All posts by Jason Rantanen

About Jason Rantanen

Jason is a Law Professor at the University of Iowa College of Law.

Opinions Without Law: Federal Circuit Mandamus Decisions on Transfer of Venue

Patent

Guest post by Paul R. Gugliuzza, Temple University Beasley School of Law; Jonas Anderson, American University Washington College of Law; and Jason Rantanen, University of Iowa College of Law.

We’ve written here a few times about how the parties seeking Federal Circuit review use the writ of mandamus to get around the usual rule that only final, case-ending judgments can be appealed. The primary conclusion of our research (which will appear in the Washington University Law Review later this year) is that, though the Federal Circuit grants mandamus far more frequently than any other federal court of appeals, the Federal Circuit’s high grant rate is driven almost entirely by mandamus petitions in patent infringement cases out of the Eastern and Western Districts of Texas that raise questions about transfer of venue for convenience reasons under 28 U.S.C. § 1404(a).

For example, from late 2020 through the end of 2021, the Federal Circuit decided 34 mandamus petitions challenging § 1404(a) transfer decisions by Judge Alan Albright of the Western District of Texas, who now hears more patent cases than any other judge in the country. The Federal Circuit granted twenty of those petitions, or 58.9%. Overall, from 2008 through 2021, the Federal Circuit granted 37.3% of mandamus petitions out of the Eastern and Western Districts of Texas on § 1404(a) issues (38 of 102). Outside of § 1404(a) petitions from those two district courts, however, the Federal Circuit’s mandamus grant rate (on all issues, from all lower tribunals) was only 9.9% (30 of 304).

With the Federal Circuit issuing so many mandamus decisions on transfer of venue, one might presume that the law governing the standard for obtaining mandamus relief, as well as for evaluating transfer motions under § 1404(a), is robust and well-developed.

But that is far from true.

As an empirical matter, the Federal Circuit designated only 4 of the 34 recent mandamus decisions reviewing Judge Albright as precedential. And all 4 were grants. So not only is the quantity of precedential case law small, it’s not representative of overall results.

In fact, from 2008 through 2021, the Federal Circuit issued only 19 precedential decisions on § 1404(a) transfer out of 128 total decisions. And the precedential decisions disproportionately granted mandamus: 15 grants, only 4 denials. By comparison, in nonprecedential mandamus decisions, the grant rate was substantially lower: 26 grants, 83 denials. The figure below puts the unrepresentative nature of the Federal Circuit’s precedential § 1404(a) mandamus orders in stark relief.

Figure 1: Decision form for petitions for writs of mandamus at the Federal Circuit, 2008-2021This data raises the question: Does the lack of precedent and the skewed nature of the outcomes in it matter? Even if every Federal Circuit § 1404(a) mandamus decision were treated as binding precedent, the fact-intensive and case-specific nature of the § 1404(a) inquiry arguably permits a judge (whether a district judge or a Federal Circuit judge deciding a mandamus petition) to justify almost any outcome in a given case. Moreover, as a matter of Federal Circuit choice-of-law doctrine, transfer of venue issues that arise in patent cases, as well as the standard for obtaining the extraordinary writ of mandamus, aren’t even governed by Federal Circuit precedent—they’re governed by the precedent of the regional circuit from which the case arises.

Nevertheless, we think there are at least three reasons to be concerned about the current state of appellate precedent on mandamus and convenience transfer in patent cases.

First, it is strange that there is so little binding law on such important issues. In the regional circuits, mandamus decisions on transfer of venue are almost nonexistent. (From 2019 through 2021, there was only one, total.) And the same goes for mandamus more generally: as we report in more detail in our article, over the past three years, the Federal Circuit has granted roughly the same number of mandamus petitions (24) as every other federal court of appeals combined. Yet none of this Federal Circuit case law is “law” in the way lawyers usually think about appellate decisions that are labeled as “precedential.”

Second, the lack of binding precedent on venue-related mandamus illustrates the problematic nature of the Federal Circuit’s choice-of-law rules more generally, under which some legal issues that frequently arise in patent cases are not governed by the (often ample) Federal Circuit precedent on the issue. Other notable issues, in addition to venue and mandamus, that are not actually governed by Federal Circuit decisional law include: the standard for pleading a claim of patent infringement, the criteria for granting injunctive relief for patent infringement, and the substantive standards governing claims in other areas of federal IP law, such as copyright and trade secrets. (For a thoughtful critique of the entire concept of “circuit law,” see Tommy Bennett’s forthcoming article, There Is No Such Thing As Circuit Law.)

Finally, the Federal Circuit’s venue-related mandamus precedent (or, the lack thereof) provides another example of how the Federal Circuit’s decisions about whether to designate a ruling as precedential or nonprecedential can distort perceptions about what the court is really doing. For instance, as one of us showed in a prior study with Mark Lemley, the Federal Circuit upholds the validity of a patent over a challenge on patentable subject matter grounds about 20% of the time when it decides the case in a precedential opinion. In nonprecedential opinions and summary affirmances under Federal Circuit Rule 36, however, the court upholds the validity of a patent challenged as lacking patentable subject matter less than 2% of the time. Similarly, on § 1404(a) mandamus petitions, a review of precedential decisions makes it look like over three-quarters of them are granted. But, in reality, the grant rate is less than one-third.

What should be done to alleviate these concerns? For starters, the Federal Circuit should reconsider its needlessly complex, unpredictable—and arguably meaningless—choice of law regime. (We tend to think that most lawyers and judges treat the Federal Circuit’s § 1404(a) mandamus decisions as binding, even if they are not as a matter of formal doctrine.) Instead, the Federal Circuit should simply apply its own precedent to all federal issues that arise in patent cases. In addition, the Federal Circuit could be more conscientious when deciding whether to designate mandamus decisions as precedential, making sure that its precedential rulings are more representative of the population of mandamus decisions as a whole. More fundamentally, we might question whether the precedential/nonprecedential distinction continues to make sense in an age where the internet makes it easy to access the vast majority of federal appellate decisions (though certainly not all of them).

Thaler v Vidal: Oral Arguments on Monday

Patent

By Jason Rantanen

On Monday, June 6, the Federal Circuit will hear oral arguments in Thaler v. Vidal,  covered on PatentlyO here.  Dr. Thaler  claims that his AI system, DABUS, has invented a new technology and should be named as its inventor on the patent. Although access to the Federal Courts Building remains restricted, you can listen to the arguments live at https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/. The court’s long had a practice posting recordings of oral arguments, but it’s great that they’re also making the audio available in real time.

If you’re interested in more context, students in Professor Colleen Chien’s, AI and the Law class wrote a series of blog posts covering the issue, including a post on Dr. Thaler’s legal arguments, a post on the DABUS technology, patents and patent applications, and the results of a small survey of patent prosecutors on AI in their fields.

Read more at Santa Clara’s AI and the Law for Social Impact and Equity blog!

A patent small claims court – what do you think?

Patent

By Jason Rantanen

The Administrative Conference of the United States (ACUS) is an independent federal agency that’s charged with recommending improvements to administrative process and procedure.  The position of Chairman is currently vacant, so the Vice-Chairman, Matthew Lee Wiener, is serving as Acting Chair. A key aspect of ACUS is soliciting  input from the public.

ACUS is conducting a study on behalf of the USPTO to examine “issues associated with and options for designing a small claims patent court.”  It recently published a request for public comments on the idea of a small claims patent court.  From the notice in the Federal Register:

Since at least the late 1980s, concerns have been raised that the high cost of
patent litigation deters small- and medium-sized enterprises, including
those owned by traditionally underrepresented groups, from seeking
to enforce their patents. Policymakers, scholars, and organizations have studied
whether a small-claims procedure is needed for resolving patent disputes.

They have reached different conclusions and proposed different actions.
The Department of Commerce has also considered the possibility of a
small claims patent court. Most recently, in December 2012, the USPTO
issued a Federal Register notice requesting public comment on ‘‘whether
the United States should develop a small claims proceeding for patent
enforcement’’ (77 FR 74830 (Dec. 18, 2012)).

Given ongoing interest in the topic, USPTO has engaged ACUS to conduct
an independent survey and analysis of issues associated with and options to
consider in designing a small claims patent court. A report resulting from the
study will ultimately be submitted to Congress and will address, among other
topics, whether there is a need for a small claims patent court, the feasibility
and potential structure of such a court, and the relevant legal, policy, and
practical considerations in establishing a small claims patent court.

Although ACUS is seeking all comments on the topic, they’ve specifically pointed out these areas of interest:

1. Whether there is need for a small claims patent court;

2. The policy and practical considerations in establishing a small
claims patent court;

3. The institutional placement, structure, and internal organization of a
potential small claims patent court, including whether it should be
established within the Article III federal courts, as or within an Article I court,
or as an administrative tribunal;

4. The selection, appointment, management, and oversight of officials who preside over proceedings in a potential small claims patent court;

5. The subject-matter jurisdiction of a potential small claims patent court,
whether participation in such proceedings would be mandatory or
voluntary, and whether parties can remove cases to another administrative
tribunal or federal court;

6. The procedures and rules of practice for a potential small claims
patent court, including, as relevant, pleadings, discovery, and alternative
dispute resolution;

7. The remedies that a potential small claims patent court would be able to
provide;

8. The legal effect of decisions of a potential small claims patent court; and

9. Opportunities for administrative and/or judicial review of small claims
patent court decisions.

While I forsee lots of issues associated with a small claims patent court, I would imagine that the issue preclusion issues arising from an invalidity determination would be need especially carefully thought out, as well as whether patent owners could use this mechanism to bring large quantities of suits against consumers/end users who lack the resources to adequately defend themselves against a patent infringement claim.

Comments are due by July 5, 2022, and can be submitted at “info@acus.gov,” with “Small Claims Patent Court Comments” in the subject line of the message.  Remember that submitted comments may be made publicly available.

Credit to Jeremy Graboyes for bringing this to my attention.

Guest Post by Prof. Contreras: A Statutory Anti-Anti-Suit Injunction for U.S. Patent Cases?

Patent

Guest Post by Professor Jorge L. Contreras

On March 8, 2022, five U.S. senators[1] introduced the “Defending American Courts Act” (DACA) in the Senate Judiciary Committee.  If enacted, DACA would penalize parties that assert foreign anti-suit injunctions (ASIs) in U.S. patent infringement proceedings, effectively creating a statutory “anti-anti-suit injunction” (AASI) applicable in all courts across the U.S.  In this post, I briefly consider the reasons behind the DACA and its potential impact.

The Controversy over ASIs in FRAND Cases

The controversy over ASIs has been brewing for several years.  As I have discussed at length elsewhere, ASIs are in personam procedural remedies that have existed under the common law for centuries. Essentially, an ASI is issued by a first court to prevent a party from pursuing litigation in a second court when it would interfere with the proceedings in the first court. ASIs have been issued routinely by courts in the U.S. and UK, for example, to prevent a party from pursuing litigation over a matter that is subject to an arbitration agreement.

Beginning in 2012, however, ASIs emerged as litigation tools in suits involving the licensing of standards-essential patents (SEPs).  Under the rules of several major standards-development organizations (SDOs), SDO participants that hold patents that are essential to products implementing the SDO’s standards must license those patents to product manufacturers (implementers) on terms that are “fair, reasonable and nondiscriminatory” (FRAND).  Because SDOs, as a rule, do not specify the level of FRAND royalties, SEP holders and implementers sometimes disagree over the amounts that should be paid. Litigation ensues, both as to the SEP holder’s compliance with its FRAND commitment, and the implementer’s infringement of the SEPs (given that it does not yet have a license).  And because many of the markets for standardized products (e.g., smartphones, laptops and gaming devices) are international, litigation is often prosecuted in several countries simultaneously.

