by Dennis Crouch

If you want a pro-patent judge, the conventional wisdom since 2018 has been to file your complaint in the Waco Courthouse of the Western District of Texas.  Judge Alan Albright is the only federal judge stationed in Waco and so he hears the case. This setup has led to substantial consternation among accused infringers who don’t really like Waco and especially don’t like Judge Albright.  With increasing political pressure, W.D.Texas Chief Judge Orlando Garcia has changed the rules.  Going forward patent cases filed in Waco go on the wheel and be randomly assigned to one of twelve judges.

by Dennis Crouch

Steven Young and Carl Hewitt developed technology for monitoring infant biometrics.  Later, they began working with Sleep Number Corp. who eventually purchased their company.  The result was SleepIQ technology for Sleep Number smart beds.

Eventually Young & Hewitt decided to leave the company and start out on their own once again and founded a new venture UDP Labs–still focusing on sleep biometric data integrated into hospital/medical furniture. However, the pair had not fully exited from their Sleep Number contract.  Rather, they had both signed consulting agreements with Sleep Number that included quite a broad scope.  In particular, the agreement required disclosure and assignment of “any ideas, conceptions, inventions, or plans relating to sleep, mattresses, bedding, sleep monitoring, health or wellness as it relates to sleep (including biometric monitoring relating to sleep), or bedroom or sleep technologies.”  The agreement expressly excluded some areas: “monitoring technologies for sudden infant death syndrome” and “blood pressure.”

UDP Labs quickly filed a provisional patent application for Young and Hewitt’s new inventions. The pair tried (unsuccessfully) to get Sleep Number to agree that their UDP work wasn’t covered by the consulting agreement; and ultimately terminated the consulting agreement.  More patent applications filed rather quickly, all claiming priority back to that original application filed during the consulting agreement period. One complicating issue is that the patent applications list three other inventors who were (apparently) not subject to the agreements with Sleep Number.

Lawsuit: In 2020, Sleep Number sued Young & Hewitt along with UDP Labs seeking (1) declaration of “ownership of the inventions” as well as claims of (2) breach of contract and (3) conversion (by failing to disclose the information); (4) trade secret misappropriation; etc.

The lawsuit is ongoing, but in March 2021 Minnesota district court issued a preliminary injunction. Barring the defendants from prosecuting, amending, or abandoning any claims that claim priority to one of the early provisional applications.  The order further includes a mechanism for avoiding abandonment:

Defendants shall not respond or reply to any Office Action. . . After the fifth month but prior to the six‐month deadline to respond … Defendants shall (1) pay any and all necessary fees for a three‐month extension and (2) file a continuation … that does not remove or limit any claims of priority nor alter or abandon any claims.

Sleep No. Corp. v. Young, 532 F. Supp. 3d 793 (D. Minn. 2021), aff’d, 33 F.4th 1012 (8th Cir. 2022). On appeal, the 8th Circuit has affirmed. Sleep No. Corp. v. Young, 33 F.4th 1012 (8th Cir. May 11, 2022).  The appellate panel agreed that Sleep Number had a fair chance of prevailing since the contract “clearly and unambiguously places the inventions described in the patent applications within” its scope.

With regard to irreparable harm due to patent prosecution, the appellate panel agreed with the district court that the parties incentives are not aligned and, as such, UDP Labs “might respond to a future Office Action in a way that prejudices Sleep Number’s purported patent rights.”

The court noted that the potential for irreparable harm was demonstrated by “curiously timed” prosecution actions by UDP Labs to narrow certain claims and eliminate the priority claims.  The district court explained:

In November 2020, after this suit was filed, UDP filed several “Request[s] for Corrected Filing Receipt” with the United States Patent and Trademark Office (“USPTO”) seeking to amend the ‘087, ‘367, ‘385, and ‘848 Applications to eliminate their claims of priority to the ‘613 Application, leaving only the claims of priority to the ‘623 Application. As a result of UDP’s amendment to the applications’ claims of priority, the ‘087, ‘367, ‘385, and ‘848 Applications now only claim priority to an application filed after Young and Hewitt terminated their Consulting Agreements. Additionally, by moving the priority date forward, the applications are now subject to several additional months’ worth of potentially invalidating prior art.

