

Andreessen’s techno-optimism is enmeshed with his libertarian notions of laissez faire no-regulation, no worries for sustainability beyond the market, and no social responsibility or civic duty.  Truthfully, Andreessen’s manifesto appears fairly unhinged once you delve into the particular theocracy, but may be reflective of the mindset of the investment elite.  Still, if I can pick and choose, then I can find substantial merit with the general idea of optimism that technology can help the human condition.

Andreessen’s manifesto does not mention patents or intellectual property directly. I see a good amount of alignment, as well as some tension with his particular views.

The general ethos of embracing technology for the betterment of humankind aligns closely with the rationale behind the U.S. patent system. Since its origins, the patent system has been premised on the idea that providing inventors with exclusive rights over their creations for a limited time will incentivize technological innovation — and thus “promote the progress.”  By granting patents, society encourages inventors to push boundaries and also disclose their breakthroughs in ways that foster further innovation.

Like techno-optimist theory, the U.S. patent system is built on the belief that technological progress is good for society. While patents do create the potential of temporary monopolies, the intended outcome is faster innovation and diffusion of knowledge over the long-term.  Andreessen’s pro-capital pro-property stance suggests general support for the system despite the temporary limits on competition. But, the major complaint about the patent system is that  it can begin to appear like a form of regulation that is picking winners without actually promoting innovation.

Another coupling here is that techno-optimists believe that a small innovators can change the world and should be rewarded for their successful endeavors.  In this vein, patent rights are a key tool to facilitate competition against against large established players. Patents help level the playing field.

by Dennis Crouch

WSOU Investments LLC v. Google LLC, Nos. 2022-1063, 2022-1065 (Fed. Cir. Oct. 19, 2023)

WDTX District Court Judge Alan Albright sided with the accused infringer in this case — holding that the asserted claims were invalid as indefinite.  The setup here is a common scene: means plus function (MPF) claim limitations without adequate support in the specification.

Most commonly patentees draft claims that cover the physical structure of an invention or the particular steps taken in a process. However, the Patent Act also permits a patentee to claim the elements of an invention as “means for” accomplishing a specified function without actually claiming the structural components. Although a “means for holding hot coffee” appears potentially broader than claiming a “ceramic mug,” the statute itself places key limits on the scope of these so-called “means plus function” claims. In particular, a means for limitation is interpreted to only cover the “corresponding structure” disclosed in the specification and their equivalents. 35 U.S.C. § 112(f). And, a series of Federal Circuit cases have created a bright line rule that a means-plus-function limitation will render the entire claim invalid as indefinite in situations where no corresponding structure is provided in the specification. This is the case even in situations where various ways to perform the claimed means are well known to those of skill in the art. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337-38 (Fed. Cir. 2008).  In this situation, my “means for holding hot coffee” might not even cover a ceramic mug if the specification itself only discloses paper cups. And, the claim would be invalid if it failed to disclose any particular embodiments of a hot-coffee-holding device.

A patentee intending to invoke 112(f) style claiming will typically use the magic words “means for …” However, the Federal Circuit concluded that claim meaning is a matter of objective analysis, rather than subjective intent.  In MPF analysys, the court looks beyond the magic words and more generally ask whether the limitation recites a non-structural “nonce” word.  A “nonce” word is a verbal construct that does not convey a particular structure, such as “element,” “device,” or other generic, non-structural terms.  When a nonce word is interpreted in means plus function form, the corresponding structure in the specification must be something more than a repeat of the same nonce word — lest the claim be found invalid as indefinite.

In this case, the two patents at issue are related to image tracking technology (the ‘045 patent) and gesture control technology (the ‘825 patent).  The following claim terms were the ones disputed:

1. “a processor configured to …” (‘045 patent)
2. “at least one memory and the computer program code are configured, with the at least one processor, to cause the apparatus to …” (”825 patent)

U.S. Patent Nos. 8,965,045 and 9,335,825.

