Senators Tillis and Cotton have suggested that the PTO try a sequenced approach to examining patents. First consider whether a patent application complies with Sections 102, 103, and 112; then consider eligibility.
by Dennis Crouch
One reason that patents remain a popular government program is that the system does not require any collection of taxes from the populace. Rather, the government gives away property rights to individuals (or their corporate assignees) who prove themselves worthy by disclosing a new and useful invention and who pay fees to run the system. The patent-give-away is different than the land-giveaway associated with American Westward Expansion (often known as “Land Patents”). Although the American West (and Midwest) is vast, it eventually proved finite. And, the space was already occupied by humans who were violently displaced.
Despite the oft quoted statements of Commissioner Duell, the patent space is not showing any signs of being limited in the conceivable future. And, because a patent must be directed to a new invention, the rights only cover fields not previously occupied at the time of patent filing.
As a non-finite resource, we might also think of granting patents as akin to printing money — something that we know can create macroeconomic challenges. But with patents, the government is not printing a commodity like money. What we’re printing is an analogue of private property rights in the form of a right to exclude. Each is different and unique, like a plot of land.
Agree or Disagree: The US Government uses patents to pay for innovation?
(Attribution: question derived from @brianlfrye's work).
— Dennis Crouch (@patentlyo) March 22, 2021
The right to exclude brings us back to the land patent analogy. Here, is where those who complain about invention patents have some meat to chew on. While land rights are limited to the physical bounds of space, a patent right pervades all corners of the country with a silent enforceable covenant to limit actions of the rest-of-the-people. Even if I own the raw materials and embody the skill to work those materials, I cannot legally combine those in ways that fit the definition of another’s exclusive patent rights (without license). This exclusivity is tempered by the 20-year timeline (unlike land patents that last throughout time), which many of us feel is enough to justify the exclusive rights in exchange for the social benefits of the invention and disclosure. Of course, in recent years patents have become more akin to paper dragons that may look dangerous but are regularly defanged by the Courts and the PTAB. In the end, these analogies all fail, but perhaps they help take us a step further in understanding.
Imagine a world where patent rights last forever rather than being limited to 20 years. What if we extended them to inventor's life+70 years?
— Dennis Crouch (@patentlyo) March 23, 2021
Tracing the Quote: Everything that can be Invented has been Invented
by Dennis Crouch
The USPTO has released a new Request for Comments about changing the qualification rules to sit for the Patent Bar Exam (“Admission to the Examination for Registration to Practice in Patent Cases”) that are set forth in the General Requirements Bulletin (GRB).
To be clear, the proposals in this RFC are quite modest and narrow:
[Federal Register Notice: 2021-05940]. Comments should be submitted via www.regulations.gov (PTO-P-2021-0005) by May 22, 2021.
I recently spoke with the USPTO head Drew Hirshfeld who sees the proposals here as primarily making the system more efficient and less cumbersome. About 1/3 of recent applicants to register fall under Category B, and handling the paperwork for those applications it is a time intensive process for both applicants and OED.
Dir. Hirshfeld noted that bigger changes may come later, such as addressing design patents and computer science; and considering the role that the registration requirements may play with regard to diversity. Eliminating the requirements altogether is really not even on the radar.
Bigger policy changes are unlikely before a new director is appointed by President Biden.
There has been a good amount of discussion regarding the artificial monopoly created by the GRB, and whether the requirements actually further American innovation. Back in December 2020, Senators Tillis, Coons, and Hirono sent a letter to USPTO Director Andrei Iancu seeking information about how the Office sets is criteria for who gets to become a patent attorney. Dir. Iancu responded just before leaving office in January 2021.
The proposed changes here are effectively identical to those proposed by Dir. Iancu in his Jan 19, 2021 letter.
My view: The proposals will incrementally improve the system, but really only at a minor level.
Should we eliminate the requirement that patent attorneys must have an engineering/science degree (but keep the exam):
— Dennis Crouch (@patentlyo) March 22, 2021
Who gets to become a patent attorney?: You may have been hoping that I would answer the question posed in the article title. It turns out that the answer depends greatly on your country of permanent residence. Some require a background in science/engineering, others require a background in law, only a few require both. In the US, a patent attorney is both a lawyers and trained scientist/engineer. However we also have patent law professionals known as patent agents who are not attorneys.
I won’t spell out the particular rules here because – as my post notes – they are in flux. But, I will direct you to the USPTO’s page titled Becoming a Patent Practitioner.
The pending Supreme Court case of Warsaw v. Sasso offers an interesting question about whether there is actually some middle ground of patent-related cases subject to dual Federal and State jurisdiction.
by Dennis Crouch
There are two different statutes regarding Federal Court exclusive jurisdiction over patent cases. One giving US district courts exclusive original jurisdiction over US patent cases and the second giving the Federal Circuit exclusive appellate jurisdiction over appeals in patent cases. 28 U.S.C. § 1338(a) provides Federal district courts with “original jurisdiction of any civil action arising under any Act of Congress relating to patents.” The provision goes on to make clear state courts do not have jurisdiction: “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents.” Id. The second provision relates to appellate courts: The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction over final decisions from US district courts “in any civil action arising under . . . any Act of Congress relating to patents” or where a “compulsory counterclaim” has been asserted “arising under, any Act of Congress relating to patents.” 28 U.S.C. § 1295(a).
Lots of work over the years has gone into determining whether a particular cause of action meets the arising under requirement of these provisions. See, for example, Gunn v. Minton, 568 U.S. 251 (2013) (patent litigation attorney malpractice lawsuit does not arise under the Patent Act). You’ll note here that the term “arising under” comes from the U.S. Constitution:
The judicial power [of US Courts] shall extend to all cases, in law and equity, arising under this Constitution, the laws of the United States …
U.S. Const. Art. III, Section 2. The Supreme Court has repeatedly found this clause to also limit jurisdiction — cases that do fit one of the enumerated frames cannot be heard by US Courts. An example is a breach of contract dispute between two parties from the same U.S. state. That case will typically arise under state law and thus not be the subject of a Federal lawsuit — barred by the US Constitution. Some contract cases to wind their way into federal courts — typically under a principle of citizenship diversity or supplemental jurisdiction.
