By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law
In December 2020, the USPTO put out a request for comments on “The Article of Manufacture Requirement.” (For prior PatentlyO coverage, see here.) Last week, at Design Day 2022, the USPTO announced that it had completed its summary of those comments. That summary is available here.
In the request for comments, the USPTO floated the idea of issuing design patents for what they are now calling “designs for projections, holograms, and virtual and augmented reality (PHVAR).” Presumably, this acronym is meant to suggest that these are new types of designs, uncontemplated by Congress when it passed statutes that—according to some—are in need of “modernization.”
But projected designs aren’t new.
As we explained in our law professor comments, designs for “magic lantern” projections go back at least as far as the 17th century. So the concept of projected designs was well-established by the time Congress passed the first design patent act in 1842—not to mention when it codified the Patent Act in 1952. Projected designs are simply not some new, unforeseen concept.
There may be new types of projection machines today, but this type of design is not new.
The USPTO suggests that the scope of design patentable subject matter “should be reevaluated in order to incentivize and protect innovation in new and emerging technologies.”
But it is not—and should not—be the role of the design patent system to incentivize or protect new machines. We have utility patents for that.
Furthermore, projected designs are not as the USPTO seems to suggest, unprotected today. Projected images qualify as pictorial, graphic, or audiovisual works that are already protected—costlessly and immediately upon fixation—by copyright. It can’t be seriously suggested that Congress was unaware of projected designs when it passed the broad definitions of protectable subject matter in the Copyright Act of 1976. It’s clear from the definitions that one form of projected creativity, cinema, was very much on Congress’ mind. See, e.g., 17 U.S.C. § 102(a)(6) (providing protection for “motion pictures and other audiovisual works.”).
Again, the type of projector may be new, but the type of work is not.
So why push for design patents when copyright is already available? There may be some who just want to accrue as many belts and suspenders as their IP budgets will allow. But that alone is not a good enough reason to expand design patentable subject matter.
It may be that, for at least some potential applicants, the goal is to avoid the requirements of copyright law. In Feist v. Rural, the Supreme Court held that a work must have “minimal creativity” to be protected. Thus, to gain copyright protection, a work must “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” This is, according to the Supreme Court, a requirement of the Progress Clause.
Minimal creativity is a low bar. Yet the USPTO has granted numerous design patents for designs that fall below it—especially in the context of computer-generated designs. In theory, novelty and nonobviousness could be a higher bar but, in practice, that is not the case.
So let’s all be clear:
These are not new types of designs.
They’re not unprotected—unless they fail to meet the low constitutional threshold set in Feist.
New USPTO Director Kathi Vidal is working through the details of how to run the AIA-Trial Director Review program. For now, she has promised transparency as the interim process is developed and is seeking public input.
Once an IPR is instituted, the statute calls for the PTAB to issue a written decision on whether to cancel the challenged claims. That decision is then immediately appealable by the losing party, at least according to the statute. In Arthrex, the Supreme Court held that PTAB judges are not proper principal Officers of the United States and therefore do not have authority to speak for the US on important matters such as cancelling private property rights. The Supreme Court then offered a non-statutory solution of inserting a director-review process following the PTAB decision prior to appeal. The result then is that the decision will be given the imprimatur of the Director who is a Principal Officer since she was appointed by the President and Confirmed by the Senate.
As I mentioned, the new Director Review was created by the Supreme Court on the fly without setting any clear bounds for its procedure or Director reasoning. Questions:
To what extent can the Director take into account outside lobbying or outside evidence? Lets say, for instance, that the Director reads NYTimes editorials.
To what extent can the Director base her decision on issues apart from those listed in the IPR statute (e.g,. novelty and obviousness). For instance, is it permissible for the Director to consider US global competitiveness and impact on the marketplace?
To what extent must the Director personally conduct and decide the reviews rather than delegate that responsibility.
Dir. Vidal is committed to make this an open process and the PTO will likely issue a Request for Comments in the coming weeks.
I was reading recent PTAB ex parte cases looking to see how the Office is handling enablement questions. The first three cases I read all involved the same setup: The examiner made a rejection that that the PTAB suggests might have been better suited as an enablement rejection. For example, in Ex Parte Sugimoto (PTAB 2022), the PTAB explained that “the Examiner conflates enablement with indefiniteness.” The PTAB then noted similar sentiment in Ex parte Nunes (PTAB 2022). In Nunes, the examiner had rejected the drone-aircraft claims as indefinite based upon the specification’s failure to define how the thrusters compensated for wind gusts. On appeal, the PTAB concluded that the rejection would have been better suited as an enablement rejection:
[T]he Examiner’s concerns relate more to whether Appellant has made an enabling disclosure of the described functionality, as opposed to whether the recited functionality is indefinite. The claim is clear as to the structure required by the claim (e.g., a plurality of shrouded laterally oriented thrusters) and the functionality required by the claim (e.g., compensate for gusts of wind and force a descent).
Id. I’ll note that in Nunes, the PTAB affirmed the indefiniteness rejection on other grounds. In particular, the claims required “precise” positioning but the specification did not include “standard for measuring” the degree of precision.
