This is a non sequitur comment. Judge Newman’s extensive cognitive tests showed she was competent to act as a judge. Looks like a case of age discrimination by the judges on the CAFC. See “Above the Law” Huge Development In Pauline Newman’s Case: The Test Results Are In!
Gonna have to side with the doctor on this one By Chris Williams
on September 24, 2024 at 4:46 PM. Link below:
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Lets hope that new test is effective. But lets not forget that “Federal Circuit Judge Pauline Newman’s refusal to take medical tests as part of an investigation into her health led to her suspension from hearing cases. The suspension was extended for another year in September 2024.” That is, if she had not refused to take any such tests to begin with, even at her very advanced age, this suspension might not have ever occured.
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I looked back at the FR notice about the proposed rule, and there is very little there about statutory authority to impose the rule. There is a conclusory statement that the rule involves only rules of agency practice and procedure and thus does not require notice and comment. I see no assertion in the FR notice that there is any other statutory authority for this rule. I do not understand the USPTO’s authority to require this agreement from patent applicants as a condition for granting a patent.
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Great post. USPTO is trying to penalize inventors for their own delays in examination. By law we are entitled to a full term for all of our claims. This includes claims that are obvious variations of another. It wouldn’t be equitable to allow someone to produce an obvious variation of a claim during the period where USPTO improperly refused to grant a patent.
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is this ill-conceived rule really moving forward? Can the USPTO just spring this on us or will there at least be some type of “heads up”? Does the USPTO really want the embarrassment it had when the claims and continuations rule was held invalid by the Fed Circuit?
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Has anyone simply emailed or called the PTO Director* to ask the current status of the proposed rule change for terminal disclaimers? [In particular, the proposed unprecidented required agreement that the disclaimed patent would be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art.]
*I have successfully done that with two prior PTO Directors, on prior PTO subjects.
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@Dennis, I’m very surprised that someone on the panel would make such a mistake like that and state those rules were already in effect. I’m inclined to think this person may have heard inside information that it will be enacted very soon and jumped the gun. Do you know if it was just a simple mistake or if my theory may have merit? I had assumed after Loper Bright the USPTO would have tabled those rules for now.
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In a world with Communist China and others are breathing down America’s and the Free World’s neck, who could have imagined that PTO leadership would actually put forward innovation-crippling changes including these abhorrent, off-the-rails, no-authority TD changes.
Would the Senate have confirmed Vidal had they had even an inkling of what she would do — and try to do?
“The mere fact of continued infringement during the litigation was sufficient to establish irreparable harm” – to a manufacturor or seller of the patented item, but not to a patent owner who is not losing any such product or convoy sales or market share because it has none, and is only increasing its potential infringement damages recoveries by such increased infringement.
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To put it another way, these days, most of the otherwise winning final trial and appeal decisions in which requested injunctions are denied are in patent lawsuits by non-producing, puchased-patent, patent assertion entities (PAEs) [less politely, patent trolls]. Surely those did not exist in 1763 in England in the era of Horton v. Maltby. Nor is obtaining a Preliminary injunction in the face of a presented substantive invalidity challenge allowed these days. Also, back then I believe they had effective legal barriers to third party financing of lawsuits that were subsequently eliminated by statutes in the U.S.?
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Further muddying the water, and perhaps contrary to the conclusion sought by relying Horton, the Supreme Court, in a case that has been consistently overlooked by the Federal Circuit during the pre-eBay heyday of the presumption of irreparable harm in patent cases, instructed that presumptions of irreparable harm are “contrary to traditional equitable principles.” Amoco Prod. Co. v. Village of Gambell, Alaska, 480 U.S. 531, 544-45 (1987) (reversing Ninth Circuit applying a presumption of irreparable harm regarding environmental damage to reverse the district court’s decision to not grant a preliminary injunction, where the district court had made a factual finding that the oil exploration would not cause environmental damages that would restrict the subsistence uses of the land – “The Court of Appeals did not dispute that the Secretary could meaningfully comply with ANILCA § 810 in conjunction with his review of production and development plans. Instead, the court stated that ‘[i]rreparable damage is presumed when an agency fails to evaluate thoroughly the environmental impact of a proposed action.’ 774 F.2d, at 1423 (emphasis added). This presumption is contrary to traditional equitable principles and has no basis in ANILCA.”). Cf. Winter v. Natural Resources Defense Council, 555 U.S. 7, 21-22 (2008) (reversing preliminary injunction enjoining Navy from conducting training exercise because district court erred in permitting a lesser showing of just the “possibility” of irreparable harm based on an alleged strong showing of likelihood of success, where instead the district court should have required the movant to show that “irreparable injury is likely in the absence of an injunction”)
Post eBay the Federal Circuit has cited Amoco a few times, but only for the proposition that the standards to obtain a preliminary injunction are the same as to obtain a permanent injunction except that only a likelihood of success, rather than actual success, on the merits must be shown. The court still has not addressed Amoco’s impact, if any, on the issue of the presumption of irreparable harm.
The apparent contrary conclusions of what “traditional” equity permitted for presumptions of irreparable harm, i.e., the historical cases Denis identifies suggesting that a presumption of harm was applied pre-1789 for patent cases and the Supreme Court’s conclusory, but apparently definitive view, that traditional equity does not support a presumption of irreparable harm in any context, highlights a practical problem in trying to rely on the state of the law as it existed over 200 years ago to set forth principles for modern law. Similar concerns have recently been raised in the cases involving gun control where courts must try to find a pre-1789 analog for a gun restriction to uphold the restriction. Other commentators have noted that judges, even Supreme Court judges, often get wrong the historical analysis of the state of the law centuries ago. Some have even stated that judges are not equipped to perform the historical analysis as they only see snippets of the historical framework.
