Search Results for: Alice v. CLS Bank

Step one: Find the Gist (Do not Construe)

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In Blue Spike v. Google, the patentee has asked the Supreme Court to further elucidate its test for eligibility under Mayo, Alice, and Myriad with the following three questions presented.

  1. May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?
  2. May a district court properly assess patentability under § 101 prior to authoritatively construing the patent’s claims?
  3. May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112?

We have an interesting case here where the district court expressly stated its approach to Mayo/Alice Step 1 is to distill the claimed invention to its “gist” and ask whether that gist is an abstract idea.

In its lawsuit against Google, Blue Spike asserted five related patents: U.S. Patent Nos. 7,346,472 (the “’472 Patent”), 7,660, 700 (the “’700 Patent”), 7,949,494 (the “’494 Patent”), 8,214,175 (the “’175 Patent”), and 8,712,728 (the “’728 Patent”).  Looking at asserted claim 1 of the ‘472 patent as an example: the claim requires comparing a query signal with a reference signal.  The process involves creating an “abstract” (essentially a hash or digital fingerprint) of each signal that uses “perceptual qualities” of each signal, and then comparing those abstracts.

The district court dismissed the case on the pleadings – holding that the asserted claims were all invalid as a matter of law for effectively encompassing an abstract idea.  On appeal, the Federal Circuit affirmed without opinion.

In its decision, the district court expressly “distill[ed] the gist of the claim[s]” and found that the gist of the claims is to “model, on a computer, ‘the highly effective ability of humans to identify and recognize a signal’ [using a method that] mirrors the manner in which the human mind undertakes the same task.” (quoting the patent specification).   Essentially, the court found, all of the claims are directed to the abstract idea – “the idea of comparing one thing to another.”  Moving on from there, the court recognized the computer implementation, but found no inventive concept in that implementation.  The patentee argues here that the court erred in its gist analysis, and compounded that error by failing to construe the claims prior to the gisting process:

[M]any trial courts have adopted the practice of reducing patent claims to a highly general “gist,” then assessing that gist to determine whether it is so abstract as to be unpatentable. Because distillation to a “gist” inherently abstracts from a patent’s specific claims, this approach builds in a bias towards invalidity. . . . Deciding eligibility before claim construction exacerbates the tendency noted above to ignore a patent’s specific claims and over-generalize its “gist.”

The petition also spends substantial time discussing the Federal Circuit’s new status quo of issuing a substantial number of no-opinion judgments under Rule 36:

[T]he Federal Circuit appears unwilling to shoulder the responsibility for clarifying the Alice/Mayo analysis. That court’s use of summary Rule 36 affirmances seems to be both commonplace and increasing. This is particularly true in cases concerning patentable subject matter under § 101. One recent report identified a dozen Federal Circuit appeals raising this issue decided by Rule 36 affirmances in 2016 alone. . . . [P]recedential opinions in § 101 cases are important not just for trial courts reviewing issued patents, but also for the PTO’s examiners who must determine whether to issue patents in the first place. When the Federal Circuit fails to write a written opinion, it fails to provide the USPTO with necessary examples to use in granting patent applications.

In this particular case, the R.36 judgment is not a law violation (since the case arose from the district court rather than the PTO) but should also not be an excuse for failing to properly resolve the case – certainly the issues raised are not resolved and there is need for explanatory precedent.

[Blue Spike Petition (April 6 2017)]

 

In Brief: Amici Provide Reasons to Reconsider Ariosa v. Sequenom

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[This post includes links to the 12 amicus briefs supporting Sequenom’s petition for en banc rehearing in this Subject Matter Eligibility Case.]

by Dennis Crouch

Ariosa Diagnostics, Inc v. Sequenom, Inc. (Fed. Cir. 2015) (en banc petition 2015)

This subject matter eligibility case revolves around an important scientific discovery that a pregnant woman’s blood plasma/serum contains fetal DNA and that the fetal DNA can teased-out by amplifying paternally-inherited sequences from the cell-free fractions of the mother’s blood. Sequenom’s patents focus on methods of prenatal genetic diagnoses that rely upon these discovery by the inventors. U.S. Patent No. 6,258,540.

Invalid: Applying Mayo v. Prometheous, the Federal Circuit held all the claims in-suit to be ineligible. In step one of the Mayo inquiry, the court found that the claims were all directed to a natural phenomenon: the existence of paternally-inherited cell-free fetal DNA (cffDNA) in the maternal bloodstream. In step two, the search for an ‘inventive concept,’ the court found that the practical implementation of the natural phenomenon was insufficient because it merely involved well known methods of amplifying DNA.  (CitingFlook).  Without an inventive concept beyond the excluded subject matter – the claims were left ineligible for patent protection.

In his usual understated approach, Professor Chris Holman identified the Federal Circuit decision “not good news for innovation in the life sciences.”  The USPTO has also seemingly delayed providing examiner’s with guidance on how to implement Ariosa during examination.

En Banc Rehearing Petition: The patentee has now put forward a strong move for rehearing en banc  with a well drafted petition and support from a host of amici. Aptly describing the core issue, Sequenom’s counsel Tom Goldstein explains:

[Under the Federal Circuit’s rule] the person who first discovers a natural phenomenon can never obtain a patent on any practical application of that new knowledge, however surprising or revolutionary the results, unless the steps she teaches to use it are independently novel. . . . that cannot be correct.

Read the Ariosa.Petition.  The petitioner’s main argument here is with the Supreme Court’s broad language used in Mayo that also revitalized Flook.  Of course, those cases conflict with other Supreme historic precedent. In the coming months, the Federal Circuit will decide this en banc request, but the case is very much being set-up for Supreme Court review.

The 12 amicus briefs filed in support of the petition are strong and well written.