Finally, in Ex parte Kim (Fed. Cir. 2022), the PTAB explained: “To the extent the Examiner’s rejection implicates the enablement requirement of that statute, we decline to speculate in that regard here, for the rejection is based solely on the claimed invention’s failure to comply with the written description requirement, not the enablement requirement which is a separate and distinct requirement under § 112.” I ran across this same situation later in Ex parte Palmer(PTAB 2022).
I kept reading and came to Ex parte Oda (PTAB 2022). Although that decision mentions enablement, it is in the context of whether the asserted prior art is enabling. In the case, the PTAB concluded that the patent applicant had failed to overcome the presumption that the prior art is ‘enabling.’
On the fifth try, I came upon Ex parte Mersel (PTAB 2022). The Mersel application discloses methods of treating autoimmune diseases, such as Chron’s disease. The examiner rejected the claims for lack of enablement after concluding the specification lacked evidence to support the theory that the proffered method (administering β2m) would treat Chron’s disease. On appeal, the PTAB noted that the claims do not recite treatment of any disease, but rather only recite the cell-level result of “restoring normal heavy chain β2m molar ratio.” According to the PTAB, the application enables this result by teaching how to deliver the particular peptide to the cell membrane. “There appears to be ample explanation and data in the Specification from which an ordinarily skilled artisan could make and use the invention as claimed.” Id.
I finally came across a seemingly proper enablement rejection in Ex parte Makotoiwai (PTAB 2022). The case claims a particular “nitride crystal substrate” used in semiconductor manufacturing. The examiner concluded that the substrate/device “can not be reproduced based upon the disclosure.” The Board eventually reversed this decision – deciding that the applicant’s arguments were slightly better.
In the end, this was a fairly disappointing reading journey and helps restore my prior thoughts that a separating the written description and enablement requirements has born more confusion than fruit.
Another new petition for certiorari has re-asked the American Axle questions:
What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept…?
Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent?
[Petition] Spireon is the maker of LoJack and has millions of vehicle tracking systems in operation. Procon provides similar services as well.
Spireon’s U.S. Patent No. 10,089,598 is directed to a method of managing vehicle inventory at an auto dealership using a “location device” (such as a GPS receiver or other positioning system designed to be attached to the vehicle). Claim 1 includes the following steps:
In the Server DB: Associate the location device with the dealer’s group of ‘available location devices’;
Communicatively couple the device with a vehicle;
Once coupled, transmit a connection notice that includes a vehicle identifier and location device identifier;
In the server DB: Associate the location device with the vehicle and remove it from the list of ‘available location devices’; and
Receive current location from the location devices. [Full text of Claim 1 is below]
In the case, Procon filed a declaratory judgment action. The district court dismissed the case on the pleadings — finding the claims directed to an abstract idea. The Federal Circuit then affirmed without opinion.
= = =
Off the Shelf: The patent specification indicated that “the location device may be an off-the-shelf tracking device for a vehicle, for example for use by an end user, for user-based insurance, for fleet management, for managing driver behavior, and/or the like.” The district court relied upon this statement to conclude that the location device did not include any inventive concept. In its petition, the patentee argues (I think correctly) that the “off-the-shelf” statement should be interpreted as contemplating the invented device being sold in retail stores, not that it could already be found on retail stores pre-invention.
= = =
1. A method for managing a vehicle inventory for a dealer implemented by a computer having a processor and a memory, the method comprising:
while a location device is not communicatively coupled with a vehicle, associating the location device with a dealer’s group of available location devices in the memory, wherein the dealer’s group of available location devices comprises location devices owned by the dealer that are not coupled with any vehicle;
communicatively coupling the location device with a vehicle;
in response to the location device becoming communicatively coupled with the vehicle, the location device transmitting a connection notice over a network, the connection notice comprising a vehicle identifier and a location device identifier;
receiving, by the computer, the connection notice from the location device over the network;
in response to the connection notice received by the computer, the processor: associating the location device identifier with the vehicle identifier in the memory; and disassociating the location device from the dealer’s group of available location devices in the memory; and
receiving, by the computer, current location information from the location device.
2. A method for managing a vehicle inventory according to claim 1, wherein the vehicle identifier comprises a VIN of the vehicle and the location device identifier comprises a location device serial number.
15 years ago, several studies announced the “death of the doctrine of equivalents” post Festo. The chart below shows that courts have continued to write opinions about the DOE, and there have been several major cases where the doctrine was an important element of the patentee’s win.
For the first time since 2008, the Supreme Court’s October 2021 term will come to a close without any patent decisions. I have included a chart below, but should note that there is some debate around the edges about what constitutes a “patent decision.” Here is my list: SCTPatentCases.
In addition, the Court has also not granted writ of certiorari in any pending cases. Thus, it is entirely possible that the October 2022 term will come and go without any patent decisions. The only IP centric case that has been granted certiorari is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, reviewing a Second Circuit copyright decision on the issue of transformative fair use.