The US Constitution link is important. The statute abuts and parallels the Constitution, and that means statutory interpretation becomes constitutional interpretation. In the recent case of Gunn v. Minton, for instance, the court based its decision on general concepts of federalism and states rights. These are principles that regularly drive US Constitutional decisions, but rarely control statutory interpretation.
The most recent dispute on point is Warsaw v. Sasso (Supreme Court 2021). The case adds an important layer: the doctrine of abstention.
Sasso licensed his patents to Warsaw (Medtronic). The parties had a dispute over which products were covered under the license, and Sasso sued in Indiana state court for breach of contract (seeking money damages). The outcome of the contract claim (apparently) largely depends upon whether the products are “covered by a valid claim” of one of Sasso’s patents. So, there probably should have been some detailed patent analysis in the case.
Medtronic wanted the case in Federal Court where it could use more sophisticated tactics to invalidate the patent or avoid claim scope. Medtronic first attempted to remove the case to Federal Court. However, the Federal Judge remanded it back down. Sasso v. Warsaw Orthopedic, Inc., No. 3:13-cv-1031 (N.D. Ind. Apr. 2, 2014). Then, Medtronic filed for reexamination and a number of claims were cancelled. (Note here, that at this time Medtronic was owner of the patents and pursued ex parte reexamination as a “friendly” way to limit claim scope.) The state court apparently refused to consider these validity issues in the contract case.
Finally, Medtronic filed a declaratory judgment action in Federal Court — asking for a declaration of “No Breach … Because No Valid Claim of the ‘313 or ‘046 Patent Covers the Medtronic Products for Which Dr. Sasso Seeks Royalties.” The district court refused to hear the case — but rather dismissed the case on grounds of abstention.
Discretion under the DJ Act: In particular, the declaratory judgment act offers discretionary jurisdiction: “any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration.” 28 U.S.C. § 2201. On appeal, the Federal Circuit affirmed that the court acted appropriately. See Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995) (“substantial discretion in deciding whether to declare the rights of litigants”).
To be clear, in its decision, the Federal Circuit found that the DJ action filed by Medtronic did arise under the patent laws, but that it was still appropriate to dismiss the case in favor of the state court action. “[T]his declaratory action is within the district court’s jurisdictional authority, and we have jurisdiction to receive this appeal and to determine whether the district court abused its discretion in abstaining from exercise of declaratory jurisdiction.”
The outcome though creates a conundrum: If the Federal Courts have exclusive jurisdiction over patent cases, how can a court determine that this is a patent case but still remand it for state court determination?
Now come the petition for writ of certiorari on the following question:
Whether a federal court with exclusive jurisdiction over a claim may abstain in favor of a state court with no jurisdiction over that claim.
[Warsaw Petition for Writ of Certiorari]. Although this appears to be a case of first impression, Warsaw grounds its petition in the language of prior abstention cases. In particular, a key focus in those cases is whether the dispute “can better be settled in the proceeding pending in the state court.” Wilton. Here, Warsaw argues, the state is actually precluded from deciding the key issues.
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Middle Ground Overlap: The statutes are worded in a way creates bright-line rules: Federal courts have exclusive authority over cases arising under the patent laws; Federal courts have no authority over patent-related disputes that don’t meet that threshold (absent other justification for Fed. Ct. Jurisdiction). The appellate decision in this case though appears to present a middle ground — cases where dual Federal/State authority is appropriate. Although this result is perhaps surprising, there is nothing Constitutionally troubling about dual jurisdiction. At the same time, the answer will almost necessarily come from analyzing and interpreting the Constitution.
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Note: Justice Barrett may end up recusing herself. Her husband at one time represented Warsaw in the case .
The following short statement was written by Prof. Bernard Chao (Denver) and then joined by 20+ additional professors whose names are listed below. Chao was a patent attorney and patent litigator for 20 years before becoming a professor and I have long valued his insight. You’ll note that I also signed below – DC.
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Judge Alan Albright’s court in the Western District of Texas is rapidly becoming the latest hot spot for patent litigation. While only a total of two patent cases were filed in 2016 and 2017 in Judge Albright’s Waco federal courthouse, the number of patent filings rose to seven hundred and ninety-three (793) in 2020. See J. Jonas Anderson & Paul R. Gugliuzza, Federal Judge Seeks Patent Cases, (forthcoming Duke L. J 2021). Professors Anderson and Gugliuzza provide a thorough explanation (and critique) of this sudden ascent. I have a smaller, but nonetheless important, point to make. If the Western District of Texas is going to hear some of patent law’s most important cases, it should not do so in secret. Unfortunately, that appears to have just what happened in one the highest dollar value patent trials in recent history.
The patent world has been abuzz about the $2.18 billion verdict that the Waco jury handed down on March 2, 2021 in VLSI Technology v. Intel. The public debate in patent law has often focused on whether courts and juries are getting patent damages right. Looking at relevant filings on damages provides critical information for this important discussion. In high stakes cases, parties typically file summary judgment motions on damages and Daubert motions attempting to exclude certain theories. These motions often attach expert reports and deposition testimony as exhibits. Together these documents illustrate how patent doctrine shapes damage awards. For example, filings often explain how the parties seek to apportion damages between the value of the infringing features and the product as a whole. This is not an easy task and parties have taken many approaches to apportionment with varying levels of success.
However, these documents cannot be retrieved from the VLSI Technology v. Intel docket. To be clear, sealing is appropriate in some instances. Companies should be able to keep their confidential technical and financial information under wraps. But at least as of March 15, 2021, the following docket entries were wholly unavailable (i.e. not even redacted copies were available).
