That claim should have been found ineligible under 35 USC 101. Why? Because it consists of a collection of abstract ideas related to how to achieve the desired end result, and adds nothing new to the art. How else would you create encoding for an external disk device? The claim elements are abstract. The relations between the elements is not an improvement in the art. This claim is like a “trap” to catch unwary competitors.
Skimming just the cited en banc petition [without seeing if there were effective declarations in the IPR] it seemed to me more of an anti-Rule 36 argument based on requiring CAFC legal interpretation or fact-finding evidence level dispute over enablement of the prior art for a 103 rejection? That faces Fed. Cir. statements like “In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be “self-enabling,” to be relevant to the obviousness inquiry. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.”); Beckman Instruments Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). For example, a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled. See Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1365–66 (Fed. Cir. 2013). Alternatively, such a reference may be used to supply claim elements enabled by other prior art or evidence of record. See Comcast Cable Commc’ns Corp. v. Finisar Corp., 571 F. Supp. 2d 1137, 1145 (N.D. Cal. 2008), aff’d sub nom. Comcast Cable Commc’ns, LLC v. Finisar Corp., 319 F. App’x 916 (Fed. Cir. 2009).”
The en banc petition lists as a related case “In re Certain Rolled-Edge Rigid Plastic Food Trays, United States International Trade Commission, Investigation No. 337-TA-1203.” Was the ITC import exclusion action proceeding at the same time as the IPR appealed here, or did one stop the other, or how was that handled? Or was it on different patents? [It’s surprising to me that there are not more of these dual track administrative patent proceedings. [Or triple proceedings – with a D.C. infringement suit.]
‘Of course, it makes me wonder how the textualists would handle overturning longtime precedents excluding abstract ideas, laws of nature, and natural phenomena?”
They don’t care about precedent. But more importantly, they can’t explain why, if textualism was not the interpretive approach assumed by Congress when enacting the statute, imposing a textualist interpretation is not impermissible retrospective judicial legislation.
Good point about questioning current Sup. Ct. conservatives retroactive textual interpretations of non-textual-intent statutes. [And selective history.] Note that when the current patent statute was enacted in 1952 it was presented by its drafters, supporters and Congress to be a needed Codification of the prior Judicial interpretations of patent law.
How does “A textualist or literal reading approach to patent eligibility under 35 U.S.C. § 101” work for self-defining the full scope of patentable subject matter? There are no specific listings or definitions of Non-patentable subject matter in 101 itself [just non-new and non-useful limitations], and there are a number of subject matters that are indisputably not properly or practically patentable that have been noted over the years on this blog that would not be prevented by 101 language.* Also, there is the overriding Constitutional intent definition to deal with.
*I don’t remember them all, but for current entertainment value, how about the known inventors claiming within one year of the public release of their novel invention: “I claim a novel process or method of changing a presidential election comprising the acting Vice President refusing to certify the official state electorial votes.”
The 4th article here makes a good argument that allowing patents to non-human inventors such as AI upends the basic philosophical [more accurately, public policy?] basis for the patent system.
1) Anyone have ideas on how to challenge this? I represent a number of former W&K applicants who are unwitting victims of Wang’s fraud. We filed responses to each show cause order providing evidence of the Chinese counsel’s prior work with W&K and the steps they took to verify that W&K was a legitimate firm. Holding the applicants responsible for actions over which they had no control, and of which they had no knowledge, seems inappropriate.
2) How should an applicant avoid this fate in the future? The Chinese counsel has asked what steps they should take to assure themselves that signatures are being properly used. I don’t see a way they can do this.
If others are dealing with this same situation, maybe we should start a separate discussion.
The common complaints by some patent attorneys or even retired CAFC judges that patents are no longer valuable is not supported by big money legal and legislative battles like this one shaping up even on OTDP in pharma. Also, I just saw how a report in the Economist on how much money IBM made on patent licensing last year. There was a whole article on the economic importance of controlling “standards settings,” which of course affects which patents will need to be licensed.
Alvogen’s hypothetical about patentees starting out with an application with broad claims to maximize term extension has many uncertainties. It requires the examiner to act slowly. The examiner can act quickly to minimize any term extension (if the examiner is later found to be wrong by the PTAB). The examiner can act carefully and reasonably, reducing the likelihood of a successful appeal and overturning of earlier examiner rejections. The PTAB can act with reasonable speed and minimize term extension. The patentee’s prosecution can’t have any setbacks (e.g. revelation of previously unknown pertinent prior art) that requires filing of RCEs, or losing the appeal (a majority of such appeals are lost by the patentee) and gutting the term extension. If the patentee does pull off this strategy, it is the Patent Office’s delays and overly aggressive rejections that are the proximate cause of the term extension, not some gaming of the system. Also, the copyists have opportunities to inject prior art into the prosecution process to enhance quality and make the examiner’s rejections more resistant to overturning by the PTAB.
