This is often couched as a patent issue, but it is really a technology transfer (knowhow) issue.
Patents are territorial (country-by-country). There are currently no issued patents in any less-developed country that would prevent people from making/using the vaccines there.
2/— Dennis Crouch (@patentlyo) April 29, 2021
via twitter.
by Dennis Crouch
In their forthcoming article, Professors Dmitry Karshtedt, Mark A. Lemley & Sean B. Seymore argue that the Federal Circuit has improperly and unduly limited the ability of chemical and biotech innovators to obtain genus claims — i.e., claims that cover “not just one specific chemical but a group of related chemicals.” The Death of the Genus Claim, 35 Harv. J.L. & Tech. (forthcoming 2021). Now, the trio (along with others) have taken their prior work and converted it to an amicus brief supporting en banc review in the pending case of Amgen Inc. v. Sanofi, Docket No. 20-01074 (Fed. Cir. Oct 24, 2019). Amgen v. Sanofi – Lemley Brief.
The focus of the case is on “genus claims” where the genus is defined by functional limitations. Here, the patent covers antibodies that bind to a certain protein-molecule [PCSK9] in a certain way [to block LDRL binding]. However, the claim does not affirmatively spell-out the structure of the claim.
An isolated monoclonal antibody [that] binds to [one of the residues of PCSK9] and … blocks binding of PCSK9 to LDRL.
In its decision, the Federal Circuit held that it would be very difficult for a patentee to enable such a claim because there are thousands (or potentially millions) of molecules that might reasonably fit this definition. It would take undue experimentation to test each and every one of these myriad prospects. Karshtedt, Lemley, and Seymore argue that the Federal Circuit’s approach here is problematic:
That is an impossible burden, and it is not one the law imposed until recently. It represents “a categorical shift in thinking away from teaching the PHOSITA and towards a precise delineation of the boundaries of the claim.”
Brief (quoting their article). In its decision, the court makes clear that it is still technically possible to enable such a claim, but effectively admits that it is not practically possible.
While functional claim limitations are not necessarily precluded in claims that meet the enablement requirement, such limitations pose high hurdles in fulfilling the enablement requirement for claims with broad functional language.
Amgen.
Functional Claim Language: The decision briefing focuses on chemistry and biotech, but the truth is that functional claim limitations are most often found in claims directed to mechanical, electronic, and software fields. These functional claims – to the extent they encompass thousands (or potentially millions) of embodiments – are equally susceptible to the transformed approach. For many years, these two arenas have been treated differently for enablement purposes — with courts often classifying innovations as either within the predictable or unpredictable arts. However, Amgen also shows substantial crossover. In other words, Amgen is generally another attack on claims defined by functional limits.
On point, the Amgen court repeatedly cites and references the enablement discussion found in the lip synchronization software case of McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091 (Fed. Cir. 2020). Amgen focused particularly on FN2 from that case:
In cases involving claims that state certain structural requirements and also require performance of some function (e.g., efficacy for a certain purpose), we have explained that undue experimentation can include undue experimentation in identifying, from among the many concretely identified compounds that meet the structural requirements, the compounds that satisfy the functional requirement.
Id. Two additional amicus briefs have been filed in the case:
Briefing continues.
Patent law is a quirky mix of private and public law. Individual inventors and their assigns are granted private property rights and the freedom-of-contract to license those rights as they see fit. But, patents are designed to serve a public purpose, and the courts have occasionally struck-down private agreements that go too-far — especially agreements that frustrate the invalidation or cancellation of wrongfully issued patents.
In Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021), the question on appeal is whether an agreement between parties can enforceably prohibit the filing of an Inter Partes Review (IPR) petition. In the case, Kannuu and Samsung entered into an NDA that included a forum selection clause — choosing NYC Courts (Federal or State) as the sole arena for litigating actions or proceedings relating to the agreement. Kannuu shared substantial information about its patent porfolio. Samsung decided not to pursue any license agreement but did (allegedly) adopt the disclosed navigation/search functionality Samsung Smart TVs.