Sleep No. Corp. v. Young, 532 F. Supp. 3d 793, 798 (D. Minn. 2021).

The court considered the balance-of-harms.  On UDP Labs side, it identified the only harm as “a mere delay in participation in the patent-prosecution process.”  That statement omits consideration of patent term and patent term adjustment. On February 2, 2022, the USPTO issued a non-final rejection in one of the pending actions.  The six-month date will come within the fortnight.

In May 2022, the district court also amended its preliminary injunction order to prohibit the defendants “from taking action-including selling, transferring, assigning, conveying, etc.-that would cause a change in ownership and/or interfere with Plaintiff’s asserted rights with respect to the Inventions-at-Issue.”

by Dennis Crouch

Symbiont Nutrition, LLC v. BJM Feed Ingredients, LLC, 1 CA-CV 21-0218 (Ariz. App. 1st Div. May 19, 2022)

Symbiont’s US Patent No. 9,446,094 covers a method of extruding corn into a resulting “hydrophilic, low-vitreous, gelatinous feedstuff” that is fed to dairy cattle. Apparently this process leads to increased digestion of the starch content.  The inventor Mark Holt is also owner of Symbiont. Holt was part of forming two additional companies, BJM and Matrix and Symbiont licensed the technology (including the patent) to those companies.  The agreement included a number of provisions — primarily a license with royalties for feed sold using the process.

Things fell apart in 2019 with Matrix dissolving and BJM terminating its license.  BJM then began to work with another company (Garner) to manufacture feed products.  The resulting lawsuit in Arizona state court alleged: (1) breach of NDA; (2) conversion of “assets, monies, and intellectual property”; and (3) breach of fiduciary duty.

The district court issued a preliminary injunction prohibiting BJM from selling its feed product using the ‘094 patent or from soliciting other to do the same.  On appeal though, the Arizona Court of Appeals has vacated and remanded–holding that the district court erred by presuming irreparable harm due to patent infringement.  The appellate court noted the change in law under eBay, but also went on to explain that  Arizona Law “does not presume irreparable harm.”  On remand, the district court will need to decide whether the potential ongoing infringement causes any harm to the patentee that cannot be remedied by damages alone.

The appellate court also addressed the question of jurisdiction.  All cases “arising under” the U.S. patent laws are subject to exclusive jurisdiction of the Federal Court system. Here, however, the lawsuit asserts only state law claims of breach & conversion.  Applying Gunn v. Minton, 568 U.S. 251 (2013), the court concluded that the underlying patent law issues were not substantial enough to warrant Federal jurisdiction.

While issues of federal patent law may be embedded in Plaintiffs’ claims, the resolution of their claims rests ultimately on the application of Arizona law, not federal patent law. To succeed on counts one and two, Plaintiffs must prove the existence and validity of the licensing and nondisclosure agreements, that these agreements governed Defendants’ conduct, and that Defendants’ conduct violated the agreements. Similarly, Plaintiffs’ conversion claim turns on a showing of Plaintiffs’ ownership or right to possession of certain property and Defendants’ wrongful interference with that property. Finally, Plaintiffs’ fiduciary duty claim rests on Plaintiffs proving the existence of such a duty and Defendants’ breach of that duty. Arizona law, not federal patent law, is dispositive of each of these claims.

. . . Although the adjudication of Plaintiffs’ claims may require the court to determine whether Defendants used a feed-manufacturing process that infringed on Plaintiffs’ patented process, there is little to suggest that the state court’s analysis of this issue will affect uniformity in patent law.  Indeed, the embedded patent issues in this case are fact-bound and situation-specific and will have no precedential effect on federal courts or federal patent law generally. Nor do Plaintiffs’ claims raise novel patent issues. To the extent they raise patent issues, they are ones of basic infringement.