Only “using patents defensively” also covers using one’s patents to refuse to pay for licenses for infringed patents of others, not just for settling lawsuits. It does not have any value for any of the many PAE or other NPE patent owner lawsuits. Nor is that unilateral promise binding for corporate acquisitioners or bankrupcies,
Since you asked Robert, one way I have seen trade secrets “asserted over-aggressively” is for a corporate CPC to send threatening letters to any potentially competitive company hiring any of his corporate patent attorneys irrespective of that attorney’s knowlege of or involvement in any actual trade secrets.
In “color contrast” note that it was trademark news when Owens-Corning successfully trademarked the same color – pink – of their fiberglass insulation in 1985. But that color was apparently from adding red dye to their fiberglass insulation in the 1950s, not the fiberglass itself.
As noted, this case is an appeal of TTAB cancelled registered trademarks, not trade dress. Does that make a difference re the functionality proof?
BTW, what always bothered me about “trade dress” IPL protection [as opposed to trademark or patent law scope definitions] is its ambiguity, more than the functionality issue. That enables litigation-harassment of competitors that is hard to summarily end or predictably avoid. E.g., the kind of trade dress in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). It seems too much like the ambiguous “look and feel” copyright litigation that briefly occurred before that was judicially ended.
It helps when the trade dress is registered as a trademark. Then the case really boils down to whether or not there is a likelihood of confusion, since the registration establishes ownership of the mark. If the mark is on the Supplemental Register then the plaintiff would also have to show “ownership” of the mark (such as showing that the mark is functioning as a “source identifier” and that plaintiff’s use of the mark was before the alleged infringing use). When the trade dress is not registered, it still would be essentially a trade mark infringement case, but perhaps under Lanham Act §43 or under related state laws. I suppose this could be more “ambiguous.”
I really liked your summary of how various forms of IP protection interrelate for protection of innovations such as a pink artificial hip joint. This is a good tool for counseling clients on IP protection strategies. I would perhaps add that at least when the trade dress is registered as a trademark at the USPTO, that the applicants are expected to prove that the mark (the trade dress) is non-functional, and this is done using the Morton-Norwich factors. The Morton-Norwich factors actually include as a factor that the existence of a prior utility patent disclosing the utilitarian advantages of the design supports a functionality determination, as was confirmed in the TrafFix decision.
It would be interesting to see on remand if, besides asserting Alice 101, the claimed “processing hub” as only defined in “processing hub accessing a first database when the card functions as a debit card and said processing hub accessing a second database when the card functions as a medical card.” is argued to be a nonce word requiring 112 reference to a specific spec description of at least one way of how that can be done [other than maybe manually?], or, held ambiguous if there isn’t any such spec teaching?
The indicated opponents of disclosure of investors funding patent suits* are confusing mere disclosure proposals with waivers of attorney-client privilege. Also, ignoring existing requirements for disclosing “real parties in interest” controlling the lawsuit attorneys re settlements, etc. Nor is this any proposed restriction on such funding. Nor are patent suits the kind of litigation like civil rights or abortion litigation where investors may need disclosure protection from violent opponents of civil rights.
It would be interesting to learn who is funding this “new” “Inventors Defense Alliance” and its members other than the one indicated law professor.
*These patent lawsuit investments are primarily, if not almost entirely, for PAE suits via the shell companies set up for that. In earlier times this would even be illegal champety in some cases. Its definition at common law was “an agreement in which a person with no previous interest in a lawsuit finances it with a view to sharing the disputed property if the suit succeeds.”
There’s just a bunch of problems with the letters and criticism of the current structure.
“Key arguments from the corporate coalition include:
Need for transparency: The letter contends that TPLF fundamentally alters case dynamics and impacts settlement possibilities. Without knowledge of who controls the litigation, defendants cannot make informed decisions.
****I struggle to see any level of unfairness or impropriety here. Accused infringers should assess their level of exposure for infringement, damages, etc., without regard for who the patent holder is, etc. And “control of the litigation” is a bogeyman that is a non-issue in reality.
Procedural fairness: They argue that non-disclosure of TPLF agreements undermines key FRCP provisions such as proportionality in discovery and the requirement that actions be prosecuted by the real party in interest.
****Again, the bogeyman of who is the patent holder. Not a legitimate contention. Lit funders don’t control the litigation, etc. And what specific FRCP is non-disclosure of work product, etc., inconsistent with?
Consistency across jurisdictions: The letter highlights the current patchwork of approaches to TPLF inquiry, ranging from ex parte discussions to written orders, and advocates for a uniform, straightforward procedure.
****The vast majority of the caselaw rightly find such discovery to be improper, irrelevant, and/or related to work product, etc.
Parity with insurance disclosure: As mentioned above, the letter also argues for parity with the mandatory disclosure of insurance agreements.
****Well, it’s not insurance. The differences between insurance coverage, limits, and the role insurers play in tort litigation, etc., is not a good analogy to lit funders. Lit funders, at their base, are merely a heavily discounted, fraction of the financial backing that defendant infringers have. Suffice to say, defendant infringers are never required to produce their budgets for a matter, internal views of ranges of exposure, analysis, strategies, etc.