| Docket No. | Date | Title (some abbreviated) |
| 252 | 10/8/2020 | DEFENDANT INTEL CORPORATIONS SEALED MOTION FOR SUMMARY JUDGMENT OF NO PRE-SUIT INDIRECT INFRINGEMENT OR WILLFULNESS AND OF NO POSTSUITWILLFULNESS OR ENHANCED DAMAGES |
| 258 | 10/08/2020 | DEFENDANT INTEL CORPORATION’S SEALED MOTION FOR SUMMARY JUDGMENT OF NO PRE-COMPLAINT DAMAGES UNDER 35 U.S.C. § 287. |
| 260 | 10/08/2020 | DEFENDANT INTEL CORPORATION’S SEALED MOTION FOR SUMMARY JUDGMENT OF NO INFRINGEMENT AND/OR NO DAMAGES FOR CLAIMS 1, 2, 4, 17, 19, AND 20 OF U.S. PATENT NO. 7,793,025. |
| 276 | 10/08/2020 | VLSI’S DAUBERT SEALED MOTIONS TO EXCLUDE DAMAGES-RELATED TESTIMONY OF DEFENDANT INTEL’S EXPERTS |
| 431 | 2/18/2021 | Sealed Document filed: Defendant’s Response to Plaintiff’s Daubert Motions to EXCLUDE DAMAGES-RELATED TESTIMONY OF INTELS EXPERTS |
| 443 | 2/18/2021 | Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO PRE-COMPLAINT DAMAGES UNDER 35 U.S.C. §§ 287 258 |
| 445 | 2/18/2021 | Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO INFRINGEMENT AND/OR NO DAMAGES FOR CLAIMS 1, 2, 4, 17, 19, AND 20 OF U.S. PATENT NO. 7,793,025 260 |
| 446 | 2/18/2021 | Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO PRE-SUIT INDIRECT INFRINGEMENT OR WILLFULNESS AND OF NO POST-SUIT WILLFULNESS OR ENHANCED DAMAGES 252 |
Two short orders granted motions to seal these filings. However, the sealed filings appear to go far beyond damages. The first order (dated October 8, 2020) granted roughly thirty motions (Docket Entries 214-244) and the second order (dated February 18, 2021) granted even more (Docket Entries 287-89, 293-319, 321-345, 374-381, 398, 404, 405, 410, 416. 418, 420, 424, 425). Many of the sealed motions are motions in limine that do not have a descriptive title. They are simply numbered (e.g. Motion In Limine #3). So, there is no way to even know what subjects they cover.
Judge Albright did give a small nod to transparency in his February 18, 2021 order which required “[t]he filing party shall file a publicly available, redacted version of any motion or pleading filed under seal within seven days.” Unfortunately, the redacted versions do not appear to have been filed. A few days earlier, Judge Albright also issued a February 12, 2021, standing order that requires parties to do the same in all cases pending in his court.
But these orders are inadequate in several ways. First, they explicitly permit parties to file purportedly confidential information under seal without a motion. But the parties have no incentive to be transparent. It is the court’s job to protect the public interest, and this order abdicates that duty. Second, there also appears to be no safeguard for parties that redact too much information in their filings, a problem we have seen before. See In re Violation of Rule 28(D) (Fed Cir. 2011)(sanctions for redacting information that was not confidential including case citations). Third, the order does not require parties to redact exhibits. But some of the most critical information like deposition testimony and expert reports are exhibits. Finally, the order is not retroactive allowing most of the VLSI v. Intel case to remain in the dark.
This is not the first time that patent litigation has suffered from transparency problems. Other district courts have allowed too many documents to be sealed in previous high stakes cases like Broadcom v. Qualcomm (S.D. CA) and Monsanto v. Dupont (E.D. MO). See, Bernard Chao, Not so Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent L.J. 6 & Bernard Chao & Derigan Silver, A Case Study in Patent Litigation Transparency, 2014 Journal of Dispute Resolution 83.
While these stories appear to paint a bleak picture for transparency in patent litigation, some courts are making an effort to keep their dockets accessible to the public. There have been notable decisions to ensure that filings are accessible. For example, in 2016 the Electronic Fronter Foundation successfully intervened and obtained an order from the E.D. of Texas to unseal records in a patent case, Blue Spike LLC, v Audible Magic Corp. Earlier this month, the Federal Circuit, affirmed a lower decision rejecting attempts to seal specific filings in another patent dispute. See DePuy Synthes Products Inc. v. Veterinary Orthopedic Implants (Fed. Cir. Mar. 12 2021).
Moreover, individual court rules are now requiring greater transparency. The Federal Circuit’s latest rules clearly seek to maximize public disclosure. In each filing, Rule 25.1(d) only allows parties to mark “up to fifteen (15) unique words (including numbers)” as confidential. A party seeking to exceed that limit must file a motion. As Silicon Valley’s home venue, the Northern District of California entertains numerous patent cases. The court’s local rules say that material may only be sealed when a request “establishes that the the document, or portions thereof, are privileged, protectable as a trade secret or otherwise entitled to protection under the law.” Moreover, the request must “must be narrowly tailored to seek sealing only of sealable material.” Ironically, even Texas state courts, which obviously do not hear patent cases, treat requests to seal far more seriously than the W.D. of Texas. Specifically, Texas Rule of Civil Procedure 76a states that court records are “presumed to be open to the general public”, and only allows records to be sealed upon a showing that “a specific, serious and substantial interest which clearly outweighs” various interests in openness.
In short, the Western District of Texas should join these other courts and take its duty to ensure transparency seriously. As the Fifth Circuit recently put it , “[w]hen it comes to protecting the right of access, the judge is the public interest’s principal champion.” Binh Hoa Le v. Exeter Finance Corp. (5th Cir. Mar. 5, 2021). Accordingly, we make a few basic recommendations. First, parties should not be able to file material under seal without judicial scrutiny. They should be required to file motions and justify their requests. Of course, a court also cannot rubber stamp these requests. If resources are a problem, the court can appoint a special master in larger cases. Second, parties should have to redact exhibits too. There can be valuable non-confidential information in those exhibits. Finally, a quick aside, even though judges bear the primary responsibility for making their dockets transparent, that does not mean the parties should not show more restraint. To the extent that either side is a repeat player, and thinks the patent system needs reform, they should be careful not to over seal. Their filings might end up being important contributions to the public debate.
Signatories (more…)
The first step in a non-discriminatory US patent system is to make sure it is available to all Americans without legal limit. The second step, and the one with real potential to drive an innovation economy, is to takes steps to ensure that the system is inspiring to all Americans. The trick is how to get there without causing undue damage. One underlying issue is also a lack of information about what’s really happening.
A bipartisan group of Senators and Representatives have re-introduced the IDEA Act. (Inventor Diversity for Economic Advancement (IDEA) Act of 2021). S.632; H.R.1723. Right now, the USPTO does not ask inventors their for any demographic information other than contact information and country of residence. The legislation would require the PTO director to collect inventor-level information on “gender, race, military or veteran status, and any other demographic category that the Director determines appropriate.” Under the provision, inventors would not be required to submit the information, and any submissions would be kept “confidential and separate from the application.” However, disaggregated information could be available for data analysis and for an annual report from the PTO.