Slip Op. (internal citations eliminated).

by Dennis Crouch

The Federal Circuit’s new eligibility decision in CareDx, Inc. v. Natera, Inc., — 4th — (Fed. Cir. 2022) should cause patent attorneys to pause once again as they draft patent applications and consider any characterizations of the technology as “conventional”; “well known”; or even “known in the art.” At times some characterization will be useful for satisfying disclosure requirements.  Still, the statements will also potentially haunt the patentee both on the obviousness side and, as here, with eligibility.

Stanford owns several biotech patents claiming methods of diagnosing organ transplant rejection. U.S. Patents 8,703,652, 9,845,497, and 10,329,607.  Stanford and its exclusive licensee CareDx sued Naterta and Eurofins for patent infringement.  But, Chief Judge Connolly (D.Del) dismissed the case–finding the claims ineligible under Section 101.  On appeal, the Federal Circuit has affirmed.  This is another major case that could set-up Supreme Court review.

The technology in this case is somewhat similar to the prenatal testing methods in the Illumina and Sequenom cases.  The key difference is that the prenatal technology looked for fetal DNA floating in the mother’s bloodstream while this graft technology looked for DNA of the transplanted-organ floating in the stream.  Transplant rejection is a major immune response and involves eating-away of the transplanted cells. That process releases bits of DNA into the bloodstream.  The Stanford researchers found that the amount of Donor DNA floating in the blood stream of the recipient is indicative of whether the transplant is being rejected.

The claims at issue all share a common four step approach for detecting cell free DNA (cfDNA) in the recipient:

1. “obtaining” or “providing” a “sample” from the recipient that contains cfDNA;
2. “genotyping” the transplant donor and/or recipient to develop “polymorphism” or “SNP” “profiles”;
3. “sequencing” the cfDNA from the sample using “multiplex” or “high-throughput” sequencing; or performing “digital PCR” with certain error rates; and
4. “determining” or “quantifying” the amount of donor cfDNA.

Slip Opinion.  On summary judgment, the district court concluded that these claims were all directed to a patent ineligible natural phenomena. In particular, the claims are directed to “the presence of donor cfDNA in a transplant recipient and the correlation between donor cfDNA and transplant rejection.”  Since the particular techniques used to obtain and analyze the cfDNA were all conventional, the court concluded that nothing in the claims transformed their nature into a patent-eligible invention.

On appeal, the Federal Circuit affirmed, holding that “[t]his is not a case involving a method of preparation or a new measurement technique.”

The claimed methods are indistinguishable from other diagnostic method claims the Supreme Court found ineligible in Mayo and that we found ineligible on multiple occasions. . . . Here, as in Ariosa, the claims boil down to collecting a bodily sample, analyzing the cfDNA using conventional techniques, including PCR, identifying naturally occurring DNA from the donor organ, and then using the natural correlation between heightened cfDNA levels and transplant health to identify a potential rejection, none of which was inventive. The claims here are equally as ineligible as those in Ariosa.

Slip Op. If the claims in Mayo & in Ariosa are invalid, then the Federal Circuit is likely correct that–so are the claims in this case.

= = =

Alice Step Two: One important caveat on conventionality of the technology.  CareDx argued that the particular technological approach was new and different from prior efforts.  It had been theorized for years that cfDNA of the donor tissue could be used as a measure of tissue failure, prior researchers had repeatedly tried and failed.

Despite many attempts over the following decade, even accomplished researchers could not invent a satisfactory way to measure donor cf-DNA in the recipient’s bloodstream sufficient to monitor organ rejection. At best, preexisting techniques worked only in a small subset of cases. This decade of failure culminated in a discouraging announcement in 2008 by a prominent research group that using cf-DNA to monitor organ rejection was “difficult” and “impractical.” . . .