My former boss Kevin Noonan is counsel of record for a group of 23 law professors, including Adam Mossoff, Dan Burk, Tim Holbrook, and Richard Epstein. The brief makes two main arguments: (1) the genetic diagnostic tests developed and commercialized here are the type “historically unforeseen invention” that the patent system is designed to promote; and (2) the panel’s approach here of requiring novelty beyond straightforward application of excluded natural phenomenon “would call into question nineteenth century patented innovation the Supreme Court deemed valid.”Read Ariosa.lawprof.  The sentiment of the Law Professor Brief is consistent with the brief filed by Matthew Dowd on behalf of JYANT Tech, explaining that “in Diamond v. Diehr … the [Supreme] Court explained that “a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Read Ariosa.JYANT

As we will discuss in a parallel post, the brief of Professors Lefstin and Menell provide their reading of recent Supreme Court cases of Mayo and Alice — arguing that (1) a close reading shows that inventive application of a law of nature is not required but instead a non-preemptive or non-generic application; and (2) the Flook-type claim dissection is prohibited. Read Ariosa.Leftsin. This analyze-it-as-a-whole sentiment was repeated by the IPO Brief field by Tiege Sheehan as well as the brief from Amarantus filed by Gideon Schor. Read  Ariosa.IPO and Ariosa.Amarantus.

My Fellow Missouri Professor Chris Holman filed a brief on behalf of the major industry organizations BIO and PhRMA making the credible argument that all this is a very big deal in the diagnostic space and that the resulting uncertainty is having a negative impact on research. Read Ariosa.BIO.

Preemption: When the Supreme Court explained its two two-step approach in Mayo andAlice, it noted the purpose was to avoid preemption of any excluded subject matter — that is, to ensure that no single entity could claim exclusive sovereignty over an abstract idea, law of nature, or natural phenomenon.  Rather, those basic fundamentals of society should not be subject to private claims of right.  Although the purpose behind the test is preventing this preemption, the test itself seemingly does not ask whether preemption has occurred. In its brief, the NYIPLA argues that this fundamental question of preemption must be asked and the Mayo/Alice framework does not authorize a court to ignore that inquiry.READ Ariosa.IPLA.  This focus on preemption is repeated by WARF’s brief filed by Dan Bagatell — writing that “the critical question is whether a patent impermissibly claims and prevents others from using a natural phenomenon, law of nature, or abstract idea itself, or instead permissibly claims a practical application of one of those things.”Read Ariosa.WARF.

Myriad‘s counsel Benjamin Jackson filed a brief on behalf of the industry organization21st Century Medicine that challenges the “gist” method of determining whether a claim encompasses excluded subject matter and suggests that the claim here is simply a technological improvement over the prior art.

Sequenom’s patent teaches it was known in the art that fetal cells can pass into the mother’s blood. Diagnostic techniques had been devised to isolate these cells and analyze fetal DNA extracted from them, but these techniques were expensive and time consuming. The phrase “cell-free fetal DNA” was therefore not an attempt to claim a natural phenomenon but instead a key claim limitation to distinguish over the art. Fifteen years ago, back when patent claiming and examination focused on prior art rather than ill-defined “natural phenomena,” Sequenom appropriately emphasized that its methods used cell-free fetal DNA rather than the cell-derived fetal DNA known in the art.

Thus, the claimed invention is a significant technical improvement in the laboratory process for prenatal diagnosis, allowing laboratories to eliminate the costly and labor-intensive step of isolating fetal cells and then fetal DNA. Such an inventive improvement to the technical performance of an existing technological process is precisely what patents are for.

Read Ariosa.21st. The Novartis brief, filed by its in house counsel Corey Salsberg, makes the important point eligibility has become a tougher test that patentability (nonobviousness). Read Ariosa.Novartis.

Taking a more international approach,Paul Cole and Donald Zuhn teamed-up to file a brief indicating, inter alia, that the panel’s approach in Ariosa creates a potential TRIPs Violation. “This case is an example of an internationally discordant, not harmonious, result, contrary to the eligibility requirements of TRIPS Article 27.”  Read Ariosa.COLE. Similarly, the Bioindustry Association (BIA) also argues that the panel’s approach here means that U.S. eligibility is substantially narrower than that of our global trading partners. Read Ariosa.BIA.

The Federal Circuit may take several weeks to decide this en banc petition. This case is a hot potato and the court’s likely reason for ducking the case would be to avoid being scalded.

 

Most Cited Supreme Court Patent Decisions (2005-2015)

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by Dennis Crouch

The list below considers all of the U.S. Supreme Court patent cases decided during the past decade (Since January 2005) and ranks them according to the number of citations.  Citation offers some insight into the influence of decisions, but is obviously limited for a number of reasons. Cases may be cited because of their importance in changing the doctrine (KSR, eBay) or simply as the court’s most recent statement of the law on an important issue (Microsoft v. i4i and KSR) or for a narrow procedural issue that applies in many cases (Unitherm).   EBay’s high citation rate is also boosted because its principles have been applied broadly to injunctive relief across many areas of law. Some cases with low citation counts may also have major impacts. They may, for instance impact a small number of very important cases (Caraco) or perhaps they cause folks to change behavior so that the issue stops arising.

With this list we also have the timeline problem where older cases are more likely to be highly cited since there has been more opportunity for those cites.  I Alice Corp to rise in the ranks Nautilus and Teva, on the other hand,  may well flounder (based upon the Federal Circuit’s treatment of those cases thus far).

  1. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness)
  2. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive relief)
  3. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (challenging licensed patents)
  4. Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060 (2011) (inducing infringement)
  5. Bilski v. Kappos, 561 U.S. 593 (2010) (subject matter eligibility)
  6. Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011) (presumption of validity)
  7. Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (tying)
  8. Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) (exhaustion)
  9. Microsoft Corp. v. AT & T Corp., 550 U.S. 437 (2007) (infringement by export of components)
  10. Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006) (post-verdict civil procedure requirements)
  11. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) (patent eligibility)
  12. Carlsbad Technology, Inc. v. HIF Bio, Inc., 556 U.S. 635 (2009) (appellate jurisdiction)
  13. Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005) (research exception to infringement)
  14. F.T.C. v. Actavis, Inc., 133 S.Ct. 2223 (2013) (competition law – drug settlements)
  15. Gunn v. Minton, 133 S.Ct. 1059 (2013) (federal jurisdiction over cases involving patent law)
  16. Lexmark Intern., Inc. v. Static Control Components, Inc., 134 S.Ct. 1377 (2014) (unfair competition based upon false infringement allegations)
  17. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) (indefiniteness)
  18. Already, LLC v. Nike, Inc., 133 S.Ct. 721 (2013) (standing after covenant not-to-sue)
  19. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S.Ct. 2188 (2011) (ownership under Bayh-Dole)
  20. Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) (subject matter eligibility)
  21. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S.Ct. 2347 (2014) (subject matter eligibility)
  22. Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S.Ct. 2111 (2014) (divided infringement)
  23. Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, 132 S.Ct. 1670 (2012) (forcing correction of Orange Book listings)

KSR has actually rocketed to the position of most-cited Supreme Court patent case of all time followed by Markman (1996); U.S. Gypsom (1948) (antitrust-patent); Graham v. Deere (1966); and Warner-Jenkinson (1997).

