Federal Circuit Vacates Denial of Anti-Suit Injunction in FRAND Dispute, Clarifying “Dispositive” Analysis

Patent

Dennis Crouch

The Federal Circuit has vacated the E.D.N.C. Judge Boyle’s denial of an anti-suit injunction in a major FRAND licensing dispute between Ericsson and Lenovo. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 24-1515 (Fed. Cir. Oct. 24, 2024). The decision provides important guidance on when U.S. courts should issue anti-suit injunctions to prevent SEP holders from enforcing foreign injunctions while FRAND obligations are being adjudicated domestically.  Importantly, the Federal Circuit adopted the Ninth Circuit test from Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), and added some further refinement making anti-suit injunctions easier to obtain. (more…)

The Enduring Patent Owner/Licensee Standing Distinction

Patent

by Dennis Crouch

In Zebra Technologies Corporation v. Intellectual Tech LLC, No. 24-114, IT has filed its brief in opposition to Zebra's petition for writ of certiorari. The case focuses on patent-owner standing in situations where multiple entities share patent rights — particularly whether a patent owner loses Article III standing when because of a patentee default that provides a third party (here, a security interest holder) the right to license the patent.

This portion of the case stems from a 2011 loan agreement where OnAsset Intelligence (IT's parent company) pledged the asserted patent (US7233247) as collateral to Main Street Capital. After OnAsset defaulted in 2013, the security agreement gave Main Street significant rights, including the ability to "sell, assign, transfer, pledge, encumber or otherwise dispose of the Patents." OnAsset later assigned the patent to its subsidiary IT, who then sued Zebra for infringement. The key question is whether Main Street's post-default rights stripped IT of the exclusionary rights necessary for Article III standing. The Federal Circuit sided with the patentee - finding that IT retained sufficient rights as the patent owner even though Main Street had the concurrent ability to license the patent. That outcome is now being challenged at the Supreme Court, with Zebra arguing that the ability to obtain a license from Main Street negates IT's standing to sue for infringement.

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Text vs Precedent: Celanese and the Secret Process On-Sale Bar

Patent

by Dennis Crouch

In a pending petition for certiorari, the Maltese company Celanese Int'l is poised to ask the Supreme Court to resolve an important question about the scope of the AIA's on-sale bar: whether sales of products made using a secret process can bar later patent protection for that process. The issue arises from a Federal Circuit decision upholding the ITC's invalidation of Celanese's patents covering methods for manufacturing the artificial sweetener Ace-K. Celanese Int'l Corp. v. Int'l Trade Comm'n, 67 F.4th 1361 (Fed. Cir. 2024).  The court recently granted Celanese with an extension of time to file its formal petition for writ of certiorari, due December 10, 2024.  As is typical, the petitioner used its request for extension as a first opportunity to highlight the importance of the case and preview its primary arguments.

I have been following this case for some time:

  1. Dennis Crouch, Policy Considerations: The On-Sale Bar for Secret Processes, Patently-O (Aug. 15, 2024).
  2. Dennis Crouch, No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product, Patently-O (Aug. 12, 2024).
  3. Dennis Crouch, Celanese v. ITC: The Overlooked 271(g) Wrinkle and Competing Policy Concerns, Patently-O (Mar. 7, 2024).
  4. Dennis Crouch, Celanese v. ITC: Can a Secret Manufacturing Process Be Patented After Sale of the Resulting Product?, Patently-O (Mar. 4, 2024).

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Trade Secrets vs. Patents: Pioneer’s Plant Patent Strategy Raises Thorny Issues (Corny Issues?)

Patent

by Dennis Crouch

The ongoing dispute between Inari Agriculture and Pioneer Hi-Bred over utility plant patents has taken its next step, with Inari seeking Director Review of the PTAB's denial of institution in PGR2024-00020 -- arguing that a patentee's reliance on its own trade secret information when developing its invention (here a maize variety) is directly relevant to the question of obviousness. The case raises interesting and fundamental questions about the intersection of trade secrets and patent law in the context of plant breeding. Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00020, Paper 19 (P.T.A.B. Oct. 24, 2024).

