All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

En Banc at the Federal Circuit

The Federal Circuit this week denied two interesting petitions for en banc rehearing:

Kingston Technology Company v. SPEX Technologies, Inc., Docket No. 19-1342 (Fed. Cir. 2019)

Does WiFi One apply only when the patentee is appealing and not when the IPR petitioner appeals an institution denial?

In this case, the PTAB held that § 315(e) estopped Kingston from petitioning for IPR. Had the Board decided in Kingston’s favor, the patent holder (SPEX) could have appealed under Wi-Fi One. However, the panel found that an orthogonal Board decision against the patent owner was not appealable.

Genzyme Corporation v. Zydus Pharmaceuticals (USA), Docket No. 18-02362 (Fed.
Cir. 2019)

Whether a patent-challenger asserting obviousness must prove that a POSA would have had a reasonable expectation of success as to achieving unclaimed features, such as achieving alleged unexpected results that are not recited in the asserted claims.

The patent challenger here argues that “[t]ying the reasonable expectation of success inquiry strictly to the claims as written ensures that courts do not decide obviousness on hypothetical claims that are fundamentally narrower than the actual claims at issue.”

Earlier this month, the Federal circuit also denied a well written petition in Board of Regents v. Boston Scientific Corporation, Docket No. 18-01700 (Fed. Cir 2019)

1. Whether the patent venue statute, 28 U.S.C. § 1400(b), dictates venue in state party patent infringement cases.

2. Whether state sovereignty includes the right to not litigate in a nonresident defendant’s home state (and hence the right to choose any forum with the requisite subject matter and personal jurisdiction).

3. Whether a federal transferee court can acquire jurisdiction over a state without its consent or waiver of any objection to such court’s jurisdiction

En banc petitions are still pending in several cases:

Both the Chamberlain Group and American Axle case have been mentioned to me by PTO/Congressional leaders as examples of how Alice has gone too far.

In American Axle, the patent is at issue, U.S. Patent 7,774,911, relates to “automotive driveshafts used in pickup trucks — claiming “novel and unconventional methods of manufacturing improved driveshafts that include ‘liners’—low cost, hollow tubes made of a fibrous material (such as cardboard).” Petition.  The courts found the claims ineligible as directed to “Hooke’s law, and possibly other natural laws.”

National Patent Application Drafting Competition

Law Students: the USPTO invites your school to participate in the 2020 National Patent Application Drafting Competition.

The objective of this competition is to introduce law students to issues arising in United States patent law and to develop their patent application drafting, amending, and prosecuting skills.

The program is an expansion of the International Patent Drafting Competition and is the brain child of Damian Porcari – Director of the Midwest Regional Patent Office in Detroit and longtime in-house IP counsel at Ford.

The competition:

Student teams will be given a hypothetical invention statement for which they will then search the prior art, prepare a specification, draft claims, and present their reasoning for patentability before a panel of judges comprised of patent examiners, practitioners, and high profile guest judges.

Students will draft various patent documents prior to the competition. Afterwards, the will head to their competition site for presentation and perhaps to respond to examiner input.

The initial phase of competition will consist of up to 15 teams in a regional round taking place in Detroit; Denver; San Jose; Dallas; and Washington, DC area. The winner from each region will be invited to compete in the National Final Competition at USPTO Headquarters in Alexandria, VA, on April 20, 2020 before a panel of senior USPTO officials and other esteemed judges.

Registration Closes December 15, 2019. Register here

2020 US Patent and Trademark Office National Patent Drafting Competition, Online Event # 77918334837.

See you there!

Officers of the United States Shall be Appointed by the President

Hearings tomorrow in the House of Representatives on PTAB Appointments Clause Issues arising from the Federal Circuit’s recent decision in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019).  We have a law professor heavy panel with Professors John Duffy, Arti Rai, and John Whealan along with Bob Armitage (who tends to speak like a professor).

The basic framework is that the Constitution requires all “Officers of the United States” to be nominated by the President with “Consent of the Senate.”  U.S. Const. Article II, Section 2. The so-called appointments clause has a caveat that “inferior Officers” may be appointed by Courts or Heads of Departments if Congress so allows.  Currently PTAB Judges (Administrative Patent Judges) are treated as inferior officers by statute — appointed by the Secretary of Commerce.  However, the increased responsibility of AIA Trials has pushed their role into the territory of Principal Officers that must be appointed by the President.


Now reading: Shephard’s Drone

Prof. Brett Frischmann (Villanova Law) perhaps best known for his 2018 book Re-Engineering Humanity and his law & econ work on infrastructure (broadly defined).  His new book though is a futuristic sci-fi novel — Shephard’s Drone.

They now say that using technology to design humans is normal. Parents order what they like. If you don’t like what you get . . . .

I’m listening to the Audible version — so far not much law, but we’ll see.




Tough 1-2 punch from the PTO: Private PAIR can no longer be used to access file histories not associated with your customer number; Public PAIR doesn’t work.  On Friday, USPTO Chief Information Officer Jamie Holcombe provided a report to the PPAC but did not include this important practice change.

Note: Public file histories are also available via the USPTO’s Global Dossier:



Big Big Big Case: Oracle v. Google

by Dennis Crouch

Odds are good that the biggest patent case of the year will be a copyright case. The Supreme Court recently granted certiorari in Google v. Oracle — a case focusing on copyright protections for the JAVA programming interface.  The innovations at issue in the case sit near the fuzzy ‘borders’ of copyright and patent law and a number of members of the court will be looking to define those dividing lines.

