Eligibility: Pleadings are Enough, but they must Tie the Claims to an Inventive Concept

Cellspin Soft v. Fitbit, Moov, Nike, Fossil, etc. (Fed. Cir 2019)

The district court dismissed Cellspin’s infringement lawsuit on the pleadings — finding the asserted claims unenforceable as a matter of law under 35 U.S.C. § 101 (ineligible abstract idea).  On appeal, the Federal Circuit has vacated — holding instead that the early-stage dismissal was inappropriate because the patentee’s amended complaint included “specific factual allegations” that, when accepted as true, showed a plausible inventive concept sufficient to satisfy Alice Step 2.

The court explains here that under Aatrix, “plausible and specific factual allegations that aspects of the claims are inventive” are sufficient to overcome a pleadings-stage motion to dismiss.  “[T]he specification need not expressly list all the reasons why this claimed structure is unconventional” so long as the arguably inventive elements are “recited by the claims.”

Here, the claims recite a sensor with Bluetooth.  The claims recite a “two-step, two-device structure requiring a connection before data is transmitted.” And, the complaint identified this structure as a concrete and inventive application that goes beyond the abstract idea of “acquiring, transferring, and publishing data and multimedia content on one or more websites.”  The appellate panel found that “[t]he district court erred by not accepting those allegations as true.”

On remand, the case will move to summary judgment stage — moving beyond the mere allegations and looking at the evidence produced by both parties.  The burdens of proof and presentation at summary judgment may be confusing.  Eligibility is a question of law that does not necessarily require any evidentiary conclusions by the court.  However, we would expect that the patentee here will present some amount of evidence (probably expert testimony coupled with documentation) potentially sufficient to support a prima facie case of inventive concept under Alice Step 2.

The term inventive concept sounds very patent-like, but the law remains confused about more precise qualities of the term.  A patent claim directed to an abstract idea (or law of nature) can still be patented so long as it also recites an “inventive concept.”  Inventive Concept:

  • Something more than the application of an abstract idea using “well-understood, routine, and conventional activities previously known to the industry.”
  • Enough to “transform an abstract idea into a patent-eligible invention.”
  • More than simply “using conventional and well-understood techniques.”

Here, the court held that the patent itself must include the concept (and it must be particularly claimed) but need not explain in the specification that it represents the inventive concept. What is not clear is how directly inventive concept relates to other patentability concepts such as novelty, obviousness, and utility.

Guest Post by Prof. Farley: SCOTUS’s Second Take on Trademark Registration as Speech

By Professor Christine Haight Farley, American University Washington College of Law.  Here, Professor Farley offers her take on Iancu v. Brunetti.  You can read Dennis’s write-up here.

The Supreme Court has now struck down as unconstitutional a second trademark registration bar. The court ruled yesterday in Iancu v. Brunetti that the government may no longer deny trademark registration to marks that are “scandalous” or “immoral.” In 2017, the court struck down a provision that denied trademark registration to marks that are “disparaging” in Matal v. Tam. Both registration bars appear in Section 2(a) of the Lanham Act.

Many commentators had seen the cases as so similar that they wondered why the court had even granted certiorari. Perhaps as a result, the case provoked less interest from amicus brief authors. The conventional wisdom was that the court’s opinion in Tam left no room to uphold this provision.

In Tam, the court ruled that denying trademark registration to marks that disparage constitutes viewpoint discrimination because the government was sorting out “ideas that offend.” The court reconfirmed that viewpoint discrimination is presumptively unconstitutional. In his concurrence, Justice Kennedy described viewpoint discrimination as “a form of speech suppression so potent that it must be subject to rigorous constitutional scrutiny.”

For the Brunetti majority, this was a simple case. Indeed, Justice Kagan, who wrote the majority opinion joined by Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh, dispensed with the case in ten and a half tight pages even as she devoted a full page to examples of marks that were refused registration (comparing them to similar marks that were approved for registration). The opinion is short and sweet: this is the same case as Tam.

According to the majority, the provision at issue “disfavors ideas” and as such is substantively indistinguishable from the provision in Tam. Here, “the Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.”

The final page or so of the majority opinion is devoted to explaining why the statute cannot be saved by the “limiting principle” offered by the government. This is the part of the opinion about which there is dissent.

The majority rejects the government’s proposal to limit application of this provision to “vulgar” marks–“lewd,” “sexually explicit or profane” marks. Although such a construction would avoid any viewpoint discrimination, the majority holds that the “immoral or scandalous” bar “stretches far beyond the Government’s proposed construction.” The majority concludes that such a construction would amount to the court rewriting the statute because the plain meaning of the statutory language is broader and ensnares marks that offend because of the ideas they express, not just by their mode of expressing ideas.

Here, in the majority opinion’s only footnote, the majority rebuffs the dissenters characterizing their approach as “statutory surgery.” The majority disagrees that the statute is in any way ambiguous and therefore subject to reinterpretation.

Chief Justice Roberts, Justice Breyer, and Justice Sotomayor each filed separate opinions. Although each concurred that the registration bar on mark that are “immoral” amounts to unconstitutional viewpoint discrimination, each would have limited the court’s constitutional sword to strike down only this provision. Each accepted the government’s limiting principle as an appropriate means to avoid a finding that an act of Congress is unconstitutional.

Justice Breyer began his opinion by citing the court’s precedent that, where fairly possible, the court should endeavor to find a statute constitutional. Interestingly, in Tam the court did not, as the majority put it, “pause to consider whether the disparagement clause might admit some permissible applications (say, to certain libelous speech) before striking it down.”

