by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions. The PTAB decision is based upon anticipation, and the patentee provided a series of explanations regarding the distinction between its claims and the single prior art reference. I suspect that the Federal Circuit would actually have a difficult time penning the anticipation case even here.

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgments. Dennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
2. Whether, under this Court’s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Patent Trial and Appeal Board must consider all relevant evidence, including any objective indicia of non-obviousness, when assessing whether a patent is invalid under 35 U.S.C. § 103.

[Read the Petition].

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Senju’s U.S. Patent 6,114,319 claims an emulsified difluprednate (DUREZOL) used in a eye dropper to treat inflammatory eye disorders.  The claimed composition includes castor oil, and polyoxyethylene (20) sorbitan monooleat.

At the time of the invention (2000), difluprednate was known for the treatment of eye ailments; and the prior art also taught how to formulate steroids in emulsions in ways recited by the patent document.  However, Senju argued against any motivation to combine the prior art by migrating known steroidal suspensions into an emulsion. In addition, Senju presented objective evidence of non-obviousness: including unexpected results and industry praise.  Senju also asked the court to draw an inference from the fact that no other steroid emulsion has been approved by the FDA:

If [Akorn’s] argument that the teachings of Ding made emulsions an obvious choice were correct (which it is not), then one would expect to see several other FDA-approved emulsions after Ding was published—but we do not. . . .

[I]f a steroid eye drop emulsion were obvious in light of the prior art, then some industry player—including the assignees of the scientists whose inventions supposedly rendered petitioners’ invention obvious—would have chosen that formulation. The fact that none did is strong objective evidence of non-obviousness.

These secondary consideration arguments were ignored by the PTAB (although others were considered).  On appeal, the Federal Circuit affirmed without opinion and denied Senju’s petition for rehearing en banc.

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by Dennis Crouch

Novartis Pharm. v. West-Ward Pharm. (Fed. Cir. 2019)

West-Ward (now known as Hikma) is seeking to make and sell a generic version of the Novartis chemotherapy drug everolimus (Afinitor).  After filing its Abbreviated New Drug Application (ANDA), Novartis sued, alleging infringement of its U.S. Patent 8,410,131.

Following a bench trial, the district court sided with the patentee – finding the claims enforceable – not obvious. Novartis Pharm. Corp. v. West-Ward Pharm. Int’l Ltd., 287 F. Supp. 3d 505 (D. Del. 2017).  On appeal, the Federal Circuit has affirmed.

The claims at issue are method-of-treatment claims with one step — “administering … a therapeutically effective amount” of everolimus.  The preamble of claim 1 indicates that the treatment is for “inhibiting growth of solid excretory system tumors.”  Dependent claims 2 and 3 add limitations that the treatment is for a kidney tumor or “advanced solid excretory tumor.”

At the time of the patent filing, the compound (everolimus) was already known as an mTOR inhibitor; and mTOR inhibiors were known to inhibit tumor growth. Everolimus a derivative of rapamycin and structurally similar to temsirolimus — both of which were already identified as chemotherapy treatments for similar cancer types.

The district court took this evidence and agreed that a person of skill in the art would have been motivated to pursue everolimus as a potential treatment for advanced solid tumors. However, the court’s opinion then seemed to contradict itself by saying that there was no motivation to combine the prior art.   The district court also found that everolimus was one of many different research paths and that the prior art was not sufficient to create “a reasonable expectation of success in using everolimus” to treat advanced kidney tumors.

On appeal, the Federal Circuit rejected the district court’s confusing motivation-to-combine analysis, but agreed ultimately that the claims were not proven invalid (with clear and convincing evidence).  In particular, the appellate panel agreed with the lack of reasonable expectation of success.

Truthfully, this doctrine confuses me.  The claims simply call for administering an effective amount of everolimus to treat a solid tumor; and the courts held that a person of skill in the art would have been motivated to pursue administration of everolimus as a potential treatment. In addition to this motivation, the courts also require clear and convincing evidence of a “reasonable expectation of success.”  You might divide these into “a reason to try” and “reason to believe that the attempt would be successful.”

A party seeking to invalidate a patent based on obviousness must prove “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348 (Fed. Cir. 2007)).

Another way to think about the doctrine here is that a creation that is “obvious to try” would still be patentable if the attempt was unlikely to succeed.  This situation comes up most often in situations involving many different potential solutions and it would be “obvious” to try each one until the solution is found.