Perhaps a legislative fix might be a cleaner way to resolve the issue (naively assuming Congress eventually learns how to function again). In other IP contexts Congress has provided a statutory rebuttable presumption of irreparable harm for infringement of an IP right. See e.g. SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 52 F.4th 1363, 1371 (Fed. Cir. 2022) (“Finally, the district court noted that, under the Trademark Modernization Act of 2020, SoClean is entitled to a rebuttable presumption of irreparable harm once the court has found that SoClean is entitled to a likelihood of success on the merits. Sunset did not attempt to rebut that presumption.”)
“Because SSOs do not define the meaning of FRAND” [the relevant terms or standards for fair, reasonable, and nondiscriminatory licensing terms for such standards-setting organization members or participants] is indeed at the heart of the problem. But in some cases it is also an absence of defining in advance what makes a particular company, or particular patents of a company, subject to the FRAND requirement, or not.
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Why does the USPTO e-filing system no longer show Track 1 Request as an option when uploading documents for new applications? Have they reached the 15,000 limit for the fiscal year?
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Thanks. I was using the non-provisional entry point in Patent Center rather than the newer Track I Non-provisional entry point in Patent Center. Under the old EFS, these were not separate. That was the source of my confusion. Thanks for checking, Dennis.
See some of the substantive comments on the prior Dennis blog on this petitioned en banc of EcoFactor v. Google: “Defense Side Amici Support for Tighter Reins on Damages Expert Testimony” focusing on the application of Daubert standards to patent damages expert testimony.
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Yes, but by the District Cour judge asking the parties to adequately brief it [and providing for supplimental discovery, if needed] before writing the District Court opinion.
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Is there a legal reason why the CAFC cannot raise a new Legal basis for claim invalidation if it is clear from the patent itself or the record below? [Of course it would be far more desirable for the CAFC to ask for additional briefing on that issue.] The CAFC also has the option of remanding the case back to the District Court if necessary or desirable in such a case.
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I’m curious why a defendant in a patent suit would make such a highly unusual pre-trial stipulation – to waive the two most commonly effective defenses – 103 and 101?
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I am very happy to see the outcome here, but I have two thoughts about precedent.
1) I suppose that we can distinguish In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) on the grounds that it concerned an appeal from the PTO—where the need for clear and convincing evidence of invalidity does not apply. Still, the holding “do not take up §101 issues sua sponte sits awkwardly with the CAFC’s own precedent.
2) Sandoz presented several cases (all from the 1800s) where the Supreme Court had departed from the party presentation principle in patent cases…
Query whether those cases are still good law after Blonder-Tongue Labs v. Univ. of Ill. Fdn., 402 U.S. 313, 350 (1971). Invalidity is an affirmative defense in a patent suit, and the FRCP provides that affirmative defenses that must be pleaded lest they be waived. Indeed, the Court moved even more strongly away from that outlook that “[i]t would ill become a court of equity to render money decrees in favor of a complainant for the infringement of a patent which the court could see was void…” in COMMIL USA v. Cisco Sys., 575 U.S. 632 (2015), where the Court held that infringement and validity were analytically separate questions that needed to be resolved independently of each other.
Given that Federal Rule of Appellate Procedure Rule 36 allows for Circuit courts to issue judgments without opinions [an option, not a limitation or requirement], and that the above table shows that two circuits consider that this allows one word affirmances even without any local rule, and that six were issued by Sup. Ct. justices when on a Circuit court, and that the above “citations of authority” are not – they are mere cert petitions – where is the alleged circuit “split of authority”?
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One also has to wonder how getting a more substantive appellate decision than a one word affirmance is more likely to help the client, other than with a bit more delay? The decision below is still going to be unanimously sustained, and the odds of getting cert granted will still be miniscule.
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No doubt a one-word affirmance may seem disheartening and unfair to an attorney who put in a lot of time and effort into an appellate brief and to the client who paid them for that. But did either that attorney or the client get an objective independent appellate expert attorney opinion of its odds of success before doing that? Or, was it primarily to delay the personal consequences to a corporate CPC or GC of losing an expensive lawsuit?
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I do think PERA would be a positive for patent law and innovation. Especially since KSR, obviousness has been amplified as a tool for examiners to use against inventors. Publication of patent applications and expansion of what qualifies as prior art with the AIA has amplified lack of novelty rejections as well, to the detriment of innovators. Removal of all but the most clear instances of lack of eligibility under PARA would bring a measure of simplification to the patenting process, enhance certainty in patent litigation outcomes and restore somewhat the balance between the rights of innovators and copyists.
I cite the Gómez-Arostegui article above. After reviewing the historical factors, the article concludes that the evidence presented regarding the traditional equitable approach “could lead courts to presume that all four eBay factors favor patentees on final injunctions, until the defendant rebuts them.”
H. Tomás Gómez-Arostegui & Sean Bottomley, The Traditional Burdens for Final Injunctions in Patent Cases C.1789 and Some Modern Implications, 71 Case W. Res. L. Rev. 403, 433 (2020). link to lawcommons.lclark.edu
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If so, why hasn’t a trial-successful PAE filed a cross-appeal for an injunction in response to the defendant’s CAFC appeal of the damages award by now [so many years since eBay]? Are they concerned that they might logically get a reduced total damages award as a result? [Remember that PAEs only want an injunction for increased settlement amount negotiations – they get no benefit from taking the infringing product off the market, nor does the public.]