Kannuu then sued (6 years later) after several of its patents had issued in NYC Federal Court. In response, Samsung filed a batch of IPR petitions. The PTAB granted 2 of 5. Although Kannuu raised the forum-selection argument to the PTAB, the PTAB did “declined to consider the merits of whether the FSC barred Samsung’s petitions.” Kannuu brief. Back in court, the district court refused to issue an anti-IPR injunction — holding that the forum selection clause did not exclude IPR filings. The preliminary injunction denial is now on appeal with two basic questions:
Law professors have gotten involved in the appeal with Kannuu being represented by Prof. Ted Sichelmann (USD) and competing amicus briefs filed on each side:
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Here, I expect that the Federal Circuit will duck the question of general public policy and instead affirm the narrow interpretation of the forum-selection clause.
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The IPR proceedings continue to more forward. These were instituted in September 2020 and so we can expect a that the final written decision will be issued September 2021. The Federal Circuit has ordered an expedited appeal with oral arguments planned for July 2021.
by Dennis Crouch
The Federal Circuit has denied en banc rehearing in the interesting case of Authentic Apparel Group, LLC v. US. In the case, the court enforced an agreement that was pretty-dang-close to a naked trademark license — holding that use of a mark for decoration on clothing still counts as a trademark-use for licensing purposes.
In view of the clear shift in the law toward allowing trademark licenses, we do not agree with Authentic that a “decorative” use of a trademark is necessarily divorced from the goodwill associated with the trademark such that it cannot be considered a licensed use “for trademark purposes.” We recognize, of course, that a purely decorative design may not qualify for trademark protection in the first place. . . . But, again, this appeal does not involve a challenge to the validity of the Army’s trademarks, but rather a question of what limitations the Army may place on the use by a licensee of trademarks that the Army already owns.
Slip Op. In its rehearing petition, the licensee asked the following:
Whether a trademark owner can lawfully transfer an interest in only the “aesthetic aspects” of its trademark pursuant to a license without simultaneously transferring the goodwill of the business in which the mark is used, or that part of the goodwill of the business connected with the use of and symbolized by the mark.
AuthenticPetitionForRehearing.
I see this as a very interesting issue for the US Supreme Court, but the briefing and setup of the case has not been 100% top notch.
Authentic Apparel Group, LLC v. U.S., 989 F.3d 1008 (Fed. Cir. 2021) (en banc subsequently denied)
Federal Circuit on TM Licensing: We’re going to Enforce the Terms
I looked at Federal Circuit appellate dockets from the 10 most recent decided appeals (from District Court).
10/10: EVERY DOCKET included at least one paper that had to be re-filed because of errors. pic.twitter.com/OovbF1t6og
— Dennis Crouch (@patentlyo) April 27, 2021
Here is a simple chart counting law review articles discussing both patent law and either the “Eastern District of Texas” or “Western District of Texas” (or both). Because of some law review delays and dating-games, Westlaw can really only provide data through 2019.
W.D.Tex. is now the most popular district court for patent infringement claims, followed by Delaware. E.D.Tex. still caries weight, but is no longer the go-to-district (because of venue restrictions).
WhitServe LLC v. Dropbox, Inc., 19-2334 (Fed. Cir. 2021) (nonprecedential)
The district court dismissed WhitServe’s patent infringement complaint with prejudice — finding the claims ineligible as a matter of law. On appeal, the Federal Circuit has affirmed. WhitServe is the brainchild of patent attorney and inventor Wesley Whitmyer of Whitmyer IP Group. The patent at issue here. U.S. 8,812,437.
Claim 10, the focus of the case, is directed to an internet-based data-backup system and requires expected capability of “requesting, transmitting, receiving, copying, deleting, and storing data records.” In the appeal, the Federal Circuit found that these activities are abstract ideas: “Such transmitting, saving, and storing of client records is a fundamental [and longstanding] business practice” and therefore an abstract idea. Data storage at a generalized level is the focus of claim 10 and therefore claim 10 is “directed to an abstract idea.”
Here the system disclosed in claim 10 claims the computer function of maintaining data records, including storing records at different sites for added protection. This is an abstract idea.
Slip op. In its analysis, the court considered WhitServe’s argument that its physical arrangement of the components offered a specific and technological improvement. On appeal, however, the court rejected those arguments. The basic issue was that the claims (and specification) are all discussed at a too-high of a level of generality. I see the following sentence as the key take-away line from the case:
The specification does not, however, explain the technological processes underlying the purported technological improvement.