A Major Drop in Patent Infringement Litigation?

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New patent litigation (original complaint filing) is down 40% from this time last year. The chart below comes from LexMachina whose founder, Mark Lemley, offers the speculation that the drop is largely due to the Supreme Court’s recent patent law activity — especially the fall-out from Alice Corp.  Along with Alice, we have a set of additional legal issues that favor accused infringers, including indefiniteness (Nautilus) and fee shifting (Octane Fitness).  Further, we are also well into the reign of post-issuance reviews (IPR, CBM, and now PGR) and the vast majority of repeatedly-asserted patents are involved in a parallel administrative review.  All these factors come together to provide plenty of reason for patent holders to slow-down on complaint filings. Of course, the change and the purported cause cannot be said to be ‘significant’ in the statistical sense.

PatentCases

We previously discussed the jump in April 2014 as a likely artifact caused by a threatened retroactive fee-shifting legislation.

In thinking about this issue, I was surprised to see HP’s most recent lawsuit as a plaintiff where it asserted three seemingly weak patents. U.S. Patent Nos. 6,089,687, 6,264,301, and 6,454,381.  These patents serve as HP’s attempt to control the market for replacement ink cartridges for its printers and have titles such as “providing ink container extraction characteristics to a printing system”; “identifying parameters in a replaceable printing component”; and “specifying ink volume in an ink container.”  The defendant in this case is Chinese ink-knockoff manufacture Ninestar.

The claims of these patents are clearly susceptible to Alice Corp in that the seeming points of novelty are basically very simply data structures.

The following is claim 1 of the ‘687 patent:

1. An ink-jet printing system comprising:

a printer portion for depositing ink on media in response to control signals, the printer portion configured for receiving a supply of ink;

a replaceable ink container for providing a supply of ink to the printer portion, the replaceable ink container including an electrical storage device for providing parameters to the printer portion, the electrical storage device containing:

an ink container scale parameter for selecting an ink container volume range from a plurality of ink container volume ranges,

a fill proportion parameter for specifying a fill proportion for the selected ink volume range;

wherein the printer portion determines an ink volume associated with the ink container based on the fill proportion parameter and the selected ink volume range.

Here, my understanding is that the hardware components were all known prior to the application here and the invention is simply to store two parameters on the cartridge (ink container scale parameter (specifying container volume) and fill proportion parameter (specifying how full it is)). The use of these parameters was also well known prior to the invention, but (apparently) they had never been put on an ink cartridge before.  Until recently, we would think this claim has an obviousness problem.  Now, it looks like it has patent eligibility problems as well. See HP v. Ninestar, 14 cv 4473 (N.D. Cal., complaint filed October 6, 2014).

Upcoming Supreme Court Arguments

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By Dennis Crouch

  1. Exceptional Case Awards: The Supreme Court will be hearing oral arguments on February 26, 2014 in two patent infringement cases that both concern shifting of attorney fees under the “exceptional case” standard of 35 U.S.C. § 285. The Federal Circuit has traditionally been resistant to fee shifting awards – especially in cases where an accused infringer is the prevailing party. In Octane Fitness, petitioner asks the Court to lower the standard for proving an exceptional case. In Highmark, petitioner asks for deference to lower court exceptional case findings. We can expect that the Supreme Court will eliminate the Brooks Furniture test – at least as it is strictly applied.
  2. Patentable Subject Matter: On March 31, 2014, the Supreme Court will hear oral arguments in the software patent case of Alice v. CLS Bank. The case has the potential of drawing dividing line between what types of software are patentable and what types of software are not patentable. I am quite pessimistic that the result proposed by the Supreme Court will be fairly implementable by the US Patent Office.
  3. Indefiniteness: On April 28, 2014, the Supreme Court will hear oral arguments in Nautilus v. Biosig. That case questions the standard for challenging issued patents on indefiniteness grounds. We can expect that the Supreme Court will lower the standard for proving indefiniteness – down from “insolubly ambiguous” to a more “reasonable” standard. This has the potential of impacting a substantial number of patents that have issued with claim terms that intentionally flirt with ambiguity. Indefiniteness is regularly confused with over-breadth. Patent attorneys role moving forward will be in finding ways to draft broad but well defined claims
  4. Divided Infringement: On April 30, 2014, the Supreme Court will hear the joint infringement case of Limelight v. Akamai that posits the question whether the elements of infringement-by-inducement require a single entity who, based upon the inducement, performs all elements of the claimed invention. The Federal Circuit ruled that the single-entity rule of direct infringement should be relaxed for inducement and instead that the relevant question is whether the alleged inducer did indeed induce performance of all elements of the patented claim. Although the Supreme Court may prove some tweaks, I believe that the Federal Circuit approach here should carry the day.

Attorney Hal Wegner follows upcoming cases and regularly post various notices here: http://www.laipla.net/category/wegners-writings/

En Banc Arguments This Week

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by Dennis Crouch

On February 8, 2013 (this Friday), the Federal Circuit will sit en banc and hear arguments on two important patent cases. In CLS Bank v. Alice Corp the court will focus on the patenting of inventions implemented through software. The two particular questions highlighted in the en banc order are:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?; and

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

In addition to the parties, the Federal Circuit has also granted leave for the USPTO to participate at oral arguments. The USPTO’s brief focused on practical mechanisms for the process of determining § 101 eligibility. The agency wrote “the essential question under § 101 is whether the claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself . . . This Court should identify a non-exhaustive list of factors for district courts and examiners to consider in resolving that essential question on a case-by-case basis.”

The second patent case (argued first on the 8th) is that of Robert Bosch v. Pylon Mfg. In Bosch, the court is focusing on the “final judgment rule” that limits a losing party’s right to appeal until the district court judgment is finalized. Particularly, 28 U.S.C. § 1292(c)(2)  indicates that the Federal Circuit has jurisdiction over patent appeals once the case is “final except for an accounting.  The basic question on appeal is: Define “an accounting.”  The en banc order asks two particular questions:

a) Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred?

b) Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided?