Still, there are a number of important pending petitions that could also be transformative in the patent law construct, including four cases with outstanding calls for the views of the Solicitor General (CVSG). I have divided the pending cases into three general categories:
Patentability:
Eligibility under Section 101: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (CVSG requested May 3, 2021); Also, Universal Secure Registry LLC v. Apple Inc., et al., No. 21-1056; Interactive Wearables, LLC v. Polar Electro Oy, et al., No. 21-1281.; and Ameranth, Inc. v. Olo, Inc., No. 21-1228.
Scope and Procedure for the Enablement Requirement:Amgen Inc., et al. v. Sanofi, et al., No. 21-757 (CVSG requested April 18, 2022);
Infringement and Damages:
Do Enhanced Damages Require “Egregious Behavior”: Cisco Systems, Inc. v. SRI International, Inc., No. 21-1267.
Procedure:
Prior art in Inter Partes Review: Baxter Corporation Englewood v. Becton, Dickinson and Company, No. 21-819 (use of expert testimony to fill gaps in the prior art).
Using Claim Construction to Undermine Jury Decisions: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (CVSG requested October 4, 2021).
Appellate Standing for IPR Challenger & Licensee: Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022); also Apple Inc. v. Qualcomm Incorporated, No. 21-1327.
Res Judicata and the Patent-Specific Kessler Doctrine: PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (CVSG submitted, agreeding that Federal Circuit erred, but suggesting that this is not an appropriate case).
Most of these petitions will be decided by the end of June 2022, although the cases awaiting Gov’t amicus brief will likely be delayed until the Fall 2022.
The USPTO refused to register Glascoe’s mark SCIENTIFIC STUDY OF GOD for use as a service mark when “analyzing the process of creating a human being, the earth, the universe and its environment.” I know what you are thinking–deceptively misdescriptive. The TTAB did not go there, but instead refused registration after concluding that the mark was “merely descriptive.”
“A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)
Here. Glascoe’s purported services are related to the scientific study of god, which is the exact mark that is being claimed. Glascoe appealed pro se. Her brief begins:
Pro Se Appellant DEIRDRE C. GLASCOE is an Extra-Terrestrial Life Form—The Alien Entity known As GOD. GOD Is A Brand Name®, as are “I AM,” “YHWH,” “Yahweh,” “Jesus Christ™”, “Allah”, “Lord GOD of Israel,” “EL”, “Human Beings.” GOD’s Kingdom is a foreign state within the meaning of the Foreign Sovereign Immunities Act.
GlascoeBrief. As you might guess from this excerpt, I did not find anything within Glascoe’s briefing that suggests ‘scientific study’ in a form that I would recognize. That makes me think that the misdescriptive refusal might be more appropriate. For its part, the Federal Circuit provided a one sentence summary denial: “Ms. Glascoe has failed to make any cogent, non-frivolous argument as to why the Board’s determinations were incorrect.” In briefing, Glascoe noted that the TTAB had erred by failing “to recognize GOD as a legal person.” On appeal, the Federal Circuit did not address that issue.
One thing that Glascoe does is use Anagrams as decoding keys to understand underlying meaning. I’ve provided a couple of examples from the briefing.
The UK Intellectual Property Office recently announced its plans to provide the public with a bit more access to the patent examination system—making it easier for third parties to provide pre-grant observations that can be used by examiners and seen by others.[1] UK law already allows any person to offer observations “on the question whether the invention is a patentable invention” that must be considered during examination.[2] The UK law requires that any observations be in-writing and also provide reasoning. In the recent accessibility pilot project, over half of submitted observations were identified as useful by the examiner. The UK accessibility proposal is simple—the UKIPO will add an “OBSERVATIONS” button to its new Ipsum service that already provides docketing information.
The USPTO has an online submission form in-place that is a bit clunky, but remains somewhat user friendly. The largest problems with the system: (1) it requires someone to find the “Confirmation Number” from either PAIR or the Patent Center in order to provide a submission; (2) it is limited only to the submission of printed publication material under 35 U.S.C. 122(e); and (3) has a fairly tight timeline — i.e., after publication but before to the first OA rejection. The result here is that the submissions will be easy for patent professionals, but tricky for the laity.
The system might be improved by adding a button directly to the Patent Center search results; easing the timing; and allowing for observations unrelated to printed publications. A simplistic mock-up is offered below:
I looked for third-party submissions within the dockets of a set of recently issued patents. I found submissions in about 0.14% of cases (14 out of every 10,000). The number should be larger. Dennis Crouch, USPTO Third Party Submissions, Patently-O (Feb. 2, 2022).
Chief Judge Moore is known (1) for her keen ability to identify logical flaws in appellate arguments and (2) her willingness to use those flaws to quickly dispose of the appeal. In this case, the court only needed a few lines to reject Intel’s appeal:
The Board adopted the claim construction for which Intel advocated. Yet, Intel now changes its position and advocates for a claim construction that is clearly inconsistent with its position before the Board. Intel is judicially estopped from raising this argument.