Id. Adding the tech-features within the claim would certainly have been sufficient. Also, the court may well have accepted these same claims if the technical improvement had been simply disclosed in the specification with sufficient detail. Of course, this implies that such a sufficiently-technical solution was available to the inventor. This line also effectively eliminated the possibility of recovering the claim under Alice/Mayo Step 2.
The claims recite generic computer components performing routine conventional functions. Viewing claim 10’s elements in combination does not alter our conclusion because the claims lack a non-conventional and non-generic arrangement. Accordingly, we conclude that the ’437 patent does not disclose an inventive concept and, as a result, does not transform claim 10 into patent eligible subject matter.
Id.
As part of its argument regarding eligibility, WhitServe had presented evidence of inventiveness, including secondary indicia of non-obviousness. On appeal, the court disregarded that evidence as irrelevant.
Objecti[ve] indicia of nonobviousness are relevant in a § 103 inquiry, but not in a § 101 inquiry.
Id. Invalidity AFFIRMED.
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10. A system for onsite backup for internet-based data processing systems, comprising:
a central computer accessible by at least one client computer at a client site via the Internet for outsourced data processing;
at least one database containing a plurality of data records accessible by said central computer, the plurality of data records including internet-based data that is modifiable over the Internet from the client computer;
data processing software executing on said central computer for outsourcing data processing to the Internet from the at least one client computer, said data processing software modifying the internet-based data in the plurality of data records according to instructions received from the at least one client computer, the modifying including updating and deleting the internet-based data in the plurality of data records;
a client data request, sent from at least one client computer via the Internet to said central computer, the client data request comprising a request for a backup copy of at least one of the plurality of data records;
software executing on said central computer to receive, via the Internet from the at least one client computer, the request for a backup copy of at least one of the plurality of data records including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software;
and software executing on said central computer to transmit the backup copy of the at least one of the plurality of data record including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software to the client site for storage of the internet-based data from the at least one of the plurality of data record in a location accessible via the at least one client computer;
wherein the location is accessible by the at least one client computer without using the Internet.
As expected, the Federal Circuit has announced the upcoming transition of Chief Judge from Judge Prost to Judge Moore scheduled for May 22, 2021. Judge Prost has served as chief for seven years, and Judge Moore will begin her seven year term. According to the court announcement, Judge Prost will continue in active service. Congratulations to the Court on a successful transition.
Earlier this year, Judge Wallach announced his upcoming move to senior status set for May 31, 2021. President Biden has nominated Tiffany Cunningham as his replacement.
Tiffany Cunningham: Nominee for the United States Court of Appeals for the Federal Circuit
by Dennis Crouch
The U.S. Supreme Court heard oral arguments on April 21, 2021 in the pending assignor estoppel case of Minerva Surgical Inc. v. Hologic Inc. The basic idea is that an inventor who signs the oath-of-inventorship and assign rights to a third party is estopped from later challenging the patent’s validity in court. The inventor here (Truckai) filed for patent protection and assigned rights in his inventions to the company he started. That company then sold rights to Cytyc Corp who then sold to Hologic. Truckai made bank on the sale, but “could not stop innovating.” He then turned around and started his own new company Minerva operating in a similar space. Some of the claims that eventually issued for Hologic had been substantially amended during prosecution and seemingly broadened to particularly cover Minerva’s new focus. Hologic then sued Minerva for infringement. Minerva attempted to raise a defense of invalidity based upon lack of written description / enablement based upon the expanded claim scope. However, the courts refused to allow the challenge based upon the doctrine of assignor estoppel. Note here that the parties appear to disagree about the scope of changes and Truckai’s involvement.
Assignor estoppel has a bit of a winding history. The statute provides no guidance, but the doctrine seems to have its origin in the property law doctrine of estoppel-by-deed that normally accompanies a warranty deed (although sometimes a quitclaim deed).
The following are what I see as the seven key historic points for the doctrine:
In the background, we also know that the PTAB has determined that assignor estoppel does not apply to Inter Partes Review (IPR) proceedings.
The briefing and oral arguments focus on three potential outcomes:
One open question will likely be whether the outcome will be merely a default rule that can be changed via contract. If so, employers may be able to add language to the employment contracts and assignment documents to include waiver of the right to challenge future validity.
