All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

Copyright and Transformative Fair Use

Patent, ,

by Dennis Crouch

On October 12, 2022, the Supreme Court will hear oral arguments in the fair use copyright case of Andy Warhol Foundation, Inc. v. Goldsmith, Docket No. 21-869 (2022).  Roman Martinez (Latham Watkins) is set to argue for Warhol and Lisa Blatt (Williams Connolly) for Goldsmith.  The Court is also giving 15 minutes to Yaria Dubin (USDOJ) who also filed a brief supporting Goldsmith.

Andy Warhol admittedly used Lynn Goldmith’s copyrighted photographs of Prince as the basis for his set of sixteen silkscreens. Warhol’s Estate argues that the artworks represent a commentary on the dehumanizing nature of celebrity whereas the Goldsmith photos merely reflect Prince in his unique human form.

The Supreme Court has taken-up the case to consider the extent that the doctrine of transformative fair use should value “differences in meaning or message,” especially in cases where the works share core artistic elements and have the same purpose.

Question presented: Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as the Supreme Court, U.S. Court of Appeals for the 9th Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the U.S. Court of Appeals for the 2nd Circuit has held).

Although Andy Warhol is dead, his art, legacy, copyrights, and potential copy-wrongs live on.  In the 1980s, Warhol created a set of silkscreens of the musician Prince. Prince did not personally model for Warhol. Rather, Warhol worked from a set of studio photographs by famed celebrity photographer Lynn Goldsmith. Vanity Fair had commissioned Warhol to make an illustration for its 1984 article on Prince. As part of that process, the magazine obtained a license from Goldsmith, but only for the limited use as an “artists reference” for an image to be published in Vanity Fair magazine. The published article acknowledges Goldsmith.  One reason why the magazine knew to reach-out to Goldsmith was that her photos had also previously been used as magazine cover-art. Warhol took some liberties that went beyond the original license and created a set of sixteen Prince silkscreens. Those originals have been sold and reproduced in various forms and in ways that go well beyond the original license obtained by Vanity Fair.  (Warhol was never personally a party to the license).

Warhol claimed copyright over his artistic creations and his Estate continues to receive royalty revenue long after his death in 1987. Goldsmith argues that her copyrighted photographs serve as the underlying basis for Warhol’s art and that she is owed additional royalties. After unsuccessful negotiations, Warhol’s Estate sued for a declaratory judgment and initially won. In particular, the SDNY District Court granted summary judgment of no-infringement based upon the doctrine of transformative fair use. The district court particularly compared the works “side-by-side” and concluded that Warhol’s creation had a “different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.”  This test quoted comes from another famous a photo-transformation case, Patrick Cariou v. Richard Prince, 714 F. 3d 694 (2d Cir. 2013).

Richard Prince had modified Cariou’s photographs of a Jamaican Rastafarian community and exhibited his work as “appropriation art.”  The copier eventually won, with an appellate holding that the majority of Richard Prince’s works were clearly transformative in their newly presented “aesthetic.” In that case, the 2nd Circuit also held that the new work can still be a transformative fair use even if not a “satire or parody” of the original work, or even be commenting on the original work in any way. That said, uses of someone’s copyright work for a the purpose of parody, news reporting, comment, or criticism make it much more likely that the use will be deemed a fair use.

After losing at the district court, Goldsmith appealed to the Second Circuit who reversed and instead concluded that Warhol’s art was “substantially similar to the Goldsmith Photograph as a matter of law” and “all four [fair use] factors favor Goldsmith.”  The appellate court warned against too broadly reading its prior Cariou decision.

Warhol’s key legal precedent on point is Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  Campbell involved 2 Live Crew’s parody of the famous Roy Orbison song “Oh, Pretty Woman.”  The unanimous decision by Justice Kennedy delves into the first statutory fair use factor (“purpose and character of the use”) and distinguishes between (a) uses that simply replace or supersedes the original work and (b) those that are transformative of the original work. The more transformative a work, the more likely that it will be deemed a fair use and thus not infringing.  Campbell goes further and explains that transformativeness is not solely about new expression—it is also focused on whether the new work has “a further purpose or different character, altering the first with new expression, meaning, or message.”

Goldsmith argues that transformative meaning is only one element of a wide-ranging fair use analysis appropriately conducted by the Second Circuit.  As the Supreme Court recently explained in Google v. Oracle decision, the process is a “a holistic, context-sensitive inquiry” operating without any “bright line rules.”

The Copyright Act promises the original creator some amount of control over similar and follow-on works. In fact, the copyright owner is given exclusive rights to control preparation of any “derivative works based upon the copyrighted work.” For Warhol to rely entirely upon transformativness for his fair-use defense, the use must be so transformative as to leap beyond these derivative use rights.  Still, Warhol argues that the Second Circuit erred by refusing to give weight to the transformed “meaning or message” even if underlying elements of his artwork were similar to elements of the original photographs. As the Court wrote in Campbell, transformative uses “lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.” Warhol’s particular complaint with the Second Circuit is its apparent ruling that “a new work that indisputably conveys a distinct meaning or message” will still not be deemed transformative if its expression unduly retains “the essential elements of its source material.” Warhol argues that legal conclusion was recently rejected by the Supreme Court  in Google. Goldsmith responds that Warhol is misreading the Second Circuit’s decision – making a caricature of its holding.  Rather, Goldsmith argues, the Second Circuit properly weighed all the fair use factors. Further, although “message and meaning” is an aspect of fair use, it not found in the statutory nor intended by its creator (Judge Leval) to fully explain fair use.

Goldsmith also cites a list of historic cases where “conveying new meanings or messages did not save infringers.” One famous case is the Supreme Court’s 1884 decision in Burrow-Giles Lithographic Co. v. Sarony involving a photograph and lithograph copy of the famous playwright Oscar Wilde. Sarony was the first Supreme Court case confirming copyright protection in photographs. Goldsmith notes that the lithographer made a number of stylistic changes to Wilde’s appearance—shifting Wilde’s gaze from a “thousand-yard stare [of a] calculated ennui” to a “soulful gaze and brooding eyebrows [of a] dashing poet.” Despite these shifts, everyone seemed to agree that infringement was clear: “the lithograph was so obviously nontransformative the lithographer did not even try to raise fair use.” Goldsmith’s description of the images of Wilde has the reverb of a pedantic academic art critic—and one may suspect that tone was strategic in order to demonstrate the potentially ridiculous nature of the inquiry into the “message and meaning” of artistic works.

A large number of amicus briefs were filed in the case. The most important of these is likely the brief of the Solicitor General filed on behalf of the U.S. Government (Biden Administration).  The government brief focuses on transformative-use and notes that the Goldsmith and Warhol works have been used for the same purpose (republication in magazine articles about Prince) and do not involve a parody. In this same-use scenario, fair use is much less likely because the new work can be seen as little more than a replacement of the original. Regarding the meaning or message intended by Warhol, the government argues that Warhol failed to explain why he needed to reproduce Goldsmith’s work in order for that expression to take place. Thus, the government is attempting to cabin-in the transformative meaning doctrines to areas where the copying is further justified by reasoning or evidence.

The case’s impact on appropriation art and documentary filmmaking is easy to see, but there are other areas that may also see some big shifts depending upon the Supreme Court’s outcome. Although Warhol used pre-computer technology for his screen printing, the case has important implications for online copyright protections in a world of digital cut-and-paste and fingertip access to AI tools to transform digital works. You may have even seen apps that automatically transform photos into a Warhol-style work. A simple and broad holding from the Supreme Court supporting fair use would give substantial space allow these creative activities (and app development) to expand. But, that would be to the detriment of original creators seeking to protect their copyrights. A win for Goldsmith may require a re-tooling of these apps in order to fit within the stricter fair use requirements.

In his amicus brief, Berkeley Professor Peter Menell argues for Goldsmith, writing that “the Prince series consists of unauthorized derivative works prepared for a commercial purpose and without substantial transformative qualities.” Although Warhol’s work has become iconic within our culture, classifying the work as a “derivative work” creates the quirky conundrum that Warhol’s estate holds no copyright at all. This ruling then might extend to other areas—such as museum exhibits (since Goldsmith would then own the right to public display). I will note that Warhol already paid licensing fees to the owner of the underlying work in a number of situations, including for his use of Henri Dauman’s photo of Jacqueline Kennedy that had appeared in LIFE magazine.

This is not exactly a free speech case, but “meaning and message” certainly seem like forms of protected speech. In earlier cases, the Supreme Court ruled that fair use is a stand-in for First Amendment protections in the copyright world. We have seen copyright used in ways akin to SLAPP actions as well as by artists who do not want their work used to support unworthy causes (such as by politicians they oppose). The outcome here will shift those activities, either in favor of control by the original copyright holder, or more liberty to the potential (unwanted) user.

Is there anything good about Parma Ohio?

Patent,

by Dennis Crouch

I assume that you have read The Onion amicus brief in Novak v. City of Parma Ohio.  If not, please do it is a total classic.