In its brief of the case, the U.S. Government argued that “accounting” encompasses the damage award. As such, the Government argues that appeal is appropriate once liability is determined. 

At the Supreme Court, oral argument in Bowman v. Monsanto (patent exhaustion doctrine) is scheduled for February 19; and FTC v. Watson (reverse payment settlements) is scheduled for March 25. Arguments for Association for Molecular Pathology v. Myriad Genetics, Inc.
have not yet been scheduled.

Anticipation Requires More Than Disclosing All the Elements

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Net MoneyIn v. Verisign (Fed. Cir. 2008)

NMI sued Verisign and others for infringing its credit card processing patent. One of NMI’s claims was found anticipated by a single prior art reference. That reference taught each element in the invalidated claim. However, there was no single example that taught all the elements together.

On appeal, the Federal Circuit reversed – holding that anticipation takes more than simply locating each element within the four corners of a single document.

In its rebuttal, the appellate panel focused on the concept anticipating the invention. To anticipate, the prior art must teach all the claim elements and the claimed arrangement.

Section 102 embodies the concept of novelty—if a device or process has been previously invented (and disclosed to the public), then it is not new, and therefore the claimed invention is “anticipated” by the prior invention. . . . Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements “arranged as in the claim.”

Focusing for a moment on arrangement – to anticipate, the reference must teach “all of the limitations arranged or combined in the same way as recited in the claim.”

Applying the rule to this case, the appellate panel found that the prior art reference was not anticipating. The reference disclosed two transaction protocols, but neither protocol contained all of the elements combined in the manner claimed. “Thus, although the iKP reference might anticipate a claim directed to either of the two protocols disclosed, it cannot anticipate the system of claim 23. The district court was wrong to conclude otherwise.”

Means Plus Function: After claim construction, the district court also found NMI’s means-plus-function claims invalid because they lacked any corresponding structure in the specification. On appeal, the Federal Circuit affirmed.

The patent statute allows patentees to draft claims in more generic ‘means plus function’ language. That language allows a patentee claim various elements based on their function. However, means plus function claims are only valid if the specification describes some structure to carry out the proposed function. According to the courts, this structure requirement is separate from any enablement requirement. Thus, some structure must be provided in the specification even if one skilled in the art would not need that disclosure to make the invention.

Here, NMI claimed a “[a bank computer including] means for generating an authorization indicia” but did not provide any corresponding structure in the specification to perform that structure.

On appeal, NMI incredibly argued that the claim was not a means-plus-function claim. The Federal Circuit disagreed – finding that the claim lacks structure.

Searching for structure in the specification, NMI pointed to its recitation of a “bank computer.” Of course that recitation is insufficient.

‘To avoid purely functional claiming in cases involving computer-implemented inventions, we have “consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Quoting Aristocrat

…

Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function.

Holding of MPF claim invalidity affirmed.

Design Patent Examination Updates

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Ten years ago – 2014 – the Supreme Court decided Alice Corp v. CLS Bank, holding that – yes indeed – the expansive language of Mayo v. Prometheus (2012) applies equally to software and technology patents.   A few weeks later, the USPTO began a dramatic transformation – pulling back notices of allowance and issuing thousands of supplemental office actions. The Federal Circuit’s May 2024 en banc decision in LKQ v. GM is perhaps as dramatic a change for the design patent arena as Alice was for utility patents.  The old Rosen-Durling test made it almost impossible to reject a design patent as obvious except for extreme cases involving either direct copying or extremely broad claims.  The key difficulty was that precedent required the obviousness inquiry to begin with a single prior art reference that is “basically the same” as the claimed design – a roughly 1-to-1 relationship.  Further, any secondary references had to be ‘so related’ to the primary reference that features in one would suggest application of those features to the other.” In LKQ, the court found those requirements “improperly rigid” under principles of KSR which require a flexible obviousness inquiry.  The overall effect is to make it easier to find a design patent obvious.

Immediate Reaction: The decision was released May 21, 2024, and Dir. Vidal released examination guidance to the design corps the next day.  The guidance indicated that additional training will be coming soon -“in the short term.”  However, it does not appear that Dir. Vidal has, thus far, asked examiners to take a second look at the applications waiting allowance.  Design patents continue to issue at a steady rate of about 1,000 per week, with most of those issuing today having received their notice-of-allowances back in Jan/Feb 2024.

Examination Outcomes:  Interestingly, I could not find any design patent obviousness rejections coming out of the USPTO since May 22, 2024.*  For the same period in 2023, I found a much larger number of cases with obviousness rejections. What I take from this is that it appears that there will likely be an examination slowdown as the USPTO develops its new examination process — understanding what obviousness search and rejection looks like under the new approach.

Note, one difficulty with studying design patent examination is that design applications are generally not published prior to issuance — and abandoned cases are never published.  One caveat to this general rule is that design applications claiming priority to Hague Convention filings are open to the public.  For my study here, I looked only at those Hague filings.

PTAB: So far we also have no PTAB decisions interpreting LKQ.

Trade Secret Filings

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I pulled up 10 recent federal complaints alleging trade secret misappropriations to get a sense of what filings look like today.  All 10 involved allegations against former employees.  Most focused on sales folks leaving and soliciting customers.  A couple of cases involve employees forming allegiances with  the competitor before leaving.  One involves a competitor trying to hire-away employees. And, one includes a text full of explicit emoji.  Overall, about 50 new Federal trade secret cases were filed in the past 30 days with about 600 over the past 12 months.

