Patently-O https://patentlyo.com America's leading patent law blog Sat, 23 Oct 2021 23:25:35 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.18 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2021/10/patently-o-bits-and-bytes-by-juvan-bonni-70.html https://patentlyo.com/patent/2021/10/patently-o-bits-and-bytes-by-juvan-bonni-70.html#comments Sat, 23 Oct 2021 23:25:35 +0000 https://patentlyo.com/?p=34074 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Matthew Rosen: Fintel Announces Issuance of Second U.S. Patent, Strengthening the Company’s Intellectual Property Position in USA PATRIOT Act Section 314(b) Information Sharing Technologies (Source: Business Wire)
  • Bruce Crumley: Apple Files Patent Request for Drone (Networking) Tech (Source: Drone DJ)
  • Sisi Jiang: Sony Patent Lets Viewers Vote And Pay To Boot Players From Games (Kotaku)

Commentary and Journal Articles:

  • Atty. Alex Moss: Amicus Brief of Public Interest Patent Law Institute in Silbersher v. Allergan (Source: SSRN)
  • Prof. Peter Lee: Patent Law’s Externality Asymmetry (Source: SSRN)
  • Prof. Matthew Rimmer: A Submission to the Productivity Commission Inquiry on the Right to Repair (Source: SSRN)

New Job Postings on Patently-O:

  • The Faegre Drinker Patent Team
  • Harrity & Harrity, LLP
  • Sterne, Kessler, Goldstein & Fox
  • Kennedy Lenart Spraggins LLP (KLS)
  • Bejin Bieneman, PLC
  • Fiala & Weaver P.L.L.C.
  • Kubota & Basol LLP
  • Roberts Calderon Safran & Cole, P.C. (RCSC)
  • HP
  • Sandia National Laboratories – Technology Transfer Attorney
  • Ward Law Office LLC
  • Sandia National Laboratories – Senior Counsel
  • Banner Witcoff – Associate Attorney
  • Finch & Maloney PLLC
  • DSM
  • Banner Witcoff – Trademark Attorney

 

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

 

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Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 3 https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus-federal-circuit.html https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus-federal-circuit.html#comments Thu, 21 Oct 2021 16:00:52 +0000 https://patentlyo.com/?p=34051 Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 3

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.

Continue reading Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 3 at Patently-O.

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

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.

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Modified Opinion for Hyatt on Purposeful Submarining https://patentlyo.com/patent/2021/10/modified-purposeful-submarining.html https://patentlyo.com/patent/2021/10/modified-purposeful-submarining.html#comments Thu, 21 Oct 2021 11:00:33 +0000 https://patentlyo.com/?p=34055 Modified Opinion for Hyatt on Purposeful Submarining

Hyatt v. Hirshfeld, 9 F.4th 1372, 1374 (Fed. Cir. 2021), opinion modified and superseded on reh’g, 2020-2321, 2021 WL 4737737 (Fed. Cir. Oct. 12, 2021) [New Opinion]

Earlier this month, the Federal Circuit released a revised opinion in the most recent edition of Hyatt v. Hirshfeld.  The opinion originally released in August 2021 denied the USPTO’s petition to recoup expert witness fees under the “all the expenses” provision of 35 U.S.C. 145.  The original opinion called out Hyatt for “efforts to submarine his patent applications and receive lengthy patent terms.”  Following that decision, Hyatt petitioned for rehearing, asking for removal of that language from the opinion.  The PTO did not file a brief in opposition and the court released a modified opinion with the language removed.  The redline below shows the change:

In the briefing, Hyatt explained that the statement was incorrect, unnecessary, unsupported, and prejudicial to his position on remand.  The petition is a very good example of how to seek targeted relief from a panel for a narrow, but potentially important issue. [HyattRehearingPetition]

Continue reading Modified Opinion for Hyatt on Purposeful Submarining at Patently-O.

