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.
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.
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.
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:
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.
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.
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.
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.
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).
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…)
by Dennis Crouch
In a recent decision, the Federal Circuit addressed several key issues in intellectual property litigation, including the scope of "absolute litigation privilege" under Illinois law, trade dress functionality, and the consequences of discovery sanctions. Toyo Tire Corp. v. Atturo Tire Corporation, No. 2022-1817, 2022-1892 (Fed. Cir. Oct. 4, 2024).
The decision here is non-precedential, likely because it does not include any patent-law issues and thus is entirely based upon regional circuit law (here, the Seventh Circuit). Still, the case includes a number of interesting and important holdings. In this post, I focus on two particular issues: (1) the scope of privilege against being sued for defamation or other similar torts based upon statements made in a court proceeding; (2) the strong functionality doctrine that limits protection of trade dress on three-dimensional product design.
by Dennis Crouch
The Federal Circuit is set to decide an important issue regarding the scope of prior art that can be considered during inter partes review (IPR) proceedings in the pending appeal of Lynk Labs, Inc. v. Samsung Electronics Co., Ltd. At issue is whether section 102(a)(2) prior art qualifies for use in an IPR proceeding because those applications were not yet publicly accessible until after the priority date of the challenged patent. This case has very significant implications because 102(a)(2) prior art is extensively used - especially in crowded and rapidly moving areas of technology. The question, is whether this type of 102(a)(2) prior art qualifies as a "patent or printed-publication" under the IPR limits of section 311(b). Note that the same issue is raised in another pending CAFC case VLSI Tech. LLC v. Patent Quality Assurance LLC, No. 23-2298 (Fed. Cir.).
The dispute stems from an IPR petition filed by Samsung challenging claims of Lynk Labs' U.S. Patent No. 10,687,400 ("the '400 patent") related to LED lighting systems. Samsung's petition relied upon a prior-filed patent application ("Martin") as a key prior art reference. (Application No. 10/417,735 subsequently published as U.S. Patent App. Pub. No. 2004/0206970). This prior application is not prior art under 102(a)(1) - because it was not patented or published until after Lynk's effective filing date. However, the prior application is prior art under the "secret springing prior art" provision of 102(a)(2), since it was on file prior to Lynk and then subsequently published. I refer to this as "secret springing prior art" because Martin was only secretly on file at the time Lynk filed its application - later, once Martin published it suddenly became prior art --back dated to the application filing date.
The PTAB instituted review and ultimately found the challenged claims unpatentable based in part on the Martin reference.