The proposals are now before the respective judiciary committees. Sen. Leahy is the chair of the Subcommittee on Intellectual Property, and Sen. Tillis is the ranking member. In the House, Intellectual Property does not have its own committee this session, but rather is part of the Subcommittee on Courts, Intellectual Property, and the Internet chaired by Rep. Johnson. Rep. Issa is the ranking member.
by Dennis Crouch
The vast majority of US non-provisional patent applications (utility) claim some form of priority relationship back to a previously filed patent document.
The chart below shows the percentage of applications that assert these various forms of priority claims. Note that continuation applications have continued to rise while provisional applications show a plateau. The 35 % for US Provisionals is quite high considering that about half of patent applications come from foreign applicants who typically do not file provisional applications. In these charts I didn’t include foreign national or regional priority claims because I didn’t compile that data yet.
Notes. (1) the population here is limited to only published patent applications, and the data-point is the priority claim as of its publication date. (2) You can see the data here: Link to Google Sheets.
CyWee Group v. Google (Fed. Cir. 2021)
Google won its IPR challenge against CyWee’s U.S. Patent Nos. 8,441,438 (claims 1 & 3-5) and 8,552,978 (claims 10 & 12). On appeal, the Federal Circuit has affirmed with a short opinion by Chief Judge Prost focusing on three discrete issues:
Real Party in Interest: The patentee argued that Google did not disclose all real parties in interest as required by statute 35 U.S.C. § 312(a)(2). On appeal, the Federal Circuit held that institution stage real-party-in-interest questions are institution related and thus is not reviewable under the no-appeal provision of 35 U.S.C. § 314(d). This issue was previously decided in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). One difference here from ESIP is that the challenge was not raised to the institution decision itself, but rather as part of a post-institution motion to terminate based upon newly discovered evidence. On appeal though, the Federal Circuit found the new motion equivalent to a request to reconsider the institution. The court also held that the Board’s refusal to allow ESIP additional discovery was “similarly unreviewable” because the discovery ruling is tightly associated with the institution decision.
The court did not delve into the RPI issue, but CyWee was complaining about a coordinated effort by defendants in the district court litigation (including Samsung and Google) to ensure that Backmann was only seen by the Board and not also by Judge Bryson who was sitting by designation in the district court.
Approximately one month after Google filed its IPR petitions, Samsung dropped Bachmann from its invalidity contentions in the Samsung Litigation. This is consistent with what appears to be a coordinated effort between Samsung and
Google to block consideration of Bachman in the Samsung Litigation before Judge Bryson. Due to Bachmann’s shortcomings, neither wanted a summary judgement decision issuing from the district court, as CyWee’s lawsuit against Samsung was speeding toward trial and would outpace the Google IPRs. Dropping Bachmann from the Samsung Litigation assured that it could be addressed solely by the Board. This plan became more evident in January 2019 when, after the Google IPRs had been filed, Samsung moved to join the Google IPRs, thereby resurrecting its ability to rely on the Bachmann.
The PTAB concluded that this timing alone was not sufficient to find Samsung to be a Real Party in Interest and likewise found no RPI even though Samsung was being accused of infringement based upon its use of Google’s Android product. In its decision, the PTAB noted that the fact that Patent Owner had sued each company separately, in a separate lawsuit, also provided evidence that they are not real parties in interest. (I’d call this final conclusion quite tenuous).
Appointments Violation: The patentee raised an appointments clause issue, that was rejected under Arthrex (Fed. Cir. 2019). In particular, the Federal Circuit’s Arthrex decision purported to cure all appointments clause issues for AIA Trials that had not yet reached a final written decision. It is possible that this issue will get new legs once the Supreme Court issues its opinion in the case.
Obviousness: On the merits of the obviousness case, the patentee argued that the key prior art reference was not “analogous art” and therefore could not be used for obviousness. There are traditionally two ways to find a reference “analogous”:
The CyWee patents cover a “3D Pointing Device” that uses a particular comparison algorithm for improved error compensation. The prior art (Bachmann, U.S. Patent No. 7,089,148), was created by the Navy and is directed to motion tracking of bodies. Thus, the PTAB found that it was not from the “same field or endeavor.”
The PTAB did, however, conclude that Bachmann was “reasonably pertinent to the particular problem with which the inventor is involved.” In particular, Bachman discloses a comparison algorithm for improved error compensation associated with the movements of a 3D pointing device. Note here, if you look at the image above, you don’t see any “pointing”, but the Board broadly defined the term to include a device to “control actions on a display.” Thus, we have a reference addressing the particular problem addressed in CyWee’s patents — and thus it is analogous. On appeal, the Federal Circuit affirmed on substantial evidence. (Analogous arts determination is a question of fact).
CyWee argued that there were too many differences between its invention and Bachmann to allow the reference to be considered analogous. The Federal Circuit rejected that argument — holding that “a reference can be analogous art with respect to a patent even if there are significant differences between the two references.” Quoting Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353 (Fed. Cir. 2020).
Note. Jay Kesan handled the appeal for the patentee; Matthew A. Smith for Google.
Note 2. The diagram looks a lot like a Wii. CyWee’s patents claim priority back to 2010 (Wii was released in 2006). [UPDATE – I had a big typo with a 2001 priority date. That would make a bit difference. Sorry.]
Patent Law Mathematicians:
What assumptions would you need to make in order to be able to describe a mathematical limit of the number of embodiments encompassed by the following claim:
A device comprising: Element "A" coupled to Element "B". pic.twitter.com/wBUoxIK8Ue
— Dennis Crouch (@patentlyo) March 15, 2021
by Dennis Crouch
I wrote earlier about the Federal Circuit’s TracFone decision, calling-out W.D. Texas Judge Albright for his months long delay in deciding defendant’s motions to transfer/dismiss for improper/inconvenient venue. In its decision, the appellate court repeated a prior conclusion that Judge Albright’s approach represented “egregious delay and blatant disregard for precedent.”
The following day (March 11), Judge Albright complied with the order and issued a 17 page opinion denying TracFone’s motion to dismiss or transfer.