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This is going nowhere, but interesting. The defendant here only requests CAFC “summary affirmance” of the appealed D.C. denial of a preliminary injunction by the PAE plaintiff. The D.C. judge deciding that on the basis of Sup. Ct. eBay-required lack of entitlement to an injunction was unusual but is not a case-dispositive or final decision. I’m curious why is this not also an improper interlocutory appeal?
P.S. It is not true that the absense of an automatic injunction leaves no cure for continued [post trial] proven infringement of proven valid patent claims. From that point on it is both proven and willful infringement, and an appropriately high enough damages royalty rate can be set to make such continued infringement unprofitable for the infringer. Such enhanced damages could presumably even be ordered escrowed during appeal in dealing with typical asset-free “shell” PAEs?
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Regarding interlocutory appeal: The appellate statute provides for immediate appellate jurisdiction to appeal a grant/denial/modification of a preliminary injunction.
The Keller CCPA decision, and subsequent CAFC cases cited by the PTAB finding 103 obviousness for combinations of references that would require modifications to physically combine, are, of course, ex parte application rejection appeals. Did they have competent 103 expert declarations on file? If not they did not really provide evidence as to the degree of difficulty of the references combination to a POSITA and testimony as to that making the particular combination less motivated and thus less obvious to a POSITA. I doubt if you will find any CAFC case law saying that such expert declaration testimony would be so irrelevant as to be simply ignored.
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A “key problem with Keller is a similarity with KSR — both doctrines eschew clear rules in favor of amorphous standards.”
Other past commentators have said that the Sup. Ct. in general does not seem to like “black letter law” not actually required by statutes vis a vis fact-dependent decisions. Although, one can wonder if that generality will continue with the much more conservate present super-majority.
Examiners are required generally to make a 102 or 103 rejection citing art on all rejections. The 101 rejections tend to be optional. Here, the belts and suspenders approach to office actions worked since the 103 rejections held.
My concern is that if the PTO 101 guidelines are more rigorous that what the claims will face in litigation then a good deal of bad patents from a 101 perspective will go through to allowance and create litigation in the courts. Clearly, this is the policy decision of the USPTO to hem in 101 Alice Mayo line of cases to strictly the most egregious 101 cases in the Office.
Since Chevron deference is gone; the courts are definitely going to look at patents under 101 Mayo Alice a lot more especially since the USPTO uses a different 101 standard. See Loper Bright Enterprises v. Raimondi. Bottom line: the USPTO should use the same standard as the courts for 101 issues to settle matters based on res judical/collateral estoppel grounds in light of Loper since deference is no longer given to the USPTO in its decisions using made up administrative policies.
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Looking at claims element by element isn’t necessarily pro patentee. There’s a good case that the claims found eligible in Mcro and Finjan wouldn’t pass muster under this regime. An examiner in 3600 would likely just argue each element recites an abstract idea and there aren’t any additional elements to save the claim under are 2B prong 1 or 2. Enfish may also fail under the test in 3600 because its unclear how to define an abstract idea on the element by element approach.
My 2 cent bet for most tempting cert grant on this list is “Chestek PLLC v. Vidal, Case No. 23-1217 (Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)).” Such a tempting easy pure-legal [no messy facts] whack-down-opportunity of an administrative agency action, for a Sup. Ct. majority already primed for doing that.
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I did not suggest any “fault” in Prof. Crouch citing In re Keller. The issue is citing it without needed context. There are plenty of cases from 40 or 50 years ago that have never been overruled. But you had better believe that it is a risky move to cite those cases as if they are still simply sitting around merrily being good law without checking to see how they have been applied in the intervening 40 or 50 years–especially the last few years before your citation is being made.
To be sure, the Federal Circuit does that — but the Federal Circuit does things that only federal judges, not litigants, can get away with all the time. Sometimes the Court does it for agenda-driven reasons. Sometimes it is simply because they are too busy and/or they’re going to rule against the patentee anyway and/or it’s a nonprecedential decision. But it’s risky to take their word for it without double-checking. And this particular area of law is one that I know something about, and I know that acting as if In re Keller has no such nuance does not accurately reflect what happens in actual cases.
While we are on that subject, I also still do not agree with Prof. Crouch’s response. His response seems to be essentially: patent owners make this argument even to this day and sometimes it is accepted even though it should not be because In re Keller. Of course it’s a short breezy response, but that’s honestly what to this reader it is suggesting. That response does make his position less misleading — but only in that it acknowledges that Keller’s language is not always controlling when judged by what the courts have actually done in real cases over the decades. yet it remains misleading, because it is skewed almost to an old-man-shouting-at-the-clouds degree. When decades of cases have often come out in a way that Keller’s over-4-decades-old language would seem to say is wrong, why would one say that the best conclusion is: humph, Keller’s sweeping language is still the law, and all those cases over the decades that have gone against the implications of that sweeping language are all wrongly decided? Even the Federal Circuit at its most agenda-driven never uses such reasoning. The better conclusion is that Keller’s sweeping language has not been taken absolutely literally, and there are arguments closely related to the so-called “bodily incorporation” argument that are perfectly correct and have won the day in many cases and continue to do so to this day.
There are plenty of first-year associates, bought-and-paid-for influencers, et cetera, who, whether intentionally or out of lack of research, express shallow caricatures of doctrine. Websites like Patently-O that sit at the border between academy and practice should be doing better — they should be trying to get to the bottom of it, and explain how doctrine actually works. Or if that’s too utopian a goal — I know that getting to the bottom of it is very time-consuming — at least acknowledge that there is nuance.