The case involves Anthony Novak who created a parody Facebook page to mock his the local police department in Parma, Ohio.  The posts were clearly parody after perhaps a bit of initial confusion. Once Novak heard that the police were upset, he took down the posts (after 12 hours online).  Still, Novak was eventually arrested, jailed, and prosecuted for disrupting police functions. His home was searched, and all of his electronic equipment was seized. A jury eventually acquitted Novak. He then turned around and sued for violation of his constitutionally protected civil rights.  But, the courts found the arresting officers entitled to qualified immunity. Novak v. City of Parma, Ohio, 33 F.4th 296 (6th Cir. 2022).

The petition for certiorari asks two questions:

  1. Whether an officer is entitled to qualified immunity for arresting an individual based solely on speech parodying the government, so long as no case has previously held the particular speech is protected.
  2. Whether the Court should reconsider the doctrine of qualified immunity.

Novak Petition.  Novak’s basic position is that the “police shouldn’t be able to arrest you for making a joke at their expense.”

One problem with Novak’s posts is that over the past few years it has become more and more difficult to tell the difference between satire and reality.  The Sixth Circuit suggested a preemptive “THIS IS PARODY” warning, but that doesn’t seem quite right. For parody to really work, there needs to be some initial source confusion — the parody has to be initially plausible to get full comedic effect.

Over at The Onion, journalists are sad-proud about the fact that they regularly forecast future events with their “reporting.”  They give the example of their 2017 post on nuclear codes sitting around at Mar-A-Lago.  Those folks are obviously concerned that their work may also be held

The Onion files this brief to protect its continued ability to create fiction that may ultimately merge into reality. As the globe’s premier parodists, The Onion’s writers also have a self-serving interest in preventing political authorities from imprisoning humorists. This brief is submitted in the interest of at least mitigating their future punishment.

Onion Brief. According to the Supreme Court docket, the court has twice rejected the Onion Brief, but I’m confident that the court went ahead and read the thing.

Let me know what you think.

= = =

I feel compelled to mention that I spent a summer living in Parma Ohio (in one of the houses below). I was 19 and just had a 10-speed bicycle that I rode to work each day. As far as I recall, there was nothing good in that town; and it was worse for someone without a car. I also spent an afternoon in Parma Italy. This was after a month tooling around northern Italy, and we were craving something American. So, we stopped at the Parma Ikea and had Swedish Meatballs.

 

 

Today in Patent Law Class: Markman v. Westview Instruments

Patent,

by Dennis Crouch

Today in Patent Law Class, we covered the Supreme Court’s important decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) focusing on the question of whether the patentee has a 7th Amendment right to have a jury decide “genuine factual disputes about the meaning of a patent?”  The Supreme Court’s answer: No, although claim construction might involve underlying factual determinations, the doctrine is ultimately a question of law best decided by a judge.  Id.  Twenty years later, the Supreme Court reiterated these same principle in Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (holding that, underlying factual findings should be given deference on appeal).

The underlying patent (RE33,054) was directed to an inventory control system for a drycleaner.  A jury sided with the patentee and found infringement, but the district court rejected the verdict. Rather, the district court awarded Judgment as a Matter of Law to the defendant on grounds of non-infringement.  The district court particularly considered the claim term “inventory” and construed that term to be tied to individual articles of clothing–as would be necessary to satisfy the claimed inventive result to “detect and localize spurious additions to inventory.”  Under that construction, the defendant could not infringe because its system tracked transactions rather than articles of clothing, and each transaction might include multiple articles.  On appeal, the Federal Circuit issued an in banc affirmance.  Then on certiorari, the Supreme Court also affirmed.  This double affirmance means that the Federal Circuit’s decision also continues to have precedential merit.  Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).

The law-fact divide is an important feature of complex civil litigation procedure — especially patent law.  The importance arises in several different contexts.  In Markman, the question was “who decides” judge or jury; In Teva, the question was appellate deference to district court fact finding; In Microsoft Corp. v. I4I, Justice Breyer explained that the law-fact divide is important for burdens of proof since burdens such as clear-and-convincing-evidence only apply to factual findings and no such burden is associated with issues of law. Microsoft Corp. v. I4I Ltd. Partn., 564 U.S. 91, 114 (2011) (Breyer, J, concurring). In addition, the evidentiary standards tied to the Federal Rules of Evidence applies to issues of fact, and does not (necessarily) bind the inquiry into questions of law.  Thus, in deciding a question of law, a court may consider information that might not be available to a jury when deciding a question of fact.

The Markman hearing quickly became a popular process for district courts to receive argument and evidence before construing the claims (often resulting in summary judgment). Because of their popularity, Markman is – by far – the most cited Supreme Court patent case of the 1990s.   Markman hearings show how timing is also important for the law-fact divide.  Claim construction is decided before trial; leaving juries regularly being seen as irrelevant to questions of infringement and anticipation.  This is especially true when parties craft their proposed claim construction to hone-in on the ultimate questions of infringement or validity.

To support its conclusion that the 7th Amendment does not require a jury trial to decide factual disputes about the meaning of a patent, the Supreme Court first looked to history.  The court suggested that historical preservation analysis is the best approach since the 7th Amendment requires that “trial by jury shall be preserved.”  This amendment was part of the Bill of Rights ratified in 1791 and so the court generally looks back to that time for its historic preservation analysis.  The problem though is that 1791 (and prior) patents did not include claims, and so there was no relevant historic answer as to who decides claim scope. The court then looked to precedent–citing a number of 19th century cases and treatises reflecting that claim construction was a judicial function.  And, the court also concluded that giving the authority to judges would get better results, since judges are better at construing legal documents than juries, and also lead to more uniformity of law.

In Markman, we learned that it is the judge’s role to construe the claims, but courts continued to argue for the next decade+ about claim construction methodology and procedure.  The proposed uniformity was lacking.  In my view, the uniformity has now largely been realized, at least within the court system, once Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) was decided and the dust settled.

Written Description as a Subset of Novelty and Nonobviousness

Patent,

by Dennis Crouch

Zahner Design Group v. Vidal (Supreme Court 2022)

D746,078 (Patent being litigated)

Zahner’s Design Pat. D746,078 covers the ornamental design of a shower curtain as shown in the figures above.  Zahner sued Katri Sales for infringement, and the defendant turned-around and filed a request for ex parte reexamination. The examiner found some great prior art from 2013, which predates this particular design application filing date. But, the design patent also claimed priority to Zahner’s prior utility patent application (Serial No. 09/617,402) that predates the reference. The utility application includes a number of drawings that are similar-to, but not exactly the same as those in the Design Patent. (Images below).

The basic question in the case then was whether the priority drawings provide sufficient written description support for the eventual design as claimed.

09/617,402 (Priority filing)

The PTAB found the design claim was not sufficiently supported by the priority disclosure and so the priority claim was invalid.  And, without the priority claim, the invention had become obvious by the time of the later actual filing date. The basic problem, can be seen in the design patent’s perspective view shown below.   The perspective shows that the inner surface of the aperture is flat and with right-angled edges.  According to the PTAB, those features are new to the design patent and not disclosed by Figure 21 of the priority filing.  On appeal, the Federal Circuit affirmed without opinion.

Close-up of the Design Patent drawing

Zahner disagrees with the merits of the decision here, but has also suggested that it will raise procedural challenges in an upcoming petition for writ of certiorari.  In particular, Zahner intents to raise the same question that Arthrex will likely raise, although this time in the reexamination context:

Question: Does the Reexamination Statute permit a challenge to priority claims?

Zahner has also argued that its situation is particularly egregious because the priority question was particularly addressed by the examiner during the original prosecution.  That is important because reexaminations are limited to “new” questions of patentability.

After receiving the R.36 no-opinion affirmance, Zahner filed a petition for panel rehearing that included the following line: “A written opinion on this issue is respectfully requested.”  The Federal Circuit though denied the petition without opinion.   This situation thus raises the issue I addressed in my 2017 paper titled Wrongly Affirmed without Opinion. In that paper, I argue that these no-opinion judgments are contrary to the statutory requirement of Section 144 requiring the court to issue an opinion in appeals from the PTO. Although this argument has been raised in dozens of cases, the court has not yet responded to the argument, and the peculiar procedural setup allows this status quo.  In a recent request for extension of time, Zahner indicated to the Supreme Court that it also plans to raise the no-opinion question.

I mentioned Arthrex above, its petition to the Supreme Court will be due in November 2022.  In its failed petition for rehearing on the IPR-priority issue, Arthrex asked the following question:

Whether 35 U.S.C. § 311(b)’s restriction “only on a ground that could be raised under section 102 or 103” permits IPR challenges that depend solely on compliance with the written description requirement of section 112.

Arthrex en banc rehearing petition.

Has Eligibility become Quixotic?

