I have several public events coming up over the next few months that I’m looking forward to. I always enjoy the opportunity to connect with old friends and meet new people who are ready to dig into the details of intellectual property law. Let me know if you want to meet up. — Dennis
I’ll be joining a year-in-review plenary session on the final day of the AIPLA Annual Meeting moderated by Melissa Pytel of Entrada Therapeutics. This year we’re limiting the focus to patent law & trademark law. My fellow panelist is trademark expert Richard Mandel of Cowan Liebowitz and we’ll be providing a year-in-review plenary session for the conference. The event is always interesting to me with 50+ speakers and hundreds of global IP specialists in attendances. I’ll be looking out for PTO Director Kathi Vidal and Patent Commissioner Vaishali Udupa.
I’m honored to be delivering the keynote address at this conference hosted by The Center for American and International Law. For my talk, I’m planning to offer an outlook on the future of IP in the US. This is a great event that I’ve attended in the past and I’m looking forward to hearing from PTAB Vice Chief Judge Michael Tierney of the PTAB as well as the afternoon IP Trivia Session led by Matt Cornelia (McGuire Woods) and Bethany Salpietra (Baker Botts).
IP Timely Topics CLE – November 14, 2023 – Washington State Bar Association
I’m delighted to be presenting again this year at the Washington State Bar Association’s IP section meeting. My presentation will focus on the implications of the Amgen vs. Sanofi decision for both biotech and “regular” tech. This year’s meeting is virtual again — so you’ll just see flat personality.
To wrap up a busy few months, I’ll be speaking again at the IP&SKI CLE conference organized by Scott Alter and David Bernstein. Along with skiing and networking, we have an amazing lineup of speakers including Federal Circuit Judges Leonard Stark and Kara Stoll. I always look forward to reconnecting with colleagues at this unique IP event that takes place right on the slopes.
The high-stakes patent dispute between VirnetX and Apple continues with VirnetX’s new petition asking the Supreme Court to review two important Federal Circuit rulings. The VirnetX petition focuses on the Federal Circuit’s interpretation of the inter partes review (“IPR”) joinder provisions and the requirements of the Federal Vacancies Reform Act (“FVRA”).
The AIA Question: IPR Joinder Time Limits
Under the AIA, parties sued for patent infringement generally must seek inter partes review within one year of being served with the complaint. 35 U.S.C. § 315(b). But the provision goes on to permit joinder to an already-instituted IPR proceeding, stating that the one-year time limit “shall not apply to a request for joinder” under § 315(c). VirnetX argues that while the one-year limit does not apply to the joinder request itself, a party still must have “properly file[d] a petition”—including within the one-year period—to be eligible for joinder. This argument stems from the text of Section 315(c) that permits the Director to join a party “who properly files a petition…”
In the litigation below, VirnetX sued Apple for infringing patents on secure communications technology. Apple sought to challenge the patents’ validity through IPR, but its petitions were filed more than a year after VirnetX’s complaint and thus denied as untimely. Apple then joined IPRs filed by other challengers, and the Patent Trial and Appeal Board (“PTAB”) allowed that joinder despite the time-bar. VirnetX contends this contravenes § 315(b)’s time limit, as Apple never “properly file[d] a petition” within the statutory window.
The Federal Circuit upheld Apple’s joinder, construing § 315(b)’s time limit as inapplicable to a joinder request. VirnetX argues this nullifies § 315(b)’s clear time bar, allows defendants to evade the limit through improper joinder requests, and facilitates serial attacks on patents already upheld in court.
(b)Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(c)Joinder.— If the Director institutes an inter partes review, the Director … may join as a party to that inter partes review any person who properly files a petition under section 311 …
In addition to the direct statutory interpretation, VirnetX argues that the joinder work-around improperly enables Apple—with vast resources—to take control of the challengers’ invalidity case. It also contravenes the AIA’s purpose of providing an efficient and streamlined alternative to litigation. VirnetX contends the Federal Circuit’s reading warrants review given the importance of properly construing the AIA’s protections for patent owners.
The FVRA Question: Acting PTAB Officials
The second question concerns the Federal Circuit’s interpretation of the Federal Vacancies Reform Act, which governs temporary appointments to vacancies in Senate-confirmed offices. The FVRA establishes exclusive mechanisms for designating acting officials. 5 U.S.C. §§ 3345, 3347.
When VirnetX requested Director review of the PTAB’s decisions invalidating its patents, as required by Arthrex, Inc. v. Smith & Nephew, Inc., 141 S. Ct. 1970 (2021), the Director position was vacant. VirnetX’s request was denied by the Commissioner of Patents purportedly exercising the Director’s authority based on an agency succession order. However, at the time the Commissioner was neither the Director nor even the Acting Director. The FVRA includes a mechanism for the President to put into place a temporary officer, but that was not done. Rather, the PTO itself had created a succession plan authorizing the Commissioner to act. The problem with this approach is that it violates the FVRA on its terms.
In order to cut the knot, the Federal Circuit interpreted the FVRA to allow temporary performance of a Senate-confirmed officer’s duties if those duties could have been delegated by a USPTO Director. An example of this might be Section 132 that requires the Director to “notify the applicant” of any rejection or objection to a pending application.
VirnetX argues that the Federal Circuit’s interpretation construes FVRA into virtual nonexistence, since nearly all agency heads’ duties are delegable. It also undermines the Appointments Clause by allowing agencies to bypass the FVRA’s exclusive temporary appointment mechanisms.
VirnetX contends the Federal Circuit misread the FVRA’s text and precedent by importing a limited definition of “function or duty” from one FVRA provision into the entire statute. This important Appointments Clause issue, which arises frequently during presidential transitions, merits the Supreme Court’s review.
The petition notes that this has been growing across the Federal Government for more than a decade and these “fake” acting heads of agencies have been used ever more frequently in the past two administrations.
Further reading:
Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 2493 (2023). This is the case that most extensively discusses the FVRA issue.
Anne Joseph O’Connell, Actings, 120 Colum. L. Rev. 613 (2020). Outside of the patent context, this article provides substantial background on vacancies in Senate-confirmed offices and acting appointments.
Counsel of record Naveen Modi of Paul Hastings LLP represents VirnetX.
Most respondents have already waived their right to respond to VirnetX’s petition. The PTO Director, has waived her right to respond through DOJ counsel. Apple likewise waived response through counsel Mark Fleming of WilmerHale. And respondent Mangrove Partners Master Fund waived response through counsel James Bailey.
Only Black Swamp IP, LLC, which the PTAB allowed to join one of the IPR proceedings as an additional challenger to VirnetX’s patents, has not yet indicated whether it will file a response before the October 27 deadline.
The Supreme Court declined to hear an important patent eligibility case on October 2nd, denying certiorari in CareDx v. Natera. This leaves in place a Federal Circuit ruling that invalidated CareDx’s patents on its method for detecting organ transplant rejection.
The patents at issue covers breakthrough diagnostic technique using cell-free DNA to non-invasively detect organ transplant rejection. For over a decade, scientists had tried unsuccessfully to use cell-free DNA for this purpose. The key innovation was applying high-throughput DNA sequencing and identifying SNP thresholds to make the technique clinically useful. However, the lower courts ruled the patents invalid under the judicial exception to patent eligibility for natural phenomena.
The Supreme Court’s denial means this important legal issue remains unsettled. The Court’s Mayo/Alice framework for patent eligibility has been heavily criticized for over-invalidating diagnostic patents based on natural phenomena. But the Federal Circuit felt bound to apply it to CareDx’s patents. Justice Kavanaugh dissented from the cert denial, signaling his view that the Court should refine or reconsider its eligibility framework as applied to diagnostic patents.
For the medical diagnostics industry, the outcome is disappointing. These types of pioneering diagnostic techniques often require massive investment to develop clinically. Without reliable patent protection, investors may turn away from funding this research and scientists may avoid commercializing it. As a result, patients may never benefit from potentially life-saving tests.
Looking ahead, the eligibility framework will likely need to be addressed by the Supreme Court or Congress. Justice Kavanaugh’s dissent signals openness of at least one Justice, with four typically required to grant certiorari. Congress is also considering steps to revamp section 101 of the Patent Act, but action is unlikely prior to the 2024 election.
One eligibility petition is still pending in the case of ChromaDex, Inc. v. Elysium Health, Inc., No. 23-245. ChromaDex is asking the court to rationalize its natural phenomenon jurisprudence from Myriad with its abstract idea and law of nature jurisprudence from Alice/Mayo respectively. Does the same two part test apply to products of nature?
The Copyright Act has a seemingly simple three year statute of limitations:
No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.
17 U.S.C. 507(b). It is somewhat surprising then that the Supreme Court has just granted certiorari in a case asking whether the statute “precludes retrospective relief for acts that occurred more than three years before the filing of a lawsuit.” Warner Chappell Music, Inc. v. Nealy, 22-1078 (Supreme Court 2023). At first glance the answer appears to be clearly “no,” but in the case, the Eleventh Circuit sided with the copyright holder by concluding that the rule permits plaintiffs to recover damagers for earlier acts.
The particular dispute focuses on when the “claim accrued” — with the appellate court holding that the three year timeline does not begin until the owner “knows or has reason to know she was injured.” This so called “discovery rule” has been implied into many statutes of limitation, has been rejected for some doctrines. When it decided the important laches case of Petrella v. MGM, the Supreme Court highlighted that “[t]he overwhelming majority of courts use discovery accrual in copyright cases.” 572 U.S. 663 (2014). Still, without directly rejecting the discovery rule Petrella also stated that copyright damages are available “running only three years back from the date the complaint was filed.”
In the Subsequent case of SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017), the Supreme Court provided further input on the discovery rule — although still not deciding directly is applicability.
According to First Quality, § 286 of the Patent Act is different because it “turns only on when the infringer is sued, regardless of when the patentee learned of the infringement.”
