All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.


In re Glascoe (Fed. Cir. 2022)

The USPTO refused to register Glascoe’s mark SCIENTIFIC STUDY OF GOD for use as a service mark when “analyzing the process of creating a human being, the earth, the universe and its environment.” I know what you are thinking–deceptively misdescriptive.  The TTAB did not go there, but instead refused registration after concluding that the mark was “merely descriptive.”

“A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)

Here. Glascoe’s purported services are related to the scientific study of god, which is the exact mark that is being claimed.  Glascoe appealed pro se. Her brief begins:

Pro Se Appellant DEIRDRE C. GLASCOE is an Extra-Terrestrial Life Form—The Alien Entity known As GOD. GOD Is A Brand Name®, as are “I AM,” “YHWH,”  “Yahweh,” “Jesus Christ™”, “Allah”, “Lord GOD of Israel,” “EL”, “Human Beings.” GOD’s Kingdom is a foreign state within the meaning of the Foreign Sovereign Immunities Act.

GlascoeBrief.  As you might guess from this excerpt, I did not find anything within Glascoe’s briefing that suggests ‘scientific study’ in a form that I would recognize. That makes me think that the misdescriptive refusal might be more appropriate.  For its part, the Federal Circuit provided a one sentence summary denial:  “Ms. Glascoe has failed to make any cogent, non-frivolous argument as to why the Board’s determinations were incorrect.”  In briefing, Glascoe noted that the TTAB had erred by failing “to recognize GOD as a legal person.”  On appeal, the Federal Circuit did not address that issue.

One thing that Glascoe does is use Anagrams as decoding keys to understand underlying meaning. I’ve provided a couple of examples from the briefing. 

Getting the Public Involved: Third Party PreIssuance Submissions

by Dennis Crouch

If you have never tried a third-party pre-issuance submission with the USPTO or UKIPO Observation. Give it a whirl.


The UK Intellectual Property Office recently announced its plans to provide the public with a bit more access to the patent examination system—making it easier for third parties to provide pre-grant observations that can be used by examiners and seen by others.[1]  UK law already allows any person to offer observations “on the question whether the invention is a patentable invention” that must be considered during examination.[2]  The UK law requires that any observations be in-writing and also provide reasoning.   In the recent accessibility pilot project, over half of submitted observations were identified as useful by the examiner.  The UK accessibility proposal is simple—the UKIPO will add an “OBSERVATIONS” button to its new Ipsum service that already provides docketing information.

The USPTO has an online submission form in-place that is a bit clunky, but remains somewhat user friendly. The largest problems with the system: (1) it requires someone to find the “Confirmation Number” from either PAIR or the Patent Center in order to provide a submission; (2) it is limited only to the submission of printed publication material under 35 U.S.C. 122(e); and (3) has a fairly tight timeline — i.e., after publication but before to the first OA rejection.  The result here is that the submissions will be easy for patent professionals, but tricky for the laity.

Button - File a third party preissuance submission

The system might be improved by adding a button directly to the Patent Center search results; easing the timing; and allowing for observations unrelated to printed publications. A simplistic mock-up is offered below: 

I looked for third-party submissions within the dockets of a set of recently issued patents.  I found submissions in about 0.14% of cases (14 out of every 10,000).  The number should be larger. Dennis Crouch, USPTO Third Party Submissions, Patently-O (Feb. 2, 2022).


Judicial Estoppel and Changing Claim Construction

by Dennis Crouch

Intel Corp. v. XMTT, Inc. (Fed. Cir. 2022)

Chief Judge Moore is known (1) for her keen ability to identify logical flaws in appellate arguments and (2) her willingness to use those flaws to quickly dispose of the appeal.  In this case, the court only needed a few lines to reject Intel’s appeal:

The Board adopted the claim construction for which Intel advocated. Yet, Intel now changes its position and advocates for a claim construction that is clearly inconsistent with its position before the Board. Intel is judicially estopped from raising this argument.


Although I don’t disagree with this holding, The court here does not walk through the principles of judicial estoppel in its decision.  Under the Supreme Court’s New Hampshire v. Maine precedent, we look for three markers:

  1. A party taking a position that is clearly inconsistent with its earlier position;
  2. The earlier position was accepted by the prior tribunal.
  3. The change in position would create some unfair advantage or detriment unless estopped.

Here, the court addresses the first two points, but not the third.  I wonder if a different waiver or forfeiture argument might have been more appropriate.

What was Intel thinking.  Its appellate strategy here appears strategic.  Intel’s real problem was in how the PTAB used the construction in determining whether the claimed elements were disclosed in the prior art.  A direct appeal of that issue is given deference on appeal based upon a substantial evidence standard; instead it took the route of seeking de novo review.

Note that this decision is in some tension with Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020)


The Alexandria Backwaters

by Dennis Crouch

This week, the New York Times published a lengthy staff editorial negatively focusing on the U.S. patent office as a “backwater” used for corporate gamesmanship, won-over by “legal trickery,” and undermining innovation whenever possible.  It appears primarily a hit piece designed to destabilize and direct Dir. Kathi Vidal’s initial weeks as USPTO Director.  She will be having to defend and explain any pro-patentee stance to her White House colleagues.