Patent

by Dennis Crouch

In re: Janke, Docket No. 22-1274 (Fed. Cir. 2022) (R.36 Judgment)

Mr. Garth Janke is a former HP engineer and now a patent attorney at Garth Janke LLC.  Janke is also an inventor. Most recently, he has been pursuing patent protection on his clog-free leaf rake.  His Dulcinea. I live in a forest and have a basic rule against raking or blowing leaves–otherwise my grass would grow and then I would need to mow. But, to each his own.

Janke’s invention can be seen in the two drawings above. The Fig. 1 is a traditional prior art rake. Janke’s improvement is shown in Fig. 3. The improvement is to put a hole toward the end of each rake-tine.  A user can thread a string-trimmer line through the holes to help prevent leaf-clog.  Janke’s claim 1 is directed at a rake with holes through the tines. And he did a nice job of making clear to everyone “the holes through the tines are the only thing about the product of Claim 1 that is new.”

But, Claim 1 isn’t at issue in this appeal. Rather, the appeal focuses on the steps of constructing the rake, which the PTAB concluded lacked eligibility.  Claim 21 is directed to putting a 3-d model of the rake on a computer; Dependent claim 26 is adds a step of actually building the rake by printing-out the model using a 3D printer.

21. A process for enabling a clog-resistant feature in a hand-held leaf rake, comprising installing a first mathematical model on a computer [that represents the rake with holes in the tines].

26. The process of claim 21, further comprising applying the first mathematical model on a commercially available 3D printer to result in transforming the first mathematical model into a real leaf rake head product as defined by the first mathematical equations.

The procedure of the case is a bit wonky. Janke agreed with the examiner and the PTAB that the claims lacked eligibility under Section 101 – as interpreted by the Supreme Court.  The PTAB thus complied and affirmed the examiner rejections.  Janke then brought his appeal to the Federal Circuit, again beginning with an opening statement against his interest:

Appellant agrees with the Patent Office that the Claims 21-35 on appeal fall within the judicial exceptions to the 35 U.S.C. § 101 statutory allowances for patent-eligibility arising from Gottschalk v. Benson and Parker v. Flook.

The brief went-on to argue that two decisions are wrongly decided because and that they create a difficult threshold problem.  Representing himself, Janke asks the Federal Circuit to answer the following question:

Starting with the mathematical model itself, i.e., the “first” mathematical model of the leaf rake head product recited in Claim 21, then considering the additional limitation in Claim 21 of installing the model on a computer, then considering the additional limitation in Claim 26 of applying the model on a 3D printer to result in making the product, and finally considering Claim 1 to the product itself, when does the claimed subject matter become patent eligible and why?

Janke Appellate Brief.  On appeal, the Federal Circuit did not bite, but rather has simply issued another Rule 36 Affirmance without opinion.  I expect Janke will climb back on Rocinante and continue his fight to the the Supreme Court.

Where’s Waldo: Global Discovery and Finding a Corporation

Patent

by Dennis Crouch

This post is about using U.S. Courts to obtain discovery in order to facilitate foreign litigation; with the pending global litigation between Eli Lilly and Novartis serving as our key example.

In 1938, the Federal Rules of Civil Procedure were adopted in the U.S., including powerful and expansive procedures for automatic disclosures and forced discovery.  The standard today is that prior to trial the litigating parties will share “mutual knowledge of all relevant facts.”  Hickman v. Taylor, 329 U.S. 495 (1947).  We do this through various required disclosures as well as requests for documents & admissions, depositions & interrogatories.  But, the U.S. is an outlier.  Although most international civil courts offer some access to discovery, no other country has as extensive or powerful of a process.   Italian law, for instance, has no obligation of discovery absent a specific court order.

Eli Lilly and Novartis are in the midst of complex European patent and competition (antitrust) litigation regarding their competing monoclonal antibody drugs used to treat autoimmune symptoms such as psoriasis and arthritis.  The cases are pending in Ireland, Italy, and Austria; with a German action already settled.  In each of these cases, Novartis is the plaintiff asserting patent infringement.  One quirk is that the Novartis patents were not developed alongside the company’s Cosentyx product.  Rather, Genentech held the patents and was actually looking to enforce them against both Novartis and Lilly.  In 2019/2020, Novartis purchased the portfolio from Genentech, took over prosecution of the pending cases (including some US applications) and started its enforcement campaign.

Lilly has argued that Novartis’ approach violates European competition laws.  Part of what is going-on is that Novartis was trying to challenge the patents when they were held by Genentech–arguing  invalidity at the time.  Novartis changed its tune once it became the owner.  In order to build its case, Lilly wants Novartis to turn-over its internal documents relating to its prior-opposition and subsequent purchase of the patents, including the actual Purchase Agreement.

If the lawsuits were pending in the U.S., a court would almost certainly compel discovery because the request appear to seek relevant information (absent an appropriate privilege or work-product exception).  BUT, the litigation is in Europe where discovery is much less powerful.  So far, Novartis has refused to produce the requested documents, such as the Purchase Agreement.

In 2021, Lilly brought the case to the U.S. with a petition in the E.D.Va. seeking “leave to obtain discovery for use in foreign proceedings.”  This type of application is authorized by Congress in 28 U.S.C. § 1782(a).

(a) The district court [where] a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal. . . . The order may be made . . . upon the application of any interested person.

Id.  The 1728 statutory provision has a key geographic limitation. The district court can only compel discovery from a person who “resides or is found” within the district.  Id.  Novartis is a Swiss company and so seemingly “resides” over there.  And, according to the 4th Circuit, a corporation can be “found” only in locations where its physical presence is shown “by its officers and agents carrying on the corporation’s business.” In re Eli Lilly and Co., 37 F.4th 160 (4th Cir. 2022).  Thus, the 4th Circuit concluded that 1782 does not authorize discovery E.D. Va.

In 2018, the 2nd Circuit interpreted the same provision and concluded that “resides or is found” should be more broadly interpreted to extent to the scope allowed by personal jurisdiction due process limitations.  In re del Valle Ruiz, 939 F.3d 520 (2d Cir. 2019).  If you recall International Shoe, personal jurisdiction includes “purposeful availment” leading to specific jurisdiction.  Here, specific jurisdiction likely works because Novartis has been prosecuting the offending patent family at the USPTO, which is located in the E.D. Va.  See Deprenyl Animal Health, Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343 (Fed. Cir. 2002) (“Obtaining such a patent is a meaningful contact with the United States; it requires a patentee purposefully to avail him or herself of a significant benefit of United States law.”).  That ongoing prosecution is arguably related to the European patent and competition litigation.  The 4th Circuit noted a second problem–the statute provides discretionary authority (“the district court … may order …”), and here discretion was properly denied.

Lilly has not yet filed its petition for writ of certiorari, but started the process with a request for extension of time that was granted by Chief Justice Roberts.  As is common, Lilly set out some aspects of its case within the request:

On appeal, the Fourth Circuit created a split of authority by holding that the word “found” means that the corporation must be “physically present by its officers and agents carrying on the corporation’s business.” The opinion conflicts with the Second Circuit’s decision in In re del Valle Ruiz, 939 F.3d 520 (2d Cir. 2019), which is the only other circuit court decision to have considered this issue.

Lilly Application for Extension.

A Corporation’s legal location has been in-flux for a number of years with several Supreme Court cases narrowing the scope to basically the corporation’s state of registration.  But, in my view, Section 1782 has the feel of a venue statute, rather being jurisdictional. One clue to that is the limit to the particular district rather than state. Another clue is that by 1948 (when this statute was originally passed) personal jurisdiction was recognized by as guided by the Constitution rather than federal statute.  The venue angle is important because Congress has spoken about the definition of “resides” in the context of venue:

(c)Residency.—For all venue purposes— (2) an entity with the capacity to sue and be sued … shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction with respect to the civil action in question.

28 U.S.C. § 1391(c).  The petition for certiorari in the 4th Circuit case will be due in December.

There is one more pending case on the same issue with the same parties–this one in the 9th Circuit. Lilly filed a parallel application in the Northern District of California seeking discovery from the third party Genentech.  Novartis intervened in that litigation to try to block discovery, but was unsuccessful. As such, Genentech turned over some amount of information, such as the price Novartis paid.

Have you ever tried to put a cat in a bag? Once the cat is out, it is not going back in.  Information is the same.  Novartis has appealed the N.D. Cal. order, but it can’t exactly ask for the information to be totally excised. It doesn’t work that way.  Rather, Novartis is seeking a court order to prevent anyone who has learned of the purchase price from participating in any subsequent license negotiations between Lilly and Novartis, or at least an order prohibiting the use of the purchase price in any subsequent global license negotiations.  This would be pretty powerful since the folks who are working on the litigation have some of the best information about the patents themselves.  The district court denied Novartis’ motion for a protective order, but that has been stayed pending appeal.  Oral arguments in the 9th Circuit are set for November.

= = =

Katherine Helm and her team at Dechert is representing Lilly in the US litigation, including the Supreme Court briefing.  Willy Jay and his team at Goodwin represents Novartis.