= =
One of the key sub-debates seemed to be the correct pronunciation of ASSIGNOR:
In re TracFone Wireless, Inc. (Fed. Cir. 2021)
In its second go-round in the case, the Federal Circuit has ordered District Court Judge Albright to grant TracFone’s motion to transfer its case to the S.D.Fla. on convenience grounds under 28 U.S.C. § 1404(a). “We conclude that the district court clearly abused its discretion in denying transfer under § 1404(a).” Generally, Section 1404(a) provides substantial discretion to the district court to determine whether or not to transfer a case to a different venue. The statutory guidelines focus on “the convenience of parties and witnesses [and] the interest of justice”
In its opinion, the appellate panel walked through the parties/witnesses:
Effectively, there is no reason for this case to be in Waco, Texas. Still, the district court explained that the convenience here, in his discretion, did not rise to being “clearly more convenient” so as to demand transfer. On appeal, the Federal Circuit disagreed — finding the district court’s conclusion “clearly flawed.”
The court did not reach the issue of improper venue that was also raised.
Read it here: TracFone Decision April 2021
Olaf Sööt Design, LLC v. Daktronics, Inc. (Fed. Cir. 2021)
Sööt’s patent covers a winch system used for major theatre productions. A jury found Daktronics Vortek product infringed under the doctrine of equivalents and awarded $1 million in damages.
On appeal, the Federal Circuit reversed, holding that “Under the proper construction, the Vortek product does not infringe claim 27 either literally or under the doctrine of equivalents.”
The problem with this decision is that neither party appealed claim construction. Rather, the adjudged infringer appealed on infringement. Sööt petitioned for rehearing on the issue of waiver, but that quest has now also been denied.
Whether waiver prevents a challenge to claim construction on appeal sua sponte where a party’s waiver is based on the act that the original claim construction was (i) sponsored by the party during Markman, (ii) accepted by the district court, and applied by the jury in reaching its verdict; and (iii) not challenged on appeal by either party. If not, what conditions must exist to overcome such waiver on claim construction.
This case comes just in time to see my new 6 second video explainer on the two ways to argue patent infringement:
by Dennis Crouch
Amgen Inc. v. Sanofi-Aventis (Fed. Cir. 2021)
Patent claims typically cover an infinite number of potential infringing embodiments. This seemingly renders true full-scope enablement an impossible task. But the metaphysics are an illusion. If we want valid patents, then there has to be some “good enough” threshold for enablement.
The focus in Amgen is a particularly tricky type of claim: genus claim with functional limitations. Here, the claim is directed to an isolated monoclonal antibody defined by its ability to bind with the protein PCSK9 and consequently block PCSK9 from binding to LDL-C.
An isolated monoclonal antibody [that] binds to [one of the residues of PCSK9] and … blocks binding of PCSK9 to LDRL.
US8829165 (US8859741 is also at issue). In its decision, the Federal Circuit found the claims too broad in comparison to the disclosure. “The functional limitations here are broad, the disclosed examples and guidance are narrow.” Thus, although the jury found the claims enabled, the appellate majority affirmed the district court’s post-verdict JMOL (notwithstanding the verdict). This is a biopharma case, but the decision here can also be seen largely as an attack on functional claim limitations across the spectrum of patent technology fields.
Now, Amgen has filed a strong petition for en banc rehearing arguing that the majority has improperly created a new stiffer test for genus claims with functional limitations.
Question 1: Whether the panel’s new enablement test for genus claims with functional limitations, which has no basis in §112’s text, conflicts with Supreme Court decisions, including Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846); and Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1872), and decisions of this Court and its predecessor, including AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234 (Fed. Cir. 2003), and In re Angstadt, 537 F.2d 498
(C.C.P.A. 1976).
As mentioned above, the question of enablement was given to the jury. Here, however, the Federal Circuit held that enablement is a question of law. The distinction is likely dispositive in this type of close case where the jury sided with the patentee. By treating enablement as a question of law, the Federal Circuit was able to review the issues de novo without impinging upon the reexamination clause of the 7th Amendment. The second question challenges this approach:
Question 2: Whether enablement is a question of fact, as the Supreme Court has held, see Battin v. Taggert, 58 U.S. (17 How.) 74 (1854); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846), or a question of law, as this Court holds, Op.6.