Judge Albright found each of these underlined terms to be in “nonce” form and therefore applied MPF analysis.  A processor is a means for processing; a memory is a means for storing data; etc.  According to Judge Albright, the patent document did not provide any further structural disclosure beyond the functional words — thus rendering the claims indefinite.

On appeal, WSOU argued on appeal that the limitations were not means-plus-function limitations, and thus § 112, ¶ 6 did not apply. Alternatively, it argued the specifications disclosed adequate structure.

As to the ’045 patent, the Federal Circuit affirmed the district court’s determination that the “processor” limitation invoked § 112, ¶ 6 because in the context of the claims and specification it was described only functionally and generically. The court concluded that the patentee had focused its arguments on the processor being not-MPF and had waived any arguments regarding corresponding structure. “WSOU argues for the first time on appeal that the specification discloses corresponding structure.”

As to the ’825 patent, the Federal Circuit reversed. It held that the “memory,” “code,” and “processor” limitations in this patent, read in context of the claims and specification, would connote sufficient structure to avoid § 112, ¶ 6. The court distinguished the ’825 patent’s more specific description of these elements.

So, we have the word “processor” interpreted as a nonce word invoking MPF analysis in one patent; but a structural limitation in the second patent.   The difference here is that in the ‘045 patent, the patentee “treats the word ‘processor’ so broadly as to generically be any structure that manipulates data” but without providing specific examples.  On the other hand, the ‘825 patent included a much more concrete explanation of the term. The court explained:

In contrast to the ‘045 patent, the specification [in the ‘825 patent] describes the ‘processor’ as hardware that runs the computer program code. Specifically, the specification teaches that the term ‘processor’ is synonymous with terms like controller and computer and ‘should be understood to encompass not only computers having different architectures such as single/multi-processor architectures and sequential (Von Neumann)/parallel architectures but also specialized circuits such as field-programmable gate arrays (FPGA), application specific circuits (ASIC), signal processing devices and other devices.’

Thus, the intrinsic evidence from the specification justified the distinction.  One odd note here is that I did read through the ‘045 patent and it does seem to include a bit more than what was suggested by the court. In particular, the ‘045 patent has the same quoted statement that a processor:

should be understood to encompass not only computers having different architectures such as single/multi-processor architectures and sequential (Von Neumann)/parallel architectures but also specialized circuits such as field-programmable gate arrays (FPGA), application specific circuits (ASIC), signal processing devices and other processing circuitry. …

‘045 patent. In addition, the ‘045 patent indicates that a processor could be configured as “processing circuitry” that includes a combination of implementations including microprocessor(s).

The Federal Circuit did not consider these factual similarities because, apparently the patentee raised them as to the ‘045 for the first time on appeal.   If I were the patentee, I might review this decision carefully and consider whether a request for panel rehearing is appropriate — is it true that the patentee only preserved the structure argument as to one of the patents?

In any event, the case is interesting for the outcome — the Federal Circuit finding that Judge Albright is being too tough on patentees.

by Dennis Crouch

ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023).

We have another precedential Federal Circuit decision that turns on the meaning of the simplest word in the English language: “A.”

Cytonome’s US Patent No. 10,583,439 covers a microfluidic device for processing particles of interest in a sample fluid. The claim requires

an inlet configured to receive a sample stream; [and]
a fluid focusing region configured to focus the sample stream;. . .

= = = =

One question I have is whether the patent is now also likely invalid for lack of enablement and written description because it claims one or more streams while disclosing only one stream in original specification.

by Dennis Crouch

In the trademark case of Great Concepts, LLC v. Chutter, Inc., No. 2022-1212 (Fed. Cir. Oct. 18, 2023), the Federal Circuit addressed whether fraud in a declaration of incontestability justifies cancelling the underlying trademark registration. Writing for the majority, Judge Stark held the TTAB lacked this authority under the Lanham Act. Stark reversed the TTAB’s cancellation order, finding the statute only permits cancellation for fraudulent acts taken while obtaining the registration, not for establishing incontestability. Dissenting, Judge Reyna argued this improperly restricts the TTAB’s ability to combat fraud before the agency. Their disagreement centers on the scope of “maintaining” a registration and policy concerns over deterring false statements.  Over the past several years, the global trademark systems have faced increasing fraudulent activity and this decision serve as a call for Congressional reforms.

