Atextual Conditions for Patentability and Stare Decisis

Patent

by Dennis Crouch

The new petition in SawStop v. USPTO (Supreme Court 2022) focuses the question of whether COURTS have power to create non-statutory patentability doctrines.

Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?

SawStop Petition for Certiorari.  You might imagine this argument being raised as tied to any number of patent doctrines: atextual eligibility limitations; assignor estoppel; doctrine of equivalents, etc.  This particular case focuses on obviousness-type double patenting (OTDP).  Question 2 of the petition focuses the question further: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”

Section 103 of the Patent Act generally defines the doctrine of obviousness and instructs tribunals to look to the prior art and consider whether the claimed invention is sufficiently beyond the prior art. But, even if a claims are found patentable under Section 103, the USPTO still considers obviousness-type double patenting.  Even if there is no prior art, the USPTO still bars a patentee from obtaining a separate patent claiming an obvious variation of already-issued claims held by the patentee/inventor. Thus, although 102(b)(2) explains that certain prior-filed patents are not prior art when attributed to the applicant/inventor, OTDP steps in on the back-side to effectively assert those excused documents as prior art.  Pause here to note that one big difference between obviousness and OTDP is that applicants can skirt OTDP rejections by filing a terminal disclaimer that effectively links the two similar patents together along two axes: same term and same owners.

My middle school shop teacher was missing fingers courtesy of a table saw. Yours? Steve Gass has a PhD in physics and also a patent attorney.  He was doing some amateurs woodworking when he conceived of his SawStop technology.  The basic idea: if the spinning blade ever touching human skin, the electrical connection triggers an emergency brake that stops/retracts the blade within 5 milliseconds.  “Fast enough to turn a life changing event into a minor cut.”  Gass has over 100 patents and runs the innovative product company SafeSaw.

Gass’s U.S. Pat No. 9,927,796 was filed back in 2002 — claiming priority to a 2001 provisional application. That patent finally issued in 2018–only after SawSafe filed a civil action and received a court-judgment in its favor.  A 1974 patent had disclosed use of a safety circuit and a braking-means. However, the district court concluded  that the prior art was not enabling — i.e., a person of skilled in the art would not be able to construct (or even design) the claimed invention without undue experimentation. [2016 Decision].

Another 16 issued patents also claim priority back to this 2002 application.  One application is still pending, Application 15/935,432, that claims an obvious variant of what has already been patenting.   The USPTO rejected the ‘432 application based upon the judicially created non-statutory doctrine of obviousness-type double patenting.  SawStop did not want to file a terminal disclaimer on this valuable patent and instead appealed.  On appeal, the Federal Circuit affirmed without opinion in a R.36 Judgment.  Now, SawStop has petitioned the Supreme Court asking that the doctrine be eliminated.

= = =

Although the petition does not cite the Supreme Court’s recent abortion decision, it certainly picks-up upon some of the same themes:

  • A right to abortion “is nowhere mentioned in the Constitution.”  Similarly, obviousness type double patenting has no grounding in the Patent Act.
  • The fact that a precedent is old does not convert that precedent to a sacred text.

The Supreme Court in Bilski addressed this issue to some degree in the context of the non-statutory categorical bars of abstract ideas; laws of nature and natural phenomenon.

While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.

Bilski v. Kappos, 561 U.S. 593 (2010).  The Bilski court found a small textual hook, but also identified the doctrine as built upon longstanding precedent.

The longstanding nature of precedent is important in the patent context.  But unlike in the Constitutional abortion context, we have always had direct statutes guiding patent issuance and enforcement, beginning with the First Congress in 1790. In the area of obviousness, the doctrine was developed by courts and then implemented by statute in 1952.  In Graham though, the Supreme Court indicated that, with minor exceptions, the 1952 Act maintained all the old precedent.

Double Patenting in the Statute.  In its 2014 Abbvie decision, the Federal Circuit wrote that Obviousness Type Double Patenting is “grounded in the text of the Patent Act.”   In particular, the court honed-in on Section 101’s use of the singular article “a” in describing what is granted to an inventor: “a patent.”

While often described as a court-created doctrine, obviousness-type double patenting is grounded in the text of the Patent Act. . . . Section 101 reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, … may obtain a patent therefor.” 35 U.S.C. § 101 (emphasis added). Thus, § 101 forbids an individual from obtaining more than one patent on the same invention, i.e., double patenting.

Abbvie Inc. v. Mathilda and Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1372 (Fed. Cir. 2014).  But Judge Dyk’s conclusions in Abbvie are not well grounded themselves as there are several ways this provision could be interpreted. It also proves too much, since there are ways for a patentee to obtain multiple patents covering patentably indistinct inventions: (1) via terminal disclaimer; (2) via restriction.  If the patentee files a terminal disclaimer then the patent office will allow multiple patents to issue.  If the patentee files a divisional application (following a restriction) then the patent office will allow multiple patents to issue even without a terminal disclaimer.

 

The Federal Circuit’s Precedent/Outcomes Mismatch

Patent

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

Recently, we wrote about the small number of mandamus decisions on transfer of venue that the Federal Circuit has designated as precedential and about how those precedential decisions are unrepresentative of overall outcomes. Specifically, the Federal Circuit has labeled only 15% of its venue mandamus orders as precedential. And, though the Federal Circuit grants venue mandamus less than a third of the time, the court has granted nearly 80% of the petitions it has decided in precedential orders.

As a comparison, we wanted to share some data on precedential opinion rates in regular Federal Circuit appeals (as opposed to mandamus petitions). Our data make two things clear.

  • First, opinions in regular appeals are more than twice as likely to be precedential than orders on venue mandamus.
  •  Second, the outcomes reported in those precedential opinions—like precedential mandamus orders—are skewed toward cases in which the Federal Circuit disagrees with the decision below.

On the first point, here’s the breakdown of precedential opinions, nonprecedential opinions, and Rule 36 affirmances for all Federal Circuit appeals from 2008 through 2021.

Table 1: Federal Circuit Panel Appeal Rulings, 2008 through 2021

Table 2 below breaks the data down by tribunal of origin.

Table 2: Federal Circuit Panel Appeal Rulings By Tribunal of Origin, 2008 through 2021

These two tables make clear that, overall, 30% of Federal Circuit appeals are decided in a precedential opinion. In district court cases—the most relevant comparator for venue mandamus petitions—the figure is 42%.

Either way, the proportion of appeals resolved in precedential opinions is substantially higher than for venue mandamus petitions. Moreover, the Federal Circuit decides more than a quarter of appeals in no-opinion affirmances—a mechanism the court does not employ for mandamus petitions. If we excluded Rule 36 affirmances from our calculations, the differences between appeals and mandamus orders would be even greater.