Motivation to Combine: Regarding motivation to combine, the Federal Circuit particularly held that the district court had improperly required the patentee to prove that PHOSITA “would have selected everolimus over other prior art treatment methods.”  That heightened standard does not comport with the law and thus is not required.

I’ll note here that the district court’s approach was appropriate in the setup involving modification of a lead compound.  Precedent asks for an indication that the lead compound would have been selected over other potential lead compounds.  Here, however, the compound was already known and the only “new” element is giving an effective amount to a patient for the purpose of treating a particular illness.

The district court … appeared to apply or conflate the standard for these types of cases by requiring clear and convincing evidence that a person of ordinary skill “would have been motivated to select everolimus.” To the extent the district court required a showing that a person of ordinary skill would have selected everolimus over other prior art compounds, it erred. The proper inquiry is whether a person of ordinary skill would have been motivated to modify the prior art disclosing use of temsirolimus to treat advanced RCC with the prior art disclosing everolimus. This question was answered affirmatively when the district court found that a person of ordinary skill “would have been motivated to pursue everolimus as one of several potential treatment options for advanced solid tumors, including advanced RCC.”

Reasonable Expectation of Success: Despite a motivation to pursue treatment, the district and appellate court found that the claimed treatment would not have been obvious because the prior art did not show a sufficiently high “expectation of success.”

Note here that the requirement is an “expectation” of success — would PHOSITA have expected that the drug would work?  In this case, at the time of the invention, there was no clinical data on everolimus (as an anti cancer agent) and no completed trials for the other similar compounds (only phase I safety-focused data).  And, the district court noted that there had been many many past attempts to find a compound that works — most of them starting with some promise.   On appeal, the Federal Circuit found that the rebuttal evidence and arguments made by the patentee were sufficient to defeat an obviousness finding — giving deference to the district court factual findings.

The district court reviewed the [presented] evidence, determined that the molecular biology of advanced RCC was not fully understood, recognized the limitations in the temsirolimus phase I data, and found that such data did not provide a person of ordinary skill with a reasonable expectation of success. We hold that the district court did not err in its determination and affirm its conclusion that claims 1–3 of the ’131 patent would not have been obvious in view of the asserted prior art.

Non-Obviousness affirmed.

by Dennis Crouch

Swagway v Segway and ITC (Fed. Cir. 2019)

The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed.

The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted mark.”  Likelihood of confusion is typically proven based upon a set of factors known as the DuPont factors. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  Although the DuPont case focused on TM registration, courts are now applying the same factors in infringement cases.  See, In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019).

Swagway argued on appeal that the most critical factor in this case should be whether anyone is actually confused.  The products have been sold concurrently for several years any “likely” confusion should be apparent in proof of actual confusion.  No substantial actual confusion was proven – and Swagway suggests that should end the conversation with a no-infringement verdict.

The problem for Swagway here is that the Federal Circuit has substantial precedent on lack of actual confusion during concurrent use — requiring that the accused infringer show “long-term, concurrent use in the same channels of trade.”  And, Swagway did not provide evidence to meet that requirement.

As I was writing this post in a coffee shop, I asked one person whether she would be confused that Swagways were actually Segways — she told me “no.” It turns out that Segway presented no survey evidence of likelihood of confusion.  No matter, Federal Circuit precedent holds that a lack of survey evidence does not lead to an inference that no confusion exists. “The Commission therefore did not err in according no weight to Segway’s lack of survey evidence.”

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In a separate part of the decision, the Federal Circuit also issued an interesting civil procedure squb:”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

Endo v. Actavis (Fed. Cir. 2019)

Obviousness is a tough issue to appeal because its flexible fact-heavy analysis lends itself to giving deference to the fact-finder.  This is a case-in-point.

Endo is the exclusive licensee of Mallinckrodt’s U.S. Patent 8,871,779 covering a form of the opioid oxymorphone.  Claim 1 is directed to a highly pure form of “oxymorphone” with “less than 0.001% of 14-hydroxymorphinone.”

Actavis argued that the claims were invalid as obvious.  However, following a bench trial the Delaware district court sided with the patentee — holding that the claims had not been proven invalid with clear and convincing evidence.