What is perhaps the key case on-point well known but quite old: Baker v. Selden, 101 U.S. (11 Otto) 99 (1880).  Selden had invented a new set of “condensed ledger” forms that improved the practice of bookkeeping.  Baker apparently copied the forms and sold them at a good profit. Selden’s Widow then sued for copyright infringement and won in the district and circuit courts.  However, the Supreme Court reversed — holding that copyright does not extend to the “art itself:”

The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such a book.

Instead of copyright, the Supreme Court suggested that Selden should have pursued patent rights. Here is a long quote from the case:

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government.

The difference between the two things, letters-patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book, without getting a patent for the art, the latter is given to the public. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author’s mind, and which he thus described by words in his book.

Even if the Supreme Court was serious at the time that Seldon should have gone after patent protection, today we know that such an attempt would be seen as improperly claiming an abstract idea under Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).  In its petition, Google explains that – as in Seldon, a “monopoly over those
methods and diagrams could be secured only by patent law, not copyright.”

 So too here: the Federal Circuit’s decision to extend copyright protection to the Java API declarations effectively grants Oracle a patent-like monopoly over the Java language. . . . The Federal Circuit’s approach wreak havoc on copyright law, but it also risks disturbing the balance between copyright law and patent law, the two principal bodies of law that govern innovation. The Federal Circuit has effectively provided blanket copyright protection to an entire class of computer code. . . . .

[I]f the creator of computer code “wishes to obtain a lawful monopoly on the functional concepts in its software, it must satisfy the more stringent standards of the patent laws,” including novelty and nonobviousness. Quoting Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 603 (9th Cir.),
cert. denied, 531 U.S. 871 (2000).

Google Petition.  Google does not point out that these “functional concepts in its software” also lack patent eligibility under the new Supreme Court decisions.

New Checksum Generator: Patent Eligible

by Dennis Crouch

KPN v. Gemalto M2M (Fed. Cir. 2019)

Judge Stark (D.Del) sided with the defendants in this case — finding KPN’s patent claims ineligible under 35 U.S.C. 101. U.S. Patent No. 6,212,662.  On appeal, the Federal Circuit has reversed — holding that the claims are not directed toward an abstract idea:

Rather than being merely directed to the abstract idea of data manipulation, these claims are directed to an improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not.

Slip Op.

KPN is a large Dutch telecom.  The claims here are directed to a “device” to create “check data” (checksum or hash) for error checking digital signals as they pass through the lines.

The basic approach here is to create a checksum before transmitting the data and then recreate the checksum at the other end — if the two match then we know the data  was (probably) not corrupted.

The invention here is directed improving chance that the data was “probably not corrupted” by somewhat randomly mixing-up the original data before calculating the checksum.  That approach helps catch systematic errors undetected by a less nuanced checksum algorithm.  The claims use a “varying device” to do the mixing-up that changes bit-positions relative one another and requires that the mixing be varied “in time.”  Although the claims do not spell-out the meaning of “in time” – I assume that we’re talking about something like a pseudo-random number generator function that uses the current time as its repeatable initiating point.

Note here, all that the claims require are two devices working in tandem to (1) mix-up (vary) the incoming data in a way that changes over time; and (2) generate check data.

The district court dismissed the case – finding that the claims were directed toward the abstract idea of “reordering data and generating additional data.”  The court noted that the specification might have disclosed an eligible invention, but that the claims were drafted at too abstract a level.

On appeal, the Federal Circuit reversed — focusing on the court’s regular distinction between inventions that improve computer capabilities vs those that invoke computers as tools.

An improved result, without more stated in the claim, is not enough to confer eligibility to an otherwise abstract idea. . . . To be patent-eligible, the claims must recite a specific means or method that solves a problem in an existing technological process.

Here, the court concluded that requiring mixing-up of data that varied in-time “recites a specific implementation of varying the way check data is generated that improves the ability of prior art error detection systems to detect systematic errors.”

[T]he claimed invention is … directed to a non-abstract improvement because it employs a new way of generating check data that enables the detection of persistent systematic errors in data transmissions that prior art systems were previously not equipped to detect.

The defendant also argued that the claims were ineligible because the result was simply data — the claims did not require any particular use. “According to Appellees, without this last step tying the claims to a ‘concrete application,’ the claims are doomed to abstraction.”  The Federal Circuit rejected that argument — holding that the claims are directed toward an improved tool — a checksum creator.  The claims need not “recite how that tool is applied in the overall system.”

Rather, to determine whether the claims here are non-abstract, the more relevant inquiry is “whether the claims in th[is] patent[ ] focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke processes and machinery.” Quoting McRO; Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (finding claims to be directed to a patent-ineligible abstract idea because “the focus of the claims [wa]s not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools”).


= = = =

One element of the decision that I see as important is that the court focused on what the patentee claimed to be their improvement within the patent document:

The claims sufficiently capture the inventors’ asserted technical contribution to the prior art by reciting how the solution specifically improves the function of prior art error detection systems.

Note that in this case, the specification identifies the prior art approach and its deficiencies and then explains how the invention is an improvement over the prior art. That approach had fallen out of favor in U.S. patent practice appears to be what saved-the-day for the patentee in this case.