In 2012, Microsoft and Motorola were engaged in such a dispute.  Microsoft sued Motorola for violation of its FRAND commitments to two SDOs in a U.S. district court.  Motorola brought an infringement action against Microsoft in Germany.  The German court, finding infringement, issued an injunction against Microsoft’s infringing activity in Germany.  Microsoft then sought an ASI from the U.S. to prevent Motorola from enforcing the German injunction.  The district court granted the ASI on the basis that the parties were the same, the resolution of the U.S. matter would dispose of the German matter, and the continuation of the foreign litigation would frustrate U.S. policies against avoiding inconsistent judgments, forum shopping and engaging in duplicative and vexatious litigation (871 F. Supp. 2d 1089, 1098-100 (W.D. Wash. 2012), aff’d 696 F.3d 872 (9th Cir.)).

ASIs and FRAND Litigation in China

In 2017, the UK High Court (Patents) established a global FRAND royalty rate in Unwired Planet v. Huawei, a case involving the infringement of a handful of UK SEPs.  Courts in China soon followed suit, assessing FRAND rates applicable around the world (Peter Yu, Yu Yang and I discuss this trend here). In response, parties litigating FRAND cases in the U.S. sought ASIs to enjoin their counterparties from pursuing those actions in China, at least until U.S. courts could make their own FRAND determinations.  In at least two of these cases, U.S. courts issued ASIs prohibiting actions in China (TCL v. Ericsson, 2015 U.S. Dist. LEXIS 191512 (C.D. Cal.), and Huawei v. Samsung, No 3:16-cv-02787-WHO (N.D. Cal., Apr. 13, 2018) – both cases are discussed here).

Then, beginning in 2020, Chinese courts began to issue ASIs of their own, this time prohibiting competing actions in the U.S., Europe, India and elsewhere.  During the course of 2020, Chinese courts, including the Supreme People’s Court, issued an unprecedented five ASIs to prevent parties from pursuing foreign actions that could interfere with their own proceedings (these ASIs are discussed here).

In response to this move, courts in the U.S., Germany, France and India began to issue anti-anti-suit injunctions (AASIs), prohibiting the parties before them from seeking ASIs (discussed here and here and here).  Not surprisingly, some courts, including those in China, then issued anti-anti-anti-suit injunctions (AAASIs) to prevent parties from seeking AASIs – a procedural spiral that I have referred to as “anti-suit injunctions all the way down”.

Political Responses to Chinese ASIs

The increasing use of ASIs by Chinese courts has led to political responses in the U.S. and Europe.  In February, the European Union filed a complaint in the World Trade Organization over China’s lack of transparency in issuing ASIs against European parties. And in April 2021, the U.S. Trade Representative described China’s increasing use of ASIs as “worrying” in her Special 301 Report.

The DACA also seeks to address this situation.  Senator Thom Tillis, in introducing the bill, stated “The Chinese Communist Party’s attempt to make Chinese courts the world arbiter of intellectual property must be stopped.” The bill’s sponsors explain that its purpose is “to prevent China from stealing intellectual property from American companies through their corrupt court system.”  Thus, while the text of DACA speaks to all “foreign” ASIs, the bill seems targeted directly at Chinese proceedings.

The Defending American Courts Act

If enacted, DACA would impose two types of penalty on a party that seeks to restrict an action for patent infringement before a U.S. court or the International Trade Commission (ITC) through the assertion of a foreign anti-suit injunction.  First, the party is prohibited from challenging the asserted patent at the Patent Trial and Appeals Board (PTAB) (Sec. 2(c)).  Second, if the party is found to infringe the patent, the infringement will be presumed to be “willful” for purposes of enhancing damages under Section 284 of the Patent Act, and the action will be deemed “exceptional” when determining whether to award attorney fees under Section 285 (Sec. 2(b)).

The text of DACA is not particularly detailed, leaving open many questions regarding the proceedings, both foreign and U.S., that would be affected (e.g., Does DACA affect PTAB actions initiated prior to the assertion of a foreign ASI? If so, is there any effect on preclusion of district court invalidity challenges under the recent CalTech v. Broadcom case? Is an action still deemed “exceptional” for awards of attorneys’ fees even if the asserted patents are eventually invalidated?)  Hopefully some of these gaps will be filled as and if the bill moves through committee.  To this end, DACA also calls for the USPTO to conduct a study of “the harms resulting from anti-suit injunctions” (Sec. 3(a)(2)) within one year of the enactment of the Act.  Perhaps it would make sense for this study to be conducted before legislation like DACA is adopted, to determine what harm, if any, should be addressed, and what the most appropriate response might be.

DACA as a Legislative AASI?

Despite the rhetoric accompanying its introduction, the measures that would be imposed by DACA are relatively modest. While one could conceptualize DACA as a legislative version of the AASI, it does not actually prohibit parties from seeking or asserting foreign anti-suit injunctions in U.S. tribunals, nor would it direct U.S. courts to issue AASIs or take other actions in response to the assertion of foreign ASIs.

In fact, the AASIs already issued by courts in the U.S., Europe and India in response to Chinese ASIs are generally more punitive than the contingent measures that would be imposed under DACA.  For example, in Ericsson v. Samsung, No. 2:20-CV-00380-JRG (E.D. Tex. Jan. 11, 2021), a U.S. district court responded to an ASI issued to Samsung by a court in China by prohibiting Samsung from enforcing the ASI against Ericsson (under penalty of contempt) and ordering Samsung to indemnify Ericsson against any monetary penalties imposed by the Chinese court.

Thus, while the penalties imposed by DACA are meaningful and may, indeed, dissuade some litigants in U.S. matters from seeking foreign ASIs, it is not clear that they offer greater deterrents than the AASIs that U.S. courts are already empowered to issue.

DACA, of course, offers an ex ante deterrent, imposing a penalty before a foreign ASI is sought or asserted in the U.S.  However, courts in Germany have recently begun to issue preemptive AASIs ordering parties who have not yet initiated any actions in China not to do so, given the “prevalent trend of Chinese companies filing ASIs” (discussed here and here), and a Dutch court has also indicated that it might consider doing so.

What Goes Around Comes Around

A final thought: despite the explicit anti-China tenor of the comments accompanying DACA’s introduction, we should remember that ASIs are not Chinese inventions.  They are products of the common law and were first used in FRAND cases by U.S. courts against actions in China.  As my co-authors and I argue here, the Chinese courts effectively “transplanted” ASIs to China from the U.S. and UK.

Like ASIs themselves, it is not unlikely that the enactment of DACA in the U.S. will trigger foreign responses in kind.  What would happen if China, Germany and other countries adopted legislation similar to DACA, preventing U.S. companies in foreign courts from enforcing ASIs issued by U.S. courts? As a procedural mechanism in U.S. and foreign proceedings, the ASI has many legitimate uses.  Yet legislative deterrents imposed by other countries could limit the use of ASIs by U.S. parties when appropriate.  One risk of unilateral measures such as DACA is that they could trigger reciprocal actions by other countries that could cause more harm than good to U.S. companies and markets.  It is thus important that policy makers consider fully both the potential benefits of DACA, as well as its potential costs.  As noted above, the study called for under Section 3(a)(2) of DACA might be useful to conclude prior to the enactment of legislation of this nature.

[1] Thom Tillis (R-NC), Chris Coons (D-DE), Tom Cotton (R-AR), Mazie Hirono (D-HI), and Rick Scott (R-FL)

Writs of Mandamus, Data Accessibility, and the Federal Circuit

Patent

By Jason Rantanen

Spring 2022 is roaring forward – and this semester is an especially busy one for me. I’m teaching my usual Introduction to Intellectual Property course, together with an especially large Civil Procedure class (which at Iowa is 4 credit hours), and the Iowa Innovation, Business & Law Center is running an exciting speaker series on Genetics, Law and Society.  All of this has given me a terrific opportunity to really think about procedure, law, and data.  And it’s fortuitously come at a time when several related projects are coming to fruition.  In light of that, rather than write a bunch of mini-blog posts on my current projects, I thought I’d just write about them all at once.

A few months ago, Jonas Anderson, Paul Gugliuzza and I ran a series of posts on our project examining petitions for writs of mandamus at the Federal Circuit. I’m delighted that our paper, Extraordinary Writ or Ordinary Remedy: Mandamus at the Federal Circuit, forthcoming in the Washington University Law Review, is now available for everyone to read. (As usual with SSRN, if you get an infowall, you can bypass it by clicking the skip option on the login page; it’s there, although SSRN sometimes buries it).   We find that while overall mandamus is rarely granted by the Federal Circuit, in a key area–petitions involving venue arising from Texas–that is not the case.  We argue that the reason is not because the Federal Circuit is behaving in an “exceptionalist” way, but that the issue flows from systematic flaws in the patent litigation system that the Federal Circuit has little power to fix—namely, rules of venue and judicial case assignment that encourage plaintiffs to shop not just for favorable courts, but for individual judges.  There are lots of little nuggets of data in there as well for data fiends, including on the issue of petitions for permission to appeal.  Read it here:  https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4049186

One of the issues that we observed while writing this paper was the reality that, as Merritt McAlister had pointed out in Missing Decisions, many appeal terminations are not readily accessible to the public.  While opinions are routinely posted to federal appellate courts’ websites, non-opinion orders terminating cases rarely are (including a number of terminations of petitions for writs of mandamus).  I dug into this issue in more depth in a response essay that the University of Pennsylvania Law Review published last month called Missing Decisions and the United States Court of Appeals for the Federal Circuit, in which I compared all appeals in PACER to what the Federal Circuit actually publishes on its website, as well as what’s available in WestLaw and Lexis.  Overall, I observed that while the Federal Circuit has historically been very good at making opinions and precedential terminating orders available on its website, and has also been very good at posting Rule 36 summary affirmances since 2007, nearly all other orders terminating an appeal (including dismissals for lack of jurisdiction) were not.

I’m thus thrilled that it appears that the Federal Circuit has changed its practice.  In the last few weeks, the Federal Circuit has changed its  opinions and orders page to include dispositive orders:

The Federal Circuit publishes online all opinions, precedential orders, dispositive orders in writs petitions, Rule 36 judgments, non-ministerial orders relating to rehearing or en banc petitions or actions, dispositive orders constituting either judgment or mandate, and any errata notice or revised version for any of the preceding document types. …

This is an excellent balance between the morass of data that the court made available on its website in 2011-2014 (including orders on motions to extend time), and just posting opinions & rule 36 affirmances as that the court had previously done.  And based on my review of what they’ve been posting, they seem to be carrying through with this goal of making all dispositive orders available. These orders will provide more context for attorneys about the Federal Circuit’s decisionmaking, especially when it comes to areas that folks may not have really focused on but which were actually determinative. It’ll also ensure that legal research databases contain these orders going forward. I really want to commend Chief Judge Moore and the whole Federal Circuit, its clerks office, and the data management folks for making these key orders available.  Thanks to Dmitry Karshtedt for alerting me to this change!

