Patently-O Bits and Bytes by Juvan Bonni

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Patent Law Year in Review

by Dennis Crouch

I just gave a short (45 min) talk about the past year in patent law. See the slides here: Patent Year in Review.  Key points:

  1. Director Review and Ex Parte Lobbying: Exercising the constitutional right to petition the government via shadow request for director review.
  2. Full Scope Enablement and Written Description: Increased focus by both the USPTO and the Federal Circuit.  Pending SCOTUS cases of Amgen v. Sanofi and Juno v. Kite.
  3. Patents as Commodity: Many folks are treating it as such.
  4. Broad IPR Estoppel: CalTech v. Broadcom/Apple.  Pending before the Supreme Court.
  5. Who is the Inventor: AI and Corporation as the inventor.  Thaler v. Vidal cert petition likely in January 2023.
  6. Eligibility: Tropp and Interactive Wearables are not great vehicles for Supreme Court review.  Hopefully IBM petitions its case from IBM v. Zillow.
  7. Patent Venue: Lots still happening in W.D.Tex.  IMO, parties arguing inconvenient venue don’t really care about convenience. Their basic concern is that they want to escape from Judge Albright’s courtroom and raise costs on the patentee.

A Mathematical Model of a Rake

Janke v. Vidal (Supreme Court 2023)

Some of you may know Oregon patent attorney Garth Janke.  Janke’s new petition for certiorari offers a philosophical inquiry into the scope of patent eligibility.  It all started with Janke’s invention of an improved leaf rake, which the USPTO found patentable. But, Janke also invented a method of manufacture and hit an eligibility roadblock in his attempt to patent aspects of that process.  The following three claims are representative:

  • 1. A leafrake head product, as described above.
  • 21. Installing a mathematical model of the same leaf rake head product defined in Claim 1 on a computer.
  • 26. Applying the mathematical model of Claim 21 on a conventional 3D printer to result in making the same leaf rake head product defined in Claim 1.

The USPTO found claims 21 and 26 directed to abstract ideas and that judgment was affirmed on appeal. Now, Janke has petitioned the US Supreme Court for certiorari with the following two questions:

  • Can a known patentable product become ineligible for patenting when it is claimed to be made by applying a mathematical model of the product on a 3D
  • Can it be too much patent “monopoly” to preempt (in practical effect) a mathematical model of a product, as no one is disputing follows from Gottschalk v. Benson, when it is known that it is not too much patent monopoly to pre-empt the real product itself?


Protective Orders and Appellate Jurisdiction

by Dennis Crouch

In the USA, civil litigation typically involves substantial discovery — with each party demanding to see the other side’s secrets.  In patent law, these secrets are often at the core of the business process: product development and manufacturing processes, key product details, detailed market and sales data, etc.  That information may be needed to resolve the infringement litigation, but you could imagine a competitor also using the information for a competitive advantage in the marketplace.

Protective Order: The common solution is a protective order with varying levels of confidentiality.  A number of districts have adopted an automatic protective order that basically fits this scheme.  As one example, the District of Utah Federal Courts automaticaly apply a Standard Protective Order in every case that allows parties to designate materials as CONFIDENTIAL INFORMATION – ATTORNEYS’ EYES ONLY.  The result of that designation is that the information can only be reviewed by attorneys (and perhaps their staff), and cannot be provided to any “competitive decisionmaker.”   In addition to avoiding improper competitive use of litigation, limiting the scope of access also reduces the likelihood that trade secret information will be inadvertently disclosed.

In this situation, parties regularly argue about whether certain in-house counsel can review the material. The recent interlocutory appeal in Modern Font Applications LLC v. Alaska Airlines, Inc., — F.4th — (Fed. Cir. 2022), highlights some of these issues; although the appellate court ultimately determined that it lacked jurisdiction to hear the appeal.

