I held a contest and Apple wins–for having the patent with the largest number of cited prior art references (patents issued 2005-2021).  Apple’s U.S. Patent No. 11,037,565 is directed to a version of Siri that works across devices – an “Intelligent digital assistant in a multi-tasking environment.”   The total, 9,441 cited references — 3 of which were cited by the examiner. Apple.Patent.

Here is claim 1:

1. A non-transitory computer-readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by one or more processors of a first electronic device, cause the first electronic device to:

provide a media output;

while providing the media output: receive a speech input requesting to continue providing the media output at a second electronic device different from the first electronic device;

determine, based on the speech input, whether to continue providing the media output at the second electronic device; and

in accordance with a determination to continue providing the media output at the second electronic device: cause the second electronic device to continue providing the media output by resuming the media output based on where the media output was previously stopped at the first electronic device.

The application claims priority back to a 2016 provisional application and has three additional family member patent already issued.

In re Netflix (Fed. Cir. 2022)

This was an easy mandamus transfer.  The plaintiffs, CA Inc. and Avago Technologies Int’l,  are both subsidiaries of Broadcom Corp. The plaintiffs are both headquartered in San Jose and Broadcom is down in Southern California.  Netflix is also Silicon Valley. Still, the plaintiffs sued Netflix for patent infringement in the Eastern District of Texas.  Although Netflix itself does not have a place of business in EDTex, the district court found that its intimate relationship with ISPs to provide local content delivery was sufficient.  The vast majority of Netflix content is delivered directly from local residential Internet Service Providers (ISPs).

The district court also refused to transfer for inconvenient forum. Although N.D. California was certainly the locus-of-relevant-events, the court noted court congestion and access to evidence weighed against transfer.  Although the source code is located in N.D. California, the court saw no evidence showing that it would be difficult to get that data to Texas. Netflix does have more internet traffic than any other company, right!

On mandamus, the Federal Circuit only addressed the inconvenient forum question — ordering the case transferred.   The appellate panel particularly focused on the district court’s apparent bias against transferring venue.  In particular, the district court discounted Netflix arguments of evidence availability because Netflix did not “articulate the precise way that the evidence supports its claim or defense.”  At the same time, the court did not place the same precision requirement on CA regarding its evidence.  This bias was improper:

[W]e see no basis for reasonably demanding more from Netflix than it provided at this stage of the litigation, when a transfer motion must be filed and ruled on. . . . Nor have we been shown any reasons here to doubt that the documents and sources would be relevant and material to the issues here.

Id.

Venue – we have a very broad federal venue statute, except that it is super-narrow for patent lawsuits. Should we expand patent venue?

— Dennis Crouch (@patentlyo) January 19, 2022

by Dennis Crouch

Back in 1969, long before Bubba Gump, Louisiana Judge Alvin Rubin explained the virtues of shrimp: “Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight.”  Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037 (E.D. La. 1969).  The Deepsouth case was about patented equipment for deveining shrimp in order to render them “more pleasing to the fastidious as well as more palatable.” Id.  Deepsouth litigated its case to the Supreme Court, and the Court eventually allowed the company to escape some portion of its adjudged liability based upon the territorial limits of U.S. patent law.

We know that U.S. patents are territorially limited.   Although Deepsouth was barred from using Laitram’s patented inventions throughout the United States, Deepsouth began selling its deveining machine to folks outside of the US in a partially constructed form.  The company explained the setup to one of its customers in Brazil:

We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil.

The Fifth Circuit had sided with the patentee — holding that “Such a dependence on technicality would require us to countenance obvious schemes, perhaps as simple as omitting an important screw, designed to evade the mandate of § 271(a).”  However on certiorari, the Supreme Court felt itself bound by the statute and precedent. The court particularly rejected the notion that “substantial manufacture” can constitute direct infringement ”

[W]e have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts.

Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 528 (1972).  The decision was 5-4, with Justice Blackman writing in dissent and arguing that “The Court has opened the way to deny the holder of the United States combination patent the benefits of his invention with respect to sales to foreign purchasers.”  Bills eliminating this loophole were quickly introduced into Congress, and eventually became law in 1984, creating 35 U.S.C. § 271(f).  Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 98 Stat. 3383.  The new law creates two avenues for liability:

1. Supplying a “substantial portion” of the uncombined components of the  patented invention from the US in a way that induces combination abroad. 271(f)(1).
2. Knowingly supplying a part from the US that is especially designed as a component of a patented invention and not a staple article or commodity with substantial non-infringing use. 271(f)(2).

Deepsouth has important implications beyond the component-export arena.  The case is an important example of the Supreme Court refusing to fill a gap in statutory language. However, the court majority was also clear that the refusal to gap-fill was one-sided — the majority did not want to expand patent rights without Congressional input:

[W]e should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought. No such signal legitimizes respondent’s position in this litigation.”