That all leads into my third project in this set: an empirical study of data accessibility in published scholarship – that is, the accessibility of data once a researcher or research team has gathered all the data, analyzed it, and a law journal has published the article using it.  The draft of that paper, entitled Legal Research as a Collective Enterprise: An Examination of Data Availability in Empirical Legal Scholarship, is now available.  To conduct our study, my co-author Abigail Matthews and I, together with my amazing team of research assistants, examined all articles published in top-20 law journals by impact ranking, together with articles published in the Journal of Empirical Legal Studies, to ascertain (1) whether the article was an empirical legal study, and (2) for empirical legal studies, whether the article explained where to obtain the final dataset used in the article.  Overwhelmingly, we found that empirical studies published in law reviews don’t provide access to the data used in the study–at least by telling readers in the article itself where to find the data. Our finding validates a smaller sample observation that Chin et. al. just released finding similarly low levels of data accessibility, and we also find that factors that we expected to make a difference, such as less data available for qualitative studies, increased data availability over time, and greater data availability in the Journal of Legal Education (which has had a “data encouragement” policy since its inception) were either neutral or actually significant in the opposite direction than we expected.  While this paper may not be for all readers, if this is a subject that’s interesting to you, you can read the draft here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4057663

Guest Post: Assessing Responses to the PTO’s 2021 Patent Eligibility Study

Patent

Guest Post by Victoria T. Carrington and Professor Jorge L. Contreras.

Background 

It should be no surprise to readers of Patently-O that many are unhappy with the Supreme Court’s jurisprudence regarding patent eligibility under Section 101 of the Patent Act. In response to various calls for “reform” of patent eligibility jurisprudence, on March 5, 2021, Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR), and Christopher Coons (D-DE) requested that the US Patent and Trademark Office (PTO) conduct a study regarding public views on “how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.” The Senators also asked the PTO to evaluate the responses and provide a detailed summary of its findings by March 5, 2022. The PTO released its public request for information (RFI) on July 9, 2021. The original deadline for response was September 7, 2021, which the PTO extended until October 15, 2021. A total of 145 comments were submitted before the deadline. In advance of the official assessment, we have reviewed and tallied these public comments for those who are eager for the results in advance of the official release.  

Methodology 

We reviewed each submission that was made in response to the PTO’s 2021 Patent Eligibility RFI, as posted by the USPTO on Regulations.gov. Information that we noted and tracked included submitter name, submitter industry/specialty, date submission received, submitter location (if listed), and the general tenor of the submitter’s comments. 

Findings 

Demographics 

There was a total of 145 submissions. Some individuals submitted two comments, and one individual submitted four identical comments. Fifteen submissions were anonymous. We combined multiple submissions from the same commenter, yielding a total of 137 unique comments. 

Figure 1 below shows the breakdown of industry affiliation of submitters. The largest group of submitters (28%) were patent attorneys and/or law firms that did not have a clear industry affiliation. Companies and trade associations were broadly classified as “High Tech” (18%) or “Life Sciences” (14%). Submissions classified as “Business” (11%) identify those made by venture capitalists and submitters focused on finance or entrepreneurship like the Market Institute. “Other” (8%) industries represented included cross-industry trade associations such as the Association of University Technology Managers (AUTM) as well as individuals, organizations, and companies that otherwise did not readily fit into the other specified classifications such as the mining conglomerate Rio Tinto, and Acushnet, a which makes golf equipment and apparel. 

Sixty-three submitters specified a location. California had the highest number of submissions (11). Six submissions came from outside of the U.S.: Canada, Japan, Macedonia, Switzerland, and two from the United Kingdom. 

Analysis of Positions 

We analyzed the content of each submission to determine whether the submitter generally viewed current jurisprudence regarding patent eligibility in a positive or a negative light or adopted a neutral stance. Figure 2 below illustrates the breakdown of submissions among these categories, excluding 19 submissions that did not actually address the question of patent eligibility. 

Figure 3 shows the comparison of the general tenor of submissions made by industry classification. 

Below we discuss these findings in more detail. 

Neutral Comments 

Four submissions adopted a neutral standpoint, neither praising nor criticizing current patent eligibility jurisprudence. One such comment was submitted by Professors Maya M. Durvasula, Lisa Larrimore Ouellette, and Heidi L. Williams. It effectively critiques the empirical validity of the PTO study itself: “Many have argued—largely based on anecdotes or descriptive data—that recent changes in patent eligibility caselaw have either increased or decreased innovation. Here . . . we argue that neither view is supported by the available empirical evidence.” “It is unclear whether limits on patent eligibility increase or decrease innovation.” “Current evidence does not demonstrate whether the Alice/Mayo framework is good or bad for social welfare in contested fields [specifically the biomedical and software markets].” 

Positive Comments 

Forty submissions (27.6%) describe current patent eligibility jurisprudence in a positive light, noting general satisfaction with the Supreme Court’s eligibility case law and its application within the market. Notable commenters in this camp include the American Civil Liberties Union (ACLU), Google, and the Association of American Medical Colleges (AAMC). 

The ACLU also criticized the framing of the PTO study, observing that “[t]roublingly, the RFI seems to adopt the same framing as the Senators’ request, presupposing that patent-eligibility jurisprudence lacks clarity and consistent application and that this lack of clarity is causing harms. Neither the Senators’ letter nor the RFI provides any basis for the allegation that the law is inconsistent or unclear . . . .” The ACLU points to the fact that there is a high affirmance rate of subject matter eligibility decisions made by district courts and the PTAB to argue that current patent eligibility jurisprudence is relatively clear. It also points to statements in Federal Circuit Opinions showing that judges are able to apply 101 in a clear and consistent manner. 

Google commented that “robust data supports that the balance in our IP system has allowed patenting in emerging technologies to flourish. . . . We urge the PTO to reject the premise set forth in the RFI that ‘the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing and artificial intelligence.’” 

From the life and health sciences perspective, the AAMC drew on public health and access considerations, noting “that law and policy must protect and balance the public good, including access to timely patient care, with proprietary rights in support of science and technology, particularly in the fields of medicine and public health. We believe that these principles are reflected in current jurisprudence.” 

Negative Comments  

Eighty-two submissions (56.6%) expressed at least one major concern with the state of current patent eligibility jurisprudence. The two primary concerns were that (1) eligibility requirements are too unclear and/or uncertain and (2) too many useful inventions are currently ineligible for patent protection based on current eligibility requirements. 

International Business Machines (IBM) specifically critiqued the judicially created ‘abstract idea’ exclusion from patent eligibility, noting that it “continue[s] to unnecessarily generate wide uncertainty about the validity of information technology patents and to undermine the patent incentive. It is a significant concern to innovators and patentees, who rely on the patent system to protect their investment in computer-related innovations. This uncertainty reduces public confidence in issued patents, making it harder for inventors to benefit from those patents.” 

The “too-many-inventions-are-ineligible” camp includes the IP Law Section of the State Bar of Nevada. It specifically highlights that there has been an “[o]verly broad application of” In re Smith to reject electronic gaming machine inventions under Section 101. 

Novartis’s submission sums up both reasons most submitters are unsatisfied with patent eligibility: the uncertainty and the ineligibility of specific important inventions. 

Figure 4 illustrates the relative frequency of these different negative arguments made regarding patent eligibility. 

Conclusion 

This preliminary assessment shows a range of views expressed by public commenters in response to the PTO’s Section 101 Patent Eligibility Study. There is clearly no majority or consensus view, meaning that any legislative response to the dissatisfaction voiced by some over current judicial eligibility decisions should be taken with care and provide further opportunities for public input and debate. 

The data for this post is archived at Victoria Carrington, 2022, “Public Comments on PTO’s 2021 Patent Eligibility Study”, https://doi.org/10.7910/DVN/DQWHHO, Harvard Dataverse, V1.

Guest Post: Community Ties in Patent Litigation

Patent

Guest post by Professors J. Jonas Anderson and Paul Gugliuzza.  Their article Federal Judge Seeks Patent Cases was recently published in the Duke Law Review, and I’m currently working on a project with them on writs of mandamus at the Federal Circuit. – Jason

Following tradition, on the last day of 2021, Chief Justice Roberts provided his annual year-end report on the federal judiciary. In the report, he addressed three issues that have “been flagged by Congress and the press” over the last year. Among them was “the arcane but important matter” of judicial assignment and venue for patent cases.

Let the arcana commence! Let’s talk about judicial assignment of patent cases.

For those unfamiliar with how cases are assigned in district courts, let’s use the Western District of Texas as an example. The Western District of Texas is a vast district, stretching more than 600 miles across from El Paso (on the western limits of the state) to Waco (which is much nearer to Louisiana than New Mexico). When a plaintiff files a suit in the Western District, the suit is assigned to the judges within one of seven divisions that make up the district: Austin, Del Rio (Alpine), El Paso, Midland/Odessa, Pecos, San Antonio, and Waco. But the case is not assigned randomly to one of the divisions; rather, the plaintiff selects (from a drop-down menu) to which of the divisions the case will be assigned. Only after a division is selected by the plaintiff does random assignment occur, with each judge within the division receiving a certain percentage of the cases filed, per a standing order filed (and updated in 2021) by the Chief Judge of the Western District of Texas.

But for certain divisions within the district, individual judges receive 100% of the cases filed, meaning plaintiffs can pick their judge. In the Western District of Texas, this 100% assignment occurs in the Midland-Odessa division (assigned to Judge David Counts), the Pecos Division (also Judge Counts), the Del Rio Division (Judge Alia Moses), and—most importantly for patent law—the Waco Division (Judge Alan Albright). That means that Western District of Texas plaintiffs can “judge shop” for the judge they prefer, at least in those four divisions. Judge shopping is, shockingly, possible in a large portion of district courts across the land, not just in Texas.

Thus, it is great to hear that Chief Justice Roberts is investigating the problem of judge shopping. The practice of “judge shopping” has long been frowned upon by courts; unlike forum shopping, in which the plaintiff chooses the court that appears to be favorable, judge shopping refers to the practice of the plaintiff choosing the specific judge who tries the case. The due process and fairness concerns inherent with a plaintiff choosing who judges their case has recently been of interest to members of the Senate Judiciary Committee as well.

Yet despite the Chief Justice’s approval of random case assignment, he noted in his year-end report that there is an “important and sometimes competing” value at issue with mandating random assignment of patent cases: Congress has shaped the federal courts into districts and divisions “so that litigants are served by federal judges tied to their communities.” Thus, according to Chief Justice Roberts, randomization that severs litigants from federal judges in their communities presents a conflict of values that the judiciary must resolve.

This is largely irrelevant for patent cases.  There is generally little to no local community that would be inconvenienced by random assignment of cases. For proof, just take a look at Judge Albright’s docket. The overwhelming majority of patent plaintiffs in Waco are not from Waco, the Western District, or even Texas; they are filing in Waco because they know that they will get Judge Albright, not because Waco is their “community.” In fact, in reviewing the over 800 Waco patent plaintiffs in 2020, we could only find two plaintiffs with corporate headquarters in Waco (more on that later). To be sure, there are quite a few Waco plaintiffs with headquarters in Austin (within the Western District of Texas) or Dallas (in the Northern District of Texas). But, if one is truly concerned about judges being tied to local communities, the Austin division of the Western District of Texas or the Dallas division of the Northern District of Texas would be better venues in which to litigate for those companies.  If anything, current practice draws litigants away from local communities and into far-flung districts based on the perceived strategic and procedural peculiarities of particular judges.