= = = = =

Dependent Claim 2 is at issue:

1. A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:

a generating device configured to generate check data; and

a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;

wherein said varying device includes a permutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.

2. The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.


Inequitable Conduct at the Federal Circuit

I was thinking some today about the pending Federal Circuit inequitable conduct case in Conversant Wireless Licensing v. Apple Inc., Docket No. 19-02039 (Fed. Cir. 2019).  That case involves acts by the prior owner of Coversant’s patent — Nokia.  During standard setting discussions for an old GPRS communication standard, Nokia apparently delayed disclosure of its related patents for several years.  Although the patents were eventually disclosed, the district court found that the Nokia’s actions were problematic enough to hold the patent unenforceable.

I have not written as much about inequitable conduct since the Federal Circuit swept the issue away in, Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).  Perhaps parties are now too busy with IPR proceedings.

Chart below shows the number of Federal Circuit decisions using the term “inequitable conduct” each year.


My prior chart in 2009 showed a totally different trend (also less precise markers).


Inequitable Conduct: Trends at the Federal Circuit

Logo Placement Relevant for Infringement in Design Patent Cases

Columbia Sportswear v. Seirus Innovative Accessories (Fed. Cir. 2019)

It is a bit chilly here in Missouri and so I wore my Seirus gloves that I purchased after the last-time I wrote about this case.

Note here that my gloves are the cheap liners, the lawsuit focuses more on the expensive gloves and clothing that have the heat-reflective material on the inner liner. My gloves also show a different pattern than the original accused HeatWave product.

In the case, Columbia asserted both a design patent (US.D657093) and a utility patent (US.8453270) and the case resulted in a partial victory for Columbia — Jury award of $3 million in damages for design patent infringement but a determined that the asserted utility patent were invalid.

The ‘093 design patent is directed to a “heat reflective material” as shown in the drawing above.  Columbia won its design patent case on summary judgment and then a jury awarded $3 million in damages.  On appeal, the Federal Circuit has vacated the summary judgment — holding that the district court improperly decided disputed issues of material fact reserved for a jury.

Design patent infringement is a question of fact. . . . The “ordinary observer” test is the sole test for determining whether a design patent has been infringed. Egyptian Goddess (Fed. Cir. 2008) (en banc). The test originates from the Supreme Court’s Gorham decision, which provides that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham Co. v. White, 81 U.S. 511, 528 (1871)). . . . The ordinary observer is considered to be familiar with prior art designs, and “[w]hen the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art.” Crocs (Fed. Cir. 2010).

Seirus’ key argument here is that the location of its logo, coupled with differences in line thicknesses and uniformity raise questions of fact sufficient to get the case to the jury — so that a reasonable juror could find no infringement.  The district court disagreed with that argument — finding that  “even the most discerning customer would be hard pressed to notice the differences between Seirus’s HeatWave design and Columbia’s patented design.”

On appeal, the Federal Circuit has sided with the adjudged infringer holding that the logo should be considered as part of the non-infringement analysis. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed.Cir.1993), the Federal Circuit wrote that “[d]esign patent infringement … does not … allow of avoidance of infringement by labelling.” That decision led the district court here to come to the conclusion that it is “well-settled that a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design.”

On appeal, the Federal Circuit instead distinguished L.A. Gear.

In evaluating infringement there, we explained [In L.A. Gear] that design infringement is not avoided “by labelling.” A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name. But L.A. Gear 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. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.”

Slip Op.

Regarding wave thickness, the district court held that thickness was not claimed in the patent. Obviously wrong because everything in the drawing is claimed.

[T]he claim of the ’093 patent is drawn to the “ornamental design of a heat reflective material as shown and described,” and Columbia’s design has uniform line thickness in every figure in the patent.

Slip Op. Note here that the district court cited to several decisions holding finding that design patents were not limited to “any particular size” and thus, for instance could simultaneously cover both a motorcycle for humans and one for Ralph the Mouse. 

Those precedents didn’t fit here because we’re not talking about the overall sizing but rather relative sizing and uniformity.

Finally, the district court also noted several other differences between the patent and the accused product, but found them each minor. On appeal, the Federal Circuit found the approach improperly piecemeal and did not properly consider overall visual impression.

[T]he district court’s piecemeal approach, considering only if design elements independently affect the overall visual impression that the designs are similar, is at odds with our case law requiring the factfinder to analyze the design as a whole. See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006). An ordinary observer is deceived by an infringing design as a result of “similarities in the overall design, not of similarities in ornamental features considered in isolation.” Id.

Slip Op.  Thus, the case is remanded and will now likely go to a jury trial.

In the appeal, the defendant also argued that profit disgorgement under 25 U.S.C. § 289 should be determined by a judge rather than a jury.  The Federal Circuit noted that to be an important question, but did not reach it on appeal after having already vacated the infringement findings.

Note here that the ornamental design is directed to a heat reflective material -getting close to a design in the abstract. See Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019).

Federal Circuit Rejects Patenting Designs “in the Abstract”

Utility patent — the jury found asserted utility patent claims invalid as both anticipated and obvious. On appeal, Columbia argued that the obviousness evidence lacked “competent expert testimony” that the Federal Circuit has previously required in complex cases to explain the prior art to a jury. On appeal, the court ruled that the invention here was simple enough so that expert explanations were not required:

[W]e are not persuaded that the legal determination of obviousness in this case requires such evidence. The technology here—coated materials for cold weather and outdoor products—is “easily understandable without the need for expert explanatory testimony.”  Quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) and Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004)). . . . There is no discussion of thermodynamics or the mechanism that yields the claimed material’s heat retentive properties in the patent. Thus, given the patent and references’ general, easily understood language, this is not a case that requires expert explanation.