It is in this space, that I believe the Brunetti decision offers a new and interesting perspective on the court’s approach to the First Amendment. In Brunetti, four Justices expressed a view that scandalous modes of expression should be barred trademark registration. In addition to the three dissenters, Justice Alito, the author of the majority opinion in Tam, stated in his concurring opinion that the court’s opinion would not “prevent Congress from adopting a [] statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” He went on to note that the mark in question in this case—FUCT–“is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”

Justice Alito’s lack of solicitude toward a portion of the marks targeted by the scandalous provision was echoed by Justices Roberts, Breyer, and Sotomayor. Chief Justice Roberts flatly states that “refusing registration to obscene, vulgar, or profane marks does not offend the First Amendment.” Justice Breyer goes so far as to suggest that “an applicant who seeks to register a mark should not expect complete freedom to say what she wishes, but should instead expect linguistic regulation.”

These sympathetic sentiments toward the government’s interest in regulating vulgarity is in sharp contrast to Tam, in which no Justice expressed any support for the government’s regulation of racial epithets. In Tam, the majority stated that “trademarks often have an expressive content” and Kennedy stated that “marks make up part of the expression of everyday life.” In Brunetti, in the context of vulgar marks, no Justice made mention of “expressive marks” beyond the majority’s conclusion that the provision targets ideas that offend.

In Brunetti, it would also appear that some Justices have retreated from the idea that a registration refusal is a burden on speech. I’ve already mentioned Justice Breyer’s suggestion that applicants ought to expect linguistic regulation. Perhaps the most striking rebuttal of registration as speech comes in this passage in Chief Justice Roberts’ opinion:

“Whether such marks can be registered does not affect the extent to which their owners may use them in commerce to identify goods. No speech is being restricted; no one is being punished. The owners of such marks are merely denied certain additional benefits associated with federal trademark registration. The Government, meanwhile, has an interest in not associating itself with trademarks whose content is obscene, vulgar, or profane. The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

Such statements will likely surprise anyone who has read the Tam decision—unless that person attended the oral arguments in Brunetti. Although, as I have suggested, commentators expected the Brunetti case to closely follow Tam, the dialogue in oral arguments were a good clue that at least some members of the court were seeing something different in the Brunetti case. Whereas in Tam, the court appeared to be overwhelming concerned with the free speech rights of Simon Tam who was presented a civil rights activist, in Brunetti, it seems suddenly to have dawned on the court that at issue was the obligation of the government to register a white supremist’s application for the N-word.

This new unease comes through most clearly in the opening lines of Justice Sotomayor’s opinion:

“The Court’s decision today will beget unfortunate results. With the Lanham Act’s scandalous-marks provision, 15 U. S. C. §1052(a), struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.”

In his opinion, Justice Breyer remarks, “Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet.” Yes, Justice Breyer, many of us were thinking about exactly that in the Tam case as it caused the Redskins to recover their mark. Undoubtedly, Justice Breyer has seen a few of these t-shirts around DC.

Just three cases have caused a recent interest in these trademark registration provisions: first the Redskins case (Blackhorse v. PFI), then Tam, and finally Brunetti. Previously, the constitutionality of these provisions was settled by the Court of Customs and Patent Appeals, the predecessor to the Court of Appeals for the Federal Circuit, in In re McGinley. On the constitutional issue alone, these three cases have produced seventeen opinions. Even still, many important questions have been explicitly sidestepped such as to what extent, if any, the commercial speech doctrine plays, whether viewpoint neutral content discriminatory registration bars pass muster, or whether trademark registration may be considered as a government program or subsidy. In light of what has transpired, perhaps the McGinley court’s approach has some virtues. In McGinley, the court circumvented the constitutional issue by finding that the government’s refusal to register a mark does not affect the right to use it: “No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.” Moreover, as Justice Sotomayor noted in a footnote, the McGinley court bifurcated “scandalous” from “immoral” in precisely the manner that the dissenters suggest would save that bar from being struck down as unconstitutional.

In the end, the implications of this case are narrow. As to First Amendment jurisprudence, we perhaps glean a few more clues as to how to determine what constitutes a viewpoint. Beyond that, we learn that at least four members of the court would support regulating vulgar expression. As to trademark law, it would appear that no further statutory or doctrinal vulnerabilities emerge from this decision that had not been portended by Tam. This decision, however, does pave a path forward for amending the Lanham Act to add a bar to the registration of marks that are “scandalous in their mode of expression,” or are “vulgar, lewd, sexually explicit, or profane.”

Copyrighting the Official Annotated Statutes: Georgia v. Public.Resource.org

The Supreme Court has granted certiorari in the important public access case of Georgia v. PublicResource.org Inc. The case focuses on Georgia official statutory code with official annotations (the “Official Code of Georgia Annotated” or  “OCGA”).  OCGA includes the statutes, section titles, statutory histories, guidance from the Georgia Code Revision Commission, judicial summaries, and opinions by the State AG, for example.  PublicResources.org bought a copy of the OCGA, copied it, and uploaded it to the internet so that the public could have free access to the law.  Georgia then sued for copyright infringement.

The district court held OCGA copyrightable and the 11th Circuit reversed that decision — finding that the “government edicts doctrine” prohibits copyright in this case.  One difficulty with with that doctrine is that it was last discussed by the U.S. Supreme Court 130 years ago in Callaghan v. Myers, 128 U.S. 617 (1888) and Banks v. Manchester, 128 U.S. 244 (1888).

Question presented:

This Court has held, as a matter of “public policy,” that judicial opinions are not copyrightable. Banks v. Manchester, 128 U.S. 244, 253-254 (1888). Lower courts have extended that holding to state statutes. See, e.g., John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 38 (1st Cir. 2003). But the rule that “government edicts” cannot be copyrighted has “proven difficult to apply when the material in question does not fall neatly into the categories of statutes or judicial opinions.” Ibid.

The question presented is: Whether the government edicts doctrine extends to—and thus renders uncopyrightable—works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.

OCGA is published by LEXIS, but its contents are particularly controlled by the Georgia General Assembly and the Commission (a division of the Assembly).  The appellate panel found particularly that “the Commission exercises direct, authoritative control over the creation of the OCGA annotations at every stage of
their preparation.”

Although PublicResources won at the appellate court, it agreed that the Supreme Court should hear the case in order to clarify and simplify the law of public access to public information. Current case law “is confusing and outcomes are difficult to predict.”

Briefing in the case will continue over the summer and the Court will likely schedule oral arguments for late 2019.

Oops I Did it Again: Time to Register those Scandalous Marks

by Dennis Crouch

Trademark rights have long held substantial sway and power in courts and among administrators who are often required by regulations to respect trademark rights.  This case – expanding the scope of rights to include immoral and scandalous content – is likely to undermine and begin an erosion of those protections.

Iancu v. Brunetti (2019)

In an interesting free speech opinion, the Supreme Court has sided against Congress and the USPTO — finding the statutory prohibitions on registering immoral or scandalous trademarks to be an unconstitutional limit on free speech.  The decision here follows Matal v. Tam (2017) where the court similarly held unconstitutional a  parallel provision restricting disparaging marks.

Justice Kagan wrote the 6-person majority opinion that was joined by Justices Thomas, Ginsburg, Alito, Gorsuch, and Kavanaugh.  The remaining justices agreed that the First Amendment requires the government to register immoral marks, but argued that at least some scandalous marks can be properly prohibited. In the minority viewpoint, the court should have narrowly construed that aspect of the statute to a Constitutional scope while retaining some of its effectiveness.

This case involves the mark “FUCT” that Brunetti has been using for many years in association with his product line for wealthy rebellious skaters.  However, when he decided to register the mark, the PTO rejected his application as directed toward immoral or scandalous matter as required by the Lanham Act.  Brunetti appealed.

The big question in the case was whether the court would see these restrictions as viewpoint based — they did.  The court explains:

So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based?

It is viewpoint-based. . . . [T]he Lanham Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. . . . [T]he Lanham Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. Put the pair of overlapping terms together and the statute, on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.

Once the limitation is defined as viewpoint based, the result was easy for the court — invalid as unconstitutional.

The decision here did not resolve the open question in Tam: whether the Lanham Act registration bars are (1) conditions on a government benefit or instead (2) simply restrictions on speech.

[Iancu v. Brunetti]

Although not fully stated, I expect that a slight majority of the justices would agree with Justice Alito’s concurring opinion that Congress could adopt “a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.” Alito goes on to suggest that the particular mark here – FUCT – could be barred under such a statute. “The term suggested by that mark is not needed to express any idea and, in fact, as commonly used today, generally signifies nothing except emotion and a severely limited vocabulary.”  Chief Justice Roberts further explained: “The First Amendment protects the freedom of speech; it does not require the Government to give aid and comfort to those using obscene, vulgar, and profane modes of expression.”

I have to admit difficulty in working through the fundamentals of this case — how does a limit on registering a mark equate with a limit on speech?  The majority opinion entirely skipped this debate because it was covered in Tam – although tersely and incompletely.  Justice Breyer did a nice job of explaining the problem that free speech analysis has become intensely category-based , and that “the trademark statute does not clearly fit within any of the existing outcome-determinative categories.  Why, then, should we rigidly adhere to these categories?”

Failing to Identify Real Party In Interest was Excusable Error that Did Not Reset Petition Filing Date

by Dennis Crouch

Mayne Pharma v. Merck Sharp & Dohme (Fed. Cir. 2019)

Mayne’s U.S. Patent 6,881,745 covers an azole antifungal drug with a particular formulation designed to increase absorption and bioavailability.  Back in 2015, Mayne sued Merck for infringement — accusing Merck’s Noxafil product. In the Inter Partes Review (IPR), the PTAB agreed with Merck — finding the claims unpatentable as obvious.  That decision has now been affirmed on appeal.

Time Bar under 315(b): An IPR may not be instituted if the petitioner (or its proxy or a real-party-in-interest) was served with an infringement complaint more than one year beforehand. 35 U.S.C. § 315(b).  Here’s the timeline:

  • May 29, 2015, Mayne sued both Merck & Co, Inc. (MCI) and the company’s international subsidiary Merck Sharp & Dohme (MSD) for infringing the ‘745 patent.
  • June 12 2015, MCI and MSD both served with a summons for the lawsuit.
  • June 11, 2016, MSD (but not MCI) filed for inter partes review challenging the ‘745 patent.  This appears to fall within the 1-year time limit.  Mayne asked the PTAB to require MCI be joined as a real-party-in-interest, but the PTAB refused at the institution stage.  At institution, MSD did not respond to the allegations regarding real party in interest; and the Board found insufficient evidence of Control.
  • December 2017,  PTAB required MSD to add MCI as a real party in interest to the case.  Although MCI was added to the case well after the one-year 315(b) deadline, the PTAB found that MCI’s addition did not alter the filing date.

The Board had provided “guidance” that it would not allow correction of non-clerical errors in the petition without also changing the filing date, 80 Fed. Reg. 50,  and Mayne argued that the rule applies here.

On appeal, the Federal Circuit sided with the patent challenger and PTAB — holding that the Board did not commit reversible error based upon a no-harm no-foul rule of law:

There was no evidence suggesting that MSD intended to conceal MCI’s identity. In fact, Mayne was aware of MCI because MCI was a named defendant in parallel district court litigation, and, had MSD named MCI as a real party in interest in its original petition, Mayne would be in the same position it is in now.

With regard to the PTAB guidance, the court noted that such guidance was “non binding” [upon whom?] and that the Board had allowed several petition corrections without changing the filing date.

Why Do It? – Privileged: The gaping hole in in the analysis is any discussion of why MSD did not name its parent company who was being sued for infringement as a real party in interest.

In the IPR, Merck’s attorneys (who represented both companies) indicated that they had intentionally omitted MCI as a real-party-in-interest, but did not explain their actions other than: “privileged legal strategy immune from discovery” (although this is in quotes, it is my paraphrasing).  The key patent-related reason here that comes to mind is that – at the time – Merck thought it might get around IPR estoppel by having its subsidiary file the petition.  It was not until more than a year later that Merck agreed that both companies would be bound by any resulting estoppel.

Appealable:  The patent challenger also argued that the issue here is not appealable because it is tied to institution. On appeal, the Federal Circuit ducked that issue and instead held that the case is affirmed whether or not it is appealable. (Interesting jurisprudence dance on this one).

Fed. Cir. Spots Weak Claim Construction Arguments

Game and Tech. Co. v. Activision Blizzard (Fed. Cir. 2019)

Activision won its inter partes review (IPR) challenge that ended with the Patent Trial & Appeal Board (PTAB) finding obvious claims 1-11 of GAT’s U.S. Patent 8,253,743.

The patent here covers a method for customizing game characters. The method begins with shopping for an avatar – via an “avatar shop”; then, a set of “game item functions” are combined with the avatar (via layers).  A game item function might be “a function for attacking or defending other gamers” or perhaps “a function for charging cyber money.”  Once these “game functions” are added to the avatar, it becomes a “GAMVATAR.” Figure 5 of the patent (below) explains the equation: Avatar + Item (function) = Gamvatar.  The infringement lawsuit involving the ‘743 was administrative closed after the PTAB decision here.

In the appeal, GAT provided an oddball claim construction argument — arguing that the “avatar” must represent the user in cyberspace outside of game play and even game-related functions.  That narrowing definition of the term would be helpful in avoiding some of the prior art.  The narrowness has some limited support in the specification, but is really rejected by the claim language which simply calls for choosing an avatar from a store.

GAT also suggested an oddball definition for the “layer” used to combine the game-function with the avatar.  In the drawing above, the layer is visible and GAT argued that Layer should be construed as a visible element of the display. The key problem here as noted above is that examples of the layer include functions not displayed on the character (such as the ability to charge money).

So, obviousness affirmed. Everyone keep making your characters (I mean gamvatars).

= = = =

I have not spent a lot of time researching the details of this case, but the patentee’s claim construction arguments here appear pretty weak — we’re talking thin slices of bologna. My sense is that claim construction has moved into a more-predictable process under Phillips – a process that that will be further enhanced by the PTAB’s application of that approach in AIA trials.

= = = =


1. A method for generating a character associated with a character generating system comprising a gamvatar provider, a gamvatar controller, and a game server, the method comprising:

providing an avatar to a user accessing an avatar shop via a network, the avatar comprising multiple layers for displaying avatar functions or performing game item functions by using the respective layers; and

combining each of a plurality of game item functions with the avatar by adding the respective layers to the avatar to create a gamvatar associated with the plurality of the game item functions,

wherein the gamvatar is configured to be used to perform the plurality of the game item functions and each of the plurality of game item functions being combined with the respective layers is exhausted in response to detection of each time of using the each of the plurality of game item functions associated with playing a game provided by the game server.


Heightened Written Description Standard for Reissue Patents

by Dennis Crouch

Forum US v. Flow Valve (Fed. Cir. 2019)

The question here is whether the broadened claims in Flow Valve’s U.S. Patent No. RE45,878 satisfy the heightened written description requirement for reissue patents.

In order to broaden claims as part of a reissue application, the patentee must show that the new scope was considered by the original patent applicant as party of the original invention.  This precedent stretches back to 1893:

[T]o warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, drawings, or models, but it must further appear from the original patent that they constitute parts or portions of the invention, which were intended or sought to be covered or secured by such original patent.

Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38 (1893).

It must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.

U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668 (1942).

These cases are pre-1952.  At the time, the statute limited reissues be “for the same invention.” In 1952, that provision was altered to instead limit reissue claims to “the invention disclosed in the original patent.”  Although the text of this statutory change appears to loosen the limits on reissue claim scope, the Federal Circuit has indicated that the statutory change did not change the requirement.  Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014) (The pre-1952 requirement has not “in any way been altered by the legislative changes”).

Here,  the patent at issue focuses on fixtures for holding pipe fittings during machining. All of the embodiments in the original patent as well as the claims include arbors that are used for holding the pipe joint in place (circled below).   However, during the reissue the patentee added new claims without the arbor requirement.

The courts agreed that, in this situation, the broadened scope that includes an arbor-less device was not apparent from the “face of the instrument” — i.e., in the text of the original patent application.

A written description requirement: The patentee had presented expert testimony that a person of skill in the art would understand that the arbors were optional components of the assembly.  Taking that evidence as true, the Federal Circuit found it insufficient to save the claims because the test is whether the new claim scope is written down in the specification.  In essence, this is a heightened written description test, not a test of enablement.

Query: How would our patent system adjust to applying this written description standard in all cases, not just reissues?

Patently-O Software Law Bits & Bytes: Artificial Intelligence in Legal Practice by Grant Harrison

by Grant Harrison

Artificial Intelligence: Artificial Intelligence ( A.I. ) is one of the most sought-after fields in Computer Science. A.I. often implemented an algorithm or machine that can be trained by learning through datasets, the most common approach to this is through deep learning and natural language processing neural networks somewhat resembling human neuronal interactions. A.I is also emerging as a practice-of-law topic, with many ongoing endeavors into automated lawyers and assisted decision making.

Recent Articles and Editorials:

Supreme Court End of Term Updates

by Dennis Crouch

The Supreme Court decided only two patent cases this term.  Helsinn is somewhat important for many patentees and certainly the PTO; while Return Mail more narrowly focuses on the role of Federal Government agencies in challenging patents:

  • Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628 (2019) (non-public sales are still “on sale” under the America Invents Act (AIA) rewriting of 35 U.S.C. 102).
  • Return Mail, Inc. v. United States Postal Service, et al., 139 S.Ct. 397 (2019) (IPR statute does not provide for petitions filed by the Federal Gov’t.).

Certiorari has been granted in only one additional patent case: Peter v. NantKwest. That case asks whether the USPTO is permitted by statute to recover attorney fees associated with § 145 civil actions.

An applicant dissatisfied with the decision of the [PTAB] . . . may . . . have remedy by civil action. . . . The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims. . . . All the expenses of the proceedings shall be paid by the applicant.

35 U.S.C. § 145. In this case Laura Peter, USPTO Deputy Director, is the named petitioner on behalf of the Government, standing in for Dir. Iancu who has a conflict of interest in the case. (Irell & Manella represents NantKwest, and Iancu was managing partner at Irell when the representation began.)

In many other countries, litigation losers commonly pay the attorney fees of the victor.  One argument against that approach is an access-to-justice problem — parties without much money will not be able to find representation if there is a good chance that they’ll have to pay the other-side’s attorney fees upon losing.  In its amicus brief supporting the Government, R Street (Charles Duan) argued that only rich pharmaceutical companies are bringing these cases. “There is thus little reason to believe that those additional expenses will greatly affect the strategic calculus of those patent applicants likely to make legitimate use of § 145.”

As R Street‘s brief outlines, § 145 are used rarely — usually for the most potentially valuable pharmaceutical patents – with top lawyers handling the case (such as Irell & Manella).  The real shift from the outcome may come from the USPTO — if it knows someone else is footing the bill, the USPTO may fight these cases harder.

Upcoming Soon: The Supreme Court has one final conference set this term (June 20) and is slated to rule on a number of pending petitions for certiorari:

  • InvestPic, LLC v. SAP America, Inc., No. 18-1199  (physicality requirement for eligibility);
  • Romag Fasteners, Inc. v. Fossil, Inc., et al., No. 18-1233 (profit disgorgement under the Lanham Act);
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (prior art date for unclaimed disclosures in a provisional filing);
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (infringement associated with and “offer” made in the US to actually “sell” a product in a foreign country);
  • Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18-916 (Is the 315(d) time-bar triggered by prior lawsuits that were dismissed without prejudice?); Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same); Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same). .

Rather than guessing at the court’s potential decisions as to whether or not to grant certiorari, I’ll just wait a few days on these to know the outcome.

We also have the beginnings of a heap of new cases for consideration next term:

  • HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer, No. 18-415 (fact-law divide in eligibility);
  • Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (threshold of a natural phenomenon);
  • Google LLC v. Oracle America, Inc., No. 18-956 (copyright for software interfaces).
  • Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., et al., No. 18-1280 (obviousness and blocking patents)
  • Hyatt v. Iancu, No. 18-1285 (reopening prosecution after successful appeal; “Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.”);
  • Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418  (R.36 judgments; holistic approach to obviousness)
  • Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (eligibility on the pleadings; Berkheimer question);
  • Enplas Display Device Corporation v. Seoul Semiconductor Company, Ltd., No. 18-1530 (can foreign sales qualify as induced infringement of a U.S. patent — if defendant knew that “the components might be incorporated by third parties into infringing products that might be sold by other third parties in the United States.”)
  • Zimmer, Inc., et al. v. Stryker Corporation, et al., No. 18-1549 (more on treble damages — is negligence enough?)

This last set of cases won’t see any light until at least October 2019 when the Court returns from its summer break.

Using a Technique in a Known Way is Usually Obvious

Samsung Electroncs v. UUSI (Fed. Cir. 2019)

In the inter partes review (IPR), the PTAB sided with the patentee UUSI — finding that Samsung had failed to prove the obviousness of UUSI’s U.S. Patent No. 5,796,183.  On appeal, however, the Federal Circuit has vacated that decision — holding that the Board’s findings of no motivation-to-combine or reasonable-expectation-of-success were not supported by the evidence.

The patent is directed to multi-point capacitive sensing circuity – the type used for the multi-billion dollar touchscreen market. It’s 1996 priority date situates the invention before a substantial amount of prior art.  However, Samsung identified several key prior art references, including U.S. Patent Nos. 5,565,658 (Gerpheide), 5,087,825 (Ingraham), and 5,594,222 (Caldwell).

Obvious by Combination of References: Most often, obviousness is proven with a combination of references that collectively teach the claimed elements.  In addition to providing the set of prior art references, the patent challenger must also show that a person of skill in the art (POSITA) would have a “motivation to combine” the references in the way claimed and that such a combination would have a “reasonable expectation of success.”

In KSR v. Teleflex, the Supreme Court explained that the motivation to combine analysis is flexible and not bound to rigid limitations or requirements. The High Court explained: “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR.

Here, the PTAB decided to exclude Gerpheide from the analysis because its approach was directed toward single-point capacitive sensing rather the multi-point approach of the patentee.  On appeal, the Federal Circuit vacated that holding:

The Board’s categorical rejection of the teachings from a single input device to those of a multi input device is not supportable. . . . Samsung presented uncontested evidence that the combination of Ingraham and Caldwell would experience electrical interference, and Gerpheide taught a way to address electrical interference in capacitive touch devices. The fact that Gerpheide and Ingraham/Caldwell involved different types of capacitive touch devices (single versus multi input) does not undermine the motivation to combine the teachings of Gerpheide with Ingraham/Caldwell since
both devices can experience electrical interference. Gerpheide recognized this as a problem and provided a solution to reduce such interference. Thus, a person of skill in the art would have been motivated to include such a feature from analogous prior art in a multi input capacitive touch pad device (i.e., the device of the Ingraham/Caldwell combination). The Board’s contrary conclusion is not supportable.

With regard to reasonable expectation of success, the Federal Circuit also vacated — primarily holding “that the Board’s implicit claim construction was erroneous.”  Here, the Federal Circuit found that the PTAB had unduly narrowed the claim scope and that under the broader scope there may indeed be a reasonable expectation.

Patently-O Bits and Bytes by Juvan Bonni

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State Sovereign Immunity does Not Apply in Inter Partes Review proceedings.

University of Minnesota v. LSI Corp. (Fed. Cir. 2019)

As expected based upon the Federal Circuit’s prior rulings on tribal immunity, the court has now also ruled that 11th Amendment Sovereign Immunity does not protect patents owned by individual states (such as Minnesota) from being cancelled via inter partes review (IPR).

We conclude that state sovereign immunity does not apply to [IPR] proceedings.

What does this mean — state owned patents can more easily be challenged.

By its terms, the 11th Amendment prohibits US (Federal ) courts from exercising power over suits “against one of the United States” that are brought by Citizens of another State or a Foreign State.

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

Note, that the 11th Amendments does not prohibit actions against one State brought on behalf of another States or by the Federal Gov’t. Note also that the States also have inherent sovereign immunity that “neither derives from nor is limited by, the terms of the Eleventh Amendment.” Alden v. Maine, 527 U.S. 706, 713 (1999).

Although the terms of the 11th amendment appear to be directed to Article III court activities, immunity has also been found in administrative cases that the courts finds to be “similar to court adjudications.”

In its setup for this decision, the Federal Circuit walked through the patenting process — noting the many flaws and high likelihood that non-patentable claims are allowed to be patented.  That foundation then highlights the need for further administrative action in fixing those bad patents — first reexaminations and reissues, and now inter partes review.  Because this deeper look is costly, it makes sense to only target cases under dispute — fix the important patents and don’t worry about the rest. In other words, IPR proceedings should be seen as an extension of the examination process, not a court proceeding. The court explains briefly that “IPR represents the sovereign’s reconsideration of the initial patent grant.”

In the Allergan case, the Federal Circuit previously held that Native American tribal immunity does not protect tribal-owned patents from IPR challenges. Here, the court concluded that “the differences between state and tribal sovereign immunity do not warrant a different result than in Saint Regis. We therefore conclude that state sovereign immunity does not apply to IPR proceedings.”

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In an interesting statement, the three judges on the panel – Judges Dyk, Wallach, and Hughes — added a non-binding set of “additional views” to their main opinion that identify am IPR proceeding as “an in rem proceeding to which sovereign immunity does not apply.”  The court does not explain why it chose to include this unanimous statement as “additional views” rather than as the holding.

Pre-Institution Merger Foils Inter Partes Review Challenge

by Dennis Crouch

Power Integrations, Inc. v. Semiconductor Components (ON Semiconductor) (Fed. Cir. 2019)

The Federal Circuit has ordered dismissal of On Semiconductor’s IPR petitions against several patents owned by Power Integrations.  The basic issue on appeal was interpretation of the time-bar under 35 U.S.C. 315(b)

(b) An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

The statute here is clearly drafted, with the basic ambiguity questions being (1) what counts as a “real party in interest or privy of the petitioner” and (2) whether “served with a complaint” requires a summons under FRCP R. 4 – and what if service is waived?  This case focuses on a third question — (3) real party in interest as of when?

Back in 2009, Power Integrations sued Fairchild Semiconductor for infringing the patents at issue and has won two separate $100+ million jury verdicts (both of which have been rejected).  A third trial on damages is now likely for later this year (since the patent claims are no longer cancelled).

In 2015, ON (petitioner here) agreed to purchase Fairchild (in a confidential agreement). Prior to completion of the acquisition, ON filed the IPR petitions. On September 19, 2016, ON Semiconductor completed the acquisition.  Then, later that week, September 23, 2016, the USPTO issued its institution decision and ultimately held the challenged claims unpatentable as obvious. [Final Written Decision]

Throughout the institution phase, the patentee challenged institution on time-bar grounds — arguing that Fairchild was served with a complaint more than one-year before the IPR petition filing; and that Fairchild is a Privy of petitioner ON.  Q.E.D.

The Board, however, sided with petitioner holding (1) the focal point is the status of the parties at the time the petition was filed (thus the subsequent merger does not deny institution); and (2) that “there was insufficient evidence of record to establish control and therefore insufficient evidence to establish privity between Fairchild and ON at the time the petition was filed.”  The Board also denied additional discovery into the admittedly confidential relationship.

On appeal, the Federal Circuit has reversed that decision holding that privy relationships developed post-petition but pre-institution should be considered. Thus, the merger (clearly creating privity and Real Party in Interest (RPI)) pre-institution with a time-barred company prevents the IPR from being instituted.   For its decision, the court looked particularly to the language of the statute which focuses on institution – “may not be instituted if . . . ”

The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner. In other words, the statute specifically precludes institution, not filing.
When the Board finds that an IPR is barred under § 315(b), it denies institution. It does not reject the petitioner’s filing. The focus of § 315(b) is on institution. The language of the statute, in our view, makes privity and RPI relationships that may arise after filing but before institution relevant to the § 315(b) time-bar analysis. . . .

In light of the foregoing, we hold that this IPR was time-barred by § 315(b) because Fairchild was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed.

Result here is that the claims are no longer cancelled – and so the new trial on damages against Fairchild should move forward (barring a settlement).

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*** Save this for another day: the case includes important and interesting discussions of issue preclusion and agency deference.

Patently-O Software Law Bits & Bytes: Data Privacy by Grant Harrison

by Grant Harrison (grant@patentlyo.com)

Data Privacy: Data Privacy or Information Privacy Law is, in short, a way to regulate how companies, individuals, and governments access, use, and collect public information, usually via online. Contemporaneous information privacy law has been around since the 1970’s when the FTC (Federal Trade Commission) first released the Fair Information Practice Principles or the FIPPs, which then served as a foundation for subsequent Data Privacy laws. The principles primarily give the people the right to know when, where, what, and how our data is used and collected. It gives the people substantial transparency with the company regarding our private data and treats our data as our property so that companies must ask before doing anything with our private information. This has been huge news in the last few years because the United States is one of the only highly developed countries that has not enacted comprehensive Data Privacy regulations.

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The State of Patent Eligibility in America: Part III

The Senate Judiciary Committee’s Subcommittee on Intellectual Property is holding its third day of testimony on patent eligibility today, June 11, 2019. The State of Patent Eligibility in America: Part III.  Hearing begin at 2:30 EST.

[Watch Here]

Today’s witnesses are primarily business leaders and in-house attorneys for large IP-focused businesses:

Panel I

  • Manny Schecter, Chief Patent Counsel at IBM
  • Laurie Self, Senior Vice-President and Counsel at Qualcomm
  • Byron Holz, Senior Counsel at Nokia
  • Kim Chotkowski, VP at InterDigital
  • Sean Reilly, Associate General Counsel at The Clearing House Payments Company

Panel II

  • Laurie Hill, VP for IP at Genentech
  • Sean George, CEO at Invitae
  • Gonzalo Merino, Chief IP Counsel at Regeneron Pharmaceuticals
  • Peter O’Neill, Executive Director at Cleveland Clinic Innovations
  • David Spetzler, President and Chief Scientific Officer at Caris Life Sciences

Panel III

  • Michael Blankstein, Deputy GC at Scientific Games
  • Corey Salsberg, Global Head IP Affairs at Novartis
  • Nicolas Dupont CEO at Cyborg Inc.
  • Robert Deberadine, Chief IP Counsel at Johnson & Johnson
  • John D. Vandenberg, Partner at Klarquist Sparkman

Easy Ineligibility Decisions for the Court

by Dennis Crouch

The Federal Circuit released two non-precedential decisions today affirming lower court holdings of ineligibility.

Reese v. Spring Nextel (Fed. Cir. 2019). Mr. Reese’s patent claims a “method for sending a call waiting tone . . .” U.S. Patent No. 6,868,150. The problem for Reese is that the asserted claims are drafted in substantially functional form without reciting the particular technological solution.  The court explains:

The claims are directed to the abstract idea of receiving information (a calling phone number flagged as private) and sending an indication (an audible tone) to a party already engaged in a call. The claims do not recite any particular method of receiving the information and sending the indicating tone in response. . . . Although Reese argues that the claims require specific telephone features, merely limiting claims to a particular technological environment does not render the claims any
less abstract. . . .

[Regarding step two:] [B]y the ’150 patent’s own terms, the claims do not recite any non-conventional equipment.  Further, the claims recite functional language lacking “any requirements for how the desired result is achieved.” Elec. Power Grp. Nothing in the claims requires anything other than conventional telephone network equipment to perform the generic functions of receiving and sending information. Reciting an abstract idea and applying it on telephone network equipment is not enough for patent eligibility. Accordingly,
the claims do not contain an inventive concept.

Read Reese.

In re Greenstein (Fed. Cir. 2019) involves a “method for allocation of investment returns” when a single asset is collaboratively owned.  The key step in the invention appears to involve using a “computer to assign an investment return to the investor.”  According to the inventor, the beneficial focus of the invention is to be able to allocate risk between parties without having to actually buy or sell any additional securities.

On appeal, the Federal Circuit agreed with the USPTO that Greenstein’s claims are directed to ineligible subject matter.

[T]he claims are directed to the abstract idea of allocating returns to different investors in an investment fund, a fundamental business practice that long predates computer technology.  Claim 1 involves storing information about each investor in a database, changing the investment returns assigned to at least two of them, and using the computer to keep track of the transfers between investors in the fund. This is simply the “automation of the fundamental economic concept,” OIP
Techs., of allocating investment returns to different investors within a common investment fund. We have long held that such basic management of business information is an abstract idea. As a result, we conclude that the Board correctly held that the claims are directed to the abstract idea of allocating returns in an investment fund.

Nor do the claims recite any further inventive concept. The claims only invoke a computer as a generic tool to store information and record transactions; in times past, these activities could have been performed with pen and paper. As the PTO points out, Alice clearly held that “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”

Read Greenstein.

Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions

Return Mail, Inc. v. United States Postal Service (Supreme Court 2019) [Return Mail, Inc. v. Postal Service]

In a 6-3 decision, the Supreme Court has decided the U.S. Government is not a “person” capable of petitioning for institution of AIA review proceedings.

Under the statute, a “person” other than the patent owner may petition for AIA Review (IPR, PRG, or CBM). See 35 U.S.C. 311 (for IPR).

In the case, Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its address processing patent and USPS petitioned for CBM review.   The PTO agreed that the patent claimed ineligible subject matter and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

The overall outcome here is that the Federal Government is more likely to have to pay royalty fees when it uses someone’s patented invention. 

The decision does not address an important background issue of the status of state and foreign governments. Also Companies are still people; but not monkeys.

