All posts by Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law.

“Directed to” vs. “Reciting” vs. “Involving” an Abstract Idea

Patent

by Dennis Crouch

I have been reading a good number of PTAB decisions recently to try to get my head wrapped around the current state of the obviousness and eligibility doctrines within the USPTO.  The Board's recent decision in Ex parte Annakov is on point.  The case involves a distributed service-and-transaction system for aircraft passengers, and the examiner rejected the claims both for lack of eligibility under § 101 (all the claims) and as obvious under § 103 (most of the claims).  On appeal, the Board reversed on eligibility, but affirmed on obviousness -- leaving a handful of claims ready for issuance.

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If the Barcode Doesn’t Fit: Reconsidering ‘Bodily Incorporation’ in Patent Law

Patent

by Dennis Crouch

Many of us feel the daily pull toward coffee, and perhaps likewise toward PTAB decisions about coffee makers.

I found interesting a recent pair of IPR decisions successfully brought by the Swiss Nespresso against German competitor K-Fee.  This post delves into these cases and what I call the 'glove doesn't fit' fallacy in patent law obviousness doctrine; it also provides a discussion of how written description continues to be a risk, even in inter partes review (IPR) proceedings.

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Federal Circuit’s New Hands-Off Approach: Recent Mandamus Denials Signal Shift in Venue Transfer Landscape

Patent

by Dennis Crouch

On September 11, 2024, the Federal Circuit issued three separate orders denying petitions for writs of mandamus related to venue transfer decisions. These cases highlight a trend that I previously recognized of the court stepping-back from its prior aggressive mandamus docket.  The cases here all include the similar procedural posture where the district court ordered transfer under the convenient venue statute 1404(a), and the patentee unsuccessfully petitioned the Federal Circuit to reverse the transfer.

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Managing tipping payments is an administrative problem, not a technological problem

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by Dennis Crouch

This is the third eligibility post in as many days.  In a non-precedential decision issued September 10, 2024, the Federal Circuit affirmed the PTAB's rejection of claims in a patent application directed to eliciting tips for media content -- finding them ineligible. In re McDonald, No. 24-1015 (Fed. Cir. Sept. 10, 2024).

The applicant here is a Utah start-up VidAngel, Inc., that helps folks "Filter out the stuff you don’t want to see or hear in your streaming movies & TV shows, like profanity, nudity, violence & more.  But, the invention here has a different focus - it is a setup for eliciting and receiving tips from consumers of media content like streaming movies.

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2nd Innovator Diversity Pilots Conference: Advancing Inclusion in Innovation

Patent

Coming up just before the big IPO conference in Chicago, Emory Law in Atlanta will be hosting the 2nd Innovator Diversity Pilots Conference.  This event looks excellent, and I wish I could attend. (I'll be in the woods at a "ManKind Project" retreat).

Details: Friday, September 20, 2024, 8:45 a.m. - 5:30 p.m.  In person or online. https://law.emory.edu/impact/conferences/innovator-diversity-pilots-conference.html.

USPTO Dir Kathi Vidal and other Biden Administration officials have been very open to trying well designed pilot programs that offer some promise to effectively increase participation and engagement of underrepresented groups within the innovation ecosphere.  Although many of the pilots focus on gender and race/ethnicity, the mindset of most really seems to be thinking about ways to make sure that everyone feels that patent-incentive -- adding fuel to the fire of genius.  I expect that the pilots that really work will be rolled-out as deliverables to everyone.

Key topics:

- Lessons learned from recent innovator diversity pilots
- Practical insights from the Diversity Pledge and other law firm diversity initiatives.
- The future of patent drafting and prosecution in the age of AI
- Strategies for retaining diverse talent in the patent profession

It is a mix of academic research presentations and practical discussions.

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Future of Patent Practice: Balancing Big Firm Mergers and the Boutique Draw

Patent

by Dennis Crouch

I saw this morning that Womble Bond Dickinson and Lewis Roca are merging to create firm with 1,300+ lawyers. By my quick count, the new combo will have 150+ US patent attorneys under the WBD brand that the wider-known of the two (especially internationally).  Two other big mergers announced this week - Troutman Pepper and Locke Lord; Ballard Spahr and Lane Powell.   The "Troutman Pepper Locke" merger will result in 1,600+ lawyers, with about 200 lawyers in their IP group (of which about 100 will be "patent attorneys").   The Ballard Spahr merger is also large (750+ lawyers), but Lane Powell's IP practice is fairly small -- likely meaning that Ballard Spahr's patent group (largely based in Atlanta) may end up quite successful if they are able to cross-sell to Lane Powell's clients.