Slip Op.

Venue: The venue setup for this case was interesting.  It was originally filed in Oregon and then was transferred to California following T.C. Heartland.  Since the case was already far-along in the litigation process (post summary judgment), Judge Hernandez who handled the case in Oregon also got himself temporarily assigned to the case in California and ran the trial from there.  On appeal, Columbia argued that the transfer was improper because Seirus had waived its venue argument. However, the Federal Circuit found no problem — holding that the district court did not abuse its discretion in excusing Seirus’s waiver of its venue defense.

First Post-Samsung Design Patent Damages Verdict

Guest Post: The real puzzle in Campbell Soup v. Gamon Plus

By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Gamon Plus has filed a petition for rehearing in its design patent dispute against Campbell (previous Patently-O coverage of the case by Professor Crouch here).

Like the majority and the dissent in the panel decision, the petition does not directly address the main difficulty raised by this case—namely, how should we apply the design patent “primary reference” test for multi-article designs?

According to Gamon Plus, its two patents claim “designs of displays developed by Appellee Gamon Plus specifically for the display of Campbell Soup cans in stores.” Here are the illustrations Gamon Plus included in its petition for rehearing:

However these claims are interpreted (a matter of much dispute in this case), they are each clearly directed to what we might call a “multi-article” design. Each design defines parts of the shapes of separate articles—a dispenser and a can.

The problem is that the design patent “primary reference” requirement was created in the context of—and implicitly assumes—a single-article design. The lesson in Durling and Rosen was that you can’t create a Franken-article to serve as a primary reference. If the patent (or application) claims a design for a table, you can’t splice parts of different tables together to form a single, hypothetical table. You have to find a table that actually exists (or a sufficient description thereof) in the prior art.

But what happens when the design extends over separate articles? Gamon Plus (and Judge Newman, in dissent) seem to argue that there must be a single reference that explicitly discloses both articles being used together in the same way. That can’t possibly be right—especially on the facts of this case.

Gamon Plus conceptualizes its design as a “display” with a label and a can with “specific dimensions” is placed “at a specified relative location spaced below the [dispenser] label.” But Gamon Plus didn’t invent that can shape. To the contrary, as quoted above, Gamon Plus says the dispenser was designed specifically for Campbell’s Soup cans.

The only shape that Gamon Plus invented was the shape of the dispenser. That shape may be defined by and adapted to the shape of the can. And it may be meant to display that can in a particular position. But a patentee should not be able to effectively immunize a design for one article from § 103 scrutiny merely by claiming the “design” is really the use of that article with some other (unoriginal) article.

Whether inherency is the best way to get at these issues is another question. Perhaps, when it comes to multi-article designs, the primary reference test should be applied on an article-by-article basis. Or maybe § 171 should be interpreted to exclude multi-article designs. But in any case, it would be nice to see the Federal Circuit confront these issues directly.

= = = =

Side note: As someone who’s studied design patent nonobviousness for a long time, the thing I found most surprising thing about this decision was that the majority thought Linz looked similar enough to be a primary reference—hypothetical can or no hypothetical can. In recent cases, it’s been hard to see much blue sky between “basically the same” (the primary reference standard) and “the same” (the anticipation standard), at least as the former is applied by the Federal Circuit. For more on some of these cases, and design patent nonobviousness more generally, see this article and this post. If Campbell signals a shift away from that overly strict application of the test, that would be a welcome development.

How to use DOCX in EFS-Web and PAIR

From the PTO:

Join us for a seminar on filing DOCX, which is structured text. The DOCX Information Sessions will start Wednesday, November 13 from 2-3 p.m. ET. We will discuss DOCX as an efficient way to file a patent application electronically. You’ll learn what the DOCX format is, how you can use it to file nonprovisional utility applications, and the benefits it provides to you and your patent applications.

The webinar is free and open to all. Please register for available dates and times.

More information is available on the event page of the USPTO website


by Dennis Crouch

In re Copeland-Smith (Fed. Cir. 2019)

David Copeland-Smith is a leading soccer coach and has been training players for years using his registered trademark BEAST MODE SOCCER. [] .

Image result for BEAST MODE SOCCER

The mark was registered early-on for “coaching services.” However, Copeland-Smith also wanted a registration covering t-shirts and soccer balls. (The amended application disclaimed rights to SOCCER except as part of BEAST MODE SOCCER.)

The problem for Copeland-Smith is that other folks have their own registered Beast-Mode marks. This include’s former NFL’r Marshawn Lynch’s BEAST MODE apparel line. [].

In this situation, the PTO asks whether the applicant’s mark is likely to cause confusion with another registered mark. § 2(d) of the Lanham Act (15 U.S.C. § 1052(d)).  The du Pont factors serve as the guide in this likelihood of confusion analysis.  Here, the focus was on factors 1 and 6:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.