Proper Venue: Congress created a particular venue statute for patent infringement lawsuits (28 USC 1400(b)) that is substantially narrower than the general venue statute used in Federal Courts. (28 USC 1391). For an out-of-state-defendant (such as TracFone), venue in W.D. Texas will be proper if the defendant “has a regular and established place of business” within the district and has also “committed acts of infringement” within the district.
Precis Group, LLC v. TracFone Wireless, Inc., Docket No. 6:20-cv-00303 (W.D. Tex. Filed Apr 21, 2020)
Regularly established place of business: In this case, the plaintiff Precis alleged that TracFone operates a store in San Antonio using its d/b/a name Total Wireless. The address is 1825 SW Military Dr., San Antonio, TX 78221. The photo below comes from a Google search and is dated May 2019. Google tells me that the store is now closed, but we don’t know the date when it closed. [COULD someone drive by and snap a photo for me?].
In its briefing, TracFone (1) denied that this was its store — but rather was “an independently owned retailer of TracFone products” and (2) alleged that the store was already out of business “well before this action was filed” in April 2020. To support its motion to dismiss, TracFone submitted an affidavit from a TracFone employee who stated that the referenced store above is a Click Mobile store and that “TracFone has no ownership or other interest in Click Mobile and no relationship with it other than its rights to sell TracFone products and services.” In a later filing, the defendant did admit that the “store exclusively sold Total Wireless products and accordingly used that mark.” From the pictures and the admission of exclusive dealing, it sure looks like the relationship must have gone a bit deeper than simply “rights to sell TracFone products.”
In its responsive briefing, Precis provided images from TracFone’s TotalWireless website showing that this was an exclusive Total Wireless store. Those have since been removed from the website.
Note here that Precis did not provide its own affidavits. And, the normal rule of a venue motion to dismiss/transfer is that uncontroverted plausible allegations in plaintiff’s complaint must be taken as true. However, the court should take into account evidence presented by the defense (including affidavits). Still, any conflicts between affidavits should be resolved in the plaintiff’s favor.
In my mind, there are two big issues (1) is the store attributable to TracFone? and (2) what about the timing issue — what result if it closed before the complaint was filed?
In his order, Judge Albright sided with the patentee — holding that allegations and evidence suggests enough link to conclude that the store a TracFone “place of business.” The court writes:
While TracFone disputes its ownership of the property, Precis alleges that the store belongs to TracFone’s corporation, doing business under the assumed business name “Total Wireless.” Additionally, Total Wireless’s terms and conditions agreement states that: “Total Wireless is a brand of TracFone Wireless, Inc. d/b/a Total Wireless.” Total Wireless holds itself out as a being owned by and essentially one and the same as TracFone. Furthermore, TracFone is the owner of the Total Wireless trademark.
[Precis_Group_LLC_v._Tracfone__53]. Judge Albright did not address the TracFone affidavit indicating only a distant relationship with the actual store owner. Although I believe that it could be distinguished based the seeming exclusive dealing and trademark linkage, the court should have walked through the process.
The Store Closing: The bigger failing of Judge Albright’s opinion is that he did not address the issue of the store closing prior to the complaint being filed. Venue needs to be proper as of the filing of the complaint, and the defendant submitted uncontroverted evidence that the store had already closed. Note here that there is some disagreement among the lower courts about whether timing for the place-of-business should focus on infringement or filing of the lawsuit. In Raytheon Co. v. Cray, Inc., 258 F. Supp. 3d 781 (E.D. Tex. 2017), the court held that the appropriate timing was at the time of infringement. That decision was later vacated by the Federal Circuit, although the court did not address the timing issue. In Pers. Audio, LLC v. Google, Inc., 280 F. Supp. 3d 922 (E.D. Tex. 2017), the court held that the place of business must be in existence as of the filing of the complaint. In any event, the Judge Albright did not even address the issue in his opinion. I would recommend to Judge Albright that he draft up a new opinion tonight that also addresses the store-closing issue. Otherwise we’ll likely see a quick reversal from the Federal Circuit.
The court also denied the motion to transfer for on grounds of inconvenient forum (or that there is another more convenient forum) under 28 USC 1404.
The Court finds that the ease of access to relevant sources of proof and the court congestion factors weigh slightly in favor of transfer, the cost of attendance of willing witnesses weighs against transfer, and all other factors are neutral. The Court notes that the convenience of witnesses is the single most important factor in the transfer analysis and that the court congestion factor is the most speculative and cannot outweigh the other factors. As such, the Court finds that TracFone has not met its significant burden to demonstrate that the Southern District of Florida is “clearly more convenient.”
Id.
In re Stanford University (Fed. Cir. 2021).
This case appears to potential be a good test case on patent eligibility for the U.S. Supreme Court. The Federal Circuit here held that Stanford’s bioinformatics innovation – “a method for resolving haplotype phase” – lacks eligibility under Section 101 because it is directed to an abstract idea under Alice Corp.
Gene inheritance is a super interesting biologic process. Each person inherits a set of chromosomes from each parent. At times, it is helpful to understand which genes came from which parent — especially if tracing disease patterns or researching various diseases. The problem though is that the chromosomes are not labelled “dad” & “mom” (except potentially the sex linked one).
The general purpose of the invention is to provide a better method for figuring out which genes are associated with which parent. The approach is to first obtain allele data from the subject as well as three other family members (two parents and a sibling). The claims then use a statistical inference process (Hidden Markov Model) to identify the likely inheritance state. The claims define key parameters of the model (the hidden states). In addition to HMM, the claims also require a series of error-reduction techniques that use population data as well as consideration of sequencing errors. The prior art includes other methods of resolving haplotype phase, and other would-be non-infringing methods have also been developed since then. [Read Claim 1]. Apparently, the prior-art method had ~80% accuracy while the invention here boosts accuracy to ~98% (for heterozygous positions).
Prosecution History: Stanford researchers filed a couple of provisional applications back in 2011 followed in 2012 by the non-provisional application at issue here (App. No. 13/445,925). After two rejections, an RCE, and several claim amendments, the examiner eventually issued a notice of allowance in 2016. Stanford paid the issue fee and the patent issued on September 13, 2016. The next day (on September 14, 2016), the USPTO withdrew the patent from issue on order of the Tech Center 1600 director, and the subsequently issued a new rejection focusing on patent eligibility. That rejection was affirmed by the PTAB and how has been affirmed by the Federal Circuit.