This argument misunderstands the way in which statutes of limitations generally work. First Quality says that the accrual of a claim, the event that triggers the running of a statute of limitations, occurs when “a plaintiff knows of a cause of action,” but that is not ordinarily true. As we wrote in Petrella, “[a] claim ordinarily accrues when [a] plaintiff has a complete and present cause of action.” While some claims are subject to a “discovery rule” under which the limitations period begins when the plaintiff discovers or should have discovered the injury giving rise to the claim, that is not a universal feature of statutes of limitations. And in Petrella, we specifically noted that “we have not passed on the question” whether the Copyright Act’s statute of limitations is governed by such a rule.
The SCA Hygiene quote clarifies that statutes of limitations generally start running upon accrual of a claim, not discovery of the injury. The discovery rule that starts the clock upon discovery of the injury is an exception to the norm. The presumption then appears to be that the discovery rule will only be applied to a statute of limitations if there is some particular statutory interpretation reason to do so.
Petitioner’s key argument is that the 11th Circuit’s application of the discovery rule to allow damages beyond the 3-year lookback period conflicts with statements by the Supreme Court in Petrella v. MGM that recovery is limited to three years back from the date the complaint was filed. The responsive briefing pointed to a number of litigation issues, to suggest the case was a bad vehicle for certiorari. On the merits, they also focused on the damages provision, Section 504, that contains no 3-year limitation and also noted that Petrella‘s statements are not controlling because that case only held that laches does not apply as a defense; It did not limit damages to 3 years. In its brief the Chamber of Commerce warns against the discovery rule. The organization represents often-sued businesses and does not want to see a transdoctrinal nationwide discovery rule for federal courts that would extend the statutes of limitations against its members.
The Federal Circuit recently affirmed a PTAB IPR decision invalidating claims of Masimo U.S. Patent RE47,218 (“the ’218 patent”) as obvious under 35 U.S.C. § 103. Masimo Corp. v. Sotera Wireless, Inc., 2022-1415 (Fed. Cir. Sept. 28, 2023) (nonprecedential). The Federal Circuit panel of Judges Prost, Wallach, and Chen determined (1) the Board correctly construed the disputed claim terms and (2) its obviousness ruling was supported by substantial evidence. Id. (authored by Judge Wallach).
The case is yet another example of a patentee’s broad claim language and attempts to avoid limitations coming back to bite during IPR proceedings. Unlike a decade ago, patent prosecutors are operating in today’s AIA world where IPR challenges have become commonplace. The old model of broad-as-possible clearly has deficiencies. To withstand post-issuance validity challenges, prosecutors should carefully craft claims early on with an eye toward narrower scope and avoiding abstraction even if you are doing enough to satisfy the USPTO on 112 and 101. Prosecutors can take full advantage of the 20 ‘free’ claims to pursue both broad and narrow protection. In the case here, the patent owner may have benefited from prosecuting more specific claims early on, as the disclosure arguably supported narrower alternatives that an IPR petitioner would have struggled to knock out.
The ’218 patent relates to an adaptive alarm system for use with pulse oximetry sensors in patient monitoring. A common problem is nuisance alarms generated when oxygen saturation briefly goes outside preset limits. This patent aims to improve alarm management by making the thresholds adaptive based on the patient’s current SpO2 levels and trends. Basically, an alarm threshold is calculated based upon a patient’s recent SpO2 levels rather than based upon an objective predetermined standard. Key adaptive alarm functions are:
The alarm threshold changes over time based on the patient’s recent SpO2 level
But, the threshold offset shrinks as SpO2 drops closer to a minimum – making it more sensitive to drops when the patient’s readings are already low.
Sotera petitioned for inter partes review (IPR) challenging the claims as obvious over a combination of prior art references including U.S. Patent Nos. 7,079,035 (“Bock”) and 6,597,933 (“Kiani”), along with PCT Publication WO 2009/093159 (“Woehrle”). The Board instituted review and ultimately ruled all instituted claims obvious based on these references.
On appeal, Masimo first argued the Board misconstrued the claim limitation “trigger a second alarm based on . . . exceeding the second alarm threshold” in finding obviousness over Bock/Kiani. The Board had treated the requirement as a “condition precedent”, but ruled that the claim does not require that exceeding the threshold directly triggers the alarm. On appeal, the court found this consistent with the plain claim language under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and the specification.
We agree with the Board that the plain meaning of “based on” and “threshold” in claim 1 are both broad, and this broad claim language does not exclude the use of additional alarm thresholds or other conditions to trigger an alarm. Further, claim 5 depends from claim 1 and provides for an additional condition in the form of a time delay, and Masimo does not dispute that the meaning of “based on” allows for additional conditions for triggering an alarm. We also agree with the Board that disclosure of an embodiment in the specification that does not include any additional thresholds or conditions for triggering an alarm does not support reading such a limitation into the claim.
This intrinsic evidence thus supports construing “based on” and “threshold” broadly — a ruling that was key to upholding the Board’s obviousness determination.
Masimo also challenged the Board’s interpretation of “predetermined” in certain claims as referring to a predetermined formulaic calculation rather than a fixed value. Again, the Federal Circuit upheld the Board’s construction as entirely consistent with the adaptive alarm thresholds described in the claims.
Ben Katzenellenbogen from Knobbe argued for the patentee appellant. Rudy Telscher from Husch took the other side. The IPR case here relates to the parallel litigation still pending in Masimo Corp. v. Sotera Wireless, Inc. and Hon Hai Precision Industry Co. Ltd., Civil Action No. 3:19-cv-01100-BAS-NLS (S.D. Cal.). In that case, the patentee Masimo asserted nine patents, all of which were challenged in IPR petitions. The PTAB granted 8 of those and cancelled all the challenged claims. Parallel appeals are still pending in several of the others. The infringement litigation has been stayed pending outcome of the IPRs.
The U.S. Patent and Trademark Office (USPTO), International Trade Administration (ITA), and National Institute of Standards and Technology (NIST) have extended the deadline for public comments on their request for information on standards and intellectual property. The new deadline is November 6, 2023.
On September 11, 2023, the three agencies jointly published a request for comments in the Federal Register seeking input from stakeholders on issues related to standards and intellectual property, especially as they impact small and medium enterprises in critical and emerging technologies. This request complements a broader NIST request published on September 7, 2023 seeking comments on implementing the U.S. Government National Standards Strategy for Critical and Emerging Technologies. Both requests were originally due on October 11, 2023.
Specific topics of interest include:
Participation of U.S. firms in international technical standards development
Ability of U.S. companies to adopt technical standards to grow and compete globally
Issues small and medium enterprises face regarding technical standards and intellectual property
Fostering standardization of critical and emerging technologies
Policies related to standard essential patents (SEPs)
Technical standards play a critical role in ensuring interoperability and have potential benefits of both enhancing competition and driving innovation. Innovator companies can compete on implementation, quality, features, and price rather than controlling a proprietary technology that locks-in users. The standard interface becomes a platform for market competition. For nascent technologies, early standards adoption can help coordinates efforts to advance the state of the art.
The IP side of standards development and adoption can be fairly complex. Patents that cover technologies essential to implementing a standard are known as standard essential patents (SEPs). If not properly licensed, SEPs can enable patent holders to exert undue market power across entire industries. This highlights a need to balance rights of patent holders with obligations to license SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. Although I am not a fan of forced participation, there is a rationale for considering policy options to incentivize licensing of SEPs on FRAND terms, and discouraging patent holder from laying in wait until standards develop. For example, measures that increase transparency around patent declarations, licensing terms, and availability of dispute resolution may help balance good faith participation and voluntary consensus in standards bodies. Improved patent search and analysis can also help ensure that all SEPs are captured within the pool.
On the international level, standards and intellectual property issues are intricately linked to U.S. global competitiveness, especially in emerging technology areas. Divergent national/regional approaches can disadvantage U.S. technology companies as they expand globally — assuming growth in that direction. At the same time, those approaches open the door to price discrimination (and avoiding arbitrage) by selling products that only work within certain regional standards.
Submitting Comments:
To submit comments on the joint USPTO, ITA, and NIST request, refer to the Federal Register notice published on September 11, 2023. Comments can be submitted electronically via www.regulations.gov.
In most patent cases, the parties jointly agree to a system limiting the publication of confidential case information and typically file a stipulated motion for protective order seeking the a judicial order requiring the parties to comply. One problem with this approach is that it goes against our traditional notion that courts and court filings are open and accessible to the public. The purpose of open court records is to promote transparency and accountability in the judicial system. Public access to court records allows the public (including journalists) to monitor the work of the courts and acts as a check on the judicial process. However, the public is not a party to the lawsuit and so typically is not asked for input on protective orders. Sealing records and holding proceedings behind closed doors undermines public confidence in the courts and can create a perception that courts or the parties may be engaged in undisclosed improper or illegal activities. While there are valid reasons to keep certain information confidential in some cases, such as protecting trade secrets or personal information, restricting public access should be approached carefully and narrowly to balance the interests of the parties with the public’s right to open courts.
In its infringement case, Woodstream asserted two hummingbird feeder patents against competitor Nature’s Way. US11147246 and US11033007. The parties filed a joint motion for a protective order to keep confidential information secret during the pretrial discovery process. The defendant, Nature’s Way, then moved to file its claim construction brief under seal because it referred to documents designated “confidential” by the plaintiff, Woodstream. The confidential documents were emails by Woodstream employees giving opinions on the scope and interpretation of Woodstream’s patents at issue in the case. Of note, these emails had been disclosed during discovery since they were not privileged communications with attorneys, but rather discussions among business and engineering employees. Woodstream described the emails as follows:
The designated emails contain discussions between members of the Woodstream Engineering department, including Paul McQuillan, the SVP Research, Development, and Engineering regarding Woodstream’s
(1) approach to pursuing patent infringement claims against competitors, and
(2) an explanation of arguable ways competitors could avoid Woodstream’s patents.
These discussions involve both in-suit patents as well as an uninvolved patent. The public disclosure of this communication would disclose a roadmap to competitors for avoiding Woodstream’s patents and knowledge of Woodstream’s resources and strategy in protecting its patent rights.