The district court did make a major legal mistake — holding that confidential communications between the FDA and oxymorphone producers (including the patentee) were not prior art.  In the communications, the FDA “mandated that opioid
manufacturers reduce ABUK impurities in oxycodone and oxymorphone to below 0.001%” — the exact result claimed by Mallinckrodt. On appeal, the Federal Circuit found the communications prior art under pre-AIA § 102(f) (“A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented.”).  Note that 102(f) was eliminated by the AIA and so this type of confidential communication will likely not be counted as prior art in future cases.

On appeal, the Federal Circuit held that the FDA communication – despite being prior art – did not show that the claims were obvious. Although the communications expressly set out the low-impurity goal and was the motivational force for the research, it did not set out the solution created by the patentee.

The majority opinion was penned by Judge Wallach and joined by Judge Clevenger.  Judge Stoll wrote in dissent — arguing that the error was not harmless.  In particular, the FDA mandate actually expressly discloses every limitation found in claim 1, “yet, the district court determined that this mandate did not disclose ‘anything substantive relevant to obviousness.'”

While we owe deference to a district court’s factual findings, such deference is not due where the trial court applies the incorrect standard to arrive at those findings. I would vacate the district court’s decision and remand for a proper analysis under the correct legal standards.

According to the dissent, the FDA statement would have provided substantial motivation to combine prior art references that worked toward the proffered solution.

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102(f) what have we lost: Inventor is given secret information that leads to creation of the invention.  That information is a 102(f) reference under pre-AIA law and can also be used to as part of an obviousness argument. Post-AIA, the provision was wholly eliminated except that the law still supports a narrow action for complete derivation.

Amarin Pharma, Inc. v. International Trade Commission (Fed. Cir. 2019)

In 2017, Amarin filed a Section 337 complaint at the ITC — alleging unfair competition against several dietary supplement importers.  Amarin sells a prescription drug containing a particular omega-3 fatty acid known as EPA (eicosapentaenoic acid).

A number of supplement companies started importing synthetic omega-3 fatty acids and Amarin looked for a way to shut them down.  Although Amarin’s formulation is patented, the importers are apparently not close-enough to infringe the patents.  Amarin thus turned to unfair competition law with the following logic: The imported “supplements” are actually drugs that have not been FDA approved and are not properly labelled.  The Food, Drug, and Cosmetic Act (FDCA) requirements served as the foundational basis for the lawsuit.  Here, however, the FDA intervened to argue that the FDCA prohibits private enforcement actions “including unfair trade practice claims that seek to enforce the FDCA.” (quoting opinion).

The ITC then dismissed the case — agreeing that the allegations here are precluded by the FDCA.  POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 109 (2014) (“Private parties may not bring [FDCA] enforcement suits.” (citing 21 U.S.C. § 337)).

On appeal, the Federal Circuit has affirmed holding:

1. The appellate court has authority to review refusals to non-institution decisions that are effectively final determinations on the merit.
2. The ITC has discretion as to whether to institute an investigation. In particular, “the Commission may decline to institute an investigation where a complaint fails to state a cognizable claim under § 337.”
3. On the merits here, the “complainant fails to state a cognizable claim under § 337” since the claim cannot be fundamentally based upon a yet-unadjudicated  claim of FDCA violation. “Such claims are precluded by the FDCA.”

The majority opinion was authored by Chief Judge Prost and joined by Judge Hughes.  Judge Wallach wrote in dissent —  arguing that the court did not have appellate jurisdiction because the ITC’s refusal to institute an investigation does not count as a “final judgment” as required by the Federal Circuit’s jurisdictional statute. (The court has jurisdiction “to review the final determinations of the [ITC] relating to unfair practices in import trade, made under [§ 1337].” 28 U.S.C. § 1295(a)(6).)

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In my mind, the case leaves-out a major element — the fact that ITC Section 337 litigation is not a civil action brought by a private party.  Rather, investigations are instituted and conducted by the ITC. This is why, on appeal, the ITC is always a party rather than just the decision-maker.   Thus, at least technically, ITC proceedings are “by and in the name of the United States” as required by the FDCA act.

In re Paul Morinville (Fed. Cir. 2019)

Morinville is an independent inventor and inventor-advocate.  In the photo to the right, see Morinville burning one of his patent documents. He is also a regular contributor to Gene Quinn’s IPWatchdog site.

In this case, Morinville is attempting to patent a method of reorganizing a business hierarchy into a more centralized functional hierarchy.  Example: Move from Fig. 1 to Fig. 2.