Although I don’t disagree with this holding, The court here does not walk through the principles of judicial estoppel in its decision. Under the Supreme Court’s New Hampshire v. Maine precedent, we look for three markers:
A party taking a position that is clearly inconsistent with its earlier position;
The earlier position was accepted by the prior tribunal.
The change in position would create some unfair advantage or detriment unless estopped.
Here, the court addresses the first two points, but not the third. I wonder if a different waiver or forfeiture argument might have been more appropriate.
What was Intel thinking. Its appellate strategy here appears strategic. Intel’s real problem was in how the PTAB used the construction in determining whether the claimed elements were disclosed in the prior art. A direct appeal of that issue is given deference on appeal based upon a substantial evidence standard; instead it took the route of seeking de novo review.
Note that this decision is in some tension with Egenera, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2020)
This week, the New York Times published a lengthy staff editorial negatively focusing on the U.S. patent office as a “backwater” used for corporate gamesmanship, won-over by “legal trickery,” and undermining innovation whenever possible. It appears primarily a hit piece designed to destabilize and direct Dir. Kathi Vidal’s initial weeks as USPTO Director. She will be having to defend and explain any pro-patentee stance to her White House colleagues.
Despite musty rhetoric, the high level suggestions have merit – especially the first: “Enforce existing standards.”At its heart, the USPTO is a bureaucratic construct that needs constant attention to ensure that every examiner plays their role, and that none are lulled into complacency. “The best way to ensure that patents spur innovation instead of thwarting it is to set a high standard for what deserves patent protection in the first place and then to honor it.” Dir. Vidal’s primary role in managing a 10,000+ person agency is to ensure that her examiners have the tools , the training, and the time needed to ensure the highest quality examination. Although primary examiners have more training and experience, there is some evidence that they do a poorer job of ensuring that each allowed claim is patentable. This may be an issue of time, oversight, or something else.
The editorial’s second suggestion is to “improve the process for challenging bad patents.” In particular, the editorial calls for eliminating the FINTIV discretionary denials of IPRs implemented under Dir. Andrei Iancu. The bigger suggestions though are as follows: (1) Make it easier to challenge bad patents before they are granted. (2) Force secondary pharmaceutical patents to undergo an automatic review by the appeal board. (3) Rethink the legal structure for patent challenges. As part of this third point—restructuring the legal system—the essay attacks the Federal Circuit as merely an “echo chamber” of the pro patent lobby. For this point, the editorial quotes Matthew Lane of CAPA.
The third suggestion calls for calling for elimination of potential conflicts of interest. This seems to be primarily (and expressly) a pot-shot at Dir. Iancu who rejoined his old law firm after leaving the Office last year. The essay implies that Iancu acted unethically and improperly, but without presenting any evidence and in a way that feels gross. The PTO does not have the same revolving-door tradition that is seen in other major regulatory agencies, and so this complaint would not have made my top-three.
Four: Collaborate with other agencies. Most particularly, the USPTO and FDA need to get together and ensure consistency across the board. To get PTO approval, you need to show your invention is a major change, but for FDA or EPA approval, you want to show that your product is pretty much the same as what we already know and trust. These are all good points here made by Charles Duan who is a member of PPAC.
The final suggestion in the essay – “let the public participate.” Yes!
In Amgen v. Sanofi, the Supreme Court has been asked to review Federal Circuit precedent on the enablement doctrine found in 35 U.S.C. § 112(a). Although still uncertain, the case has a strong chance of being granted certiorari. Most recently, the Supreme Court requested that the US Solicitor General file a brief in the case indicating the views of the U.S. Gov’t. That filing will likely come in December 2022.
The statute requires the patentee to provide “a written description of the invention, and of the manner and process of making and using it [sufficient] to enable any person skilled in the art … to make and use the same.” The petition asks two particular questions:
Whether enablement is “a question of fact to be determined by the jury” Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or “a question of law that [the court] review[s] without deference,” as the Federal Circuit holds.
Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “ ‘time and effort.’ ”
The invalidated patents here are likely worth >$100 million.
The text of the Patent Act suggests that obviousness is a straightforward inquiry: find how the claimed invention differs from the prior art and ask whether, based upon those differences, an objective artisan would deem the invention obvious. 35 U.S.C. § 103. In reality, the analysis is not easy or straightforward. At the end of the day, tribunals are often left guessing whether the invention went far enough—are the differences from the prior art meaningful in some way or are they merely points of distinction. There are myriad ways that patentees endeavor to show results that are important, surprising, or synergistic—all terms that connote non-obviousness. One way to show meaning is through the use of what the Supreme Court has termed “secondary considerations” and others term “objective indicia.”
Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).