Patenting Math: On appeal, the Federal Circuit found the claims directed to an abstract mathematical calculation. In its analysis, the court broke-down the claim into a three step process:
This is an information processing claim, but it does not “DO” anything with the information. The court explains “claim 1 recites no concrete application for the haplotype phase beyond storing it and providing it upon request.” Now, some data processing approaches have been patentable, but those have focused on improving computer functionality itself. The distinguishing point here is that Stanford’s innovation simply provides a better data output.
With Alice Step 2, the court found no inventive concept beyond the abstract idea. Rather, all of the innovative features were basically combining various mathematical algorithms to do a better job of processing data — but we already said that is an abstract idea.
That a specific or different combination of mathematical steps yields a greater number of haplotype predictions than previously achievable under the prior art is not enough to transform claim 1 into a patent eligible application.
Slip Op.
Some of the dependent claims include a “diagnosis” or providing a “drug treatment.” However, the court found that the generalized element was equivalent to saying “apply it.” In other words, a specific application is required before a mathematical algorithm such as this will be deemed patent eligible.
Ono Pharmaceutical Co., Ltd., v. Dana-Farber Cancer Institute, Inc. (Supreme Court 2021)
The Federals Circuit issued an important decision in this case back in 2020 that, in my view, further lowered the bar for joint inventorship. Traditionally, we have thought that a joint inventor must do more than simply tell the other inventors about the current state-of-the-art. In Ono, some of the inventive contribution made by Dana Farber scientists was published and made part of the prior art before the complete conception of the invention as claimed. On appeal though, the Federal Circuit found those contributions could still count toward joint inventorship:
[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.
Fed. Cir. Opinion. The end result in the case was that Dana Farber became co-owner of valuable patents to which Ono had previously claimed sole rights.
Now, Ono has petitioned the U.S. Supreme Court with the following question:
[35 USC 116] provides that “when an invention is made by two or more persons jointly, they shall apply for a patent jointly.” A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256.
The Federal Circuit has held that “to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).
In this case, in conflict with this Court’s guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception. App. 13a.
The question presented is:
Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception.
[Ono Petition for Writ of Certiorari].
Note here that the 4th Circuit decision referenced here is an Levin v. Septodont Inc., 34 Fed. Appx. 65 (4th Cir. 2002)(unpublished). In that case, Levin sued Septodent for breach of contract associated with payments on a patent sale agreement. The district court, found no breach because the patent was invalid for failing to properly list Donald Kilday as an inventor. In its decision the 4th Circuit explained the “significant contribution” requirement of a joint inventor should focus on patentability — “asking whether the contribution helped to make the invention patentable.” Note that in that case, 4th Circuit was purporting to follow the Federal Circuit’s decision in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Pannu remains good law and was extensively cited and quoted in the Federal Circuit’s Ono opinion.
The petition cites one 19th century case – O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853). In its decision, the Supreme Court wrote that Morse should still be considered the inventor, even though he had received information and advice from various “men of science.”
Neither can the inquires he made, or the information or advice he received, from men of science in the course of his researches, impair his right to the character of an inventor. No invention can possibly be made, consisting of a combination of different elements of power, without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other. And it can make no difference, in this respect, whether he derives his information from books, or from conversation with men skilled in the science. If it were otherwise, no patent, in which a combination of different elements is used, could ever be obtained. For no man ever made such an invention without having first obtained this information, unless it was discovered by some fortunate accident. And it is evident that such an invention as the Electro-Magnetic Telegraph could never have been brought into action without it. For a very high degree of scientific knowledge and the nicest skill in the mechanic arts are combined in it, and were both necessary to bring it into successful operation. And the fact that Morse sought and obtained the necessary information and counsel from the best sources, and acted upon it, neither impairs his rights as an inventor, nor detracts from his merits.
O’Reilly v. Morse, 56 U.S. 62, 111 (1853)
About 10% of the patent applicants file their patent application as an “obligated assignee” rather than the actual “assignee.” Those 10% have apparently not yet received a assignment of rights from the human inventors but are still allowed to walk through the patenting process under 37 CFR 1.46, which allows patent applications to be filed “by an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.”
I picked a obligated-assignee patent application at random to see how this is working in practice. U.S. Patent Application No. 15/705,170 was filed back in 2017 as a continuation of previously filed applications. The application data sheet (ADS) includes a section where the patent applicant indicates its source of authority for filing the patent application, with the following options:
To be clear, when the provision speaks of a “person” in this context, it includes corporations, governments, and other legal persons that have the right and ability to own private property rights, such as a patent.
For the ‘170 patent, the ADS marked the ‘obligated to assign’ category and moved forward. The application published in 2018 and issued as a patent in 2019. US Patent No. 10,514,582. The named applicant is View, Inc., and the patent includes four listed inventors. The prosecution history includes a declaration filed by the inventors claiming to be the joint inventors. View had also used the patent application to secure a loan, and that security interest (and its released) was filed with the USPTO?
What I couldn’t find — any actual assignment document showing that the inventors actually assigned their rights. Nothing in the file wrapper and also nothing in the assignment database. That appears to be a violation of the requirements of 37 CFR 1.46(b)(1). Perhaps I’m missing something here from the docket. ( https://patentcenter.uspto.gov/#!/applications/15705170 ).
[Update] Commenters below have shown me what I was missing. MPEP 306 indicates a situation involving a continuation application (such as this one) “a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.” Here, an assignment was filed in the parent case, but it was not filed before-hand, and so I would question whether it counts as a “prior assignment” and whether 37 C.F.R. 1.46 creates an additional obligation to make sure the assignment is associated with the new case.
by Dennis Crouch
I created the chart above using files from recently published US patent applications. The chart shows the average number of inventors per published application. I have been awaiting the 3.0 inventors-per-patent threshold for a while, and that has now been crossed. The average (and median) patent application publication now lists three or more inventors. In general, there are fewer patent applications then ever that list only one inventor. The number of 2-inventor applications has also fallen, but not as dramatically.
Averages can be shifted by extreme outliers. In our sample there are a small number of applications with a large number of listed inventors. Example, Ericsson’s Pub. Nos. 20200028745 and 20170331670 that each list 133 inventors haling from Sweden, Finland, Germany, USA, China, and Korea.