6. The number and nature of similar marks in use on similar goods.

Factor 1 – similarity of the mark —  Copeland-Smith argued that BEAST MODE SOCCER has substantial dissimilarity from the shorter BEAST MODE. On appeal, the Federal Circuit agreed with the TTAB that the word SOCCER shouldn’t be given much weight because it is a generic/descriptive term and that BEAST MODE is the most memorable and impactful portion of the mark.  The court also affirmed the potential overlapping markets because Lynch’s mark is not tied to “football themed” apparel, but rather “encompass trade channels through which soccer clothing is also sold.”  Note here that analysis of these factors is a question of fact, and so the Board’s conclusions were given substantial deference on appeal.

Factor 6 – number and nature of similar marks — Copeland argues that Lynch’s mark is weak because “Beast Mode” is a well known American slang referring to using “high effort or energy in exercise or sport.” (Citing the UrbanDictionary). (I’ll note that several UrbanDictionary definitions refer directly to Lynch. E.g., “beastmoed: to go crazy like marshawn lynch does.”) (I’ll also note the following definition “Patent: To take an existing commodity and claim ownership over its production rights.”)

On appeal, the Federal Circuit again agreed with the TTAB’s factual conclusion that Factor 6 favored denial-of-registration.  The court noted that Copeland-Smith produced a “large quantity of evidence”, but that the evidence lacked “quality.”

The Board closely inspected the evidence and determined that, despite the volume of evidence submitted, much of it was of limited probative value on the question of the weakness of Lynch’s BEAST MODE mark for t-shirts and other clothing.

Denial affirmed – no registered mark for BEAST MODE SOCCER on clothing or soccer balls.

Chestnut Hill Sound Inc. v. Apple Inc.

Chestnut Hill Sound Inc. v. Apple Inc. (Supreme Court 2019)

In an appeal from an inter partes review decision of unpatentability, a losing Patent Owner-Appellant is more than three times as likely to receive a one-word summary affirmation than a losing Petitioner-Appellant. The Federal Circuit issues these one-word summary affirmations under Federal Circuit Rule 36.

This Court has already requested briefing on a related question regarding Federal Circuit Rule 36(e) in Straight Path IP Group, LLC v. Apple Inc., et al., Sup. Ct. No 19-253.

The Questions Presented below address disparities of outcomes for Patent Owners versus Petitioners, but they may be considered companion issues.

1. Can a court ever choose to write reasoned opinions for one class of losing appellants and not another under the Due Process and Equal Protection Clauses; and if so, how disparate can the issuance rates of reasoned opinions, versus summary affirmations, be for different classes of appellants?

2. Is the Public entitled to reasoned opinions when the absence of those opinions diminishes the Public’s right of access to the courts and ultimately results in the erosion of the Rule of Law?

ChestnutHillPetition Oct292019.

[Note, the Federal Circuit issued eight judgments on appeals today: Six R36 affirmances without opinion; and two non-precedential opinions.]

From the Petition:

Collabo: v. Sony: Due Process Violation and a Takings

by Dennis Crouch

Collabo Innovations, Inc. v. Sony Corporation (Supreme Court 2019)

Everyone will admit that a lot has changed in patent law since Collabo’s U.S. Patent 5,952,714 issued in September 1999.  Although ex parte reexamination was available, the American Inventors Protection Act (AIPA) authorizing inter partes reexamination was not enacted until November 1999. However, inter partes reexamination only applied to patents issued from applications filed after November 1999. Pub. L. 106–113 Then, in 2011, Congress created inter partes review — and this time made it retroactive.

After Collabo sued Sony for infringement, Sony responded with petitions for inter partes review.  The PTO instituted review and found the claims unpatentable by a preponderance of the evidence and the Federal Circuit affirmed.  With regard to Collabo’s due process and takings claim, the court found itself bound by a parallel decision in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019).  Celgene is pending petition for en banc rehearing on the question:

Whether retroactive application of inter partes review (“IPR”), to patent claims issued before the America Invents Act (“AIA”), constitutes an unconstitutional taking?

[Celgene Petition Rehearing].  I’ll note here a fact difference between these cases is that Collabo’s patents were never subject to Inter Partes Reexamination while Celgene’s patents were.

In its new petition, Collabo asks the following two questions:

1. Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA violate the Takings Clause of the Fifth Amendment?

2. Does the retroactive application of inter partes review to a patent that issued before the passage of the AIA violate the Due Process Clause of the Fifth Amendment?

In Oil States (2018), the Supreme Court upheld AIA Review proceedings — finding that the process did not violate requirements of either Article III or Seventh Amendment.  However, the Supreme Court expressly left-open the potential for future challenges on grounds of takings and due process:

We emphasize the narrowness of our holding. We address the constitutionality of inter partes review only. . . . [W]e address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued. Nor has Oil States raised a due process challenge. Finally, our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.

Oil States.

The basic setup here is that the AIA makes it easier to invalidate patents with its lower presumption; lower standard of proof; and (until recently) broader interpretation of patent scope.  It is also true, in my opinion, that no one has a constitutional right to assert an invalid patent.  The deeper question then is whether AIA review is merely a procedural change to more efficiently get to the validity question, or does it unduly undermine the ‘vested rights’ of patent holders.

Inventors per patent application

by Dennis Crouch

The chart above shows that the trend is continuing — more inventors per patent application.  The rising series are applications with 3 or more listed inventors and the declining series are those applications with only 1 listed inventor.  The percentage of applications with 2 listed inventors is remaining fairly constant over the past 15 years.  I’ll do a follow-up showing that more-inventors correlates with higher allowance rate.  The series stops in Spring 2018 because of the 18-month publication delay of new applications.