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Doctrine of Equivalents: Expert Testimony Must Include Particularized Links

Patent

by Dennis Crouch

Throughout its 40-year history, the Federal Circuit has been largely negative toward the doctrine of equivalents (and exceedingly negative toward the reverse DOE).  This negativity includes repeatedly taking decisions out of the jury’s hands based upon insufficient evidence of equivalency.  In a new decision, a 2-1 majority continues this trend, holding that conclusory expert testimony is insufficient even for relatively simple technologies. NexStep, Inc. v. Comcast Cable Communications, LLC, No. 22-1815 (Fed. Cir. Oct. 24, 2024). Writing for the majority, Judge Chen affirmed the district court’s grant of JMOL overturning a jury’s DOE infringement verdict.  Judge Reyna filed a sharp dissent arguing the majority imposed an unnecessarily rigid expert testimony requirement.

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Free Post: Patent Exceptionalism and Procedural Silence: A New Challenge to Federal Circuit Practice

Patent

By Dennis Crouch

A compelling new petition for certiorari submitted by Island Intellectual Property LLC challenges both the Federal Circuit’s frequent use of one-word Rule 36 affirmances and what petitioner sees as an improper Federal-Circuit patent-specific exception to summary judgment standards. I like this case as an important vehicle for addressing transparency issues that have been plaguing patent appeals for years.

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Navigating Unexpected Results: PTAB Decision Outlines Key Requirements for Rule 132 Declarations

Patent

by Dennis Crouch

In a recent decision, the PTAB affirmed an examiner's obviousness rejection of claims related to an anodizing process for aluminum and magnesium alloys. Ex parte Eidschun, Appeal 2023-003437 (PTAB Oct. 16, 2024). The case offers an example of a R132 declaration from the inventors that was deemed insufficient to provide evidence of unexpected results in order to rebut obviousness arguments.  To be more precise, the declaration appears to have overcome the examiner's obviousness rejection, but the Board provided new reasoning (based on the same references) and so sustained the rejection based upon these new grounds.

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Seeds of Doubt: PTAB Rejects Plant Patent Challenge, Citing Genetic Uncertainty

Patent

by Dennis Crouch

In a recent post-grant review decision, the PTAB sided with the patentee and denied  institution of a PGR challenge to U.S. Patent No. 11,696,545 (“the ‘545 patent”), which claims an inbred maize variety designated PH4CYJ. Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00023, Paper 15 (P.T.A.B. Oct. 15, 2024).  The case is interesting for several reasons — most notably because it upholds a utility patent covering a plant line developed through simple cross breeding.  In my post, I point to two deficiencies in the Board’s decision (1) its lack of reasoning for a determinative claim construction; and (2) its conclusion that a parent-line of maize  used in the cross breeding was not prior art because it was not publicly available at the time.

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SPEX v. Western Digital: $316 Million Verdict for Means Plus Function Claim

Patent

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 reasonable royalty damages.

SPEX Verdict

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Pleading Stage Claim Construction

Patent

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:

  1. Is it proper at the motion-to-dismiss stage? (Answer: Yes, but with major caveats)
  2. Is a plural also singular? (Answer: Sometimes, because in patent law, even basic grammar isn't safe from interpretation)

The case involves technology for detecting and identifying underground utility lines, with the dispute centered on the interpretation of the phrase "group of buried asset data points" in UTTO's US9086441.  The accused device uses one data point at a time and argues no infringement.

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Federal Circuit’s Rule 36 Affirmances: A Concerning Trend in Light of Loper Bright

Patent

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 transparency.

A new en banc petition in Converter Manufacturing, LLC v. Tekni-Plex, Inc., raises  the issue in a new way, particularly focusing on dicta from the Supreme Court's landmark ruling in Loper Bright Enterprises v. Raimondo, 144 S. Ct. 2244 (2024). The petition highlights the tension between judicial efficiency and the court's constitutional duty to independently review agency actions.

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Recent Patent Law Scholarship

Patent

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 pieces offer insights into ongoing debates within patent law and policy. Although I don't necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics.

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Allergan: En Banc Support for Stronger ODP Rules

Patent

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 as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing - hoping to invalidate Allergan's protected patent.

Prior posts:

Two amicus briefs were recently filed supporting the petition - One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB.

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USPTO Tweaks PTAB AIA-Trial Counsel Rules; NO Major Overhaul

Patent

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 as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner.

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The Substance of OpenAI’s Patent Pledge?