I would add that the Chamber of Commerce and others have attempted to add in silly threats–such as foreign funders (the Russians!) somehow creating national security concerns.
The weakness of the arguments by the anti-lit funding crowds are readily apparent.
Great comment. Thanks for the insight. I could see how the judge through court rules may have a right to disclosure of TPLF to ensure the plaintiff’s counsel is properly representing the interest of the named plaintiffs and not the financial backers. I don’t see a legitimate interest of defendants to inquire into TPLF other than to attempt ex-legal actions to disrupt financing of the plaintiff or other mischief. I am reading the book “Servants of the Damned” about how defendants would file countless valid but frivolous motions in an attempt to thwart justice by making litigation long and expensive for the plaintiff as a way to pressure nominal settlements. TPLF seems to be merely leveling the playing field preventing this type of ex-legal conduct famously done in tobacco litigaton. Isn’t the public policy of a court system to ensure robust and zealous representation of both sides in litigation? Requiring mandatory disclosure to the court to ensure the TPLFs are not pressuring the plaintiffs into nominal settlements is the only legitimate reason for any disclosure. Ensuring adequate settlement amounts is clearly not in the defendants purview, interest, or business justifying disclosure of TPLFs to defendants in an adversarial proceeding.
Yes, we have all known cases in which “defendants would file countless valid but frivolous motions in an attempt to thwart justice by making litigation long and expensive for the plaintiff as a way to pressure nominal settlements.” We have also seen cases in which the plaintiff engages in massive sweeping document discovery and as many depositions as possible to put settlement pressure on defendants. Both are problems with U.S. judicial controll.
But I do not see the logic of the former being enhanced by disclosure of third party financing? The opposite seems more logical. That is, if a defendant knows that the plaintiff has major financial investment backing, a defendant will logically conclude that filing many motions will be far less successful than it would be against a plaintiff without such deep pockets.
Since the proper IPL subject here is just trade dress, note the Sup. Ct. trade dress decision later than those noted above [which I and some others thought was overly trade dress protective]. It was Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). The Court held that Two Pesos, Inc. infringed upon the trademark of Taco Cabana, Inc. just by deliberately copying design features of their restaurants, even without any proof of secondary meaning, even though those design features noted in the decision sounded to me like what one might expect to see for decorations, etc. in other Mexican restaurants? Is that still good law?
In hindsight, maybe Atturo should have filed a 3D (and maybe also a 2D) trademark application on their tread designs. If they were able to register them (admittedly a big “if”) they would have had the CAFC’s “substantial basis” standard of review of the examiner’s non-functional determination (based on the Norwich factors) and maybe gotten a different result. If the tread designs were denied registration, Atturo would have known going into the litigation that the trade dress claims were likely to fail, and saved on legal fees.
“This approach recognizes that most applications ….. during patent prosecution and that the true value of an invention is at times not fully recognized until much later…”
Ja, in my exp. this applicable mostly on inventions having a more pioneering nature; in incremental improvement inventions the inventors are more clear on what the invention is.
So, the gutting of continuation practice by these foreign trade agreements, imo has resulted in a huge rip-off to society inasmuch it no longer protects the Minority of society who are pioneering to properly disclose to the world their creation/discovery, since they themselves may fully not appreciate it. Repeal NAFTA now !!
I find it hard to believe that this post’s list of useful ODP background court decisions failed to include Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007) — the main decision that In re Cellect distinguished, and the case that fooled so many patent owners (including the one in In re Cellect itself) into trustingly believing that Congress’s statutory grant of “patent term adjustment” could not be held to be a poisoned chalice that slays the patent that is adjusted.
The mention of In re Cellect fails to mention its denial of certiorari, also.
Thanks SR. I have been pushing to include more useable citations in my blog posts, while also avoiding treatise-like posts. Regarding Cellect – This post does mention that cert was denied (as does my immediate prior post).
Nice summary of the petition. Thanks so much for this service to the community. It will be interesting to see Allergan’s response, as no doubt Sun has not addressed some important rebuttal arguments.
The petition cites and quotes from my analysis of the original Allergan case, writing:
Even a pro-patentee commentator welcoming the result notes it “is in some major tension with In re Cellect” and “marks a departure from Gilead,” producing “a dramatic opposite outcome.” Dennis Crouch, Family Planning Patent Style: Allergan, Cellect, and the ODP Maze, PATENTLY-O (Aug. 13, 2024), link to patentlyo.com
While the quoted analysis is accurate, I want to clarify that my aim is not to be pro-patentee but to provide balanced, critical analysis of patent law developments. Most often this results in commentary that patentees themselves may not welcome.
Your point 4 regarding Gilead should be that ODP applied to a first issued but LATER-expiring patent. That was the whole rub of Gilead. The first issued patent expired later because of PTA. IMO, ODP should be based upon issue dates, not expiration dates.