When a Library Holding is not Meaningfully Indexed

by Dennis Crouch

Telefonaktiebolaget LM Ericsson v. TCL Corp. (Fed. Cir. 2019)

The PTAB sided with TCL — finding the challenged claims of Ericsson’s US Patent 6,029,052 unpatentable as obvious.  Only claim 18 is on appeal, which claims a method for filtering an inbound signal, including “band-pass filtering” (12); then amplifying the signal (34); then mixing (40) the signal with “inphase and quadrature oscillator signals” that were derived from a frequency-divided first oscillator signal (36) (resulting in two separate signals); then low-pass filtering both signals (42).

A key focus of the appeal is the question of whether the purported prior art – a German magazine article – was publicly available prior to Ericsson’s critical date (here 1-year before filing date of July 1, 1997).

The cover of the magazine lists a date of May/June 1996. However, Ericsson argued that the listed date on a magazine is not enough to prove that it was actually published by that time — especially here where a one-month delay discrepancy in publication would mean that the document was not prior art.  Ericsson found the article in the UCLA library — and provided evidence that it had not been received at UCLA until October 1996 — after the critical date.

TCL then provided a first letter from a German librarian who indicated that their library received access on June 19, 1996 (just before the critical date).  However, on challenge from Ericsson, the letter was withdrawn as inadmissible because the librarian refused to provide a sworn statement or to be deposed in the US.

Subsequently, TCL found Doris Michel — the “only individual TCL found who has personal knowledge of the record-keeping procedures used in 1996, was willing to sign a sworn declaration, and is willing to travel to the U.S. to be deposed.”  Michel indicated in a sworn statement that the article was “inventoried by the Library on June 18, 1996” and, if standard procedures were followed, would have been “accessible for use to the public after a processing time of 1-2 days.”

The PTAB allowed the Michel evidence and testimony and held that the article was publicly accessible (albeit in Germany) prior to the critical date.  And, as such was prior art.

Admissibility: On appeal, the patentee argued that the evidence should have been excluded by the PTAB because it was not timely.  In particular, PTAB rules require petitioner to provide sufficient evidence at the petition stage, not well into the trial phase. Under PTO Regs, supplemental information can only be submitted if it “reasonably could not have been obtained earlier.”  In this case, however, TCL did not even start looking for the librarian until after Ericsson filed its objections.

The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

37 C.F.R. 42.123.  In this case, the Federal Circuit affirmed the PTAB decision allowing the evidence — finding that the PTAB did not abuse its discretion in determining that “consideration of the supplemental information would be in the interests of justice” — especially because Ericsson was given sufficient opportunity to respond to the evidence and to provide any contrary evidence.

Note that the Federal Circuit did not directly address the requirement of showing that the evidence could not have been obtained earlier.

As to the merits, Ericsson argued that public shelving is insufficient to show public accessibility.  Although the article/magazine were apparently not meaningfully indexed, the magazine had been published for the past thirty years.  As such, “[t]his case is unlike cases in which a single dissertation or thesis was housed in a library.”

Note here, that the appellate panel again does not provide a full analysis of its reasoning here.  Since the article/magazine was not meaningfully indexed, what were the additional features to let the court know that it was sufficiently publicly accessible? What would have connected the dots here would be (1) some showing that the publication was well known to persons interested in the subject matter; (2) that the publication was known to be in the library in-question (perhaps proven by showing that the library had a subscription for several years); and (3) that the article in question is one that would be expected to find in the magazine.

Obviousness Affirmed.

Debbie McComas (Haynes & Boone) handled the appeal for Ericsson while Julie Goldemberg (Morgan, Lewis & Bockius) represented TCL.

Allen v. Cooper: Suing States for IP Infringement

by Dennis Crouch

Allen v. Cooper (Supreme Court 2019)

In this copyright case, the Supreme Court is wrestling with the question of sovereign immunity.  Does the 11th Amendment shelter States (North Carolina in this case) from copyright infringement lawsuits.  The plaintiff  — Frederick Allen — documented the 1998 salvage of the Pirate Blackbeard’s ship Queen Anne’s Revenge that sank near the North Carolina coast in 1718.  North Carolina wanted to use Allen’s copyrighted material, but didn’t want to pay.  The state legislature stepped in with “Blackbeard’s Law” — designating all photos, videos, and other documentary materials of shipwrecks to be public records. Allen then sued N.C. for infringement (Cooper is N.C. Governor).

In the background is the Copyright Remedy Clarification Act (CRCA) of 1990 that expressly abrogates state immunity in the area of copyright law:

Any State … shall not be immune, under the Eleventh Amendment [or] any other doctrine of sovereign immunity, from suit in Federal Court … for a violation of any of the exclusive rights of a copyright owner….

17 USC 511(a).  The basic question in the case is whether CRCA is unconstitutional:

Whether Congress validly abrogated state sovereign immunity via the CRCA in providing remedies for authors of original expression whose federal copyrights are infringed by states.

In some ways this case can be seen as a follow-on to Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999).  In that patent case, a 5-4 Supreme Court held that Congress had improperly authorized patent infringement lawsuits against States. The area of law has seen further development since 1999, including an important bankruptcy-related decision in Central Virginia Community College v. Katz, 546 U.S. 356 (2006).