Operationally, the claims require association of “roles” with each position, including a “major function” and then identifying positions in the hierarchy that have functional commonality between the roles.  Those associations are then used to generate a new hierarchy. And, “each of the steps is automatically implemented in the computer.”

The application was filed back in 2004.  In its first office action (2008), the examiner rejected the claims as directed to an abstract idea (applying a machine-or-transformation test) and also anticipated and obvious.  That rejection was followed by a second non-final rejection in 2009 and a final rejection in 2009.  During that time, Morinville added an “implement it on a computer” requirement, which satisfied the PTO on 101 grounds.  Morinville appealed the other rejections and filed his appeal brief in 2010.  Later that year, the examiner reopened prosecution with new obviousness rejections that were made final in 2011.  Morinville appealed again and won — with a 2012 PTAB decision finding the claims non-obvious (or at least that they have not been shown to be obvious).  However, rather than allowing the case, the examiner issued a new set of rejections on post-Alice eligibility as well as a new anticipation rejection. That rejection was then made final.  On appeal, the PTAB affirmed the examiner’s eligibility rejection — finding that the claims were effectively directed to an unpatentable abstract idea.  The PTAB explained:

The subject matter of claim 1, as reasonably broadly construed, is drawn to a business administration concept for management of a business; that is, claim 1 is focused on a methodology of creating a functional organizational structure from a hierarchical operational structure and controlling access to business processes based on the created functional structure. . .

We find the concept of organizational structure, in which an organization can be structured in different ways, and managing access to  business processes based on an organizational structure, is a well-established business practice, and an idea with no particular concrete or tangible form. Furthermore, we find the “computer” of claim 1 is invoked merely as a tool and does not provide any specific improvement in computer capabilities.

Now on appeal, the Federal Circuit has affirmed.  Writing for the court, Judge Newman explained that organizing a hierarchy is “a building block, a basic conceptual framework for organizing information” and thus abstract.  The court also agreed with the PTO that Mr. Morinville’s “computer” elements were claimed at such a “high level of generality” so as to have no grounding effect sufficient to transform the abstract idea into a patent eligible invention.

Read it here.

Neptune Generics v. Eli Lilly (Fed. Cir. 2019)
Mylan Labs v. Eli Lilly (Fed. Cir. 2019)

This appeal combines twelve different inter partes review (IPR) proceedings. In each case, the PTAB Board sided with the patentee — holding that the claims of Lilly’s U.S. Patent 7,772,209 were not proven invalid.  On appeal, the Federal Circuit has affirmed.

Premetrexed disodium is a drug treatment for malignant mesothelioma that works as a folate antagonist — blocking cell usage of folic acid necessary for rapid DNA replication.  The drug has major side effects addressed by the Lilly patent.  In particular, the claimed invention calls for a pre-treatment of a patient with folic acid and vitamin B12 in order to reduce the risk skin rashes, fatigue, etc.

The patent itself calls the idea here “surprising[] and unexpected[]” — since the pre-treatment with folic acid does not appear to reduce the therapeutic efficacy of the premetrexed disodium whose intent is to reduce folate availability.

The prior art already taught pre-treatment with folic acid, but not the combination with vitamin B12. The PTAB found the addition of vitamin B12 a non-obvious step — especially when considered in light of the FDA’s express skepticism of the treatment approach.

The challengers here focused on an obvious-to-try argument — pointing out that some of the side-effects of premetrexed disodium suggest vitamin-B12 deficiency.  On appeal, however, the Federal Circuit explained that other side-effects pointed away from a vitamin-B12 deficiency. Thus, according to the court, the PTAB’s conclusions of nonobviousness were supported by substantial evidence.

Post-Invention Statements to the FDA: In its application for a new drug treatment, Lilly explained to the FDA that the prior art “suggested that pretreating with folic acid and B12 was a no-risk, predictable way to lower pemetrexed-induced fatalities by lowering pretreatment homocysteine levels.”  This statement suggests strongly that the invention was obvious.  However, the Court rejected the post-invention statement by Lilly as “made through the lens of what they had invented” and therefore not actually indicative of the pre-invention prior art.