The two exceptions to the no-Waco-connection rule actually prove that patent plaintiffs do not have special local ties to Waco. The two exceptions are WSOU Investments and Voip-pal.com. These companies filed 181 patent suits in Waco in 2020, 169 of which were filed by WSOU. WSOU opened an office in Waco, but apparently uses the office just to avoid having its cases transferred away from Waco.  WSOU is a litigation-funded assertion vehicle run by Craig Etchegoyen, who himself has run or controlled non-practicing entities like Uniloc and has filed hundreds of lawsuits in Texas, but who himself lives in California.  As the Federal Circuit explained in In re: Juniper Networks:

[WSOU]’s presence in Waco appears to be both recent and relatively insubstantial. The office was established only a few months before the [2020] complaints against Juniper were filed, and the activities of the office are largely tied to bringing lawsuits in that court. [WSOU] has only two employees who work from Waco, one of whom is its in-house attorney responsible for litigation. The principal officers of [WSOU] are located in California.

This is an example of a local office established simply for the purpose of judge-shopping. Certainly, these cannot be the sorts of community interests that Chief Justice Roberts is worried about undermining with randomization of case assignment.

In fact, the proliferation of intra-division transfers of patent cases from Waco to Austin demonstrates that Waco is not generally the location in which plaintiffs want to litigate; it is the place in which the judge they prefer is located. For roughly his first two years on the bench, Judge Albright had a practice of granting transfer from Waco and Austin, yet remaining the judge on the case. This practice appears to have resulted in other judges stepping in to end the practice, but the fact that plaintiffs were selecting Waco (and thus Judge Albright) and then turning around and requesting that the case be transferred to Austin—a division they could have selected in the first place—demonstrates that there is often not much convenience, or local interest, gained by having the case tried in Waco. The only thing many of these plaintiffs want with Waco is Judge Albright; as long as he is on the case, the plaintiffs would prefer to be in Austin.

We have recently written an article in which we proposed a two-prong solution to the judge shopping problem. We propose fixing the judicial assignment process by ensuring that patent cases are assigned randomly among multiple judges and by altering the patent venue statute to require that a plaintiff demonstrate that venue exists within the division (not merely the district) in which the case is assigned. These two changes are simple to implement and would make it harder for plaintiffs to shop for individual judges—a practice that is flatly inconsistent with notions of judicial fairness and impartiality.

Federal Circuit Dataset & Stats: 2021 Update

Patent

By Jason Rantanen

Happy 2022! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, which contains information on all Federal Circuit decisions posted to the court’s website and and the court’s dockets.

Figure 1

Figure 1

Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. Once again, the highest number of merits terminations arose from the PTO. The most notable change for 2021 was a drop in the number of decisions arising from the district courts: from 197 in 2020 to 142 in 2021. These represent individual documents (i.e.: a single opinion or Rule 36), not docket numbers, but there’s also a 25% drop when looking at the data on a per-docket number basis.  Overall, the Federal Circuit issued 653 merits decisions in regular appeals in 2021 as compared with 690 in 2020.

Figure 2

 

Figure 2  shows the number of opinions versus Rule 36 summary affirmances arising from the District Courts and PTO. Relative to recent years, the portion of appeals that were summarily affirmed was substantially lower. Thirty-five percent of appeals arising from the PTO were summarily affirmed—much less than 2019, when almost half of the appeals arising from the PTO were Rule 36’d.

You’ll also notice that the number of written opinions that the Federal Circuit issued in appeals arising from the district courts was the lowest it’s been at least since 2010, while the number of written opinions arising from the PTO was the highest. The type of opinion paints a different picture, however: as Figure 3 shows, while around half of the opinions arising from the district courts were designated as “precedential,” only 25% of the opinions arising from the PTO were. To me, Figure 3 suggests that the Federal Circuit perceives that it has addressed many of the novel questions created by the AIA and inter partes review, and sees its jurisprudence as more settled than it was a few years ago.

Figure 3

Figure 3

Interestingly, this does not seem to mean that affirmance rates in appeals arising from the PTO are increasing. For one thing, they’re already quite high: over the past decade, the Federal Circuit has affirmed the PTO about 80% of the time.  Nor did they increase in 2021. Last year, the Federal Circuit affirmed the PTO in 78% of its decisions. Another observation is that even though the court’s use of Rule 36’s in appeals arising from the PTO has dropped over the past two years, its affirmance rate has remained about the same.

Figure 4

Figure 4

The Federal Circuit did, however, affirm district courts more frequently last year than any previous year.  The average rate at which the court affirmed-in-full district courts from 2010-2021 was 69% (indicated by the purple line); last year its affirmance rate in these appeals was 79%.

I didn’t create a separate graph for dissents and concurrences, but overall Federal Circuit judges wrote about the same number of dissents in 2021 as in 2020 (35 in 2021 versus 37 in 2022), but wrote a lot more concurring opinions (23 in 2021 versus 10 in 2020).

Figure 5

Figure 5

A new addition this year is a dataset of all Federal Circuit dockets since 2000 based on data from PACER. Figure 5 shows the number of appeals docketed at the Federal Circuit by origin. For the past few years, the court has received well over a thousand appeals per year. That number fell a lot in 2021—especially appeals arising from the PTO and the MSPB. (The MSPB has not had a quorum since 2017, and has not had any sitting members since 2019.)  The downstream consequence of this is that we can expect to see fewer Federal Circuit decisions in appeals arising from the PTO in 2022.

What about petitions for writs of mandamus? Jonas Anderson, Paul Gugliuzza and I are finishing the draft of our paper on those, but it’s no spoiler to say that orders on petitions for writs of mandamus are a big part of the Federal Circuit story for 2021.  Last year the court issued 52 merits orders on petitions for writs of mandamus, as compared with 35 in 2020 and 19 in 2019. For more on those, here’s a link to our series.

You can access the full document dataset here and generate a variety of charts using the widget, or download the data and plug it into your favorite analysis program.  In addition, both the docket and document dataset are archived on the Harvard dataverse, along with the Stata code for generating the tables for the above graphs.  Methodological details are provided in this working paper. Or, if there are specific aspects of the data that you’re curious about, email me or DM me on Twitter and if I’m able to, I’ll take a look.

Thanks to my research assistants for help reading and coding all of the court’s decisions especially Matt Fuentes, Daniel Kieffer, Brenna Kingyon, Lindsay Kriz,  Sara Leibee, Ryan Meger, Madison Murhammer Colon, Charles Neff, Riley Stanton, Connor Williams & Allison Williamson.

Guest Post: Design Protection and Functionality: Does the PTO or the Copyright Office Apply a More Rubbery Stamp?

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Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law, and Ella Corren, University of California at Berkeley School of Law, J.S.D. Candidate

In Design Patent Law’s Identity Crisis, presented at the Berkeley Center for Law & Technology’s February 2021 “Design Patents” symposium, we traced the origins of design patent law’s ornamentality/non-functionality doctrine and showed how the Federal Circuit, the nation’s de facto design patent emperor over the past four decades, has turned the doctrine on its head: it has upended the 1902 Act’s intent and reversed three-quarters of a century of regional circuit jurisprudence. So much so that the post-1902 Act regional circuit design patent cases invalidating design patents on functionality grounds would come out oppositely under the Federal Circuit’s lax standards. Those standards led to the absurd result that Apple could disgorge Samsung’s profits on its smartphones because they employed rounded rectangular shapes. We showed that the Patent Act limited design protection to original, ornamental articles of manufacture, and excluded protection for functionality.

BCLT invited practitioners and academics to comment on our analysis. While none of the commentators questioned, no less refuted, our core finding that the Federal Circuit has flipped the ornamentality/non-functionality doctrine, several offered fig leaves to clothe the Federal Circuit’s lax standards for design patent eligibility and infringement. In responding to our article, practitioner Perry Saidman and Professor Mark McKenna suggested that the design patent regime can be justified in part based on the tighter functionality screen that the PTO applies to design patents than the low threshold that the Copyright Office applies to copyright registrations to useful articles.

We found the suggestion that the PTO is more rigorous than the Copyright Office in applying the functionality screen intriguing and decided to test it out: Does the PTO or the Copyright Office apply a more rubbery stamp?. This commentary presents some of our findings.

Before turning to some illustrations, we note that the Compendium of U.S. Copyright Practices, in contrast to the Manual of Patent Examining Procedure, implements limiting doctrines in relatively clear and concise terms. As regards originality, the Compendium states that copyright law does not protect “words and short phrases,” “familiar symbols and designs,” “mere variations of coloring,” spatial format and layout design, blank forms, and common geometric shapes, either in two-dimensional or three-dimensional form.” The Patent Office applies no such limitations, notwithstanding that the design patent statute specifically requires that articles of manufacture be original to obtain design patent protection.

Turning to our findings, we begin with Universal Robots’ “UR5” robot arm. In 2015, it sought copyright registration of this useful article as a sculptural work.

The Copyright Office refused registration on the ground that UR5 “is a ‘useful article’ which does not contain any separable authorship.” Universal Robots appealed the decision to the Copyright Office, arguing that the UR5 contains conceptually separable artistic elements that are not necessary to its performance of its utilitarian function, namely its “raised circular caps containing the stylized ‘UR’ design,” and the ‘“T’ shaped, modular interlocking wrist.” The Copyright Office affirmed its rejection, explaining that the UR5 “does not contain any separable, copyrightable features” because “the caps and wrist of the arm are both integrated parts of the ‘overall shape’ of the arm.” In September 2016, Universal Robots filed a second appeal for reconsideration, in which it contended that since the blue caps are “capable of being physically removed from the robotic arm without altering the useful aspects of the article,” and “are not necessary to the utilitarian functioning of the device,” they are “conceptually separable, artistic and protectable.” Universal Robots also asserted that the T-shaped piece was “designed to achieve a sleek, modem and aesthetically pleasing appearance,” is “not necessary to the utilitarian function of the article,” and could have been designed in many other ways, rendering this part protectable as well. Universal Robots claimed that these elements of the Work “embody more than the mere ‘modicum’ of creativity that is required for copyright registration,” highlighting that the designers are Danish and inspired by the Danish Modem movement.

In rejecting the second appeal, the Copyright Office concluded “that the elements Universal Robots identifies as expressive—namely the plastic caps and the T-shaped piece—could be visualized as works of authorship separate and independent from the Work’s utility.” And that “[e]ven if those features could be deemed separable, however, they simply are not sufficiently original to warrant copyright protection.”

Universal Robots then filed a design application for the UR5 in January 2020. See U.S. Design Patent No. D915,487 (Apr. 6, 2021). The Patent Office granted the design patent in April 2021.

Robotic arms with similar functional configuration have long been the subject of utility patents. See, e.g., U.S. Patent No. 4,273,506 (Jun. 16, 1981) (“Industrial Manipulator for Placing Articles in Close Proximity to Adjacent Articles”).

This pattern of copyright registration refusal/design patent grant is a common occurrence. In another poignant example, the Copyright Office declined registration for the Purple® pillow, concluding that the overall shape of the pillow—featuring an interior grid of hollow triangles—is unprotectable and not capable of conceptual separation from the useful article. The Copyright Office explained that the triangles have an “intrinsic utilitarian function” and thus are useful articles themselves,” noting that Purple’s marketing materials make “clear that these triangles are wholly utilitarian,” including that the Work’s “hundreds of little triangles . . . give the core of the pillow lateral strength so it retains its oh-so supportive, head-cradling comfort all night” and emphasizing the word ‘SCIENCE!’ in all capital letters; and “[e]ven if the grid of triangular prisms was not functional, however, it would not be a basis for copyrightability. The Copyright Office’s refusal to register quoted the Compendium of U.S. Copyright Practices: ‘The Copyright Act does not protect common geometric shapes’ including triangular prisms.”