Despite musty rhetoric, the high level suggestions have merit – especially the first: “Enforce existing standards.”  At its heart, the USPTO is a bureaucratic construct that needs constant attention to ensure that every examiner plays their role, and that none are lulled into complacency.  “The best way to ensure that patents spur innovation instead of thwarting it is to set a high standard for what deserves patent protection in the first place and then to honor it.” Dir. Vidal’s primary role in managing a 10,000+ person agency is to ensure that her examiners have the tools , the training, and the time needed to ensure the highest quality examination.  Although primary examiners have more training and experience, there is some evidence that they do a poorer job of ensuring that each allowed claim is patentable.  This may be an issue of time, oversight, or something else.

The editorial’s second suggestion is to “improve the process for challenging bad patents.”  In particular, the editorial calls for eliminating the FINTIV discretionary denials of IPRs implemented under Dir. Andrei Iancu. The bigger suggestions though are as follows: (1) Make it easier to challenge bad patents before they are granted. (2) Force secondary pharmaceutical patents to undergo an automatic review by the appeal board. (3) Rethink the legal structure for patent challenges. As part of this third point—restructuring the legal system—the essay attacks the Federal Circuit as merely an “echo chamber” of the pro patent lobby.  For this point, the editorial quotes Matthew Lane of CAPA.

The third suggestion calls for calling for elimination of potential conflicts of interest. This seems to be primarily (and expressly) a pot-shot at Dir. Iancu who rejoined his old law firm after leaving the Office last year.  The essay implies that Iancu acted unethically and improperly, but without presenting any evidence and in a way that feels gross. The PTO does not have the same revolving-door tradition that is seen in other major regulatory agencies, and so this complaint would not have made my top-three.

Four: Collaborate with other agencies.  Most particularly, the USPTO and FDA need to get together and ensure consistency across the board.  To get PTO approval, you need to show your invention is a major change, but for FDA or EPA approval, you want to show that your product is pretty much the same as what we already know and trust.  These are all good points here made by Charles Duan who is a member of PPAC.

The final suggestion in the essay – “let the public participate.” Yes!

Amgen v. Sanofi – Next Steps

In Amgen v. Sanofi, the Supreme Court has been asked to review Federal Circuit precedent on the enablement doctrine found in 35 U.S.C. § 112(a).   Although still uncertain, the case has a strong chance of being granted certiorari.  Most recently, the Supreme Court requested that the US Solicitor General file a brief in the case indicating the views of the U.S. Gov’t. That filing will likely come in December 2022.

The statute requires the patentee to provide “a written description of the invention, and of the manner and process of making and using it [sufficient] to enable any person skilled in the art … to make and use the same.”  The petition asks two particular questions:

  1. Whether enablement is “a question of fact to be determined by the jury” Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or “a question of law that [the court] review[s] without deference,” as the Federal Circuit holds.
  2. Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “ ‘time and effort.’ ”

The invalidated patents here are likely worth >$100 million.


Is the Advance Meaningful?

by Dennis Crouch

The text of the Patent Act suggests that obviousness is a straightforward inquiry: find how the claimed invention differs from the prior art and ask whether, based upon those differences, an objective artisan would deem the invention obvious. 35 U.S.C. § 103. In reality, the analysis is not easy or straightforward. At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction. There are myriad ways that patentees endeavor to show results that are important, surprising, or synergistic—all terms that connote non-obviousness. One way to show meaning is through the use of what the Supreme Court has termed “secondary considerations” and others term “objective indicia.”

Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).

Graham v. John Deere Co., 383 U.S. 1 (1966). When courts ask about the importance of the advance, they must take care to ensure a nexus between the advance and its import. Focusing on the importance of the advance incentivizes advances that are important. Nexus is always relevant when considering if an advance is meaningful, but in recent years the Federal Circuit has aggressively used nexus particularly to limit the use of objective indicia such as industry praise or commercial success. Rather than permitting a fact to weigh the evidence, the court requires a proven nexus before any consideration of the objective indicia and its impact. Often industry praise and commercial success are tied to a commercial product rather than “the invention.” In this situation—where a product has been successful and praised—courts have permitted the patentee to prove a nexus linking the praise to the invention by pointing to the product and showing the product is an embodiment of the patent claim and the claimed invention is not merely a small component of the invention. In various formulations, the court has seen this as requiring the product to be “commensurate in scope” or “coextensive” with the claimed features. See Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A difficulty with this formulary is that there are always unclaimed features found in any product, and so it is difficult to know when the two are “coextensive.” In its important 2019 Fox Factory decision, the Federal Circuit drew a hard line, requiring the product and claim be “essentially” identical:

Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention. While coextensiveness is an issue of fact that should ordinarily be decided by the fact finder in the first instance, no reasonable fact finder could conclude, under the proper standard, that the X-Sync chainrings are coextensive with the patent claims.

Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (citing to Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). I wrote about Fox Factory back in 2019 and explained:

The court here again raised the “nexus” hurdle by holding that a presumption of nexus can only be achieved by proving that the product being sold by the patentee is “essentially the claimed invention.” This is a situation where SRAM owned two patents in the same patent family — both of which covered aspects of its X-Sync bicycle chainring (gear). Each patent included elements not claimed in the other — for the court that was enough evidence to disprove coexistence.

Dennis Crouch, Nexus: Product must be “Essentially the Claimed Invention”, Patently-O (December 18, 2019). Since the product in Fox Factory included multiple inventions—each covered by its own patent—the patentee was unable to show that any one of the inventions had nexus with the product. (Note here in Fox Factory, we are not talking about some complex invention – it was only a chain ring, i.e. a gear, that sold well).

An important en banc petition is pending before the Federal Circuit in Zaxcom, Inc. v. Lectrosonics, Inc., 20-1921 (Fed. Cir. 2022) involving that nexus and asking the Federal Circuit to reconsider its Fox Factory precedent. The setup in the case is fairly typical: Zaxcom sued Lectrosonics for patent infringement back in 2019 (D.New Mexico); Lectrosonics responded with two inter partes review petitions. The PTAB granted both IPR petitions and then cancelled the challenged claims as obvious. On appeal the Federal Circuit affirmed, and Zaxcom has now petitioned for en banc rehearing.

The Zaxcom inventions relate to a wireless method for multi-track video recording. The problem with wireless was always timing, and the inventions here solve that with very particular time-codes. The invention here was said to change the industry, and the inventors were awarded both an Emmy and an Oscar. Here is the deal, the invention is embodied in the product, and the praise was tied to the new functionality offered. But, the invention also includes features claimed in a different patent. Because of that, the Board found no nexus and refused to consider the Emmy/Oscar results based upon Fox Factory. On appeal, the Federal Circuit affirmed. The petition now asks for reconsideration of Fox Factory and its progeny:

By deviating from established law, the Fox Factory panel precedent has triggered a need for en banc review. This Court has warned against unduly “strict requirements” in evaluating nexus. Rambus. Nowhere is the wisdom of this warning more apparent than in the present case. Here, it is undisputed that products embodying the claimed invention (Zaxcom’s wireless audio recording system) received industry praise, including a technical Oscar and an Emmy. Lectrosonics did not contend that the claimed invention is just a “small component” of this system. Under this pre-Fox Factory standard, this entitles Zaxcom to a presumption of nexus. Yet the Board and the panel not only rejected this presumption but quixotically failed to find that the claimed invention received any industry praise, because they found that another feature contributed to the praise but was not required by the claims. Put another way, the decisions below disregarded the fact that products embodying the claimed invention undisputedly received the equivalent of not just one Nobel Prize in its field, but two.

Zaxcom En Banc Petition. Retired Chief Judge Paul Michel added amicus support:

What started as a relatively straightforward evidentiary presumption to facilitate the obviousness analysis under 35 U.S.C. § 103 has now morphed into a complex analysis “requir[ing] the fact finder to consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349 (Fed. Cir. 2021) (citing Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1375 (Fed. Cir. 2019)). In addition to the new “level of significance” factor, recent cases have imposed an “essentially claimed” factor in the presumption analysis. See, e.g., Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). These new “requirements” of the presumption-of-nexus analysis conflict with this Court’s precedent.

Judge Michel brief.  I expect responsive briefs from both the USPTO and the patent challenger Lectrosonics in late April 2022.

Standing in Trademark Opposition and Cancellation Proceedings

by Dennis Crouch

In a recent filing, Brooklyn Brewery (Brewery) indicated plans to take its trademark opposition/cancellation case to the US Supreme Court.  The key constitutional question involves when a TM challenger has Article III standing to appeal an adverse TTAB decision. The issues are parallel to those faced on the patent side by unsuccessful Inter Partes Review (IPR) petitioners who attempt to appeal that loss.

There is a lot going on in Brewery v. Brew Shop, but the question before the Supreme Court focuses on Brewery’s opposition to Brew Shop’s multi-class trademark registration application.  The application covers beer & beer-making-kits (both in Class 32) and also sanitizing products (Class 5).  Brewery challenged registration in both classes (and lost).  On appeal, the Federal Circuit divided up its opinion between the three types of goods.  It ruled on the merits for the beer and beer-making-kits. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021). But, refused to hear the portion of the appeal relating to the sanitizing products.

Lack of Standing: With respect to use of the mark on sanitizing products, the appellate court dismissed Brewery’s appeal because the company did not show any concrete injury since Brewery does not compete in the sanitizing product market. “To be clear, an opposer cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark.” The parties also do not compete in the beer-making-kit market. However, the court found standing there since “beer-making kits are related to beer and to some extent compete with beer since they are sold in many of the same stores.” And,  according to the court folks who brew beer also drink beer.  (Note that in this video, one of the BBS founders says that she didn’t like beer). It is important to note that the court’s holding here is on Constitutional grounds. The U.S. Constitution prevents the appellate court from hearing an appeal on this particular aspect of the case.