Seems like the right thing to do is fix the split in the direction of Allergen. Is there a fact out there deemed most likely to prevent the en banc court from doing so?
I agree; anything we can do to prompt action by the PTO? Assuming they will not fix their own errors, can anyone suggest a PTA review service they trust? If the costs are reasonable, I would prefer to pay them rather than waste many of my and my staff’s hours.
You know, I was about to say what a silly argument Lynk is making, but now I’m not so sure. I spend a lot of time in my patent classes teaching about printed publications (which has a definite meaning under (a)(1)) and patented (which also has a definite meaning under (a)(1)) and how those are different than described in a published patent or patent application.
So, to me, reliance on the patent being printed is not helpful at all. The real crux of the question is whether 311(b)’s “patents” was intended to be limited to “patented” under (a)(1) or to apply more generally to any kind of patent application or patent description under (a)(2). I don’t know the answer, but I also don’t think it’s an easy one without more.
A Central District of California jury has awarded SPEX Technologies nearly $316 million in damages against Western Digital for infringement of a patent related to hardware encryption technology. The verdict, handed down on October 18, 2024, comes after an eight-year legal battle and raises interesting questions about infringement of means-plus-function claims and the calculation of […]
by Dennis Crouch UTTO Inc. v. Metrotech Corp., No. 2023-1435 (Fed. Cir. Oct. 18, 2024). This new claim construction decision has two important focal points: Is it proper at the motion-to-dismiss stage? (Answer: Yes, but with major caveats) Is a plural also singular? (Answer: Sometimes, because in patent law, even basic grammar isn’t safe from […]
by Dennis Crouch Starting with my 2017 article chastising the Federal Circuit for its R.36 practice, dozens of parties have challenged the Federal Circuit’s ongoing habit of regularly issuing a large number of no-opinion judgments. So far, the Federal Circuit has refused to address any of the legal process complaints – favoring silent efficiency over […]
by Dennis Crouch This post offers some insight into four patent-focused academic articles that I’ve been reading lately. 1. A textualist approach to patent eligibility under § 101; 2. Reflections on the Myriad, ten years later 3. Message to Competition Regulators: Patents are not simply a necessary evil 4. Philosophical critique of AI inventorship These […]
We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context. In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long […]
by Dennis Crouch The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far […]
by Dennis Crouch OpenAI’s new patent pledge promises to use their patents only for defensive purposes, as long as other parties do not assert claims against them or engage in harmful activities. The move echoes Tesla CEO Elon Musk’s 2014 declaration that “all our patent … belong to you” – a pledge that garnered significant […]
by Dennis Crouch In AlexSam v. Aetna, the Federal Circuit recently revived the patentee’s infringement lawsuit against health insurance giant Aetna over its Visa and Mastercard-branded health savings account (HSA) debit cards. AlexSam, Inc. v. Aetna, Inc., No. 22-2036 (Fed. Cir. Oct. 8, 2024). The district court has dismissed the case on 12(b)(6) for failure […]
by Dennis Crouch The landscape of patent litigation has been dramatically reshaped by the rise of third-party litigation funding (TPLF) over the past decade. As someone who has been involved in patent law issues for 20+ years, I can confidently say that if I were asserting a patent today, I would actively seek litigation finance […]
by Dennis Crouch The pending appeal in CeramTec v. CoorsTek Bioceramics again highlights the interplay between utility patents and trade dress protection — this one focusing on the color pink. The case centers on CeramTec’s attempt to maintain trademark registrations for the pink color of its ceramic hip implants after its utility patent expired. While […]
That claim should have been found ineligible under 35 USC 101. Why? Because it consists of a collection of abstract ideas related to how to achieve the desired end result, and adds nothing new to the art. How else would you create encoding for an external disk device? The claim elements are abstract. The relations between the elements is not an improvement in the art. This claim is like a “trap” to catch unwary competitors.
Federal Circuit’s Rule 36 Affirmances: A Concerning Trend in Light of Loper Bright
Skimming just the cited en banc petition [without seeing if there were effective declarations in the IPR] it seemed to me more of an anti-Rule 36 argument based on requiring CAFC legal interpretation or fact-finding evidence level dispute over enablement of the prior art for a 103 rejection? That faces Fed. Cir. statements like “In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be “self-enabling,” to be relevant to the obviousness inquiry. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (“While a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non enabling reference may qualify as prior art for the purpose of determining obviousness under § 103.”); Beckman Instruments Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). For example, a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled. See Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1365–66 (Fed. Cir. 2013). Alternatively, such a reference may be used to supply claim elements enabled by other prior art or evidence of record. See Comcast Cable Commc’ns Corp. v. Finisar Corp., 571 F. Supp. 2d 1137, 1145 (N.D. Cal. 2008), aff’d sub nom. Comcast Cable Commc’ns, LLC v. Finisar Corp., 319 F. App’x 916 (Fed. Cir. 2009).”