Deepsouth at 531.  The dissent suggested that the precedent was not so clear and so the demand to overrule or modify was fairly slight.

The anti-patent-right-expansion policy of Deepsouth was repeated in Parker v. Flook, 437 U.S. 584, 596 (1978) (“we must proceed cautiously when we are asked to extend patent rights into areas wholly unforeseen by Congress”) and again in Justice Brennan’s dissent in Diamond v. Chakrabarty, 447 U.S. 303, 319 (1980) where he wrote:

[W]e must be careful to extend patent protection no further than Congress has provided. In particular, were there an absence of legislative direction, the courts should leave to Congress the decisions whether and how far to extend the patent privilege into areas where the common understanding has been that patents are not available.

Chakrabarty.  See also, Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 195 (1995) (“A statutory restraint on this basic freedom [of Farmers to have right to collect and replant seeds] should be expressed clearly and unambiguously.” Stevens, J. in dissent).

Deepsouth was decided before the PCT became available and well before TRIPs and  the global expansion of patent rights. We might question whether there is still a need for the US to extend rights to overlap those available abroad, especially as it tends to injury U.S. manufacturing capability.

We have snow on the ground here in Missouri. That makes me think of Gary Reinert’s new patent entitled “method and apparatus for rapid stopping of a motor vehicle particularly on snow or ice.” U.S. Pat. No. 11,091,154.  The image below from the patent tells the story.  Conventional brakes are awful. Antilock Brakes are much better, but the Reinert Snow Brakes take the cake.  Rather than just stopping the wheels, the Reinert Snow Brakes actually shift the car into reverse and spin the tires backward to slow-down the car.  I feel like I saw this in Cannonball Run II, but I’m probably misremembering.

Here is claim 1:

A method for emergency stopping of a motor vehicle comprising the steps of:

activating the emergency stopping of the motor vehicle;

stopping the forward rotation of each wheel immediately following the activation of the emergency stopping of the motor vehicle;

activating a transmission of the vehicle, which shifts an engine of the motor vehicle between driving the wheels in the forward rotation direction, a neutral park position and a reverse rotation direction, immediately after the forward rotation motion of each wheel has ceased such that each wheel maybe driven in the reverse rotation direction;

rotating each driven wheel in the reverse rotation direction until the vehicle is stopped;

activating the transmission of the vehicle once the vehicle is stopped to place the transmission into the original forward rotation position or into the park position,

wherein the step of activating the transmission includes using an on board electronic control unit whereby the method for emergency stopping of a motor vehicle is controlled by an on board electronic control unit, and

wherein the step of activating the transmission includes using sensors on each ground engaging wheel.

The examiner found several on-point references, including US5492512A – Brake system with wheel-reversing means for an automobile (Wu). Reinert distinguished those references by requiring a particular shifting through “neutral park position” before heading to reverse, and also requiring sensors on the wheels that are used to activate the emergency stop.

Field v. De Comeau, 116 U.S. 187 (1886)

Field’s patent uses a spring to make it easier to slip on tight-fitting gloves.  The case reached the Supreme Court in 1886, but the court sided with the accused infringer.  The case involved admitted-prior-art.  In particular, the patent specification admitted “that springs had been combined before with the wrists of gloves” in the past. That admission assured the court that the patent cannot cover “the combination of springs in every form with the wrists of gloves to close them.”  The accused infringer was also using a spring-glove combination, but a different form than that claimed. As such, no infringement.

In this case, the court primarily used the admitted-prior-art to limit the scope of the patent in the infringement context, after recognizing that a broader interpretation would render the patent invalid.  That approach is common of the era.  Today, courts rarely rely upon the prior art when interpreting claim scope.  Still, admitted prior art would seemingly be quite relevant as part of the intrinsic analysis of claim scope.

by Dennis Crouch

The chart below shows the number of Supreme Court patent decisions broken-up by decade. The ramp-up in the late 1800s is tied to the “second industrial revolution” in the US.  The drop in cases after 1890 is largely procedural. Congress created the regional circuit courts of appeals as a buffer between the trial courts & Supreme  Court.  Subsequently, the Court limited the number of patent cases it heard via the certiorari process.  Read more about this transition in my Kessler Cat paper (with Homayoon Rafatijo).

We are 2 years into the 2020s and have 5 decisions thus far (counting Google v. Oracle, which discusses substantive patent issues).  If that trend continues, then the  final figures for the 2020s would be similar to that of the 2010s.  Of course, thus far in the 2021-22 term, the Supreme Court has not yet granted certiorari in any patent cases.