The case also raises important issues associated with our ever-more-powerful administrative state. Although US courts are empowered by equity to counteract fraud on the system, administrative agencies are typically much more limited in their actions.  Of course, this balance of powers question goes far beyond the patent and trademark systems.

Great Concepts applied to register the mark “DANTANNA’S” for restaurant services in 2003.  The company runs restaurants of the same name in the Atlanta area that are described as “upscale” sports bars. I’m sure they are lovely.

The DANTANA’S mark registered in 2005 as Registration No. 2929764. In 2006, Chutter, Inc.’s predecessor Dan Tana petitioned to cancel the registration, alleging a likelihood of confusion with his common law “DAN TANA” restaurant mark.  For the Italian place in Santa Monica. The cancellation proceeding was eventually dismissed in 2010 for failure to prosecute.

Meanwhile in 2010, Great Concepts’ former attorney Frederick Taylor filed a combined declaration with the USPTO seeking to maintain the registration under Section 8 and also to obtain incontestable status under Section 15. The Section 15 declaration falsely stated no proceedings involving the DANTANNA’S mark were pending, when in fact the cancellation proceeding and related litigation were still ongoing.

In 2015, Chutter filed a new petition to cancel the DANTANNA’S registration, alleging Taylor’s Section 15 declaration constituted fraud warranting cancellation under Section 14 of the Lanham Act. The TTAB agreed, finding Taylor knowingly made false statements with intent to deceive the USPTO. It held the fraudulent declaration enabled Great Concepts to obtain new incontestable rights. Great Concepts appealed the cancellation order to the Federal Circuit.

The dispute here involves two adjacent provisions of the Federal Trademark statute known as the Lanham Act of 1946 (as  amended). Lets look at the statute.

Section 15 of the Lanham Act spells out the process of moving a mark to “incontestability” status.  15 U.S.C. § 1065.   Important for the purposes of this case, the process requires the mark owner to file “an affidavit … with the Director” making a variety of required statements. To be effective, the affidavit must include a statement that “there is no proceeding involving said rights pending.”  Id. As mentioned above, Great Concepts made such a statement at a time when a case was still pending.

Section 14 empowers the USPTO to act on a petition to cancel a registered trademark. 15 U.S.C. § 1064(3).  The law provides several reasons why a registration might be cancelled:

• Mark becomes generic for the goods;
• Mark is functional;
• Mark was abandoned;
• “Registration” was “obtained fraudulently”;
• etc.

Id.  In considering Section 14, The majority concluded that it does not cover fraudulent Section 15 incontestability declarations.  The closest hook that the majority found was cancelling a mark if the registration was obtained fraudulently, but the majority found that not close enough.  Judge Stark explained “a Section 15 declaration only relates to a mark’s incontestability, not its registration.”  On this point, the court distinguished the case of Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986). In Torres, the the focus was on renewal under Section 8 that requires, and the court held that “[f]raud in obtaining renewal of a registration amounts to fraud in obtaining a registration within the meaning of section 14(c) of the Lanham Act.”  Id. But, the majority distinguished Torres as tied to registration because the mark would be lost absent a Section 8 renewal filing; whereas the mark is not lost based upon failure to file Section 15 incontestability docs. Truthfully, I expect that the majority here would have decided Torres differently, but they are bound by the precedent set.  As an aside: Great Lakes had simultaneously filed a Section 8 renewal with its incorrect Section 15 document, but the majority also concluded that the two should be treated as separate acts, and no fraud was found in the Section 8 filings.

