All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

More Monkey Business in IP Law

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.

Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

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 judgmentsDennis 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.

DUREZOL (difluprednate ophthalmic emulsion) Structural Formula Illustration

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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Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions

Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019)

I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party.  It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments.

That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses.  The provision works to discourage the filing of Civil Actions to obtain a patent.  In NantKwest, the USPTO is asking that “all the expenses” be interpreted to include its personnel expenses, including attorney fees, win-or-lose.  The Federal Circuit ruled against the PTO and denied such fees, but the Supreme Court has agreed to hear the case:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

USPTO’s opening merits brief is due later this week, with amicus filings shortly thereafter.

Until recently, the case was known as Iancu v. NantKwest.  However, in a recent letter to the Supreme Court, Solicitor Noel Francisco indicated that Iancu “is recused in this matter.” Solicitor Francisco suggested that Laura Peter be substituted as petitioner in her official capacity as the Deputy Director of the United States
Patent and Trademark Office.  Thus, the case has become Peter v. NantKwest.

The letter does not indicate the reason for Iancu’s recusal. However, NantKwest is represented by top advocate Morgan Chu from Irell & Manella.  Iancu was managing partner at Irell when the representation began.

If you want it, Claim it

by Dennis Crouch

Two prosecutions lessons from this case: (1) if you are concerned about obviousness, be careful of broadening statements in the specification; (2) if you want to claim a particular action, particularly claim it.  

BTG Int’l. Ltd. v. Amneal Pharms. LLC (Fed. Cir. 2019) [BTG_Decision]

This is a consolidated appeal from four different district court cases and five different inter partes review cases.  All the cases focus on BTG’s U.S. Patent No. 8,822,438 (hormone based chemotherapy).  For once, the PTAB and District Court decisions meshed – all finding the claims invalid as obvious.  On appeal, the Federal Circuit focused on one of the PTAB decisions and affirmed — with result of mooting the remaining appeals.

The ‘438 patent claims a method of “treatment” by providing a patient with (1) “a therapeutically effective amount of abiraterone acetate” and (2) “a therapeutically effective amount of prednisone.”

The patentee’s primary argument on appeal is that the “treatment” limitation in the preamble should be focused on anti-cancer treatment — and particularly that the “therapeutically effective amount of prednisone” should have an anti-cancer effect rather than ‘merely’ a palliative effect.  The prior art apparently indicated a combination of chemo + prednisone, but did not specifically indicate that the prednisone had anti-cancer impact.

On appeal, the Federal Circuit agreed with the PTO that the “treatment” element should be broadly construed.  This was seemingly a simple case because the patentee used traditional broad language in the specification:

The specification states that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.”

What this means is that the prior art’s use of prednisone as a steroid (for palliative care) directly reads on the claims.

To be fair to the patentee, the patent focuses substantially on the reality that prednisone was found by the patentee to have anti-cancer effects itself.  On appeal, the court effectively says – ‘if you wanted to claim that prednisone as an anti-cancer treatment, write it in the claims.’

 

Although Motivated to Try; No Reasonable Expectation of Success

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.

What happens when Patents Are Later Invalidated?

by Dennis Crouch

Prism Technologies LLC, v.  Sprint Spectrum L.P., dba Sprint PCS, SCT Docket No. 18-1397 (Supreme Court 2019)

The Supreme Court has received a new eligibility challenge from Prism Tech — although this one is in the form of a civil procedure question:

  1. Whether the Federal Circuit Court of Appeals may retroactively expand the scope of its appellate jurisdiction to invalidate patent claims under 35 U.S.C.
    § 101 when those claims were not raised in the petitioner’s appeal or necessary for its judgment?
  2. Whether a district court may disregard a mandate from the Federal Circuit for entry of judgment, and ignore this Court’s precedent, by retroactively applying
    the collateral estoppel doctrine based on a ruling in a subsequent action where there is no mutuality of claims or defenses?

Prism has parallel infringement lawsuits against Sprint and T-Mobile.

  • In the case against Sprint, the jury found infringement and awarded $30 million in damages.  Sprint did not challenge the patent’s validity at trial or on appeal — damages affirmed in a 2016 appellate decision.
  • In the case against T-Mobile, the jury sided with the defendant and found no-infringement.  Prism appealed, but ended up in a worse situation — with a 2017 holding from the Federal Circuit that the asserted claims are ineligible under 35 U.S.C. 101.