On the second point about skewed outcomes: Like with mandamus petitions, the results in precedential opinions disproportionately disagree with the lower court or agency. Table 3 below reports the outcomes and modes of disposition of all Federal Circuit appeals (excluding a few hundred appeals that were dismissed or that had an unusual outcome—namely, something other than affirmed, reversed, vacated, etc.) from 2008 through 2021.

Table 3: Federal Circuit Panel Appeal Rulings, Excluding Dismissals and Other Outcomes, 2008 through 2021

As the bottom row of the table makes clear, overall, the Federal Circuit fully affirms in 78% of appeals. Yet, as the first row of data indicates, only 53% of precedential Federal Circuit opinions affirm the lower tribunal; 47% vacate or reverse, at least in part. By contrast, nonprecedential opinions (the second row of data on the table) fully affirm 81% of the time. And, as indicated toward the bottom of the table, nearly 30% of Federal Circuit appeals are decided in no-opinion Rule 36 affirmances, which, by definition, also fully affirm across the board.

In short, looking only at precedential opinions, one might think that, in any given appeal, there’s about a 50-50 chance the Federal Circuit will at least partly disagree with the tribunal below. But, in reality, fewer than a quarter of the Federal Circuit’s decisions disagree with the tribunal below in any respect.

The disparity between the outcomes reported in precedential opinions versus overall results is equally stark when the data is limited to the primary sources of Federal Circuit patent cases—appeals from the district courts, the PTO, and the ITC. From those three tribunals, combined, only 48% of precedential opinions fully affirm. But the overall fully-affirmed rate in appeals from those tribunals is 73%. The figures below illustrate those vast disparities.

Figure 1: Federal Circuit Precedential Rulings in DCT, PTO, and ITC Appeals, 2008 through 2021

Figure 2: Federal Circuit Nonprecedential Rulings in DCT, PTO, and ITC Appeals, 2008 through 2021

The skew of precedential opinions toward decisions that disagree with the lower tribunal provide a misleading sense of what Federal Circuit’s rulings look like day in and day out, just like the Federal Circuit’s precedential venue mandamus orders provide an inflated sense of the likelihood of mandamus being granted. These findings also raise interesting questions about what happens to patent doctrine when it is developed in cases that are not representative of overall outcomes.

The data used in this post comes from the Federal Circuit Dataset Project, available at https://doi.org/10.7910/DVN/UQ2SF7 or empirical.law.uiowa.edu.

 

Supreme Court – Looking Forward to 2022-2023

Patent

By Dennis Crouch

The Supreme Court has closed-out its 2021-2022 term without deciding or granting certiorari in any patent cases.  Overall, the court denied certiorari in 40+ patent cases, including the biggest case of American Axle.  I’ll post a review of those denied cases later this month. Meanwhile we can start a preview for the 2022-2023 term.

Eight patent cases are now pending before the Supreme Court. Several focus on the written description and enablement requirements of 35 USC 112(a).

The current most-likely big case is Amgen Inc., et al. v. Sanofi, No. 21-757.  Amgen asks fundamental questions of how the enablement doctrine should operate and whether enablement is a question-of-fact or a question-of-law. These are important issues fundamental to patentability that also touch on some of the same principles as  the eligibility cases.  The Court has requested an amicus filing from the Solicitor General.  Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281, is a patent eligibility case, but it asks a related question about the extent that principles of Section 112 are applicable to the eligibility analysis.  In Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566 focuses on “full scope” written description – arguing that the Federal Circuit’s application goes too far beyond the statutory text.  Biogen International GmbH, et al. v. Mylan Pharmaceuticals Inc., No. 21-1567, also focuses on the written description requirement – asking what level of disclosure is necessary for a claim limitation requiring a therapeutic treatment to be “effective.”

The one other case that I would suggest has a good chance of certiorari is Hyatt v. USPTO.  But, that case focuses on the summary judgment standard for APA cases and so would in reality have very little impact on the patent system.

The final three cases are all well written briefs, but I expect that they have a very low chance of being heard because of intervening events:

  1. Apple Inc. v. Qualcomm Incorporated, No. 21-1327 (appellate standing – same question as the already denied parallel Apple v Qualcomm petition);
  2. CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527 (can the same PTAB judges both institute and decide IPR – I believe that Arthrex implicitly solved this issue, at least from a Constitutional perspective); and
  3. Worlds Inc. v. Activision Blizzard Inc., et al., No. 21-1554 (eligibility same question as the already denied petition in American Axle).

The court takes a summer break and then returns in the fall for the October 2022 term.

Supreme Court Refuses to Reconsider its Patent Eligibility Doctrine

Patent

by Dennis Crouch

As its final act for the 2021-2022 term, the US Supreme Court has denied certiorari in the pending patent eligibility cases of American Axle v. Neapco and Spireon v. Procon.

The Patent Act expressly lists four categories of patentable inventions: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.”  35 U.S.C. 101. This language is almost identical to the list created for the Patent Act of 1790.  The Supreme Court added further atextual caveats — no abstract ideas; laws of nature; or natural phenomenon.

SCT: Breyer to Jackson

Patent

by Dennis Crouch

Justice Stephen Breyer is retiring today from the Supreme Court after 28 years on the bench.  Judge Ketanji Brown Jackson will be sworn-in as his replacement. Congratulations!  Justice Breyer was an administrative law and copyright scholar at Harvard before moving into the judiciary in 1980 (1st Circuit). President Bill Clinton nominated Breyer to the Supreme Court in 1994 on the retirement of Harry Blackmun.

Justice Breyer wrote the opinion for a unanimous court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).  That decision established the two step eligibility test and broadly construed the concept of a ‘law of nature.’ In Dickinson v. Zurko, 527 U.S. 150 (1999), Justice Breyer wrote the majority opinion holding that the Administrative Procedure Act’s (APA) standards applied to appellate review of USPTO factual findings.  The result is a high level of deference and thus a low chance of overturning a PTAB factual finding on appeal.

Judge Jackson was a D.C. district court judge and then later on the D.C. Circuit Court of Appeals. on the the D.C.  In those roles, she handled a number of administrative cases in the FDA/Patent space.

Trademarks, Territoriality, and Migration

Patent

Meenaxi Enterprise, Inc. v. Coca-Cola Company, 21-2209 (Fed. Cir. 2022)

Although goods are often shipped globally, many companies manufacture and sell region-specific products.  That divide allows the company to cater to local market preferences and regulations and also avoid potential arbitrage.