Patent Eligibility: Patent Eligibility cannot be challenged in IPR proceedings. Still, on appeal the patent challengers argued that the claims here are so far beyond the pale of eligibility that the court should simply reject the claims as a matter of law.  When questioned regarding appellate jurisdiction, the challengers cited the Administrative Procedures Act requirement that “a reviewing court shall decide all relevant questions of law. . . . This Court’s review is not limited to the grounds considered by the Board (either implicitly or explicitly) where the question is one of law. See In re Aoyama, 656 F.3d 1293, 1299 (Fed. Cir. 2011) (holding that this Court could reach indefiniteness for the first time on appeal since it is a question of law).”

On appeal here, however, the Federal Circuit refused the chance to opine on eligibility — holding that IPR proceedings are limited only to obviousness and anticipation, and appeals are likewise limited.

by Dennis Crouch

VersaTop v. Georgia Expo (Fed. Cir. 2019)

First of all — holy decimal! VersaTop owns the registered trademark “2.0” as it relates to the company’s portable trade show display booths and stages.

VersaTop sued its competitor Georgia Expo for its use of the “2.0” mark along with a longer version “PIPE & DRAPE 2.0.” These companies compete in the “pipe & drape” market, and so the only unique or distinctive part of the mark is the “2.0.”  In my mind, this is like claiming ownership of “Internet Services 2.0” or “House Building 2.0.”  Rights are possible, but I’d want some clear proof of distinctiveness.

I’ll note here that the registration application was filed back in October 2015.  Two days later VersaTop filed the infringement lawsuit asserting rights to the unregistered marks.

What appears to have happened here is that VersaTop created a new connector that it called Pipe & Drape 2.0. The new approach was popular and Georgia Expo (allegedly) copied the design and also used the same name.  At the time, there was no generic name for this new style and so Georgia Expo free-rode on the familiarity already created by VersaTop.  See Georgia Expo’s brochures below that includes both the “PIPE & DRAPE 2.0” words and also – it turns out – photos of the VersaTop product being passed-off as those of Georgia Expo.

The district court dismissed the case on summary judgment — although not because an unregistered 2.0 is such a weak mark. Rather, the court came-up with a funky determination of no infringement because the marks were not “affixed” to goods “sold or transported in commerce.”   Rather, the marks were on distributed brochures for an up-and-coming product.

On appeal, the Federal Circuit has reversed — finding that the district court too narrowly interpreted the trademark rights.   In particular, the district court appears to have confused the use in commerce requirement for TM registration as co-existent with the use in commerce element of infringement.

The district court in this case incorrectly applied the definition of “use in commerce” that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement.

Rather, the Federal Circuit held that – for infringement – a commercial purpose leading to a likelihood of confusion is going to be sufficient.  Here, the defendant “admitted that it used VersaTop’s marks in its advertising and brochures, and that the parties ‘compete directly’ in the drape and rod industry.”  That was sufficient for an infringement finding.

To be clear, rather than simply vacating the non-infringement summary-judgment, the court reversed and issued a judgment of infringement in favor of VersaTop.

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Circling back to my prior comments regarding the weakness of the mark – according to the Federal Circuit, Georgia Expo appears not to have challenged its validity or enforceability.

by Dennis Crouch

iRobot Corp. v. USITC (Fed. Cir. 2019)

Back in 2017 iRobot (maker of the Roomba) complained to the USITC about infringing autonomous vacuums being imported into the US.  The patentee won on some grounds, but lost on others.

This appeal focuses on iRobot’s U.S. Patent 9,486,924 which allows for scheduling of the cleaning via mobile phone.  After conducting its investigation, the ITC found no infringement.  A divided appellate panel has affirmed.

The issue on appeal is claim-construction.  The claims include a requirement that a phone user transmit certain “instructions” to the cleaning robot.

1. A method of cleaning a room, the method comprising:

transmitting from a cleaning robot to a mobile phone a status of the cleaning robot; and

receiving at the cleaning robot from the mobile phone, in response to an operator command input at the mobile phone and at least in part indicative of a schedule, information including instructions configured to cause a processor of the cleaning robot to execute a cleaning operation in the room according to the schedule,

wherein executing the cleaning operation in the room according to the schedule comprises:

leaving a stationary charging device at which
the cleaning robot is docked according to the
schedule, and

navigating about a floor surface of a room.

The question in the case is whether those “instructions” can simply be schedule information, or must they be machine executable code.

iRobot argues that its proposed construction could include, for example, a simple instruction to begin the cleaning cycle.