Woodstream argued this email string constituted a trade secret and should remain sealed. But the court disagreed. Applying Ohio trade secrecy law, the court found the email did not actually contain trade secrets. To qualify as a trade secret, information must: (1) have independent economic value from being secret, and (2) be subject to reasonable efforts to maintain its secrecy. The court found Woodstream failed to show how its employee’s opinions on patent scope had independent economic value. Nor did Woodstream provide evidence showing efforts it took to keep the email secret.
The court then weighed the public’s interest in access to court records against any interest Woodstream had in keeping the email secret. The public interest in open records is strong because it allows the public to monitor the workings of the court system. As the Sixth Circuit has stated, “[u]nlike information merely exchanged between the parties, ‘[t]he public has a strong interest in obtaining the information contained in the court record.'” See Shane Grp., Inc. v. Blue Cross Blue Shield of Mich., 825 F.3d 299, 305 (6th Cir. 2016). Sealing records can undermine public confidence in the courts, as “sealing court records and proceedings ‘is generally impermissible’ due to the ‘strong presumption in favor of openness’ of court records.” See In re Nat’l Prescription Opiate Litig., 927 F.3d 919, 938-39 (6th Cir. 2019)).
The court found the public interest outweighed Woodstream’s interests because the email was directly relevant to the central issues in the case regarding claim construction and patent scope. “Lubic’s email is directly relevant to adjudicating Woodstream’s patent infringement and claim construction claims.” Therefore, public access to the email through the court record was warranted.
The court also ordered that any future motions to seal must be accompanied by both: (1) a motion explaining why sealing is appropriate, and (2) a public redacted version of the document.
Businesses often treat many aspects of their business and confidential. However, business confidential information does not necessarily rise to the level of importance required for a court to agree to filings under seal.
Opinions and analysis on scope and validity of your own patents likely do not qualify as trade secrets, even if useful to competitors. There must be independent economic value from secrecy and reasonable efforts to maintain the secrecy. In addition, it is important to note that these same emails may have been protected as privileged if they had been done as part of an attorney investigation into the potential lawsuit. Here though, no attorneys were even involved in the email conversation.
Once discovery materials reach the court record, the presumption of public access becomes very difficult to overcome. Only more compelling interests like trade secrets justify sealing records. This is a distinguishing point between the regular out-of-court discovery process (where many items can be kept secret). Once the evidence is brought to court, it will likely become public.
If you want to keep aspects of a filing secret, be prepared to make particularized showings on a line-by-line basis when seeking to seal court records. Andm be prepared to file public versions containing redactions rather than outright sealing court documents.
The U.S. Court of Appeals for the Federal Circuit recently affirmed a finding by Western District of Texas Judge Alan Albright that certain claims in two patents owned by WSOU Investments LLC were invalid as indefinite under 35 U.S.C. §112. WSOU Invs., LLC v. Google LLC, Nos. 22-1066, -1067 (Fed. Cir. Sept. 25, 2023). Although the decision is designated nonprecedential, it includes a number of interesting lessons on the requirements for definiteness and disclosure of corresponding structure under 35 U.S.C. §112.
The Technology at Issue
The first patent at issue was U.S. Patent No. 7,304,563 (“the ‘563 patent”), entitled “Alarm clock.” This patent claimed an alarm clock feature for mobile phones where the alarm involved initiating a connection to another device over a network to cause that device to signal the alarm.
Claim 16 is is recited in means-plus-function form:
issuing means for issuing an alert when the current time matches the alert time by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto
‘563 Patent, claim 16. Claim 16 is clearly written in means-plus-function form, but the focus of the appeal was on claim 1, which was substantially similar. The key difference though is that the claim 1 limitation was directed to “an alerting unit” rather than an “issuing means:”
an alerting unit configured to issue an alert when the current time matches the alert time, the alerting unit being configured to issue the alert by initiating a connection to another communication terminal over a network so as to cause that other terminal to locally signal the incidence of the connection incoming thereto
‘563 Patent, claim 1. Judge Albright found both claims to be in means-plus-function form and the Federal Circuit affirmed on appeal.
In patent law, “means-plus-function” (MPF) claiming is a way to define an element of a patent claim by the function it performs rather than by its specific structure. This type of claiming is governed by 35 U.S.C. § 112(f), which allows patentees to express a claim limitation as “a means or step for performing a specified function.” When a claim is interpreted under § 112(f), the claim limited to the specific structure disclosed in the specification and equivalents thereof. This limitation to actually disclosed structure (and equivalents) severely limits the scope of MPF claims that often seem much broader when read in the abstract. But, the beauty of MPF analysis is that it is designed to preserve the validity of claims that might be unduly indefinite, not enabled, or even extent to ineligible subject matter. Patentees often fall into the common trap of using of MPF limitations without providing adequate structure within the specification. If no structure is disclosed in the specification for a means-plus-function (MPF) claim, the claim is deemed indefinite and therefore invalid. In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994).
The Federal Circuit has established a two-step framework for determining whether a claim limitation is subject to MPF construction under 35 U.S.C. 112(f). First, the court must determine if the limitation uses the term “means.” If so, a rebuttable presumption is triggered that 112(f) applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). Prior to Williamson, there was a strong presumption associated with use of the word “means.” In particular, courts generally assumed that a claim term that did not use the word “means” was not subject to § 112(f) interpretation. Williamson altered this landscape by holding that the presumption can be quickly overcome, even if the word “means” is not present, if the claim term fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function.
In Williamson, the court noted that patentees had begun using various “nonce words” that were effectively non-limiting placeholders designed to avoid MPF interpretation. Here, for instance, the claimed “alerting unit” is roughly equivalent to a means-for-issuing-an-alert. The presumption against MPF can quickly be overcome in situations where the patentee uses a nonce word to designate the element if the limitation generally fails to recite sufficiently definite structure.
Looking particularly at claim the court first noted the rebuttable presumption against means-plus-function treatment since Claim 1 is directed to a “unit” and does not use the term “means.” In rebutting the presumption, the court agreed with Judge Albright that in the context of the claims and specification, the term “unit” was defined only by the function it performs, rather than connoting any specific structure. In its analysis, the court held that the language surrounding “alerting unit” in the claim consisted of purely functional language that provided no structural context. Terms like “configured to issue an alert” and “initiating a connection” were purely functional. The court also looked to the specification to see how the “alerting unit” phrase was used — finding that it was also described in the same purely functional terms as the claim language. In the end, the appellate panel agreed with the district court that “unit” and “means” were used interchangeably in the patent, indicating “unit” was a generic placeholder rather than structural term.
The patentee WSOU had offered expert testimony on point, but the appellate court rejected the extrinsic evidence for its attempt to be a “gap filler.”
To the extent that WSOU argues that the ‘interpretation of what is disclosed in the specification must be made in the light of knowledge of one skilled in the art,’ it invites us to improperly use the knowledge of a skilled artisan as a gap-filler, rather than a lens for interpretation. WSOU argues that a skilled artisan would ‘understand the structure involved with a mobile phone using GSM ….
However, those arguments are irrelevant as The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention.
WSOU (internal citations and quotations removed). This quote from the appellate panel rejects WSOU’s attempt to use expert testimony regarding PHOSITA to overcome the lack of structural disclosure in the specification. The court emphasizes that gaps in the specification cannot be filled by skilled artisan knowledge during the 112(f) analysis.
Having determined that claim 1’s “unit” was in MPF form, the court then moved to the next step — looking for the corresponding structure within the specification to perform the claimed function. On appeal, the appellate panel again agreed with Judge Albright that no such structure had been disclosed. The court examined the disclosed processor, communication engine, antenna, and communication protocols , but found no clear link between these components and the claimed function of “initiating a connection to another communication terminal over a network.” Rather, the specification disclosed these structures in a general sense without specifically tying them to the network connection function. Merely mentioning general components is insufficient to provide corresponding structure for a means-plus-function limitation. Because the patentee failed to disclose adequate structure for the “alerting unit” limitation under 112(f), Claim 1 was held invalid as indefinite.
For the ‘563 patent, the court determined that the “issuing means” limitation in Claim 16 was subject to 35 U.S.C. §112(f), which governs interpretation of means-plus-function claim limitations. The court identified two functions for this means-plus-function limitation: (1) initiating a network connection to another device, and (2) causing signaling means to locally signal the user. The court held that the specification failed to disclose sufficient structure corresponding to either of these functions, and therefore the claim was indefinite under §112(f). The court reached the same conclusion regarding the similar “alerting unit” limitation in Claim 1.
I quibble with the Federal Circuit’s doctrine on MPF indefiniteness. In particular, the court’s precedent creates an if-then approach: if no sufficient structure then automatically indefinite. I would suggest an additional step asking whether the claim provides reasonably certain scope, recognizing that 112(f) was particularly designed to permit flexibility using narrowing of claims rather than invalidation.
The second portion of the appeal focused on U.S. Patent No. 8,238,681 that appears to include a pretty big typo within its claims:
the plurality of parts [including] a first part closest to a center, a third part farthest from the center, and a second part in between the first part and the second part.
‘681 patent, claim 1 (simplified). You can see that the claim requires a “second part” located between the first and second part. Nonsense. It is pretty clear to me that the patentee intended (but did not claim) that the second part would be between the first and third parts. Unfortunately for the patentee, this exact typo was also found within the specification, and the patent did not include a clear drawing showing the correct aspect.
The court emphasized that it cannot redraft claims to contradict their plain language, even to make them workable.
We have explained repeatedly and consistently, ‘courts may not redraft claims, whether to make them operable or to sustain their validity.’ Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004). Even ‘a nonsensical result does not require the court to redraft the claims of the [patent at issue]. Rather, where as here, [when] claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated.’ Id.
Slip OP.
The patents here were both originally owned by Nokia. They were later transferred to WSOU, a patent assertion entity associated with Craig Etchegoyen, a former CEO of another patent assertion entity, Uniloc.