  1. MGA Home Healthcare Colorado, LLC v. Thun, Docket No. 1:22-cv-02534 (D. Colo. Sep 28, 2022).  According to the complaint: Former employee (Thun) was lead client manager but was terminated by MGA. Thun then joined a competitor Amazing Health Care and began soliciting clients.  The employment agreement included a non-solicitation clause extending for 12-months following the end of employment.
  2. Schnitzer Steel Industries, Inc. v. Dingman et al, Docket No. 1:22-cv-00361 (D.R.I. Oct 03, 2022). According to the complaint: Former employee (Dingman) had signed both a non-compete and non-disclosure agreement with scraper Schnitzer.  Dingman was fired in June 2022 and then formed a competing company to purchase and recycle catalytic converters.  He then started calling all of the same suppliers and has “successfully stolen business” from Schnitzer. 
  3. H.B. Fuller Company v. Strzegowski, Docket No. 0:22-cv-02389 (D. Minn. Sep 28, 2022). According to the complaint: Former employee (Strzegowiski) joined competitor and began soliciting former customers. 
  4. Cartiga, LLC v. Robles, Docket No. 9:22-cv-81612 (S.D. Fla. Oct 19, 2022). According to the complaint: Former employee (Robles) began soliciting former customers.  Attachments to the complaint include a nice row of middle fingers in response to the cease and desist letter.  
  5. NEBCO, Inc. v. Butler, Docket No. 4:22-cv-03217 (D. Neb. Sep 29, 2022). According to the complaint: Employee (Butler) allegedly began doing a bit of self dealing with a competitor with plans to join that company. 
  6. MERIDIAN BANK v. SANDY SPRING BANK et al, Docket No. 2:22-cv-03951 (E.D. Pa. Oct 04, 2022). According to the complaint: Nine former employees were hired away by competing bank who had been given confidential information regarding salary, benefits, and customer lists. 
  7. TRANSACTLY, INC. v. MOVE-IN READY, LLC et al, Docket No. 1:22-cv-00987 (W.D. Tex. Sep 29, 2022). According to the complaint: Employees formed a competing company and sent confidential information to the new company before quitting. 
  8. BIGRENTZ, INC. v. KGM Enterprises, LLC, Docket No. 1:22-cv-00430 (D. Idaho Oct 13, 2022). According to the complaint: Former employee formed competing company and began recruiting more employees with knowledge of customers lists and have begun soliciting those customers. 
  9. Gartner, Inc. v. G2.com, Inc., Docket No. 3:22-cv-01291 (D. Conn. Oct 13, 2022). According to the complaint: Competitor is hiring former employees seeking to “steal” plaintiff’s market share.  Sued both competitor and former employees. 
  10. BMO Harris Bank, N.A. v. Eimen et al, Docket No. 1:22-cv-05378 (N.D. Ill. Sep 30, 2022). According to the complaint: Former wealth management employees joined competitors and began soliciting former clients. 

Patent Eligibility: Distinguishing Collecting Information from Using Information

Patent

by Dennis Crouch

I’m always excited to read a decision that splits hairs–finding some claims in a patent valid and others invalid.  My hope is that the explanation will really get to the crux of the issues and help me to better understand how the law works. I’m often disappointed, but the Federal Circuit’s newest decision in Weisner v. Google LLC, — F.4th — (Fed. Cir. 2022) does offer some good clues.  The basic outcome here: Weisner’s claims directed toward collecting information are abstract ideas; those directed toward using the information are patent eligible.  This outcome is consistent with what we are seeing in biotech as well: diagnostics get a thumbs down; therapeutics get a thumbs up.

Weisner sued Google for patent infringement back in 2020, asserting infringement of a family of four patents. U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911.  But, Google won the case fairly quickly on a R.12(b)(6) motion to dismiss with a holding from the district court that the asserted claims are ineligible under 35 U.S.C. § 101 (abstract ideas).  On appeal, a divided Federal Circuit has reversed-in-part, holding that some of the claims are patent eligible because they implement “a specific solution to a problem rooted in computer technology.”  Alice Step 2.

Judge Stoll wrote the majority opinion joined by Judge Reyna. Judge Hughes dissented, arguing that all the claims are invalid.

Weisner’s four patents are all part of the same family and all relate to ways of recording a person’s physical location history in ways that correspond to certain transactions. In the image (Fig.3 above), you can see the dude interacting with a Macy’s story device. Dude’s phone is configured to record the transaction along with the location history and push it to the cloud.  Dude is doing something similar at Benson’s (Fig.4 below), but in that one he is entering the transaction details manually since Benson’s is a Brooklyn institution and isn’t high-tech like Macy’s.

The Federal Circuit divided the claims into two categories:

  • Claim Set A: Accumulating location histories for later use.
  • Claim Set B: Accumulating the location history and also using hose histories to improve search results (e.g., give different search results if someone has been to a Brooklyn Benson’s before).

In the appeal, the Federal Circuit agreed that all of the claims fail Alice step 1. In particular, the court found that they were all directed to the unpatentable idea of “collecting information on a user’s movements and location history and electronically recording that data.”  Essentially, this is an electronic travel log that is effectively the same as what humans have been doing for all of history.  As the district court wrote: “Humans have consistently kept records of a person’s location and travel in the form of travel logs, diaries, journals, and calendars, which compile information such as time and location.” Weisner v. Google LLC, 551 F. Supp. 3d 334 (S.D.N.Y. 2021).  Weisner argued that the claims were limited to keeping travel history of members only — a feature that improves data integrity.  On appeal though, the Federal Circuit rejected this claim as “attorney argument, unlinked to the complaint or the patent claims or specifications.”  Even though eligibility is a question of law, it must still be based upon something more than simply attorney argument.

At step 2, the court also agreed that Claim Set A was not salvageable because the recited innovations are all merely generically claimed components.

But, Claim Set B is different. First, because Set B adds the search results uses, the Federal Circuit found it to be a “much closer question” as to whether they are directed to an abstract idea.  In the end though the court concluded that the claims are directed to an abstract idea at Alice Step 1.  I note here that the appellate court did not use any real analysis to decide this issue other than seemingly attorney judgely  argument.  Perhaps the court should have checked the prior portion of this very opinion where it discounted mere attorney argument on the same topic.

At Alice Step 2, the court concluded that the claims recite a specific implementation that – at least at this stage – should have survived a motion to dismiss because they “plausibly capture an inventive concept.  Here, the court notes that the inventive concept comes from tying searches to a third party “reference individual” whose location history is similar to the party doing an internet search. “The system then prioritizes search results that the reference individual has visited.”  In its decision, the Federal Circuit explained that this linkage is more than simply “improving web search using location history.” Rather, it is a specific implementation of that concept.

Judge Hughes wrote in dissent that the claimed search improvements are just like any old search with the addition of new searchable data — location history.  The Stoll majority responds in a footnote that Judge Hughes opinion “misses the point” by discounting the importance of prioritizing travel histories in the search.  As I mentioned in the intro, this outcome fits a standard approach that we are seeing in eligibility cases — it is much easier to protect methods of using information than it is to protect methods of collecting information.  In the use-case, the information itself combined with some use will regularly be seen as an inventive concept.  On the other hand, the courts have been less willing to say that collecting information is patent eligible.