The basic question here is whether the late-stage invalidity in T-Mobile can be used to cancel Sprint’s adjudged liability.  So far, the courts have sided with Sprint, although it was important for Sprint’s case that it took pains to slow-walk its post-appeal activity (request for rehearing and petition for certiorari) so that the case still had some life by the time the T-Mobile decision was released.

June 23, 2017 – the Federal Circuit invalidated the patents in the T-Mobile decision. June 27, 2017 (two business days later) – Sprint filed a R.60(b) motion for Relief from Judgment based upon the Federal Circuit’s binding authority “that the patent claims underlying that judgment are invalid as unpatentable under 35 U.S.C. § 101.”  The district court complied and set-aside its prior verdict and the Federal Circuit affirmed — finding no abuse of discretion.

As part of the Sprint timeline, it is notable that the Federal Circuit issued its mandate in May 2017 (before the T-Mobile invalidity decision).  After the T-Mobile decision, Sprint unsuccessfully requested that the Federal Circuit recall the mandate.  However, the court did issue a statement that recall was “unnecessary” because the “mandate does not alter how the district court should decide the preclusive effect of the T-Mobile ruling, which did not exist in May 2017.”

Another important element here a big question about whether the T-Mobile invalidity applied to all of the claims at issue in Sprint (the Federal Circuit retrospectively said yes).

The new petition thus argues that “the Federal Circuit’s interpretation of the T-Mobile Invalidity Decision as covering the Sprint Only Claims is flawed [as a] retroactive expansion of appellate jurisdiction.”

Who needs Proof of Actual Confusion? Not a TM Plaintiff

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.”

 

Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases”

Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019)

Amgen sued Sandoz for infringing its U.S. Patents 6,162,427 and 8,940,878. Both patents relate to Amgen’s biologic products (filgrastim and pefilgrastim) used as treatments for neutropenia. The lawsuit here is unique because it was filed under Biologics Price Competition and Innovation Act (“BPCIA”).  As an add-on to Hatch-Waxman, the BPCIA defines submission of an FDA biosimilar application (aBLA) as a form of patent infringement.  See 35 U.S.C. § 271(e)(2)(C) (defining submission of an aBLA as an act of patent infringement).

The ‘472 patent claims a “method of treating a disease” by giving a patient Filgrastim/Pegfilgrastim prior to chemotherapy in order to stimulate stem-cell growth.   After treatment with Filgrastim, the claims require “administering to the patient a disease treating-effective amount of at least one chemotherapeutic agent.”  The idea here appears to be that the Filgrastim will stimulate stem-cell growth so that stem cells will survive harsh cancer treatment.

In this case, Amgen argued that its “disease treating-effective amount of … chemotherapeutic agent” would not necessary require that the chemotherapy drug treat the underlying disease — rather, Amgen argues that the drug could be used to further mobilize stem cells.  Both the district and appellate courts rejected this claim construction proposal — noting that the focus of the claims is “treating a disease” and construing the claim otherwise does not make sense:

As an initial matter, the preamble of claim 1, as construed, arguably precludes Amgen’s construction. The district court construed the preamble, “[a] method of treating a disease requiring peripheral stem cell transplantation,” as requiring that the stem cell transplant be incorporated as a component of a method of treating an underlying disease, such as cancer, Claim Construction Order, 2016 WL 4137563, at *5–6, and Amgen does not dispute that construction on appeal. The claimed method therefore must be performed to treat an underlying disease. As the claim itself states, the “disease treating-effective amount” of a chemotherapeutic agent does precisely that.

The court suggests here that if Amgen had not wanted to claim treatment of an underlying disease, it should have drafted different claims. “Had Amgen simply wanted to claim a method of mobilizing stem cells, in any context, it could have done so.”

The ‘878 patent is not a method of treatment but instead directed to a multi-step method of preparing purified biologic products.  This begins with growing cells that express the protein of interest and ends with eluting the protein from a separation matrix such as ion exchange resin.

In its claim construction, the district court held that the claims required separate steps of “applying a refold solution”; washing the solution; and eulting the protein.  That construction eliminated infringement since Sandoz process only requires one step — applying the refold solution without washing or eluting.  On appeal, the Federal Circuit argued that Sandoz’ approach is effectively the same — and that its claims should be read as functional requirements rather than actual process steps.

The Federal Circuit sided with the accused infringer — holding that each step in the method is a separate process step that must be done in a particular order.  Most notably, the court noted (1) the fact that the patentee had sequentially listed its steps a-g; and (2) the washing and eluting steps are “consistently described in the specification as separate steps performed by different solutions.”