The en banc petition lists as a related case “In re Certain Rolled-Edge Rigid Plastic Food Trays, United States International Trade Commission, Investigation No. 337-TA-1203.” Was the ITC import exclusion action proceeding at the same time as the IPR appealed here, or did one stop the other, or how was that handled? Or was it on different patents? [It’s surprising to me that there are not more of these dual track administrative patent proceedings. [Or triple proceedings – with a D.C. infringement suit.]
Recent Patent Law Scholarship
‘Of course, it makes me wonder how the textualists would handle overturning longtime precedents excluding abstract ideas, laws of nature, and natural phenomena?”
They don’t care about precedent. But more importantly, they can’t explain why, if textualism was not the interpretive approach assumed by Congress when enacting the statute, imposing a textualist interpretation is not impermissible retrospective judicial legislation.
Good point about questioning current Sup. Ct. conservatives retroactive textual interpretations of non-textual-intent statutes. [And selective history.] Note that when the current patent statute was enacted in 1952 it was presented by its drafters, supporters and Congress to be a needed Codification of the prior Judicial interpretations of patent law.
How does “A textualist or literal reading approach to patent eligibility under 35 U.S.C. § 101” work for self-defining the full scope of patentable subject matter? There are no specific listings or definitions of Non-patentable subject matter in 101 itself [just non-new and non-useful limitations], and there are a number of subject matters that are indisputably not properly or practically patentable that have been noted over the years on this blog that would not be prevented by 101 language.* Also, there is the overriding Constitutional intent definition to deal with.
*I don’t remember them all, but for current entertainment value, how about the known inventors claiming within one year of the public release of their novel invention: “I claim a novel process or method of changing a presidential election comprising the acting Vice President refusing to certify the official state electorial votes.”
The 4th article here makes a good argument that allowing patents to non-human inventors such as AI upends the basic philosophical [more accurately, public policy?] basis for the patent system.
Thanks, glad you liked the paper! And yes, I think it’s both. Hopefully philosophy doesn’t exclude public policy reasoning (and vice versa?).
USPTO Terminates Thousands of Chinese-Origin Patent Applications Due to Forged Attorney/Agent Signatures
Can you share the source of this news? Thank you.
link to uspto.gov
link to foiadocuments.uspto.gov
Two questions:
1) Anyone have ideas on how to challenge this? I represent a number of former W&K applicants who are unwitting victims of Wang’s fraud. We filed responses to each show cause order providing evidence of the Chinese counsel’s prior work with W&K and the steps they took to verify that W&K was a legitimate firm. Holding the applicants responsible for actions over which they had no control, and of which they had no knowledge, seems inappropriate.
2) How should an applicant avoid this fate in the future? The Chinese counsel has asked what steps they should take to assure themselves that signatures are being properly used. I don’t see a way they can do this.
If others are dealing with this same situation, maybe we should start a separate discussion.
Thanks for any insight.
An APA suit by an attorney who knows how?
Allergan: En Banc Support for Stronger ODP Rules
The common complaints by some patent attorneys or even retired CAFC judges that patents are no longer valuable is not supported by big money legal and legislative battles like this one shaping up even on OTDP in pharma. Also, I just saw how a report in the Economist on how much money IBM made on patent licensing last year. There was a whole article on the economic importance of controlling “standards settings,” which of course affects which patents will need to be licensed.
Alvogen’s hypothetical about patentees starting out with an application with broad claims to maximize term extension has many uncertainties. It requires the examiner to act slowly. The examiner can act quickly to minimize any term extension (if the examiner is later found to be wrong by the PTAB). The examiner can act carefully and reasonably, reducing the likelihood of a successful appeal and overturning of earlier examiner rejections. The PTAB can act with reasonable speed and minimize term extension. The patentee’s prosecution can’t have any setbacks (e.g. revelation of previously unknown pertinent prior art) that requires filing of RCEs, or losing the appeal (a majority of such appeals are lost by the patentee) and gutting the term extension. If the patentee does pull off this strategy, it is the Patent Office’s delays and overly aggressive rejections that are the proximate cause of the term extension, not some gaming of the system. Also, the copyists have opportunities to inject prior art into the prosecution process to enhance quality and make the examiner’s rejections more resistant to overturning by the PTAB.
The Substance of OpenAI’s Patent Pledge?
Only “using patents defensively” also covers using one’s patents to refuse to pay for licenses for infringed patents of others, not just for settling lawsuits. It does not have any value for any of the many PAE or other NPE patent owner lawsuits. Nor is that unilateral promise binding for corporate acquisitioners or bankrupcies,
How do you assert a trade secret aggressively?
Since you asked Robert, one way I have seen trade secrets “asserted over-aggressively” is for a corporate CPC to send threatening letters to any potentially competitive company hiring any of his corporate patent attorneys irrespective of that attorney’s knowlege of or involvement in any actual trade secrets.
Thank you, Paul
Other than to assert that the secret knowledge has been obtained by theft or deceit and without permission?
And used to the detriment of the secret’s owner.
Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress
In “color contrast” note that it was trademark news when Owens-Corning successfully trademarked the same color – pink – of their fiberglass insulation in 1985. But that color was apparently from adding red dye to their fiberglass insulation in the 1950s, not the fiberglass itself.
As noted, this case is an appeal of TTAB cancelled registered trademarks, not trade dress. Does that make a difference re the functionality proof?
BTW, what always bothered me about “trade dress” IPL protection [as opposed to trademark or patent law scope definitions] is its ambiguity, more than the functionality issue. That enables litigation-harassment of competitors that is hard to summarily end or predictably avoid. E.g., the kind of trade dress in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). It seems too much like the ambiguous “look and feel” copyright litigation that briefly occurred before that was judicially ended.
It helps when the trade dress is registered as a trademark. Then the case really boils down to whether or not there is a likelihood of confusion, since the registration establishes ownership of the mark. If the mark is on the Supplemental Register then the plaintiff would also have to show “ownership” of the mark (such as showing that the mark is functioning as a “source identifier” and that plaintiff’s use of the mark was before the alleged infringing use). When the trade dress is not registered, it still would be essentially a trade mark infringement case, but perhaps under Lanham Act §43 or under related state laws. I suppose this could be more “ambiguous.”
I really liked your summary of how various forms of IP protection interrelate for protection of innovations such as a pink artificial hip joint. This is a good tool for counseling clients on IP protection strategies. I would perhaps add that at least when the trade dress is registered as a trademark at the USPTO, that the applicants are expected to prove that the mark (the trade dress) is non-functional, and this is done using the Morton-Norwich factors. The Morton-Norwich factors actually include as a factor that the existence of a prior utility patent disclosing the utilitarian advantages of the design supports a functionality determination, as was confirmed in the TrafFix decision.
Thanks!
Federal Circuit Revives Patent Suit Against Aetna Over Health Savings Cards
It would be interesting to see on remand if, besides asserting Alice 101, the claimed “processing hub” as only defined in “processing hub accessing a first database when the card functions as a debit card and said processing hub accessing a second database when the card functions as a medical card.” is argued to be a nonce word requiring 112 reference to a specific spec description of at least one way of how that can be done [other than maybe manually?], or, held ambiguous if there isn’t any such spec teaching?
Third-Party Litigation Funding in Patent Cases: Transparency, Ethics, and Policy Concerns
The indicated opponents of disclosure of investors funding patent suits* are confusing mere disclosure proposals with waivers of attorney-client privilege. Also, ignoring existing requirements for disclosing “real parties in interest” controlling the lawsuit attorneys re settlements, etc. Nor is this any proposed restriction on such funding. Nor are patent suits the kind of litigation like civil rights or abortion litigation where investors may need disclosure protection from violent opponents of civil rights.
It would be interesting to learn who is funding this “new” “Inventors Defense Alliance” and its members other than the one indicated law professor.
*These patent lawsuit investments are primarily, if not almost entirely, for PAE suits via the shell companies set up for that. In earlier times this would even be illegal champety in some cases. Its definition at common law was “an agreement in which a person with no previous interest in a lawsuit finances it with a view to sharing the disputed property if the suit succeeds.”
There’s just a bunch of problems with the letters and criticism of the current structure.
“Key arguments from the corporate coalition include:
Need for transparency: The letter contends that TPLF fundamentally alters case dynamics and impacts settlement possibilities. Without knowledge of who controls the litigation, defendants cannot make informed decisions.
****I struggle to see any level of unfairness or impropriety here. Accused infringers should assess their level of exposure for infringement, damages, etc., without regard for who the patent holder is, etc. And “control of the litigation” is a bogeyman that is a non-issue in reality.
Procedural fairness: They argue that non-disclosure of TPLF agreements undermines key FRCP provisions such as proportionality in discovery and the requirement that actions be prosecuted by the real party in interest.
****Again, the bogeyman of who is the patent holder. Not a legitimate contention. Lit funders don’t control the litigation, etc. And what specific FRCP is non-disclosure of work product, etc., inconsistent with?
Consistency across jurisdictions: The letter highlights the current patchwork of approaches to TPLF inquiry, ranging from ex parte discussions to written orders, and advocates for a uniform, straightforward procedure.
****The vast majority of the caselaw rightly find such discovery to be improper, irrelevant, and/or related to work product, etc.
Parity with insurance disclosure: As mentioned above, the letter also argues for parity with the mandatory disclosure of insurance agreements.
****Well, it’s not insurance. The differences between insurance coverage, limits, and the role insurers play in tort litigation, etc., is not a good analogy to lit funders. Lit funders, at their base, are merely a heavily discounted, fraction of the financial backing that defendant infringers have. Suffice to say, defendant infringers are never required to produce their budgets for a matter, internal views of ranges of exposure, analysis, strategies, etc.
I would add that the Chamber of Commerce and others have attempted to add in silly threats–such as foreign funders (the Russians!) somehow creating national security concerns.
The weakness of the arguments by the anti-lit funding crowds are readily apparent.