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P.S. The answer to the last question is not obvious without investigation, because, in my observations, a surprising number of CPCs and GCs ARE happy to get a maximum bean count of issued patents irrespective of their IPR or litigation surviveability. Such patents may still have some “scare” value, or even value to professsional patent asserters. Their increased numbers may have management value in making the company look more technological to stock purchasors and others. The CPCs personal compensation may even be tied to or affected by the raw number of applications filed or issued on a limited budget.
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Please do not think I am to blame for the moniker about the paywall. When I signed up for your pay site, it asked me for a user-name — and then automatically assigned that as my public commenter-name, without warning or offering me a choice in the matter (at least as far as I noticed). Thus, it made my private thought public, without asking. Good thing I was not someone who would think “[name of law professor, judge, or other widely known individual] Is A Gosh-Darned Idiot” would be an easier user-name to remember!
And yes, that does tend to disillusion me as to the wisdom of your site adding new hoops to jump through. New hoops, new complications.
A few members have had a technical issue with logging in but not having access. We are still tracking down the cause, but the problem is solved by resetting your password: https://patentlyo.com/login-2?action=forgot_password.
by Dennis Crouch In the ongoing debate over the proper standard for issuing injunctions in patent cases, a 240-year-old English Chancery decision has taken on renewed significance. Horton v. Maltby, LI Misc MS 112 (Ch. 1783), provides a window into the traditional principles of equity that modern U.S. courts are instructed to apply when considering […]
by Dennis Crouch I wanted to provide a quick update on potential misinformation that came out in a panel that I was part of at the IPO annual conference. One speaker noted that the USPTO terminal disclaimer rules were already in effect. That is not true. In May 2024, the agency released a notice of […]
by Dennis Crouch The U.S. Court of Appeals for the Federal Circuit has granted Google’s en banc rehearing in EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. Sept. 25, 2024), focusing on the admissibility of expert testimony regarding patent damages. This will be the first en banc utility patent case since 2018. The order vacates […]
by Dennis Crouch In a nonprecedential opinion, the Federal Circuit affirmed the PTAB decision finding all claims of Novartis’s U.S. Patent No. 9,220,631 unpatentably obvious. Novartis Pharma AG v. Regeneron Pharmaceuticals, Inc., No. 2023-1334 (Fed. Cir. Sept. 23, 2024). The court rejected a teaching-away argument even though the prior art had described a key component […]
Guest Post by Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper. The authors are all firm of Amster, Rothstein & Ebenstein LLP, except for Dellaportas, who hails from Emmet Marvin & Martin. Disclosure – Several members of this team (and both firms) have represented Island IP — arguing the issues discussed here. […]
by Dennis Crouch Senator Coons and Tillis are pushing three primary patent bills through the Judiciary Committee, S. 2220, the PREVAIL Act (tightening IPR procedure) S. 2140, the Patent Eligibility Restoration Act (PERA) (limiting eligibility law) S. 4713, the IDEA Act (measuring demographics of inventors). Although the committee markup was set for September 19, it […]
by Dennis Crouch The Federal Circuit’s recent decision in Astellas v. Sandoz emphasized the importance of the “party presentation principle” — that, for the most part, courts should rely upon the parties to frame the issues that need a ruling. Visiting Delaware, Nebraska District Court Judge Bataillon had issued a sua sponte ruling that certain […]
Guest Post by Thomas F. Cotter, Taft, Stettinius & Hollister Professor of Law, University of Minnesota Law School As readers of this blog are aware, organizations such as the European Telecommunications Standards Institute (ETSI), IEEE, and others promulgate standards that enable products such as smartphones and other complex technological devices to interoperate. These standard-setting organizations […]
by Dennis Crouch The Supreme Court’s landmark decision in eBay v. MercExchange dramatically changed the patent landscape by eliminating the potential of injunctive relief for many patent holders, even in the face of ongoing infringement. The Patent Act indicates that injunctions may be awarded “in accordance with the principles of equity,” 35 U.S.C. 283, and […]
by Dennis Crouch The Federal Circuit is set to hear oral arguments in November 2024 in Teva v. Amneal, No. 24-1936, a case that could significantly impact Orange Book patent listing (and delisting) practices under the Hatch-Waxman Act (formally known as the Drug Price Competition and Patent Term Restoration Act of 1984). Hatch-Waxman established a […]
This is a non sequitur comment. Judge Newman’s extensive cognitive tests showed she was competent to act as a judge. Looks like a case of age discrimination by the judges on the CAFC. See “Above the Law” Huge Development In Pauline Newman’s Case: The Test Results Are In!
Gonna have to side with the doctor on this one By Chris Williams
on September 24, 2024 at 4:46 PM. Link below:
link to abovethelaw.com
Lets hope that new test is effective. But lets not forget that “Federal Circuit Judge Pauline Newman’s refusal to take medical tests as part of an investigation into her health led to her suspension from hearing cases. The suspension was extended for another year in September 2024.” That is, if she had not refused to take any such tests to begin with, even at her very advanced age, this suspension might not have ever occured.
Yes, I heard that comment and looked up a recent TD. No language of the new rule in there.
I looked back at the FR notice about the proposed rule, and there is very little there about statutory authority to impose the rule. There is a conclusory statement that the rule involves only rules of agency practice and procedure and thus does not require notice and comment. I see no assertion in the FR notice that there is any other statutory authority for this rule. I do not understand the USPTO’s authority to require this agreement from patent applicants as a condition for granting a patent.
Thanks!
Great post. USPTO is trying to penalize inventors for their own delays in examination. By law we are entitled to a full term for all of our claims. This includes claims that are obvious variations of another. It wouldn’t be equitable to allow someone to produce an obvious variation of a claim during the period where USPTO improperly refused to grant a patent.
is this ill-conceived rule really moving forward? Can the USPTO just spring this on us or will there at least be some type of “heads up”? Does the USPTO really want the embarrassment it had when the claims and continuations rule was held invalid by the Fed Circuit?