= = =

The Supreme Court held oral arguments in the case on November 5, 2019.

Allen’s basic argument is that state immunity is inconsistent with constitutional power of “securing … exclusive rights.” Further, the 14th Amendment is seen as providing additional power to Congress to ensure that each state provides due process and equal protection. However, the Supreme Court requires actual constitutional violations before Congress can legislate in this area. [Oral Argument Transcript]

Arguing on behalf of the copyright holder, Derek Shaffer explains:

MR. SHAFFER: Exclusive against whom, Your Honors? Exclusive against all comers, exclusive against the world, including the government and including states.

The key problem with N.C.’s argument is that it goes against the Court’s reasoning in Florida Prepaid.

JUSTICE GINSBURG: All — all that is — would be highly persuasive if we didn’t have the patent decision, the Florida Prepaid decision. It is the very same clause. It’s the very same secure. It’s the very same exclusivity.

MR. SHAFFER: Correct, Justice Ginsburg. But the Court was not examining the text. The Court was not examining the clause. . . . That wasn’t before the Court. It wasn’t even raised before the Court.

JUSTICE KAGAN: If you are right, we would then have to go back to Florida Prepaid, right, and topple that rule?

MR. SHAFFER: It would be certainly open to folks in patent cases to make that argument, Justice Kagan.

JUSTICE ALITO: So, basically, you’re asking us to overrule Florida Prepaid?

MR. SHAFFER: I’m asking this Court to follow Katz, Justice Alito, where I think Florida Prepaid was [already] overruled. [See Central Virginia Community College v. Katz, 546 U.S. 356 (2006) (Does the Bankruptcy Clause of the U.S. Constitution (Article I Section 8), waive the states’ sovereign immunity?)]

Arguing on behalf of N.C., RYAN PARK added his thoughts:

JUSTICE ALITO: Mr. Park, can I take you back to the interesting suggestion that perhaps Congress could have justified what it did in this act by saying that we predict that a high percentage of copyright infringements are intentional and, therefore, violate due process. If we were to accept that, is there any reason why the same reasoning would not apply in patent litigation?

MR. PARK: No, I don’t believe there is any — any distinction there. [DC: note, this is wrong since patent law does not have a copying requirement.]

Due Process and Takings are not expressly raised in this case are interesting.  Even without CRCA, a copyright holder may be able to bring a Federal Due Process or Takings case against a state who infringes the copyright.  A major difference here is that copyright damage and injunction statutes go far beyond what is required for a due process violation or taking. Mr. Park explained for the State how the copyright-owner friendly damage regime is one reason to protect sovereign immunity (and taxpayer money).

MR. PARK: My friend has failed to identify any historical evidence that anyone at the founding remotely contemplated that the intellectual property clause would allow for damages lawsuits against states. . . . Congress could not commandeer state legislatures and force them to pass copyright protective laws, nor could they, under separation of powers principles, vest judicial review of copyright claims in the Senate Judiciary Committee. And, likewise, state sovereign immunity limits Congress’s authority to expose state treasuries to the Copyright Act’s exorbitant financial remedies. . . . And liability under the Act is expansive. It’s vastly greater than anything required by the Due Process Clause. It includes statutory damages of up to $150,000 per infringement, even if the plaintiff cannot prove she suffered any actual harm. . . .

JUSTICE BREYER: [For N.C. to win] we’ve got to decide how copyright, copying, and the due process clause fit together, which, to my knowledge, this Court hasn’t really gone into. And it sounds like a pretty good mare’s nest.

From the copyright holder’s perspective, the damage award is inherent to the copyright clause:

MR. SHAFFER: Clearly the framers’ contemplation is these are exclusive rights that anyone who may infringe has to pay for.

JUSTICE SOTOMAYOR: — the latter part you’re assuming. It says securing the copyright, but it doesn’t say making sure that the copyright owners are paid.

MR. SHAFFER: To promote progress. To promote progress, Justice Sotomayor. It is a preamble that is not echoed anywhere else in Article I.

JUSTICE SOTOMAYOR: Some would say that injunctive relief promotes progress.

MR. SHAFFER: James Madison’s conception reflected in the text of what the monopoly would achieve is that the authors and inventors would get paid for their inventions. They would get paid for their creations. And as the Court, as I indicated, back in 1888 recognized, it is antithetical to that to say that government of any kind, certainly the federal government, can infringe those exclusive rights that — that Congress is to be securing.

Justices Kavanaugh and Breyer finally focused on potential realistic outcomes of the case — rampant state infringement?

JUSTICE KAVANAUGH: Justice Breyer’s point is that it could be rampant, states ripping off copyright holders. And how can that be squared with the exclusive right, if states can do this, which presumably a ruling in [N.C’s] favor will do nothing but encourage them to do?

I’m looking for a decision in the case in early 2020.

Athena v. Mayo: Strong Amicus Support

by Dennis Crouch

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, the Federal Circuit reaffirmed its general ruling that newly invented diagnostic methods will generally be seen as directed toward unpatentable natural laws absent some new machinery for performing the method.  Athena’s patented method is a three-step process for identifying MuSK antibodies in body fluid (such as blood): Mixing labelled MuSK with the body fluid; immunoprecipitating any antibody/MuSK complex from the fluid; and monitoring for the label in the left-over precipitate. The test is important because the existence of MuSK helps diagnose a particular form of Myasthenia gravis (MG).