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Hyatt v. Hirshfeld, 9 F.4th 1372, 1374 (Fed. Cir. 2021), opinion modified and superseded on reh’g, 2020-2321, 2021 WL 4737737 (Fed. Cir. Oct. 12, 2021) [New Opinion]

Earlier this month, the Federal Circuit released a revised opinion in the most recent edition of Hyatt v. Hirshfeld.  The opinion originally released in August 2021 denied the USPTO’s petition to recoup expert witness fees under the “all the expenses” provision of 35 U.S.C. 145.  The original opinion called out Hyatt for “efforts to submarine his patent applications and receive lengthy patent terms.”  Following that decision, Hyatt petitioned for rehearing, asking for removal of that language from the opinion.  The PTO did not file a brief in opposition and the court released a modified opinion with the language removed.  The redline below shows the change:

In the briefing, Hyatt explained that the statement was incorrect, unnecessary, unsupported, and prejudicial to his position on remand.  The petition is a very good example of how to seek targeted relief from a panel for a narrow, but potentially important issue. [HyattRehearingPetition]

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Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 2 https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus-federal.html https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus-federal.html#comments Wed, 20 Oct 2021 18:00:28 +0000 https://patentlyo.com/?p=34028 Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 2

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.

Continue reading Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 2 at Patently-O.

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

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.

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What’s your story? https://patentlyo.com/patent/2021/10/whats-your-story.html https://patentlyo.com/patent/2021/10/whats-your-story.html#comments Wed, 20 Oct 2021 16:48:09 +0000 https://patentlyo.com/?p=34046 Patents would be much more interesting read if inventors were required to tell the story of how the invention came about.

— Dennis Crouch (@patentlyo) October 20, 2021

 

Continue reading What’s your story? at Patently-O.

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Patents would be much more interesting read if inventors were required to tell the story of how the invention came about.

— Dennis Crouch (@patentlyo) October 20, 2021

 

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Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1 https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus.html https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus.html#comments Tue, 19 Oct 2021 18:00:43 +0000 https://patentlyo.com/?p=34024 Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1

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.

Continue reading Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1 at Patently-O.

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

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.

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Surgisil, Subject Matter, and Scope https://patentlyo.com/patent/2021/10/surgisil-subject-matter.html https://patentlyo.com/patent/2021/10/surgisil-subject-matter.html#comments Tue, 19 Oct 2021 13:55:19 +0000 https://patentlyo.com/?p=34022 Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

In an earlier post, Professor Crouch discussed the Federal Circuit’s recent decision in In re Surgisil. In that decision, the Federal Circuit recognized that 35 U.S.C. § 171 provides for the grant of patents for designs for articles of manufacture, not designs in the abstract. In doing so, the court’s decision was in accord with the rationale—if not the limited express holding—of its earlier decision Curver Luxembourg.

Professor Crouch is correct that this holding means that the scope of § 102 prior art for designs is limited. And yes, it means you could take a shape developed for one article of manufacture and apply it to a different type of article and potentially get a design patent for it. But there is nothing wrong with that. Designing a shape for a binder clip, for example, is a different design problem than designing a shape for a handbag. Using the shape of the former for the latter could be a valuable act of design, as I argued in this article (which was relied on heavily by Surgisil though not cited by the court).

Continue reading Surgisil, Subject Matter, and Scope at Patently-O.

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Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

In an earlier post, Professor Crouch discussed the Federal Circuit’s recent decision in In re Surgisil. In that decision, the Federal Circuit recognized that 35 U.S.C. § 171 provides for the grant of patents for designs for articles of manufacture, not designs in the abstract. In doing so, the court’s decision was in accord with the rationale—if not the limited express holding—of its earlier decision Curver Luxembourg.

Professor Crouch is correct that this holding means that the scope of § 102 prior art for designs is limited. And yes, it means you could take a shape developed for one article of manufacture and apply it to a different type of article and potentially get a design patent for it. But there is nothing wrong with that. Designing a shape for a binder clip, for example, is a different design problem than designing a shape for a handbag. Using the shape of the former for the latter could be a valuable act of design, as I argued in this article (which was relied on heavily by Surgisil though not cited by the court).