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Drafting for Eligibility: Insights from the Federal Circuit’s Contour IP v. GoPro

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by Dennis Crouch

In Contour IP v. GoPro, the Federal Circuit has reversed a Judge Orrick (N.D.Cal.) summary judgment of ineligibility.  The case here should be one for patent drafters  to consider -- particularly thinking about how to incorporate specific technological improvements into their patent claims and specification (while still maintaining broad claim coverage).  Of course, the patentee here has the benefit of actual hardware beyond mere processing.

Contour owns two patents related to POV video cameras. These patents claim a camera system having lenses, sensors, etc., that generates two video streams of different quality in parallel, wirelessly transmitting the lower-quality stream to a remote device for real-time viewing and control on your phone. The higher-quality stream is stored on the camera for later use.

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The Patent Eligibility Restoration Act (PERA) of 2024: From Oz to Earth

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by Dennis Crouch

As its name suggests, the Patent Eligibility Restoration Act (PERA) is designed to substantially overturn the Supreme Court's decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Together those cases created a firestorm of invalid patents and challenges for the patent office and patent holders alike.  The bipartisan proposal was introduced in the Senate (Coons/Tillis) earlier this term and most recently introduced to the US House of Representatives (Kiley/Peters).   Although Alice and Mayo doctrine created substantial confusion, much of that confusion has now died down in the past decade.* The bigger issue is that it is substantially harder to obtain patents and easier to invalidate issued patents -- particularly in cases where the invention lies in software or diagnostic methods.  This post examines the proposed PERA and its potential impact -- along with providing a bit of data.

* Although the extreme confusion is gone, there is still plenty to go around.  A case in point is the Federal Circuit's September 3, 2024 decision in BBiTV v. Amazon. In that case, the court showed its linguistic flexibility in distinguishing the claimed user interface (deemed ineligible) from those in Core Wireless and Data Engine (deemed eligible).

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Thorn in USPTO’s Side: Judge Fitzpatrick’s Whistleblower Victory

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by Dennis Crouch

In a significant ruling, the Merit Systems Protection Board (MSPB) granted corrective action to PTAB Administrative Patent Judge (APJ) Michael Fitzpatrick in his whistleblower retaliation case against the USPTO associated with his complaints about PTAB panel expansion (i.e., 'panel stacking').  The decision issued back in 2023, but has only just now been published following a settlement between Fitzpatrick and the USPTO.  This post will delve into the details of Fitzpatrick's claims, the MSPB's reasoning, and the implications of this decision for patent practitioners and the USPTO. 

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Hindsight 20/20: Federal Circuit Okays Retroactive Expertise

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by Dennis Crouch

In patent litigation, we continue to see enhanced focus on qualifying (i.e., disqualifying) expert witnesses. Skilled expert testimony can be so convincing for a jury while also laying the foundation to win on appeal.  And, expert testimony is a legal necessity in most patent cases both for damages calculations (damages expert) as well as for validity and infringement (technical expert).  Having your expert knocked-out just before or in the midst of trial is a nightmare situation.

In its 2022 Kyocera decision, the Federal Circuit explained that a technical expert must - at minimum - be a person of skill in the art to which the invention pertains.  Someone who purports to be an expert but lacks that 'ordinary' knowledge will be disqualified under patent law's Daubert nuance.  In patent law, PHOSITA's knowledge is temporally tied to the patent application filing date (or invention date pre-AIA).  What we're typically looking for is the level of skill at the time that the application was filed (or perhaps when issued / amended).

This temporal frame is the focus of the Federal Circuit's recent decision in Osseo Imaging v. Planmeca, where the court was asked to disqualify the patentee's expert witness because he was not skilled in the art back when the invention was made -- rather, became skilled almost a decade later.

The case has some parallels to EcoFactor v. Google, that is currently pending before the Federal Circuit on an en banc petition regarding admissibility of damages expert testimony.

Defense Side Amici Support for Tighter Reins on Damages Expert Testimony

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From Knobs to Pixels: UI Patent Eligibility on Trial

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by Dennis Crouch

For over 150 years, "user interfaces" have been a staple of patent protection, evolving from the physical realm of tool handles and knobs to today's digital screens. Although tangible interface elements continue be patented as components of larger systems, the market shift towards on-screen interfaces has been paralleled with the anti-eligibility shift in Mayo and Alice. The Federal Circuit recently waded into these murky waters in Broadband iTV, Inc. v. Amazon.com, Inc., No. 23-1107 (Fed. Cir. Sept. 3, 2024), examining the patent eligibility of electronic programming guides and content recommendation systems. Affirming a decision by Judge Albright, the appellate panel held that the claimed inventions lacked eligibility under 35 U.S.C. § 101, distinguishing some prior GUI cases that sided with the patentee.