Brewery has not yet filed its petition for writ of certiorari, but it did recently petition the Surpeme Court for an extension of time and that document included the following:

This case presents a substantial and important question of federal law: what must a party show to have Article III standing to appeal an adverse judgment from the Trademark Trial and Appeal Board to the United States Court of Appeals for the Federal Circuit? Below, the Federal Circuit for the first time held that such appellants must show that (1) it competes in the same line of business as the appellee, and (2) failure to cancel or refuse registration of a mark would likely cause the appellant competitive injury. The Federal Circuit’s unprecedented decision contravenes this Court’s decisions, including Lexmark Int’l, Inc. v. Static Components, Inc., 572 U.S. 118 (2014), and, for many litigants, forecloses appellate review of adverse TTAB decisions.


This result is what my old Brooklyn butcher might have termed “slicing the bologna a bit too thin.”  In my view, if a party has Constitutional standing to challenge one aspect of a trademark registration, the Constitution should permit a challenge of all aspects of that application.  You could think of this like having standing to challenge claim 1 of the patent, but not claims 2-4.  That result can happen, but ordinarily requires an affirmative act by the patentee to show that there is no way that any liability would ever flow from those extra claims.

Facts: This was not raised by Brewery’s attorneys, but I’ll also note that my 2 minute internet search revealed the Brooklyn Brewery napkin below–showing that in-fact the company may compete in the sanitizing product marketplace.

In its opposition, the Brewery had argued that Brew Shop’s mark – as used on sanitation products – lacked acquired distinctiveness.  However, the Board did not actually render a decision on that issue.  In some of its briefing, Brewery argues that this situation calls for an automatic remand under the “ordinary remand rule;” and that such a remand does not require the full standing analysis. Brewery En Banc Petition.

= = =

As mentioned, the trademark oppositions and cancellation proceedings have a number of parallels to IPR challengers, including the issue of appellate standing for unsuccessful petitioners.  A patent case on the point is pending before the Supreme Court, and we are awaiting the views of the Solicitor General. Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022).

One difference between the Trademark and Patent cases is that the TM opposition statute limits the availability of oppositions to folks who “who believe[] that [they] would be damaged by the registration of a mark upon the principal register” 15 U.S.C. § 1063(a).  What that means is that we already have a decision by the TTAB that Brewery had standing to make these challenges.  The Federal Circuit did not appear to provide any deference to the TTAB’s factual conclusions regarding that issue.  In addition, the court took the unusual stance of avoiding the question of statutory standing in favor of deciding Constitutional standing in violation of the common principle of Constitutional avoidance.

Trademark Registration No. 4,034,439; U.S. Trademark Application Serial No. 86,280,776; Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021).

Dir. Vidal’s First Steps

Kathi Vidal is now the USPTO Director after being sworn-in by Federal Circuit Chief Judge Kimberly Moore.  Congratulations!

Dir. Vidal’s first press release is a call for dialogue on what needs to happen to advance the patent office and “to expand, protect, and commercialize U.S. innovation.”  In addition to IP expansionist statements, the announcement also repeatedly adds caveats: “minimizing inappropriate opportunistic behavior … deterring abuses and gamesmanship.”  The other key theme taking steps to ensure that the innovation incentive reaches broadly to all Americans “especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy . . . from every region of the Country and across gender, race, identity, socioeconomic class, and veteran status, as well as among all other groups that have been underserved and overlooked.”  This is exactly right – for our world to remain viable, we need to allow space for each person’s individual genius.   Vidal proposes reaching out to actually teach innovation “in our schools, universities, and communities and encourage the emergence of additional innovation hubs.”

Read more here.

The Corporation as an Inventive Artificial Intelligence

Prof. Ryan Abbott has gathered an amazing group of scholars for his new book on AI and IP that is forthcoming later this year. Research Handbook on Intellectual Property and Artificial Intelligence (Edward Elgar Press, Forthcoming 2022) (R. Abbott, ed.).

In general, the various chapters focus on various aspects of machine-based AI. My contribution takes a different tack and instead consider idea that modern corporations and other non-human entities are also a form of artificial intelligence.  But, unlike their computer-bound AI cousins, corporations have already been granted the legal fiction of personhood status and many accompanying civil rights.[1]

I write:

An item still lacking from the corporate arsenal is inventorship rights. Yes, a corporation may own or license an invention and its resulting patents. And in fact, most patents are owned by non-human persons. But, the law persists in most nations as it has for more than 200 years that patentable inventions must begin with a human person, the inventor. In that sense, there is no “corporate invention” because corporate ownership of patent rights are derived rather than original—they stem from a transfer of property rights from human inventors who begins the chain of title.

This chapter considers the competing legal fictions of corporate personhood and corporate invention and how those factions operate in the transformed legal regime that places less emphasis on the role of human inventors and their inventive acts.