There may be cases where this kind of shape adaptation might be obvious, but that is a problem for § 103, not § 102. It is true that, for utility patents, the universe of prior art for § 102 is broader than it is for § 103. But, given the different nature of the inventions protected and the different claiming conventions, it makes sense to treat designs differently.

I respectfully disagree with Professor Crouch’s suggestion “Surgisil is in some tension with precedent holding that the claim scope should be limited only to ornamental features.” The cases he cites, In re Zahn and OddzOn, deal with entirely different issues—the concept of what constitutes a protectable “design” in Zahn and the question of “functionality” filtering in OddzOn. (And in any case, Zahn is a terrible decision that should be overruled.)

And there is nothing inconsistent about recognizing that a design patent’s scope should be tethered to the claimed article and the principle that design patents protect how things look, not how they work. Recognizing that the statutory subject matter here is a design for a surgical implant does not change the fact that the patent’s scope extends only the claimed visual appearance. The court’s decision in Surgisil does not mean that the use of the article is protectable per se; it merely limits the scope of the patent to instances in which the accused product is directed to the same design problem. And none of the cases cited by the USPTO require design patents to cover designs per se.

One more thing: At oral argument, the USPTO argued that its “article doesn’t matter” approach was necessary to effectuate the idea of the “broadest reasonable interpretation” (BRI) of a design patent claim. BRI is a concept that was developed in the context of utility patents and it’s not clear that it has any useful application to design patents. But to the extent that it does, the BRI of a design patent claim might be something like Egyptian Goddess step 1—i.e., the shape (or surface design) in the abstract, considered without consideration of any potentially narrowing prior art.

Federal Circuit Further Eases Path for Obtaining Design Patents

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Not a Trademark Case: Edible vs Google at the Georgia Supreme Court https://patentlyo.com/patent/2021/10/trademark-georgia-supreme.html https://patentlyo.com/patent/2021/10/trademark-georgia-supreme.html#comments Mon, 18 Oct 2021 21:10:19 +0000 https://patentlyo.com/?p=34011 Not a Trademark Case: Edible vs Google at the Georgia Supreme Court

by Dennis Crouch

Edible IP v. Google (GA 2021)

This interesting case is pending before the Supreme Court of Georgia over the question of keyword advertising under Georgia law.  The following comes from Edible’s brief:

Edible’s claim is simple. It owns valuable intangible property associated with the trade name “Edible Arrangements.” The law [of Georgia] protects its right to exclude others from trading on that name and its associated good will for profit. The Complaint alleges that when Google auctions off that name and the associated business goodwill, Google violates Edible’s rights to exclude others from its property and appropriates the value of Edible’s goodwill for itself. As a matter of fact, this is an illegal [theft-by-]taking, and Edible can introduce evidence within the framework of the Complaint to prove each cause of action.

The trial and appellate courts both sided with Google, holding that keyword advertising is akin to permissible sponsored product placement in grocery stores.  The Supreme Court is set to hear oral arguments in the case on November 10, 2021.

Google argues that any decision in Edible’s favor would be contrary to federal trademark law and be in violation of the free speech provision of the First Amendment of the U.S.

Continue reading Not a Trademark Case: Edible vs Google at the Georgia Supreme Court at Patently-O.

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by Dennis Crouch

Edible IP v. Google (GA 2021)

This interesting case is pending before the Supreme Court of Georgia over the question of keyword advertising under Georgia law.  The following comes from Edible’s brief:

Edible’s claim is simple. It owns valuable intangible property associated with the trade name “Edible Arrangements.” The law [of Georgia] protects its right to exclude others from trading on that name and its associated good will for profit. The Complaint alleges that when Google auctions off that name and the associated business goodwill, Google violates Edible’s rights to exclude others from its property and appropriates the value of Edible’s goodwill for itself. As a matter of fact, this is an illegal [theft-by-]taking, and Edible can introduce evidence within the framework of the Complaint to prove each cause of action.