To get this data, I used Westlaw’s case search and limited the results to Supreme Court decisions identified as “patent” decisions by Westlaw and that have a patent law related WL KeyCite headnote.  Reasonable minds will differ on what counts as a “patent case.”

by Dennis Crouch

Plastronics Socket Partners v. Hwang (Fed. Cir. 2022) (non-precedential).

There is a lot going in this decision, but the crux of the appeal is a license interpretation question.  Here are the rough facts:

• Hwang licensed its patent rights to Plastronics Socket.
• Plastronics Socket split into two companies: Plastronics Socket and Plastronics H-Pin under Texas “divisive merger” statute.   (It is odd, but under Texas law, a division in this way is legally defined as a merger).
• As part of that split, Plastronics H-Pin took on sole responsibility for the license. Plastronics H-Pin made the licensed products (h-pins) and sold them its sole customer Plastronics Socket at a very low rate — thus greatly reducing the royalties owed.
• Plastronics Socket resold the product, but argued that it was no longer bound by the contract because the contract liabilities had been shifted to Plastronics H-Pin.

In the appeal, the Federal Circuit confirmed that the “divisive merger” cannot be used to escape from contract obligations.  Thus, Plastronics Socket still owes the 3% that it agreed to pay for its own sales.

= = =

Statute of Limitations: Plastronics also had a counterclaim. In particular, Hwang had a right to further license the patent, but only with approval from Plastronics. Hwang admitted that he had licensed the patent, but that the license occurred 9 years before the lawsuit began and thus was outside of the 4-year statute of limitations under Texas law.  The Texas allowed the claim — since it was an ongoing license.  On appeal, however, the Federal Circuit reversed — holding that the “breach of contract … arose from a single, unauthorized license grant … almost ten years before Plaintiffs filed suit.”  As such, the case was beyond the statute of limitations.  The court distinguished other situations regarding periodic payments of royalties, where each missed payment is seen as another breach and thus can restart the statute of limitations. See Hooks v. Samson Lone Star, LP, 457 S.W.3d 52, 68 (Tex. 2015).

= = = =

These little H-pins are tiny, but have been important to the semiconductor industry:

= = = =

by Dennis Crouch

Prior to 1891, appeals in patent cases went directly to the Supreme Court, and the Court decided lots of patent cases.  In 1891, Congress created the regional circuit courts of appeals as a buffer between the trial courts and the Supreme Court and the number of high-court patent cases began to fall.  The court decided a number of big  patent cases during the period of 1891-1952, although many of them have been rejected or are no longer followed.  Many are also primarily anti-trust cases involving the use (or misuse) of patent rights.

The following are the most cited Supreme Court patent cases during this period:

1. U.S. v. U.S. Gypsum Co., 333 U.S. 364 (1948).  U.S. Gypsum is an antitrust minimum-price-fixing case. The U.S. Gov’t wanted to show that the patent covering the products was invalid, and therefore that the price fixing was improper. The district court prohibited the Gov’t argument, but the Supreme Court reversed.  The case is primarily cited for its explanation of the “clearly erroneous” standard for reviewing factual findings by a judge. A finding can be clearly erroneous even if based on some evidence if the reviewing court “is left with definite and firm conviction that mistake has been committed.”
2. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950).  Graver Tank is generally cited for its statement of the function-way-result test for the doctrine of equivalents. “A patentee may invoke [DOE] against … a device if it performs substantially the same function in substantially the same way to obtain same result as patentee’s device.”
3. Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806 (1945).  Precision describes inequitable conduct as form of unclean hands — holding that the patentee had committed fraud and thus lost access to the court of equity — “closing doors of equity court to one tainted with inequitableness or bad faith relative to matter in which he seeks relief.”
4. Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944). Hazel-Atlas is another fraud case. The lower court found that the defendant had not done enough to fully uncover the fraud. However, the Supreme Court found that patents are special because they implicate a great public interest. “The public welfare demands that the agencies of public justice be not so impotent that they must always be mute and helpless victims of deception and fraud.”
5. Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). The A&P case is a precursor to KSR v. Teleflex (2007). The Supreme Court explained that a collection of known elements cannot be patented unless “the whole in some way exceeds the sum of its parts” — something that is usually not the case in mechanics.
6. The Fair v. Kohler Die & Specialty Co., 228 U.S. 22 (1913).  This short decision by Justice Holmes was cited hundreds of times for the principle that a patent infringement lawsuit has proper jurisdiction in Federal Court despite a lack of diversity between the parties, and that the party making the claim decides what law is being asserted.
7. American Well Works Co. v. Layne & Bowler Co., 241 U.S. 257 (1916). The defendant had been telling people that plaintiff was an infringer; plaintiff sued for defamation.  The Supreme Court confirmed that the patent laws did not create Federal Jurisdiction for the case.
8. Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933). In this case, the court explained that the inequitable conduct (unclean hands) only applies when the unconscionable act has “immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.”  In the case, the court found that bad acts with regard to two patents in-suit did not tarnish three other asserted patents (despite being from the same “family”).
9. Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275 (1892). This famous case is most cited for the Supreme Court’s rejection of oral evidence as sufficient to invalidate an issued patent.  Rather, proof must be “clear, satisfactory, and beyond a reasonable doubt.”
10. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). In Eibel, the court found that a continuous-sheet paper machine invention did not rise to the level of a “pioneer patent, creating a new art.”  However, the court determined that the improvement was of such merit that it was still “entitled to liberal treatment.”  The court also held that the invention’s “immediate and successful use” across the industry was “convincing proof” that the specification was sufficiently detailed and precise.