= = = =

The patents here are co-owned by the inventors, Sholem Weisner and Schmuel Nemanov.   Weisner wanted to sue Google, but Nemanov refused.   Weisner went ahead and sued Google and also joined Namanov as an involuntary party under FRCP 19(a).  See, AsymmetRx, Inv. v. Biocare Med., 582 F.3d 1314, 1322 (Fed. Cir. 2009)(“A patentee that does not voluntarily join an action prosecuted by its exclusive licensee can be joined as a defendant….”).   The agreement between the two parties is a bit interesting. Weisner owns 78% of the rights, and the parties agreed that he would control exploitation of the patent “and will not be undercut by a minority owner.” WeisnerNemanovAgreement. The two battled these issues in a parallel lawsuit in NY State Court. WEISNER, SHOLEM vs. NEMANOV, SHMUEL, Docket No. 502269/2020 (N.Y. Sup Ct. Jan 29, 2020).

Google v. Oracle and the Mixed Question of Law and Fact

Patent

by Dennis Crouch

In Google LLC v. Oracle Am., Inc., 593 U. S. ____  (2021), the Supreme Court spends a few pages walking through procedural aspects of the fair use defense.

Like many patent law doctrines, fair use is a mixed question of law and fact. The defendant’s use of the asserted copyrighted work and its impact on the plaintiff are typically factual issues that must be proven by evidence as weighed by the factfinder (often a jury). These are questions such as “how much of the copyrighted work was copied” and “whether there was harm to the actual or potential markets for the copyrighted work.” Google at 19.  However, the questions of law emerge when we are categorizing the importance of the factual findings as well as asking the ultimate question of whether the use was a fair use.

The fact-law divide comes up in various ways: Is there a Constitutional right to a jury trial on the issue; lacking that may a jury still decide the issue; does proof require evidence (as defined by the Federal Rules of Evidence) proven to a particular standard; or instead do we simply look for the ‘right’ answer; on appeal, what is the standard of review — deference or not?  Fact/Law also comes up in patent prosecution, but examiners are not charged with making the distinction and the rules of evidence don’t apply.

At the trial court this leads to the very practical question of how easily a judge can dispose of the issue pre-trial.  Questions of law are often easy to determine pre-trial; some mixed questions are also relatively easy to determine pre-trial if there is no right to a jury determination; mixed questions involving substantial factual disputes and a right to a jury trial are hard.  In patent cases, courts are regularly making pre-trial determinations on claim construction and eligibility, both of which are ultimately questions of law but that can involve underlying factual determinations.  Obviousness is another mixed question.  Although  the ultimate determination of obviousness is a question of law, it is treated differently from claim construction and eligibility.  Rather than being decided by a judge, obviousness is typically decided by a jury as fact-finder.  The difference is that obviousness typically requires detailed factual determinations that are hard to separate from the ultimate conclusion of obviousness and that are subject to a Constitutional right to a jury trial.

In deciding an issue, a district court will typically separate its analysis between findings-of-fact and conclusions-of-law. This separation is expressly required in FRCP 52(a)(1) when a judge determines the facts without a jury.  District courts also decide other substantive questions pre- and post-trial.  However, those determinations are typically purely questions-of-law.  (Failure to state a claim; Summary Judgment; Judgment as a Matter of Law).

Back to Google: Oracle sued Google for copyright infringement, and Google raised a defense of Fair Use.  The district court gave the question of fair use to the jury who sided with Google.  On appeal, though the Federal Circuit reversed and found no fair use.  Although the jury had decided the issue, the Federal Circuit gave no deference to the jury’s legal conclusions.  In its subsequent analysis, the Supreme Court agreed with the Federal Circuit’s  procedural approach of de novo review of the legal conclusions but ultimately disagreed on the substance. Rather, the Supreme Court concluded that Google’s use was a fair use as a matter of law.

One typical difficulty in the law-fact divide is that the questions are often not easily separable. In Markman, the Supreme Court called claim construction a “mongrel practice” because it is a mixed question that is hard to separate-out.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).   In Google, the court determined that the big questions of fair use should be treated as questions-of-law because they “primarily involves legal work.”

The Google court went on to cite Markman in concluding that there is no 7th Amendment Right to a Jury Trial on the doctrine of fair use. “As far as contemporary fair use is concerned, we have described the doctrine as an ‘equitable,’ not a ‘legal,’ doctrine.” Google at 20.  See U.S. Const. 7th Amd. (“In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”).

The Court’s general approach to mixed questions of law is explained in some detail within its 2018 bankruptcy decision of U. S. Bank N. A. v. Village at Lakeridge, LLC, 583 U. S. ___, 138 S. Ct. 960 (2018). In that case, the mixed-question was whether a creditor qualified as a “non-statutory insider.”  In U.S. Bank, the court explained that “mixed questions are not all alike.”  Some mixed questions are more like questions of law requiring an “amplifying or elaborating on a broad legal standard.”  Those should be treated as questions of law.  Other mixed questions require analysis of narrow facts “that utterly resist generalization.”  Those should be treated as questions of fact.  “In short, the standard of review for a mixed question all depends—on whether answering it entails primarily legal or factual work.”

For the fair use analysis in Google, the court followed the U.S. Bank standard and determined that the fair use questions at issue in the case were primarily legal and thus should be reviewed de novo on appeal.

Bringing all this back to patent law, I don’t see anything in this analysis to disturb our current approaches to obviousness, claim construction and eligibility.  But, both Google and U.S. Bank are clear that they are focusing on the particular issues in the case at hand.  It may well be that the mixed question analysis will come out differently on a different set of facts.

New PatentlyO Law Journal Essay: eBay, the Right to Exclude, and the Two Classes of Patent Owners

Patent

New PatentlyO Law Journal article by retired Chief Judge of the Federal Circuit Court of Appeals Paul R. Michel and John T. Battaglia, Esq. 

Introduction:

The entire point of a healthy patent system is on spurring invention and investment, by rewarding inventor and investor alike, big or small, with exclusive rights of limited duration, for their inventive risks and contributions. Otherwise, without such patent rights—or with fewer such rights—the incentives to invent diminish, or such inventive resources will re-locate.