Litigation Blackmail: Sanctions for Gaming IPR System

Patent

by Dennis Crouch

OpenSky Indus v. VLSI, IPR 2021-1064 (Before Dir. Vidal)

Stepping-in like a court of equity, Dir. Vidal today issued a Precedential Order finding that OpenSky had abused the IPR process.  OpenSky filed its IPR petition soon after VLSI won a $2 billion judgment against Intel.  At that point though, OpenSky offered to work on behalf of either VLSI or Intel. Essentially, asking for some pay-off to either continue its challenger or to bow-out. Dir. Vidal writes:

I determine that OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and … Intel, and expressed a willingness to abuse the process in order to extract the payment. OpenSky’s behavior in this proceeding is entirely distinguishable from conventional settlement negotiations that take place in an adversarial proceeding. I also find that OpenSky engaged in abuse of process and unethical conduct by offering to undermine and/or not vigorously pursue this matter in exchange for a monetary payment. Taken together, the behavior warrants sanctions to the fullest extent of my power.  . . . The conduct of the individual attorneys in this case might also rise to the level of an ethical violation under the rules of their respective bars

Vidal Precedential Order.  As a sanction, the order excludes OpenSky from participating and also demands that OpenSky “show cause” as to why it should not be ordered to pay damages and attorney fees to VLSI.

Great work Dir. Vidal.

SCOTUS: Three Potential Patent Cases

Patent

At the “long conference” last week, the Supreme Court considered the fate of 13 pending petitions for writ of certiorari.  Three cases have survived. In two, the Court invited the Solicitor General to file an amicus brief “expressing the views of the United States.”

  • Teva v. GSK, 22-37 (Skinny Label)
  • Interactive Wearables v. Polar Electro, 21-1281 (Eligibility)

CVSG.  The SG’s brief typically takes several months to draft and so we’ll likely not see further action in these cases until 2023.

The court took no action in Juno v. Kite, 21-1566 (full scope written description), meaning that the case will be reconsidered at a later conference. The remaining 10 petitions were denied certiorari.

  1. CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527
  2. Gilbert P. Hyatt v. United States Patent and Trademark Office, No. 21-1526
  3. Worlds Inc. v. Activision Blizzard Inc., No. 21-1554
  4. SawStop Holding LLC v. United States Patent and Trademark Office, No. 22-11
  5. Larry G. Junker v. Medical Components, Inc., No. 22-26
  6. CPC Patent Technologies PTY Ltd. v. Apple Inc., No. 22-38
  7. Ampersand Chowchilla Biomass, LLC, et al. v. United States, No. 22-69
  8. Aaron G. Filler, et al. v. United States, No. 22-53
  9. Lakshmi Arunachalam v. Kronos Incorporated, No. 22-133
  10. Biogen International GmbH, et al. v. Mylan Pharmaceuticals Inc., No. 21-1567

Remote Work and Patent Venue

Patent

by Dennis Crouch

In re Monolithic Power Systems, Inc., — F.4th — (Fed. Cir. 2022)

In a 2-1 decision, the Federal Circuit has denied Monolithic’s petition for writ of mandamus seeking to escape from Judge Albright W.D. Tex. courtroom for improper venue.  Since MPS is a Delaware Corp., the only way venue is proper in W.D. Tex. is if it “has committed acts of infringement and has a regular and established place of business.”  28 U.S.C. § 1400(b).  The company has employees, and various sales-channels within the district, but argues that it lacks a “regular and established place of business.”  As an alternative to its improper venue argument, MPS also argued that venue is inconvenient under 28 U.S.C. § 1404(a) and that the case should instead be transferred to N.D. Cal.

Judge Albright denied the motions to dismiss/transfer — holding that the “regular and established place of business” prong of the 1400(b) test was satisfied by three key findings:

  1. MPS employed local engineers and sales managers in WDTX to serve local customers;
  2. MPS stored property in WDTX (in the homes of its employees) and that equipment was used to service MPS’s WDTX customers, and
  3. MPS continually maintain a physical presence within WDTX, including by advertising for replacement employees should any of MPS’s existing WDTX employees leave the company or move to a new location.

In considering these issues, the district court relied upon prior Federal Circuit’s cases such as Cray and Cordis and evaluated the factors established there for non-retail  and informal “places of business.”

On mandamus, the majority refused to grant the petition — finding that the distric court’s ruling “does not involve the type of broad, fundamental, and recurring legal question or usurpation of judicial power that might warrant immediate mandamus review.”  To be clear, the appellate panel did not endorse Judge Albright’s decision, but simply found that it was not appropriate for mandamus.  Rather, MPS should wait until the lawsuit concludes and, if MPS it can still appeal on improper venue. Regarding inconvenient venue, the court found no clear abuse of discretion in refusing transfer.

The majority opinion was issued per curiam by Judges Chen and Stark.  Judge Lourie wrote in dissent and argued that the outcome is clear — “Monolithic’s four employees in the Western District do not constitute Monolithic’s ‘regular and established place of business.'”  Judge Lourie raised the particular concern that changing work environments (i.e., work-from-home) will potentially open up venue in unexpected ways:

The district court’s erroneous ruling threatens to bring confusion to the law relating to where a patent infringement suit can properly be brought based on the location of employee homes and to erode the clear statutory requirement of a regular and established place of business. Given the increased prevalence of remote work, I think immediate review by way of mandamus would be important to maintain uniformity of the court’s clear precedent.

Slip Op. Lourie Dissent.  The majority agreed that the shift to remote work is an important consideration, just not important enough to overcome the strong presumption against hearing a mandamus action:

The dissent may well be correct that the issue of imputing employee homes to a defendant for purposes of venue will become an issue of greater concern given the shift to remote work. But, in our view, at present, the district court’s ruling does not involve the type of broad, fundamental, and recurring legal question or usurpation of judicial power that might warrant immediate mandamus review.

Slip Op. Majority.

The court does not delve into the new W.D.Tex. rules that randomly assign Waco patent cases to a handful of judges (not just Judge Albright).  I expect that we will see a sharp diminution in venue mandamus decisions as the court waits to see whether the new approach changes outcomes.

= = =

Notes –  The underlying case alleges infringement of several patents relating to electric power modules.  U.S. Patent Nos. 6,936,999, 6,949,916, 7,000,125, 7,049,798, 7,080,265, and 7,456,617.  The primary accused product is a power management bus (MPM3695) used on integrated circuits

 

 

Eligibility: Patent’s Claims of Inventive Concept Overcome Eligibility Dismissal

Patent

By Dennis Crouch

Cooperative Entertainment, Inc. v. Kollective Tech, Inc., — F.4th — (Fed. Cir. 2022)

This pro-patentee eligibility decision offers some ideas for patentees seeking to help ensure that their patents survive eligibility challenges. The district court dismissed the case for lack of eligibility. On appeal, the Federal Circuit has reversed.

We know that eligibility is a question of law, but the doctrine at times requires examination of underlying questions of fact. Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018) (J.Moore).  That distinction is important at the motion to dismiss stage.

An accused infringer’s motion to dismiss is only appropriate when “there are no plausible factual disputes after drawing all reasonable inferences from the intrinsic and Rule 12 record in favor of the” patentee. Slip Op. Here, that “intrinsic record” is the patent document and the “Rule 12 record” is the complaint.  In its amended complaint, the patentee alleged two “inventive concepts.” These include (1) a dynamic peer-to-peer network designed to “consume the same content within a predetermined time” and are controlled by a a content distribution network; and (2) the use of trace routs in content segmentation.  The complaint particularly notes that those novel features were discussed by the examiner in the reasons for allowance.  In addition, the patent application itself treats these features as important improvements to content distribution systems.

To be clear, I don’t know whether or not these features count as “inventive concepts” under Alice. But, all that is required at the pleading stage of a case are allegations that make the patentee’s claim plausible. And the allegations here seem to to at least meet that low standard.  The appellate decision finds some importance in the fact that the intrinsic evidence recognizes the inventive concept as inventive.

The specification explains how claim 1’s dynamic P2P network structure is different from and improves upon the prior art.

The patent repeatedly explains that the “prior art fails …” and that the feature “does not exist in the prior art.”  The specification also notes how the invention solves a network capacity problem.   Although the opinion focuses on these features, it does not explain how important it is for the patent documents to expressly call out their innovative features.  Bottom line here though is that these allegations (as supported by the intrinsic record) establish a plausible showing that the patent covers an patent eligible inventive concept under Alice Step 2.

The district court had sided with the accused infringer and dismissed the case on eligibility grounds. The district court first concluded that the claims were directed to the abstract idea of peer-to-peer communication via computer network.  And that the alleged inventive concepts were “merely” implementing that generic idea using conventional technology.  On appeal, that dismissal was reversed. But, the appellate panel refused to pass judgment on the district court’s Alice Step 1 opinion. This leaves the eligibility fight still alive at the district court.

We do not decide today that the claims are patent eligible under § 101. We hold only that there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal.