On appeal, the Federal Circuit rejected that approach and instead held that “instructions” must be computer executable code. The patent here does not define “instructions” one way or the other and so perhaps this is an OK conclusion albeit somewhat narrow.  The court notes that the claims at issue here are considerably narrower than those found in a parent application — those original claims did not include the “instruction” limitation.  One problem not addressed here

The majority opinion was penned by Judge Dyk and joined by Judge Mayer.  Judge Bryson wrote in dissent:

The problem resides principally in a single claim term, the word “instructions.” Unfortunately, that term appears for the first time in the claims (except for two usages in an entirely different context in the specification), and the meaning of the term is therefore not immediately apparent. . . . I would read the term as having a non-technical meaning such as “directions,” “commands,” or “orders.”

Judge Bryson’s approach here fits better with my reading of the patent document itself since there is no enablement or description in the patent itself of how the phone would be sending computer code to the iRobot.  Still, I don’t have much sympathy to a patentee in this case who added new and not-defined limitations into a continuation application.

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At its core, the dispute between the majority and dissent is about the intelligence of the “cleaning robot.”  If the device is an AI-enabled robot then Bryson’s opinion makes lots of sense because the device will be able to understand lots of commands.  On the other hand, a lower-level electronic device may need more technical instructions in order to guide its progress.

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Impact of the provisional: In this case, the patent at issue is a continuation from a prior utility application and also claims priority to a prior provisional application.  Neither of the non-provisional applications talk through the process of sending machine-code from a phone to the Roomba.  However, the provisional does go into depth on an approach to transfer new code and algorithms to the vacuum from a separate device or drive.  Those elements of the invention were seemingly stripped-out of the non-provisional before it was filed.   The opinion does not mention the provisional application, but the situation begs to be addressed.  At first glance, the provisional provides a strong indication that the inventors contemplated the idea of transferring machine code instructions from a remote device to the vacuum — supporting the majority opinion.  On the other hand, the fact that those disclosures were removed from the non-provisional application indicates that the ‘924 patent was moving in a different direction.

A group of pro-patent senators and members of Congress have published what they are calling “a bipartisan, bicameral framework on Section 101 patent reform.”

Basics of the framework are to create a defined, closed list of subject matter category exclusions: Fundamental scientific principles; Products that exist solely and exclusively in nature; Pure mathematical formulas; Economic or commercial principles; Mental activities.  Under the framework, a patent would not be eligible based upon “simply reciting generic technical language or generic functional language.”  At the same time, the framework suggests that “practical applications” should be patent eligible.   Finally, the framework calls for a divide-and-conquer approach — making clear “that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.”

Sen Tillis Press Release.

Iancu v. Brunetti (Supreme Court 2019) [Oral Arg Transcript]

In this case, the Federal Circuit held that the prohibition on registering “immoral” or “scandalous” marks is a facial violation of a registrant’s First Amendment free speech rights.  Here, Brunetti is seeking to register the mark “FUCT,” which the solicitor identified as a close homonym of “the paradigmatic word of profanity in our language.” Oral arguments were held on April 15 before the nine Supreme Court justices.

In the case before the Supreme Court, the Government has conceded that the USPTO’s historic application of the test has been hit-or-miss, but that going forward the agency can be trusted to to draw the line against “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression,
independent of any views that they may express.”  This would include words like FUCT, as well as certain sexually explicit images, for instance.

Although the prohibition is content based, the government argues that its approach would be viewpoint neutral – just like many of the other conditions for obtaining trademark rights.  This should lead to a lower level of scrutiny than that faced in Tam v. Matal (2017).  In addition, my view is that Tam itself was decided on thin grounds because trademark denial does not actually limit anyone’s speech.  The difficulty with merging speech issues with trademark law is – as Chief Justice Roberts stated at oral arguements – The whole point of this program [i.e., trademark law] is to regulate content.”

Here, it is clear that some regulations would be allowable — such as prohibiting registration of “obscene” marks.  However, the statute goes to far by broadly prohibiting registration of both “immoral” and “scandalous” marks.  The question is whether the Supreme Court is willing to effectively rewrite the statute to fit within the constitutional limits.  Justice Gorsuch got to the point: “We can fix your [overbroad statute] problem for you, I got that. . . [But] how is a person who wants to get a mark supposed to tell what the PTO is going to do? Is it a flip of the coin?”  As an example, this case focuses on FUCT, but FCUK and FVCK are already registered marks.