Unlike the competitor-litigation situation I highlighted above, Modern Font and Alaska are not competitors.  Rather, Modern Font is a patent assertion entity that makes its money through licensing IP rights.  Still, Alaksa balked at allowing Modern Font’s in-house counsel to review the source code it disclosed in discovery.  The Utah magistrate judge and district court agreed with Alaska that the Modern Font in-house counsel was a competitive decisionmaker and refused to modify the standard protective order to allow access.  On this point, the court concluded that Modern Font’s key business activity is IP licensing, and the in-house counsel is intimately involved with that activity.  In my view, the court’s interpretation of “competitive decisionmaker” does not seem to fit the limitation’s purpose because there was no sense that the in-house counsel would have any use for Alaska’s source code beyond the context of the litigation at hand.  Certainly, Modern Font is not about to begin competing with Alaska Airlines in any marketplace.  It looks to me that the Utah court used the “competitive decisionmaker” designation as a hook to limit code distribution to outside counsel in order to avoid inadvertent disclosure.  “The risk of inadvertent disclosure outweighs the risk of prejudice to Plaintiff.”

This is a pretty big deal in this case since the content of the code is going to determine whether or not Alaska infringes.  And now in-house counsel will be unable to inspect the accused specimin.  In this case, in house counsel is an experienced and skilled patent attorney who (1) was doing lots of the work in order to reduce litigation costs; (2) is intementely involved with parallel litigation and so has a very good understanding of whether a particular process is infringing; (3) is a key settlement negotiator; and (4) is the key monitor of outside counsel and their handling of the lawsuit.  Those activties will all be significantly hobbled by the protective order, especially considering that Modern Font’s outside counsel trial & appellate team consists of one person – Perry Clegg.

Modern Font appealed the order, but had a major procedural problem: the Final Judgement Rule generally bars appeals of interlocutory orders, such as a discovery order.  There are a number of important exceptions to the Final Judgment Rule:

  1. Partial Final Judgment: This comes up most often when a court issues a partial summary judgment, and the losing party is able to peal-off that portion for immediate appeal.
  2. Rulings on Injunctions: Under 28 U.S.C. 1292(a), a district court’s ruling regarding injunctive relief can be automatically appealed, even if the case is not yet final as a whole. In patent cases, these appeals typically involve preliminary injunctions.
  3. Appeal of Certified Question: Under 28 U.S.C. 1292(b), a district court can certify a question of law for immediate appeal. The appellate then has the discretion to decide whether or not to hear the appeal.
  4. Mandamus: The appellate court can issue an interlocutory writ of mandamus in situations where a district court has clearly abused its discretion causing a major injustice.  For historical reasons, this is not called an appeal but today is effectively treated as an appeal.
  5. Appeal under the Collateral Order Doctrine: This doctrine permits immediate appeal in a small subset of cases where the district court (1) conclusively decides an issue that (2) “resolve[s] important questions separate from the merits” and (3) the decision would be “effectively unreviewable on appeal from the final judgment in the underlying action.” Quoting Swint v. Chambers Cnty. Comm’n, 514 U.S. 35 (1995).

The collateral order doctrine is the only one of these five that fit the situation, and Modern Font appealed under the doctrine.

The Federal Circuit never reached the merits. In a split decision, the appellate court held that it lacked appellate jurisdiction.  In particular, the court concluded that the case failed to meet prong #3 of the Collateral Order Doctrine. I.e., the court concluded that the question (of whether in-house counsel should have access to the code) can wait until after final judgment.  On this point, the appellate decision is extremely weak since an abuse of discretion at the discovery stage will likely be seen as a non-appealable harmless error by the time of final judgment because it does not rise to a due process violation.  Still, the decision fits within the typical approach that appellate courts almost always refuse to hear collateral order appeals of discovery issues.

The majority opinion here was penned by Judge Cunningham and joined by Judge Reyna. Judge Newman wrote in dissent.  Her particular argument focused on the issue of appellate jurisdiction.