A short non-precedential opinion from the Federal Circuit provides guidance on two key issues: (1) downstream non-party reliance upon settlement agreements; and (2) personal jurisdiction over foreign corporations. Siemens Industry, Inc. Caddo Sys., Inc. v. Siemens Aktiengesellschaft (AG), Nos. 2022-1623, -1624 (Fed. Cir. Sept. 22, 2023). In its decision, the Federal Circuit affirmed that a prior settlement agreement between the patentee Caddo and Microsoft barred the claims against Siemens. The court also found no personal jurisdiction over Siemens AG.
Caddo asserted infringement of six patents relating to user interface navigation methods against Siemens. Caddo had previously sued Microsoft and reached a 2017 settlement agreement that covered third-party products using Microsoft technology, including .NET software that Siemens had relied upon. In defending its actions, Siemens argued that the Microsoft .NET license provided a complete shield.
License is an affirmative defense to patent infringement and so the defendant typically has the burden of presenting and proving the elements. At the summary judgment stage, Siemens presented evidence that “the entirety of RadBreadcrumb—the accused instrumentality—uses and, indeed, would not function without .NET.” Caddo was then given an opportunity to provide contrary evidence , but apparently did not. As such, the district court awarded summary judgment of no infringement based upon the license. On appeal, the Federal Circuit affirmed.
The Federal Circuit made clear that Caddo, as the non-moving party opposing summary judgment, shouldered the burden of presenting evidence that some portion of the RadBreadcrumb code fell outside the scope of the Caddo/Microsoft settlement agreement. As the court explained,
To justify our setting aside the summary judgment ruling for this reason, Caddo had to show on appeal, at the least, that it presented to the district court (in its opposition to the motion for summary judgment) evidence of a portion of the accused functionality of RadBreadcrumb that did not use .NET, where the presented evidence created a triable issue in the face of Siemens Industry’s assertion and evidence that all of the accused functionality used .NET.
Id. This burden aligns with the general summary judgment standard requiring the non-movant to cite evidence of a disputed material fact. The case arose in N.D. Ill., and so the Federal Circuit relied upon 7th Circuit decision of Ammons v. Aramark Uniform Services, 368 F.3d 809 (7th Cir. 2004) for the principle that “where a non-moving party denies a factual allegation by the party moving for summary judgment, that denial must include a specific reference to the affidavit or other part of the record that supports such a denial.”
The Federal Circuit found Caddo failed to satisfy this burden, noting that “[n]either passage [cited by Caddo] refers to evidence of a portion of RadBreadcrumb that does not ‘use’ .NET for the accused functionality.” Given this failure, the appellate court affirmed the dismissal based on the settlement agreement’s protections was warranted. This underscores the importance of the non-movant diligently citing its best evidence of disputed facts when opposing summary judgment.
I’ll note here that this outcome is in direct conflict with a 2022 jury verdict in Caddo v. Microchip, 20-cv-245 (W.D.TX. 2022). In that case the jury was asked whether Microchip website (also built on .NET) was covered by the Microsoft license. The jury answered No, in favor of Caddo. That case was later settled and jointly dismissed by the parties.
Personal Jurisdiction: The Federal Circuit also affirmed the district court’s dismissal of Caddo’s claims against a separate corporate defendant – Siemens AG – for lack of personal jurisdiction. The court agreed Siemens AG lacked sufficient minimum contacts with the forum for either general or specific personal jurisdiction even though the Germany-based company has over $10 billion in revenue derived from the US.
It is important to note here that it is the Siemans AG website that was accused of infringing the Caddo patents. The district court found that the website had been designed and was hosted abroad, but included data protection and privacy provisions tailored specifically for U.S. residents. And, in-fact, US visitors to Siemens AG website were required to accept a specific “Cookies” agreement before moving forward. Oddly, the district court found the US specific provisions should not be seen as directed toward the US because they “only come into play when a U.S. consumer navigates to Siemens AG’s website.”
On general jurisdiction, the Federal Circuit noted “Siemens AG is a German company, organized and existing under German law, with principal places of business in Munich and Berlin, and it has had no U.S. offices, no U.S. places of business, and no U.S. employees since at least February 2020, before this suit commenced.” Given these minimal forum contacts, the court found no error in dismissing for lack of general jurisdiction, citing precedents like Daimler AG v. Bauman, 571 U.S. 117 (2014).
The court also agreed Siemens AG could not be subject to specific personal jurisdiction in Illinois. It observed the accused website was developed and hosted outside the U.S. and did not directly facilitate U.S. sales. Under cases like Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com de Equip. Medico, 563 F.3d 1285 (Fed. Cir. 2009), this lack of accused product contacts doomed specific jurisdiction. The Federal Circuit thus affirmed dismissal, finding Caddo failed to demonstrate Siemens AG “purposefully directed [any] activities at residents of the forum.”
The patentee focused primarily on the Federal long-arm statute found in FRCP 4(k)(2) that comes into play in cases arising under federal law but where the defendant is foreign and “not subject to jurisdiction in any state’s courts of general jurisdiction.” Normally, personal jurisdiction is done on a state-by-state basis, but under 4(k)(2), the question becomes whether the companies minimum contacts with the US are sufficient for an exercise of personal jurisdiction. The Federal Circuit’s opinion did not directly address this issue.
The recent Federal Circuit decision in Elekta v. ZAP Surgical provides an interesting case study and also warning on how prosecution history can be used to support a finding of a motivation to combine prior art references, even when those references come from different fields. Here, the patentee claimed a radiation therapy invention, but included references to imaging devices in its IDS. That inclusion (along with some other evidence) led to an inference that PHOSITA would generally be motivated to combine art across these two fields.
Background on the Elekta Case
In Elekta, the patent-at-issue claimed a device for treating patients with ionizing radiation using a radiation source mounted on concentric rings. U.S. Patent No. 7,295,648. During an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) found the claims obvious based on a combination of two prior art references:
Grady, which disclosed an X-ray imaging device with the X-ray tube mounted on a sliding arm connected to rotating support rings. This was an imaging device.
Ruchala, which disclosed a radiation therapy device using a linear accelerator (linac) as the radiation source, where the linac rotates around the patient to deliver the radiation dose. This was a therapy device.
On appeal, Elekta argued that a person having ordinary skill in the art would not have been motivated to combine an imaging device like Grady with a therapy device like Ruchala. The Federal Circuit affirmed the Board, finding substantial evidence supported a motivation to combine, including the prosecution history.
Using the Prosecution History to Find an Implicit Motivation to Combine
A key dispute in Elekta was whether a person having ordinary skill would have been motivated to combine references from different fields – here, imaging and therapy. Elekta argued that a key difference made the imaging art inapplicable to therapy. In particular, the linear accelerator used for therapy is quite heavy and so support systems designed for imaging are typically will not work.
The Board disagreed with the patentee and found a motivation to combine the imaging reference with the therapy reference. A key factor for the Board was that the patentee had cited imaging references in its information disclosure statement.
The Board supported this conclusion by reviewing “the prosecution of the ’648 patent, [which demonstrated that] patents directed to imaging devices were cited, and were not distinguished based on an argument that imaging devices were not relevant art.”
Slip Op. Digging into the case history, I found that the patentee had cited an imaging device in its IDS filing and the examiner had cited the reference in an office action rejection. The patentee distinguished the reference based upon its particular mounting configuration. But, the patentee did not raise any written objection to the reference being an imaging system rather than a treatment system. Later, in the notice of allowance the examiner cited a different imaging system as state of the art for mounting radiation sources. Again, the patentee did not raise any express objection to that characterization and its applicability to the claimed therapy system.
On appeal, the Federal Circuit affirmed that it was proper for the Board to infer a motivation to combine based (in part) on this citation history:
We hold that the Board’s finding that a skilled artisan would have been motivated to combine the [imaging] device with Ruchala’s linac [therapy device] is supported by substantial evidence, including the prosecution history of the ’648 patent … Specifically, as explained above, during prosecution, the patentee notably did not argue that prior art references directed to imaging devices were not relevant art.
Id. The court found this prosecution history suggested an implied admission that both imaging and therapy references were relevant to the claimed invention, and thus established an implied motivation to combine the references.
I want to be clear on the holding here. The imaging references cited during prosecution are different from those relied upon in the IPR. But, citing those imaging references created an inference that PHOSITA would consider other imaging references and even have a motivation to combine them with the therapy prior art.
One note – neither the Board nor the FedCir distinguished the particular prosecution history acts that were sufficient to create the inference. When I first read the case, I assumed it was simply IDS citations, but learned of the rejection/NOA citations as I dug into the briefing. In the briefing, the challenger noted that the imaging patent was the first-cited-reference and therefore was important – but the tribunals did not appear to give credence to that particular statement. Bottom line, it appears that an IDS statement could be sufficient to trigger the inference, but the actual threshold is is unclear.
Takeaways from Elekta — Disclaimers
This case demonstrates the need for patent prosecutors to be very thoughtful and strategic when citing references, responding to rejections, and notices of allowance in order to avoid creating an unintended prosecution history record that could imply motivation to combine disparate references. The following are some specific steps prosecutors could take include:
When citing a reference in an IDS, drafting an explicit statement that the citation should not be construed as an admission that the cited reference comes from an area that is analogous or directly applicable to the invention, and rather that the reference is being cited out of an abundance of caution.
If an examiner cites a reference in a rejection from a separate area of technology, not remaining silent and instead actively responding on the record with an explanation of why the particular area of technology is not applicable or combinable due to key differences.
Even if rejections are eventually overcome on other grounds, reiterating for the record (and especially in the face of a contrary reason-for-allowance) that no admission is made regarding the applicability of art.
Drafting tailored disclaimers and statements to avoid implications of compatibility between disparate references, while balancing the need to prevent unintended admissions.
While it is important to avoid unnecessary concessions, applicants must be deliberate and strategic in crafting the intrinsic record, while also recognizing that these additional statements are contrary to substantial conventional wisdom advising applicants to avoid unnecessary statements in the prosecution history.