The brief cites and discusses a really well researched and written article by Professors Karshtedt, Lemley, and Seymore titled The Death of the Genus Claim (forthcoming 2021). The article notes that today “it is no longer possible to have a valid genus claim. . . . [This] represents both bad law and bad policy.” Id. In its decision, the majority seemed to largely agree, but declined to expressly foreclose the possibility of genus claims.
This is a very important case for pharma and biotech patenting, but will also likely have an impact on the doctrine of enablement generally — especially its relationship to functional claim limitations since those are found in most patents. I expect a number of amicus briefs will be filed in the case over the next few weeks.
More to come.
by Dennis Crouch
Here is a rundown of what’s happening with US Supreme Court cases:
Decided: The court recently decided Google LLC v. Oracle America, Inc., holding that Google’s use of Oracle’s Java API was a fair use and therefore not copyright infringement. The court made no determination as to whether the API was actually copyrightable in the first place. The case does not expressly decide any patent law issues, but does provide some guidance as to how courts should approach mixed questions of law and fact (such as claim construction) and the right to a jury trial. The jury trial issue was interesting. Although a number of juries were given fair use questions pre-1791, the court held that our current version of fair use claims its ancestry from the equity rather than common law. Thus, no right to a jury trial on the question of fair use under the Seventh Amendment. “In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”
Argued: On March 1, 2021, the court heard oral arguments in US v. Arthrex regarding it is proper for the Secretary of Commerce to appoint the PTAB judges as inferior officers of the United States. Or, instead, are they principal officers of the United States that must be appointed by the US President and confirmed by the Senate (as we do with Article III judges). Nobody likes the Federal Circuit’s decision, and the question really is which way it should fall. (My guess is that these judges will be seen as inferior officers). I expect that part of the majority decision (whichever way it goes) will involve interpreting the role and involvement of the PTO Director in PTAB decisions. An inferior officer decision will interpret the statute as providing the PTO director with substantial authority; a principal officer decision will downplay the role of the PTO director. Decision should be released by Mid-June 2021.
Argument Pending: One final case is set to be argued this term: Minerva Surgical, Inc. v. Hologic, Inc., focusing on the issue of assignor estoppel. Can a prior owner of a patent right (such as an inventor) who transfers title to another (typically the employer) later assert in court that the patent is invalid? In this case, the employee started his own competing company and was sued for patent infringement. The lower court barred an invalidity defense. Now the question presented:
Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.
Oral arguments are set for April 21, 2021 with a decision by Mid-June 2021.
Other pending petitions:
Arthrex Issues: There are a large set of pending petitions awaiting the outcome of Arthrex. Some of these raise interesting additional issues, but most of them are pure follow-on cases : Iancu v. Luoma, et al., No. 20-74; Polaris Innovations Limited v. Kingston Technology Company, Inc., et al., No. 19-1459; Comcast Cable Communications, LLC v. Promptu Systems Corporation, et al., No. 20-92; Vilox Technologies, LLC v. Iancu, No. 20-271; Rovi Guides, Inc. v. Comcast Cable Communications, LLC, et al., No. 20-414; RPM International Inc., et al. v. Stuart, No. 20-314; Fredman Bros. Furniture Company, Inc. v. Bedgear, LLC, No. 20-408; Micron Technology, Inc. v. North Star Innovations, Inc., No. 20-679; Iancu v. Fall Line Patents, LLC, et al., No. 20-853; Immunex Corporation v. Sanofi-Aventis U.S. LLC, et al., No. 20-1285; Comcast Cable Communications, LLC v. Promptu Systems Corporation, No. 20-1220; Wi-LAN, Inc., et al. v. Hirshfeld, No. 20-1261
Patent Eligibility: Of the pending eligibility cases, I find American Axle and Ariosa the most interesting: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891; NetSoc, LLC v. Match Group, LLC, et al., No. 20-1412; NetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289; Ariosa Diagnostics, Inc., et al. v. Illumina, Inc., et al., No. 20-892.
Inventorship & Ownership: Ono Pharmaceutical Co., Ltd., et al. v. Dana-Farber Cancer Institute, Inc., No. 20-1258; In re Martillo, No. 20-1126 (suit to quiet title).
Obviousness: Amarin Pharma, Inc., et al. v. Hikma Pharmaceuticals USA Inc., et al., No. 20-1119 (secondary indicia); Sandoz Inc., et al. v. Immunex Corporation, et al., No. 20-1110 (obviousness type double patenting).