The parties also pointed to conflicting statements from treatises and law reviews on the subject:

• Jerome Gilson & Anne Gilson Lalonde, Trademarks § 9.03 (2022)) (“A fraudulent Section 15 affidavit is grounds for cancellation of the registration under Section 14(3).”).
• J. Thomas McCarthy, Trademarks and Unfair Competition, § 31.81 (“[F]raud in a Section 15 incontestability affidavit or declaration should serve only to eliminate the incontestable status of the registration and not result in cancellation of the registration itself.”).
• Theodore H. Davis Jr. & Lauren Brenner, Allegations of Fraudulent Procurement and Maintenance of Federal Registrations Since In re Bose Corp., 104 Trademark Rep. 933, 998-99 (2015) (even if not permitted under the statute, the courts should permit  this extra-statutory basis for cancellation)

Writing in dissent, Judge Reyna argued the majority improperly restricted the TTAB’s ability to combat fraud before the agency. He contended Section 15 declarations allow registrants to maintain their rights, placing such filings under Section 14’s umbrella for fraud in maintaining a registration. Reyna accused the majority of “constructing a milepost” in the trademark process “at which point (Section 15) fraudulent wrongdoing is green-lighted.”

In Reyna’s view, the TTAB has discretion to fashion appropriate remedies for fraud at any stage of the trademark continuum. He saw no principled rationale for the majority’s rule prohibiting cancellation for Section 15 fraud. Reyna also disagreed with imposing an artificially narrow definition of “maintaining” a registration that excludes incontestability declarations. He noted the USPTO itself advises the public that Section 15 is a maintenance filing. Beyond textual disputes, Reyna argued fraud should never be condoned at any point in agency proceedings.

The majority responded to these policy arguments with a statement that “We certainly do not intend by our holding today to encourage fraud – of any type.”  The majority goes on to agree that “some significant sanction” should be available to deter fraud.  The Federal Circuit noted that one such penalty approved in the old CCPA case of Duffy-Mott is to “remove the mark’s incontestability status.”  At least at that point the mark owner “will have a harder time preserving the validity of its registered mark” either in court or via TTAB challenge.   The majority also noted that the TTAB is empowered to “sanction any attorney who commits fraud before it.”  The court noted that such a filing may subject the attorney to a variety of penalties, including criminal prosecution.

Still, the majority concluded that it was bound by the statute — that Congress provided a closed list of reasons for cancelling a mark, and the markholder’s action here does not fit within that list:

Even if it were true that our decision would result in an unwelcome increase in fraud perpetrated against the Board – which, again, we do not believe it will – we would nonetheless adhere to the unambiguous language of the statute. . . . Whether we would prefer a different result be reflected in the statute is irrelevant to our responsibility to decide the case before us based on the law as it exists.

Slip Op. They are just calling balls and strikes.

On LinkedIn I’m asking folks about continuation practice: Should it be OK to amend claims in a continuation to cover a competitor’s new product?

I don’t think I’ve seen such a lopsided poll outcome in quite a while with 93% so far indicating “Yes” it should be OK, assuming that the new claims create no enablement or written description problem.  There is still time to add your vote. (I think you have to login to vote).

by Dennis Crouch

Impact of Sonos on Patent Prosecution: The recent Sonos v. Google decision threatens to grind to a halt, or at least significantly restrict, a once-common patent prosecution strategy – keeping continuation applications pending for years to obtain new claims that cover marketplace developments. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  In Sonos, Judge Alsup found Sonos’s patents unenforceable due to prosecution laches, despite Sonos diligently prosecuting related applications for 13 years; serially filing a continuation with each allowance. The decision casts doubt on the viability of pending continuation applications over a long period, even absent any evident applicant delay — especially in situations where new claims are drafted in response to emerging technologies or market demands. Although claim fluidity remains an integral principle in patent law, Sonos adds considerable viscosity to the practice. The viability of continuation strategies, especially in rapidly evolving technologies, may face a reckoning in the wake of Sonos.  The patentee will certainly appeal, but it is not clear that the Federal Circuit will change the path in any way.