Has anyone simply emailed or called the PTO Director* to ask the current status of the proposed rule change for terminal disclaimers? [In particular, the proposed unprecidented required agreement that the disclaimed patent would be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art.]
*I have successfully done that with two prior PTO Directors, on prior PTO subjects.
Yes. They are still considering …
@Dennis, I’m very surprised that someone on the panel would make such a mistake like that and state those rules were already in effect. I’m inclined to think this person may have heard inside information that it will be enacted very soon and jumped the gun. Do you know if it was just a simple mistake or if my theory may have merit? I had assumed after Loper Bright the USPTO would have tabled those rules for now.
No, it sounded like the speaker just had a misunderstanding of the rule. He was talking about how it currently affected people’s practices.
In a world with Communist China and others are breathing down America’s and the Free World’s neck, who could have imagined that PTO leadership would actually put forward innovation-crippling changes including these abhorrent, off-the-rails, no-authority TD changes.
Would the Senate have confirmed Vidal had they had even an inkling of what she would do — and try to do?
The Historical Roots of Patent Injunctions: Revisiting Horton v. Maltby (1783)
“The mere fact of continued infringement during the litigation was sufficient to establish irreparable harm” – to a manufacturor or seller of the patented item, but not to a patent owner who is not losing any such product or convoy sales or market share because it has none, and is only increasing its potential infringement damages recoveries by such increased infringement.
To put it another way, these days, most of the otherwise winning final trial and appeal decisions in which requested injunctions are denied are in patent lawsuits by non-producing, puchased-patent, patent assertion entities (PAEs) [less politely, patent trolls]. Surely those did not exist in 1763 in England in the era of Horton v. Maltby. Nor is obtaining a Preliminary injunction in the face of a presented substantive invalidity challenge allowed these days. Also, back then I believe they had effective legal barriers to third party financing of lawsuits that were subsequently eliminated by statutes in the U.S.?
Further muddying the water, and perhaps contrary to the conclusion sought by relying Horton, the Supreme Court, in a case that has been consistently overlooked by the Federal Circuit during the pre-eBay heyday of the presumption of irreparable harm in patent cases, instructed that presumptions of irreparable harm are “contrary to traditional equitable principles.” Amoco Prod. Co. v. Village of Gambell, Alaska, 480 U.S. 531, 544-45 (1987) (reversing Ninth Circuit applying a presumption of irreparable harm regarding environmental damage to reverse the district court’s decision to not grant a preliminary injunction, where the district court had made a factual finding that the oil exploration would not cause environmental damages that would restrict the subsistence uses of the land – “The Court of Appeals did not dispute that the Secretary could meaningfully comply with ANILCA § 810 in conjunction with his review of production and development plans. Instead, the court stated that ‘[i]rreparable damage is presumed when an agency fails to evaluate thoroughly the environmental impact of a proposed action.’ 774 F.2d, at 1423 (emphasis added). This presumption is contrary to traditional equitable principles and has no basis in ANILCA.”). Cf. Winter v. Natural Resources Defense Council, 555 U.S. 7, 21-22 (2008) (reversing preliminary injunction enjoining Navy from conducting training exercise because district court erred in permitting a lesser showing of just the “possibility” of irreparable harm based on an alleged strong showing of likelihood of success, where instead the district court should have required the movant to show that “irreparable injury is likely in the absence of an injunction”)
Post eBay the Federal Circuit has cited Amoco a few times, but only for the proposition that the standards to obtain a preliminary injunction are the same as to obtain a permanent injunction except that only a likelihood of success, rather than actual success, on the merits must be shown. The court still has not addressed Amoco’s impact, if any, on the issue of the presumption of irreparable harm.
The apparent contrary conclusions of what “traditional” equity permitted for presumptions of irreparable harm, i.e., the historical cases Denis identifies suggesting that a presumption of harm was applied pre-1789 for patent cases and the Supreme Court’s conclusory, but apparently definitive view, that traditional equity does not support a presumption of irreparable harm in any context, highlights a practical problem in trying to rely on the state of the law as it existed over 200 years ago to set forth principles for modern law. Similar concerns have recently been raised in the cases involving gun control where courts must try to find a pre-1789 analog for a gun restriction to uphold the restriction. Other commentators have noted that judges, even Supreme Court judges, often get wrong the historical analysis of the state of the law centuries ago. Some have even stated that judges are not equipped to perform the historical analysis as they only see snippets of the historical framework.
Perhaps a legislative fix might be a cleaner way to resolve the issue (naively assuming Congress eventually learns how to function again). In other IP contexts Congress has provided a statutory rebuttable presumption of irreparable harm for infringement of an IP right. See e.g. SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 52 F.4th 1363, 1371 (Fed. Cir. 2022) (“Finally, the district court noted that, under the Trademark Modernization Act of 2020, SoClean is entitled to a rebuttable presumption of irreparable harm once the court has found that SoClean is entitled to a likelihood of success on the merits. Sunset did not attempt to rebut that presumption.”)
Announcing FRAND: German Case Law and Global Perspectives
“Because SSOs do not define the meaning of FRAND” [the relevant terms or standards for fair, reasonable, and nondiscriminatory licensing terms for such standards-setting organization members or participants] is indeed at the heart of the problem. But in some cases it is also an absence of defining in advance what makes a particular company, or particular patents of a company, subject to the FRAND requirement, or not.
MM finna tryina stay humble
link to youtube.com
Why does the USPTO e-filing system no longer show Track 1 Request as an option when uploading documents for new applications? Have they reached the 15,000 limit for the fiscal year?