Willful Infringement: NetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289 (this case also raises an eligibility question).
Procedure: Ericsson Inc., et al. v. TCL Communication Technology Holdings Limited, et al., No. 20-1130 (is pre-trial denial of summary judgment appealable absent post-trial JMOL); Warsaw Orthopedic, Inc., et al. v. Rick C. Sasso, No. 20-1284 (abstaining in favor of state court jurisdiction); PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (preclusion under the Kessler doctrine); Tormasi v. Western Digital Corp., No. 20-1396 (does a convicted state inmate have standing to sue for patent infringement).
Retroactive Application of IPRs: Security People, Inc. v. Hirshfeld, No. 20-1380.
Attorney Fees: Roadie, Inc. v. Baggage Airline Guest Services, Inc., No. 20-1420; WPEM, LLC v. SOTI Inc., No. 20-1291.
Antitrust: Abbvie Inc v. FTC (standard for showing objectively baseless “sham litigation” exception to Noerr-Pennington immunity).
The (revised) chart above shows the percentage of issued utility patents whose claims include at least one reference to the term non-transitory.
The chart does not reflect any kind of innovation transformation. Rather, in a February 2010 memo, PTO Dir. Kappos announced that claims directed toward information stored in computer readable memory would be rejected as ineligible under Section 101.
The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim. Cf. Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
Note on the data:
In the vast majority of cases, only one of the independent claims uses the non-transitory language. 97% of the patents included at least one additional independent claim that does not use the language. Are those claims directed to code-stored-on-a-disk valuable and important?
Patently-O is sponsored by the MBHB firm.
by Dennis Crouch
Ericsson v. Samsung, Docket No. 21-1565 (Fed. Cir. 2021)
I wanted to briefly highlight this important pending Federal Circuit appeal involving parallel litigation in both the US and China. The Swedish company wants to litigate in the US, while the Korean company wants to litigate in China.
The Chinese court issued an anti-suit injunction order that would force Ericsson to stop litigating the case in the US (and globally anywhere but in Wuhan). The US court then issued an anti-interference order that bars Samsung from attempting to enforce the Chinese order against the US actions. Litigation between the parties is apparently also ongoing in the USITC, Netherlands, Germany, and Belgium.
Ericsson believes it has the stronger IP rights. There is a general indication that those rights will be more strongly protected and with a higher royalty rate if determined by a US court rather than a Chinese court. The following timeline from Samsung’s brief offers some historic perspective:
The basic setup here is as follows:
Samsung has now appealed the case to the Federal Circuit — arguing that the anti-antisuit injunction should be vacated or significantly narrowed. Here are briefs filed:
I am generally sympathetic to Ericsson in this case with the big caveat that Ericsson committed its patents to FRAND licensing on a global level. It does not seem reasonable (the R in FRAND) to expect that the result will be a separate lawsuit regarding the global license in each individual country.
Is the addition of a network computer implemented social network, with a novel and unconventional rating system, to a method of organizing human activity per se unpatentable as directed to an abstract idea?
This is the question presented in NetSoc v. Match
— Dennis Crouch (@patentlyo) April 12, 2021
by Dennis Crouch
The chart below shows a measure of patent grant rate for a group of 30,000 recently completed patent prosecution cases. I reported earlier on the grant-rate differential based upon entity size classification: Large>Small>Micro. For this chart, I also added-in a second variable of whether the patent application filings were submitted by a registered US patent attorney or agent. As you might expect, those non-represented cases showed a much lower grant rate.
The most surprising result: Overall in this sample, I found that over 99% of patent applicants were represented by a US patent practitioner. An important note here is that the focus of this study was non-provisional utility application filings. I expect that the rate of true pro-se applications would be much greater if we looked at provisional patent applications.
I collected data of “disposals” for a four-week period during early 2021. I coded my database to consider each published patent application and whether (1) a patent issued in the case; or (2) the application was abandoned during the four-week period. I also coded each case according to its entity size and also whether a US patent attorney/agent had participated in the case. To calculate the grant rate, I simply divided the number of issued patents by the total disposals (issued patents + abandoned applications). Note here that this calculation is a bit different from the disposals that the USPTO uses for its examiner counts.