Slip Op.  On remand, the parties will need to present evidence (likely to a jury) on whether the patent is directed toward an inventive concept.  In addition, the district court will be asked to reconsider its Alice Step 1 determination.

= = = =

The decision is authored by Chief Judge Moore and joined by Judges Lourie and Stark.  Meredith Martin Addy (AddyHart) argued for the patentee; Michael Dowler (Park Vaughan) for the defendant-appellee.

 

Supreme Court on Patent Law for October 2022

Patent, ,

by Dennis Crouch

It is time to pick-up our consideration of Supreme Court patent cases for the 2022-2023 term. A quick recap: Despite dozens of interesting and important cases, the Supreme Court denied all petitions for writ of certiorari for the 2021-2022 term.  The most anticipated case last year was the 101 eligibility petition regarding automobile drive shaft manufacturing process.  American Axle (cert denied). Bottom line, no patent cases were decided by the Court in the 2021-2022 term and none were granted certiorari for the new term starting this week.

The court’s first order of business comes on September 28, 2022 when it meets for the “long conference” to consider a fairly large pile of petitions that have piled-up over summer break.  Of the 17 pending patent-focused petitions, 13 are set to be decided at the long conference.  I have subjectively ordered the cases with the most important or most likely cases toward the top.  Leading the pack are three cases focusing on “Full Scope” Enablement & Written Description. Topics:

  • Enablement / Written Description (All three are biotech / pharma): 3 Cases;
  • Infringement (FDA Labeling): 1 Case;
  • Anticipation (On Sale Bar): 1 Case;
  • Double Patenting (Still the law?): 1 Case;
  • Procedure / Standing: 6 Cases;
  • Eligibility (AmAxle Redux): 3 Cases; and
  • Randomness (don’t bother with these): 2 Cases

1. Full Scope Written Description in Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566

According to the Federal Circuit, US patent law contains separate and distinct written description and enablement requirements.  This case focuses on the required “written description of the invention” and challenges the court’s requirement that the specification demonstrate possession of “the full scope of the claimed invention” including unknown variations that fall within the claim scope.

Juno’s patent covers the highly successful and valuable CAR-T gene therapy. The claims require a “binding element” to bind T-cells to cancer cells. The specification  does not provide much of any disclosure regarding how these binding cells actually work but instead states that binding elements are “known” and “routine” and cites to a decade-old article on the topic.  The idea here is that the patentee did enough to enable someone to make and use the invention–isn’t that enough?   But, the Federal Circuit concluded that the specification should have done more to disclose those binding elements, including all “known and unknown” elements covered by the claims.

Juno argues that the Federal Circuit’s test “is simply impossible to meet” for biotech inventions and is not part of the law envisioned by Congress.  The argument on virtual impossibility is a centerpiece of several enablement/written description cases pending.  Although the focus here is biotech, the same arguments are brewing with regard to AI-assisted inventions.  In its responsive brief, Kite reiterates that “as precedent has held for over 50 years—§ 112’s requirement of a “written description” is distinct from the requirement to “enable any person skilled in the art to make and use the” invention.”  That 50-year reference makes me chuckle because that is roughly the same period that Roe v. Wade was good law before being overturned by the Court last term.

The Federal Circuit’s decision in Juno was also a big deal because it overturned the jury verdict–holding that no reasonable jury could have found written description support.  But, it is tough to get the Supreme Court to hear a review on detailed factual findings.

Chief Judge Moore issued the decision in the case that was joined by Judges Prost and O’Malley.  The petition was filed by noted Jones Day attorney Greg Castanias along with former SG Noel Francisco and BMS (Juno) deputy GC Henry Hadad.  Joshua Rosenkranz (Orrick) is running the show for the respondent Kite Pharma. The petition has been supported by five amicus briefs, the most of any pending case.

2. Written Description for an Effective Treatment in Biogen International GmbH v. Mylan Pharmaceuticals Inc., No. 21-1567

If the Supreme Court grants certiorari in Juno, there is a good chance that it would also hear the parallel written description case of Biogen v. Mylan.  Biogen’s patent claims is directed toward a drug treatment for multiple sclerosis.  The treatment has one easy step: administer “a therapeutically effective amount [of] about 480 mg” of DMF per day along with an excipient for treatment of multiple sclerosis.  The Federal Circuit found the claim lacked written description support — especially for a showing that 480 mg is an “effective” treatment.  The specification expressly states that “an effective dose … can be from … about 480 mg to about 720 mg per day.” But, the court found that singular prophetic “passing reference” “at the end of one range among a series of ranges” was insufficient to actually the notion that the patentee possessed an “effective treatment” at the 480 mg dosage.  Effectiveness is often relegated to the utility doctrine, but here it is an express claim limitation.

In some ways Biogen and Juno are both outliers–albeit at opposite ends of the spectrum.  In Juno, the patentee is seeking a broad genus claim based upon a somewhat narrower disclosure while in Biogen, the patentee is seeking a quite narrow claim based upon a much more general disclosure. It is a forest-tree situation.  If you describe several trees, can you claim possession of the forest? Likewise, if you describe the forest, can you claim possession of individual trees?  Note also that there are similarities with the pending enablement petition in Amgen v. Sanofi as well as with the likely upcoming petition in Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (written description).  The overlap between written description and enablement is inextricable.  It is usually true that the arguments that prove or disprove written description have the same impact on enablement.  But here in these cases the defendants and courts continue to reiterate the potential differences.

The decision was authored by Judge Reyna and joined by Judge Hughes.  Judge O’Malley wrote in dissent.  The court then denied en banc rehearing despite a dissenting opinion from Judge Lourie joined by Chief Judge Moore and Judge Newman. Supreme Court expert Seth Waxman is handling the petition along with his team from Wilmer.  Nathan Kelley (Perkins) is representing Mylan. Kelley is the former USPTO Solicitor and PTAB Chief Judge.

3. Full Scope Enablement in Amgen Inc. v. Sanofi, No. 21-757

Amgen also fits well as a companion case to Juno v. Kite.  The difference is that Amgen asks about enablement rather than written description.  Still, the focus is the same–does enabling “the invention” require enabling all potential embodiments (even those not yet comprehended by the patentee).  As in Juno, the genus claim here is also functionally claimed, a feature that appears to make it more susceptible to invalidation under both WD and Enablement doctrines. I would have previously put this case even higher in the ranking, but the Gov’t recently filed an amicus brief in the case suggesting that the Court deny certiorari.

Jeff Lamkin (MoloLamkin) is representing the patentee Amgen in the petition. George Hicks (Kirkland) is counsel of record on the other side.  The Gov’t CVSG brief was filed by folks at the DOJ SG’s. USPTO officials did not join. Although the internal politics are always unclear, this often means that the USPTO does not fully agree with the Gov’t position.

4. Skinny Label Infringement in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, No. 22-37

This case delves deeply into the patent-FDA overlap and involves an increasingly common situation “skinny label” situation.  The setup involves an unpatented drug with multiple clinical uses, only some of which are patented.  What this means is that a generic producer should be permitted to market the drug for the unpatented uses, but excluded from marketing the drug for the patented uses.  One problem here is that the healthcare payers are going to recognize that the drugs are interchangeable and very quickly start buying the generic version even for the unauthorized patented use.  One way to think about this case is the level of responsibility that the generic manufacturer has to make sure that its drug is not used in an infringing way.  At what point do sales-with-knowledge equate with inducement?

The particular question presented focuses on FDA-approved labels that carve-out patented uses.  In the process, the FDA starts with the branded drug’s label and asks the brand manufacturer to identify which parts of the labeled uses are infringing.  Those labelled uses are then deleted from the label.  Teva and the FDA followed that exact process in this case.  But, the courts found that the “skinny label” still encouraged infringement — part of the problem was that the infringing and non-infringing uses were so similar to one another.  Petitioner here is seeking a safe-harbor, asking: “If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?”

Chief Judge Moore wrote the opinion in this case joined by Judge Newman. Judge Prost wrote in dissent. After an initial outcry, the panel issued a new opinion that toned-things down a bit and suggested that labelling will usually not be infringing, but that this was somehow an exceptional case. Subsequently the full court denied en banc rehearing, with Chief Judge Moore re-justifying her position while Judges Prost, Dyk, and Reyna all dissented.  The jury had originally sided with GSK — finding infringement.  However, the district court rejected the verdict and instead granted Teva’s motion for judgment as a matter of no infringement. Judge Stark who is now a member of the Federal Circuit was the district court judge in the case.

Willy Jay (Goodwin) is handling the petition; Juanita Brooks (Fish) is in opposition.

5. Post IPR Estoppel in Apple Inc. v. Caltech, No. 22-203 (Briefing ongoing)

This important case raises a question of statutory interpretation regarding post-IPR estoppel: Does IPR estoppel 35 U.S.C. § 315(e)(2) extend to all grounds that reasonably could have been raised in the IPR petition filed, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.”  Apple would like to challenge the validity of Caltech’s patents, was barred by the District Court based upon Apple’s unsuccessful IPR against the same patent.