Graham v. John Deere Co., 383 U.S. 1 (1966). When courts ask about the importance of the advance, they must take care to ensure a nexus between the advance and its import. Focusing on the importance of the advance incentivizes advances that are important. Nexus is always relevant when considering if an advance is meaningful, but in recent years the Federal Circuit has aggressively used nexus particularly to limit the use of objective indicia such as industry praise or commercial success. Rather than permitting a fact to weigh the evidence, the court requires a proven nexus before any consideration of the objective indicia and its impact. Often industry praise and commercial success are tied to a commercial product rather than “the invention.” In this situation—where a product has been successful and praised—courts have permitted the patentee to prove a nexus linking the praise to the invention by pointing to the product and showing the product is an embodiment of the patent claim and the claimed invention is not merely a small component of the invention. In various formulations, the court has seen this as requiring the product to be “commensurate in scope” or “coextensive” with the claimed features. See Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000); Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A difficulty with this formulary is that there are always unclaimed features found in any product, and so it is difficult to know when the two are “coextensive.” In its important 2019 Fox Factory decision, the Federal Circuit drew a hard line, requiring the product and claim be “essentially” identical:
Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention. While coextensiveness is an issue of fact that should ordinarily be decided by the fact finder in the first instance, no reasonable fact finder could conclude, under the proper standard, that the X-Sync chainrings are coextensive with the patent claims.
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (citing to Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). I wrote about Fox Factory back in 2019 and explained:
The court here again raised the “nexus” hurdle by holding that a presumption of nexus can only be achieved by proving that the product being sold by the patentee is “essentially the claimed invention.” This is a situation where SRAM owned two patents in the same patent family — both of which covered aspects of its X-Sync bicycle chainring (gear). Each patent included elements not claimed in the other — for the court that was enough evidence to disprove coexistence.
Dennis Crouch, Nexus: Product must be “Essentially the Claimed Invention”, Patently-O (December 18, 2019). Since the product in Fox Factory included multiple inventions—each covered by its own patent—the patentee was unable to show that any one of the inventions had nexus with the product. (Note here in Fox Factory, we are not talking about some complex invention – it was only a chain ring, i.e. a gear, that sold well).
An important en banc petition is pending before the Federal Circuit in Zaxcom, Inc. v. Lectrosonics, Inc., 20-1921 (Fed. Cir. 2022) involving that nexus and asking the Federal Circuit to reconsider its Fox Factory precedent. The setup in the case is fairly typical: Zaxcom sued Lectrosonics for patent infringement back in 2019 (D.New Mexico); Lectrosonics responded with two inter partes review petitions. The PTAB granted both IPR petitions and then cancelled the challenged claims as obvious. On appeal the Federal Circuit affirmed, and Zaxcom has now petitioned for en banc rehearing.
The Zaxcom inventions relate to a wireless method for multi-track video recording. The problem with wireless was always timing, and the inventions here solve that with very particular time-codes. The invention here was said to change the industry, and the inventors were awarded both an Emmy and an Oscar. Here is the deal, the invention is embodied in the product, and the praise was tied to the new functionality offered. But, the invention also includes features claimed in a different patent. Because of that, the Board found no nexus and refused to consider the Emmy/Oscar results based upon Fox Factory. On appeal, the Federal Circuit affirmed. The petition now asks for reconsideration of Fox Factory and its progeny:
By deviating from established law, the Fox Factory panel precedent has triggered a need for en banc review. This Court has warned against unduly “strict requirements” in evaluating nexus. Rambus. Nowhere is the wisdom of this warning more apparent than in the present case. Here, it is undisputed that products embodying the claimed invention (Zaxcom’s wireless audio recording system) received industry praise, including a technical Oscar and an Emmy. Lectrosonics did not contend that the claimed invention is just a “small component” of this system. Under this pre-Fox Factory standard, this entitles Zaxcom to a presumption of nexus. Yet the Board and the panel not only rejected this presumption but quixotically failed to find that the claimed invention received any industry praise, because they found that another feature contributed to the praise but was not required by the claims. Put another way, the decisions below disregarded the fact that products embodying the claimed invention undisputedly received the equivalent of not just one Nobel Prize in its field, but two.
What started as a relatively straightforward evidentiary presumption to facilitate the obviousness analysis under 35 U.S.C. § 103 has now morphed into a complex analysis “requir[ing] the fact finder to consider the unclaimed features of the stated products to determine their level of significance and their impact on the correspondence between the claim and the products.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349 (Fed. Cir. 2021) (citing Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1375 (Fed. Cir. 2019)). In addition to the new “level of significance” factor, recent cases have imposed an “essentially claimed” factor in the presumption analysis. See, e.g., Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). These new “requirements” of the presumption-of-nexus analysis conflict with this Court’s precedent.
Judge Michel brief. I expect responsive briefs from both the USPTO and the patent challenger Lectrosonics in late April 2022.
In a recent filing, Brooklyn Brewery (Brewery) indicated plans to take its trademark opposition/cancellation case to the US Supreme Court. The key constitutional question involves when a TM challenger has Article III standing to appeal an adverse TTAB decision. The issues are parallel to those faced on the patent side by unsuccessful Inter Partes Review (IPR) petitioners who attempt to appeal that loss.
There is a lot going on in Brewery v. Brew Shop, but the question before the Supreme Court focuses on Brewery’s opposition to Brew Shop’s multi-class trademark registration application. The application covers beer & beer-making-kits (both in Class 32) and also sanitizing products (Class 5). Brewery challenged registration in both classes (and lost). On appeal, the Federal Circuit divided up its opinion between the three types of goods. It ruled on the merits for the beer and beer-making-kits. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021). But, refused to hear the portion of the appeal relating to the sanitizing products.