Not only had there been many reported failures and outright disbelief that a viable cf-DNA organ rejection test could be developed, but attempting to measure cf-DNA, rather than cellular DNA was foreboding. As even defendants’ expert concedes, cf-DNA was believed at the time to be “more challenging” than other analytes to measure because cf-DNA is smaller, not random, typically present in low concentrations, and because this “detection analysis is difficult with techniques prior to 2009.”

CareDx Opening Appellate Brief.  The particular approach that worked for the Stanford Researches was their application of newly created digital PCR and next-generation sequencing (“NGS”) techniques.  And, those advances are part of the claims.

The problem though was a number of boilerplate statements found within the patent document that the courts saw as admissions that the technology was wholly conventional:

The practice of the present invention employs, unless otherwise indicated, conventional techniques of immunology, biochemistry, chemistry, molecular biology, microbiology, cell biology, genomics and recombinant DNA, which are within the skill of the art.

‘607 Patent, Col 5, line 55.  The patent also discussed the availability of commercial high throughput sequencing products and stated that high-throughput genotyping is “known in the art.”  According to the Federal Circuit, these statements from the specification characterize “the claimed techniques in terms that confirm their conventionality.”  As such, the court found no reason to disturb the summary judgment finding.

Judges LOURIE, BRYSON, and HUGHES. Authored by LOURIE, Circuit Judge.  The case was argued by world class attorneys with Ed Reines (Weil Gotshal) for Stanford/CareDx; Willy Jay (Goodwin Procter) for Eurofins; and Gabriel Bell (Latham & Watkins) for Natera.

by Dennis Crouch

The Federal Circuit has agreed that Kevin Correll’s 5-year suspension from patent law practice should move forward. Correll v. Vidal (Fed. Cir. 2022) (non-precedential).  Unfortunately, the per curiam decision appears poorly reasoned and seems to lack sufficient legal grounding.  The panel included Chief Judge Moore, and Judges Prost and Hughes.

Kevin Correll worked for the US Navy as an engineer, but also moonlighted for years as a solo patent attorney (prosecuting 211 patent applications). In 2016, the Navy notified the USPTO that Correll may have violated federal rules of ethics.

The key rule:

18 U.S.C. § 205: [Federal employees may not] act as agent or attorney for anyone before any department, agency, court, court martial, officer, or civil, military, or naval commission in connection with any covered matter in which the United States is a party or has a direct and substantial interest.”

The USPTO’s Office of Enrollment & Discipline (OED) conducted an investigation and then filed a disciplinary complaint against Correll.  That complaint was then decided against Correll an Administrative Law Judge and  issued a 5-year suspension from practice. Drew Hirshfeld in his role as agency head affirmed the ALJ finding.  Correll then moved to district court and again lost when the E.D.Va. judge denied his motion for a preliminary injunction against enforcement of the suspension.  On appeal here, the Federal Circuit has affirmed.

The USPTO has long taken the position that these statutory rules prohibit any federal employee from representing private clients at the USPTO.  On appeal here, the Federal Circuit agreed with the USPTO interpretation, although the court appears to limit this broad holding to cases where the attorney is compensated for the work.  Slip Op. (distinguishing Van Ee v. EPA, 202 F.3d 296 (D.C. Cir. 2000) based upon receipt of compensation).  I would suggest compensation as a distinguishing mark applies for the parallel statute 18 U.S.C. § 203, but doesn’t seem to apply directly to Section 205.