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Did Jarkesy Undermine Oil States? ParkerVision Thinks So

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by Dennis Crouch

In 2018, the Supreme Court's 7-2 decision in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. 325 (2018) affirmed the constitutionality of inter partes review (IPR) proceedings. The Court held that patents are "public rights" and thus may be canceled through congressionally authorized administrative proceedings without violating Article III or the Seventh Amendment right to a jury trial. This decision was a significant win for proponents of the America Invents Act (AIA) and those seeking to use the Patent Trial and Appeal Board (PTAB) as an efficient mechanism to cancel issued patents.

Fast forward to 2024, and a number of us were watching the non-patent case of SEC v. Jarkesy, 144 S. Ct. 2117 (2024), wondering if it might destabilize Oil States. Jarkesy indeed narrowed the scope of what qualifies as a "public right," potentially reopening the debate on the constitutionality of IPRs.

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Tapping our Full Potential: Nominations for US Council on Inclusive Innovation

Patent

by Dennis Crouch

A cornerstone of Dir. Kathi Vidal's tenure as USPTO Director has been a continued focus on inclusivity and diversity in the innovation ecosphere.  In 2024, the USPTO launched a significant initiative to address major disparities in patent participation among underrepresented groups -- with strong support from the Council for Inclusive Innovation (CI2).  CI2 is now seeking nominations for new council members. In addition to highlighting the nomination process, this post provides some critiques on the initiative's approach to fostering a more diverse and dynamic innovation landscape in the United States.

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The Art of Losing Gracefully or How Koki’s appellate loss is truly a win.

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by Dennis Crouch

We have seen lots of ITC action recently. In the new Koki v. ITC decision, the Federal Circuit found that the accused infringer Koki lacked Constitutional standing to bring the appeal  based upon a binding promise not to sue submitted by the patentee Kyocera.

As I discuss at the end of this post, although Koki is the nominal loser, the company substantially advanced its position on appeal because Kyocera was forced to declare (and then clarify) its promise in order to obtain dismissal.

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Omitted Elements and Written Description: Federal Circuit’s Split Decision in Allergan v. Sun Pharma

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by Dennis Crouch

I previously wrote about Allergan USA, Inc. v. MSN Laboratories Private Ltd. (Sun Pharma), No. 24-1061 (Fed. Cir. Aug. 13, 2024), focusing on Federal Circuit's about-face on obviousness-type double patenting.  My original post skipped over an important aspect of the opinion: the court's 2-1 decision favoring the patentee on the written description requirement of 35 U.S.C. § 112(a).  This portion of the case focuses once again on when an element is "essential" to the invention and therefore required in the claims.

Four key takeaways:

  1. We presume that no element is "essential."
  2. Courts should look for indications in the patent documents that the feature is critical, essential, etc.
  3. The court here relied upon broad claims in the priority filing that were later deleted in order to show the inventor possessed embodiments that did not require the element.
  4. The key focus for written description is comparing the specification with the claims.  Although expert testimony may be relevant, it must be directly tied to the intrinsic record.

All of these elements point to the idea that it is the job of the patent drafter and prosecutor to ensure the written description is sufficient, and to avoid pitfalls that might indicate otherwise.

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One Bite at the Apple: WARF’s Second Infringement Theory Gets Precluded

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by Dennis Crouch

In a significant ruling that underscores the importance of strategic litigation planning in patent cases, the Federal Circuit has affirmed a district court's judgment barring Wisconsin Alumni Research Foundation (WARF) from pursuing  doctrine of equivalents infringement claims against Apple after the patentee's failed bid to show literal infringement. Wisconsin Alumni Research Foundation v. Apple Inc., No. 22-1884 (Fed. Cir. Aug. 28, 2024).  The case addresses two separate but related disputes: WARF I, concerning Apple's A7 and A8 processors, and WARF II, involving Apple's A9 and A10 processors. The Federal Circuit's decision hinges on three key legal principles: waiver, issue preclusion, and the Kessler doctrine. In particular, the court expanded the scope of both issue preclusion and the Kessler doctrine in favor of accused infringers.

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Eye-Opening Verdict: Lashify’s Patent Win Curls Industry Expectations

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by Dennis Crouch

This week a unanimous jury in Judge Albright's W.D.Tex. courtroom filled out a very simple verdict form that favored the patentee Lashify over the accused infringer Worldbeauty, who sells drugstore lashes:

Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty has directly infringed the asserted claims of the asserted patents?