Lack of Standing: With respect to use of the mark on sanitizing products, the appellate court dismissed Brewery’s appeal because the company did not show any concrete injury since Brewery does not compete in the sanitizing product market. “To be clear, an opposer cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark.” The parties also do not compete in the beer-making-kit market. However, the court found standing there since “beer-making kits are related to beer and to some extent compete with beer since they are sold in many of the same stores.” And, according to the court folks who brew beer also drink beer. (Note that in this video, one of the BBS founders says that she didn’t like beer). It is important to note that the court’s holding here is on Constitutional grounds. The U.S. Constitution prevents the appellate court from hearing an appeal on this particular aspect of the case.
Brewery has not yet filed its petition for writ of certiorari, but it did recently petition the Surpeme Court for an extension of time and that document included the following:
This case presents a substantial and important question of federal law: what must a party show to have Article III standing to appeal an adverse judgment from the Trademark Trial and Appeal Board to the United States Court of Appeals for the Federal Circuit? Below, the Federal Circuit for the first time held that such appellants must show that (1) it competes in the same line of business as the appellee, and (2) failure to cancel or refuse registration of a mark would likely cause the appellant competitive injury. The Federal Circuit’s unprecedented decision contravenes this Court’s decisions, including Lexmark Int’l, Inc. v. Static Components, Inc., 572 U.S. 118 (2014), and, for many litigants, forecloses appellate review of adverse TTAB decisions.
This result is what my old Brooklyn butcher might have termed “slicing the bologna a bit too thin.” In my view, if a party has Constitutional standing to challenge one aspect of a trademark registration, the Constitution should permit a challenge of all aspects of that application. You could think of this like having standing to challenge claim 1 of the patent, but not claims 2-4. That result can happen, but ordinarily requires an affirmative act by the patentee to show that there is no way that any liability would ever flow from those extra claims.
Facts: This was not raised by Brewery’s attorneys, but I’ll also note that my 2 minute internet search revealed the Brooklyn Brewery napkin below–showing that in-fact the company may compete in the sanitizing product marketplace.
In its opposition, the Brewery had argued that Brew Shop’s mark – as used on sanitation products – lacked acquired distinctiveness. However, the Board did not actually render a decision on that issue. In some of its briefing, Brewery argues that this situation calls for an automatic remand under the “ordinary remand rule;” and that such a remand does not require the full standing analysis. Brewery En Banc Petition.
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As mentioned, the trademark oppositions and cancellation proceedings have a number of parallels to IPR challengers, including the issue of appellate standing for unsuccessful petitioners. A patent case on the point is pending before the Supreme Court, and we are awaiting the views of the Solicitor General. Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022).
One difference between the Trademark and Patent cases is that the TM opposition statute limits the availability of oppositions to folks who “who believe[] that [they] would be damaged by the registration of a mark upon the principal register” 15 U.S.C. § 1063(a). What that means is that we already have a decision by the TTAB that Brewery had standing to make these challenges. The Federal Circuit did not appear to provide any deference to the TTAB’s factual conclusions regarding that issue. In addition, the court took the unusual stance of avoiding the question of statutory standing in favor of deciding Constitutional standing in violation of the common principle of Constitutional avoidance.
Trademark Registration No. 4,034,439; U.S. Trademark Application Serial No. 86,280,776; Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021).
Kathi Vidal is now the USPTO Director after being sworn-in by Federal Circuit Chief Judge Kimberly Moore. Congratulations!
Dir. Vidal’s first press release is a call for dialogue on what needs to happen to advance the patent office and “to expand, protect, and commercialize U.S. innovation.” In addition to IP expansionist statements, the announcement also repeatedly adds caveats: “minimizing inappropriate opportunistic behavior … deterring abuses and gamesmanship.” The other key theme taking steps to ensure that the innovation incentive reaches broadly to all Americans “especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy . . . from every region of the Country and across gender, race, identity, socioeconomic class, and veteran status, as well as among all other groups that have been underserved and overlooked.” This is exactly right – for our world to remain viable, we need to allow space for each person’s individual genius. Vidal proposes reaching out to actually teach innovation “in our schools, universities, and communities and encourage the emergence of additional innovation hubs.”
Prof. Ryan Abbott has gathered an amazing group of scholars for his new book on AI and IP that is forthcoming later this year. Research Handbook on Intellectual Property and Artificial Intelligence (Edward Elgar Press, Forthcoming 2022) (R. Abbott, ed.).
In general, the various chapters focus on various aspects of machine-based AI. My contribution takes a different tack and instead consider idea that modern corporations and other non-human entities are also a form of artificial intelligence. But, unlike their computer-bound AI cousins, corporations have already been granted the legal fiction of personhood status and many accompanying civil rights.[1]
I write:
An item still lacking from the corporate arsenal is inventorship rights. Yes, a corporation may own or license an invention and its resulting patents. And in fact, most patents are owned by non-human persons. But, the law persists in most nations as it has for more than 200 years that patentable inventions must begin with a human person, the inventor. In that sense, there is no “corporate invention” because corporate ownership of patent rights are derived rather than original—they stem from a transfer of property rights from human inventors who begins the chain of title.