The DC Circuit’s Van Ee decision includes dicta stating that an employee representing a private party in an “application for a … patent” could create a conflict of interest. On appeal here, the Federal Circuit latched-onto that language in its conclusion that Section 205 applies to Correll’s behavior.  But, a major difference between Van Ee and this case is that the DC Circuit was considering a situation involving an EPA employee who was advising a private group regarding EPA actions.  Here, Correll is an outsider to the USPTO.  That distinction is relevant because the courts have interpreted Section 205 in light of its primary goal of preventing situations “in which a federal employee, acting as a private party’s agent or attorney, could be perceived as having divided loyalty and as using his or her office or inside information to corrupt the government’s decisionmaking process.”  Slip Op. (quoting Van Ee).  An outsider to the agency is seemingly much less likely to create a conflict.

Here, the district court also concluded that “[t]he government has a direct and substantial interest in patent applications.” Correll v. Under Sec. of Com. of Intell. Prop. (“Director” ), 121CV898AJTIDD, 2022 WL 298125, at *2 (E.D. Va. Jan. 13, 2022).  That conclusion stuck on appeal.

Correll’s biggest argument appears to be that First Amendment freedoms of speech and association should apply to limit the reach of the statute.  Courts use a balancing test to decide when a gov’t employer can permissibly limit its employees speech. Pickering v. Board of Education, 391 U.S. 563 (1968).  Here, the Federal Circuit agreed with the district court that “the government’s interest in avoiding even the appearance of impropriety outweighs the burden that Mr. Correll’s suspension has on his rights.”  The courts particularly noted that the prohibition on representing clients was only a “minimal” burden while the government interest is “direct and substantial.”  I’m not sure about the basis for that conclusion in this situation.

The court also found waiver by Mr. Correll.  In particular by signing-up as a patent attorney Mr. Correll expressly agreed to be bound by the laws and as such cannot now complain about those laws.

Even without Pickering balancing, however, it is apparent that Mr. Correll’s suspension does not violate his First Amendment rights. Mr. Correll agreed to comply with the conflict-of-interest statutes when he registered to practice before the PTO by signing an “Oath or Affirmation” in which he promised to “observe the laws and rules of practice of the [PTO].” Among those rules was a prohibition on federal employees representing private clients.

Slip Op.  I’ll note that the “rules” prohibiting federal employees from representing private clients is simply 18 U.S.C. §§ 203, 205 cited above.  This conclusion seems obviously overreaching. If the prohibition on practice is a violation of 1st Amendment rights, then any waiver requirement is also likely an unconstitutional condition in violation.

If you remember, this appeal is from a denial of a preliminary injunction. On remand the district court will still need to decide the case on the merits.   It will be a bit of a process to tease out which aspects of the decision here were definitive legal conclusions creating the law of the case and which were more deferential conclusions allowing for reconsideration on remand.

David Tropp sued Travel Sentry for patent infringement back in 2006. That was the same year that I first taught a patent law class.  Back then, eligibility was almost an unknown concept in patent litigation.  The rule of thumb was “anything under the sun, made by man,” and I mean ANYTHING. But as we crawled into the 2010s, eligibility emerged as a powerful tool to invalidate issued patent claims–including Tropp’s covering covering a TSA-approved luggage lock.  The basic idea here is to give TSA a master key, or as the district court suggested: “using and marketing a dual-access lock for luggage inspection.”

Tropp recently petitioned the Supreme Court seeking a writ of certiorari on the following question:

Inventor David Tropp owns and practices two patents that disclose a solution to the problem of screening all passenger luggage for flights originating in the United States, following the September 11 attacks. Through a series of specific claimed steps, his patents describe a method of providing consumers with special dual-access luggage locks that a screening entity would access in accordance with a special procedure and corresponding key controlled by the luggage screening entity, all while allowing the luggage to remain locked following screening.

The question presented is: Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent eligible under 35 U.S.C. § 101, as interpreted in Alice Corp Pty v. CLS Bank Int’l, 573 U.S. 208 (2014).

Tropp Petition.  The parties agreed that the following claim is representative:

1. A method of improving airline luggage inspection by a luggage screening entity, comprising:

making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,

marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,

the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and

the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.