Doctrine of Equivalents: The claim construction here naturally raises a doctrine of equivalents question, which the Federal Circuit also rejected:

Amgen argues that Sandoz’s one-step, one-solution process is insubstantially different from the claimed three-step, three-solution process because it “achieves the same functions (washing and eluting), in substantially the same way (binding protein preferentially compared to contaminants, and then raising salt concentration to reverse protein binding) to achieve the same result (protein purification).”

The Federal Circuit found, however, that the one-step approach offered by Sandoz, “does not function in the same way as the claimed process.”  In particular, the court focused-in on the notion that doctrine of equivalents is handled on an element-by-element level. Here, since each claim step is a separate step occurring in sequence – it would be improper to say that that a single-step approach is the equivalent. The court explains:

The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” )

Although I follow the court’s line of thinking on claim construction, but the court’s limit of the DOE to “exceptional cases” seems to be a major step without precedential backing. 

102(f), Where have you Gone?

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.

The CASE Act: Copyright Small Claims Court

by Dennis Crouch

Few patent litigators would file a lawsuit if the potential payout is less than $1,000,000 — that amount ordinarily does not cover the expected cost of litigation and risk of loss. Except in the most simple cases, copyright litigation can be similarly expensive.  What this means is that it can be difficult to earn a regular ‘living’ independently creating and licensing intellectual property.

A bipartisan group of legislatures are working on a small claims solution and have proposed the CASE Act: Copyright Alternative in Small-Claims Enforcement Act of 2019.

The basics: The statute calls for creation of a “Copyright Claims Board” empowered to decide infringement cases with a limit of $30,000 damage award per case and no injunction (except to enforce a settlement agreement) and no attorney fees (except for bad faith conduct).  Although the Board will be based in DC, hearings will be via the internet with very limited procedural requirements.

I like it in theory, but need to consider implementation aspects.  Small claims IP court in the UK has received a good amount of positive response — three tiers: Small Claims (<£10,000); Smallish Claims (<£500,000); and Everything Else.

Read the Bill: https://www.congress.gov/bill/116th-congress/house-bill/2426/text

 

 

Unfair Competition at the USITC

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 Morinville: Biz.Orgs. Not Patent Eligible

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.

Eligibility Cannot be Raised in IPR Appeal

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.

My new mark: “TRADEMARK 2.0”

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.

Mark Image

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.

= = = = =

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.

Does § 101 Apply to Design Patents?

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

Over the past few years, I’ve had various people ask me if 35 U.S.C. § 101 applies to design patents. Now, I hear that the same question was raised at one of Senator Coons & Tillis’ recent § 101 roundtables.

This is one of those rare design patent questions that actually has a clear answer:

    No, § 101 does not apply to design patents. See In re Finch, 535 F.2d 70, 71–72 (C.C.P.A. 1976).

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” On its face, this language may seem to apply to all patents. But when this language was written, there was only one type of patent—the type we now refer to as utility patents.

When Congress enacted the first design patent statute in 1842, it wrote a separate subject matter provision for designs. But it left the language of the utility patent subject matter provision unchanged. That language is now codified —with one small change, from “art” to “process”—in § 101. The design patent subject matter provision changed (quite a bit) over time and is now codified in § 171. (For more on the history of these statutes, see The “Article of Manufacture” in 1887, 32 Berkeley Tech L.J. 1, 27, 32 (2017), available for download at
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2850604.)

So Section 101 is the statutory subject matter provision for utility patents. Section 171 is the statutory subject matter provision for design patents. Or, as the CCPA (sort of) put it in Finch, § 171 is the § 101 of design patents.

Because these are independent subject-matter provisions, any change to § 101 should not affect design patents. But if § 101 does get revised, I would suggest changing any reference to “a patent” to “a utility patent”—just to make things perfectly clear.

How Smart is your Cleaning Robot?

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.

= = = = 

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.

= = = =

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.

Framework for Statutory Reform of Section 101

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.

Federal Circuits decides that 100% is different than One Hundred Percent

by Dennis Crouch

E.I. DuPont de Nemours & Co. v. Unifrax I LLC (Fed. Cir. 2019)

In 2014, DuPont sued Unifrax for infringing its patented flame-barrier that is both lightweight and thin. U.S. Patent 8,607,926 (“Composite Flame Barrier Laminate for a Thermal and Acoustic Insulation Blanket”). The jury sided with DuPont — finding the asserted claims infringed and not proven invalid.  Over a dissent from Judge O’Malley, the Federal Circuit has affirmed — finding that substantial evidence supports the verdict. (Majority authored by Judge Reyna and joined by Judge Hughes).