In its decision, the Federal Circuit found that the core discovery here is the relationship between MuSK antibodies in the body and MG.  That relationship though is a natural law.  The court then looked to the particular steps in the method and found no inventive concept.  Even though the claims required specific chemical reactions, the specification also made clear that development of the particular steps would be within reach of one skilled in the art — once they understand that MuSK is important. The Federal Circuit decision was penned by Judge Lourie and joined by Judge Stoll.  Judge Newman wrote in dissent.  A 7-5 court then denied Athena’s petition for en banc rehearing — writing effectively that its hands were tied by Mayo & Alice.  The Athena denial is interesting because it includes eight opinions (seven substantive) that generally lament the current situation.

Athena then filed a petition asking the Supreme Court to take-up the case on the following question:

Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter,where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

[Petition]. Now, 11 amici briefs have filed in support of review.  Each of the briefs have lots to say, but I have included below one thought from each that I see as an important contribution:

  1. Professors Jeffrey A. Lefstin and Peter S. Menell (Congress intended for patents to cover practical applications of scientific discoveries; We should all reread the original cases on the topic from England – Nielson)
  2. Chicago Patent Attorneys (Noonan) (the court should focus on preemption)
  3. Intellectual Property Law Association of Chicago (The test here is unduly biased against methods)
  4. The Chartered Institute of Patent Attorneys (UK) (Athena conflicts “with international treaties to which the United States is a party, as well as established international practice”)
  5. Biotechnology Innovation Organization (BIO) (The Federal Circuit has created a heightened inventive concept test for diagnostic methods)
  6. Freenome Holdings, Inc. and New Cures For Cancers, Inc.  (Alice and Mayo are inconsistent with Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176 (1980)).
  7. New York Intellectual Property Law Association (The Mayo test was not intended as the exclusive test)
  8. Blaine Laboratories, Inc. (See Henry Schein, Inc. v. Archer & White Sales, Inc., 139 S.Ct. 524 (2019) (judicial exceptions to broad statutes are inappropriate))
  9. Pharmaceutical Research and Manufacturers of America (PhRMA) (patent eligibility for diagnostic methods is a critical incentive for advancement in the field).
  10. Intellectual Property Owners Association (Look to the USPTO guidance to see the trouble — especially its diagnostic method examples)
  11. Honorable Paul R. Michel (ret.) (“Never before has the Federal Circuit been so splintered on a fundamental doctrine of patent law.”)

These are very interesting and important briefs. Yes, they show support, but they also include useful legal analysis.

Mayo’s responsive brief is due on November 22, 2019 with any amici in support of the current-state-of-affairs due shortly thereafter.

Federal Circuit’s Quirky (and Incorrect) Doctrine of Retroactive Preclusion

by Dennis Crouch

Chrimar Systems v. ALE (Alcatel-Lucent) (Fed. Cir. 2019)(en banc petition)

This case raises important Federal Courts questions that have had a major impact on patent law.  Chrimar has petitioned for en banc rehearing and five amici briefs have been filed in support — all focusing on “the rules of finality that attach to an Article III judgment, when a later PTAB decision conflicts with that judgment.”

The current Federal Circuit rule stems from a 2013 decision captioned Fresenius:

A PTAB unpatentability decision takes precedence over prior court rulings and retroactively precludes those decisions so long as any issue of liability/damages remains pending in the court case, even if validity questions were waived or finally decided in the court case.

[This is my restatement of the holdings] See XY, LLC v. Trans Ova Genetics, 890 F.3d 1282 (Fed. Cir. 2018).

The en banc petition explains that the Federal Circuit’s preclusion rule is out of line with “every other circuit” and the Restatement (Second) of Judgments.

The difficulty for the Federal Circuit in this case is the 1922 Supreme Court case of John Simmons Co. v. Grier Bros. Co., 258 U.S. 82 (1922) that the briefs do a good job of explaining away (as does Prof. Paul Gugliuzza in his article (In)Valid Patents). “It is a stretch to claim, as the Federal Circuit has, that Simmons is controlling in modern cases involving inconsistent validity decisions by a court and the PTO.”

= = = =

Looking particularly at Chrimar’s case.  In 2016, a jury sided with Chrimar against ALE — finding the patent infringed and not invalid. In a 2018 appeal, the Federal Circuit affirmed the damages award but modified the claim construction of one of the infringed claims (one of many). Chrimar I. On remand, the district court dismissed the challenged claim after Chrimar provided ALE with a covenant not to sue on that claim.  ALE then appealed again — arguing that the disclaimer was insufficient because it did not expressly cover ALE’s customers. In response, Chrimar expressly expanded its disclaimer to make clear that it was a complete disclaimer of the claims (not just for ALE). 

Meanwhile, in 2018 the same claims at issue were all found unpatentable by the PTAB in an IPR brought by a separate party. Chrimar appealed that PTAB case that was affirmed without opinion (R.36 Judgment). Chrimar II. Relying on that R.36 Judgment, the Federal Circuit then vacated the jury verdict and district court damage award. Chrimar IIIIt is this final vacatur – Chrimar III – that is the subject of the en banc petition.  Chrimar argues that the Federal Circuit was wrong to use the PTAB decision to collaterally and retroactively undermine the already final determination of the district court.