Entity type (Micro, Small, Large) is available from USPTO documents for each published patent application. It was more difficult to determine whether a particular applicant was represented. About 90% of the cases include a listing of one or more registered practitioners representing the parties. That linkage is typically created when the applicant files a power of attorney. For about 8% of the cases, I was able to look through the correspondence addresses for law-firms, individual attorneys, and applicants known to employ patent attorneys in order to conclude that they were represented. The final 2% required a case-by-case inspection. For each of those, obtained a copy of the application data sheet (if any) to see whether an attorney/agent had signed. In cases without an application data sheet, I looked for some responsive filing to determine whether it had been so signed.
I limited the scope of cases to only those that had been published because the files unpublished abandoned applications are not available for inspection. This likely skews the data somewhat because Small & Micro entities are somewhat more likely to file non-publication requests. However, about 90% of applications are published and so the impact of unpublished cases should not be too great.
In this sample, 74% of cases were tied to large entities; 23% to small entities; and 3% to micro entities. There are some important caveats regarding these entity sizes. Generally, a small entity can still be quite large. The basic cutoff is 500 employees. In addition, patent application at issue cannot have been licensed (obligated) to a large entity.
§ 121.802 What size standards are applicable to reduced patent fees programs?
A concern eligible for reduced patent fees is one:
(a) Whose number of employees, including affiliates, does not exceed 500 persons; and
(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.
13 CFR § 121.802. In addition, non-for profits (including universities) count as small entities without any limit on size.
Micro entities are a creation of the America Invents Act of 2011 and allow for reduced fees for individuals without much patenting experience (<5 prior applications filed for themselves) and who are not unduly wealthy (<3x median US household income). Again though, universities can count as micro entities. In my sample, a number of the small and micro entities are universities with a higher grant rate than the average for their category.
Generally, the USPTO requires non-human legal entities to be represented by a patent practitioners. Of the 22,000+ large entity filings in my sample, I found only 4 that were not represented by a US patent attorney/agent. Those cases appeared to me to be ones where the filer should have claimed small or micro entity status.
If you are in-house patent attorney/agent prosecuting cases for your employer-client, do you still need to file a power of attorney? I’m finding that a good percentage of cases have a registered patent professional listed as the correspondence address within the Application Data Sheet, and that individual is being allowed by the USPTO to prosecute the case no behalf of its client. However, no power-of-attorney is on file with the USPTO.
My question above is focused on in-house counsel. I’ll note that I’m also finding that this practice is quite common even in cases where outside counsel represents the patent applicant (~10% of applications).
Examples:
(Note – these were just the first few cases that I randomly pulled-up).
In May 2020, the Supreme Court decided the trademark case of Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589 (2020) and expressly refused to extend preclusion doctrines in the trademark realm beyond their traditional bounds set by the doctrines of issue and claim preclusion.
One month later, the Federal Circuit decided In re PersonalWeb Techs. LLC, 2020 WL 3261168 (Fed. Cir. June 17, 2020) and happily extended a quirky patent law preclusion doctrine beyond those traditional bounds. See Kessler v. Eldred, 206 U.S. 285 (1907) (Kessler doctrine). In its decision, the Federal Circuit explained its expansion of Kessler “fills the gap left by claim and issue preclusion.” see Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014).
Now, PersonalWeb has petitioned the Supreme Court for writ of ceritorari — pointing largely to Lucky Brands for its foundation. Questions Presented:
This Court has repeatedly held that, absent guidance from Congress, courts should not create special procedural rules for patent cases or devise novel preclusion doctrines that stray beyond the traditional bounds of claim and issue preclusion. Nonetheless, over the past seven years, the Federal Circuit has created and then repeatedly expanded a special, patent-specific preclusion doctrine that it attributes to this Court’s 114-year-old decision in Kessler v. Eldred, 206 U.S. 285 (1907)—a case this Court has not cited for almost 70 years. The Federal Circuit now routinely applies its so-called “Kessler doctrine” to reject suits like this one that would survive under ordinary preclusion principles.
The questions presented are:
1. Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that may apply even when claim and issue preclusion do not.
2. Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.
The petition does two things here: (1) calls into question whether Kessler still applies and (2) even if Kessler itself is still good law, explains how the Federal Circuit has improperly extended the doctrine in cases such as PersonalWeb and Brain Life.
Read the petition: PersonalWeb petition
Read my prior post below: