Copyright of Software API

This week, the Federal Circuit is hearing oral arguments in an important software copyright case, SAS Institute, Inc. v. World Programming Ltd., Docket No. 21-1542The SAS is an important follow-on to the Supreme Court’s 2021 decision in Google v. Oracle, 141 S. Ct. 1183 (2021).  In Google, the Supreme Court sided with the accused infringer on fair use grounds, but did not decide the broader issue of whether Oracle’s API naming convention was copyrightable.

WPL created a clone version of SAS that allows users to use SAS-style inputs and receive SAS-style outputs.  SAS argues that those input and output formats are protected by copyright. However, the district court (E.D.Tex. Judge Gilstrap) sided with the accused infringer — holding that WPL presented unrebutted evidence that these elements were not protectable by copyright. On appeal, SAS raises four arguments:

  1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
  2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
  3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
  4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

Lots of amicus briefs on both sides:

Supporting SAS: Mathworks & Oracle; Ralph Oman, former Register of Copyrights; Pro-Copyright professors; Copyright Alliance; Computer scientists group; and Creator’s Rights Groups.

Supporting WPL: CCIA; Intellectual Property Law Scholars; another set of Computer Scientists; Github; and EFF.

Arguments set for this Thursday (Jan 13).


Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

Back in 2010, I wrote an article with Prof Rob Merges titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.  We suggested that patent examiners often lack capacity to judge metaphysical questions centered around abstractness and laws of nature. In addition, we noted that many eligibility questions substantially overlap with bread-and-butter patent doctrines such as obviousness, enablement, and indefiniteness.  What that means is that delaying eligibility decisions can often result in entirely avoiding eligibility decisions.  In a 2019 article, Professor Chien provided more detailed guidance on how this could be accomplished.

The US Patent Office obviously did not follow our suggestions back in 2010, but did quickly recognize that Supreme Court’s eligibility jurisprudence was not really administrable by patent examiners.  The Office solution was to create its own narrowly tailored eligibility guidelines examiners can actually follow in a predictable way.  It turns out that patent applicants tend to like the PTO solution because the guidelines strategically err on the side of eligibility.  In many ways, the guidelines obviated the need for our ordering approach because the PTO created an administrable mechanism that does not push the boundaries or epistemology of abstractness.

Still, the patent office is going to try something of a deferred approach – and has recently published its Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. To be clear, the examiner will still consider eligibility in the initial office action, but participants in the program permits the applicant to defer responding to the eligibility rejections in the initial office action response.

In a 2021 letter, to the PTO, Senators Tillis and Cotton has suggested a sequencing approach that followed the Crouch+Merges proposal with examiners delaying rejections until later.  The PTO Pilot is obviously different in that examiners are still making the rejections on record, and the Federal Register notice does not explain why the PTO did not follow the Tillis+Cotton or Crouch+Merges proposal.

The program is a test run and requests for participating is only via invitation.

2021 Patent Grants

Total utility patent grants are down about 7% for calendar year 2021. Still the total ranks as the third highest of all time.  The Office has almost eliminated unwanted delay in examination.  Right now the delay is about 17 months from filing to first office-action. They really don’t want that to go below 14 months in order to capture 102(a)(2) prior art (former 102(e)).

Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success

by Dennis Crouch

Apotex Inc. v. Cephalon, Inc. (Supreme Court 2022)

In its petition for writ of certiorari, Apotex asks the Supreme Court to revisit motivation to combineobvious to try and whether the non-obvious contribution needs to be an improvement over the prior art.   The petition argues that KSR v. Teleflex (2007) requires a flexible analysis, but that “over the ensuing decade-and-a-half, the Federal Circuit has … reverted to its old rigid ways.”  The petition also complains that the Federal Circuit has again masked its jurisprudence via Summary Affirmance without opinion.

The accused infringers here were seeking to market a drug treatment for chronic lymphocytic leukemia covered by several Cephalon patents and sold as Bendeka.  The defendants challenged the patent claims as obvious, but the district court sided with the patentee — finding a lack of motivation to combine the references with a reasonable expectation of success.  This test has become the sina non quo of post-KSR Federal Circuit obviousness decisions.  See, for example, Accorda Therap. v. Roxane Labs., 903 F.3d 1310 1328 (Fed. Cir. 2018) (“motivation to modify or combine with a reasonable expectation of success”);  In re Stepan, 868 F.3d 1342, 1345-46 (Fed. Cir. 2017) (“requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so.”), etc. Apotex’s petition explains this as follows:

[T]he Federal Circuit seems to believe that if there is any uncertainty about whether an obvious-to-try approach will succeed, that potentially compromises the motivation to try an obvious solution to a pressing problem, and therefore produces patent monopolies for what is obvious to try. Indeed, so ingrained has the motive-to-try-what-is-likely-to-succeed test now become in the Federal Circuit’s obviousness psyche, that the Federal Circuit now sometimes includes motivation as a fifth Graham factor.

I also write about this same issue in the Federal Circuit’s recent decision in Teva v. Corcept (Fed. Cir. 2021). Cephalon’s response is due in about 2 weeks.

Federal Circuit Draws a Hard Line Against “Obvious to Try” Analysis


Timing of CVSG Briefs: American Axle Coming Soon

by Dennis Crouch

Although patents are a form of private property, they are also expressly a tool of public policy.  When a private patent lawsuit of interest reaches the Supreme Court,  the Court regularly turns to the President’s administration for its views on how a decision may impact patent law and innovation writ large. That request for an amicus brief from the government is termed a CVSG – Call for the Views of the Solicitor General.   One problem with CVSGs is that they typically add several months to the certiorari process because the DOJ spends substantial time collecting input from various government branches and outside interests before drafting and filing its brief.  In patent cases, a Gov’t amicus brief is often the most important at the certiorari stage — or at least the most predictive of the outcome.

We are currently waiting CVSG amicus briefs in two patent cases pending before the Supreme Court:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (patent eligibility); and
  • PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (res judicata)

Of these, the Personal Web request is fairly recent, but American Axle has been spinning since May 3, 2021 – just over 8 months.

To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief.  The median timing was 5 months, and all the briefs were submitted in less than 9 months.  What this means is that the DOJ still has a few more weeks to complete its task and still be within these historic guideposts.

I truly do not know what the DOJ is going to say in its American Axle brief.  Back in 2019, the Solicitor General filed a powerful brief in Hikma v. Vanda arguing that Mayo and Alice led to substantial confusion, especially when attempting to reconcile prior cases such as Diehr.  But, the Gov’t brief in Hikma was filed by President Trump’s SG (Noel Francisco) and the big question is whether President Biden’s Solicitor Elizabeth Prelogar (and the Biden Admin generally) will follow the same course.  Although the top-signatories have changed, the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.  In addition, Malcolm Stewart remains the Deputy SG at the Department of Justice (as do others).

Resorbing Patent Law’s Kessler Cat – Request for Comments

I have a new draft article on the Kessler Doctrine co-authored with my former student Homayoon Rafatijo and welcome comments and suggestions before it is formally published later this month.

Kessler is a 1907 Supreme Court decision that we argue should be seen as simply implementing defensive issue preclusion. At the time, the case involved some additional novelties having to do with confusion over both the new appellate federal court structure and the scope of potential anti-suit injunctions. Meanwhile, the scope of issue and claim preclusion have expanded with the merger of law & equity, creation of the Federal Rules Rules of Civil Procedure, as well as the expansion of Declaratory Judgment jurisdiction.

As issue and claim preclusion expanded, Kessler fell from fashion and was basically unneeded and unused for several decades. But, since 2014, the Federal Circuit has steadily expanded Kessler as a patent law specific form of preclusion that is separate and distinct from the traditions of claim and issue preclusion.  We argue argue this approach is wrong.

The cat: We parallel our article alongside a short parable from Paulo Coelho titled the “Importance of the Cat in Meditation.”  The basic punchline is that once people started thinking the cat was an important element of mediation, it was easier for them to scientifically explain the importance rather than let go of the meaningless attachment.  We argue that the Kessler Doctrine is following the same pathway, the Federal Circuit’s explanations do not make sense, and that it is time to resorb the doctrine into the general law of preclusion.

Thanks! Dennis Crouch

Supreme Court and Judicial Conference Considering Judge Albright’s Problematic Patent Court

The following comes from Chief Justice John Roberts’ end-of-year Report on the Federal Judiciary for 2021.

The third agenda topic I would like to highlight is an arcane but important matter of judicial administration: judicial assignment and venue for patent cases in federal trial court. Senators from both sides of the aisle have expressed concern that case assignment procedures allowing the party filing a case to select a division of a district court might, in effect, enable the plaintiff to select a particular judge to hear a case. Two important and sometimes competing values are at issue. First, the Judicial Conference has long supported the random assignment of cases and fostered the role of district judges as generalists capable of handling the full range of legal issues. But the Conference is also mindful that Congress has intentionally shaped the lower courts into districts and divisions codified by law so that litigants are served by federal judges tied to their communities. Reconciling these values is important to public confidence in the courts, and I have asked the Director of the Administrative Office, who serves as Secretary of the Judicial Conference, to put the issue before the Conference. The Committee on Court Administration and Case Management is reviewing this matter and will report back to the full Conference. This issue of judicial administration provides another good example of a matter that self-governing bodies of judges from the front lines are in the best position to study and solve—and to work in partnership with Congress in the event change in the law is necessary.


Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Update on Supreme Court Patent Cases: Fact Law Divide

by Dennis Crouch

Olaf Sööt Design’s pending petition for certiorari centers on the age-old division between issues-of-fact and issues-of-law.  The U.S. Constitution generally requires due process, and particularly protects litigants’ rights to a jury trial in common law cases.  One quirk–the right to a trial by jury does not cover issues-of-law, and only extends to some issues-of-fact.

This bifurcated system results in an odd dynamic in patent law — regularly seen with regard to infringement and claim construction:

  • Patent infringement is an issue-of-fact tried by a jury under the Seventh Amendment.  Typically, a jury is asked to decide whether the evidence shows that the defendant is performing the claimed invention.
  • Claim construction is treated as a question of law (or mixed question of fact and law), decided by a judge.  In contemporary patent litigation, a judge will typically be asked to decide whether the legal scope of the claims extend to cover the defendant’s actions.

With this setup, the whole case can be decided at either stage, but claim construction typically comes first and so often steals-the-show.  One problem though, is the potential of unduly undermining the Constitutionally protected jury system.

One case pending before the Supreme Court focuses-in on these issues: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (Petition).  Sööt asks the following question:

In Markman v. Westview Instruments, Inc., 517 US 370 (1996), this Court held that the meaning of terms in a patent “claim” stands as a question of law and must be construed by the court. Under the Seventh Amendment, if requested by the patent owner, the jury must make the factual determination as to whether the defendant infringed the patent in light of the court’s claim construction. Consistent with the Seventh Amendment, the Markman decision leaves to the jury all factual determinations beyond the court’s construction of the claim. The question presented by this petition for writ of
certiorari is:

Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question,  previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.

The Supreme Court will consider the petition next week.

Patent Law at the Supreme Court December 2021

Merry Christmas 2021, your Patent is Invalid

by Dennis Crouch

Bankers’ Serv. Corp. v. Landis Christmas Sav Club Co, 273 F. 722 (3d Cir. 1921) [67_F.2d_904]

This 1921 decision centered on Merrill B. Barkley US Pat. No. 1,202,646, covering stationary for making “Christmas club deposits.”  The specification explains:

There has developed recently in banking circles a wide demand for various kinds of special savings accounts, known generally as Christmas clubs, vacation accounts … and the like.

The claimed invention then is directed to a “deposit book,” with each page having a stub and detachable coupon.  The customers keep the book with all the stubs showing deposits while the coupon goes to the bank to help direct the deposit.

Landis Christmas Sav Club was already selling supplies to banks, but Barkley was able to improve the system.  In particular, with the Landis system, the a book of coupons was held by the bank, and individual sheets given out to the customer with each deposit.  The Barkley reversal allowed the customer to keep the book and give deposit slips to the bank.  Apparently Landis then copied the Barkley approach and an infringement suit followed.  In essence, Barkley’s device is a reversal of the Landis approach.   And, the appellate court recognized that the Barkley approach was and improvement that “could be more easily and conveniently handled.”

Despite the improvement, the courts found that they were of the time that would “naturally follow” from the prior art rather than rising to the level of an invention:

[I]t was the to-be-expected result which would naturally follow the study of men familiar with the banking and stationery business, when they set themselves to study and improve the Christmas Club system, as all bank employees would do. When such a new system was used by the thousands of keen minds, when better detail and further efficiency of such system would be the customary result of the experience that came from use, we would expect improvements, and the ideas such as Barkley worked out are, in our judgment, the steps that would naturally follow use. To take the cleverness of an improver and award the monopoly of an invention thereto would, to our minds, make of the patent law a hindrance, not a help, in the evolution of progress.