Nonetheless, the design patent application for the Purple Pillow sailed through the Patent Office. See U.S. Design Patent 909,790 (Feb. 9. 2021) (“Pillow”).

The design patentee continues to emphasize the ergonomic advantages of its pillow design: “Unique to the Purple Harmony Pillow, the Deluxe Hex Grid is specially formulated and engineered for head and neck support. The soft hexagon-shaped air channels optimize the dynamic response and airflow for unbelievable comfort.”).

We explore these and other examples in The Design Patent Emperor Wears No Clothes: Responding to Advocates of Design Patent Protection for Functionality.

These minimalist designs raise serious functionality and originality concerns. They demonstrate the rubber stamp quality of the Patent Office and that the design patent system as currently administered results in significant overprotection of functional features and designs. And even though design patents have “only” 15 years of duration, that length of time can be an eternity in some design markets and substantially diminish competition. The utility patent supremacy/channeling principle is about preserving competition in exactly the same way as trademark’s functionality doctrine—the channeling of functionality protection exclusively to utility patents is meant to subject all other, not sufficiently innovative, functional features to unimpeded market competition.

Guest Post: Patents in Islamic Law

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Professor Tabrez Y. Ebrahim is visiting at Iowa Law this semester, where he’s teaching Cybercrime & Security and Entrepreneurship Law & Ethics.  His research interests are broad, and he recently completed a comparative work examining patents in Islamic law.  Below he offers a synopsis of his work.

Companies and law firms with a transnational presence in Islamic countries should recognize that patents may present different considerations in countries with less secular legal systems. Islamic law has primacy in Islamic countries that comprise nearly one-fifth of the world’s population. Many of these countries are members of Trade-Related Aspects of Intellectual Property Rights (TRIPS), which excludes from patentability certain inventions that offend morality in that society. As Islamic countries have begun to embrace patents in recent decades, theories of patents have presented conceptual and theological debates under classical Islamic law, including for construing patentable subject matter and assessing patent infringement.

Patents in Islamic Law present religious considerations that are unique compared to U.S. patent law. First, there are tensions between intellectual property and Islamic law, which is silent on the permissibility of intangibles yet allows for their interpretation. Second, justifications for patents within Islamic law present ethical and morality considerations based on religious limitations that present public policy choices of patentable subject matter and the ordre public meaning of TRIPS Article 27.2 . Third, public interest should be a consideration not only in terms of a potential harm to plaintiff (who is seeking injunctive relief or preventing importation of an infringing article) in the patent infringement context, but also in terms of justification of patents in an Islamic legal system.

In my recent article, Intellectual Property Through a Non-Western Lens: Patents in Islamic Law, I explain these considerations, analyze why and how patents uncomfortably fit within a religious body of law, and provide a new perspective to the patent law community. The tensions of patents within Islamic law arise since Islamic legal systems are based on Shariah, which considers divine law as encompassing and guiding all aspects of human life, yet allowing for interpretation through fiqh, or human understanding of the divine law.  Below, I briefly summarize my observations and conclusions.

First, Islamic law does not explicitly recognize patents. In addition, there are complexities within Islamic law that impose a prohibition or limitations on patents: (1) one school of Islamic jurisprudence has traditionally required physical possession of a property right; and (2) some scholars have argued patents create monopolistic effects contrary to an Islamic vision of patents. In the article, I provide justifications and reasoning as to how patents can be implicitly derived within Islamic law by drawing upon its secondary sources of law, provide a framework and justifications for their recognition within Islamic law, and describe the gradual change in interpretation of property to include intellectual property within Islamic law.

Second, while recognizing that patentable subject matter is rife with indeterminacy in the U.S, I suggest that it is a social policy choice that that has yet to be molded in Islamic countries. In particular, ethically and morally controversial inventions should be excluded from patentability in Islamic legal systems, which I argue should have initial flagging of such inventions in the patent examination process and should be assessed by my proposed Patent Shariah Board (an independent board of specialized jurists that direct, review, and supervise Islamic jurisprudence pertaining to patents). As such, patent offices in Islamic legal systems should have a diminished role for assessment of patentable subject matter, which would require flagging (but not thorough evaluation) by patent examiners in such countries. Moreover, the interpretation of ordre public meaning of TRIPS Article 27.2 should have differential treatment among Islamic countries based on the underlying Islamic school of jurisprudence and by the degree of primary of religious law.

Third, I suggest that patent infringement, which is in a nascent and unclear state in Islamic legal systems, presents unique considerations in comparison to the U.S. patent system. I argue that public interest, which is a key consideration in Islamic law, is of greater importance in determining sufficient harm in patent infringement than in U.S. patent law (while also serves to provide a justification for patents within Islamic law).

In sum, while justifying patents within Islamic law, I provide theoretically and theologically sound justifications for patents in an Islamic legal system, while I reason that the reach of patents is narrower than in western legal systems due to more prominent morality, ethics, and public interest considerations. In developing the fiqh (or human interpretation of divine law) of patents, I develop a conceptual framework for patents in Islamic law, while recognizing limitations and institutional design for their administration. This project is part of a longer-term research project that seeks to compare the existing U.S. patent system with patents in Islamic law (including similarities between the systems and unique aspects of each system), and provide insights into how companies and law firms seeking to have a transnational patent presence can operate within nations that follow Islamic law.

Read the full article here on SSRN or the Georgia State University Law Review website.

Tabrez Y. Ebrahim is a law professor and a registered U.S. patent attorney. He is an Associate Professor of Law at California Western School of Law, a Scholar at George Mason University’s Center for Intellectual Property x Innovation Policy, a Senior Cyber Law Researcher at William & Mary Law School’s Center for Legal & Court Technology, an Ostrom Visiting Scholar at Indiana University, and a Visiting Fellow at the University of Nebraska.

Patent Law Textbooks: A Micro-Symposium

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By Jason Rantanen

This Friday, November 5, the Iowa Innovation, Business & Law Center will be hosting a first-of-its-kind event (to the best of my knowledge at least): a panel discussion by patent law casebook authors about what makes their textbooks tick.  There are at least eight different patent law textbooks with editions published in the last few years, and we’ve brought their authors together to talk.  The program, entitled Patent Law Textbooks: A Micro Symposium, will be live-streamed via Zoom webinar on from 1:30-4 pm Central.  You can preregister or join here: https://tinyurl.com/PatentCasebookPanel.

The symposium will consist of two panels:

  • Panel 1: Exploring Patent Law Textbooks (1:30 – 2:45 p.m. CT): This panel will feature authors talking about the distinguishing features of their textbooks, the design decisions that they made in creating them, and the pros and cons of self-published and open-access casebooks versus traditional publishers.
  • Panel 2: Publishing Your Own Textbook.  (3:00 – 4:00 p.m. CT) This panel will feature authors talking about their experiences creating an open-access or self-published textbook and tips for others who are thinking about creating their own open-access or self-published textbook, including why they made the copyright license choices that they did.

These panels will feature authors of the following casebooks:

  • Martin J. Adelman, Randall R. Rader, & John R. Thomas, Cases and Materials on Patent Law (West Academic 2019)
  • Daniel H. Brean & Ned Snow, Patent Law: Fundamentals of Doctrine & Policy (Carolina Academic Press 2020)
  • Sarah Burstein, Sarah R. Wasserman Rajec, & Andres Sawicki, Patent Law: An Open Access Casebook (2021)
  • John F. Duffy & Robert P. Merges, Patent Law and Policy: Cases and Materials (Carolina Academic Press 2021)
  • John M. Golden, F. Scott Kieff, Pauline Newman, & Henry E. Smith, Principles of Patent Law: Cases and Materials  (West Academic 2018)
  • Mark D. Janis, Ted M. Sichelman, et. al., Patent Law: An Open-Source Casebook (Law Carta 2021)
  • Jonathan S. Masur & Lisa Larrimore Ouellette, Patent Law: Cases, Problems and Materials (2021)
  • Craig A. Nard, The Law of Patents (Wolters Kluwer 2020)

Hope you can join us!

Guest Post: How It Started…How It’s Going: Venue Transfers in the Western District of Texas

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By Paul R. Gugliuzza, Professor of Law, Temple University Beasley School of Law and Jonas Anderson, Associate Dean for Scholarship and Professor of Law, American University Washington College of Law

The biggest story in patent law over the past three years has been the emergence of the Waco Division of the Western District of Texas as the undisputed capital of U.S. patent litigation. The lone district judge sitting in Waco, Judge Alan Albright, has engaged in an extensive campaign to entice patentees to file suit in his courtroom. And those efforts have succeeded. In 2016 and 2017, the two years before Judge Albright took the bench in 2018, the Waco Division received a total of five patent cases. In 2019, 217 patent suits were filed in Waco. In 2020, that number increased to 761—more than the number of patent cases filed in any other district court in the country and over 20% of patent cases filed nationwide. Judge Albright is on track to receive well over 700 cases again in 2021.

Most patent suits in Waco are filed by NPEs and involve computers and communication technology. Judge Albright’s courtroom is particularly attractive to NPEs because he moves cases quickly through litigation and his procedural rulings tend to favor patentees—both of which increase patentees’ leverage during settlement negotiations. Quicker settlements for larger amounts allow NPEs to more rapidly move on to their next target.

Not surprisingly, many defendants sued in Waco try to escape. The primary mechanism they use is 28 U.S.C. § 1404(a), which permits a district judge to transfer a case to another district (or to another division within a district) “[f]or the convenience of parties and witnesses, in the interest of justice.” In his three years on the bench, Judge Albright has developed a reputation for being less likely to transfer cases than other district judges. But as we, along with Jason Rantanen, discussed in a series of recent posts, the Federal Circuit has begun to push back, repeatedly using the extraordinary writ of mandamus to overturn decisions by Judge Albright denying transfer under § 1404(a).

The Federal Circuit’s interventions raise an interesting question: Does Judge Albright care? In an order issued earlier this week, he granted a defendant’s motion to transfer a case from the Western District of Texas to the Northern District of California, but not before criticizing appellate precedent on transfer as inconsistent and “out of touch” with modern patent litigation. But what do the numbers look like? Has Judge Albright become more inclined to transfer in the wake of the Federal Circuit’s mandamus grants? Or is he stubbornly refusing to change his approach?

As part of our on-going research on patent litigation in the Western District of Texas, we have collected all of Judge Albright’s orders deciding § 1404(a) motions that are publicly available. Interesting trends emerge when comparing Judge Albright’s grant rates to the Federal Circuit’s interventions through mandamus.

Overall, Judge Albright has decided sixty contested motions to transfer cases away from the Western District of Texas under § 1404(a) (excluding orders granting transfer after the Federal Circuit granted mandamus and orders involving contractual forum selection clauses). He has granted sixteen of those motions, for a grant rate of 26.7%.

Figure 1: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a)

Looking at the numbers year-by-year, as in the figure above, it looks like Judge Albright’s transfer rates have changed over time, but not too much. Judge Albright decided only three § 1404(a) motions in 2019, his first full year on the bench, and denied all three. In 2020, he decided thirteen § 1404(a) motions, granting three and denying ten, for a grant rate of 23.1%. So far in 2021, he has decided forty-four § 1404(a) motions, granting thirteen and denying thirty-one, for a moderately higher grant rate of 29.5%.