Great comment. Thanks for the insight. I could see how the judge through court rules may have a right to disclosure of TPLF to ensure the plaintiff’s counsel is properly representing the interest of the named plaintiffs and not the financial backers. I don’t see a legitimate interest of defendants to inquire into TPLF other than to attempt ex-legal actions to disrupt financing of the plaintiff or other mischief. I am reading the book “Servants of the Damned” about how defendants would file countless valid but frivolous motions in an attempt to thwart justice by making litigation long and expensive for the plaintiff as a way to pressure nominal settlements. TPLF seems to be merely leveling the playing field preventing this type of ex-legal conduct famously done in tobacco litigaton. Isn’t the public policy of a court system to ensure robust and zealous representation of both sides in litigation? Requiring mandatory disclosure to the court to ensure the TPLFs are not pressuring the plaintiffs into nominal settlements is the only legitimate reason for any disclosure. Ensuring adequate settlement amounts is clearly not in the defendants purview, interest, or business justifying disclosure of TPLFs to defendants in an adversarial proceeding.
Yes, we have all known cases in which “defendants would file countless valid but frivolous motions in an attempt to thwart justice by making litigation long and expensive for the plaintiff as a way to pressure nominal settlements.” We have also seen cases in which the plaintiff engages in massive sweeping document discovery and as many depositions as possible to put settlement pressure on defendants. Both are problems with U.S. judicial controll.
But I do not see the logic of the former being enhanced by disclosure of third party financing? The opposite seems more logical. That is, if a defendant knows that the plaintiff has major financial investment backing, a defendant will logically conclude that filing many motions will be far less successful than it would be against a plaintiff without such deep pockets.
Thanks for this comment.
Treading Carefully: Federal Circuit Expands “Absolute Litigation Privilege” and Affirms Trade Dress Invalidity in Toyo Tire v. Atturo Tire
Since the proper IPL subject here is just trade dress, note the Sup. Ct. trade dress decision later than those noted above [which I and some others thought was overly trade dress protective]. It was Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). The Court held that Two Pesos, Inc. infringed upon the trademark of Taco Cabana, Inc. just by deliberately copying design features of their restaurants, even without any proof of secondary meaning, even though those design features noted in the decision sounded to me like what one might expect to see for decorations, etc. in other Mexican restaurants? Is that still good law?
In hindsight, maybe Atturo should have filed a 3D (and maybe also a 2D) trademark application on their tread designs. If they were able to register them (admittedly a big “if”) they would have had the CAFC’s “substantial basis” standard of review of the examiner’s non-functional determination (based on the Norwich factors) and maybe gotten a different result. If the tread designs were denied registration, Atturo would have known going into the litigation that the trade dress claims were likely to fail, and saved on legal fees.
Test
So many opinions.
Appolgies for my mistake in not carefully reading the opinion itself before commenting.
Free Post: Not Yet in Effect: Clarifying Misconceptions About the USPTO’s Proposed Terminal Disclaimer Rule
Yes, seems unlikely.
101 Ways Not to Invalidate: Federal Circuit Rejects Sua Sponte Eligibility Ruling
Test this comment.
Free Post: En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements
“This approach recognizes that most applications ….. during patent prosecution and that the true value of an invention is at times not fully recognized until much later…”
Ja, in my exp. this applicable mostly on inventions having a more pioneering nature; in incremental improvement inventions the inventors are more clear on what the invention is.
So, the gutting of continuation practice by these foreign trade agreements, imo has resulted in a huge rip-off to society inasmuch it no longer protects the Minority of society who are pioneering to properly disclose to the world their creation/discovery, since they themselves may fully not appreciate it. Repeal NAFTA now !!
I find it hard to believe that this post’s list of useful ODP background court decisions failed to include Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007) — the main decision that In re Cellect distinguished, and the case that fooled so many patent owners (including the one in In re Cellect itself) into trustingly believing that Congress’s statutory grant of “patent term adjustment” could not be held to be a poisoned chalice that slays the patent that is adjusted.
The mention of In re Cellect fails to mention its denial of certiorari, also.
Thanks SR. I have been pushing to include more useable citations in my blog posts, while also avoiding treatise-like posts. Regarding Cellect – This post does mention that cert was denied (as does my immediate prior post).
Dennis
Nice summary of the petition. Thanks so much for this service to the community. It will be interesting to see Allergan’s response, as no doubt Sun has not addressed some important rebuttal arguments.
Thanks Brad.
The petition cites and quotes from my analysis of the original Allergan case, writing:
Even a pro-patentee commentator welcoming the result notes it “is in some major tension with In re Cellect” and “marks a departure from Gilead,” producing “a dramatic opposite outcome.” Dennis Crouch, Family Planning Patent Style: Allergan, Cellect, and the ODP Maze, PATENTLY-O (Aug. 13, 2024), link to patentlyo.com
While the quoted analysis is accurate, I want to clarify that my aim is not to be pro-patentee but to provide balanced, critical analysis of patent law developments. Most often this results in commentary that patentees themselves may not welcome.