The trial and appellate courts both sided with Google, holding that keyword advertising is akin to permissible sponsored product placement in grocery stores.  The Supreme Court is set to hear oral arguments in the case on November 10, 2021.

Google argues that any decision in Edible’s favor would be contrary to federal trademark law and be in violation of the free speech provision of the First Amendment of the U.S. Constitution.

Google may have cleaned-up its advertising in the lead-up to the Supreme Court arguments. My search on Oct 18, 2021 revealed no ads showing up for “Edible Arrangements” but one of the top hits is a rhetorical question from Google “Is Edible Arrangements overpriced?”

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Briefs:

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NOT a TM Case: A key aspect of the case is that Edible is not on suing trademark law.  Rather the cause of actions center on state statutes involving theft of personal property.  “Customer confusion is not an element of any of Edible’s claims.”  Edible’s Brief.   In its argument, Google argues for a bright line rule that Georgia courts cannot enforce rights to trade-names absent fraud, deception, or confusion.  According to Google, any broader rights would impinge upon the company’s freedom to sell competitive advert-space tied to Edible’s name as protected by the First Amendment.

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Edible International, LLC is the company that franchises the basket delivery.  The plaintiff here Edible IP, LLC is the company that owns the trademarks. Edible IP licenses the marks to Edible International.   It is not clear to me the exact relationship between these two companies, but they are obviously related.

Edible International opened an advertising account with Google, and clicked “I agree” to Google’s terms that included an agreement to arbitrate any resulting disputes.  The district court found this was binding on Edible IP, and that issue is also before the Georgia Supreme Court. Edible IP argues that it should not be bound by the actions of its Edible International relation.

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The International Franchise Association filed a brief in support of Edible: “Google’s advertising model is profiting directly from using the trade names and goodwill of established companies for profit. This use is antithetical to fair business practices and the law, and it should not be allowed.”

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Pending patent legislation:  https://patentlyo.com/patent/2021/10/pending-patent-legislation.html https://patentlyo.com/patent/2021/10/pending-patent-legislation.html#comments Mon, 18 Oct 2021 20:02:39 +0000 https://patentlyo.com/?p=34009 by Dennis Crouch

  • S.2891 – Restoring the America Invents Act. Substantial changes to the IPR system to favor the patent challenger.  (Sponsored by Sen. Cornyn, R-TX; Sen. Crapo, R-ID; and Sen. Leahy, D-VT).
  • S.2774 – Pride in Patent Ownership Act. Creating additional incentives to timely record patent ownership interests. (Sponsored by Sen. Leahy, D-VT and Sen. Tillis, R-NC).
  • H.R.3664 – Save Money on Auto Repair Transportation Act (SMART) Act. Design patent cannot be enforced to restrict repair of a motor vehicle. (Rep. Issa R-CA; Rep Joyce, R-OH; Rep. Perry R-PA; Rep. Lofgren D-CA; Rep Cohen D-TN; Rep Jackson Lee, D-TX)
  • S.2773 – Unleashing American Innovators Act of 2021.  Adding satellite and outreach offices to the USPTO. (Sponsored by Sen. Leahy, D-VT and Sen. Tillis, R-NC).
  • H.R.2884 – Affordable Prescriptions for Patients Through Improvements to Patent Litigation Act.   This would limit patentees to asserting only 20 patents in a BPCIA action.  (Sponsored by Hank Johnson, D-GA).
  • H.R.2891 – Preserve Access to Affordable Generics and Biosimilars Act. Authorizes FTC to pursue actions against brand/generic settlements that involve the branded-patentee providing “anything of value” to the generic in order to end the patent challenge.

Continue reading Pending patent legislation:  at Patently-O.