Two Different Patent Laws: One for Manufacturers, Another for NPEs

With that backdrop, we address the disparate-treatment problem that currently defines the U.S. patent system. Those entities that manufacture a product claimed by a patent, and successfully enforce that patent in court, often still obtain an injunction, consistent with the “right to exclude others” that Congress granted to “[e]very patent. But for nearly 15 years, those entitles that invest in invention rights and buy and license patents—be they university research arms or non-practicing licensing entities (NPEs or so-called “trolls”)—often haven’t bothered even seeking injunctive relief in litigation. Why?

The answer is that the federal courts over time have misunderstood and misapplied the Supreme Court’s landmark 2006 decision in eBay Inc. v. MercExchange, L.L.C.

Read more at Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020).

Prior Patently-O Patent L.J. Articles:

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

New PatentlyO Law Journal Essay: Two Errors in the Ninth Circuit’s Qualcomm Opinion

Journal, Patent

New PatentlyO Law Journal article by Thomas F. Cotter, Taft Stettinius & Hollister Professor of Law, University of Minnesota Law School, and Innovators Network Foundation Intellectual Property Fellow.  Professor Cotter is also the author of the Comparative Patent Remedies blog. 

Abstract: On August 11, 2020, the Ninth Circuit handed down its opinion in Federal Trade Commission v. Qualcomm Inc., reversing the district court’s judgment in favor of the FTC. This essay argues that the Court of Appeals made two significant errors in its analysis. The first relates to the court’s failure to understand how Qualcomm’s conduct in the market for patent licenses affects competition in the complementary market for smartphone chips. The second concerns the court’s statement, at odds with the D.C. Circuit’s landmark decision in Microsoft, that if conduct “is not anticompetitive under § 1, the court need not separately analyze conduct under § 2.”

From the Introduction: 

On August 11, 2020, the United States Court of Appeals for the Ninth Circuit handed down its opinion in one of the most closely-watched, and potentially consequential, antitrust decisions in recent years, Federal Trade Commission v. Qualcomm Inc.[1] The opinion, authored by Judge Consuelo Callahan and joined by Judges Johnnie Rawlinson and Stephen Murphy III, reversed the district court’s judgment in favor of the Federal Trade Commission (FTC).[2]  Whether the FTC will pursue any further relief, by way of a petition for rehearing en banc or for certiorari, remains (as of this writing) uncertain.  Regardless of whether it does or not, however, it is important to note two fundamental errors in the court’s analysis which, if not corrected or limited by subsequent case law, could lead to serious problems in future litigation.

Read Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020).

Prior Patently-O Patent L.J. Articles:

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

 

En Banc at the Federal Circuit

Patent

The Federal Circuit this week denied two interesting petitions for en banc rehearing:

Kingston Technology Company v. SPEX Technologies, Inc., Docket No. 19-1342 (Fed. Cir. 2019)

Does WiFi One apply only when the patentee is appealing and not when the IPR petitioner appeals an institution denial?

In this case, the PTAB held that § 315(e) estopped Kingston from petitioning for IPR. Had the Board decided in Kingston’s favor, the patent holder (SPEX) could have appealed under Wi-Fi One. However, the panel found that an orthogonal Board decision against the patent owner was not appealable.

Genzyme Corporation v. Zydus Pharmaceuticals (USA), Docket No. 18-02362 (Fed.
Cir. 2019)

Whether a patent-challenger asserting obviousness must prove that a POSA would have had a reasonable expectation of success as to achieving unclaimed features, such as achieving alleged unexpected results that are not recited in the asserted claims.

The patent challenger here argues that “[t]ying the reasonable expectation of success inquiry strictly to the claims as written ensures that courts do not decide obviousness on hypothetical claims that are fundamentally narrower than the actual claims at issue.”

Earlier this month, the Federal circuit also denied a well written petition in Board of Regents v. Boston Scientific Corporation, Docket No. 18-01700 (Fed. Cir 2019)

1. Whether the patent venue statute, 28 U.S.C. § 1400(b), dictates venue in state party patent infringement cases.

2. Whether state sovereignty includes the right to not litigate in a nonresident defendant’s home state (and hence the right to choose any forum with the requisite subject matter and personal jurisdiction).

3. Whether a federal transferee court can acquire jurisdiction over a state without its consent or waiver of any objection to such court’s jurisdiction

En banc petitions are still pending in several cases:

Both the Chamberlain Group and American Axle case have been mentioned to me by PTO/Congressional leaders as examples of how Alice has gone too far.

In American Axle, the patent is at issue, U.S. Patent 7,774,911, relates to “automotive driveshafts used in pickup trucks — claiming “novel and unconventional methods of manufacturing improved driveshafts that include ‘liners’—low cost, hollow tubes made of a fibrous material (such as cardboard).” Petition.  The courts found the claims ineligible as directed to “Hooke’s law, and possibly other natural laws.”

Jury Verdict on Patent Eligibility (or its Underlying Factual Foundations)

Patent

by Dennis Crouch

Earlier this week, the jury returned with an interesting verdict in PPS DATA, LLC v. Jack Henry & Associates, Inc. (E.D. Tex. Sept 2019).  In the case, PPS sued Jack Henry for infringing its patented method of centrally processing remotely deposited checks.  The defendant argued that the claims improperly encompassed an abstract idea.  However, following Berkheimer, refused invalidate the claims on summary judgment — finding genuine disputes of material fact:

Having considered the § 101 Motion, the Court finds it should be and hereby is DENIED. The Court finds that there are genuine disputes of material fact with respect to whether “the claim limitations involve more than performance of ‘well-understood, routine, and conventional activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014)).

Those disputed facts were then put on trial and given to the jury to decide. The verdict particularly asked whether the asserted claims “ONLY involve activities that were well-understood, routine, and conventional” as of the application’s priority date.  The verdict – reproduced below – sided with the defendant in finding that the claims were only directed to such non-inventive elements.

The jury also sided with the defendant on infringement — finding none.

With that verdict in hand, Judge Gilstrap has already issued a final judgment in the case — finding (1) no infringement; and (2) that the asserted claims are “invalid for being directed to patent-ineligible subject matter.”

 

 

Fact or Fiction (i.e. Law): What Parts of the Eligibility Analysis are Questions of Fact?

Patent

by Dennis Crouch

A new petition for writ of certiorari focuses attention again on patent eligibility and the law-fact interplay. Real Estate Alliance Ltd. v. Move, Inc., SCT Docket No. 18-252.

The original focus of patent law is to “promote the Progress of . . . useful Arts.”  In that vein, patents have long been awarded for inventions with concrete and practical uses — and barred to invention claims that are merely abstract ideas.