In the 1970’s Coca-Cola withdrew its flagship sugary cola from the Indian market at a time of heavy regulation of foreign companies. A local company then started Thums Up and it quickly became popular across the country.  Although similar to Coca-Cola, Thums Up is ‘spicier’ and you can almost taste the cardamom and cinnamon.  In the 1990s, the Indian market opened again to foreign competition. Coca-Cola purchased rights to Thums Up along with Limca lemon-lime and others and continues to sell those products in India (as well as other countries).  Coca-Cola holds the trademark rights in India, but not in the USA.  Apparently Coca-Cola abandoned its US version of the THUMS UP application back in 1987 and its US LIMCA mark expired in 1996.

About 5 million Indians and Indian-Americans live in the USA, and some of those people want to purchase Thums Up and Limca.  In 2008 Meenaxi began filling the US demand with its own version version of the drinks.  In 2012, the Meenaxi registered the two word marks with the USPTO (THUMS UP & LIMCA).  Coca-Cola stepped-in in 2016 seeking to cancel Meenaxi’s mark registrations.

The TTAB sided with Coca-Cola in ordering the marks cancelled.  On appeal, however, the Federal Circuit has reversed with Judge Dyk writing the opinion joined by Judge Stoll and Judge Reyna writing a concurring opinion.

A case like this begins with the territorial doctrine of trademark law:

Under the territoriality doctrine, a trademark is recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.

McCarthy on Trademarks § 29:1.  A simple assumption is that territorial limits align with both the laws and the people. e.g., Indians live in India and are subject to the law of India.  But here we know that Indians have migrated and brought their distinctiveness understandings with them to the USA.  Meenaxi has been free-riding off those understandings and continues to do so.  Here though, the this population centric notion of trademark law falls to the hard principle of U.S. law that trademark rights in the US require that the mark be used in the US.

Here, the court also considered whether Meenaxi’s use should actionable under the more general provisions of Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a).  However, the court found that Coca-Cola had failed to show any US injury.  (1) No lost sales; and (2) No reputational injury.  The court seemed to agree that it could be improper for Meenaxi to use Coca-Cola’s goodwill with Indian-American consumers.  But, the problem was that Coca-Cola failed to provide substantial evidence proving the existenece of free-riding. In particular, the evidence showed that the marks were well known in India, and that Meenaxi was marketing the products to Indians and Indian-Americans in the USA.  But, the missing link was evidence that the US-based Indians and Indian-Americans were aware of the branding.

There is no basis [in the evidence] to assume that an American of Indian descent is aware of brands in India. The Board did not consider what portion of Indian Americans had spent time in India, i.e., how many had visited India or lived in India. The Board’s conclusion relies at least in part on stereotyped speculation. . . .

Coca-Cola has not presented any survey evidence showing awareness of either mark in the United States. . . . This is plainly insufficient.

Slip Op.

Unlike IPRs on the patent side, trademark cancellation proceedings have a standing requirement.  The petitioner must “believe[] that he is or will be damaged . . . by the registration of a mark on the principal register[:] . . .”  15 U.S.C. § 1064.  And, although the “belief” element appears subjective, it is interpreted as quite objective.  Here, since Coca-Cola could not show any US injury then could not reasonably believe it was damaged.   REVERSED in favor of Meenaxi.

Judge Reyna argued that the case is governed by the territorial principal of trademark law. “[T]he majority’s opinion could be reasonably read to imply that CocaCola could have established statutory standing if it proved that U.S. consumers were aware of its Indian brands. But if that were the case, I would still reverse because the territoriality doctrine governs, and Coca-Cola waived reliance on the well-known mark exception thereto.”

= = =

The case cites recent work by Professors Farley & McKenna with regard to some confusion created by Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016). Christine H. Farley, No Trademark, No Problem, 23 B.U. J. Sci. & Tech. L. 304, 313 (2017) (stating the Belmora decision “failed to acknowledge that its ruling challenged fundamental principles of trademark law”); Mark P. McKenna & Shelby Niemann, 2016 Trademark Year in Review, 92 Notre Dame L. Rev. Online 112, 122 (2016) (stating the Belmora decision “is especially notable . . . [in] its failure to recognize the implications of its decision for the territoriality of trademark rights”).

Protective Orders and Joint Defense Agreements

Patent

by Dennis Crouch

Static Media LLC v. Leader Accessories LLC and Jen-Feng (Jeff) Lee (Fed. Cir. 2022)

Back in 2018, Static Media sued Leader Accessories in W.D. Wisconsin for infringing its U.S. Design Patent D771,400, covering an ornamental design for a stadium seat.  The case ended with a summary judgment of non-infringement. The district court found a large number of similar prior art designs and thus narrowly construed the potential infringement window.  The district court then walked-through a number of differences that would preclude a finding of substantial similarity, including the quilted vertical columns,; difference in the lower portion of the back (straight vs sloping at the edges); narrower seat cushion; distinctive storage panel with two pockets; etc.

Parallel Cases and a JDA: While the Leader case was ongoing, Static Media also threatened and then sued OJ Commerce for infringing the same patent.  The two defendants – Leader and OJ – entered into a Joint Defense Agreement (JDA) for the purpose of creating a common defense in both cases with Jeff Lee representing Leader and Sam Hecht representing OJ.

The Wisconsin case was subject to a confidentiality agreement/order.  Lee wanted to send some confidential case documents to Hecht.  But, before doing so, first had Hecht sign the confidentiality agreement. At that point, Lee sent over some deposition transcripts as well as prior licensing/sales information from the patentee.  According to the court “[o]nly a few of the pages in those documents were marked confidential, the rest were not.”

Hecht (OJ’s attorney) later used the confidential documents from the Leader case in license negotiations.  Static Media’s attorneys were upset at this information sharing and petitioned for sanctions.  The Wisconsin magistrate and district court agreed and concluded Lee’s disclosures to Hecht were in violation of the protective order.  In particular, the protective order limited the use of confidential information: “solely for the purposes of this action.” I.e., confidential disclosures in Static v. Leader could only be used for Static v. Leader.  The court ordered a sanction under R. 37 of $1,000 plus $10,500 in attorney fees.

On appeal, a divided Federal Circuit panel has reversed–finding a “fair ground of doubt as to the wrongfulness” of the conduct.  Quoting Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885).