I would love to get your suggestions and feedback. [Read mine here]. You’ll be able to read the whole book soon, but meanwhile here are a few chapters that are available in draft form:

= = = =

[1] Dennis D. Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence, Forthcoming Chapter in Research Handbook on Intellectual Property and Artificial Intelligence (R. Abbott, ed),

Preparing for Christmas and Shifting Arguments at the PTAB

by Dennis Crouch

The Federal Circuit’s April 12, 2022 decision in Everstar Merchandise narrowly focuses on PTAB trial procedure.[1] And, as a non-precedential opinion, it lacks weight.  Still, the case is important because of the fabulous Christmas Theme drawings found in the patent-at-issue.[2]

Willis Electric and Everstar compete in the decorative lighting marketplace.  In 2019, Everstar petitioned for post-grant review (PGR) of a Willis patent covering a “strength-enhanced, net-like decorative lighting structure.”[3]

These nets need to be strong enough so that they do not fall apart.  The prior art solutions of twisted-pair, thicker wires, and extra support wires solved the problem but had drawbacks of cost, bulk, and weight.  Willis improved upon the prior art with a single wire with internally reinforced strands and an outer insulating layer.  The obviousness case presented two references whose combination taught all of the claim elements: Kumada disclosed a net design; Debladis disclosed the internally reinforced wire.[4]  Although the PTAB initially granted the PGR petition, it eventually sided with the patentee—holding that a person of skill in the art would not have been motivated to combine the references.

During briefing, the patent challenger argued that cost reduction provided a motivation to combine the references.  This seemed like a natural argument because cost reduction is a stated reason for the Willis invention at issue as well as a stated concern in both prior art references. In response, the patentee got technical and provided evidence that the proffered combination would not necessarily reduce cost.  A cost reduction might come from reducing copper content, but the original petition did not particularly make the reduced-copper argument. In a reply brief, the challenger then made the link—arguing that the combination “would reduce the amount of total copper [and therefore] would reduce the cost of the system.”

The Board eventually refused to consider the particularized cost-reduction argument since it was not raised in the initial petition.  The result then was a holding that the challenger had not met its burden of proving the claims obvious.  On appeal, the Federal Circuit has vacated and remanded.

The Federal Circuit agreed that the initial petition controls the AIA trial, and that initial petition must identify the particular evidence that supports the grounds for challenging each claim.  Here, though the court distinguished between an “entirely new rationale” (which is prohibited) and responsively elaborating on prior arguments (which is allowed).  Here, the court concluded that the petition had sufficiently raised the cost-reduction argument and tied it particularly to the prior art references.  In its conclusions though, the court referenced materials beyond the initial petition itself by further noting that cost reduction was discussed in the institution decision, was the subject of expert testimony, and was briefed on the merits.  Those actions together constituted a “developed record” that allows for a “fair extension” of the original arguments. Further, “[a]ny ambiguity as to whether a reply constitutes a new argument is eliminated when the reply is a legitimate reply to arguments introduced in a patent owner’s response or the Board’s institution determination.”[5]


Definiteness: Federal Circuit’s Pliable Standard Results in Resilient Patent Claims

by Dennis Crouch

Although Nautilus made it easier for a court to find claim terms indefinite, the Federal Circuit continues indicate that the definiteness test strongly favors validity.

In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. (Fed. Cir. 2022), the court has sided with the patentee–rejecting the district court’s indefiniteness finding.

Niazi’s US6638268 covers a double lined catheter designed for placing an electrical lead in the coronary sinus vein. The outer catheter is a “resilient catheter having shape memory and a hook shaped distal end.”  The inner catheter is a “pliable catheter.”  In Figure 8 below, you can see that the larger outer catheter can get most of the way to the vein destination, but its less-pliable construction makes it difficult to follow all the twists.  The pliable inner catheter is then inserted and extended to reach the vein location.

D.Minn. Judge Wright found the terms “resilient” and “pliable” indefinite and therefore that the claims were invalid. On appeal, the Federal Circuit has reversed–holding that terms meet the requirement of “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Patent law’s definiteness requirement is derived from the requirement that patent claims “particularly pointing out and distinctly claiming the subject matter” of the invention.  35 U.S.C. 112.  The purpose of express claims is to provide public notice of the scope of exclusive rights so that competitors and potential copycats can arrange their affairs to avoid infringement.  (We could pause here to question whether competitors and potential copycats do this in the ordinary course or if it is instead merely legal fiction.)  But, the Supreme Court has also recognized that claims need not perfectly delineate claim scope — rather, the claims must provide “reasonable certainty” as to their scope. Nautilus.  In particular, the Federal Circuit has repeatedly found terms of relative degree to be definite so long as POSITA would have “enough certainty.”  Further, “a claim is not indefinite just because it is broad.” Slip Op.  On the other hand, “purely subjective” claim terms are indefinite — such as “aesthetically pleasing” as used in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345, 1349–56 (Fed. Cir. 2005) (there must be some “objective anchor”).