U.S. cases rarely delve into international patent law issues. Rather, US courts have largely refused to allow parallel proceedings or filings in foreign jurisdictions to impact their decision-making at home.
IBSA Institut Biochimique, v. Teva Pharmaceuticals offers an interesting perspective on this. The patent at issue was ISBA’s U.S. Patent No. 7,723,390 that claimed priority back to an Italian patent application (MI2001A1401). The patent here is directed to a “soft gel capsule formulation containing the active ingredient levothyroxine sodium.”
In its decision, the Federal Circuit affirmed a lower-court ruling that the claims were indefinite. In particular, the claims require that the gel capsule contain “a liquid or half-liquid.” But, nobody knew the meaning of the term “half-liquid.” Although the term was used in the specification, it was not defined in the specification. And, the patentee could find no textbook or scientific journal that used the term “half liquid.”
IBSA had argued that the term should be interpreted as “semi-liquid — having a thick consistency between solid and liquid.” To support that conclusion, the patentee pointed to the Italian Application, which used the term “semiliquido” in the exact same places where the ‘390 patent uses “half-liquid.” A certified translation during the litigation translated the term “semiliquido” as “semi-liquid.” The suggestion here is that PHOSITA would understand the claim term “half-liquid” to be synonymous with “semi-liquid.”
In its claim construction, the district court gave no weight to the italian priority filing or its certified translation — concluding instead that the change in terminology was intentional. On appeal, the Federal Circuit affirmed that finding and also the indefiniteness conclusion.
Now IBSA has petitioned to the U.S. Supreme Court, raising the issues as follows:
Patents are unique: the rights they confer are strictly territorial in nature, yet there exists an agreed-upon framework among the vast majority of countries for efficiently securing patent rights. This mutual arrangement permits both U.S. and foreign inventors to seek patent protection first in their home country and then, if they choose, to seek similar rights abroad. In both cases, the inventor can claim “priority” to their domestic application, a critical step for warding off the potentially preclusive effects of “prior art” that can bar patenting.
This efficient system would suffer, if not disappear, without international agreements like the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”), which establishes a baseline for intellectual property protections among its 140 signatory countries. Amongst other protections, the TRIPS Agreement demands that foreign inventors, and foreign priority applications, be treated like their domestic counterparts. This “national treatment” is a critical protection for U.S. inventors abroad, and for the many foreign inventors who seek to pursue their patent rights in the United States. But the courts below rejected these treaty obligations by choosing to give no weight to a foreign patent application, resulting in a finding of indefiniteness.
Question:Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority patent application, despite its submission to the U.S. Patent & Trademark Office during prosecution of the patent-in-question, because it is written in a foreign language and exhibits minor differences from the U.S. patent resulting from a translator’s judgment.
[Petition for Writ of Certiorari] [Federal Circuit’s 2020 Decision]
In re TracFone Wireless, Inc. (Fed. Cir. 2021)
On mandamus, the Federal Circuit has again found that Judge Albright clearly abused his discretion in failing to rule on TracFone’s motion to transfer its case out of the Western District of Texas and to a more convenient venue.
Although Judge Albright has promised rapid progression of patent infringement cases to trial, he has been sitting on transfer motions and leaving them undecided. Here, the appellate panel repeated its prior statement that Judge Albright’s approach “amount[s] to egregious delay and blatant disregard for precedent.”
We order the district court to stay all proceedings until such time that it issues a ruling on the motion to transfer that provides a basis for its decision that is capable of meaningful appellate review.
The court went on to particularly order that Judge Albright issue an order within 30 days. The court also ordered “that all proceedings in the case are stayed until further notice.” Presumably, this means that the this panel of Federal Circuit judges (REYNA, CHEN, and HUGHES) will maintain supervisory authority over the case throughout this process.
Precis Group filed the original lawsuit back in April 2020 and TracFone submitted its motion to dismiss/transfer in June 2020. Since that time, the case has proceeded without any ruling on the motions. In December, the court held a Markman hearing and issued a claim construction order. (Note here, it is only a 2-page order). In any event, the case is well underway and Judge Albright understands many of the issues at stake in the litigation. Of course, this experience through delay appears to be strategic on Judge Albright’s part because his familiarity with the case is a reason to deny a transfer of Venue. The Federal Circuit panel looked to avoid rewarding Judge Albright for his “bad” behavior. Thus, the court explained that “any familiarity that [Judge Albright] has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.”
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TracFone’s motion is both for lack of proper venue under 28 U.S.C. §1400(b) and inconvenient venue under 28 U.S.C. §1404(a). Regarding proper venue, TracFone does not reside in TX — it is a Delaware corporation headquartered in Miami, Florida. In addition, TracFone argues that it “does not have any place of business” in the W.D. Texas. TracFone does sell its products throughout the district using, but it appears to no longer have a branded store. Rather, its products are sold within other outlets such as 7-11, Dollar General and Joyeria y Discoteca Diana. These “independently owned and operated stores” may have franchise rights that allow them to use TracFone’s trademarks and create contractual rights on behalf of the company, but the defendant argues those agreements do not result in TracFone having a “place of business” within the district.
Neapco Drivelines v. American Axle & Manufacturing (Fed. Cir. 2021)
This is a sister case to the one pending before the U.S. Supreme Court regarding eligibility of the claims of American Axle’s U.S. Patent No. 7,774,911. That case is at the petitions stage and is awaiting responsive briefing from Neapco.
In this case, American Axle challenged Neapco’s vented slip-joint coupling Patent No. 5,772,520 via Inter Partes Review. The PTAB found claim 11 anticipated and its depdendent claim 12 obvious in light of the prior art — primarily Burton (U.S. Patent No. 5,655,968). On appeal, the Federal Circuit has affirmed.
Neapco’s ‘520 patent was originally owned by Ford Motor Co. Ford sold the patent as part of an overall sale of Ford’s driveshaft unit to Neapco back in 2008. The patent expired back in 2016, but Neapco still sued American Axle in 2017 seeking back damages. That case is stayed pending outcome of the IPR.