I spoke with the USPTO Commissioner’s office. They have not limited Track 1 and it appears fully operational from their end.
Thanks. I was using the non-provisional entry point in Patent Center rather than the newer Track I Non-provisional entry point in Patent Center. Under the old EFS, these were not separate. That was the source of my confusion. Thanks for checking, Dennis.
Great question!
Federal Circuit Grants En Banc Rehearing in EcoFactor v. Google, Limiting Damages Expert Testimony
See some of the substantive comments on the prior Dennis blog on this petitioned en banc of EcoFactor v. Google: “Defense Side Amici Support for Tighter Reins on Damages Expert Testimony” focusing on the application of Daubert standards to patent damages expert testimony.
101 Ways Not to Invalidate: Federal Circuit Rejects Sua Sponte Eligibility Ruling
What do you think? Should courts have more leeway to address patent eligibility issues on their own initiative?
Yes, but by the District Cour judge asking the parties to adequately brief it [and providing for supplimental discovery, if needed] before writing the District Court opinion.
Is there a legal reason why the CAFC cannot raise a new Legal basis for claim invalidation if it is clear from the patent itself or the record below? [Of course it would be far more desirable for the CAFC to ask for additional briefing on that issue.] The CAFC also has the option of remanding the case back to the District Court if necessary or desirable in such a case.
I’m curious why a defendant in a patent suit would make such a highly unusual pre-trial stipulation – to waive the two most commonly effective defenses – 103 and 101?
I had the same question.
I’m following up with the USPTO.
I am very happy to see the outcome here, but I have two thoughts about precedent.
1) I suppose that we can distinguish In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) on the grounds that it concerned an appeal from the PTO—where the need for clear and convincing evidence of invalidity does not apply. Still, the holding “do not take up §101 issues sua sponte sits awkwardly with the CAFC’s own precedent.
2) Sandoz presented several cases (all from the 1800s) where the Supreme Court had departed from the party presentation principle in patent cases…
Query whether those cases are still good law after Blonder-Tongue Labs v. Univ. of Ill. Fdn., 402 U.S. 313, 350 (1971). Invalidity is an affirmative defense in a patent suit, and the FRCP provides that affirmative defenses that must be pleaded lest they be waived. Indeed, the Court moved even more strongly away from that outlook that “[i]t would ill become a court of equity to render money decrees in favor of a complainant for the infringement of a patent which the court could see was void…” in COMMIL USA v. Cisco Sys., 575 U.S. 632 (2015), where the Court held that infringement and validity were analytically separate questions that needed to be resolved independently of each other.
Justice is Not Silent: The Case Against One-Word Affirmances in the Federal Circuit
Given that Federal Rule of Appellate Procedure Rule 36 allows for Circuit courts to issue judgments without opinions [an option, not a limitation or requirement], and that the above table shows that two circuits consider that this allows one word affirmances even without any local rule, and that six were issued by Sup. Ct. justices when on a Circuit court, and that the above “citations of authority” are not – they are mere cert petitions – where is the alleged circuit “split of authority”?
One also has to wonder how getting a more substantive appellate decision than a one word affirmance is more likely to help the client, other than with a bit more delay? The decision below is still going to be unanimously sustained, and the odds of getting cert granted will still be miniscule.
No doubt a one-word affirmance may seem disheartening and unfair to an attorney who put in a lot of time and effort into an appellate brief and to the client who paid them for that. But did either that attorney or the client get an objective independent appellate expert attorney opinion of its odds of success before doing that? Or, was it primarily to delay the personal consequences to a corporate CPC or GC of losing an expensive lawsuit?
Eligibility, IPRs, and Diversity: The Faces of 2024 Patent Reform
Inventors are opposed to the bills as well. Just like the AIA were big tech and big law decided they know what’s best for us.
Q. Will PREVAIL and PERA affect practice?
A. In my opinion as a former patent prosecutor, YES. I expect these changes to make things more predictable.
I do think PERA would be a positive for patent law and innovation. Especially since KSR, obviousness has been amplified as a tool for examiners to use against inventors. Publication of patent applications and expansion of what qualifies as prior art with the AIA has amplified lack of novelty rejections as well, to the detriment of innovators. Removal of all but the most clear instances of lack of eligibility under PARA would bring a measure of simplification to the patenting process, enhance certainty in patent litigation outcomes and restore somewhat the balance between the rights of innovators and copyists.
Traditional Principles of Equity Acknowledge that Ongoing Infringement is an Irreparable Harm
I cite the Gómez-Arostegui article above. After reviewing the historical factors, the article concludes that the evidence presented regarding the traditional equitable approach “could lead courts to presume that all four eBay factors favor patentees on final injunctions, until the defendant rebuts them.”
H. Tomás Gómez-Arostegui & Sean Bottomley, The Traditional Burdens for Final Injunctions in Patent Cases C.1789 and Some Modern Implications, 71 Case W. Res. L. Rev. 403, 433 (2020). link to lawcommons.lclark.edu
If so, why hasn’t a trial-successful PAE filed a cross-appeal for an injunction in response to the defendant’s CAFC appeal of the damages award by now [so many years since eBay]? Are they concerned that they might logically get a reduced total damages award as a result? [Remember that PAEs only want an injunction for increased settlement amount negotiations – they get no benefit from taking the infringing product off the market, nor does the public.]
This is going nowhere, but interesting. The defendant here only requests CAFC “summary affirmance” of the appealed D.C. denial of a preliminary injunction by the PAE plaintiff. The D.C. judge deciding that on the basis of Sup. Ct. eBay-required lack of entitlement to an injunction was unusual but is not a case-dispositive or final decision. I’m curious why is this not also an improper interlocutory appeal?