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by Dennis Crouch

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Attorney fees awarded since patentee knew it had a losing case. https://patentlyo.com/patent/2021/10/attorney-awarded-patentee.html https://patentlyo.com/patent/2021/10/attorney-awarded-patentee.html#comments Fri, 15 Oct 2021 14:40:36 +0000 https://patentlyo.com/?p=33992 Attorney fees awarded since patentee knew it had a losing case.

by Dennis Crouch

This decision suggests that the Federal Circuit is acceding to the Supreme Court’s approach giving broad discretion to the district courts in attorney fees cases rather than nit-picking individual elements of the totality-of-the-circumstances test.  But, we’ll see. 

Energy Heating, LLC v. Heat On-the-Fly, LLC (Fed. Cir. 2021)

In a prior appeal in this case, the the Federal Circuit affirmed the lower court’s holding that Heat On-The-Fly’s U.S. Patent No. 8,171,993 was unenforceable due to inequitable conduct.  By the critical date (1-year-before-filing), the patentee had done about $2 million in jobs using the invention, but did not disclose those sales/uses to the USPTO during prosecution.

On remand, the district court awarded attorney fees to the defendants — finding the large number of undisclosed sales sufficient to constitute “affirmative egregious conduct” and then pursued aggressive litigation despite knowing that the patent was invalid.

The patent act provides a district court with discretion to award “reasonable attorney fees to the prevailing party” in “exceptional cases.”  Once you have a prevailing party, the district court needs to determine whether the case is “exceptional.”  If so, the district court will then determine whether to award attorney fees, and the amount to award. 

Continue reading Attorney fees awarded since patentee knew it had a losing case. at Patently-O.

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by Dennis Crouch

This decision suggests that the Federal Circuit is acceding to the Supreme Court’s approach giving broad discretion to the district courts in attorney fees cases rather than nit-picking individual elements of the totality-of-the-circumstances test.  But, we’ll see. 

Energy Heating, LLC v. Heat On-the-Fly, LLC (Fed. Cir. 2021)

In a prior appeal in this case, the the Federal Circuit affirmed the lower court’s holding that Heat On-The-Fly’s U.S. Patent No. 8,171,993 was unenforceable due to inequitable conduct.  By the critical date (1-year-before-filing), the patentee had done about $2 million in jobs using the invention, but did not disclose those sales/uses to the USPTO during prosecution.

On remand, the district court awarded attorney fees to the defendants — finding the large number of undisclosed sales sufficient to constitute “affirmative egregious conduct” and then pursued aggressive litigation despite knowing that the patent was invalid.

The patent act provides a district court with discretion to award “reasonable attorney fees to the prevailing party” in “exceptional cases.”  Once you have a prevailing party, the district court needs to determine whether the case is “exceptional.”  If so, the district court will then determine whether to award attorney fees, and the amount to award.  These determinations are within the district court’s equitable discretion based upon a broad “totality of the circumstances”  test.  On appeal, the district court’s factual and equitable determinations are given deference and only overturned based upon an abuse of discretion. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014); Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014).

On appeal, the patentee challenged the “exceptional case” finding, but the appellate panel found no abuse of discretion.

Inequitable conduct is an equitable defense that is traditionally decided by a judge rather than a jury.  An oddity of the case is that the jury was actually asked whether the patentee had represented in bad faith that it held a valid patent as part of the defendant’s state law claim counterclaim of “deceit.”In the appeal, the patentee argued that it was improper for the district court to rely upon the jury’s bad faith determination. I don’t understand that argument and neither did the Federal Circuit.

The jury found bad faith, but actually sided with the patentee on the ultimate question of deceit under N.D. Law.  On appeal, the patentee argued that the no-deceit conclusion should be determinative of no inequitable conduct as well. Of course, the prior appeal determined inequitable conduct and the Federal Circuit did not allow the issue to be relitigated in this appeal. The Federal Circuit did rule though that “the jury’s finding of no state-law ‘deceit’ simply has no bearing on inequitable
conduct.”

Finally, the patentee noted the absence of an express finding of litigation misconduct absent continuing to litigate losing positions. On appeal, the Federal Circuit found no problem with finding the case exceptional even absent particular litigation misconduct issues.

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