What happens when we compare grant rates before and after key Federal Circuit decisions? The first mandamus petition the Federal Circuit granted overturning a transfer decision by Judge Albright was In re Adobe, which issued on July 28, 2020. But it was the second Federal Circuit decision—and first precedential decision—to grant mandamus and order Judge Albright to transfer a case that garnered the most attention. In that case, In re Apple, the Federal Circuit took the unusual step of holding oral argument. (Mandamus petitions are practically always decided on the briefs alone.) On November 9, 2020, the Federal Circuit granted Apple’s petition over a fiery dissent by Judge Moore, who accused the majority of setting precedent that will allow future mandamus petitions to be granted “based almost entirely on ad hominem attacks on esteemed jurists.”

Figure 2: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a), Before and After In re Adobe

As the figures above indicate, before Adobe, Judge Albright had decided fifteen motions to transfer under § 1404(a), granting two and denying thirteen, for a grant rate of 13.3%. Since Adobe, he has decided forty-five motions to transfer under § 1404(a), granting fourteen and denying thirty-one, for a grant rate of 31.1%. Taking the Adobe decision as the critical date (between Adobe and Apple, Judge Albright decided only one contested § 1404(a) motion, and he granted it), it appears Judge Albright is clearly more willing to grant transfer in the wake of Federal Circuit skepticism about his decisions.

One final way of slicing the data: of the fourteen Federal Circuit grants of mandamus overturning transfer denials by Judge Albright, ten have occurred in the past four months, since June 30, 2021. Before the recent avalanche of mandamus grants began, Judge Albright had decided thirty-six § 1404(a) motions, granting seven and denying twenty-nine, for a grant rate of 19.4%. Since June 30, he has decided twenty-four § 1404(a) motions, granting nine and denying fifteen, for a noticeably higher grant rate of 37.5%.

Figure 3: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a), Before and After June 30, 2021

*          *          *

While our dataset is not huge, it does seem that Judge Albright’s proclivity to grant § 1404(a) transfer motions is increasing. To be sure, any increase may not be caused by the Federal Circuit’s interventions. As the sheer number of patent cases on Judge Albright’s docket has increased over the past two years, many of those cases likely have more tenuous connections to the Western District than the cases filed early in Judge Albright’s tenure. Also, it’s possible that Judge Albright has become more willing to grant transfer to relieve caseload pressure on his docket and maintain the fast case schedule that is a reason his court is particularly attractive to patent plaintiffs. In addition, broader criticism of Judge Albright’s forum selling practices—separate and apart from the Federal Circuit’s interventions—could be having some effect on Judge Albright’s transfer decisions.

Moreover, even the 37.5% grant rate over the past few months is low compared to the grant rates in other districts with large dockets of patent cases, which hover around 50%. (We’re working on updating the transfer data for other districts and will share our results in the near future.) And, don’t forget, given the nature of patent litigation and the West Coast-based parties typically involved (Google, Apple, Microsoft, and Amazon are all among the most common defendants in cases before Judge Albright), we would expect to see significantly higher transfer rates in cases filed in Waco, Texas, as opposed to cases filed in, say, the Northern District of California.

So, how did it start? It was pretty hard to obtain transfer away from Judge Albright’s Waco courtroom. How’s it going? Still not easy, but not impossible. Time will tell whether the Federal Circuit’s interventions through mandamus will be sufficient to combat the unhealthy court competition that is causing patent cases to pile up in Waco. But, given the case-by-case nature of the writ, the nominally deferential standard of review, and the expense of pursuing an interlocutory appeal, count us as skeptical that mandamus is anything more than a band-aid for well-resourced defendants to challenge the most obviously incorrect transfer decisions by Judge Albright.

Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 3

Patent

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the final post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.  The two previous posts can be found here and here.

 

Even if a plaintiff has filed its case in a federal court in which personal jurisdiction and venue exist, 28 U.S.C. § 1404(a) permits the judge to transfer the case to another district “[f]or the convenience of parties and witnesses, in the interest of justice.” Transfer motions under § 1404(a) are a common tactic in patent litigation, particularly for California-based tech companies sued in the Eastern and Western Districts of Texas. When defendants lose those motions—as they often do in Texas—they frequently seek immediate review in the Federal Circuit by petitioning for a writ of mandamus.

Despite the writ’s extraordinary nature, our study shows that it’s a remarkably ordinary form of relief in the Federal Circuit—at least in cases involving denials of transfer by the Eastern or Western District of Texas. The first time the Federal Circuit ever granted mandamus to overturn a transfer denial was in 2008, in a case called In re TS Tech, which arose from the Eastern District of Texas. Since that time, the Federal Circuit has decided 105 mandamus petitions seeking to overturn a denial of transfer under § 1404(a). It has granted 34 of them, for a grant rate of 32.4%. Pretty high for an extraordinary writ that’s supposed to issue only if the lower court’s decision was a “clear abuse of discretion” that “produced a patently erroneous result,” as the Federal Circuit wrote in a 2009 decision, In re Genentech. (Cleaned up.) The figure below shows the outcomes of decisions on mandamus petitions challenging § 1404(a) transfer denials decided by the Federal Circuit each year since 2008.

Figure 1: Mandamus decisions by the Federal Circuit involving challenges to 1404(a) decisions

Mandamus petitions arising from the Eastern and Western Districts of Texas account for the vast majority of petitions challenging transfer denial: 88 of the 105 in our dataset (83.8%). The grant rate for mandamus petitions challenging transfer denials by those two districts is 35.2%. And for the Western District of Texas alone, the grant rate is a whopping 52.0% (13 grants, 12 denials). For all districts besides the Eastern and Western Districts of Texas, the grant rate is a mere 17.6% (3 grants, 14 denials). The table below shows, by district court of origin, the number of mandamus petitions decided by the Federal Circuit seeking review of a decision denying transfer under § 1404(a), along with the corresponding Federal Circuit grant rates. As you can see, the sheer number of petitions (and grants) from the Eastern and Western Districts of Texas dwarfs all other districts.The recent explosion of patent cases in the Western District of Texas is fueled entirely by Judge Alan Albright who, as Jonas and I have written, has actively encouraged patentees to file infringement suits in his Waco courtroom and has adopted numerous procedural practices that are attractive to forum-shopping patentees—to say nothing of the fact that the Western District’s lack of random case assignment allows patentees to know, with absolute certainty, that Judge Albright will hear their case.

When we exclude the two Western District mandamus petitions that didn’t involve Judge Albright, the grant rate gets even higher. For mandamus petitions challenging transfer denials by Judge Albright, the Federal Circuit’s grant rate is 56.5% (13 grants, 10 denials). And that grant rate excludes one petition, In re DISH Network, which the Federal Circuit nominally denied but effectively granted by demanding that Judge Albright “reconsider” his transfer denial in light of the “appropriate legal standard and precedent,” which the Federal Circuit outlined in its opinion denying the writ.

*          *          *

The Federal Circuit is exceptional among the federal courts of appeals in using an extraordinary writ to engage in what is essentially interlocutory error correction. On first glance, we might view this as a flaw with the Federal Circuit: the specialized court is too zealously exercising its final authority over patent law and wasting party and judicial resources by policing discretionary district court rulings on an issue that’s entirely separate from the merits of the case. But Judge Albright’s aggressive efforts to attract patent cases to Waco—and his seeming disregard of appellate precedent on transfer of venue—have forced the Federal Circuit’s hand. Predictable judge assignments have encouraged what is essentially a race to the bottom among district judges who want to attract patent infringement plaintiffs. The mechanism for competition is procedural rules—and procedural rulings—that are extremely favorable to plaintiffs. And so the stakes over transfer of venue decisions are unusually high in patent cases. This suggests that the writ of mandamus—a procedural mechanism from the dustiest corner of civil procedure—will play a crucial role in determining the future of the U.S. patent system.

Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 2

Patent

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the second post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.

Yesterday’s post described the high number of petitions for a writ of mandamus that the Federal Circuit has granted relative to other federal appellate courts over the last few years.  In this post I’ll give further context and detail about the petitions for writs of mandamus at the Federal Circuit.

While Westlaw is a terrific resource, one of its big limitations for empirical research is that it doesn’t necessarily contain all dispositions.   We confirmed that almost all of the granted petitions from recent years are on Westlaw, but a portion of the other terminations are not.

In order to make sure that we had a complete set of all petitions for a writ of mandamus, we started by creating a set of all petitions docketed at the Federal Circuit.  Full details on how we did this will be in the paper, but essentially we began with a set of all dockets at the Federal Circuit from 2000 to the present from PACER, narrowed them to just those with a miscellaneous docket number, then reviewed that those dockets to determine which involved a petition for a writ of mandamus. This gave us a complete set of all petitions for a writ of mandamus filed at the Federal Circuit.  Using this set, we collected any dispositive orders from PACER that we didn’t already have.

Figure 1 shows the number of petitions for a writ of mandamus docketed at the Federal Circuit by year.  It breaks out petitions (1) arising from the Eastern District of Texas (red), (2) arising from the Western District of Texas (blue), and all other origins (which includes all other district courts plus origins such as the PTO, CAVC, etc.).

Figure 1: Petitions for a Writ of Mandamus filed at the Federal Circuit, 2008-September 30, 2021

How many petitions for a writ of mandamus arose from the Eastern District of Texas?  The answer is “a lot,” especially in 2010, 2014 and 2015.  More significant, however, is the enormous increase in petitions arising from the Western District of Texas over the past year.  For 2021, in particular, petitions arising from the Western District of Texas make up almost double the other origins combined.  Overall, the Federal Circuit has already received more petitions for a writ of mandamus this year than it has ever received in any year prior…and there are still three months to go.

Grant Rates of Petitions

The next thing we looked at were outcomes. For this, we switched to looking at the data on a per-document level rather than a per-docket level.  By “document,” we just mean the opinion or order deciding the appeal or petition. For petitions for writs of mandamus, the results are essentially the same when examined at the per-docket level because very few orders decided multiple petitions.

Overall, the Federal Circuit’s grant rate in merits determinations (those that granted, denied or granted in part a petition) was 15% over the period from 2008-2021—that is, the Federal Circuit granted the petition in whole or in part in 58 of the 384 total decisions on the merits.  For an “extraordinary” form of relief, we were surprised at how high this was.

To investigate grant rates further, we started by comparing the grant rates of petitions for a writ of mandamus when the petition originated from a district court to the grant rate for other origins.  Figure 2 shows the outcomes on a per-document basis for 2008 – September 2021.  The top pie charts show the outcomes of merits determinations, while the bottom bar graphs show the other types of dispositions of these petitions.  Most other dispositions consist of voluntary dismissals, but there are also dismissals for lack of appellate jurisdiction and other reasons.

Figure 2: Outcomes in Federal Circuit decisions on petitions for writs of mandamus, 2008-Sept. 30, 2021

There are clear differences in the grant rates for petitions for writs of mandamus between the district courts and other origins.  Whereas the Federal Circuit granted the petition in whole or part in 19% (51 out of 268) of its merits decisions when the petition arose from the district courts, it granted them only 6% (7 out 116) of the time for other origins.

To examine what was going on, we conducted preliminary issue coding to identify those decisions involving some issue relating to venue (all of which originated from a district court).  Figure 3 shows the outcomes for merits decisions when venue was and was not at issue in the decision.

Figure 3: Outcomes in Federal Circuit decisions on petitions for writs of mandamus arising from district courts, 2008-Sept. 30, 2021

The difference is stark: When venue was at issue, the Federal Circuit decision granted the petition in whole or in part 27% of the time.  When venue was not at issue, the grant rate was 7%.