P.S. It is not true that the absense of an automatic injunction leaves no cure for continued [post trial] proven infringement of proven valid patent claims. From that point on it is both proven and willful infringement, and an appropriately high enough damages royalty rate can be set to make such continued infringement unprofitable for the infringer. Such enhanced damages could presumably even be ordered escrowed during appeal in dealing with typical asset-free “shell” PAEs?
Regarding interlocutory appeal: The appellate statute provides for immediate appellate jurisdiction to appeal a grant/denial/modification of a preliminary injunction.
The Enduring Impact of In re Keller on Obviousness Analysis
The Keller CCPA decision, and subsequent CAFC cases cited by the PTAB finding 103 obviousness for combinations of references that would require modifications to physically combine, are, of course, ex parte application rejection appeals. Did they have competent 103 expert declarations on file? If not they did not really provide evidence as to the degree of difficulty of the references combination to a POSITA and testimony as to that making the particular combination less motivated and thus less obvious to a POSITA. I doubt if you will find any CAFC case law saying that such expert declaration testimony would be so irrelevant as to be simply ignored.
A “key problem with Keller is a similarity with KSR — both doctrines eschew clear rules in favor of amorphous standards.”
Other past commentators have said that the Sup. Ct. in general does not seem to like “black letter law” not actually required by statutes vis a vis fact-dependent decisions. Although, one can wonder if that generality will continue with the much more conservate present super-majority.
“Directed to” vs. “Reciting” vs. “Involving” an Abstract Idea
Examiners are required generally to make a 102 or 103 rejection citing art on all rejections. The 101 rejections tend to be optional. Here, the belts and suspenders approach to office actions worked since the 103 rejections held.
My concern is that if the PTO 101 guidelines are more rigorous that what the claims will face in litigation then a good deal of bad patents from a 101 perspective will go through to allowance and create litigation in the courts. Clearly, this is the policy decision of the USPTO to hem in 101 Alice Mayo line of cases to strictly the most egregious 101 cases in the Office.
Since Chevron deference is gone; the courts are definitely going to look at patents under 101 Mayo Alice a lot more especially since the USPTO uses a different 101 standard. See Loper Bright Enterprises v. Raimondi. Bottom line: the USPTO should use the same standard as the courts for 101 issues to settle matters based on res judical/collateral estoppel grounds in light of Loper since deference is no longer given to the USPTO in its decisions using made up administrative policies.
Looking at claims element by element isn’t necessarily pro patentee. There’s a good case that the claims found eligible in Mcro and Finjan wouldn’t pass muster under this regime. An examiner in 3600 would likely just argue each element recites an abstract idea and there aren’t any additional elements to save the claim under are 2B prong 1 or 2. Enfish may also fail under the test in 3600 because its unclear how to define an abstract idea on the element by element approach.
Supreme Court’s Patent Docket: A Preview of the October 2024 Term
My 2 cent bet for most tempting cert grant on this list is “Chestek PLLC v. Vidal, Case No. 23-1217 (Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)).” Such a tempting easy pure-legal [no messy facts] whack-down-opportunity of an administrative agency action, for a Sup. Ct. majority already primed for doing that.
These are fair points, and there continues to be increased attention toward the issue of of unchecked administrative agency power.
Here is a chart showing CAFC cases mentioning double patenting over the past 30 years.
If the Barcode Doesn’t Fit: Reconsidering ‘Bodily Incorporation’ in Patent Law
Thanks. We’ll keep working at it.
I did not suggest any “fault” in Prof. Crouch citing In re Keller. The issue is citing it without needed context. There are plenty of cases from 40 or 50 years ago that have never been overruled. But you had better believe that it is a risky move to cite those cases as if they are still simply sitting around merrily being good law without checking to see how they have been applied in the intervening 40 or 50 years–especially the last few years before your citation is being made.
To be sure, the Federal Circuit does that — but the Federal Circuit does things that only federal judges, not litigants, can get away with all the time. Sometimes the Court does it for agenda-driven reasons. Sometimes it is simply because they are too busy and/or they’re going to rule against the patentee anyway and/or it’s a nonprecedential decision. But it’s risky to take their word for it without double-checking. And this particular area of law is one that I know something about, and I know that acting as if In re Keller has no such nuance does not accurately reflect what happens in actual cases.
While we are on that subject, I also still do not agree with Prof. Crouch’s response. His response seems to be essentially: patent owners make this argument even to this day and sometimes it is accepted even though it should not be because In re Keller. Of course it’s a short breezy response, but that’s honestly what to this reader it is suggesting. That response does make his position less misleading — but only in that it acknowledges that Keller’s language is not always controlling when judged by what the courts have actually done in real cases over the decades. yet it remains misleading, because it is skewed almost to an old-man-shouting-at-the-clouds degree. When decades of cases have often come out in a way that Keller’s over-4-decades-old language would seem to say is wrong, why would one say that the best conclusion is: humph, Keller’s sweeping language is still the law, and all those cases over the decades that have gone against the implications of that sweeping language are all wrongly decided? Even the Federal Circuit at its most agenda-driven never uses such reasoning. The better conclusion is that Keller’s sweeping language has not been taken absolutely literally, and there are arguments closely related to the so-called “bodily incorporation” argument that are perfectly correct and have won the day in many cases and continue to do so to this day.