This chapter considers the competing legal fictions of corporate personhood and corporate invention and how those factions operate in the transformed legal regime that places less emphasis on the role of human inventors and their inventive acts.
I would love to get your suggestions and feedback. [Read mine here]. You’ll be able to read the whole book soon, but meanwhile here are a few chapters that are available in draft form:
[1] Dennis D. Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence, Forthcoming Chapter in Research Handbook on Intellectual Property and Artificial Intelligence (R. Abbott, ed), https://ssrn.com/abstract=4081569.
The Federal Circuit’s April 12, 2022 decision in Everstar Merchandise narrowly focuses on PTAB trial procedure.[1] And, as a non-precedential opinion, it lacks weight. Still, the case is important because of the fabulous Christmas Theme drawings found in the patent-at-issue.[2]
Willis Electric and Everstar compete in the decorative lighting marketplace. In 2019, Everstar petitioned for post-grant review (PGR) of a Willis patent covering a “strength-enhanced, net-like decorative lighting structure.”[3]
These nets need to be strong enough so that they do not fall apart. The prior art solutions of twisted-pair, thicker wires, and extra support wires solved the problem but had drawbacks of cost, bulk, and weight. Willis improved upon the prior art with a single wire with internally reinforced strands and an outer insulating layer. The obviousness case presented two references whose combination taught all of the claim elements: Kumada disclosed a net design; Debladis disclosed the internally reinforced wire.[4] Although the PTAB initially granted the PGR petition, it eventually sided with the patentee—holding that a person of skill in the art would not have been motivated to combine the references.
During briefing, the patent challenger argued that cost reduction provided a motivation to combine the references. This seemed like a natural argument because cost reduction is a stated reason for the Willis invention at issue as well as a stated concern in both prior art references. In response, the patentee got technical and provided evidence that the proffered combination would not necessarily reduce cost. A cost reduction might come from reducing copper content, but the original petition did not particularly make the reduced-copper argument. In a reply brief, the challenger then made the link—arguing that the combination “would reduce the amount of total copper [and therefore] would reduce the cost of the system.”
The Board eventually refused to consider the particularized cost-reduction argument since it was not raised in the initial petition. The result then was a holding that the challenger had not met its burden of proving the claims obvious. On appeal, the Federal Circuit has vacated and remanded.
The Federal Circuit agreed that the initial petition controls the AIA trial, and that initial petition must identify the particular evidence that supports the grounds for challenging each claim. Here, though the court distinguished between an “entirely new rationale” (which is prohibited) and responsively elaborating on prior arguments (which is allowed). Here, the court concluded that the petition had sufficiently raised the cost-reduction argument and tied it particularly to the prior art references. In its conclusions though, the court referenced materials beyond the initial petition itself by further noting that cost reduction was discussed in the institution decision, was the subject of expert testimony, and was briefed on the merits. Those actions together constituted a “developed record” that allows for a “fair extension” of the original arguments. Further, “[a]ny ambiguity as to whether a reply constitutes a new argument is eliminated when the reply is a legitimate reply to arguments introduced in a patent owner’s response or the Board’s institution determination.”[5]
Although Nautilus made it easier for a court to find claim terms indefinite, the Federal Circuit continues indicate that the definiteness test strongly favors validity.
In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. (Fed. Cir. 2022), the court has sided with the patentee–rejecting the district court’s indefiniteness finding.
Niazi’s US6638268 covers a double lined catheter designed for placing an electrical lead in the coronary sinus vein. The outer catheter is a “resilient catheter having shape memory and a hook shaped distal end.” The inner catheter is a “pliable catheter.” In Figure 8 below, you can see that the larger outer catheter can get most of the way to the vein destination, but its less-pliable construction makes it difficult to follow all the twists. The pliable inner catheter is then inserted and extended to reach the vein location.
D.Minn. Judge Wright found the terms “resilient” and “pliable” indefinite and therefore that the claims were invalid. On appeal, the Federal Circuit has reversed–holding that terms meet the requirement of “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
Patent law’s definiteness requirement is derived from the requirement that patent claims “particularly pointing out and distinctly claiming the subject matter” of the invention. 35 U.S.C. 112. The purpose of express claims is to provide public notice of the scope of exclusive rights so that competitors and potential copycats can arrange their affairs to avoid infringement. (We could pause here to question whether competitors and potential copycats do this in the ordinary course or if it is instead merely legal fiction.) But, the Supreme Court has also recognized that claims need not perfectly delineate claim scope — rather, the claims must provide “reasonable certainty” as to their scope. Nautilus. In particular, the Federal Circuit has repeatedly found terms of relative degree to be definite so long as POSITA would have “enough certainty.” Further, “a claim is not indefinite just because it is broad.” Slip Op. On the other hand, “purely subjective” claim terms are indefinite — such as “aesthetically pleasing” as used in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345, 1349–56 (Fed. Cir. 2005) (there must be some “objective anchor”).