Understanding Claim Fluidity: One feature of the US patent system is claim fluidity.  Most claims are amended during prosecution. Most patents claim priority back to an earlier filing with different claims.  Claims can later be amended during a post-grant proceeding. And, to make things clear the reissue state permits a patentee to alter the claims to cover in situations where the original patent claims “more or less than he had a right to claim in the patent.” 35 U.S.C. 251.

Although reissue applications are always available during the life of a patent, they have major downsides, including the two year post-grant timeline for enlarging patent scope. Id. The alternative approach followed by most is to “keep a family member alive” in areas involving technology important to the patentee.  As one family-member patent is about to issue (or be abandoned), the patentee makes sure to file a continuation application with a new set of patent claims and claiming priority back to the original filing documents.

In developing that new set of claims, the patentee will typically consider the marketplace. What market developments have occurred since the original filing date? Some of these developments may be internal — looking at their own current and future product line.  Some of the developments will also be external — looking to see how others have begun using aspects of the disclosed invention.  We then craft claims that cover these new developments; being wary to ensure that the patentee has “a right to claim” this new coverage.  This right to claim is ordinarily measured by the doctrines of enablement and written description and during prosecution we also look to the prohibition on new-matter under 35 U.S.C. § 132.

Sonos v. Google: Judge Alsup’s new decision in Sonos v. Google suggests that this common approach should come to an end. In particular, the court concluded that Sonos’ asserted claims were unenforceable because they had been added to a continuation application filed 13-years after the original priority document in a way that was prejudicial to the behemoth Google.

The essence of this order is that the patents issued after an unreasonable, inexcusable, and prejudicial delay of over thirteen years by the patent holder, Sonos. Sonos filed the provisional application from which the patents in suit claim priority in 2006.

Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  Judge Alsup goes on:

Trial brought to light what happened here. This was not a case of an inventor leading the industry to something new. This was a case of the industry leading with something new and, only then, an inventor coming out of the woodwork to say that he had come up with the idea first — wringing fresh claims to read on a competitor’s products from an ancient application. . . . It is wrong that our patent system was used in this way. With its constitutional underpinnings, this system is intended to promote and protect innovation. Here, by contrast, it was used to punish an innovator and to enrich a pretender by delay and sleight of hand. It has taken a full trial to learn this sad fact, but, at long last, a measure of justice is done.

Id.

The basic setup here is not simply a delay.  Judge Alsup concluded that Sonos learned of a particular feature from Google (allowing a speaker to be in two different zones). And, that Sonos later filed a continuation application that included claims to the new feature. Meanwhile Google invested in the technology and launched its own products.

New Matter and Priority Claims: An odd aspect of the decision is that Judge Alsup concluded that the new feature constituted “new matter” that “[u]nder black letter patent law … necessarily sunk any claim of priority.”   Of course, “new matter” does not actually tank priority claims.  Rather, the priority question depends upon a proper claim and sufficient support as guided by the doctrines of enablement and written description. But Judge Alsup appears to have felt misled regarding the priority issue earlier in the case. At that prior stage, Google had failed to present certain evidence showing lack of priority. Judge Alsup seems to feel he was duped into accepting Sonos’ priority claim. As he put it:

Put another way, ‘I got a half a deck of cards’ and ‘I was not told the complete truth.’ . . . To repeat, the judge was not made aware in the briefing (or at the hearing, or otherwise until trial,) that this sentence had been inserted by amendment in August 2019. That, alone, would have been a red flag.

Id.  The opinion shows Judge Alsup’s displeasure at feeling he was not given the full story by Sonos earlier in the case. He seems to take particular issue with Sonos relying on specification language that was added years later by amendment.  He similarly did not fault Google for failing to discover the issue since the prosecution history is quite complex.

Potential Repercussions for Patent Prosecutors and Portfolio Managers: The case is obviously a major one that patent prosecutors and portfolio managers should consider.  The decision suggests strongly that the common patent prosecution strategy of keeping continuation applications pending to obtain new claims may be disfavored – at least when done over a decade or more as well its use to obtain new claims covering market developments.