There are plenty of first-year associates, bought-and-paid-for influencers, et cetera, who, whether intentionally or out of lack of research, express shallow caricatures of doctrine. Websites like Patently-O that sit at the border between academy and practice should be doing better — they should be trying to get to the bottom of it, and explain how doctrine actually works. Or if that’s too utopian a goal — I know that getting to the bottom of it is very time-consuming — at least acknowledge that there is nuance.
P.S. The answer to the last question is not obvious without investigation, because, in my observations, a surprising number of CPCs and GCs ARE happy to get a maximum bean count of issued patents irrespective of their IPR or litigation surviveability. Such patents may still have some “scare” value, or even value to professsional patent asserters. Their increased numbers may have management value in making the company look more technological to stock purchasors and others. The CPCs personal compensation may even be tied to or affected by the raw number of applications filed or issued on a limited budget.
Please do not think I am to blame for the moniker about the paywall. When I signed up for your pay site, it asked me for a user-name — and then automatically assigned that as my public commenter-name, without warning or offering me a choice in the matter (at least as far as I noticed). Thus, it made my private thought public, without asking. Good thing I was not someone who would think “[name of law professor, judge, or other widely known individual] Is A Gosh-Darned Idiot” would be an easier user-name to remember!
And yes, that does tend to disillusion me as to the wisdom of your site adding new hoops to jump through. New hoops, new complications.
Welcome to Patently-O
August 5, 2024
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The Historical Roots of Patent Injunctions: Revisiting Horton v. Maltby (1783)
September 26, 2024
by Dennis Crouch In the ongoing debate over the proper standard for issuing injunctions in patent cases, a 240-year-old English Chancery decision has taken on renewed significance. Horton v. Maltby, LI Misc MS 112 (Ch. 1783), provides a window into the traditional principles of equity that modern U.S. courts are instructed to apply when considering […]
Free Post: Not Yet in Effect: Clarifying Misconceptions About the USPTO’s Proposed Terminal Disclaimer Rule
September 25, 2024
by Dennis Crouch I wanted to provide a quick update on potential misinformation that came out in a panel that I was part of at the IPO annual conference. One speaker noted that the USPTO terminal disclaimer rules were already in effect. That is not true. In May 2024, the agency released a notice of […]
Federal Circuit Grants En Banc Rehearing in EcoFactor v. Google, Limiting Damages Expert Testimony
September 25, 2024
by Dennis Crouch The U.S. Court of Appeals for the Federal Circuit has granted Google’s en banc rehearing in EcoFactor, Inc. v. Google LLC, No. 2023-1101 (Fed. Cir. Sept. 25, 2024), focusing on the admissibility of expert testimony regarding patent damages. This will be the first en banc utility patent case since 2018. The order vacates […]
Disparaging in Context: Motivation to Combine Exists Even For a Markedly Inferior Element
September 24, 2024
by Dennis Crouch In a nonprecedential opinion, the Federal Circuit affirmed the PTAB decision finding all claims of Novartis’s U.S. Patent No. 9,220,631 unpatentably obvious. Novartis Pharma AG v. Regeneron Pharmaceuticals, Inc., No. 2023-1334 (Fed. Cir. Sept. 23, 2024). The court rejected a teaching-away argument even though the prior art had described a key component […]
Justice is Not Silent: The Case Against One-Word Affirmances in the Federal Circuit
September 22, 2024
Guest Post by Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper. The authors are all firm of Amster, Rothstein & Ebenstein LLP, except for Dellaportas, who hails from Emmet Marvin & Martin. Disclosure – Several members of this team (and both firms) have represented Island IP — arguing the issues discussed here. […]
Eligibility, IPRs, and Diversity: The Faces of 2024 Patent Reform
September 20, 2024
by Dennis Crouch Senator Coons and Tillis are pushing three primary patent bills through the Judiciary Committee, S. 2220, the PREVAIL Act (tightening IPR procedure) S. 2140, the Patent Eligibility Restoration Act (PERA) (limiting eligibility law) S. 4713, the IDEA Act (measuring demographics of inventors). Although the committee markup was set for September 19, it […]
101 Ways Not to Invalidate: Federal Circuit Rejects Sua Sponte Eligibility Ruling
September 19, 2024
by Dennis Crouch The Federal Circuit’s recent decision in Astellas v. Sandoz emphasized the importance of the “party presentation principle” — that, for the most part, courts should rely upon the parties to frame the issues that need a ruling. Visiting Delaware, Nebraska District Court Judge Bataillon had issued a sua sponte ruling that certain […]
Announcing FRAND: German Case Law and Global Perspectives
September 18, 2024
Guest Post by Thomas F. Cotter, Taft, Stettinius & Hollister Professor of Law, University of Minnesota Law School As readers of this blog are aware, organizations such as the European Telecommunications Standards Institute (ETSI), IEEE, and others promulgate standards that enable products such as smartphones and other complex technological devices to interoperate. These standard-setting organizations […]
Traditional Principles of Equity Acknowledge that Ongoing Infringement is an Irreparable Harm
September 18, 2024
by Dennis Crouch The Supreme Court’s landmark decision in eBay v. MercExchange dramatically changed the patent landscape by eliminating the potential of injunctive relief for many patent holders, even in the face of ongoing infringement. The Patent Act indicates that injunctions may be awarded “in accordance with the principles of equity,” 35 U.S.C. 283, and […]
Teva v. Amneal: Orange Book Listing Requirements Under Scrutiny
September 17, 2024
by Dennis Crouch The Federal Circuit is set to hear oral arguments in November 2024 in Teva v. Amneal, No. 24-1936, a case that could significantly impact Orange Book patent listing (and delisting) practices under the Hatch-Waxman Act (formally known as the Drug Price Competition and Patent Term Restoration Act of 1984). Hatch-Waxman established a […]