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The claims at issue here are directed to what appears to be a method of assembling the vented slip-joint for a vehicle driveshaft, although it is expressly claimed as a “method of venting a slip joint assembly.” The slip-joint looks like a hydraulic shock-absorber and is designed to allow some axial compression of the driveshaft while still transmitting torque. Neapco’s patent just has air inside the assembly (not hydraulic fluid), and the “venting” innovation here allows for compressed air to escape while keeping-out debris.
The key debate in this case is whether the prior art discloses (Burton) venting. The prior art shaft – shown in figure 3 above – includes a “passage 130” that allows fluid communication from inside the slip assembly’s two operational main parts (stud yok and slip yok) to a third chamber within the assembly.
The patentee first argued that its claim should be interpreted as requiring venting to the outside (not internal venting). On appeal, the Federal Circuit found that the claim language did not support such a construction, and rejected the patentee’s argument to give effect to an implicit requirement found in the preamble.
Neapco also argued that the function of its valve was pressure relief — something not provided by Burton. ON appeal again, the court found that the claims did not require pressure relief, only a venting out of the main operational chambers.
Affirmed.
Uniloc 2017 v. Facebook (Fed. Cir. 2021)
The PTAB sided with Facebook in this inter partes review proceeding. Finding most of the claims in Uniloc’s US8995433 unpatentably obvious. On appeal, Uniloc raised two main issues:
Estoppel: Under Section 315(e)(1), a petitioner “may not request or maintain” an inter partes review proceeding as to any ground that petitioner “raised or reasonably could have raised” in a prior IPR that resulted in a final written decision as to the same patent claim. Basically, this provision is designed to prohibit a patent-challenger from making multiple successive attempts to challenge a patent in an IPR.
The procedure of this case is a bit confusing. BASICALLY, Apple filed for IPR that was subsequently joined by FB; FB filed its own IPR that was subsequently joined by LG. The Apple case concluded first (with a Final Written Decision siding with Uniloc). The question then is the extent that FB and LG are estopped maintaining the FB IPR.
After deciding the Apple IPR, the PTAB gave effect to § 315(e)(1) estoppel — holding that FB could no longer pursue its own IPR challenges as to claims challenged in the Apple IPR. Although FB was knocked-out as a party as to most claims (all but Claim 7), the PTAB continued the FB IPR with LG as the remaining party. On appeal, Uniloc argued that LG should not have been permitted to continue the case because of the way it joined-cause with FB in the joinder motion. The appellate panel rejected that argument and affirmed LG was not a RPI to FB’s IPR petition or privy of Facebook. “[J]ust because LG expressed an interest in challenging the ’433 patent’s patentability, through its filing of its own IPR petition and joinder motion, does not by itself make LG an RPI to Facebook’s IPR.” The court also affirmed that 315(e)(1) estoppel only applied to claims challenged in the Apple IPR — thus FB was not estopped from maintaining a challenge to claim 7. “Section 315 explicitly limits the estoppel to the claims previously challenged.”
Right to Appeal: Before delving into those merits, the court first determined that the case was appropriate for an appeal despite the no-appeal provision of Section 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”). Here, the appellate panel found no problem with hearing the appeal because the estoppel question at issue was triggered after institution.
Considering the strong presumption of reviewability of agency action, we see no indication that § 314(d) precludes judicial review of the Board’s application of § 315(e)(1)’s estoppel provision in this case, in which the alleged estoppel-triggering event occurred after institution.
Slip Op. (citing Credit Acceptance where a cause for termination arose after institution).
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On the merits of obviousness, the court also affirmed — finding that the Facebook expert’s testimony provided substantial evidence to support the PTAB’s obviousness factual findings.
Enco Systems, Inc. v. DaVincia, LLC (Fed. Cir. 2021) [ENCO]
Judge Stephen Limbaugh (E.D. Mo.) sided with the accused infringer DaVincia– holding that the claims of ENCO’s U.S. Patent No. 7,047,191 are invalid under 35 U.S.C. § 101 as directed to an abstract idea. On appeal, the Federal Circuit has affirmed.
U.S. Patent No. 7,047,191 claims a method of providing captioning in an audio-visual signal using speech-to-text processing. Claim 1 includes a number of limitations:
On motion to dismiss, the district court found the claims directed to the abstract idea of “automated stenography implemented on a computer.” The court looked particularly to the claim limitations and found them written at a “high-level of generality” and using “broad form functional terminology.” With regard to Alice step two, the court found the claim limitations lacked any particular or concrete configuration that could serve to ground the abstract idea.
To know whether a patent claim is improperly “directed to” an abstract idea, the court have been looking to the claims and specification in a search for objective suggestions of what the inventor thinks is the advance provided by the invention. What does the patent document assert as the “focus of the claimed advance over the prior art.” Slip Op, quoting Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016). Here, the court looked to the claims and the specification and concluded that the focus “is simply the abstract idea of automating the AV-captioning process.” In this process, the court is typically looking for a “technical solution to a technical problem,” although that is not always required. Here, the court noted that, although the invention involves computers it is not directed toward “any specific improved computer techniques for performing those functions—functions intrinsic to the concept of AV captioning.” Rather, the benefit from the invention is simply automation of work previously done by humans.
Although the abstract idea test is not a novelty test, the courts repeatedly fall back on novelty in their explanation. Here, the court writes:
The advance is only at the abstract level of computerization because claim 1 fails to set forth specific techniques for processing the data, instead reciting known computer techniques for automation of known processes.
Slip Op. The court also found no help for the patentee under Alice step two. “The claims do not incorporate anything more beyond conventional computing hardware and software, which do not transform the subject matter into an eligible application of the abstract idea.”
In a recent “informative” opinion, the PTAB found speech-to-text patent claims eligible under Alice. Ex parte Hannun, No. 2018-003323, 2019 WL 7407450 (P.T.A.B. Apr. 1, 2019). On appeal the court gave no deference to the PTAB’s interpretation of eligibility doctrine and also distinguished the case — noting that Hannun recited a particular algorithm for measuring tailored parameters.
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I love figure 1 below with the bulky video camera and boxy computer equipment. The patent claims priority back to a 2000 filing date — before Apple rounded all the corners.
The Intellectual Property Owners Association (IPO) is hoping to help push through some patent law reforms and recently published a letter to Congressional leaders on IP reform reiterates suggestions already given to the White House.
What are the proposals:
Read more here: IPO-to-IP-Subcmte-Leaders_Key-IP-Issues
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