Two theories of contempt:

  1. Theory 1: When Lee disclosed the material to Hecht, Lee knew (or should have known) that Hecht would use it in the OJ case.  On appeal, the Federal Circuit found this theory lacked evidentiary support.  The court particularly pointed to Lee’s requests that Hecht sign and then comply with the confidentiality agreement. “Mr. Lee had Mr. Hecht sign the Written Assurance, and with each disclosure, Mr. Lee reminded Mr. Hecht of the obligations the protective order imposed on his use of the confidential information.” Slip Op.
  2. Theory 2: Even though Hecht signed the agreement, disclosure to Hecht for the purposes of a JDA was improper. On appeal though, the Federal Circuit found focused on the purpose of the agreement — to prevent public disclosure or disclosures that would place the parties at a competitive disadvantage. The appellate panel then found that a Joint Defense Agreement does not frustrate that goal.

The majority opinion was authored by Judge Dyk and joined by Judge Taranto.  Judge Reyna wrote in dissent — concluding that the majority failed to give the district court’s sanctions order sufficient deference.

He, She, or They in US Patent Law

Patent

by Dennis Crouch

The United States Constitution was ratified in 1789.  The following year, Congress passed the first patent act that was then signed-into law by President George Washington.

When the Patent Act of 1790 refers to inventors, it lists gender inclusive forms of “he, she, or they:”

[The inventor(s) must] set[] forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein…

Patent Act of 1790. Three years later, Congress substantially rewrote the statute and, at that time changed the pronouns.  The new law eliminated the female pronoun “she.”

[The inventor(s)] shall allege that he or they have invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter …

Patent Act of 1793. See, Kara W. Swanson, Making Patents: Patent Administration, 1790-1860, 71 Case W. Res. L. Rev. 777, 818 n84 (2020) (noting the change).  Thus far, I have not been able to identify any explanation or justification for this particular change in the gender language.  Perhaps the answer here was simply reestablishment of a patriarchy after some higher-minded ideals during the revolutionary era. Chief Justice Burger explained in Diamond v. Chakrabarty that Thomas Jefferson authored the 1793 Act with the intent that “ingenuity should receive a liberal encouragement.” 447 U.S. 303, 308 (1980) (quoting 5 Writings of Thomas Jefferson 75–76 (Washington ed. 1871)), but the Chief Justice did not content with the narrowing of pronouns (or the newly introduced citizenry limit).  [*** Note: Later historians have concluded that Jefferson was not the author.  See, Edward C. Walterscheid, To Promote the Progress of Useful Arts: American Patent Law and Administration – 1787-1836, 79 J. Pat. & Trademark Off. Soc’y 61 (1997) ***].  In any event, this implicit exclusion of women was common for the era (as was explicit exclusion).  Still, unlike in many other areas of American life at the time, the revised statute was not interpreted to expressly exclude women from patenting. That said, patenting by women was at an extremely low level. Women inventors are credited with only 72 patents during the first 70 years of the U.S. patent system. Although the records are unclear, I have not seen any indication that any of the patents issued 1790-1793 were awarded to women inventors.

The patent laws were rearranged and recodified in the 1952 Patent Act. At that point Congress used a more generalized pronoun “whoever” for the new Section 101: “Whoever invents or discovers…”  But, a number of purely male references remained in the statute.  Section 115 required the inventor to make an oath that “he believes himself to be the original and first inventor;” Section 102(f) prohibited a person from obtaining a patent if “he did not himself invent the subject matter sought to be patented.”  These two provisions were amended and removed respectively as part of the America Invents Act of 2011.  Section 115 now identifies inventors as either male or female–requiring an inventor’s oath stating that “individual believes himself or herself to be the original inventor.” Still, other provisions in the law were not changed during this makeover and remain male gendered.  See 35 USC 251 (“patentee claiming more or less than he had a right”); 289; 290; 33 (referring to the patent practitioner); and 116.  In addition, all references to the USPTO Director continue to refer to the director as male.

For its part, the USPTO has not historically asked for the gender of its applicant.  Still, there is plenty of evidence for historic and ongoing systemic gender bias. See, for example, Kyle Jensen, Balázs Kovács & Olav Sorenson, Gender Differences in Obtaining and Maintaining Patent Rights, 36 NATURE BIOTECH. 307, 308 (2018); B. Zorina Khan, Married Women’s Property Laws and Female Commercial Activity: Evidence from United States Patent Records, 1790-1895, 56 J. ECON. HIST. 356 (1996); Deborah J. Merritt, Hypatia in the Patent Office: Women Inventors and the Law, 1865-1900, 35 AM. J. LEGAL HIST. 235, 290 (1991); Carroll Pursell, The Cover Design: Women Inventors in America, 22 TECH. & CULTURE 545 (1981). Dan L. Burk, Do Patents Have Gender?, 19 Am. U. J. Gender Soc. Policy & L. 881 (2011).

For many years, the use of a single male pronoun in legal documents has been  frequently interpreted as including all genders of humans as well as other legal persons, such as corporations.  In recent arguments regarding AI-inventorship, the USPTO argued that the Congressional rewrite of Section 115 to focus binary gender identities indicates an intent to limit inventorship rights to only human inventors.

  • Pre-AIA: “he believes himself to be the original and first inventor.”
  • Post-AIA: “such individual believes himself or herself to be the original inventor.”

Of course, our new world also accepts non-binary gender, both under federal law and the law of some states. Interpreting “himself or herself” as particularly limiting is clearly wrong if it excludes non-binary humans from the patenting process.  This brings me back to the Patent Act of 1790.  It appears clear from the grammatical context that Congressional use of “they” in the 1790 Act was referring to instances what we now call joint inventorship.  But, perhaps that early Congress had already stumbled upon a right answer.

American Axle – Still Waiting

Patent

by Dennis Crouch

No decision today in the pending subject matter eligibility case of American Axle v. Neapco. Friday was the last scheduled conference for 2021-2022. However, the Court traditionally holds one additional clean-up conference once it issues all of its merits decisions.  If the court follows its past tradition, it will either grant or deny the petition at that final conference.  The court also took no action on the follow-on eligibility case of Spireon v. Procon. Certiorari was denied in both Apple v. Qualcomm (standing to appeal IPR) and EPA II (collateral shareholder challenge of patent decision).

What does this mean? Conventional wisdom is that a hold-over increases the odds of certiorari.  The up/down decision will likely be pushed back to early July.

Federal Circuit Flips “Negative Claim Limitation” Decision after Change in Panel Composition

Patent

By Chris Holman

Novartis Pharms. Corp. v. Accord Healthcare, Inc., 2022 WL 2204163, — 4th —  (Fed. Cir. June 21, 2022)

Here we have a case in which a petition for rehearing by the Federal Circuit leads to a flipped decision that appears to be the consequence of a change in panel composition.