Here, according to the court, Niazi’s claims terms provide enough guidance to avoid being labelled indefinite.

  • Resilient: The claims require “an outer, resilient catheter having shape memory.”  In its decision, the court concluded that resilient is guided by the “shape memory” requirement.  The specification further explains that it may have a “braided design.” and may be made of “silastic or similar material” with the purpose of “return[ing] to its original shape” after being distorted.  The specification also categories resilience in terms of both torque control and stiffness.
  • Pliable: The claims require “an inner, pliable catheter slidably disposed in the outer catheter.”  The specification provides further explanation: “constructed
    of a more pliable, soft material such as silicone;” and without “longitudinal braiding, which makes it extremely flexible and able to conform to various shapes.”

In addition to each having some amount of support from the specification, the court also noted that the two terms can be read relative to one another– the pliable inner catheter must be “more flexible than the outer.”

Definiteness is ordinarily a question of law and so the Federal Circuit reviews the issue de novo on appeal. Here, the court found sufficient reasons to find the terms definite. Reversed.

Note: The court also considered dictionary definitions.  It did not discuss whether those definitions introduced extrinsic evidence requiring deference rather than de novo review.

= = = =

Niazi’s Claim 11 is a method-of-use claim that did not use the pliable/resilient terms.   Thus, it survived the district court indefiniteness attack.  The defendant here St. Jude supplied the accused catheter, and Niazi argued that St. Jude had induced doctors and hospitals to infringe.  The district court found no inducement.  On appeal, the Federal Circuit affirmed — holding that under the correct construction of the claim terms there was no underlying direct infringement.

= = = =

Exclusion as a Discovery Sanction: In his expert report, Dr. Niazi’s technical expert (Dr. Burke) stated that he had personally infringed the Niazi patent while using the accused products.  The problem: Dr. Burke had not been identified as a fact witness as required by R.26(a)/(e).  Dr. Niazi’s damages expert relied upon several license agreements to support his report. However, those agreements were not identified during fact discovery despite a specific request for documents.  Both expert reports were provided after the close of fact discovery (as is common).  As a sanction for the late disclosures, the District Court struck those facts from the expert reports and barred Dr. Burke from testifying as a factual witness.   On appeal, the Federal Circuit affirmed on a technical ground — finding that Niazi’s appeal on this question failed because he did not challenge the actual basis for the district court’s decision–whether the delay in disclosure was “substantially justified or harmless.”

Despite the exclusion order, Niazi still presented a declaration from Dr. Burke in support of summary judgment that included a number of factual claims based upon Burke’s personal experience.  The district court struck the statements and also awarded monetary sanctions under R. 37.  The Federal Circuit affirmed:

Here, the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. We see no abuse of discretion in the district court’s decision to award monetary sanctions.

Slip Op.

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Finally, the district court also excluded Niazi’s damage expert report as unreliable.

The district court excluded Mr. Carlson’s expert opinion as legally insufficient because Mr. Carlson failed to “apportion” between infringing and noninfringing uses and because he could not properly include leads in the royalty base. We affirm the district court’s exclusion.

Slip Op.   Here, the idea was that St.Jude agued that some uses were non-infringing and the expert did not attempt to apportion-out the non-infringing uses but instead merely stated that apportionment would be “impractical in view of real-world considerations.”

Here, the claim was that sales by St. Jude (along with its instructions) were inducing infringement the method-of-use claims.  The patentee argued that apportionment does not apply to method claims.   But, the Federal Circuit disagreed with that broad statement. “Damages should be apportioned to separate out noninfringing uses, and patentees cannot recover damages based on sales of products with the mere capability to practice the claimed method. Rather, where the only asserted claim is a method claim, the damages base should be limited to products that were actually used to perform the claimed method.”

Prosecution Disclaimer – What is Clear from the Record

by Dennis Crouch

Courts continue to struggle with their use of evidence for claim construction.  The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation.  The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.

The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc).  That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding.  At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires  a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.”  Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003).  In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.

I see disclaimer as an examination failure.  When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly.  If the specification would not support such an amendment, then the specification also would not support the disclaimer.  In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.

Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.”  The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse.  The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer.   In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).

Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal”  (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means.  In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer.  At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer.  In particular, the district court found that  the patentee’s prosecution disclaimer required the narrow construction.

1. A user input apparatus … comprising:

user input means for producing a user input  stream;

input means for producing [an] input signal;

converting means for receiving [the] input signal and producing therefrom an input stream; and

encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.

US6219730, claim 1.

Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.”  Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.

  • Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
  • Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.

On appeal, the Federal Circuit has rejected that construction as unduly limiting.

During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin).  Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.).   Those all look like “input signals”–but the patentee argued  in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming.  Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision.  The examiner accepted the distinguishing argument and allowed the case.

At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz.  The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.

On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.

Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.

Slip  Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.”  That is the disclaimer, nothing more.  “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.

On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency.  In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide.  [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].