A: Yes, Yes, Yes (all 3 claims).

Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty's infringement was willful?

A: Yes

Q: Did Worldbeauty prove, by clear and convincing evidence that the asserted claims are invalid as obvious in light of the prior art?

A: No, No, No.

Q: What amount did Lashify prove, by a preponderance of the evidence, it is entitled to as damages for Worldbeauty's infringement?

A: $30.5 million in lost profits.

There will certainly be some post-verdict motions, including the adjudged infringer's motion for JMOL as well as the patentee's request for treble damages and attorney fees.  The $90 million potential is certainly enough to blink your eyes at. 

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Rehearing Requested: Hikma Challenges Federal Circuit’s Skinny Label Ruling

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by Dennis Crouch

[A prior version of this article's title mistakenly stated that Amarin had filed the petition]

Hikma's recent petition for rehearing en banc against Amarin asks the Federal Circuit to reconsider its "skinny label" jurisprudence.  Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc., 23-1169 (Fed. Cir. 2024)

These cases typically involve the following scenario:

  • a drug formulation with multiple approved uses;
  • the formulation/compound patents are all expired as are patents on one or more uses; but
  • at least one method of use claim is still under patent (e.g., take 100 mg each day to treat hypertension...).

The FDA will approve a generic version of the formulation, but the approved label will only mention the non-patented uses.  Thus, it is a "skinny label" because the patented uses listed on for the branded formulation have been "carved out."

Of course, everyone understands that it is the same drug and will be just as safe and effective as the branded. The generic manufacturer, along with doctors, patients, pharmacies, insurance companies, and hospitals, . . . they all understand the carveout as simply a patent legalese. While technically an 'off label' prescription, it is still for an approved use considered safe and effective. In my experience, these folks typically do not strongly support the patent system and would have no compunction against using the cheaper drug for the patented use -- so long as they do not get tagged.

Background on the Amarin case: Amarin markets Vascepa (icosapent ethyl), which was initially approved by the FDA  in 2012 to treat severe hypertriglyceridemia (triglycerides ≥500 mg/dL). In 2019, Amarin obtained a second FDA-approved indication for Vascepa to reduce cardiovascular risk in certain patients. Amarin holds method patents on this cardiovascular (CV) indication. Hikma sought approval for a generic version of Vascepa, but with a "skinny label" that carved out the patented CV indication under 21 U.S.C. § 355(j)(2)(A)(viii). After launching its generic, Hikma issued press releases referring to its product as the "generic version of Vascepa" and noting Vascepa's total sales figures, which were largely attributable to the patented (but unmentioned) CV use.  None of Hikma's statements direct others toward the patented CV use, but conspiracy minded jurists could quickly connect these dots. If you know what I mean, nudge nudge, wink wink.

The basic question in the case is whether these actions by Hikma qualify as the "clear expression or other affirmative steps taken to foster infringement" typically required by precedent.  Quoting DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc in relevant part).

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Red Flags Waved Off: Federal Circuit Rejects Overzealous Fee Award against Patentee

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by Dennis Crouch

While sitting by designation as at the Federal Circuit, Judge Alan Albright has authored an important new opinion on attorney fees patent cases under 35 U.S.C. § 285. The court vacated and remanded a fee award by Colorado Judge Brooke Jackson, finding that Judge Jackson abused her discretion when determining that the case was "exceptional" under the statute. Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., No. 2023-1035 (Fed. Cir. Aug. 23, 2024).

One wild thing about this case is that Sling TV (DISH) was awarded a $3.9 million fee for seven months of pre-trial litigation -- with the defendant on eligibility at the summary judgment stage. (Having requested ~$5 million).

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Old Dog, New Tricks: Government Defends 200-Year-Old ODP Doctrine Even Under Modern Statutes

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by Dennis Crouch

The debate over obviousness type double patenting continues.  Most recently, the U.S. Government has filed its brief in opposition to certiorari in Cellect v. Vidal. 

In its decision, the Federal Circuit ruled that the Congressionally mandated "patent term guarantee" that adjusts patent term to account for undue USPTO delay (known as PTA) triggers a risk that a later-expiring patent will be invalidated due to obviousness-type double  patenting (ODP). The Government brief consistently defends and agrees with the CAFC's decision -- arguing primarily (1) that ODP is an ancient patent tradition (much like eligibility) and (2) applying ODP to PTA is supported by the statute.

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