Diligence in Prosecution Not a Justification for Delay: Unlike prior cases such as Hyatt, the patentee was diligently prosecuting the patents during the entire period. However, the court found that diligence “does not render the delay any less unreasonable and inexcusable. Indeed, it renders the delay all the more unreasonable and inexcusable.” The court explained that Sonos “could have filed parallel applications with new claims covering the invention” and did not have to “run out its string of inert applications before turning to claim the invention that mattered.”

Patent Term and Prosecution Laches: The Hyatt and Lemelson cases adopted by the Federal Circuit focused on pre-1995 patent applications. The old system provided an incentive for delay during prosecution because the patent term of 17 years began running as of the patent issuance date.  The result was the potential of greatly increasing the effective patent term.  That incentive for delay no longer exists because post-1995 patents (like those of Sonos) have a patent term that runs from the non-provisional filing date.  Thus, each  day of delay ate into the Sonos patent term.  There is some support for the idea that prosecution laches no longer applies in this new system because of the congressionally created limited term of 20 years that begins with the start of prosecution in a manner that is closely parallel to a statute of limitations.  In recent cases, the Supreme Court has held that laches is not a proper defense to damages claims when a statute of limitations is in place.  Still, Judge Alsup concluded that the change in patent term has no impact on the doctrine of prosecution laches.

The Future of Claim Fluidity and Patent Strategy: In the case, a jury had sided with the patent holder Sonos and awarded $32 million in back damages.  Judge Alsup’s decision flips that verdict and also kills any plans Sonos had to exert its exclusive rights over the marketplace. While claim fluidity remains an integral feature of patent law, Sonos has added considerable viscosity to the system.

by Dennis Crouch

The Federal Circuit’s new Finjan decision once again focuses attention on what I call patent law’s “indefinite article shuffle.” Finjan v. SonicWall — F.4th — (Fed. Cir. 2023).

Although patent courts do interpret the indefinite article “a” as allowing for a plural meaning, they generally do not permit a change in the associated noun. Let me explain. Here, the patentee Finjan claimed “a computer” performing a certain operation and later referred to “the computer” performing another operation. The accused infringer SonicWall was using two different computers for these operations and the patentee sought a construction that relied upon the presumed plurality to encompass the accused activity. The district court refused and awarded summary judgment of non-infringement. On appeal, the Federal Circuit affirmed, finding that the transition from “a computer” to “the computer” requires the same computer perform both operations. As the court explained, “the use of ‘the’ also indicates the claimed term refers to an antecedent term.” Slip op. at 17 (citing Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313 (Fed. Cir. 2016)). Thus, the reference to “the computer” tied back to the same “a computer” initially recited, requiring a single computer be able to perform both steps.

The Federal Circuit issued a similar opinion earlier in 2023 in Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (Fed. Cir. 2023). In Salazar, the court explained that “while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.” Id. See also Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015).

Although I agree with the Federal Circuit’s decision here as to both the claim construction and non-infringement, it also appears to be a clear situation where the doctrine of equivalents could save the patentee.  However prosecution history estoppel may be a problem for the patentee on the DOE front because one of the “computer” references was added during prosecution in order to move the case toward allowance.

= = =

The district court also found another set of claims not infringed — this time based upon an agreed claim construction of the term “downloadable.” The patents relate to cybersecurity technology for protecting network-connected devices from malware, and these patents particularly related to identifying and stopping malware downloads: U.S. Patent Nos. 8,677,494; 6,154,844; 6,804,780; and 7,613,926.

These all require receiving a “downloadable” and the parties had agreed to define a downloadable is an “executable application” that is downloaded and “run” on the destination computer. The problem for the patentee is that SonicWall’s software receives data packets but never reassembles them into an executable application.  Rather, the accused SonicWall product operates by inspecting the payload on a packet-by-packet basis and then sends each packet to its destination without reassembling the file.

Based upon this uncontroverted evidence of how SonicWall operates and the agreed upon claim construction, the district court awarded summary judgment of non-infringement to the accused infringer.  On appeal, the Federal Circuit affirmed — finding that the district court did not “impermissibly deviate[] from the parties’ agreed-upon construction” but rather only “elaborat[ed]” upon inherent aspects of the construction.