US7021537.

by Dennis Crouch

The new petition in SawStop v. USPTO (Supreme Court 2022) focuses the question of whether COURTS have power to create non-statutory patentability doctrines.

Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?

SawStop Petition for Certiorari.  You might imagine this argument being raised as tied to any number of patent doctrines: atextual eligibility limitations; assignor estoppel; doctrine of equivalents, etc.  This particular case focuses on obviousness-type double patenting (OTDP).  Question 2 of the petition focuses the question further: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”

Section 103 of the Patent Act generally defines the doctrine of obviousness and instructs tribunals to look to the prior art and consider whether the claimed invention is sufficiently beyond the prior art. But, even if a claims are found patentable under Section 103, the USPTO still considers obviousness-type double patenting.  Even if there is no prior art, the USPTO still bars a patentee from obtaining a separate patent claiming an obvious variation of already-issued claims held by the patentee/inventor. Thus, although 102(b)(2) explains that certain prior-filed patents are not prior art when attributed to the applicant/inventor, OTDP steps in on the back-side to effectively assert those excused documents as prior art.  Pause here to note that one big difference between obviousness and OTDP is that applicants can skirt OTDP rejections by filing a terminal disclaimer that effectively links the two similar patents together along two axes: same term and same owners.

My middle school shop teacher was missing fingers courtesy of a table saw. Yours? Steve Gass has a PhD in physics and also a patent attorney.  He was doing some amateurs woodworking when he conceived of his SawStop technology.  The basic idea: if the spinning blade ever touching human skin, the electrical connection triggers an emergency brake that stops/retracts the blade within 5 milliseconds.  “Fast enough to turn a life changing event into a minor cut.”  Gass has over 100 patents and runs the innovative product company SafeSaw.

Gass’s U.S. Pat No. 9,927,796 was filed back in 2002 — claiming priority to a 2001 provisional application. That patent finally issued in 2018–only after SawSafe filed a civil action and received a court-judgment in its favor.  A 1974 patent had disclosed use of a safety circuit and a braking-means. However, the district court concluded  that the prior art was not enabling — i.e., a person of skilled in the art would not be able to construct (or even design) the claimed invention without undue experimentation. [2016 Decision].

Another 16 issued patents also claim priority back to this 2002 application.  One application is still pending, Application 15/935,432, that claims an obvious variant of what has already been patenting.   The USPTO rejected the ‘432 application based upon the judicially created non-statutory doctrine of obviousness-type double patenting.  SawStop did not want to file a terminal disclaimer on this valuable patent and instead appealed.  On appeal, the Federal Circuit affirmed without opinion in a R.36 Judgment.  Now, SawStop has petitioned the Supreme Court asking that the doctrine be eliminated.

= = =

Although the petition does not cite the Supreme Court’s recent abortion decision, it certainly picks-up upon some of the same themes:

• A right to abortion “is nowhere mentioned in the Constitution.”  Similarly, obviousness type double patenting has no grounding in the Patent Act.
• The fact that a precedent is old does not convert that precedent to a sacred text.

The Supreme Court in Bilski addressed this issue to some degree in the context of the non-statutory categorical bars of abstract ideas; laws of nature and natural phenomenon.

While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.

Bilski v. Kappos, 561 U.S. 593 (2010).  The Bilski court found a small textual hook, but also identified the doctrine as built upon longstanding precedent.

The longstanding nature of precedent is important in the patent context.  But unlike in the Constitutional abortion context, we have always had direct statutes guiding patent issuance and enforcement, beginning with the First Congress in 1790. In the area of obviousness, the doctrine was developed by courts and then implemented by statute in 1952.  In Graham though, the Supreme Court indicated that, with minor exceptions, the 1952 Act maintained all the old precedent.