Judge Cunningham had concluded that the court lacked jurisdiction since Modern Font’s issue could wait until final judgment.  Judge Newman argued that the court generally has discretionary jurisdiction in situations like this, and the proper question is whether the court should exercise its discretion. “[O]ur authority to review this ruling is not a matter of appellate jurisdiction, but of appellate discretion. . . . [T]he question concerning this particular protective order is within our jurisdiction and subject to our discretion to review and resolve.” Newman in Dissent.


Influencing PTAB Judges

The US GAO (Gov’t Accountability Office) has released its report on the Patent Trial & Appeal Board — providing evidence to support the open secret that (1) political appointees have power to influence PTAB judicial decisions; and (2) most PTAB Judges feel their independence has been impacted by oversight practices. The report calls for increased transparency in PTAB Judicial oversight.

Read the report here:

The next report may need to move one level up and focus on outside lobbying of political appointees and its impact on USPTO decisionmaking.

Chair of the Intellectual Property Subcommittee

Most of the action in the House of Representatives begins in committees and subcommittees.  Over the past several terms, patent law legislation and USPTO oversight have primarily been handled by the Judiciary Committee, and particularly the Subcommittee on Courts, Intellectual Property, and the Internet, with the subcommittee chair often driving the discussion and proposals.

As Republicans take charge in the House, the new Speaker (along with the Judiciary Chair) will need to also name an IP Subcommittee chair.  There are two leading candidates:

  • Rep. Darrell Issa, a Republican from San Diego, California; and
  • Rep. Thomas Massie, a Republican from Northern Kentucky.

Both Issa and Massie are non-traditional judiciary committee members as neither are attorneys.  However, each has lots of experience in electronics and creating products, and with patents.  Issa asks great questions and is a powerful agency watchdog.  But, Massie is the one that truly believes in patents as an element of a strong libertarian property rights system.  In recent days, USInventor has been lobbying against Rep. Issa and has indicated to me that it would strongly support Rep. Massie.

I remember first hearing Rep. Issa’s voice on vehicle alarm systems back in the early 1990s saying: “protected by Viper, stand back.”  But, it is Massie’s patents that are particularly cool, most of which focus on haptic feedback mechanisms.


Are you Smarter than a Law Student? (Civil Procedure Edition)

The following comes from my 2022 Civil Procedure I Exam. – Dennis

Introduction: Dryson makes a “hair wand” that styles as it dries.  The company also owns a design patent covering the product. In 2021, three different competitors started selling similar products. Dryson is considering suing them all together in a single lawsuit to be filed W.D. Tex. Federal Court. The action would allege both (1) Federal Patent Infringement; and (2) Unfair Competition (based upon Texas state law).  One note, Dryson’s attorneys believes that it has a good claim of Patent Infringement against all three parties, but the Unfair Competition claim would only be filed against two of the defendants.

1. Do the rules permit Dryson to file a single lawsuit that includes all these parties/claims? (Is Dryson required to bring them all together in one action?)

More facts for next question: Dryson filed the action as noted above. One of the defendants (Amaxon) sells the accused product, but does not actually manufacture the product.  Rather, Amaxon sells a product manufactured by Revloon. As part of their deal, Revloon agreed to indemnify Amaxon for any losses if the product turns out to be infringing on intellectual property owned by a third party.

2. The rules of Civil Procedure provide different ways that Revloon could become part of the lawsuit. Identify them and explain how it would work.

More facts for next couple of questions: When Amaxon first started selling the Revloon product, the company conducted a “freedom-to-operate” search.  To this end, Amaxon hired an attorney (Crunch) to opine on whether the knock-off version infringed anyone’s intellectual property rights. Crunch hired a technical expert to search through patent office records. The technical expert created a Technical Report showing several patents and trademarks that were implicated. Crunch then used that Technical Report to draft an Opinion Letter stating that: “Amaxon is infringing Dryson’s IP rights.” Despite the opinion letter, Amaxon decided that the profits were too lucrative and decided to keep selling the product. All of this occurred before Dyson sued or threatened to sue.