Bill Lee (Wilmer) is counsel of record for petitioner. Briefing is ongoing in the case.

6. Judicial Recusal in Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 22-246 (Briefing ongoing)

Although a patent case, the focus here is about the judicial code.  Cisco lost a $2 billion verdict, but was able to get the decision vacated on appeal because the Judge’s wife owned $5,000 in Cisco stock.  The judge had placed it in a blind trust, but the appellate court found that was insufficient since the statute requires “divestment” under the statute.  The petition asks whether this strict  statutory interpretation is correct; and whether any impropriety can be excused as harmless error.

Former Solicitor Paul Clement is handling the petition.

7. Summary Judgment standard in Hyatt v. USPTO, No. 21-1526

My favorite part of this litigation is the mock-up created by folks at the USPTO of Gil Hyatt applying the “Submarine Prosecution Chokehold.” Although the image was a ‘just a joke,’ Hyatt is not joking about what it represents. In particular, Hyatt argues that the USPTO created a secret policy to block issuance of his patents, regardless of the merits of his particular claims. Hyatt filed an APA lawsuit seeking an order forcing the PTO to actually examine his patent applications. But, the district court issued a sua sponte summary judgment — finding that the office was already diligently working.  Oddly though, the court did not apply the summary judgment standard provided by R.56 but instead drew inferences against Hyatt.  The petition asks simply: “Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action.”  Hyatt also argues that the district court applied too-high a standard with regard to setting aside past agency actions.

Famed professor of constitutional law Erwin Chemerinsky (Berkeley) filed the petition.  The U.S. Gov’t waived its right to file a responsive brief.

8. Double Patenting and SawStop Holding LLC v. USPTO, No. 22-11

The petition here focuses on the non-statutory judicially created doctrine of obviousness type double patenting.  It asks: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”

A good percentage of patents (about 10% or so) are tied to another patent via terminal disclaimer.  In general, the patent office requires a terminal disclaimer in situations where a patentee is seeking to obtain a second (or subsequent) patent covering an obvious variation of an already obtained patent.  Otherwise, the second patent will be rejected on grounds of obviousness-type double patenting.  When I previously wrote about the case, I compared it to the Supreme Court’s abortion decision in Dobbs.  In that case, the court explained that a right to abortion “is nowhere mentioned in the Constitution.”  Similarly, obviousness type double patenting has no grounding in the Patent Act.  Dobbs also rejected the 50 year old precedent of Roe v. Wade (1972).  The fact that a precedent is old does not convert that precedent to a sacred text. One difference here is that OTDP has a somewhat older provenance than did Roe.

The need for terminal disclaimers was greatly reduced following the 1995-GATT patent term transformation. For the most part, all family members expire on about the same date. The big difference happens with patent-term-adjustment that can sometimes make a really big difference — especially if the patentee has successfully appealed.  The SawStop situation represents an interesting case-study for anyone thinking about the ongoing importance of OTDP and Terminal Disclaimers.

David Fanning is inhouse counsel for SawStop and filed the petition.  The USPTO (through the SG) waived its right to file in opposition.

9. Eligibility in Worlds Inc. v. Activision Blizzard Inc., No. 21-1554

Worlds was an early developer of 3-D virtual chatrooms and its US7,181,690 has a 1995 priority filing date. This particular patent has two steps to be performed on the client device being operated by a first user:

  • (a) Receive position information about some user-avatars
  • (b) Using that position information, determine which avatars to display to the first user

The courts found the claims directed to the abstract idea of “filtering.”  The petition asks (1) what is the standard being “directed to” an abstract idea; (2) who bears the burden of coming forth with evidence on Alice Step 2.  In particular, does a party seeking to invalidate a claim need to provide evidence of what was well-known, routine, and conventional?  The petition here is really a follow-on to American Axle. That was denied certiorari at the end of the 2021-2022 term.

Wayne Helge (Davidson Berquist) is counsel of record for Worlds.  Sonal Mehta  (Wilmer) represents Activision, but only filed a statement waiving her client’s right to respond.

10. Mandamus Jurisdiction in CPC Patent Technologies PTY Ltd. v. Apple Inc., No. 22-38

This petition fascinated me for a couple of days as I tried to think through the scope of mandamus jurisdiction.  We know that the Federal Circuit hears patent appeals, but the petition argues that the same court does not necessarily hear mandamus actions filed in patent cases.  Rather, according to the petition, the Federal Circuit’s jurisdiction should depend upon whether the mandamus action itself arises under the patent laws.  Here, the mandamus focused on  transfer for inconvenient venue under Section 1404(a).  Everyone agrees that issue is not patent law specific.

George Summerfield (K&L Gates) is handling the petition. Apple did not file a response.

11. Eligibility in Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281

This case has similar features to Worlds v. Activision and was also filed in prior to the denial of American Axle.  The petition explains that the patents claim “electronics hardware device comprising a content player/remote-control combination having numerous concretely-recited components that undisputedly qualifies as a ‘machine’ or ‘manufacture’ under the statutory language of 35 U.S.C. § 101.”

12. Junker v. Medical Components, Inc., No. 22-26

Junker’s petition raises an issue that has repeatedly come before the court — the on sale bar.  Here, the purported “offer to sell” was made by “a third party who had no right to sell the invention and with no involvement by the patentee?”  Junker asks whether that counts as an offer?

13. Licensee Standing in Apple Inc. v. Qualcomm Incorporated, No. 21-1327

This petition raises the identical issue that Apple raised in a 21-746.  That case was denied certiorari earlier in 2022 and is very likely to be denied here as well.  The question presented: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”   Qualcomm restated the question as follows: “Whether a licensee that offers no evidence linking a patent’s invalidation to any concrete consequence for the licensee nevertheless has Article III standing to challenge the validity of the licensed patent.”

Mark Fleming (Wilmer) represents Apple and Jonathan Franklin (Norton Rose) represents Qualcomm.

14. Eligibility and Hardware in Tropp v. Travel Sentry, No. 22-22

This eligibility petition attempts to distinguish Alice on grounds of computer-technology vs real hardware with the following question presented: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101.”  One issue with the petition is that the problematic claims don’t really claim the physical hardware (a padlock with a master key), but rather a process of giving the extra key to TSA. In some ways, I see this as a lower-quality version of American Axle.

15. PTO Acting Ultra Vires in CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527

Anyone working with inter partes reviews (IPRs) knows that the PTAB first decides whether to institute the IPR and, after instituting, will hold the trial and issue a final written decision.  One oddity though is that the statute actually calls for the USPTO Director to decide the institution question with the PTAB only stepping in once the IPR is instituted.  The current procedure exists because the PTO Director has delegated her institution authority to the PTAB.  In its petition, CustomPlay asks the court to rule that this delegation is improper – a violation of “the statutory text and legislative intent.”  In addition, the petition asks a constitutional due process question: “Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.”

16. Filler v. United States, No. 22-53

Filler had an interesting claim, but made a major error by dividing his patent rights between two entities in such a way that neither had enforcement power.  Filler argues that the U.S. Gov’t used his patented invention without paying and sued in the Court of Federal Claims. The petition here asks about whether his Fifth Amendment takings claim was properly barred by the Assignment of Claims Act.

Filler is the inventor and is also an attorney (and MD and PhD) filed the petition himself.

17. Arunachalam v. Kronos Incorporated, No. 22-133

Lakshmi Arunachalam has filed a number of patent related petitions over the past several years.  This one asks a number of questions including “Whether Trustees of Dartmouth College v. Woodward, 17 U.S. 518 (1819) was properly decided.”

The Difficulty with Prior Art Sales

Patent,

by Dennis Crouch

Today’s decision in Cap Export, LLC v. Zinus, Inc., 21-2159 (Fed. Cir. 2022) (non-precedential) offers some insight into the difficulty of proving an anticipation case with something other than a prior patent or printed publication.  Cap Export particularly focuses on a prior sale.  The problem is that the item sold way-back-when typically no longer exists in its original form.  And, although you might have product manuals, those documents themselves are not on-sale prior art.  They may still be admissible to help show what the prior art looked like, but only as a proxy for the real thing.

Zinus’ U.S. Patent No. 8,931,123 covers a bed-in-a-box system.  All the parts for the bed frame fit neatly within the headboard.  A zipper on the backside allows the purchaser to unpack them at home for assembly. Zinus did not invent this general concept, but rather offered an improvement with various limitations regarding how the parts are packaged and then connect together on assembly.  The particular claim limitation at issue requires a connector on a longitudinal bar (running down the center of the bed); that is configured to attach to a connector on the footboard.  This connection is shown in the image from the patent below.

The sales activity in the case is slightly quirky.  Zinus’ agent purchased “Mersin” beds from Woody Furniture.  As it was shipping those beds, the folks at Woody created an “inspection report” that included a number of photographs of the bed, including a photograph of how the longitudinal bar connects with the footboard, and a photo of the instructions being sent.