Double Patenting in the Statute.  In its 2014 Abbvie decision, the Federal Circuit wrote that Obviousness Type Double Patenting is “grounded in the text of the Patent Act.”   In particular, the court honed-in on Section 101’s use of the singular article “a” in describing what is granted to an inventor: “a patent.”

While often described as a court-created doctrine, obviousness-type double patenting is grounded in the text of the Patent Act. . . . Section 101 reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, … may obtain a patent therefor.” 35 U.S.C. § 101 (emphasis added). Thus, § 101 forbids an individual from obtaining more than one patent on the same invention, i.e., double patenting.

Abbvie Inc. v. Mathilda and Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1372 (Fed. Cir. 2014).  But Judge Dyk’s conclusions in Abbvie are not well grounded themselves as there are several ways this provision could be interpreted. It also proves too much, since there are ways for a patentee to obtain multiple patents covering patentably indistinct inventions: (1) via terminal disclaimer; (2) via restriction.  If the patentee files a terminal disclaimer then the patent office will allow multiple patents to issue.  If the patentee files a divisional application (following a restriction) then the patent office will allow multiple patents to issue even without a terminal disclaimer.

4th of July is a big American holiday.  I’m either out at the grill or eating apple pie.  While you wait for more Patently-O content, check out our Sponsor, MBHB LLP. – Dennis

By Dennis Crouch

The Supreme Court has closed-out its 2021-2022 term without deciding or granting certiorari in any patent cases.  Overall, the court denied certiorari in 40+ patent cases, including the biggest case of American Axle.  I’ll post a review of those denied cases later this month. Meanwhile we can start a preview for the 2022-2023 term.

Eight patent cases are now pending before the Supreme Court. Several focus on the written description and enablement requirements of 35 USC 112(a).

The current most-likely big case is Amgen Inc., et al. v. Sanofi, No. 21-757.  Amgen asks fundamental questions of how the enablement doctrine should operate and whether enablement is a question-of-fact or a question-of-law. These are important issues fundamental to patentability that also touch on some of the same principles as  the eligibility cases.  The Court has requested an amicus filing from the Solicitor General.  Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281, is a patent eligibility case, but it asks a related question about the extent that principles of Section 112 are applicable to the eligibility analysis.  In Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566 focuses on “full scope” written description – arguing that the Federal Circuit’s application goes too far beyond the statutory text.  Biogen International GmbH, et al. v. Mylan Pharmaceuticals Inc., No. 21-1567, also focuses on the written description requirement – asking what level of disclosure is necessary for a claim limitation requiring a therapeutic treatment to be “effective.”

The one other case that I would suggest has a good chance of certiorari is Hyatt v. USPTO.  But, that case focuses on the summary judgment standard for APA cases and so would in reality have very little impact on the patent system.

The final three cases are all well written briefs, but I expect that they have a very low chance of being heard because of intervening events:

1. Apple Inc. v. Qualcomm Incorporated, No. 21-1327 (appellate standing – same question as the already denied parallel Apple v Qualcomm petition);
2. CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527 (can the same PTAB judges both institute and decide IPR – I believe that Arthrex implicitly solved this issue, at least from a Constitutional perspective); and
3. Worlds Inc. v. Activision Blizzard Inc., et al., No. 21-1554 (eligibility same question as the already denied petition in American Axle).

The court takes a summer break and then returns in the fall for the October 2022 term.

Meenaxi Enterprise, Inc. v. Coca-Cola Company, 21-2209 (Fed. Cir. 2022)

Although goods are often shipped globally, many companies manufacture and sell region-specific products.  That divide allows the company to cater to local market preferences and regulations and also avoid potential arbitrage.

In the 1970’s Coca-Cola withdrew its flagship sugary cola from the Indian market at a time of heavy regulation of foreign companies. A local company then started Thums Up and it quickly became popular across the country.  Although similar to Coca-Cola, Thums Up is ‘spicier’ and you can almost taste the cardamom and cinnamon.  In the 1990s, the Indian market opened again to foreign competition. Coca-Cola purchased rights to Thums Up along with Limca lemon-lime and others and continues to sell those products in India (as well as other countries).  Coca-Cola holds the trademark rights in India, but not in the USA.  Apparently Coca-Cola abandoned its US version of the THUMS UP application back in 1987 and its US LIMCA mark expired in 1996.