On appeal, the patentee raised a number of claim construction arguments that may have carried weight in an ordinary claim construction context. Here those arguments were rejected as the court repeatedly returned to the text of the stipulated claim construction that the patentee had agreed to.

We do not permit parties on appeal to raise claim construction arguments challenging a stipulated construction.  See, e.g., Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1322 (Fed. Cir. 2013); see also Traxcell Techs., LLC v. Sprint Commc’ns Co. LP, 15 F.4th 1121, 1129 (Fed. Cir. 2021) (“Now Traxcell insists in retrospect that this construction was wrong. But having stipulated to it, Traxcell cannot pull an about-face.”).

Slip Op. at 12.  Judge Bryson wrote in dissent noted that the district court’s construction leads to absurd results based upon how the internet works. No device ever ‘receives’ an already assembled executable program; rather folks receive the packets and that is seen as the equivalent of receiving the program.  Bryson then went further and argued that the district court overstepped the bounds of the agreed-upon construction.

SonicWall argues that Finjan agreed to the construction of the term Downloadable and is stuck with the consequences, even if the consequences are that the patent reads on no embodiments. In fact, however, the record reflects that although the parties to the construction of the term Downloadable, they did not share thesame understanding of the term “executable,” as used in that construction, a point that became clear during the summary judgment argument. By agreeing to the construction of the term Downloadable, Finjan did not acquiesce in the interpretation of the court’s construction of “executable,” which was that an “executable” file must be executable without any further processing, rather than being capable of execution after, for example, being reconstructed following its transmission in packetized form.

Dissent at 3-4. In Judge Bryson’s view, the district court interpreted “executable” too narrowly in a way that effectively altered the agreed-upon construction. Although Finjan agreed to the overall construction of “Downloadable,” it did not agree to the district court’s implicit interpretation of “executable” as requiring executability upon receipt.

= = =

The final issue in the case was the district court’s decision that a number of the asserted claims were invalid. In fact, the district court did not make this ruling on the merits, but rather used the procedural tool of issue preclusion (collateral estoppel) since the claims had been held invalid in a prior dispute.

Issue preclusion prevents a party from relitigating an issue that has already been actually litigated and necessarily determined by a final judgment in a prior case. Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022). Issue preclusion always involves two different cases, and the question is whether some determination in the first case will preclude the parties from relitigating the issue in a subsequent case.  The doctrine applies when: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) the party against whom issue preclusion is asserted had a full and fair opportunity to litigate the issue in the first action. Id. Issue preclusion can bar relitigation of both questions of law and questions of fact.

Issue preclusion can attach as soon as a final judgment is reached in one case, even before any appeals are exhausted. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367 (Fed. Cir. 2013). This allows parties to rely on a decision without waiting for appeals to conclude. However, if the decision providing the basis for issue preclusion is later overturned on appeal, this eliminates the ability to continue to rely on issue preclusion. Mills v. City of Covina, 921 F.3d 1161, 1170 n.2 (9th Cir. 2019). Since the overturned judgment can no longer have preclusive effect, any issue preclusion decisions relying on it must also fall away. This is what happened in Finjan v. SonicWall with the court vacating the invalidity holding.  Based upon my reading, this outcome does not save the patentee’s case against SonicWall (Because of the non-infringement findings), it does allow Finjan to continue to assert its patents against others.

I was reading through a recent trial transcript and enjoyed the following historical introduction to the jury system offered by Judge Gilstrap.  He was talking to the potential jurors as voir dire was just about to begin.  — Dennis

= = =

We are engaged or about to be engaged this morning in the selection of a jury in the civil case involving allegations of patent infringement. If you’d indulge me, though, for just a minute, I’d like to briefly review with you at this juncture how we came to have our American civil jury trial system.

If you go back in ancient history, if you start with the first five books in the Old Testament, the Pentateuch, you will find that the ancient Hebrew nation impaneled juries to decide issues of property ownership and property value.