If the instructions were prior art, they would clearly be anticipating.  But the on sale bar does not relate to sales of instructions, but rather sales of the embodiment itself.  Zinus presented two arguments as to why the instructions differ from the product sent.  First, the instructions indicate that they are for a different “Fusion” bed rather than the “Mersin” bed.  Second, the actual photo of the product from the inspection report appears to potentially show a different connection mechanism.  I have included the photo below, and you cannot really tell how the longitudinal board is connecting with the base.  Zinus expert suggest that it might be a hole/slot in the base (a non-infringing alternative) rather than each party having their own ‘connectors.’

Zinus provided declarations of potential witness testimony in support of the hole/slot theory, and Cap Export responded with accusations that those were “inadmissible sham declarations.”  R.56 permits a district court to end a case on summary judgment prior to trial, but only in situations where the moving party “shows that there is no  genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a).  At times, courts will rephrase the standard as stating: summary judgment is appropriate if “no reasonable jury” could decide the case otherwise.  The fact-law divide is relevant to this issue as well — juries decide the facts; why judges ordinarily decide the law.  And on this point, the Federal Circuit has repeatedly held that anticipation is a question of fact. After considering the evidence presented, the district court sided with the accused infringer on summary judgment. On appeal though, the Federal Circuit has vacated that determination–finding ongoing factual disputes.

Looking at the particular dispute, the appellate court found plenty of genuine disputes: “whether the Fusion bed and Mersin bed are the same structurally, whether the Fusion instructions describe the structure of the as-sold Mersin bed, and what exactly the ambiguous photo of the Mersin bed depicts. Accordingly, summary judgment was improperly granted.”

The court went on to particularly find that the district court had erred by making factual inferences in the movant’s favor. In particular, the district court had concluded that the Fusion/Mersin beds were the same and ignored the contrary declarations from Zinus.  “Taking the record as whole, some evidence supports a conclusion that the Fusion assembly instructions apply to the Mersin bed and some detracts from that conclusion.”

The court also found the issues here material since the challenger’s anticipation case relies upon the Fusion instruction manual to provide that the Mersin bed anticipates.

Should a jury agree with non-movant Zinus and find that the Fusion assembly instructions do not apply to the Mersin bed, Cap Export would be left with the photograph of the Mersin bed as the only evidence with which to prove that the on-sale Mersin bed anticipates the ’123 patent claims. But what exactly that photograph shows is also a disputed factual question for the jury to consider.

Slip Op.

= = =

Anyone practicing in this area knows that the Federal Circuit has lots of quirks regarding the fact/law divide.  Any given issue might be a question of fact; a question of law; a mixed question of fact and law; a question of law based upon underlying conclusions of fact; etc.  The particular fact/law framework will then determine judicial role on issues like summary judgment as well as the standard of review on appeal.

As I mentioned above, anticipation is a question of fact.  Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001).  But, whether a patent is invalid under the on-sale bar is a question of law based on underlying fact findings. Meds. Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016).  In some ways, these two sentences seem in tension.

= = =

The decision here is authored by Judge Stoll and joined by Judges Dyk and Taranto.  Matthew Wolf led the winning team from Arnold & Porter representing Zinus.  David Beitchman (Beitchman & Zekian) for Cap Export.

Gov’t Brief on Full Scope Enablement: Specification Must Enable the Entire Genus

Patent

by Dennis Crouch

The Solicitor General’s new brief in Amgen v. Sanofi shrugs off the case–identifying petitioner’s arguments as meritless:

Petitioners contend that the court of appeals erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled. Those arguments lack merit and further review is not warranted.

Gov’t CVSG Brief in Amgen Inc. v. Sanofi, 21-757 (Supreme Court 2022).

The petition argued that genus claims–especially those functionally claimed–are being asked to comply with a heightened enablement standard.  The Gov’t agreed that at times it may be difficult to enable an entire genus, but not because of any heightened standard.  Rather, “broad claims naturally require more extensive enablement” since the patent’s disclosure “must be commensurate with the scope of its claims. . . . When, as here, a patent claims an entire genus based on its function, the patent must enable that entire genus.” The brief cites to Consolidated Electric Light Co. v. McKeesport Light Co., 159 U.S. 465 (1895) and Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928) as representative.  In those cases, the Supreme Court used to enforce patents whose scope encompassed, but far exceeded, the examples given in the specification.  Of course, the Brief’s bold statements fail to contend with the reality that enabling the “entire genus” will effectively curtail genus claims, and the resulting policy shifts.  I expect that a Supreme Court decision in the the case would not go as far as suggested by the Gov’t Brief, but the middle ground might not be enough to flip the result here.

The Gov’t Brief also explains enablement as a mixed question of fact and law.  Although the jury sided with the patentee, the district court judge rejected the verdict on JMOL  — holding that the claims lacked enablement.  That JMOL determination was affirmed on appeal.  The Government brief does not delve deeply into the issues raised but simply states:

Petitioners complain about the formulation the court of appeals used in articulating the standard of review, but they do not identify any practical implications flowing from that disagreement.

Id.

Usually, the SG brief is the most important amicus brief at predicting certiorari.  However, that might no longer be true for today’s 6-3 conservative majority hearing remarks from a liberal administration.

Novartis: Inherency in Written Description

Patent

by Dennis Crouch

Novartis Pharms Corp. v. Accord Healthcare, Inc. (Fed. Cir. 2022)

Without any fanfare or dissent, the Federal Circuit has denied the Novartis en banc petition.  The court used a questionable procedure flip its own prior decision by replacing Judge O’Malley with a more defendant-friendly Judge Hughes for the rehearing.

The merits decision appears to further tighten-up on the written description requirement — especially with regard to ‘negative’ claim limitations.  The basic holding is that the written description must either expressly or inherently disclose the invention.  Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (rehearing majority decision).  Here, ‘inherently’ is a term of art in patent law and has much stricter definition than its cousin ‘impliedly.’  Inherency in patent law indicates unstated certainty.

The patent at issue in Novartis claims a drug treatment method.  Sometimes in drug treatment, you start a patient off with a high ‘loading dose’ to get the blood-levels up to an operational state.  The patent application does not discuss a loading dose one way or the other.  During prosecution, the patentee added a no-loading-dose negative limitation: “a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen.”

Someone skilled in the art might read the specification as implying that no loading dose was necessary. But, that same person would have to admit that the specification could be interpreted in alternative ways–and that the absence of a loading dose was not necessarily inherent in the disclosures.  Since the majority required inherency, the claim lacked written description support.

 

Patents Issued Per Year

Patent

The USPTO’s fiscal year ends at the end of September, so this chart is slightly preemptive.  But, it shows that patent grants have fallen again this year by about 5.5% from 2021 and 11% below the all-time high in FY2020.  The drop shown here is likely reflective of the pull-back experienced in the first year of COVID.  I have not yet done a breakdown of the relative numbers on original filings vs continuations and US vs foreign.  – Crouch

Disclaimer and Dedication

Patent

The chart above shows the number of disclaimed/dedicated patents per year going back to 1995.  Every year it has been a relatively small number, and for each instance there is usually some strategic reason for the disclaimer. As you can see, FY2022 is figuratively off the charts–almost triple any year since 2005.   I have not yet figured out whether the change here reflects some important change in practice or just a statistical anomaly.  Can someone help me understand what is going on here?

You can find these in the Official Gazette notices.

Estoppel; Pre-SAS Partial Institution Cases; and Rethinking Caltech

Patent

by Dennis Crouch

The PTAB is the busiest patent court in the country.  The Board cancels lots of patent claims, but also regularly sides with patentees in the Final Written Decision (at least as to some claims).  Post-IPR estoppel attaches to the cleared-claims and prevents the petitioner (or privies) from later challenging the validity of those claims on grounds actually raised in the IPR as well grounds the petitioner “reasonably could have raised during the inter partes review.”  35 U.S.C. 315(e).  In its 2022 Caltech decision, the Federal Circuit overturned its prior Shaw precedent and found that the estoppel broadly applies to all claims challenged in an IPR and all grounds “which reasonably could have been asserted” against the petitioned claims. California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022) (“Caltech”).

More recently, the court was faced with unique partial-institution circumstances in Click-to-Call Techs. LP v. Ingenio, Inc., 45 F.4th 1363 (Fed. Cir. 2022), and again the court concluded that broad estoppel is appropriate.  The court particularly concluded that estoppel applies even to non-instituted claims.  In a new petition for en banc rehearing, the accused infringer asks the following question:

Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final written decision, as consistent with the holdings in Shaw, and Intuitive Surgical, and whether that interpretation remains correct after SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Ingenio En Banc Petition.

You’ll recognize Click-to-Call  from the 2020 Supreme Court decision finding institution decisions ordinarily not judicially reviewable. Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) (Thryv is a DBA name of Ingenio).