In the original decision, authored by Judge O’Malley and decided January 3, a divided panel upheld a district court’s determination that the patent claims at issue were not invalid for failure to satisfy the written description requirement. The Federal Circuit agreed to rehear the case, but the composition of the panel rehearing the case was altered by the replacement of Judge O’Malley (who retired in March) with Judge Hughes. The reconfigured panel flipped the result of the earlier decision, this time reversing the district court.  The second decision was authored by Judge Moore, the dissent in the original decision. Judge Linn, who sided with Judge O’Malley in the original decision, found himself writing in dissent the second time round.

The relevant issue before the court was whether a negative claim limitation was adequately supported by the priority patent application. The claims are directed towards methods of treating relapsing-remitting multiple sclerosis (RRMS) through the administration of fingolimod (an immune suppressant) “at a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen.”  The “no loading dose” limitation was added by amendment during prosecution in order to overcome an obviousness rejection.  A loading dose is a “higher-than-daily dose,” usually given as the first dosage in a dosing regimen.   It was undisputed that loading doses were well-known in the medical field generally, and that loading doses have been used with some medicaments used in the treatment of MS.

The priority application does not explicitly mention loading doses, let alone the absence of a loading dose, but the district court nonetheless found implicit support for the negative claim limitation in two examples provided in the specification (one a prophetic human clinical trial, the other an experiment conducted in rats) which disclosed dosage regimens that did not involve the use of an initial loading dose. There was expert testimony to the effect that a person of skill in the art (POSA) reading the examples would have understood them as being “complete,” and as such the fact that the examples do not mention a loading dose implicitly discloses a dosage regimen that is not preceded by a loading dose.

In the original decision upholding the district court’s decision as not erroneous, Judge O’Malley emphasized that the majority was not instituting a “new and heightened standard for negative claim limitations,” and acknowledged that the disclosure need not describe a limitation in haec verba.  Writing in dissent, Judge Moore argued that the “no loading dose” limitation could not possibly find adequate support in a patent specification that fails to even mention loading doses.

Writing for the majority in the second opinion, Judge Moore reiterates her position that the district court clearly erred in finding written description support for the “no loading dose” limitation. While she acknowledges that a negative claim limitation does not necessarily require explicit written description support when the specification describes a reason to exclude the relevant element, e.g., when the specification identifies disadvantages of using that element, or “distinguishes among” the element and alternatives to it, she maintains that the element must at least be disclosed in some form, given that “the hallmark of written description is disclosure.” Judge Moore does not dispute that the written description requirement can be satisfied if a skilled artisan would have understood that the specification inherently discloses the negative limitation, but she found no evidence on the record in this case that a skilled artisan would understand silence regarding a loading dose to “necessarily exclude” a loading dose.

In his dissent, Judge Linn does not so much disagree with Judge Moore’s characterization of the law of written description, as with the way the majority applied that law to the facts of this case. In particular, he complains that majority improperly required the priority application to disclose that the negative limitation in question was “necessarily excluded”.  He argues that it can be sufficient for the specification to merely provide a “reason to exclude” the negative claim limitation.

 

Judicial Recusal Order Saves Cisco $2.75 Billion

Patent

by Dennis Crouch

Cisco has escaped its $2.75 billion patent infringement loss with a recusal order based upon the fact that the Judge’s spouse owned $5,000 in Cisco stock. 

Centripetal Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2022)

Judge Dyk wrote this opinion ordering the recusal of E.D. Va. Judge Henry C. Morgan based upon his spouse’s ownership of about $5,000 of Cisco stock. The order also vacates all orders and opinions in the case entered after Judge Morgan learned of her ownership.

In this situation, the (rather small) financial interest suggests tilting things in Cisco’s favor. But, here is the crazy thing: The outcome of the case was a $2.75 billion verdict for the patentee Centripetal — i.e., Cisco lost the case. When Judge Morgan learned of the ownership, he immediately notified the parties. Centripetal indicated that it had no problem with Judge Morgan continuing to hear the case.  But, Cisco concluded that it was likely to lose the case anyway and so requested Judge Morgan recuse himself under 28 U.S.C. § 455.   The Judge denied Cisco’s motion for recusal and eventually awarded the absolutely huge judgment against Cisco.

Spousal activity and recusal has been in the news lately with Justice Thomas and his spouse’s political advocacy.  Although judicial codes of ethics provide guidance. Congress has also created a statutory regime that requires recusal in certain situations. On point for this case, the statute calls for recusal if a judge “knows that he … or his spouse … has a financial interest … in a party to the proceeding, or any other interest that could be substantially affected by the outcome of the proceeding.”  28 U.S.C. § 455(b)(4).  This requirement to step-down is not waivable. § 455(e).

Here it is clear that Judge Morgan falls within § 455(b)(4).  However, the statute goes on to indicate that a judge who has devoted substantial judicial time to a matter can keep the case so long as they “divest [themselves] of the interest that provides the grounds for the disqualification.”  § 455(f).  Here, Judge Morgan took the step of placing the stock in a blind trust.  However, the Federal Circuit here held that the blind trust was not sufficient for the statutory requirement of “divest[ment].”

Judge Morgan had considered simply selling the stock, but was concerned about the appearance of insider training. On appeal, the Federal Circuit added a footnote concluding that it would not have been insider trading: “Selling the stock to comply with ethical obligations is not insider trading, as was made clear in the Stop Trading on Congressional Knowledge Act of 2012 (“STOCK Act”), Pub. L. 112–105, 126 Stat. 291, 298 (2012).”

Remedy for failure to recuse.  Sometimes there is no ex post remedy for a judge’s failure to recuse.  Here, as I mentioned, the financial incentive favored Cisco, but it is also Cisco that is asking for vacatur.  Centripetal argued that the failure to recuse was  thus a harmless error.  In Liljeberg v. Health Servs. Acquisition Corp., 486 U.S. 847, 862 (1988), the Supreme Court highlighted three factors in considering whether failure to recuse was harmless:

(1) “the risk of injustice to the parties in the particular case”;

(2) “the risk that the denial of relief will produce injustice in other cases”; and

(3) “the risk of undermining the public’s confidence in the judicial process.”

Id. On appeal, the Federal Circuit suggested that all three factors weighed in favor of recusal.  The court noted that the statute is purposely designed to require recusal without proving any actual bias.

Making such a bias determination would require the sort of line drawing that the statute was designed to avoid. . . . The reason § 455(b)(4) establishes a bright-line rule and does not require a showing of prejudice is because of the great difficulty in establishing actual prejudice in any particular case.