Put another way, for petitions for a writ of mandamus involving an issue other than venue, the grant of a writ of mandamus is a rare event.  But when venue is at issue, the court has granted petitions at a much higher rate.  But is this historically the case or is it a recent event?  In our third post we’ll conclude with additional detail on what’s going on with mandamus on transfer of venue issues at the Federal Circuit.

Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1

Patent

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the first post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.

There has been a lot of talk recently about the Federal Circuit and mandamus. Our current research project aims to answer whether the Federal Circuit is an outlier among the circuit courts in its use of mandamus, and if so, what explains the court’s apparent infatuation with mandamus?

Mandamus Generally

Mandamus—literally, “we command”—is an extraordinary event. Federal appeals courts have authority to review “final decisions” of district courts (or of the PTAB, in the Federal Circuit’s case). Mandamus provides a way for litigants to take their appeal before an appeals court while their case continues at the district court below. This can be a great thing for litigants who feel that an issue has been wrongly decided and who don’t want to wait for a final decision to take their case before the appellate court. However, if mandamus is granted too frequently, it risks compromising judicial efficiency by placing the appellate court in the awkward position of arbiter of disputes rather than reviewer of final decisions.

The Supreme Court has said three requirements must be satisfied in order for an appellate court to grant mandamus. First, the party seeking mandamus must have “no other adequate means” to obtain relief. Second, the party must show that its right to mandamus is “clear and indisputable.” Third, the court must be satisfied that mandamus is “appropriate” under the circumstances.

Typically, the federal courts of appeals will reserve their use of mandamus for important issues that are likely to arise again in future cases. For instance, attorney-client privilege is a relatively frequently reviewed issue on mandamus, because it is an issue that district courts frequently encounter. In addition to importance, the issue under mandamus review ought to be one that is not reviewable after a final verdict, or at least one in which such post-verdict review would be inefficient. For instance, the choice of venue in litigation is one such issue that is reviewable post-verdict, but oftentimes would be inefficient for the appealette court to wait for a final verdict before deciding that the wrong court heard the case. Oftentimes the use of mandamus centers on new, undecided issues.

Ideally, mandamus gives lower courts appellate guidance so that mandamus review is not needed on the issue addressed in the future. Sparing use of mandamus allows appellate courts to preserve the extraordinary character of the practice. Ideally, appellate courts avoid excessive supervision of lower court proceedings while at the same time sending a forceful message when granting mandamus. Thus, granting a writ of mandamus is an “extraordinary remedy,” reserved for clear errors in which the moving party has no other adequate means to obtain relief.

Federal Circuit Mandamus

But, this extraordinary remedy is becoming quite common, at least in the Federal Circuit. In beginning our study of the Federal Circuit’s mandamus practices, we wanted to get a sense of how the court compares to other circuit courts in granting mandamus. Using Westlaw, we collected all the decisions on writ of mandamus and hand coded them for whether mandamus was granted and what the issue the grant concerned. We found that the Federal Circuit has granted mandamus over twice as often as any other circuit.

The Federal Circuit has clearly been more activist than any other court when it comes to granting mandamus. Over the past three years, the Federal Circuit has been granting mandamus, the extraordinary remedy, at a rate more than double that of the next most frequently granting circuit (the 5th circuit and the 9th circuit).

And the numbers are even more stark when we consider just one issue on which mandamus may be granted: venue. Patent cases often meet the jurisdictional requirements of personal jurisdiction, subject matter jurisdiction, and venue in a number of different district courts. While the plaintiff typically selects her preferred venue to litigate the case, defendants may bring a motion to transfer the case to another district court that also has venue. Alternatively, the defendant may argue that the court selected by the plaintiff lacks venue. Decisions on these motions are often challenged, if at all, on mandamus.

Looking at the grants of mandamus concerning motions to transfer presents a stark look at the difference between the Federal Circuit and every other circuit court. Below is a graph of grants of mandamus by circuit court that direct a district court to transfer venue in a case.

Clearly, venue is a confounding issue for the Federal Circuit, and no other circuit court. It is odd that the Federal Circuit has issued mandamus on one issue so frequently over the past three years while only one other circuit court has granted mandamus on this issue. And that circuit did so only once.

In the next post we will give come further context and detail about the petitions for writs of mandamus at the Federal Circuit. And specifically look at the issue of venue mandamus in greater detail.

In re ESIP: No Arthex challenges in closed case

Patent

By Jason Rantanen

In re ESIP (Panel: O’Malley, Reyna, Chen) (link to decision: In re ESIP SERIES 2)

This is a short nonprecedential decision in a petition for a writ of mandamus that was issued today but that isn’t on the Federal Circuit’s website.  (I don’t see why the Federal Circuit doesn’t just put all dispositive orders on its website; it already puts Rule 36’s and many orders in petitions for writs of mandamus on the site.)   The petitioner, ESIP, was the patent owner of a patent that was the subject of an inter partes review proceeding at the PTO.  The PTO initiated review over ESIP’s objection, and subsequently concluded that the claims were obvious.  ESIP appealed.  The Federal Circuit affirmed the obviousness determination and held that it was barred from reviewing the institution decision because that decision is nonreviewable under 35 U.S.C. 314(d).  The Supreme Court subsequently denied cert and the PTO issued a certificate of cancellation.

After the Supreme Court issued its Arthrex decision, ESIP filed a petition for Director review in the IPR proceeding in light of Arthrex.  The PTO sent an email saying that the petition was untimely.  ESIP petitioned the FEderal Circuit for a writ of mandamus.

The Federal Circuit denied the petition, ruling that (1) under the circumstances ESIP cannot directly appeal from the PTO’s email, and (2) mandamus is inappropriate here.  “ESIP could have raised an Appointments Clause challenge and sought rehearing in its prior appeal. Moreover, ESIP has not pointed to any clear and indisputable authority that the PTO violated in refusing to reopen and rehear this particular matter, which is subject to a final judgment and cancellation certificate.”

Petition denied.

Update: The Order is now available on the court’s website: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-164.ORDER.10-14-2021_1848936.pdf 

 

 

New PatentlyO L.J. Article: The AIA at Ten – How Much Do the Pre-AIA Prior Art Rules Still Matter?

Journal, Patent

New Patently-O Law Journal article by Colleen V. Chien, Professor of Law and Co-Director, High Tech Law Institute, and Janelle Barbier and Obie Reynolds, both second-year JD students; all at Santa Clara University School of Law.  Below they summarize their findings.

As the America Invents Act (AIA) turns 10, patent students across the country may be asking: if the law is already a decade old, why am I spending so much time learning pre-AIA law? Though patents filed before the transition date will remain in force up through March 2033, a good 10+ years away, teachers may also be wondering which regime to emphasize and for how long the pre-AIA rules will still be considered fundamental rather than footnote material. We address these questions empirically by analyzing the effective dates of patents and patent applications currently being litigated or pursued. Our analysis resoundingly confirms that both regimes matter and that the pre-AIA prior art regime appears likely to continue to be relevant for much of the next decade. But how much it matters depends: as the graphs below show, patent lawsuits overwhelmingly continue to feature pre-AIA patents. We estimate that ~90% of patent litigations initiated in 2020 included a patent with an effective filing date before the AIA transition date of March 16, 2013. But the inverse is true of patents currently being  prosecuted: ~94+ of applications currently pending before the USPTO, we estimate, are governed by the AIA. In the accompanying PatentlyO Bar Journal article, The AIA at Ten – How Much Does the Pre-AIA Prior Art Regime Still Matter?, 2021 Patently-O Patent Law Journal 35, we explain our methods, sources, and approach and how pre- and post-AIA law are likely to both remain important for some time but that the distinction doesn’t necessarily matter in the vast majority of cases.

Figure 1: Percentage of Patent Litigations Including a Pre-AIA Patent, by Year Litigation Initiated

Figure 2: 2021 Pending Patent Applications Pre- vs. Post-AIA (Point Estimate)

We thank LaTia Brand of Harrity Analytics and the Stanford NPE Database, described in Shawn Miller et al., Who’s Suing Us? Decoding Patent Plaintiffs since 2000 with the Stanford NPE Litigation Dataset, 21 Stan. Tech. L. Rev. 235 (2018) for sharing data with us. Our data can be found at: https://doi.org/10.7910/DVN/3HJ2PB.

Read: Colleen Chien, Janelle Barbier, and Obie Reynolds, The AIA at Ten – How Much Does the Pre-AIA Prior Art Regime Still Matter?, 2021 Patently-O Patent Law Journal 34. (Chien.2021.Pre-AIAPatents)

Prior Patently-O Patent L.J. Articles:

  • Nicholas Shine, Covid-19 Pandemic’s Impact on the U.S. Patent System Through November 2020, 2021 PatentlyO Law Journal 27 (2021) (Shine.2021.COVID-19Impact)
  • Thomas F. Cotter, Is Global FRAND Litigation Spinning Out of Control, 2021 PatentlyO Law Journal 1 (2021) (Cotter.2021.GlobalFRANDLitigation)
  • Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20 (2020) (Chien.2020.ImpactOfAlice)
  • Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020) (Michel.2020.RightToExclude)
  • Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020). (Cotter.2020.TwoErrors.pdf)
  • Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019) (Tran.2019.AliceatFive.pdf)
  • Bernard Chao, Implementing Apportionment, 2019 PatentlyO L.J. 20 (Chao.2019.ImplementingApportionment)
  • Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
  • Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
  • Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
  • Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
  • Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
  • Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
  • Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
  • James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
  • Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
  • Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
  • Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29.  (Morgan.2011.AIAAmbiguities)
  • Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
  • Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
  • Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC):  Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
  • Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
  • Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
  • Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
  • Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
  • Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
  • Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
  • Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
  • Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
  • Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
  • Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
  • Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
  • Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
  • John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
  • Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
  • Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
  • Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
  • John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
  • Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

 

Guest Post by Prof. Trimble: The False Sense of Victory in Bypassing The Hague Convention on Service of Process

Patent

Guest Post by Professor Marketa Trimble, Samuel S. Lionel Professor of Intellectual Property Law, University of Nevada, Las Vegas William S. Boyd School of Law.  Professor Trimble specializes in international intellectual property law, and is the author of Global Patents: Limits of Transnational Enforcement (Oxford Univ. Press 2021) and co-author with Paul Goldstein of International Intellectual Property Law, Cases and Materials (Foundation Press 5th ed. 2019).

On September 10, 2021, the U.S. Court of Appeals for the Federal Circuit denied mandamus in In re OnePlus Tech. (Shenzhen) Co., confirming that the plaintiff may bypass Article 5 of the Hague Convention on the Service of Process and serve the Chinese defendant through alternative service to attorneys located in California who had represented the defendant in the past. Commentators heralded the decision as an important improvement in the enforcement of patent rights against foreign, and in particular Chinese, defendants (Law360). However, in many IP cases involving foreign defendants, this sense of victory might be premature.

What ultimately matters is whether a judgment resulting from a U.S. dispute is enforceable—either in the United States or abroad. If a foreign defendant has assets in the United States and a U.S. judgment can be enforced in the United States, bypassing The Hague Convention does not matter. But if a foreign defendant has no assets in the United States and a plaintiff must seek enforcement of a U.S. judgment abroad, bypassing the Convention—even if the end run is sanctioned by a U.S. court and is legal under U.S. law—might be for naught. Once a plaintiff requests recognition and enforcement of a U.S. judgment abroad, a foreign court may deny recognition and enforcement of the judgment if a defendant was not served in accordance with The Hague Convention. Avoiding recognition and enforcement abroad is not always possible; the August 2021 decision in Next Investments, LLC v. Bank of China shows that seizing a defendant’s foreign accounts by using the U.S. branches of Chinese banks might not work.