I would respectfully disagree with this “pro-patentee” label, having read Patently-O for some decades.
For wistful thinking about politically or legally unrealisitic pro-patent proposals rather than realisitic legal analysis there are other blogs.
Your point 4 regarding Gilead should be that ODP applied to a first issued but LATER-expiring patent. That was the whole rub of Gilead. The first issued patent expired later because of PTA. IMO, ODP should be based upon issue dates, not expiration dates.
Seems like the right thing to do is fix the split in the direction of Allergen. Is there a fact out there deemed most likely to prevent the en banc court from doing so?
Check your Patent Term Adjustments (PTA): What you Need to Know about the USPTO Error
I agree; anything we can do to prompt action by the PTO? Assuming they will not fix their own errors, can anyone suggest a PTA review service they trust? If the costs are reasonable, I would prefer to pay them rather than waste many of my and my staff’s hours.
Secret Springing Prior Art and Inter Partes Review
You know, I was about to say what a silly argument Lynk is making, but now I’m not so sure. I spend a lot of time in my patent classes teaching about printed publications (which has a definite meaning under (a)(1)) and patented (which also has a definite meaning under (a)(1)) and how those are different than described in a published patent or patent application.
So, to me, reliance on the patent being printed is not helpful at all. The real crux of the question is whether 311(b)’s “patents” was intended to be limited to “patented” under (a)(1) or to apply more generally to any kind of patent application or patent description under (a)(2). I don’t know the answer, but I also don’t think it’s an easy one without more.
SPEX v. Western Digital: $316 Million Verdict for Means Plus Function Claim
October 19, 2024
A Central District of California jury has awarded SPEX Technologies nearly $316 million in damages against Western Digital for infringement of a patent related to hardware encryption technology. The verdict, handed down on October 18, 2024, comes after an eight-year legal battle and raises interesting questions about infringement of means-plus-function claims and the calculation of […]
Pleading Stage Claim Construction
October 18, 2024
by Dennis Crouch UTTO Inc. v. Metrotech Corp., No. 2023-1435 (Fed. Cir. Oct. 18, 2024). This new claim construction decision has two important focal points: Is it proper at the motion-to-dismiss stage? (Answer: Yes, but with major caveats) Is a plural also singular? (Answer: Sometimes, because in patent law, even basic grammar isn’t safe from […]
Federal Circuit’s Rule 36 Affirmances: A Concerning Trend in Light of Loper Bright
October 17, 2024
by Dennis Crouch Starting with my 2017 article chastising the Federal Circuit for its R.36 practice, dozens of parties have challenged the Federal Circuit’s ongoing habit of regularly issuing a large number of no-opinion judgments. So far, the Federal Circuit has refused to address any of the legal process complaints – favoring silent efficiency over […]
Recent Patent Law Scholarship
October 16, 2024
by Dennis Crouch This post offers some insight into four patent-focused academic articles that I’ve been reading lately. 1. A textualist approach to patent eligibility under § 101; 2. Reflections on the Myriad, ten years later 3. Message to Competition Regulators: Patents are not simply a necessary evil 4. Philosophical critique of AI inventorship These […]
Allergan: En Banc Support for Stronger ODP Rules
October 15, 2024
We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context. In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long […]
USPTO Tweaks PTAB AIA-Trial Counsel Rules; NO Major Overhaul
October 14, 2024
by Dennis Crouch The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far […]
The Substance of OpenAI’s Patent Pledge?
October 14, 2024
by Dennis Crouch OpenAI’s new patent pledge promises to use their patents only for defensive purposes, as long as other parties do not assert claims against them or engage in harmful activities. The move echoes Tesla CEO Elon Musk’s 2014 declaration that “all our patent … belong to you” – a pledge that garnered significant […]
Federal Circuit Revives Patent Suit Against Aetna Over Health Savings Cards
October 13, 2024
by Dennis Crouch In AlexSam v. Aetna, the Federal Circuit recently revived the patentee’s infringement lawsuit against health insurance giant Aetna over its Visa and Mastercard-branded health savings account (HSA) debit cards. AlexSam, Inc. v. Aetna, Inc., No. 22-2036 (Fed. Cir. Oct. 8, 2024). The district court has dismissed the case on 12(b)(6) for failure […]
Third-Party Litigation Funding in Patent Cases: Transparency, Ethics, and Policy Concerns
October 11, 2024
by Dennis Crouch The landscape of patent litigation has been dramatically reshaped by the rise of third-party litigation funding (TPLF) over the past decade. As someone who has been involved in patent law issues for 20+ years, I can confidently say that if I were asserting a patent today, I would actively seek litigation finance […]
Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress
October 10, 2024
by Dennis Crouch The pending appeal in CeramTec v. CoorsTek Bioceramics again highlights the interplay between utility patents and trade dress protection — this one focusing on the color pink. The case centers on CeramTec’s attempt to maintain trademark registrations for the pink color of its ceramic hip implants after its utility patent expired. While […]