Slip Op.  On remand, the case will be re-assigned and rolled-back to August 2020.  That will likely require a new trial in the case.

Note that Judge Morgan passed away in May 2022. He was 87 years old. RIP.

Fintiv: Dir. Vidal calls for Fewer Discretionary Denials of Inter Partes Review Petitions

Patent

by Dennis Crouch

When Congress passed the Inter Partes Review (IPR) provisions of the AIA, there was some concern that the USPTO might be overwhelmed with IPR petitions; that patentees might be abusively harassed by IPR petitions; or that IPR petitions might sometimes problematically interfere with ongoing litigation.  One solution offered by Congress was give the USPTO Director discretionary and unreviewable authority to grant or deny IPR petitions.  We know that the PTO Directors have then passed this authority down to the PTAB who decides the institution petitions.  More recently, under Dir. Iancu direction the PTAB developed a more formalized doctrinal process for denying IPR institution when ongoing parallel litigation is already well underway.  See, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).   Because IPR petitions often follow infringement allegations, Fintiv considerations have become a regular aspect of IPR institution. In general, the PTAB  has been considering the following factors:

  1. Is the district court litigation stayed or likely to be stayed if the IPR is granted;
  2. Has the district court set a trial date that is close-in-time to the IPR statutory deadline for a final written decision;
  3. Have the district court and the parties already made substantial investment in the district court proceeding;
  4. Are there substantial overlap between issues raised in the petition and those found in the district court proceeding;
  5. Are the parties to the IPR the same as those in the parallel litigation;
  6. Are there other circumstances that suggest the exercise of discretion in denying the petition — including consideration of the merits of the petition.

In a recent release, USPTO Director Vidal has released a set of interim procedures for the PTAB to follow that somewhat modify Fintiv–and particularly make it less likely that the PTAB will exercise discretionary denials.  New rules:

  1. No discretionary denial if the petition presents “compelling evidence of unpatentability.”
  2. No discretionary denial if the petitioner stipulates that it will not “pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”  (Can the stipulation be conditional upon the grant of the petition?).
  3. Fintiv precedent does not apply to USITC proceedings.
  4. Some courts regularly set early trial dates and then repeatedly push them back. And, it seems that at least one judge (Judge Albright) has been strategically setting early trial dates in order to trigger discretionary denial. With that in mind, the PTAB’s consideration of trial dates should consider the median time to trial for the district and potentially other aspects of the litigation rather than simply the particular trial date set by the district court.

Read the memo here.

As you can see, the substantive changes all weigh against discretionary denials.  The memo and other sideline discussions also make clear that  the new boss (Dir. Vidal) does not favor discretionary denials.  I.e., in addition to new rules, we are also likely to have a different narrowing interpretation of the denial approach.

Design Patent: Invalid as Unduly Functional

Patent

by Dennis Crouch

Golden Eye Media USA v. Evo Lifestyle Products (Fed. Cir. 2022) (nonprecedential).

Evo’s design patent claims an “ornamental design for a foldable bag” as shown in the figures above.  This style of bag is known as a “trolly bag” in the UK and is used in shopping carts (trollies) to maintain order in reusable fashion.

After receiving a threat letter, Golden Eye filed a declaratory judgment action and won on summary judgment. In particular, the S.D.Ca. district court held the patent invalid as both functional and obvious; and also not infringed.

Functionality: Design patents focus on ornamentality rather than utility.  But, this divide quicky become confusing. Although the design must be ornamental, it is simultaneously a “design for an article of manufacture.” I.e., typically a design for a useful item.  The Federal Circuit has attempted to police this divide in a number of cases — trying to discern whether the design is unduly functional (and thus unpatentable as an ornamental design). Certainly, a design falls on the unduly functional side if its patent excludes all possible forms of the article of manufacture in question.  A step further, the court has concluded that a design “dictated by the utilitarian purpose of the article” is not protectable by a design patent. High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013).   In several cases, the court has recited a list of additional factors to consider:

  • Does the patent cover the “best design;”
  • Would alternative designs adversely affect the article’s utility;
  • Are there parallel utility patents;
  • Does the advertising tout features as having utility;
  • Are there any elements that are clearly ornamental – i.e., “clearly not dictated by function.”

See Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997).  Although functionality is a question of fact, the Federal Circuit affirmed that summary judgment was appropriate — finding “no issues of material fact precluding summary judgment.”

Of these factors, the most important appears to be the availability of alternative designs.  The quirk with that key factor is that the burden will be placed on the patentee to present those alternative designs even though the patent is presumed valid.

Obviousness: The court also affirmed on obviousness grounds — finding that an Irish patent filing by Trolly Cart founder (Doyle) created the same overall impression and that the only real difference in cloth handle length that was shown in other prior art bags.

Again, the appellate panel found that summary judgment of obviousness was appropriate. Obviousness is a question of law based upon underlying factual conclusions and summary judgment is appropriate when “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute.”

 

 

Decision on American Axle Within the Week

Patent

by Dennis Crouch

The country is awaiting big non-patent cases from the U.S. Supreme Court that we expect sometime over the next week or so.  Most notably is the abortion case of Dobbs v. Jackson Women’s Health Org.  No patent decisions are expected, but the Court will consider whether to grant certiorari in the lingering eligibility petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891.  The American Axle received strong support from various amici filings, including an important recent brief from the US Solicitor General arguing that courts are now excluding inventions that have previously been at the core of eligibility. I look for an order granting or denying certiorari on June 27, 2022. Other pending petitions also ask the same or similar eligibility questions, including: Worlds Inc. v. Activision Blizzard Inc.;  and Spireon, Inc. v. Procon Analytics, LLC.  Over the past two years, the Court has been denying parallel pending eligibility petitions rather than holding them for resolution–suggesting to me that interest is not extremely high.

Animated Design Patents

Patent

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

Wepay Global Payments LLC v. PNC Bank, N.A. (W.D.Pa. June 1, 2022) [wepayDecision]

Companies associated with William Grecia have filed over a dozen cases alleging infringement of design patents for “animated graphical user interfaces.” A judge in one of those cases, Wepay v. PNC Bank, recently issued a decision dismissing the case.

The patent asserted in that case, U.S. Patent No. D930,702, was issued in 2021 and claims a “design for a display screen portion with animated graphical user interface.” Wepay alleges infringement of the second embodiment, which includes three images:

Consistent with the USPTO’s rules for “changeable computer generated icons,” see MPEP § 1504.01(a)(IV), the patent specifies that, “[i]n the second embodiment, the appearance of the     sequentially transitions between the images shown in FIGS . 3 through 5. The process or period in which one image transitions to another image forms no part of the claimed design.” Consistent with the USPTO’s general drawing rules, the patent disclaims all matter shown in broken lines “form[] no part of the claimed design.”