Countries entered into The Hague Convention to ensure that documents would be served on their citizens in a manner that comports with the countries’ sense of due process. The Convention (the full title is Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters) allows countries to permit easier and faster alternative means of service if they wish to do so, but China is one of the countries that filed a declaration opposing the use of such alternative means. Therefore, in China the only service that is compliant with the Convention is through the Convention’s Article 5 mechanism via the Central Authority.

The penalty for not using the Convention’s Article 5 mechanism can be high. Not surprisingly, countries that are parties to the Convention (currently, 79 countries) want to ensure that the Convention is being followed, and courts in these countries may therefore deny recognition and enforcement to a foreign judgment that stems from a proceeding in which a defendant (who is foreign to the court that issued the judgment) was not served in accordance with the Convention. Courts in some countries are willing to recognize and enforce a foreign judgment even if service was not compliant with the Convention if proof of actual service abroad exists from the original court proceeding. A defendant’s voluntary acceptance of alternative service might also satisfy a court’s expectations of due process, and apparently the Supreme Court of the People’s Republic of China has also made such a decision in a case when a Chinese court permitted an alternative means of service on a defendant outside of China.

The Hague Convention’s age of 56 years raises legitimate questions about its utility in today’s world. However, the likelihood that countries will replace it with an updated convention seems remote; the negotiations of the new Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters (not yet in force) proved that an agreement by countries on conflict-of-laws issues in transnational disputes remains difficult, and the new Convention was achieved only when IP disputes were excluded from the scope of the Convention. With the anti-suit injunction war raging in SEP cases and Chinese courts being more assertive in transnational litigation, the U.S. IP bar’s view might finally evolve in favor of an international convention on transnational conflict-of-laws matters in IP disputes. Some models exist in academic projects that have developed principles and guidelines for such matters; the latest and most international of the projects resulted in the Kyoto Guidelines that the International Law Association adopted in December 2020.

In re: Juniper Networks

Patent

By Jason Rantanen

In re: Juniper Networks (Panel: Judges Lourie, Bryson, Taranto)

By my count, it’s been over a month and a half since the Federal Circuit issued a decision granting a petition for writ of mandamus arising from the Western District of Texas.  (That decision was In re: Hulu on August 2, 2021.)  That streak has come to an end, as today the court issued In re: Juniper Networks.

Like other petitions for a writ of mandamus arising from the Western District of Texas, Juniper Networks, Inc.’s petition concerned the denial of a request for transfer under 28 U.S.C. § 1404(a).  The case itself involves an assertion of patent infringement by WSOU Investments LLC (referred to as “Brazos”) against Juniper that was filed in the Western District of Texas.  Juniper, a Delaware corporation headquartered in Sunnyvale, California (for those who aren’t familiar with the area, that’s Silicon Valley), moved to transfer to the Northern District of California.  Judge Albright denied the motion, reasoning that under the four private interest and four public interest factors governing which district is more convenient, Juniper had not established that the Northern District of California was a clearly more convenient forum for this litigation.

The Federal Circuit reversed in a per curium opinion.  Under the law of the Fifth Circuit, “a motion to transfer venue pursuant to section 1404(a) should be granted if ‘the movant demonstrates that the transferee venue is clearly more convenient.'” Slip Op. at 6, quoting In re Radmax, Ltd., 720 F.3d 285 (5th Cir. 2013).  Here, Judge Albright committed legal errors that required the granting of the petition.

Starting at the top, “the relative convenience for and cost of attendance of witnesses between the two forums is ‘probably the single most important factor in transfer analysis.'”  Slip Op. at 7, quoting In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009).  Here, the district court didn’t give it the appropriate weight, especially since there was a big imbalance in terms of witness convenience.  Instead, the district court cited its own prior decisions for giving little weight to the identified witnesses – which was a problem since those propositions had previously been directly rejected by the Federal Circuit.

The district court also erred in its application of the local interest factor.  Most of the events forming the basis for Brazos’s infringement claims occurred in the Northern District of California and none occurred in the Western District of Texas.  This was enough to give the tranferee court a local interest.  Contrary to the district court’s reasoning, Juniper’s lease of a small office in Austin by the defendant for something that had no connection with the accused products wasn’t sufficient to establish a local interest.  A company’s general presence in a district are not enough to establish a local interest comparable to the events that gave rise to the suit.  Nor was Brazos’s status as a Waco-based entity incorporated in Texas entitled to significant weight: “The office was established only a few months before the complaints against Juniper were filed, and the activities of the office are largely tied to bring lawsuits in that court.  Brazos has only two employees who work from Waco, one of whom is its in-house attorney responsible for litigation.  The principal officers of Brazos are located in California.”  Slip Op. at 10.  “We have noted in other mandamus cases that little or no weight should be accorded to a party’s ‘recent and ephemeral’ presence in the transferor forum, such as by establishing an office in order to claim a presence in the district for purposes of litigation.”  Id.

The Federal Circuit also concluded that the district court erred in its assessment of the sources of proof and need for compulsory service factors, but the most interesting to me was the the final error that the Federal Circuit identified: the district court’s conclusion that the court-congestion factor weighed against transfer based on Brazos’s assertion that the Texas forum had a faster median time to trial than the California forum.  But, the Federal Circuit pointed out, the district judge’s “faster time to trial” statistic was based on scheduled trial dates (my emphasis), i.e.: those set out in Judge Albright’s aggressive scheduling order.  In any event, the Federal Circuit concluded that the relative speed with which this case may be brought to trial was not of particular significance, as the “court congestion” factor is the “most speculative of the factors bearing on the transfer decision.” Slip Op. at 14.

Ultimately, the Federal Circuit concluded, this was essentially the same as the recent decisions in Samsung and Hulu, both of involved situations in which several of the most important factors strongly favored the transferee court and no factor favored retaining the case in the transferor court.

As an ending note, the Federal Circuit also denied a petition for a writ of mandamus arising from the Court of Appeals for Veterans Claims in In re: Fermin on the basis that “mandamus relief is not appropriate when a petition fails to seek relief through the normal appeal process.”  Here, the petitioner’s prior appeal to the Federal Circuit had been dismissed for lack of subject matter, the petitioner had filed a motion to reconsider at the Veterans’ Court (which the court denied), and had not appealed the Veterans’ Court’s denial of that motion.  “Because [the petitioner] here failed to seek review of the Veterans Court’s order by way of a timely filed direct appeal, we must deny his request for this extraordinary relief.”  Slip Op. at 2.

Missing Decisions and the Federal Circuit

Patent

By Jason Rantanen

Last week the Federal Circuit issued two interesting orders in appeals from the USPTO.   In the first, In re Zhu (Appeal No. 2021-1761), Sept. 13, 2021, the Federal Circuit vacated the decision of the PTAB and remanded the case to the PTO “for reconsideration of whether the claims are directed to an improvement in computer functionality, especially in light of this court’s recent case law.”  (internal quotations and brackets removed).  The context of this, according to Tiffany Hu, was the Federal Circuit’s 2020 Uniloc v. LG ruling together with the PTO’s own request for a remand “to permit further proceedings” – i.e: this was a patent eligible subject matter issue that the PTO decided to take another look at while the appeal was pending.

The second, In re Boloro (Appeal nos. 2019-2349, -2351, -2353), Sept. 16, 2021, was an order by the Federal Circuit remanding the case to allow Bolero to request Director rehearing of the final written decisions in light of the Supreme Court’s decision in United States v. Arthrex, Inc., 141 S.Ct. 1970 (2021).   The Federal Circuit had previously issued an order remanding the case for assignment to a different panel, its earlier remedy for the Constitutional appointments issue with patent judges.  As Andrew Karpan recently wrote, this order extends the effects of Arthrex to ex parte appeals.

On their own, neither of these orders are that notable.  They are nonprecedential orders that contain little more explanatory reasoning than a summary affirmance under Rule 36.  On the other hand, they were enough for Law360 authors to write about.

What’s more interesting is that neither was posted to the Federal Circuit’s website.  They’re only available in PACER.  This is not itself all that unusual.  Historically, dispositive orders like these would vanish into the ether – becoming what Merritt McAlister recently characterized as Missing Decisions.  They are never published in reporters, including the Federal Appendix, and aren’t in the major research databases.  Indeed, I didn’t find either of these decisions in Westlaw or Lexis when I searched yesterday afternoon.  Yet, they are judicial decisions, and in an age where lawyers, judges and scholars have come to think that all law (or at least, all appellate decisions) is easily accessible, they highlight that it’s not.

In a forthcoming essay response to Professor McAlister’s Missing Decisions, I examine the one federal appellate court that for technical reasons McAlister didn’t  include: the Federal Circuit.  What I find is that the Federal Circuit is quite good about putting its opinions and Rule 36 summary affirmances on its website.  But there are also a lot of missing decisions, which are concentrated in certain areas.  This is concerning if our frame of reference for judicial decisionmaking is defined by what’s readily available on court websites and commercial legal databases.

Here are my main findings:

  • Based on a comparison of docketed appeals filed between 2008 and 2018 to decisions posted to the Federal Circuit’s website, 45% of docketed appeals are decided in an opinion released on the court’s website, 17% are decided in a Rule 36 summary affirmance released on the court’s website, and the remaining 37% have neither an opinion nor Rule 36 available on the court’s website.
  • The number of documents released by the court on its website are about the same as the number of documents available in the big commercial legal databases (Westlaw, Lexis & Bloomberg).  This may be because, as McAlister describes, these sites tend to pull directly from the same pool that is posted to the court’s website or just collect directly from the court’s website.
  • Taking a closer look at appeals filed in 2015, of the 497 docketed appeals without a terminating document available on the court’s website (31% of the total), a large portion involved voluntary dismissals by the appellant (303) or the parties jointly or dismissal for failure to prosecute (72).  However, there were a moderate number of appeals dismissed for lack of appellate jurisdiction (31), transferred (23), and even decided by a merits order (16).  None of these were released on the court’s website and when I looked for some of them in Westlaw and Lexis, they weren’t there either.  All were designated as “nonprecedential.”

The bottom line is that when it comes to substantive merits decisions and decisions designated by the court as “precedential,” almost all of these appear to be on the court’s website.  But there’s a host of other nonprecedential decisions–many dealing with jurisdictional issues–that aren’t.  There are also decisions in petitions for writs of mandamus, which the court currently appears to mostly be releasing on its website although that hasn’t always been the case.

Given all this, my recommendation parallels that of McAlister: the Federal Circuit should release all dispositive orders on its website, not just decisions labeled as “opinions” or summary affirmances under Rule 36.  This would be consistent with both its practice of releasing Rule 36 summary affirmances (which contain less judicial reasoning than most of the dispositive orders that it doesn’t release) and the overall goal of judicial transparency about decisions.  And for those who think that having access through PACER alone is enough, Prof. McAlister and others have described in depth why that’s not the case.

There’s more in the essay itself, which also contains links to the data I used archived on the Harvard Dataverse.    Here’s a link to the preprint of the essay: Missing Decisions and the Federal Circuit.

Thanks to Dmitry Karshtedt for calling these two Law360 articles to my attention.  And here are copies of In re Zhu and In re Boloro that I pulled from PACER.

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