Invalidity affirmed.

Although the decision is issued prior to Graham v. John Deere, it offers an example of the level of ordinary skill in the art likely made a difference.  The appellate court reflected that bank clerks are generally quite clever and diligent in their pursuit of efficiency.  The court’s suggestion that the ubiquity of the prior art makes it much more likely that an improvement will naturally follow.  This last bit on ubiquity is not typically used in the obviousness analysis anymore, but it does appear in Alice, step 2.

At the Drop-Bottom: Sanford v. Kepner, 344 U.S. 13 (1952). 

I previously wrote about the most cited Supreme Court patent cases since 1952.  Today, I’ll write about the least-cited decision: Sanford v. Kepner, 344 U.S. 13 (1952).

Kepner filed his patent application in 1943 and Sanford filed his in 1945 — both directed to drop-bottom rail cars used in mining.

The USPTO interference sided with the first-filer Kepner and so Sanford took the case to Federal Court.  Sanford argued (1) that Sanford should have priority as the first-to-invent and thus get the patent; and (2) even if Kepner gets priority, Kepner’s patent should still be invalidated based upon the prior art.   (“Void for lack of invention.”) The Pennsylvania district court sided with the first-filer Kepner on priority grounds, and refused to decide the question of patentability. Sanford v. Kepner, 99 F. Supp. 221, 222 (M.D. Pa. 1951).   On appeal, Sanford argued that the district court should have decided the validity question also, but the appellate court affirmed. Sanford v. Kepner, 195 F.2d 387, 390 (3d Cir. 1952).  In particular, the 3rd Circuit explained that once the priority issues are decided, the plaintiff would need some additional justification to maintain standing: “some manifest threat … or interference with the activities of the petitioner beyond the issuance of a patent to another is required to create a controversy justiciable under the Declaratory Judgment Act.”  Id.   The Supreme Court then took up the case and again affirmed, with Justice Black writing a short opinion for a unanimous court. Sanford v. Kepner, 344 U.S. 13 (1952).

In its decision, the court noted that the odd setup would likely result in a weak validity challenge:

There would be no attack on the patent comparable to that of an infringement action. Here. the very person who claimed an invention now asks to prove that Kepner’s similar device was no invention at all because of patents issued long before either party made claim for his discovery. There is no real issue of invention between the parties here and we see no reason to read into the statute a district court’s compulsory duty to adjudicate validity.

Id. Affirmed.



Most Cited Supreme Court Patent Cases Since 1952

by Dennis Crouch

Lots of the new learning in patent law over the past decade has focused on patent eligibility.  But, none of the eligibility cases (new or old) show up in my list of the most cited Supreme Court cases.

  1. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction);
  2. Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (arising under jurisdiction);
  3. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive relief in accordance with the principles of equity);
  4. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (obviousness);
  5. Zenith Radio Corp. v. Hazeltine Research, Inc., 401 U.S. 321 (1971) (antitrust – patent pools – waiver of defenses);
  6. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (licensee standing for declaratory judgment action);
  7. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) (non-mutual issue preclusion in patent cases);
  8. Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969) (antitrust – patent pools);
  9. Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002) (arising under jurisdiction – patent assertions in counterclaims, overruled by AIA);
  10. Gunn v. Minton, 568 U.S. 251 (2013) (arising under jurisdiction for patent attorney malpractice);
  11. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) (element-by-element, even for doctrine of equivalents);
  12. Hoffman v. Blaski, 363 U.S. 335 (1960) (change of venue under 1404(a));
  13. College Sav. Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) (sovereign immunity for patent infringement);
  14. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness); and
  15. Kerotest Mfg. Co. v. C-O-Two Fire Equipment Co., 342 U.S. 180 (1952) (declaratory judgment and district court discretion).

The citation ranking here is based upon the cite by other cases.  If we add in PTAB decisions, Briefs, and Articles, then the top four are KSR, Graham v. Deere, Markman, and Alice Corp.

Most of the cases in this list decide some trans-substantive principle and so are being cited outside of the patent context.  The only core patent cases are Markman, Graham v. Deere, Warner-Jenkinson, and KSR.



Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Three new PPAC Members: Charles Duan, Suzanne Harrison, and Heidi Nebel

The Secretary of Commerce has announced three new members of the USPTO’s  Patent Public Advisory Committee (PPAC): Charles Duan, Suzanne Harrison, and Heidi S. Nebel.  Congratulations! All three of these individuals care deeply about improving the patent system, and now have an official seat at the table.

The PPAC is charged with advising the PTO Director on the “policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office with respect to patents.” 35 U.S.C. 5.

PPAC Members:

  1. Steven Caltrider (Chair) – VP and General Patent Counsel, Eli Lilly and Company;
  2. Tracy-Gene Durkin (Vice Chair) – Director at Sterne Kessler;
  3. Jeffrey Sears – Associate General Counsel and Chief Patent Counsel at Columbia University;
  4. Jeremiah Chan – Director and Associate General Counsel at Meta (FB);
  5. Daniel Brown – Professor at the Segal Design Institute of Northwestern University;
  6. Judge Susan Braden – Former Judge of the Ct. Fed. Claims;
  7. Charles Duan – IP-focused public policy researcher at R Street Institute and formerly with Public Knowledge;
  8. Suzanne Harrison – Percipience LLC (IP Strategy); and
  9. Heidi Nebel – McKee, Voorhees & Sease.

These folks are all charged with receiving public input and using it in the process of building a better patent system.  The next public meeting will be in February 2022.

 United States Intellectual Property Organization (USIPO)

by Dennis Crouch

I have written a handful of posts over the years suggesting a merger of the USPTO and Copyright Office to form a United States Intellectual Property Organization (USIPO).  The current fractured structure means that we lack a coherent administrative approach to treatment of the various IP regimes, even though they obviously overlap in very important ways.  Further, although trade secrets are increasingly important to US industry, no federal agency is providing any oversight or guidance.  The political difficulty here, I believe, is that major copyright industry insiders feel that they have captured the copyright office and so are concerned that a transformation would harm their lobbying position.

Apparently, Sen. Thom Tillis is thinking along these same lines, and has been meeting with industry insiders to see whether there may be a consensus approach.  The proposal may be larger — taking control from the President’s hands and creating a more independent agency.

Is it Time to Eliminate Terminal Disclaimers?

I’m trying an open authorship model for a new short paper asking the question:

Is it Time to Eliminate Terminal Disclaimers?

I just wrote 150 words, and so it is 3% of the way toward a 5,000 word goal.  If we get to 5,000 coherent words, then I’ll make sure it gets published — probably in some fancy law journal.

  • Link to the Document for Editing:
  • If you add enough to be listed as a co-author, please add your name and contact info to FN 1.  (Anonymous contributions are also permitted).




Qatent – AI Generated Applications

I love this project that has the AI tech develop a detailed 20-30 page specification based upon a few claims and short description.

I expect that most folks won’t be satisfied, but in many cases it might be sufficient. And, if the technology is sufficiently mainstream, it suggests that the patent document actually needs less disclosure.


USPTO Delays Voluntary Continuing Legal Education Certification

A requirement for continuing legal education (CLE) is on the horizon for US patent attorneys and patent agents, but that horizon has been pushed back once again. The first proposed step was a voluntary certification of CLE attendance. However, Dir. Hirshfeld and OED Dir. Will Covey have pushed that back indefinitely:

On June 10, 2021, the USPTO issued a Federal Register Notice announcing that the voluntary CLE certification would commence in the spring of 2022 but that implementation of the biennial electronic registration statement would be delayed until November 1, 2024. 86 FR 30920.

At this time, based on operational priorities, implementation of the voluntary CLE certification will be delayed indefinitely. The expected implementation date for the biennial electronic registration statement remains November 1, 2024.

Till then, keep reading Patently-O.

No more Paper Patents

US courts formerly tossed around the derogatory term “paper patents” in reference to inventions that were thought experiment scribbled down on paper and never actually reduced to practice.  Ordinarily, paper patents were given more narrow construction than their more well rounded cousins.  But, at least they were still on-paper.

The USPTO has announced its intent to stop printing patent documents on paper as a matter of course.  Rather, the patent grant will remain in electronic storage.  Paper versions will still be printable on-demand — informally from the website or formally with a fee.

This is a good move.

Read more and provide comments here:

  • Dir. Blog

Update: Others have noted that USPTO computer servers went down for several hours on the day of this announcement.