The unique circumstances mentioned above are that the PTAB only partially-instituted the IPR.  In particular, the USPTO granted institution of most of the challenged claims of Click-to-Call’s US5818836 based upon the “Dezonno” reference, but denied institution with-regard-to claim 27 and also refused to conduct an IPR relying upon the Freeman reference (the only ground raised in the IPR for challenging claim 27).  All of the instituted claims were eventually found unpatentable and cancelled in the IPR–but that left claim 27 still standing.  Partial institution was eventually ruled improper by the Supreme Court in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).  Since the IPR appeal was still pending, post-SAS remand would have been available to re-institute and pick-up claim 27, but neither party asked the PTAB to take-up that task.  The patent challenger had already won on all-but-one claim before the PTAB, and re-institution might have required a new trial on all of the challenged claims.  The patentee likely saw the PTAB as an unfriendly forum and had no interest in filing a motion to the effect of “yes, may I have another lump please.”   Note that Ingenio contests this procedual idea — arguing that dismissal order by the Supreme Court ended the case without remand.

Although I identified this as a “unique circumstance,” partial institution was a regular practice for several years prior to SAS and so there are hundreds of patents in a similar position.  Point being, this issue is goes beyond the parties here and will have a larger impact, if only transitionary post-SAS.

Once the IPR concluded, district court litigation restarted, focusing on claim 27.  The district court sided with defendant Ingenio on summary judgment. In particular, the court found claim 27 was invalid based upon Dezonno, the same prior art reference used by the PTAB to cancel all the other claims.  Click-to-call argued estoppel, but that argument was rejected.  On appeal, the Federal Circuit reversed, holding that “the district court erred in not applying IPR estoppel under 35 U.S.C. § 315(e)(2) to claim 27 based on Dezonno.”

Ingenio has argued that estoppel applies only to invalidity challenges to claims that were subject to the IPR final written decision.  The statute is not crystal clear on this point–even more so now that we recognize that partial institution was improper.  This is a case where ask about the correct statutory interpretation in a situation where we now know that the agency acted improperly.

But, lets look at the statute.  315(e) estoppel applies on a claim-by-claim basis as follows:

The petitioner in an inter partes review of a claim in a patent … that results in a final written decision … may not assert [in patent litigation] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

Id.  I have been struggling through this statute.  In my reading, the most straightforward construction sides with the Federal Circuit in this situation. It requires that estopped claims be part of the IPR and that the IPR result in a final written decision, but does not require that all of the estopped claims be adjudged in the final written decision.

The en banc petition also suggests that the court may want to reconsider its decision in Caltech.  In particular, the three-judge Caltech panel finding broad estoppel overturned the prior Federal Circuit panel decision in Shaw.  Ordinary rules of  appellate precedent prohibit one panel from overturning the decision of a prior panel. But, the Caltech judges found that the Supreme Court’s intervening decision in SAS so abrogated the reasoning of Shaw as to open the door for panel action. The petition  argues that was improper:

The Caltech panel incorrectly relied on SAS to overturn Shaw. SAS did not itself overturn Shaw, and in fact analyzed a different statute entirely (35 U.S.C. § 318(a) vs. § 315(e)(2)). Nonetheless, the Panel held that, because Shaw’s reasoning rested on the assumption that partial institutions were permissible, SAS’s elimination of partial institutions required Shaw to be overruled. But that is incorrect. Shaw was not limited to the particular facts of its case, but instead held that the plain language of § 315(e )(2) prohibits IPR estoppel from attaching to grounds that were not part of the IPR, which began at institution. SAS did not undermine or challenge the validity of Shaw as a textual construction of § 315(e)(2).

Petition.  If you recall, the Caltech decision is also still pending on petition for writ of certiorari before the Supreme Court.  Thus, this case may provide an opportunity for the Federal Circuit to preemptively speak to the high court.

AI Inventor Poll

Patent,

If you are thinking about this from the corporate level, check out my new book chapter: Dennis Crouch, Legal Fictions and the Corporation as an Inventive Artificial Intelligence, Forthcoming in Research Handbooks on Intellectual Property and Artificial Intelligence (R. Abbott, ed). A draft version is available online here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4081569 .

 

A.I.Nventor

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The new en banc petition in Thaler v. Vidal offers potential for future development on the law of invention and inventorship. 

by Dennis Crouch

Hi, my name is Dennis, I am a natural person, a human being, an individual.  But, I also think of myself as a collective–trillions of cells and other biologic matter, only some of which expresses “my” DNA; a host of personalities all housed within a thick skull.

In my view, it is unquestionable that AI regularly contribute to inventive concepts so substantially as to be named joint-inventors alongside their human counterparts, if it were permitted.  Many of us are hung-up on the notion that inventorship requires “conception in the mind”–a feat perhaps beyond any computer today.  But conception is not a requirement for joint inventorship. Cases like Dana-Farber v. Ono help us understand how it might work. In Dana-Farber case, some of the joint inventors (our AI equivalents) provided data and analysis, but then the actual “conception” was done by a third party after receiving the data inputs.  Even though only one of the inventors actually “conceived,” the Federal Circuit held that all three should be listed as inventors because each made substantial contributions that led to the conception. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020). See Toshiko Takenaka, Unravelling Inventorship, 21 Chi.-Kent J. Intell. Prop. 71 (2022).

The key legal justification for excluding AI is the traditional human-only rule of inventorship. Although the Patent Act does not expressly declare “inventors-must-be-humans” or “no-robots,” since 2011 it has stated that inventors are “individuals.”

(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

(g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

35 U.S.C. § 100(f)/(g) (2011).  Earlier this summer, the Federal Circuit sided against Dr. Stephen Thaler on this issue. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Thaler has been attempting to seek patent protection for two inventions created by DABUS, his AI computer. Id. In the case, the USPTO admitted (for the purposes of the litigation) that DABUS had conceived of an invention.  Thus, the only question on appeal was whether the USPTO acted appropriately in denying patent protection solely based upon the fact that the purported inventor is non-human. Id.

The court sided with USPTO’s no-patent stance. It held that US Patent Laws require listing of an inventor, and that inventor must be a “natural person” — i.e., human being. Although the court cited several statutory justifications for its decision, the key factor came from the definitions found in 35 U.S.C. § 100 that identify inventors as “individuals.” The court concluded that the term “individual” is best interpreted as limited to a human being.  Thaler, 43 F.4th  at 1211.  One quirk of this ruling is that this ‘individual’ definition was added quite recently as part of the 2011 America Invents Act and nothing in the legislative history indicates an intent to use the term to exclude AI from inventorship rolls.

Through his attorney (Professor Ryan Abbott), Thaler has now petitioned the Federal Circuit for en banc rehearing on the following question:

Whether an artificial intelligence can be an inventor for purposes of patent law, which implicates the most fundamental aspects of patent law, namely, the nature of inventorship and therefore whether AI discoveries can be patented.

Thaler en banc petition. The petition makes three key complaints against the petition, which I paraphrase below:

  1. The panel selectively quoted from dictionaries for its conclusion that individuals are always human.  The better definition of individual is a “distinct, indivisible entity”–a definition that would include an AI-inventor.  I might ask, if an AI is not an individual, does that mean it is a collective?
  2. The panel unduly disregard of the Patent Act’s promise of patent rights regardless of “the manner in which the invention was made” and without limiting eligibility scope only to areas contemplated by Congress. See 35 U.S.C. 103 (“Patentability shall not be negated by the manner in which the invention was made”); 35 U.S.C. 101 (“Whoever invents or discovers any new and useful process …”); Diamond v. Chakrabarty, 447 U. S. 303 (1980) (that the patent system allows for “inventions in areas not contemplated by Congress.”).
  3. In the face of evolving technology that redefines the potential of inventorship, the panel failed to interpret the statute “in light of [the] basic purpose” of the Patent Act.  Quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975).

Id.  In some ways, Judge Stark’s opinion reads like a district court applying the law handed-down rather than an appellate court with a larger role of considering meaning and importance of ongoing precedent. Perhaps this makes sense, Thaler was the first precedential opinion authored by Judge Stark’s since joining the Court of Appeals earlier in 2022.  Judge Stark was previously a district court judge in Delaware for more than a decade.

I have always seen the final sentence of Section 103 as an important declaration of patent law policy that goes beyond simply obviousness doctrine. “Patentability shall not be negated by the manner in which the invention was made.” One particular bit of the Federal Circuit decision that gets in my craw is the court’s statement limiting that provision as only applicable in the obviousness context. In my view, the statement should be applicable in the Thaler analysis as well as in other contexts, such as patent eligibility. I’m planning a subsequent post that will focus more on this issue.

If my calculations are correct, any Amicus Brief in support of Thaler (or Support of Neither Party) would need to be filed by Oct 3 (absent extension). 

The absence of a dissent in the original opinion makes the odds of overturning the panel decision quite low–Thaler would need seven of the remaining nine active judges (assuming that none of the original three change their minds).  But, Thaler may still appreciate an outcome where one or two judges offer some additional commentary that would then serve as fodder for the upcoming petition for writ of certiorari.