At the end of July 2023, a special committee of three Federal Circuit judges recommended a one-year suspension of Judge Newman for refusing to comply with various physical and mental examination requests to test whether she is suffering from a diminished capacity. The Federal Circuit’s judicial council has now unanimously* adopted the recommendation with the following order:
Judge Newman shall not be permitted to hear any cases, at the panel or en banc level, for a period of one year beginning with the issuance of this Order, subject to consideration of renewal if Judge Newman’s refusal to cooperate continues after that time and to consideration of modification or rescission if justified by an end of the refusal to cooperate.
September 20, 2023 Judicial Council Order. The attached order, includes 70+ pages of text along with 300+ pages of attached supportive evidence. As the order to suggests, Judge Newman apparently holds the “keys to her cell” – she simply has to submit to a full medical and mental examination, reveal the results to her colleagues, and achieve a result satisfactory to pass their scrutiny.
Judge Newman took and passed two 11-minute mental capacity examinations, but the Federal Circuit wants her to subject herself to a six-hour mental examination run by an independent doctor.
Notes:
The judicial council is made up of all 12 regular members of the court.
Although the order was unanimous, it appears that Judge Newman was not given a vote.
Judge Newman has recently been out and about, speaking and receiving various awards.
I am told that the short mental exam taken by Judge Newman is designed to take up to 20 minutes. Judge Newman completed it in 11 minutes.
The Federal Circuit recently affirmed a finding of invalidity for lack of enablement in Baxalta v. Genentech, holding that functional antibody claims were insufficiently enabled under 35 U.S.C. §112. Relying heavily on the Supreme Court’s Amgen v. Sanofi decision, the appellate panel found Baxalta’s disclosure to be analogous to Amgen’s “roadmap for further research” rather than a complete teaching of the invention. This result again calls into question the viability of broad functional claims post-Amgen and highlights the importance of structurally defining inventions, especially in unpredictable arts like biotechnology.
As mentioned, the case has close parallels and to the Supreme Court’s recent decision in Amgen Inc. v. Sanofi, 598 U.S. 594 (2023). Amgen involved a functional-claimed antibody designed to inhibit PCSK9 activity. The Supreme Court found that the broad claims encompassed a large number of antibody configurations while only describing a limited number of those, along with a trial-and-error roadmap for finding the additional embodiments. Although some experimentation is permissible, a patentee cannot satisfy the enablement requirement by assigning a research project. Ultimately, the Court concluded that Amgen had failed to enable the “full scope” of the claimed invention and that the claims were therefore properly held invalid as a matter of law.
As in Amgen, Baxalta’s patent also includes a functionally claimed isolated antibody:
1. An isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increases the procoagulant activity of Factor IXa.
‘590 Patent, Claim 1.
The invention involves a treatment for Hemophilia A to promote blood coagulation. As you’ll note by looking at Claim 1, it does not claim any particular amino acid sequence or antibody structure, but rather claims all antibodies capable of binding Factor IX or IXa in a way that increases its procoagulant activity. The inventors went through a process of injecting Factor IX into mice, and collecting resulting antibody producing white blood cells (B-cells). Those B-cells were then fused with myloma (cancer) cells to promote rapid growth even in vitro. As those fused B cells continued their work, the resulting antibodies were screened to determine which ones increased the procoagulant activity. Although this process is tedious, it was a familiar and known process at the time of the invention. The result was several hundred antibodies generally identified through the screening, although only 11 were sequenced and disclosed in the patent application.
Genentech’s accused product (Emicizumab) was not one of the 11 disclosed. The court also noted that, unlike the disclosed antibodies, Emicizumab is a humanized bispecific antibody and would not have been identified through the patentee’s research approach. One note here, unlike in Amgen, the Baxalta patent is not limited to “monoclonal” antibodies even though the disclosed research protocol would only result that type of antibody.
The Patent Act requires that the patentee describe how to make and use the invention:
the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.
35 U.S.C. § 112(a). Whether or not a particular invention has been enabled is seen as a question of law based upon underlying questions of fact. Although courts would typically call this a “mixed question” of law and fact, the conceptual separation allows courts more leeway in preemptively deciding the legal question without having to submit the inquiry to the finder of fact (typically a jury).
In this case, Federal Circuit Judge Timothy Dyk served as the district court judge — sitting by designation in D.Del. In a 2022 decision, Judge Dyk granted summary judgment of invalidity for lack of enablement. On appeal, the Federal Circuit affirmed — finding the facts of the case “materially indistinguishable from those in Amgen.”
There are millions of potential candidate antibodies, but the written description discloses the amino acid sequences for only eleven antibodies with the two claimed functions. . . Just like the roadmap rejected by the Supreme
Court in Amgen, the ’590 patent’s roadmap simply directs skilled artisans to engage in the same iterative, trial-and-error process the inventors followed to discover the eleven antibodies they elected to disclose.
Slip Op. Enablement of a broad genus can also be accomplished by disclosing common qualities of the genus. These are typically structural qualities, but the court here notes that the might include “other” features that help delineate the class. An example might involve the mechanism of binding, for instance. The court found none of those in the disclosure.
The only guidance the patent provides is “to create a wide range of candidate antibodies and then screen each to see which happen to bind” to Factor IX/IXa and increase procoagulant activity. Amgen makes clear that such an instruction, without more, is not enough to enable the broad functional genus claims at issue here.
Id. (Quoting Amgen). One question following Amgen is whether the case disturbed the Wands Factors associated with identifying “undue experimentation.” Here, the court wrote that there is “no meaningful difference between Wands’ ‘undue experimentation’ and Amgen’s ‘[un]reasonable experimentation’ standards.” One difficulty with that result though is that the Wands Factors are generally questions of fact that, if in dispute, preclude summary judgment. Here though, the court concluded that the case was so analogous to Amgen that summary judgment was appropriate — the effective implied conclusion is that there were not factual allegations presented by the patentee material enough to shift the outcome.
Baxalta reinforces that claimed inventions should be defined structurally insofar as possible, rather than solely by function. While claim breadth is undoubtedly desirable, applicants must now enable the full scope or risk invalidation post-Amgen. Even fields accustomed to broad functional claiming may require narrowing to structurally-defined elements, especially where some aspect of the design remains unpredictable. A functional limit is potentially problematic any time a claim element has “millions” of possible embodiment designs. On major caveat here of course is that these two cases are biotech focus and the USPTO in particular has largely resisted strongly expanding enablement doctrine outside of the chemical and biotech arts. Another caveat of these pair of cases is that neither are combination claims. Rather, each simply claim a single component – the antibody. I can imagine a situation where more leeway is given to functional components in a combination patent where substantial structure is provided by the combination, including other components in the combination. Finally, also note that 112(f) is available for combination inventions to claim individual elements in means-plus-function form. That approach should typically save the claim validity at the cost of limited scope.
A number of petitions are pending before the Supreme Court raising interesting patent issues, although none have been granted certiorari thus far.
Leading Eligibility Case: In next week’s long conference (Sept 26), the court will consider what I see as the current leading case of CareDx Inc. v. Natera, Inc., No. 22-1066. The case focuses on the question of whether the patent covering a new biologic diagnostic method was properly invalidated as directed to a natural phenomenon.
The CareDx invention relates to early noninvasive detection of organ transplant failure–an important and longstanding issue in the field. The detection method involves identifying DNA fragments from the transplant within the bloodstream, a challenge that had stumped scientists for over a decade. Although various scientists had proposed mechanisms for using this information, the evidence shows more than a decade of failed ideas, and at least one article reported that the process is “difficult and impractical.” The breakthrough came when Stanford researchers successfully applied high-throughput multiplex sequencing (“shotgun sequencing”) to detect single nucleotide polymorphisms (SNPs) unique to donor organs. Of potential importance, the Stanford researchers did not create these new sequencing techniques, but they were the first to take advantage of them in this particular context and identified particular thresholds in crafting a method that works in this situation. The claims were invalidated by the district court, and that judgment affirmed on appeal.
Another Natural Law Case: A second well written natural phenom petition was recently filed in ChromaDex, Inc. v. Elysium Health, Inc., No. 23-245. The patent in that case claims a dietary supplement of nicotinamide riboside (“NR”) that increases the production of nicotinamide adenine dinucleotide (“NAD+”) — this one was crated by folks at Dartmouth. I have written previously that the Supreme Court’s product of nature in Myriad is hard to square with the two-step abstract idea / law of nature cases of Alice & Mayo. In its decision, the Federal Circuit concluded that the two-step approach is inapplicable in the natural phenomenon case — thus omitting consideration of any inventive concept going beyond the excluded portion. The Hail Mary case of Killian v. Vidal, No. 22-1220, argues that the judge made eligibility exceptions represent a Fifth Amendment taking, a due process violation, and represent ultra vires actions.
IPR Estoppel: A second important case awaiting the late-September conference is Ingenio, Inc. v. Click-to-Call Technologies LP, No. 22-873, focusing on the scope of IPR estoppel under 35 USC 315(e). The case asks whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e) to all grounds that reasonably could have been raised in the petition. They focus on the the statutory language that, under their reading, applies the reasonably-could-have modifier in a much narrower context. To wit, petitioner argues that estoppel only applies to issues that could have been raised after the petition was granted– that petitioner “reasonably could have raised during that inter partes review.”
Favorite Pending Case – Inventorship: My favorite pending case is HIP, Inc. v. Hormel Foods Corporation, No. 23-185. HIP argues that the Federal Circuit’s decision improperly heightens the standard for joint inventorship by focusing on quantity rather than substance of inventive contributions. HIP contends any original contribution included in a claim, even if partial, warrants joint inventor status under 35 U.S.C. § 116. In the case, a HIP engineer provided suggestions to Hormel on implementing a pre-cooked bacon method. HIP’s suggestion (using an infrared oven for the preheating step) made its way into the claims, the court concluded it was not significant enough to warrant joint inventorship. For me, the case is largely about the strong presumption that the listed inventors are correct.