Note here, I ranked these according to the number of citations by courts.  We would get a different sorting if ranked by law review citations — a case such as Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), would rise up toward the top of the list and the Barbed Wire case would fall off.

I've been looking at pre-1952 patent cases (1891-1951). The following are the top-ten most often relied upon in law review articles:

1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) (function-way-result test for the doctrine of equivalents); pic.twitter.com/DvGjkI1LXL

— Dennis Crouch (@patentlyo) January 12, 2022

Total utility patent grants are down about 7% for calendar year 2021. Still the total ranks as the third highest of all time.  The Office has almost eliminated unwanted delay in examination.  Right now the delay is about 17 months from filing to first office-action. They really don’t want that to go below 14 months in order to capture 102(a)(2) prior art (former 102(e)).

by Dennis Crouch

Although patents are a form of private property, they are also expressly a tool of public policy.  When a private patent lawsuit of interest reaches the Supreme Court,  the Court regularly turns to the President’s administration for its views on how a decision may impact patent law and innovation writ large. That request for an amicus brief from the government is termed a CVSG – Call for the Views of the Solicitor General.   One problem with CVSGs is that they typically add several months to the certiorari process because the DOJ spends substantial time collecting input from various government branches and outside interests before drafting and filing its brief.  In patent cases, a Gov’t amicus brief is often the most important at the certiorari stage — or at least the most predictive of the outcome.

We are currently waiting CVSG amicus briefs in two patent cases pending before the Supreme Court:

• American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (patent eligibility); and
• PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (res judicata)

Of these, the Personal Web request is fairly recent, but American Axle has been spinning since May 3, 2021 – just over 8 months.

To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief.  The median timing was 5 months, and all the briefs were submitted in less than 9 months.  What this means is that the DOJ still has a few more weeks to complete its task and still be within these historic guideposts.

I truly do not know what the DOJ is going to say in its American Axle brief.  Back in 2019, the Solicitor General filed a powerful brief in Hikma v. Vanda arguing that Mayo and Alice led to substantial confusion, especially when attempting to reconcile prior cases such as Diehr.  But, the Gov’t brief in Hikma was filed by President Trump’s SG (Noel Francisco) and the big question is whether President Biden’s Solicitor Elizabeth Prelogar (and the Biden Admin generally) will follow the same course.  Although the top-signatories have changed, the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.  In addition, Malcolm Stewart remains the Deputy SG at the Department of Justice (as do others).

I have a new draft article on the Kessler Doctrine co-authored with my former student Homayoon Rafatijo and welcome comments and suggestions before it is formally published later this month.

• Download it here: Resorbing Patent Law’s Kessler Cat into the General Law of Preclusion
• Send comments: crouchdd@missouri.edu 

Kessler is a 1907 Supreme Court decision that we argue should be seen as simply implementing defensive issue preclusion. At the time, the case involved some additional novelties having to do with confusion over both the new appellate federal court structure and the scope of potential anti-suit injunctions. Meanwhile, the scope of issue and claim preclusion have expanded with the merger of law & equity, creation of the Federal Rules Rules of Civil Procedure, as well as the expansion of Declaratory Judgment jurisdiction.

As issue and claim preclusion expanded, Kessler fell from fashion and was basically unneeded and unused for several decades. But, since 2014, the Federal Circuit has steadily expanded Kessler as a patent law specific form of preclusion that is separate and distinct from the traditions of claim and issue preclusion.  We argue argue this approach is wrong.

The cat: We parallel our article alongside a short parable from Paulo Coelho titled the “Importance of the Cat in Meditation.”  The basic punchline is that once people started thinking the cat was an important element of mediation, it was easier for them to scientifically explain the importance rather than let go of the meaningless attachment.  We argue that the Kessler Doctrine is following the same pathway, the Federal Circuit’s explanations do not make sense, and that it is time to resorb the doctrine into the general law of preclusion.

Thanks! Dennis Crouch