So what does this patent cover? According to the court, Wepay seemed to think its patent covered any app with a QR code that lets you send money to other people:

WPG maintains that both its patent and the PNC app include an icon array of three squares that simulate a QR code; both cycle to a functional screen where the user may choose to whom the money will be sent; and both conclude with the display screen with a display of a zero value, where the user may input the amount of money that the user wishes to send.

The court rejected that interpretation—and rightly so. It’s well-established that design patents cover the visual designs that are actually claimed, not the larger design concepts.

The court held that the claimed designs and accused design, shown below as shown in the complaint, were plainly dissimilar and granted PNC’s motion to dismiss.

In doing so, the court recognized that placement and proportion matter in design, noting that “[a]ny similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”

Some may argue that the court erred in considering the placement and proportion of the claimed design fragments, because matter shown in dotted lines “forms no part of the claimed design.” But even if other visual portions of the design are disclaimed, that doesn’t mean courts have to treat the claimed portions as free-floating motifs. (Indeed, sophisticated design patent owner Nike has recognized that placement matters, even when dotted lines are used. See this PTAB decision at 10-13.)

I’ve explained here, placement and proportion are essential elements of design. The differences between the claimed and accused designs here are an excellent example of how different a single motif (e.g., each of the three squares in figure 3 and in the accused design) can look in the context of the design, depending on its proportion to the other elements and where it is located on the screen.

Before diving into the merits, however, the court expressed some doubt over whether infringement was even possible in this case:

[T]he Court notes that the ordinary observer test focuses on a hypothetical purchaser induced to buy a product with an accused design over an asserted design. The cases cited by the parties likewise address designs where there exists a consumer and/or purchaser at play. However, neither the cited cases nor this Court’s research reveals a case where, like the instant matter, the consumer has not voluntarily chosen the design at issue. Instead, the Accused Design is incidental to the PNC customers utilization of the mobile application. The Complaint does not allege that a purchaser would have been or has been involved with the Accused Design. Further, the Complaint does not allege a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design. Thus, the ordinary observer test would seem not to fit squarely with the designs at issue, and WPG would not be able to assert a design patent infringement claim.

Even though it’s dicta, the court’s suggestion that a design patent owner must plead “a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design” is worth further discussion.

Like other patents, a design patent is infringed when someone makes, uses, sells, offers to sell, or imports the patented invention without permission. The test for design patent infringement doesn’t change that. It just tells us when someone is making, using, selling, offering to sell, or importing the patented design.

The test for design patent infringement is a test of visual similarity. The “ordinary observer” part just tells us how similar the designs must be. (See this article at page 177.)

So, under current law, no sale is required, let alone—as the court seems to suggest—a direct sale to the end user, “with regard to the Accused Design over the Asserted Design.” Indeed, because there is no working requirement for design patents, there may not be a product embodying the claimed design available for sale.

All the defendant has to do is make (or sell, etc.) a product that looks “the same” as the claimed design. (For more on how the test for design patent infringement works, see this essay or Chapter 12 of this free casebook.)

Because Grecia-related companies have filed so many similar cases, it seems likely this decision will be appealed. It is definitely one to watch.

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Who Escapes Texas? And Where Do They Go? Mandamus Petitioners and Transferee Courts in Patent Venue Disputes

Patent

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. This is the second in a new series on venue transfer requests and mandamus at the Federal Circuit.

Litigants shouldn’t get to choose the judge who decides their case. To us, that seems like an uncontroversial proposition. The ability to “judge shop” is the primary reason patentees once flocked to the Marshall Division of the Eastern District of Texas to file their infringement suits and are now flocking to the Waco Division of the Western District of Texas, where they’re guaranteed to have their case assigned to Judge Alan Albright. Judge shopping, we’ve argued elsewhere, raises concerns about court bias and capture and can make litigation unnecessarily costly and inefficient.

Numerous scholars, members of Congress, and even the Chief Justice have raised concerns about judge shopping, with a particular eye toward patent cases. Likewise, the Federal Circuit has indicated skepticism about the rapid accumulation of patent suits in Waco. In the past two years, the court has used the extraordinary writ of mandamus to order over twenty patent cases filed in Waco to be transferred elsewhere under 28 U.S.C. § 1404(a), which permits transfer “[f]or the convenience of parties and witnesses, in the interest of justice.” (Over the same time period, the Federal Circuit granted only two § 1404(a) mandamus petitions arising from any other court, both from the Eastern District of Texas.)

Though we think the harms caused by a party being able to choose its own judge are clear and indisputable, there is a counternarrative. It goes something like this: the Federal Circuit is polluted with “anti-patent sentiment.” It is captured by the big tech companies that are the most frequent targets of infringement suits—Apple, Google, and the like. And the Federal Circuit is thwarting patentees (and innovation) by sending infringement cases away from patentees’ chosen courts in Texas to places that are friendlier to defendants, such as the Northern District of California.

Fortunately, data we have collected as part of our comprehensive empirical study of mandamus practice at the Federal Circuit can help us assess whether, when it comes to questions about patent venue, the Federal Circuit is really in the pocket of big tech.

First off, it is true that mandamus petitions seeking transfer from Texas to the Northern District of California are more likely to be granted than petitions seeking transfer to other districts. As the table below shows, from 2008 through 2021, the Federal Circuit granted 32.0% of mandamus petitions seeking to overturn a district court decision denying transfer from the Eastern District of Texas to the Northern District of California as compared to 25.6% of petitions seeking transfer from the Eastern District of Texas to any district besides the Northern District of California. Likewise, the Federal Circuit granted 63.2% of mandamus petitions seeking to overturn a district court decision denying transfer from the Western District of Texas to the Northern District of California as compared to 46.2% of petitions seeking transfer from the Western District of Texas to any district besides the Northern District of California.Overall, mandamus petitions seeking to overturn a district court decision denying transfer from either Texas district to the Northern District of California were granted 45.5% of the time, while petitions seeking transfer from either Texas district to any district besides the Northern District of California were granted only 30.8% of the time.

To be clear, this disparity in grant rates among transferee courts doesn’t establish that the Federal Circuit unduly favors Silicon Valley-based tech companies. Rather, it may be that cases filed against those companies in Texas present particularly strong cases for transfer given that the defendants’ offices, employees, documents, and R&D facilities tend to be located in California. Regardless, the data does make clear that a mandamus petition seeking transfer from Texas to the Northern District of California is nearly 40% more likely to be granted than a petition seeking transfer from Texas to any other district.