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Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. See Rules are For Other People.  Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government.   The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

The dissent’s policy argument is hard to follow:

[T]he statutes help maintain a robust patent system in another way: They allow B, a patent holder who might be sued for infringing A’s (related) patent, to protect B’s own patent by more easily proving the invalidity of A’s patent. Insofar as this objective underlies the statutes at issue here, it applies to the same extent whether B is a private person or a Government agency.

Can someone help me out here on this one.

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A Functionally Claimed One-Step Method

by Dennis Crouch

Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR, SCT Docket No. 18-1515 (Supreme Court 2019)

Lilly’s new petition for writ of certiorari asks an easy question:

Whether a single-step patent claim that describes its point of novelty solely in functional terms violates the rule against functional claiming set forth in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

The question as posed is easy to answer.  Any patent claim that describes its point of novelty solely in functional terms is invalid violates the rule set forth in Halliburton.  Of course, Halliburton was abrogated by the 1952 Patent Act with the adoption of what is now known as 35 U.S.C. 112(f):

Element in Claim for a Combination. — An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Note here that the 1952 patent act only discussed the treatment of functionally claimed elements in “a claim for a combination.”  The real question here is whether Halliburton is still good law for “single-step patent claims.”  I’m betting the Supreme Court would say yes — A claim with a single element would be invalid if that element was claimed solely in functional terms.

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The petition reads a bit like a mystery novel.

A few months [after Lilly obtained FDA approval to market tadalfil for BPH treatment], respondent—a shadowy non-practicing entity based in Germany—filed the patent application that ultimately became the patent at issue here,
claiming priority to an application from 1997.

Here, UroPep’s patent covers a one step method of treatment/prophylaxis claim for BPH.  The one step is as follows:

administering to a person in need thereof an effective amount of an inhibitor of phosphodiesterase (PDE) V [excluding eight particular compounds].

Back in 1997, PDE V inhibitors where already known, and tadalafil in particular was known to be a PDE V inhibitor.  The 1997 priority document mentions ten different PDE V compounds, but does not mention tadalafil, and the claim excludes eight of those ten.

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Lilly’s question presented includes an important and disputed presumption — that the claim “describes its point of novelty solely in functional terms.”  In its decision, the district court held that the claimed step of administering a PDE V inhibitor was not wholly functional.

Even if means-plus-function analysis would apply to a product claim to “an inhibitor of PDE V,” it does not apply to a method claim reciting a method of administering that substance to a patient.

District Court Decision. The jury then awarded $20 million in damages. On appeal, the Federal Circuit affirmed without opinion (R.36) — setting up this current petition.


To be clear, the district court analysis here asks whether this fits under 112(6), not whether it comports with Halliburton.  That case states that a claim which “describes [its] most crucial element … in terms of what it will do, rather than in terms of its own physical characteristics … is invalid as a violation of Rev.Stat. § 4888 [indefiniteness].”  In General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), the court similarly wrote invalidated claims where the inventor “uses conveniently functional language at the exact point of novelty.”

There are several ways that these cases could be applied here.  Example: (A) Since PDE V inhibitors were already known, their existence was not the point of novelty.  Rather, the point of novelty is administering those known drugs in order to treat a particular condition — and that “administering” portion of the claim was not described functionally. (B) Another way of thinking here is that the novelty of the claim is administering a particular drug — but we don’t know the details of that particular drug is because it is described functionally.

Farmer-controlled Seeds

From today’s NYTimes Opinion Piece:

The knockout punch for farmer-controlled seed was the utility patent. In a landmark (and utterly bananas) decision in 1980, the Supreme Court ruled in favor of allowing patents on living organisms. It wasn’t long before the same protections were extended to crops. New advances in genetic engineering supported the argument, with companies claiming seeds as propriety inventions rather than part of our shared commons. Utility patents restricted farmers’ freedom to save and exchange seed and breeders’ right to use the germplasm for research. . . .

On his Oregon farm, Frank Morton produces 146 varieties of organic lettuce, 88 of which he created. His lettuces … are coveted by top chefs for their distinct colors, flavors, crispiness and butteriness. In three decades of breeding, he has never filed for a patent on his lettuce varieties, because he wants others to build on his work. “Patents are completely unethical. We all need access to traits. My varieties are probably being used to create new varieties right now. I love that.”

Dan Barber, Save Our Food. Free the Seed (June 7, 2019).

Plant Patents: This week, the USPTO issued a number of plant patents, which cover new varieties of asexually reproduced plants.

Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 161.  Like utility patents, plant patents last for 20 years from the filing date.  Plant patents are examined under the same provisions as utility patents: patentable subject matter, utility, novelty, obviousness, and disclosure (35 U.S.C. 101, 102, 103, and 112) with a bit of leeway definiteness (like design patents, the claims are generally directed to the plant as “shown and described”).

It is a bit tricky here to understand how self-injury prior art works with plant patents. Most new varieties take several years to cultivate to ensure that the the variety is distinct through successive generations of asexual propagation.  Growing of the crops (and presumably selling the fruit) would have the look of prior art on sale and public use activity (as well as being “otherwise available to the public).

Take PP30,551, covering a new apple variety that issued this past week. The patent states that the new variety was first observed in 2009 as a “spontaneous limb mutation” in an commercial orchard and then cultivated (by grafting) from 2011 until the application Australian priority filing date in 2016.

During examination, the examiner did require the applicant to provide any evidence that regarding the public nature of the invention from 2009-2011.

Going back up to the NYTimes article and the Lettuce farmer.  There are no plant patents on lettuce because lettuce is sexually propagated.  Lettuce can still be protected under the USDA administered Plant Variety Protection Act (PVPA) — also for 20 years.  So far in 2019, the USDA has issued 222 PVPA certificates — 5 of which cover new varieties of lettuce.  (Most of the new certificates have been issued to Monsanto).