The Greeks, the ancient Greeks, began using a jury system about 1500 B C. The Romans, as with many other things, copied the jury system from the Greeks and implemented a jury system as a part of ancient Rome. And, in fact, it was the Romans that brought the jury system to Europe across the English Channel into what we now know as Great Britain when they conquered Great Britain in the fourth century A.D.

Now, by the 12th century A.D., the jury system had been in place in England, what we now know as England, for 800 years. But in the 12th century A.D., a rather tyrannical king came to the throne of England and his name was King John. And he became embroiled in various disputes with his nobles that nearly led to the verge of a civil war.

One of those disputes was the king’s efforts to do away with the right to trial by jury. Thankfully, the civil war did not take place at that time, and the king and his nobles resolved their many disputes, including this one, by entering into a written agreement that they signed at a place in England called Runnymede. And this agreement that settled all these disputes and laid out a structure for that country going forward, including guarantees of the right to trial by jury, is a document many of you may have heard of called the Magna Carta.

And so you can see, ladies and gentlemen, that our British forefathers who came to this continent as colonists brought the jury trial system with them. And the jury trial system flourished in colonial America for over a hundred years, until another tyrannical king came to the throne of Great Britain. This time his name was King George III. I’m sure you’ve have studied him in American history that led up to our American revolutionary war. And the king, prior to that, became embroiled in many disputes with his American colonists.

One of those disputes was King George III efforts was to do away with or to substantially curtail the right to trial by jury. In fact, ladies and gentlemen, when Thomas Jefferson sat down to write the Declaration of Independence which spells out — it really was a letter to the king telling the king all of the reasons why his subjects in America felt they had no other option but to revolt, declare their independence, and form their own independent nation, one of those reasons set forth by Thomas Jefferson in the Declaration of Independence for that separation between America and Britain was King George III’s efforts to do away with or curtail substantially the right to trial by jury.

And as you’re all aware, we did revolt against Great Britain, we did form our own independent nation, and shortly thereafter we adopted the governing document for our country, the supreme law of the land, the Constitution of the United States.

And immediately after the Constitution was ratified, there were ten additions or amendments added to the Constitution. Many of the states made it clear they would not vote to ratify the Constitution without a commitment to immediately add these ten amendments. And these ten amendments you’ve all studied about in school. They’re called the Bill of Rights. And in those first ten amendments to the Constitution, you will find the Seventh Amendment to the Constitution, which guarantees, ladies and gentlemen, the right to every American citizen to have their civil disputes resolved through a trial by jury. Those ten amendments, the Bill of Rights, were all ratified in 1791. So since 1791, well over 200 years ago, every American has had a constitutionally guaranteed right to have their civil disputes settled through a trial by jury.

So by being here this morning, with that brief background and overview of how we got to have the jury trial system that we’re implementing today, I want you to realize in the Court’s view every one of you here are doing a very important part to preserve, protect, and defend the right to trial by a jury as part of our constitutionally guaranteed rights. I always tell citizens who appear for jury duty as you have this morning that, in my personal view, the jury duty or jury service rendered by any citizen is the second highest form of public service any American can render for their country. In my personal view, the highest form of public service are those men and women that serve in our armed forces.

Now, later in the process this morning, the lawyers for both sides are going to address you. They’re going to ask you questions. I want you to understand none of them are seeking to inquire unduly into your personal affairs. Said another way, none of them are trying to be nosy and to ask you about things that are not relevant to this case. They will be asking you questions as a part of working with the Court to secure a fair and an impartial jury from among you to hear the evidence in this case. I want you to also understand when the lawyers ask you questions later as a part of this process, there are no wrong answers, as long as the answers you give are full, complete, and truthful. As long as they’re full, complete, and truthful, there are no wrong answers. . .

Finesse Wireless LLC v. AT&T Mobility LLC, Docket No. 2_21-cv-00316 (E.D. Tex. Aug 23, 2021) (trial transcript day 1).