Patent

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 attention but left many questions unanswered. OpenAI’s pledge suffers from similar ambiguities and limitations that may ultimately render it more of a PR move than a meaningful commitment to open innovation.

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Federal Circuit Revives Patent Suit Against Aetna Over Health Savings Cards

Patent

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 to state a claim of infringement.  The case will likely be highly cited by future infringement plaintiffs seeking to overcome motions to dismiss, especially whether allegations in the complaint are unduly conclusory.   The appellate panel also narrowly construed a prior license agreement between AlexSam and Mastercard

AlexSam's asserted U.S. Patent No. 6,000,608 covers a "multifunction card system" that can serve as both a debit card and a medical services card.  I have reproduced the two asserted claims below. And no, this is not an eligibility case.

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Third-Party Litigation Funding in Patent Cases: Transparency, Ethics, and Policy Concerns

Patent

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 to mitigate risk, even if I had sufficient resources to self-fund (which I don't). The availability of TPLF allows patent holders to create high-caliber legal teams and can also provide a strategic advantage by demonstrating to opponents that the case has been vetted by sophisticated investors willing to back it financially.

However, this trend toward litigation finance comes with complications and controversies. While TPLF has undoubtedly increased access for many patent holders, it has also given rise to significant ethical concerns and abuses. One of the most pressing issues is the potential for effectively sidelining the nominal plaintiff – the actual patent holder – in favor of the financial interests of funders and attorneys. In addition, there is some notion that TPLF is often channeled into the US via foreign sources -- something that has raised concerns that this could somehow destabilize the rule of law.

At the same time, it's important to acknowledge the positive impacts of TPLF. The availability of litigation finance has allowed larger, more established law firms to take on plaintiff-side patent cases that they might have previously declined due to risk or resource constraints. Anyone working in a law firm knows how difficult it is to convince partners to take on risk, and TPLF offers guaranteed partial payouts from funders even if the defendant wins.  That means that these firms can assemble formidable legal teams, potentially leveling the playing field against well-resourced defendants and improving the overall quality of patent litigation.

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Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress

Patent

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 color can sometimes serve as a trademark, the Board's decision to cancel CeramTec's registrations appears supported by the evidence and aligns with key Supreme Court precedent on functionality.  At the same time, CeramTec offers a  powerful argument that the TTAB decision disregarded direct evidence of non-functionality based upon recent material science testing.

There is some chance that the court will issue a quick affirmance without opinion, but it is more likely that we'll see an opinion in the next few months. (Note, the image above is marked "confidential" but was found in appellant's non-confidential brief making it, in my view, fair game for publication).

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USPTO Terminates Thousands of Chinese-Origin Patent Applications Due to Forged Attorney/Agent Signatures

Patent

by Dennis Crouch

In a stunning development, the USPTO recently terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a practitioner's signature. This mass termination, announced on October 2, 2024, stems from an investigation that uncovered misconduct involving the unauthorized use of a registered patent agent's electronic signature.

The outcome here appears potentially over the top in the way that it punishes the patent applicants -- almost all Chinese companies -- for unknowingly participating in the fraud.  As one attorney who is now representing one of the impacted applicants explained to me: "punishing the applicants for the actions of the practitioner goes a bit far, especially where the punishment is termination with no remedy."  A number of the applicants used Chinese counsel who identified and hired the offending firm (W&K) years ago and worked with them for some time without issue.  I would not be surprised if some of these applicants push for judicial review, perhaps by filing an APA action.

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Free Post: En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements

Patent

by Dennis Crouch

This post focuses on the issues raised in the patent challenger Sun Pharma’s recent en banc petition in Allergan USA, Inc. v. MSN Laboratories Private Ltd and Sun Pharmaceutical Indus. Ltd., No. 2024-1061 (Fed. Cir. 2024).  The original panel majority opinion is controversial on two separate fronts. First, it created an obviousness-type double patenting (ODP) safe harbor for certain patents whose term had been extended via patent term adjustment (PTA); Second, the court OK’d the omission of what appeared to be an essential element (a glidant) from the claims, finding sufficient written description support despite the specification only describing formulations that included a glidant. This omission was particularly notable as it occurred after the patentee learned during litigation that the accused products did not include a glidant.

I’ve divided this post into two parts: Part I – ODP Safe Harbor and Part II – Written Description Essential Element. (more…)