Here, according to the court, Niazi’s claims terms provide enough guidance to avoid being labelled indefinite.
Resilient: The claims require “an outer, resilient catheter having shape memory.” In its decision, the court concluded that resilient is guided by the “shape memory” requirement. The specification further explains that it may have a “braided design.” and may be made of “silastic or similar material” with the purpose of “return[ing] to its original shape” after being distorted. The specification also categories resilience in terms of both torque control and stiffness.
Pliable: The claims require “an inner, pliable catheter slidably disposed in the outer catheter.” The specification provides further explanation: “constructed
of a more pliable, soft material such as silicone;” and without “longitudinal braiding, which makes it extremely flexible and able to conform to various shapes.”
In addition to each having some amount of support from the specification, the court also noted that the two terms can be read relative to one another– the pliable inner catheter must be “more flexible than the outer.”
Definiteness is ordinarily a question of law and so the Federal Circuit reviews the issue de novo on appeal. Here, the court found sufficient reasons to find the terms definite. Reversed.
Note: The court also considered dictionary definitions. It did not discuss whether those definitions introduced extrinsic evidence requiring deference rather than de novo review.
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Niazi’s Claim 11 is a method-of-use claim that did not use the pliable/resilient terms. Thus, it survived the district court indefiniteness attack. The defendant here St. Jude supplied the accused catheter, and Niazi argued that St. Jude had induced doctors and hospitals to infringe. The district court found no inducement. On appeal, the Federal Circuit affirmed — holding that under the correct construction of the claim terms there was no underlying direct infringement.
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Exclusion as a Discovery Sanction: In his expert report, Dr. Niazi’s technical expert (Dr. Burke) stated that he had personally infringed the Niazi patent while using the accused products. The problem: Dr. Burke had not been identified as a fact witness as required by R.26(a)/(e). Dr. Niazi’s damages expert relied upon several license agreements to support his report. However, those agreements were not identified during fact discovery despite a specific request for documents. Both expert reports were provided after the close of fact discovery (as is common). As a sanction for the late disclosures, the District Court struck those facts from the expert reports and barred Dr. Burke from testifying as a factual witness. On appeal, the Federal Circuit affirmed on a technical ground — finding that Niazi’s appeal on this question failed because he did not challenge the actual basis for the district court’s decision–whether the delay in disclosure was “substantially justified or harmless.”
Despite the exclusion order, Niazi still presented a declaration from Dr. Burke in support of summary judgment that included a number of factual claims based upon Burke’s personal experience. The district court struck the statements and also awarded monetary sanctions under R. 37. The Federal Circuit affirmed:
Here, the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. We see no abuse of discretion in the district court’s decision to award monetary sanctions.
Slip Op.
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Finally, the district court also excluded Niazi’s damage expert report as unreliable.
The district court excluded Mr. Carlson’s expert opinion as legally insufficient because Mr. Carlson failed to “apportion” between infringing and noninfringing uses and because he could not properly include leads in the royalty base. We affirm the district court’s exclusion.
Slip Op. Here, the idea was that St.Jude agued that some uses were non-infringing and the expert did not attempt to apportion-out the non-infringing uses but instead merely stated that apportionment would be “impractical in view of real-world considerations.”
Here, the claim was that sales by St. Jude (along with its instructions) were inducing infringement the method-of-use claims. The patentee argued that apportionment does not apply to method claims. But, the Federal Circuit disagreed with that broad statement. “Damages should be apportioned to separate out noninfringing uses, and patentees cannot recover damages based on sales of products with the mere capability to practice the claimed method. Rather, where the only asserted claim is a method claim, the damages base should be limited to products that were actually used to perform the claimed method.”
Courts continue to struggle with their use of evidence for claim construction. The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation. The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.
The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc). That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding. At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.” Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003). In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.
I see disclaimer as an examination failure. When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly. If the specification would not support such an amendment, then the specification also would not support the disclaimer. In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.
Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.” The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse. The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer. In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).
Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal” (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means. In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer. At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer. In particular, the district court found that the patentee’s prosecution disclaimer required the narrow construction.
1. A user input apparatus … comprising:
user input means for producing a user input stream;
input means for producing [an] input signal;
converting means for receiving [the] input signal and producing therefrom an input stream; and
encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.
US6219730, claim 1.
Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.” Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.
Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.
On appeal, the Federal Circuit has rejected that construction as unduly limiting.
During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin). Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.). Those all look like “input signals”–but the patentee argued in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming. Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision. The examiner accepted the distinguishing argument and allowed the case.
At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz. The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.
On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.
Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.
Slip Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.” That is the disclaimer, nothing more. “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.
On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency. In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide. [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].
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Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.
MBHB LLP is the exclusive sponsor for Patently-O. I joined the firm as a law clerk back in 2001 and got my first assignments from Larry Aaronson. I still cringe thinking about the amount of red-ink he spilled editing that first office action response.