Additional Pending Petitions: Two more pending petitions. In Personalized Media Communication, LLC v. Apple Inc., No. 23-230, the patentee PMC argues that the court improperly applied prosecution laches to render its patents entirely unenforceable. PMC argues that under cases such as SCA Hygiene, a patentee’s compliance with statutory deadlines precludes equity from stepping in via laches. I believe that PMC owns the most pre-GATT patents that are still within their patent term. Yes, even more than Gill Hyatt. Finally, in Salazar v. AT&T Mobility LLC, No. 23-241, the petitioner argues that the Federal Circuit acted improperly by issuing an unforeseeably narrow claim construction on appeal. Back in 1995 when these applications were filed, Apple had just released an updated Newton that included Graffiti handwriting recognition software from Palm.
Conclusion: The Supreme Court has not yet granted certiorari on any of these patent law petitions, but their treatment of these issues will provide valuable guidance. Cases like HIP v. Hormel and ChromaDex v. Elysium give the Court opportunities to clarify murky areas of the law around joint inventorship and patent eligibility. Meanwhile, petitions in Ingenio v. Click-To-Call and PMC v. Apple deal with critical procedural issues tied to post-issuance review and prosecution laches. The next few weeks may prove pivotal as the Court considers which of these issues merit its attention.
In a previous post, I examined the important issue of comparison prior art that emerged from the dispute between Columbia Sportswear and Seirus. This post will focus on another key issue from the case – the relevance of logos in design patent infringement analysis.
The Federal Circuit’s pair of decisions provide guidance on how logos factor into the design patent infringement inquiry, and begin to tease-out differences in policy concerns underlying design patent law versus trademark law. As the court made clear, while logos are often key for avoiding consumer confusion about product source in the trademark sense, the absence of source confusion does not necessarily preclude a finding of design patent infringement. Still, ornamental logos found on the accused product can still be relevant as visual distractors in the process of evaluating similarities and differences between the claimed design and accused design.
Design Patent Infringement vs. Trademark Infringement
The standards for proving design patent infringement and trademark infringement differ significantly regarding the relevance of consumer confusion about product source.
For trademark infringement under the Lanham Act, likelihood of consumer confusion is a key requirement. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). The touchstone is whether ordinary consumers in the relevant market are likely to be confused about the source of the goods. Logos and other source identifiers play an important role in this analysis. A logo prominently displayed on the accused goods that is clearly distinct from the plaintiff’s mark can weigh heavily against finding a likelihood of confusion. See, e.g., Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494 (6th Cir. 2013) (“[The accused infringer] has in fact scrupulously avoided such confusion by choosing a starkly different logo that it prominently displays on its [products] and on all its sales and marketing literature.”).
For design patent infringement, however, likelihood of consumer confusion is not directly relevant. See Unette Corp. v. Unit Pack Co., 785 F.2d 1026 (Fed. Cir. 1986) (“Likelihood of confusion as to the source of the goods is not a necessary or appropriate factor.”). The Federal Circuit has made clear that the sole test is whether the claimed and accused designs appear substantially similar to an ordinary observer, not whether consumers will be confused about source. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665(Fed. Cir. 2008) (en banc) (“[I]n accordance with Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed.”).
In essence, while both analyses invoke an “ordinary consumer”, the design patent test focuses solely on visual similarity absent any real-world marketplace considerations and asks whether the design has been replicated. The trademark test deeply analyzes real-world conditions and actual consumer viewpoints on source confusion. This leads to divergent treatment of logos and potentially divergent results.
On their face, both the design patent and trademark infringement tests invoke principles of confusion. The ordinary observer test asks whether the resemblance between designs would “deceive” an observer, “inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. 511 (1871); see also 35 U.S.C. § 289 (“colorable imitation”). And the likelihood of confusion test directly asks whether consumers would likely be confused about the source of goods. The overt references to “deception,” “imitation” and “confusion” create risk that the separate doctrines could be conflated or misapplied. This underscores the need for precision in explaining that design patent infringement does not consider real-world consumer perspectives, while consumer viewpoints are paramount in trademark analysis. The linguistic parallels make delineating these distinctions even more crucial.
While the Federal Circuit has characterized design patents and trademarks as distinct doctrines, in practice they substantially overlap in protecting product designs that serve as source identifiers. Certain product design features may function simultaneously as ornamental, novel designs eligible for design patent protection and as source-identifying trade dress. For example, a unique shape for a handbag or sneaker may qualify for a design patent based on its ornamentality while also indicating source as trade dress.
What that means is that design patents are often used to protect brand identifiers as commercial source signifiers. But, are able to do so without needing to satisfy the requirements of trade dress or its more substantial fair use and non-functionality doctrines. In the case of the wavy reflective inner lining — that clearly has trademark meaning in my mind (as a purchaser of winter gloves). And, it is that marketplace meaning that likely serves as the true basis of the long running lawsuit. So design patents will sometimes grant backdoor trademark-like protection, encompassing design aspects that convey source identity and marketplace meaning. Ultimately, while the doctrines have distinct requirements on paper, in practice their protections substantially overlap for certain product designs functioning as visual source identifiers.
Columbia Sportswear v. Seirus
This distinction emerged as a key issue in the dispute between Columbia Sportswear and Seirus. Columbia accused Seirus of infringing its design patent covering a wavy pattern design for use on heat reflective material. Seirus argued that differences between its design and Columbia’s patented design – especially Seirus’s prominent and repeated logo – should weigh against finding infringement.
On summary judgment, the district court disregarded Seirus’s logo entirely based on L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), and found infringement. In Columbia I, the Federal Circuit held this was error:
Our precedent does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.
Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019).
The appellate court explained that, while labeling a copy does not avoid design patent infringement, logos still factor into the holistic comparison of the claimed and accused design appearances. Id. The court thus vacated summary judgment and remanded.
On remand, the district court instructed the jury on the ordinary observer test for design patent infringement. But, the district court declined Columbia’s request to instruct that consumer confusion was irrelevant and that likelihood of confusion need not be found. The jury returned a verdict of non-infringement.
In Columbia II, the Federal Circuit affirmed the jury instructions given were legally correct. Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299 (Fed. Cir. Sept. 15, 2023). The court sympathized with concerns that the ordinary observer test’s language referencing deception risked conflation with concepts of consumer confusion. But it found no reversible instructional error, reiterating that logos remain relevant to the overall similarity analysis:
[J]ust because consumers might not be confused about an accused product’s source, that alone would not preclude an ordinary observer from deeming the claimed and accused designs similar enough to constitute design-patent infringement.
Id. (emphasis in original; citing Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815 (Fed. Cir. 1992)).
These decisions offer important insight and guidance for attorneys in the trenches, and also highlight a need to reconcile the doctrines to ensure that they are serving important societal goals.
The Federal Circuit recently vacated a jury verdict of non-infringement in the long-running design patent dispute between outdoor apparel companies Columbia Sportswear and Seirus Innovative Accessories. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023). The Federal Circuit held that “comparison prior art” used for infringement analysis must be tied to the same article of manufacture as that claimed. The lower court thus erred by permitting the jury to consider additional references. The decision benefits design patent holders – making it easier to prove infringement and also places more weight on skillful decisions made during prosecution to define the article of manufacture.
Columbia owns U.S. Design Patent No. D657,093, which claims an ornamental design for a heat reflective material featuring contrasting wavy lines. Seirus sells gloves and other products incorporating its HeatWave material, which features similar wavy lines. Columbia sued Seirus for infringing the ‘D’093 patent in Oregon federal court.
The district court originally granted summary judgment of infringement in Columbia’s favor. On appeal, the Federal Circuit vacated and remanded, finding disputed issues of fact regarding the impact of Seirus’s logo and certain prior art references. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Columbia I”) (holding that logo placement might allow the defendant to avoid an infringement judgment). I noted previously that this holding is in some tension with the court’s 1993 decision in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (1993). On remand, the case went to trial, and a jury came to the opposite conclusion — finding no infringement. Columbia again appealed to the Federal Circuit.
Jury verdicts are given strong deference on appeal and so are usually not directly challenged. Here, the appellant skirted the verdict itself by focusing on the jury instructions, with the patentee arguing that the district court erred in its instructions regarding “comparison prior art.”
In design patent law, the test for infringement is whether an ordinary observer would find the accused design substantially similar to the claimed design, such that they would be deceived into purchasing the accused design believing it to be the claimed design. See Gorham Co. v. White, 81 U.S. 511 (1871). When the claimed and accused designs are not plainly dissimilar, courts apply this “ordinary observer” test in light of the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc). The rationale is that prior art designs provide context that can help highlight similarities and differences between the claimed and accused designs.
In its decision, the Federal Circuit held for the first time that a prior art reference can qualify as comparison prior art only if it discloses a design applied to the same article of manufacture identified in the design patent claim. This holding aligns with other design patent infringement precedent limiting the universe of anticipatory prior art and infringing designs to the particular article of manufacture claimed. See Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
We have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim. We have also held that, for an accused design to infringe, it must be applied to the article of manufacture identified in the claim. We conclude that this requirement also applies to comparison prior art used in an infringement analysis.
Slip Op. (internal citations removed). The court explained its reasoning that its narrow approach aligns with the purpose of allowing comparison prior art: “that purpose is to help inform an ordinary observer’s comparison between the claimed and accused designs—designs that, necessarily, must be applied to the same article of manufacture.” And, although the issue has not been expressly decided, prior cases also generally involved comparison prior art that had been applied to the same article of manufacture as that claimed.
Here, Columbia’s ‘D’093 patent claim was limited to ornamental designs for “heat reflective material.” Yet the district court instructed jurors that they must decide for themselves what constitutes comparison prior art, without explaining that it must involve designs applied to heat reflective material. Three particular references with wavy designs were presented to the jury, including U.S. Patent Nos. 2,539,690 (inlaying plastic threads into plastic sheets); 1,515,792 (unwoven fabric for tires); 5,626,949 (shell fabric for outerwear). Thought the claim is directed to “heat reflective material,” the court had admitted the references disclosing “wave patterns on fabric.” Columbia argued these references were improperly admitted as comparison prior art since they did not involve designs applied to heat reflective materials. But the Federal Circuit declined to directly rule on their admissibility, instead vacating and remanding for the district court to reconsider the issue under the new narrower requiring comparison prior art to be applied to the claimed article of manufacture. The court suggested that the district court conduct a claim construction on the term heat reflective material before determining whether the references fit within the scope.