Justice Alito sees the case as potentially reinvigorating manifest destiny – “There’s going to be a mad scramble by people to register these marks . . . whatever lists of really dirty words . . . and all their variations.”

Brunetti’s attorney John Sommer started off well with his two points:

There are two important points to be made. First, the government does not defend the plain language of the statute. Nor does it defend how it’s been consistently interpreted for the last 70 years. Rather, it asks this Court to validate a hypothetical statute not enacted.

The second point is that a substantial number of Americans think that gambling, drinking, eating some types of meat, eating meat at all is immoral. A substantial number of Americans, as to abortion, gun control, immigration, our two political parties, a substantial number think that those are — the con is immoral, and a substantial number think that the pro is immoral. There’s no — simply
no way to make a — a sensible determination between those that come in and those must stay out.

In a classic line, Sommer also discussed the Supreme Court’s 1971 decision in Cohen v. California:

Mr. SOMMER: Cohen could have said fooey on the draft, and that’s what the government says he should have done, and if he said something else, he should have been arrested and his conviction should have been affirmed, but we know his conviction was reversed. . . . You know, if the government had a list of seven dirty words [that cannot be registered], would that be constitutional?

JUSTICE ALITO: Oh, come on. You know, come on.

JUSTICE GORSUCH: Cohen can have his T-shirt, but we are not going to trademark them, and we’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?

JUSTICE SOTOMAYOR: Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?

MR. SOMMER: Would the government be allowed to refuse registration of ownership of property because it’s bought by a church with a name that’s considered offensive? Could the Coast Guard refuse to register a boat because they think the name of the boat is a little bit salacious?

JUSTICE SOTOMAYOR: Actually, you’re right.

. . .

MR. SOMMER: We have a facial challenge here, so the question is, is it overbroad? And it doesn’t matter if Mr. Brunetti’s mark should be granted or not. It’s the statute as written and as applied, without exception, covers a fair amount of clearly core speech, of high-value speech.

. . .

[the risk of regulation here is that it can] take our level of discussion in our diverse society . . . to, you know, the lowest common denominator, the most squeamish among us.

Sommer made his point here, but where he faltered was on his additional argument that many of the scandalous restrictions are viewpoint based — the justices did not appear to follow that line of thinking.

JUSTICE BREYER: No, I don’t agree with it’s viewpoint. I think that very often the word involved in your case and the racial slur is not viewpoint. It is used to insult somebody, rather like fighting words, or it’s used to call attention to yourself. That’s the purpose of the slur. That isn’t viewpoint. Fighting words isn’t viewpoint. Or, if it is, it’s overcome.

MR. SOMMER: I don’t think the profanity always expresses viewpoint.

JUSTICE KAVANAUGH: When does it not?

MR. SOMMER: Well, fleeting expletives and I think when it’s used without any relevance to the subject matter, such as in high school speech, and, of course, there still can be – –

JUSTICE SOTOMAYOR: Some — some of us would say that a vulgar word with relationship to selling clothes is sort of irrelevant?

MR. SOMMER: Well, it’s not irrelevant because, as Justice Ginsburg pointed out, the audience that Mr. Brunetti is appealing to is young men who want to be rebels. And this is how they do it.

Some interesting points of the discussion: does the “scandalous” nature of the mark apply to the public as a whole or only potential consumers (gov says “public as a whole”); if the statute is struck down, can the PTO still reject obscene marks (ans: yes, if not used in commerce).

In the rebuttal, the Government offered what appeared to be something of a veiled threat of dire consequences if the statute is invalidated — noting that the PTO already views TAM as prohibiting denial of registration for racial slurs

But with respect to the single-most offensive racial slur, the PTO is currently holding in abeyance applications that incorporate that word, pending this Court’s decision on — leave open the possibility that that word might be viewed as scandalous.

Section 2 of the Lanham Act includes a host of reasons for refusing to register a trademark.  The PTO may not register immoral or scandalous marks; marks that are deceptive; marks that disparage, falsely suggest a connection with, bring into contempt, or disrepute “persons, living or dead, institutions, beliefs, or national symbols;” governmental flags or coats of arms; “name, portrait, or signature” of a living person (without consent) or of a dead President “during the life of his widow;” marks likely to cause confusion or mistake because of their resemblance to other registered marks; marks that are merely descriptive or deceptively misdescriptive of the goods; etc.  If the Federal Circuit is affirmed here, it will be interesting to see what comes next.