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Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.

Justice Ketanji Brown Jackson

Congratulations to our newest member of the United States Supreme Court, Justice Ketanji Brown Jackson, confirmed today by by the US Senate.  Justice Brown Jackson will take office once Justice Breyer retires in June 2022.  She does not have substantial patent law experience, but does have extensive experience handling administrative law cases based upon her time as a Federal District Court Judge and Appellate Judge, both in the District of Columbia.

USPTO Leadership Updates

Longtime Commissioner of Patents Drew Hirshfeld announced today that he plans to leave the USPTO this summer.  Until that point, he will likely serve as Acting Deputy Director to help Kathi Vidal hit the ground running as she begins her tenure as USPTO Director.  Hirshfeld writes:

Kathi Vidal … is, without a doubt, the right person to lead the USPTO. Not only is she highly qualified, but she has also repeatedly shown me and so many others how thoughtful and steadfast she is in her determination to do the right things for this agency and our nation’s inventors and entrepreneurs. She will be a great leader. . . . I cannot think of a better way to conclude my time at the agency than by helping Kathi in any way I can before a permanent deputy director arrives.

In this structure, Andy Faile will stay on as acting Commissioner for Patents until a new Commissioner is appointed by the Secretary of Commerce. 35 U.S.C. 3 (“The Secretary of Commerce shall appoint a Commissioner for Patents . . . for a term of 5 years.”).  Dave Berdan has been serving in the role of deputy director under Hirshfeld.  Berdan will likely return to his role as General Counsel — pushing Will Covey back to his permanent role of Deputy General Counsel and Director for the Office of Enrollment and Discipline (OED).

Welcome Prof. Chris Holman

I want to welcome Prof. Chris Holman to Patently-O. He’ll be writing about biotech patent law issues as they arise from time to time. Holman is a fellow professor within the University of Missouri System, although we are at different schools.

Prof. Holman was a scientist before shifting to law.  He earned his PhD in Biochemistry and Molecular Biology from UC Davis and was a post-doc fellow at Syntex Research/Roche Bioscience. Holman worked as a patent law professional for a decade–both at law firms and in-house at start-up biotech firms.  Holman became a law professor in 2005 and has written extensively about biotech IP issues.


Welcome Director Vidal

The US Senate has reportedly confirmed Kathi Vidal as the Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  Welcome and Congratulations to Director Vidal.

Vidal has been handed the reins of a powerful engine of advancement and symbol of progress at an important time in history.  The agency itself is a lot to manage with 11,000+ patent and trademark examiners and a multi-billion dollar budget.  But, Dir. Vidal will also be asked to serve as a visionary and chief promotor for future US and International Intellectual Property transitions.

I expect that Dir. Vidal will work closely with Commerce Secretary Gina Raimondo and President Biden’s team in soon identifying a deputy director. That person will also need to be nominated by President Biden and Confirmed by the Senate.

I also want to congratulate and thank Patent Commissioner Drew Hirshfeld who has been acting in the role of USPTO director for the past 16 months and to Andy Faile who has been filling the role of Acting Commissioner.


Arguing Claim Construction: Step 1, Choose your Canons

by Dennis Crouch

Littelfuse, Inc. v. Mersen USA EP Corp., 2022 WL 995611, — 4th — (Fed. Cir. Apr. 4, 2022)

The district court narrowly construed Littelfuse’s U.S. Patent No. 9,564,281–leading to an admission of non-infringement.  On appeal, the Federal Circuit has vacated and remanded–finding that the proper construction provides a broader scope.

The patent claims an end-cap for a fuse and particularly requires “a fastening stem [465] that extends from the mounting cuff [460] and into [a] cavity [410] of the terminal [432].”  Claim 1 does not expressly indicate whether these parts (cuff / stem / terminal) are made from a single piece of metal (unitary) or instead are multi-piece.  Claims 8 & 9, do provide for unitary bodies that are machined/stamped “from a single, contiguous piece of conductive material.”

The district court construed claim 1 as covering only a multi-piece apparatus.  Since Mersen’s fuses were clearly unitary, Littelfuse conceded the absence of literal infringement.  In addition, Littelfuse had narrowed this portion of the claim during prosecution — that amendment also likely foreclosed a claim of equivalents.

On appeal, the Federal Circuit rejected this narrow claim construction on the following canons:

  1. Textualism: Look first to the language of the claim at issue. Here, claim 1 does not require  a multi-piece arrangement.
  2. Claim Differentiation: Interpret an independent and dependent claims so that their coverage fits like nested dolls.  Here, the district court interpreted claim 1 as excluding a unitary-body while dependent claims 8&9 require a unitary body.
  3. Consider the Prosecution History: Here, the examiner wrote in their reasons for allowance that claims 8 & 9 “require all the limitations of [claim 1].”  This gives weight to the Claim Differentiation canon.
  4. Don’t Limit Claims to the Preferred Embodiment: Here, the only embodiment that included the stem/cuff/terminal arrangement was a multi-piece apparatus. But, “Nothing in the specification states that a fastening stem cannot be present in a single-piece apparatus. . . . One can envision a stem that projects from the side of the mounting cuff even in an embodiment in which the fuse end cap is formed from a single piece of material.”