Seirus also argued that limiting the patent to heat reflective material would improperly import a functional limitation into the design patent claim. The Federal Circuit properly rejected that argument. While design patents cannot claim primarily functional designs, referring to an article of manufacture’s function to distinguish it from other articles is permissible and relevant.
The Federal Circuit recently vacated and remanded a pair of Patent Trial and Appeal Board (PTAB) decisions that had upheld patent claims owned by Corephotonics. Apple Inc. v. Corephotonics, Ltd., No. 2022-1350 (Fed. Cir. Sept. 11, 2023). The appellate court held the PTAB erroneously construed a disputed claim term by failing to appreciate the significance of “a” versus “the” in the claims. It also found the PTAB violated the Administrative Procedure Act (APA) by resting its obviousness determination on arguments and evidence not squarely raised by the parties.
The Dispute Over Dual-Lens “Portrait Mode”
The patent at issue, U.S. Patent No. 10,225,479 (‘479 patent), relates to using dual-aperture camera systems in smartphones to create aesthetically pleasing “portrait photos.” Specifically, the patent discloses combining images from a wide-angle “Wide” lens and a telephoto “Tele” lens to produce a fused image showing a sharp subject in front of a blurred background. Portrait mode is incredibly popular on Apple and Android phones and so the industry is eager to invalidate the patent held by Tel Aviv based Corephotonics.
Apple filed two petitions for inter partes review (IPR) challenging claims of the ‘479 patent as obvious based primarily on a prior art reference known as Parulski, which discloses a dual-lens digital camera but does not specify how image fusion occurs. U.S. Patent No. 7,859,588.
Claim Construction – The Significance of “A” vs. “The”
In the first proceeding (IPR2020-00905), the parties disputed the proper construction of the claim term “fused image with a point of view (POV) of the Wide camera.” Apple argued this term required maintaining either the Wide image’s perspective or position point of view in the fused image, while Corephotonics contended it mandated both Wide perspective and position. Patentees often argue for narrow constructions during IPR proceedings in order to avoid the prior art. Here, the patentee’s narrow construction won the day and the PTAB found Apple failed to show the claims were obvious under this narrower construction.
Examining claim construction de novo, the Federal Circuit concluded that the PTAB had erroneously construed the term too narrowly based upon use of the indefinite article “a POV” as well as intrinsic evidence from the patent specification.
The court first looked at the claim language in context, noting the claims recite “a point of view” rather than “the point of view” of the Wide camera, suggesting the fused image need only maintain one type of Wide point of view. While the specification discloses that “point of view” includes both perspective and position, the claims’ use of “a” rather than “the” was critical:
A reasonable reading of [the specification] is that Wide perspective and Wide position are two different types of Wide point of view. The claim term requires only that the fused image maintain ‘a point of view of the Wide camera,’ i.e., only one of the disclosed types of Wide point of view.
Slip Op. The court also explained that limiting the claims to require both Wide perspective and position would improperly exclude disclosed embodiments where the fused image has a “mixed” point of view, like Wide perspective but Tele position.
Taken together and in context, however, the intrinsic evidence supports that the claim term requiring a fused image maintaining ‘a point of view of the Wide camera’ requires only that the fused image maintain Wide perspective point of view or Wide position point of view, but does not require both.
With this broader construction, the Federal Circuit vacated the PTAB’s first decision and remanded for further analysis of whether the prior art disclosed the disputed limitation under the clarified standard.
While the Federal Circuit suggested the patentee could have defined “point of view” to require both perspective and position by using “the” in the claims, this may have been improper due to lack of antecedent basis. Generally, a new limitation should be introduced using an indefinite article like “a” rather than a definite article like “the.” The existence of this rule of patent claim drafting raises the question of how much interpretive weight should be given to a patentee appropriately following the rule. Here, the use of “a point of view” in the claims adhered to the common rule of using “a” to introduce a new limitation. The Federal Circuit relied heavily on this choice of article in reaching its broader construction. But because patentees are expected to follow this drafting rule, it is debatable whether such weight should be placed on the patentee’s decision to use “a” in accordance with standard practice rather than “the.” This highlights some tension between claim drafting best practices and reliance on subtle differences in claim language during claim construction. Of course, the patentee could have simply drafted claims that clearly stated the structure being claimed. Here, the Board noted that the disclosure was “not a model of clarity,” something that should weigh against the patentee.
Sua Sponte Findings Without Adequate Explanation or Opportunity to Respond
In the second proceeding (IPR2020-00906), Apple asserted specific claims reciting detailed camera parameters would be obvious based on combining Parulski with the Ogata reference. U.S. Patent No. 5,546,236. But the PTAB rested its determination that Apple had not proven obviousness almost entirely on typographical errors in the declaration of Apple’s expert, Dr. Sasián, which were barely mentioned by the parties.
Apple appealed both PTAB decisions to the Federal Circuit.
The appellate panel held that resting a determination of nonobviousness primarily on typographical errors in Apple’s expert declaration, without prior notice to the parties, violated the APA. The court explained that while the PTAB can reject unreliable expert testimony, it must provide a reasoned explanation supported by evidence and base its decision on issues the parties had notice and chance to address. Those factors were not present here:
Corephotonics did not rely on [the expert’s] error in any of its arguments on the merits. And it did not contend that this error demonstrated that there would have been no reasonable expectation of success or that it alone was a sufficient basis to find all of Dr. Sasián’s analysis unreliable.
Slip Op. Further, while the PTAB identified additional errors, these inconsistencies were never raised by the parties and appeared to lack evidentiary support. The PTAB’s “explanations must be supported by substantial evidence, and its decisions must be reached only after the parties have been provided fair notice and an opportunity to be heard.” Because the PTAB focused on peripheral issues not squarely presented by the parties, it failed to resolve the core obviousness disputes actually raised.
On remand, the PTAB will have the chance to try again — and, more particularly, Apple will get another bite at the Corephotonics patent.
The Federal Circuit recently issued an important decision regarding the analogous art doctrine in Netflix v. DivX, No. 22-1138, — F.4th — (Fed. Cir. Sept. 11, 2023). The Patent Trial and Appeal Board’s sided with the patentee, holding that a key prior art reference was not analogous art. On appeal, the Federal Circuit has partially affirmed, but vacated and remanded on a procedural ground. This case also raises questions about the value of explicitly stating the problem solved within the patent document, and perhaps directly in the patent claims.
The statutory obviousness test requires a comparison of the claimed invention and the prior art from the perspective of a person having ordinary skill in the art (PHOSITA). 35 U.S.C. 103. Although prior art is generally defined by Section 102(a), courts have concluded that for obviousness purposes, a PHOSITA would only consider “analogous” prior arts. A prior art reference is considered analogous if it fits either of two prongs:
Is the art is from the same field of endeavor, regardless of the problem addressed
Is the reference reasonably pertinent to the particular problem with which the inventor is involved.
An oddity of the analogous art test is that it generally takes a binary approach—either a reference qualifies as analogous art and is considered as valid prior art, or it is deemed non-analogous and categorically excluded. This differs from typical evidence law, where the bar for relevance is low but the fact-finder must still weigh the probative value of the evidence. An alternative approach could apply a more flexible test assessing how closely related a reference is to the field of endeavor or problem addressed, rather than a threshold yes/no question. Under this view, references closely related to the invention would be given greater weight as prior art, while more distantly related references would be considered but afforded less significance in the obviousness analysis. Rather than wholesale exclusion, references could be evaluated along a spectrum. While this incremental approach may have some merits, the Federal Circuit has to date applied the analogous arts test in a binary fashion.
In the case at hand DivX owns US8472792, a patent related to encoding, transmitting, and decoding multimedia files to enable “trick play” functionality like fast forwarding. Netflix filed an IPR challenging claims of the ‘792 patent as obvious over a primary reference (Zetts) in view of a secondary reference (Kaku).
Kaku discloses using AVI files and index chunks to reproduce motion images in digital cameras, and the IPR focused on whether Kaku qualifies as analogous art to the ‘792 patent. The Board determined Kaku did not qualify as analogous art under either the “field of endeavor” or “reasonably pertinent” tests. On appeal, Netflix argued the Board erroneously required “magic words” within the petitioner briefing to identify the field of endeavor and that its briefing was sufficient to identify AVI files or encoding/decoding multimedia as potential fields of endeavor. Netflix also challenged the Board’s reasonably pertinent analysis.
On appeal, the court agreed with Netflix that the PTAB abused its discretion by requiring explicit identification of a field of endeavor using specific “field of endeavor” language within the briefs. The court explained that its precedent does not mandate using “magic words” and that Netflix’s briefing, taken as a whole, sufficiently identified potential fields of endeavor. The court remanded for the Board to reconsider the field of endeavor issue under the appropriate standard.
However, the court affirmed the Board’s finding that Kaku was not reasonably pertinent to the ‘792 patent’s problem of facilitating trick play in streaming multimedia. The court found substantial evidence supported the Board’s determination that Kaku addressed a different problem related to image compression and camera memory limitations.
Unlike many patents, the ‘792 patent clearly articulated the goal of enabling trick play functionality directly in the claims. When a patent identifies the purpose or advantage of the invention in its claims, it limits the scope of applicable prior art compared to a patent with vague, generic claims. This is especially true because many patentees intentionally refuse to directly state the problem being addressed within the specification. By including “enabling trick play functionality” in every claim, the ‘792 patent restricted the field of endeavor and pertinent prior art to references focused on trick play features.
This case raises this question: Should best practices for patent drafting include an explicit statement of the particular problem the invention seeks to solve? As the patent owner here demonstrated, doing so may limit the applicable scope of prior art during litigation. On the other hand, a narrow articulation in the patent itself may make the claims more vulnerable to workarounds. What do you think?
Federal Circuit’s decision in Dali Wireless parallels the issues that I recently discussed in an analysis of the court’s September 1 decision in Sisvel International v. Sierra Wireless. Both cases grapple with claim construction and the tension between construing claims broadly versus importing limitations from the specification.