About 5 million Indians and Indian-Americans live in the USA, and some of those people want to purchase Thums Up and Limca.  In 2008 Meenaxi began filling the US demand with its own version version of the drinks.  In 2012, the Meenaxi registered the two word marks with the USPTO (THUMS UP & LIMCA).  Coca-Cola stepped-in in 2016 seeking to cancel Meenaxi’s mark registrations.

The TTAB sided with Coca-Cola in ordering the marks cancelled.  On appeal, however, the Federal Circuit has reversed with Judge Dyk writing the opinion joined by Judge Stoll and Judge Reyna writing a concurring opinion.

A case like this begins with the territorial doctrine of trademark law:

Under the territoriality doctrine, a trademark is recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.

McCarthy on Trademarks § 29:1.  A simple assumption is that territorial limits align with both the laws and the people. e.g., Indians live in India and are subject to the law of India.  But here we know that Indians have migrated and brought their distinctiveness understandings with them to the USA.  Meenaxi has been free-riding off those understandings and continues to do so.  Here though, the this population centric notion of trademark law falls to the hard principle of U.S. law that trademark rights in the US require that the mark be used in the US.

Here, the court also considered whether Meenaxi’s use should actionable under the more general provisions of Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a).  However, the court found that Coca-Cola had failed to show any US injury.  (1) No lost sales; and (2) No reputational injury.  The court seemed to agree that it could be improper for Meenaxi to use Coca-Cola’s goodwill with Indian-American consumers.  But, the problem was that Coca-Cola failed to provide substantial evidence proving the existenece of free-riding. In particular, the evidence showed that the marks were well known in India, and that Meenaxi was marketing the products to Indians and Indian-Americans in the USA.  But, the missing link was evidence that the US-based Indians and Indian-Americans were aware of the branding.

There is no basis [in the evidence] to assume that an American of Indian descent is aware of brands in India. The Board did not consider what portion of Indian Americans had spent time in India, i.e., how many had visited India or lived in India. The Board’s conclusion relies at least in part on stereotyped speculation. . . .

Coca-Cola has not presented any survey evidence showing awareness of either mark in the United States. . . . This is plainly insufficient.

Slip Op.

Unlike IPRs on the patent side, trademark cancellation proceedings have a standing requirement.  The petitioner must “believe[] that he is or will be damaged . . . by the registration of a mark on the principal register[:] . . .”  15 U.S.C. § 1064.  And, although the “belief” element appears subjective, it is interpreted as quite objective.  Here, since Coca-Cola could not show any US injury then could not reasonably believe it was damaged.   REVERSED in favor of Meenaxi.

Judge Reyna argued that the case is governed by the territorial principal of trademark law. “[T]he majority’s opinion could be reasonably read to imply that CocaCola could have established statutory standing if it proved that U.S. consumers were aware of its Indian brands. But if that were the case, I would still reverse because the territoriality doctrine governs, and Coca-Cola waived reliance on the well-known mark exception thereto.”

= = =

The case cites recent work by Professors Farley & McKenna with regard to some confusion created by Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016). Christine H. Farley, No Trademark, No Problem, 23 B.U. J. Sci. & Tech. L. 304, 313 (2017) (stating the Belmora decision “failed to acknowledge that its ruling challenged fundamental principles of trademark law”); Mark P. McKenna & Shelby Niemann, 2016 Trademark Year in Review, 92 Notre Dame L. Rev. Online 112, 122 (2016) (stating the Belmora decision “is especially notable . . . [in] its failure to recognize the implications of its decision for the territoriality of trademark rights”).