When 90% counts as 100%: A key issue on appeal was the meaning of the claim term “100%.”  DuPont’s claims required an “inorganic refractory layer” made of “platelets in an amount of 100% by weight.”  That particular limitation was added during prosecution to get around a prior art reference that taught a platelet concentration of less than 100%.

The accused product layer approximates 100% platelets, but has some small amount of residual dispersant that didn’t fully evaporate.  Prior to trial, the district court sided with DuPont on claim construction and ruled that “100%” be interpreted as allowing for “some residual dispersant.” This substantially foreclosed Unifrax’s non-infringement argument that it had hoped to take to the jury.

On appeal, the Federal Circuit affirmed — finding a more-relaxed construction of 100% was correct because of how the mathematical construct was used in the patent document itself.  The key phrase from the specification is as follows:

The refractory layer comprises platelets. Preferably at least 85% of the layer comprises platelets, more preferably at least 90% and most preferably at least 95%. In some embodiments, platelets comprise 100% of the layer. The refractory layer may comprise some residual dispersant arising from incomplete drying of the platelet dispersion during manufacture.

According to the court, the final sentence of this paragraph — allowing for residual dispersant in the layer — applies to all of the embodiments, including the 100% layer.  Thus, when the patent says “100%” platelets, it really meant almost-all platelets with potentially a bit of dispersant.  According to the majority the defendant is wrong that “‘100%’ means one hundred percent.”

Writing in dissent, Judge O’Malley argued that the majority’s construction “ignores the plain meaning of ‘100%’ and introduces more ambiguity than it resolves.”

There is no ambiguity in this language. The “platelets” must be present in the refractory layer “in an amount of 100% by weight.” The “100% by weight” language, coupled with the requirement that the platelets exist in an “inorganic refractory layer,” clearly contemplates that the platelets—i.e., inorganic material—constitute the entirety of the refractory layer. That leaves no room for other organic additives. There is perhaps no clearer or simpler way the patentee could have conveyed such a requirement.

Dissent.

The claim language is actually quite mess in the same clause it indicates that the refractory layer comprises “platelets in an amount of 100% by weight” but may also have a moisture content of up to 10% by weight.  110% by weight concentration is not ordinarily allowed in physics. However, we do sometimes talk about “110% effort” and Cecil Quillin has reported a USPTO’s patent grant rate as greater than 100% (by comparing original filings to all patents issued in the resulting family).

I pulled up the prosecution history and found that the 100% and 10% elements were added at the same time in the same amendment with the statement that the claim now “requires a refractory layer containing 100% platelets (and also requires  . . . a defined residual moisture content).”  In my mind, this works strongly in the patentee’s favor — that the 100% allows for residual moisture. Still, it is unfortunate that the ultimate holding is a rejection of the defendant’s argument that “‘100%’ means one hundred percent.”

= = = = = =

Product on sale before the patent filing. A unique aspect of this lawsuit is that the accused products were already on sale before DuPont filed its patent application.

Unifrax’s product was on-sale by May 2011; DuPont filed its application in December 2011.  To be clear, DuPont’s patent does claim priority to prior applications, but only as a continuation-in-part.  The prior applications apparently do not sufficiently disclose the invention at-issue here.

For DuPont, the fact that its patent was filed prior to the AIA saved its bacon.  On appeal, the Federal Circuit agreed that DuPont had presented substantial evidence to antedate Unifrax’s prior use/sale.

The critical point of law focused on proof of the prior invention.  The courts have long been suspicious of inventor’s self-serving testimony regarding prior inventorship.  Here, the duPont provided inventor testimony along with substantial documentation of the prior invention timing.  However, the company did not provide o corroborating evidence as to one particular limitation in the claims — a requirement that the refractive layer have a “dry areal weight of 15 to 50 gsm.”

On appeal, the Federal Circuit sided with duPont — reflecting on the requirement for corroboration.

[O]ur case law does not require that evidence have a source independent of the inventors on every aspect of conception and reduction to practice. . . Here, the law requires only that the corroborative evidence, including circumstantial evidence, support the credibility of the inventors’ story.

The reason for corroboration is a concern that inventors will commit perjury. Thus, the role of corroboration is help ensure inventor credibility.

Fooey on the Draft

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.