These canons together led the Federal Circuit to reject the district court’s claim construction.

Not such an easy case: So far, I’ve suggested that this was an easy case. But, the district court also had good reason for its determination that the end-cap was a multi-part.  In particular, embodiments of the specification appear to provide for two types of end-units.  Unitary and multi-part. The unitary embodiments do not have the fastening stem — it is not needed because the cuff and terminal are made of the same piece of metal.  On the other hand, the multi-part embodiments do show the fastening stem — it is needed in order to connect the cuff and terminal because they are separate pieces of metal.  You can see this difference from the multi-part drawing (above) with the unitary drawing (below).  The original claims did not include the fastening stem, but that limitation was added during prosecution in order to avoid prior art.  That addition, according to the district court, shifted the claim meaning to only cover multi-part caps. The district court noted the dependent claims but suggested that it was a mistake by the examiner to allow those after the amendment.

On remand: The patent discloses a multi-part cap with a stem; and a unitary cap without a stem.  The accused product is apparently a merger of these two – a unitary cap with a stem. The Federal Circuit has ruled here that the claims extend that far.  On remand, the district court may consider whether the full extent of this expanded claim scope is supported under the written description and enablement requirements of 112(a).


Berkheimer on Remand: District Court Finds the Remaining Claims Invalid as Indefinite.

by Dennis Crouch

In an important 2018 decision, the Federal Circuit sided partially with Berkheimer on a procedural eligibility grounds — finding disputed questions of material fact as to whether aspects of the claimed invention were “well-understood, routine, and conventional to a skilled artisan.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert denied 140 S.Ct. 911 (2020).  The district court had invalidated claims 1-9 as ineligible and 10-19 as indefinite. The appellate panel vacated that decision as to claims 4-7 but otherwise affirmed.

Back on remand, the district court Judge John Lee has now ruled that the remaining claims are also indefinite under section 112p2. Steven E. Berkheimer, Pl.  v. HP, Inc., 12-cv-9023, 2022 WL 910580 (N.D. Ill. Mar. 29, 2022).  [Berkheimer_v._Hewlett-Packard__314]

The invention is a method of parsing computer files into “multi-part object structures” with “searchable information tags.” The system then uses “manual reconciliation” that involves looking for a measure of variance. The basic idea is that this system provides a searchable archive with reduced redundancy.  Claims 10-19 require “minimal redundancy.”  That term was not defined in the specification, and the district court found it indefinite.  Berkheimer v. Hewlett-Packard Co., 2015 WL 4999954 (N.D. Ill. Aug. 21, 2015).  The Federal Circuit then affirmed that decision.

The specification uses inconsistent terminology to describe the level of redundancy that the system achieves. For example, it describes “minimiz[ing] redundant objects,” “eliminating redundancy,” and “reducing redundancies.” The only example included in the specification is an archive that exhibits no redundancy. … The specification contains no point of comparison for skilled artisans to determine an objective boundary of “minimal” when the archive includes some redundancies.

The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.

Berkheimer (Fed. Cir. 2018).  The remaining claims 4-7 do not use the term “minimal redundancy”, but instead require an archive “without substantial redundancy.”  On remand, the district court found that term equally problematic and ultimately concluded that it failed delineate “the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Without Substantial Redundancy: The district court identified the “substantial” wiggle-word as “facially ambiguous”–but concluded that ambiguity could be permissible someone of skill in the art had sufficient guideposts.  Typically, those guides might come from examples within the specification.  Here, however, the patent specification only includes an example of no-redundancy.  And, during prosecution it appears that the examiner and Berkheimer treated “without substantial redundancy” and “minimal redundancy” as synonyms.  Thus, the district court found that “substantial redundancy” lacked reasonable certainty for the same reasons as “minimal redundancy.”

Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.

“Judgment is entered in HP’s favor, and this case is terminated.”

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The district court invalidated the “minimal redundancy” claims as part of its 2015 claim construction order.  At that time, neither party suggested that “without substantial redundancy” needed construction or was invalid.   It was only on remand that HP raised the new argument.  Berkheimer unsuccessfully argued waiver. The district court noted that its scheduling order did not preclude late-stage indefiniteness arguments.

Oddly, the district court went on to conclude that “the construction of ‘without substantial redundancy’ only became relevant after the Federal Circuit held that the synonymous term ‘minimal redundancy’ was invalid.”  This statement is wrong.  The issue was already relevant well before; and the Federal Circuit affirmed a prior invalidity finding.  What is true: back in 2015, the parties were limited to only 10 claim construction issues and ‘without substantial redundancy’ didn’t make the top-ten list.  The Federal Circuit decision pushed it up in the ranking.

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One result here is that Berkheimer will never get the chance to present the eligibility issues to the jury for their factual findings.