To better gauge big tech’s success at the Federal Circuit, we can also look at the grant rates for individual mandamus petitioners. We found these results, frankly, a little surprising. First of all, there are not as many repeat petitioners as one might think. In total, from 2008 through 2021, roughly 185 individual parties joined one or more petitions for a writ of mandamus seeking to overturn a decision by the Eastern or Western District of Texas denying transfer under § 1404(a). (For the purpose of this analysis, we combined obviously related corporate entities, such as Samsung Electronics and Samsung Electronics America. Also, because many petitions are joined by multiple parties, the total number of petitioners is much larger than the number of Federal Circuit decisions.)

The most frequent petitioner in our dataset is Apple, which filed 16 petitions over the 14 years covered by our study. The Federal Circuit granted 4 of those petitions. The most successful petitioner of note is Google, which prevailed on 4 of its 6 petitions. But those numbers are small, making it hard to draw definitive conclusions.

The table below shows the results of Federal Circuit mandamus decisions in which the Eastern or Western District of Texas denied transfer under § 1404(a), limited to petitioners who appeared in three or more decisions from 2008 through 2021.As indicated on the first table above, the overall grant rate for Federal Circuit mandamus petitions challenging denials of § 1404(a) transfer motions by the Eastern or Western District of Texas is 37.5%, so these frequent petitioners do about average. (Though of course the mandamus grant rates in cases out of the Eastern and Western Districts of Texas are much higher than in cases filed elsewhere.)

If we added the Federal Circuit’s mandamus decisions from 2022 (after we closed the dataset for our study at the end of 2021), the numbers would change somewhat. Apple is 2-0 this year, which ups its grant rate to 33.3%. Google also won its only petition in 2022, bumping its grant rate up even higher, to 71.4%. Samsung likewise is 1-0 this year, so its rate is now 50%. Still, we would hesitate to say that any of this establishes that the Federal Circuit is biased against patentees and in thrall to big tech.

To be sure, the world’s richest corporations, like Apple and Google, enjoy massive advantages any time they litigate; the notion that we have an impartial court system indifferent to litigants’ economic power is fanciful. But it’s also specious to claim that the Federal Circuit’s mandamus practice indicates court capture by big tech. More likely, the Federal Circuit is using the imperfect tools at its disposal to fix a real problem: the questionable incentives for both judges and litigants in a system where the party filing a case gets to choose its judge.

U Mass v L’Oréal: Avoiding indefiniteness through claim construction

Patent

By Jason Rantanen

University of Massachusetts, Carmel Laboratories, LLC v. L’Oréal, S.A., L’Oréal USA, Inc. (Fed. Cir. 2022) – opinion

Panel: Prost, Mayer, Taranto (author)

This opinion nominally addressing indefiniteness illustrates the power of de novo claim construction review at the Federal Circuit. UMass’s claimed invention is a topical skin care product containing adenosine that is applied to the skin. The district court concluded that the claim was indefinite, but on appeal the Federal Circuit negated the indefiniteness determination by adopting the claim construction proposed by L’Oréal – a victory for sorts of UMass but, based on the briefs, not the outcome it was looking for.

The difficulty in this case arose from the combination of the structure of the skin and the wording that UMass used to claim the invention. Starting with the skin structure, the relevant parts basically look like this:

Figure 1: “Artist”‘s representation of skin layers

Representative claim 1 of patent number 6,645,513 reads:

A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising [1] topically applying to the skin a composition comprising a concentration of adenosine in [2] an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, [3] wherein the adenosine concentration applied to the dermal cells is 10-3 M to 10-7 M.

(bracketed numbers and emphasis added).

Apparently seeking to avoid a noninfringement outcome, UMass argued that the “wherein” clause [3] referred to the concentration of adenosine that seeped into the dermis rather than the concentration of the product applied to the skin. But since  clause [1] and [3] thus referred to different concentrations, the result was an ambiguity in the meaning of composition clause [1] and “effective” clause [2]: what is a “concentration of adenosine in an amount effective to enhance the condition of the skin”?  Relying on the subjective determination precedent, the district court concluded that this phrase was indefinite: “Indeed, the determination of whether a person’s skin is enhanced provides a paradigmatic example of indefiniteness. Beauty, after all, is “in the eyes of the beholder.”” University of Massachusetts v. L’Oréal USA, Inc., 534 F. Supp. 3d 349 (D. Del. 2021). UMass appealed the indefiniteness determination, trying to thread the needle between a limiting claim construction and an indefiniteness outcome. L’Oréal both responded on the indefiniteness point and advanced its own claim construction argument.

The Federal Circuit could plausibly have affirmed on indefiniteness in my non-judicial opinion. However, instead the Federal Circuit focused on claim construction, walking through its standard claim construction analysis and concluding that clause [3] actually referred to the concentration of adenosine in the product applied to the skin, not the resultant concentration in the dermis. Because this removed a necessary predicate of the district court’s indefiniteness determination, the consequence was a remand to the district court for further proceedings.

The Federal Circuit first concluded that the claim itself was ambiguous about what clause [3] referred to: “We first conclude that the relevant claim language, es-pecially when viewed in the context of the whole claim, is not plain on its face, much less plain in supporting UMass’s interpretation of it.” Slip Op. at 8. The opinion spends several pages discussing this; worthwhile reading if you are making a text-based argument, but too much depth to go into in a blog post.

The next step in claim construction is to look at the specification. This didn’t provide much support for UMass’s claim construction position, however: “UMass has not shown that, even in this context, the specification makes clear that the inventors contemplated measuring the adenosine concentration after exposure to the cells, rather than in a solution before application to the cells.” Id. at 12.

The last step of the intrinsic evidence analysis, however, did produce a clear outcome to the court.  “Even more strongly than the specification, the prosecution histories of the patents in question resolve the ambiguity surrounding the meaning of “the adenosine concentration applied to the dermal cells” in the wherein clause.” Id.  The Federal Circuit concluded:

The amendments and comments clearly convey that UMass was continuing the pre-amendment reliance on the concentration in the composition before application to the skin, rather than introducing a materially different, unexplained notion of concentration, no longer assessed before contact with the object of application. UMass’s proposed construction now cannot fairly be squared with the understanding that both it and the examiner expressed during prosecution, and on which skilled artisans are entitled to rely.

Id. at 14. Because the use of the prosecution history was to resolve a lingering ambiguity in the claim language, this was not a case where the “clear and unmistakable disclaimer” standard applied for overcoming an otherwise plain meaning of the claim.