In Sisvel, the Federal Circuit affirmed the PTAB’s broad construction of “connection rejection message” over the mobile-network patentee’s arguments that the term should be limited to GSM/UMTS networks. Although the disclosed embodiments all focused on GSM/UMTS networks, the claims were drafted broadly without a clear disclaimer or redefinition.
Similarly, in Dali Wireless, the patentee argued for a narrow construction of the claim term “any” in the claims as sending signals to only a specific remote unit. US9531473. Once again the Federal Circuit upheld the PTAB’s broader construction. Despite embodiments showing selective sending, the court declined to import limitations absent clear intent to limit claim scope. Under a broad construction, the prior art clearly taught the limitations and therefore rendered the claims unpatentable.
Both cases demonstrate the Federal Circuit’s reluctance to confine claims to specification embodiments when the language can support a broader plain meaning. Again, one take-away for patent prosecutors is to look closely to the described embodiments and consider express limitations that cover only those embodiments.
The decision also rejected an appointments challenge under United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that APJs were improperly appointed principal officers. Dali raised an Appointments Clause challenge to decisions made by Commissioner Hirshfeld who was acting as PTO Director. The Federal Circuit summarily rejected that challenge as already decided in Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), cert denied, 143 S.Ct. 2493 (2023).
Opinion by Judge Linn, joined by Judges Hughes and Stark.
In 2019, Sisvel began asserting its U.S. Patent Nos. 7,433,698 and 8,364,196 against cell phone makers, wireless chip suppliers, and cellular network operators. These patents claim methods and systems for exchanging frequency information between a mobile station and a mobile switching center to facilitate switching a mobile device’s connection point within a cellular network. Several defendants petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR), arguing that the challenged claims were invalid as anticipated and/or obvious based on prior art references. The PTAB instituted IPR and ultimately issued final written decisions concluding that the claims were unpatentable. See IPR2020-01070, Paper No. 31 (PTAB Nov. 8, 2021); IPR2020-01071, Paper No. 30 (PTAB Nov. 8, 2021).
On appeal to the Federal Circuit, Sisvel challenged the PTAB’s claim construction of the term “connection rejection message” and its denial of Sisvel’s revised motion to amend the ‘698 patent claims. The Federal Circuit, in an opinion authored by Judge Stark and joined by Judges Prost and Reyna, affirmed on both issues. Sisvel International S.A. v. Sierra Wireless, Inc., No. 22-1387 (Fed. Cir. September 1, 2023).
Claim Construction
The claims at issue particularly focus on the use of a “connection rejection message” to confer certain information to a mobile device. The term is used throughout both the patent specification and the claims. However, it is not expressly defined. The key dispute was it should be construed broadly to mean simply “a message that rejects a connection” or narrowly limited to “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station.” As is usual for IPR proceedings, the patentee was asking for the narrow construction in order to avoid the prior art.
The Board and the Federal Circuit both applied the Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) Under Phillips, claims are construed according to their plain and ordinary meaning as understood by a person of ordinary skill in the art, looking at the intrinsic evidence including the claims, specification, and prosecution history. Although the specification provides guidance, limitations found within described embodiments should not be imported into the claims absent a clear intent by the patentee to limit claim scope. Extrinsic evidence, such as dictionary definitions are less important.
On appeal, the Federal Circuit agreed with the PTAB that the plain and ordinary meaning of “connection rejection message” is “a message that rejects a connection.” It found no persuasive basis in the intrinsic evidence to restrict the term only to GSM or UMTS networks. The patentee’s argument here was that the embodiments found in the specification were all directed to UMTS or GSM networks. But, the problem is that the specification also states that the invention is could work “in many different cellular telecommunications systems” of which UMTS and GMS are two examples. The specification goes on to state that the system work work in any system that involves sending a rejection message in the manner outlined. Thus, although the specification only the two networks, the court found that the claims and specification were drafted broadly and did not limit the invention only to GSM/UMTS. The court ultimately declined to confine the claims only to the disclosed embodiments and instead affirmed the broad construction.
Result — invalidity affirmed.
Motion to Amend
Sisvel also challenged the PTAB’s denial of its revised contingent motion to amend claims of the ‘698 patent. The PTAB found the proposed substitute claims impermissibly broadened the scope of the original claims, specifically by changing “based at least in part on” to merely “using” when referring to information from the connection rejection message. The AIA explicitly prohibits broadening amendments in IPR proceedings. 35 U.S.C. § 316(d)(3) states that amended claims “may not enlarge the scope of the claims of the patent.” Similarly, 37 C.F.R. § 42.121(a)(2)(ii) provides that a motion to amend may be denied if it seeks to enlarge the scope of the claims.
Sisvel contended that when all limitations were considered together, the substitute claims were narrower overall. On appeal, the Federal Circuit explained that a claim is broadened if it is broader in any respect–even if narrowed in some other respects, if it is broadened in any respect. Here, the change from “based on” to “using” broadened the claims by removing the requirement that the frequency parameter impact the value.
Key Takeaways
In hindsight, this is a situation where the patentee could have drafted the claims in these patents in a way that would have at least avoided the arguments raised here. Of particular note, it often makes sense to include a dependent claims that narrow aspects of the claim to the same level provided by the embodiments. Here, the court also latched-onto throwaway language in the specification stating that the system could work on any network even though the rest of the specification focused on GSM and UMTS networks. Still, at the time the statement likely made sense as an attempt to explain why it was proper to allow claim scope that is not limited to those networks.
The U.S. Court of Appeals for the Federal Circuit recently declined to issue a writ of mandamus directing the U.S. District Court for the Eastern District of Texas (Judge Gilstrap) to dismiss a patent infringement lawsuit against Charter Communications based upon improper venue. In re Charter Commc’ns, Inc., No. 2023-136 (Fed. Cir. Sept. 5, 2023). Although non-precedential, the decision highlights a key difference between motions to dismiss for improper venue under 28 U.S.C. § 1406 and motions to transfer venue for convenience under 28 U.S.C. § 1404. It also shows the high bar for obtaining the “extraordinary remedy” of mandamus relief from denial of an improper venue motion.
The usual rule for appeals is that parties must wait until final judgment. Assuming that it loses on the merits, Charter will have another opportunity to appeal venue once the case is concluded.
Background: Entropic sued Charter for infringing several of its patents, including US10135682. The patents cover various aspects of cable network management, focusing on Cable Modem Termination Systems (CMTS) that serve multiple cable modems. The CMTS determines various Signal-to-Noise Ratio (SNR) related metrics for these modems and assigns them to different service groups based on these metrics.
Although Charter derives substantial revenue from customers located in the Eastern District of Texas, it still moved to dismiss the case for improper venue under § 1400(b), arguing it lacked a regular and established place of business in that district. This statute limits the locations where patent infringement lawsuits can be filed.
1400(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.
Id. The Supreme Court has interpreted this statute to limit actions against corporations to either (1) their state of incorporation or (2) a district where the defendant “has a regular and established place of business” and also infringes the patent by making, using or selling the invention. Charter is a Delaware company and does not operate its own retail stores in the Eastern District. Still, the district court denied the motion to dismiss, finding venue was proper because Charter ratified retail stores operated by its subsidiaries in the district and those subsidiaries were Charter’s agents.
Improper vs. Inconvenient Venue
There is an important distinction between improper venue under § 1400(b) and inconvenient venue under § 1404(a). Section 1400 applies when venue is “wrong” or “improper” in the chosen district. If venue is improper, the district court must dismiss the case or transfer it to a proper district. And, if a case goes to conclusion in an improper venue, a losing defendant would have an opportunity to appeal and at least get a new trial in a proper venue.
In contrast, § 1404 allows transfer “[f]or the convenience of parties and witnesses” even when venue is proper. Courts have greater discretion in deciding § 1404 transfer motions based on case-specific factors like convenience and judicial economy. And, by the end of a trial, it is almost never “convenient” to retry the case in another venue. Thus, post-trial section 1404 appeals are basically automatic losers.
Thus, even though “wrong venue” sounds like a bigger deal than “inconvenient venue” the Federal Circuit has historically only granted immediate mandamus actions for the latter. The difference here is that, absent mandamus, the inconvenient venue issue cannot practically be appealed.
Mandamus Standards
The party seeking a writ of mandamus must show (1) no other adequate means to attain relief; (2) a clear and indisputable right to issuance of the writ; and (3) the writ is appropriate under the circumstances. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004). In the past, the court has suggested that 1400(b) issues are unlikely to lead to mandamus relief because “post-judgment appeal is an adequate alternative means for attaining relief” if venue is found improper on appeal. In re Monolithic Power Sys., Inc., 50 F.4th 157 (Fed. Cir. 2022).
The Federal Circuit’s Decision
In a short opinion authored by Judge Cunningham, the Federal Circuit denied Charter’s petition for mandamus, finding no justification for immediate review of the district court’s order:
At most, CCI’s arguments present a record-specific dispute: whether CCI exerts control sufficient to impute its subsidiaries’ in-district operations to CCI under Fifth Circuit law. . . . CCI’s petition does not raise the type of broad, fundamental, and recurring legal question or other considerations that might warrant mandamus review.
In re Charter Commc’ns, Inc., (Fed. Cir. Sept. 5, 2023) (internal citations and quotation marks omitted). The court here emphasized that mandamus is an “extraordinary remedy” and Charter had not shown the district court’s decision was clearly wrong or raised a novel legal issue requiring prompt resolution. Rather, Charter seemed to “present[] a record-specific dispute” about imputing its subsidiaries’ activities to Charter for venue purposes. The court also explained that Charter could still challenge venue on direct appeal after final judgment, which provided an adequate alternative remedy.
Conclusions
The court has refused to take the bait and expand mandamus relief to improper venue challenges under § 1400(b). Defendants must generally wait to appeal after final judgment, even if venue may have been erroneous. Note though that mandamus may be still be justified for improper venue decisions implicating unsettled areas of law or where the party can show a major resulting injustice. But disagreements about case-specific facts and analysis are unlikely to clear the high mandamus bar.