In Mayo and Alice, the Supreme Court defined a two-step process for determining when a claimed invention is patent eligible:

Step 1: Ask whether the patent claims are directed to a patent ineligible concept, such as a law of nature, natural phenomenon, or abstract idea.

Step 2: If so, ask whether the claimed invention includes an “inventive concept” sufficient to transform the ineligible concept into a patent eligible invention.

In Step 2, the Supreme Court also suggested an inquiry into whether the claims present “something more” beyond a combination of “well understood, routine, and conventional” elements.

In this case, Real Estate Alliance Ltd. focuses on this second part of the Alice test and the “proper role of fact-finding.”  The question presented is:

Is whether an ordered combination of elements in a patent claim is “well-understood, routine and conventional” to a skilled artisan in the relevant field under Alice step two a question of fact?

In this particular case, the courts have seen this issue as a question of law and have not really considered any hard evidence.  The patent at issue is directed to a user interface that shows the geographic location of for-sale properties — using a zoomable interface.  Although this idea might seem well understood today — the application claims priority back to 1986 — graphics were not so easy back then. (See Conan – my favorite game back then). U.S. Patent No. 5,032,989.

The difficulty for the patentee – I expect – is that the patent claims just seem so obvious. Consider representative claim 1 below:

1. A method using a computer for locating available real estate properties comprising the steps of:

a) creating a database of the available real estate properties;

b) displaying a map of a desired geographic area;

c) selecting a first area having boundaries within the geographic area;

d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;

e) displaying the zoomed first area;

f) selecting a second area having boundaries within the zoomed first area;

g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and

h) identifying available real estate properties within the database which are located within the second area.

20180824182113024_PetitionofWrit

Factual Underpinnings of Eligibility: Federal Circuit Denies Rehearing in Berkheimer / Aatrix

Patent

By Dennis Crouch

In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), Judge Moore explained that, although “patent eligibility is ultimately a question of law,” it may require an analysis of “underlying factual questions.” In particular, the court in that case ruled that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”  In its petition for en banc rehearing, HP asked two questions: (1) whether eligibility has factual underpinnings; and (2) the role of the “well-understood” conclusion in the eligibility analysis:

  1. Is the threshold inquiry of patent eligibility under 35 U.S.C. § 101 a
    question of law without underlying factual issues that might prevent summary
    judgment?
  2. Is the appropriate inquiry under Alice’s step 2 whether the claims
    transform an abstract idea into a patent-eligible application, or merely
    “whether the invention describes well-understood, routine, and conventional
    activities”?

Similarly, in the parallel en banc request following Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), the patent challenger asked the following question:

  1. Is the threshold inquiry of patent-eligibility under 35 U.S.C. § 101 a question
    of law without underlying factual issues based on complaint allegations pled to
    avoid dismissal under Fed. R. Civ. P. 12(b)(6)?

Now, the Federal Circuit has denied both petitions with opinions by Judges Moore, Lourie, and Reyna.  The exact vote was not released, but at least 7 judges voted to deny.

Judge Moore:

Berkheimer and Aatrix stand for the unremarkable proposition that whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.

Judge Lourie:

I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems.

Judge Reyna:

The court’s vote to deny en banc review of Aatrix and Berkheimer is a declaration that nothing has changed in our precedent on patent subject matter eligibility under 35 U.S.C § 101. We are encouraged to move along; there’s nothing to see here. I disagree. I believe that, at minimum, the two cases present questions of exceptional importance that this court should address and not avoid. [Citing Patently-O’s description of the impact of these decisions]

Clearly Judge Reyna is correct in this aspect of his analysis even if I disagree with his ultimate conclusion that eligibility is purely a question of law.

I would look for Supreme Court petitions in both cases framed along the lines of: pro-patentee Federal Circuit judges seeking to undermine consistent Supreme Court precedent most recently restated in Alice and Mayo.

 

Do you get the Gist: Tracking Mail is an Abstract Idea

Patent,

Secured Mail v. Universal Wilde (Fed. Cir. 2017)

The district court dismissed this case for failure to state a claim upon which relief can be granted – R.12(b)(6) – after finding that the claims of all seven asserted patents were ineligible under 35 U.S.C. 101.  On appeal, the Federal Circuit has affirmed.  U.S. Patent Nos. 7,814,032, 7,818,268, and 8,073,787 (“Intelligent Mail Barcode”); Nos. 8,260,629 and 8,429,093 (“QR Code”); and Nos. 8,910,860 and 9,105,002 (“Personalized URL”).

The patents all involve an mailer (i.e. package or envelope) with an identifier on the outside such as a barcode, QR code, or URL.  Once delivered, information is communicated (via computers) to the recipient about the contents and the sender.

As Patently-O readers understand, abstract ideas themselves are not patentable. Likewise a patent directed to an abstract idea is also unpatentable, unless the claims include an additional inventive concept that goes beyond the unpatentable idea to “transform the nature of the claim into a patent-eligible invention.” Alice.

The Alice two-step inquiry first asks whether the claims are directed to an abstract idea.  Here, the courts agreed that the claims “are directed to the abstract idea of communicating information about a [mailer] by use of a marking.”  Under Step Two, the appellate panel found that the claims merely recited “well known and conventional ways to allow generic communication between a sender and recipient using generic computer technology.”  Invalid.

I have included claim 1 of the ‘002 patent below (issued post-Alice):

 

1. A method for providing electronic data to a recipient of a mail object, comprising:

using an output device to affix a single set of mail ID data to said mail object, said single set of mail ID data including at least recipient data, said recipient data comprising a personalized network address associated with said recipient of said mail object;

submitting said mail object to a mail carrier for delivery to said recipient of said mail object;

receiving said recipient data from a reception device of said recipient via a network; and

providing by at least one processor said electronic data to said reception device via said network in response to receiving said recipient data, said electronic data comprising a sender’s web page that identifies said recipient of said mail object and includes data corresponding to a content of said mail object;

wherein said electronic data is configured to be displayed to said recipient via a web browser on a display of said reception device.

Note – the patentee has at least one additional patent issued in the family (US 9,390,394). However, that new patent does not appear to include any new inventive elements that go beyond the prior family members.

Read it and weep: [Federal Circuit Opinion]

I’ll note here that I believe the force behind the patentee is patent attorney Todd Fitzsimmons who also runs his own LA County patent firm.