Later, during litigation, Dryson submitted a request to Amaxon seeking discovery of documents held by Amaxon that relate to Dryson’s intellectual property.  Amaxon identified  the Technical Report and Opinion Letter as responsive, and added them to its Privilege Log. But, Amaxon indicated that it would not disclose their contents to Dryson.  Dryson is interested in the documents because proof of willful infringement can lead to treble damages.

3. After attempting to negotiate to resolve the discovery dispute, Dryson filed a motion to compel – seeking an order requiring Amaxon to turn-over the two documents. How should the Judge rule?  

4. Assume that the court granted the motion to compel and ordered Amaxon to provide the requested documents. Can Amaxon appeal that order?

5. The case is headed to trial. What information would help you know whether the court will hold a bench trial or a jury trial (explain)?

More facts for next question: Dryson’s product has a problem.  It burns hair. Russell Brand is one of the people injured. Brand is a famous and wealthy comedian.  Although he is English, the incident happened on a trip to Missouri and so he filed suit in St. Louis Federal Court.  Rather than suing just for himself, Brand filed a class-action on behalf of all people whose hair had been burned within the State of Missouri (but excluding anyone whose skin was burned).  The case seeks both an injunction (stop selling harmful products) and monetary damages for hair loss.  Brand’s attorney is a leading class-action litigator and Brand has promised to pay all legal fees from his considerable wealth in pursuit of justice.

6. Should the court certify the class?

USPTO Grants 2022

The US Patent and Trademark Office (USPTO) issued a total of 359,000 patents in 2022, including 323,000 utility patents. This marks the third consecutive year of decline in the number of issued patents. The 2022 figures show a 1% decrease from the previous year and a 9% decrease from the record-high numbers seen in 2019, as depicted in the chart below.


Genentech v. Sandoz: Patents claiming methods of managing side effects found invalid or not infringed

by Chris Holman

A branded drug manufacturer can sometimes extend its exclusive right to market a drug by patenting a method of using the drug and successfully suing a potential generic competitor for infringement based on the premise that an instruction or warning appearing on the generic product’s label will induce doctors and/or patients to infringe the patent. In some cases, a generic company can skirt infringement by means of a “skinny label” that carves out the patented method, a practice that is the subject of a pending petition for certiorari in Teva v. GSK, as discussed by Dennis in a recent post (see an earlier post for a more detailed discussion of Teva and skinny labels).

In Teva, the drug is approved for the treatment of multiple indications, two of which are unpatented, and the generic company attempted to avoid infringement by carving out (unsuccessfully, absent Supreme Court intervention) an indication covered by the patent.  In a case in which a patent covers a method of using the drug safely, as opposed to a new indication, the skinny label option is generally not available, and the generic product label will be required to closely track the label of the branded product. A remaining option for a generic company facing such a patent is to challenge it in a Hatch-Waxman proceeding and successfully argue that the patent claims are invalid and/or not infringed. An example of this appears in the Federal Circuit’s recent decision in Genentech v. Sandoz.

The active ingredient at issue in Genentech is pirfenidone, marketed by Genentech under the tradename ESBRIET.  Pirfenidone was first studied as an investigational new drug in 1973.   In 2004, the United States Food and Drug Administration (“FDA”) granted pirfenidone orphan drug status for treatment of patients with idiopathic pulmonary fibrosis (“IPF”), a chronic, irreversible lung disease.  In 2008 it was approved for the treatment of IPF in Japan under the trade name of PIRESPA.  Approvals in the European Union and Canada followed in 2011 and 2012, respectively.

When Genentech obtained approval to market pirfenidone (ESBRIET) in the U.S. in 2014, it was granted seven years of orphan drug exclusivity, which expired in 2021.  However, Genentech still holds 19 Orange Book-listed patents purportedly covering ESBRIET. The patents were issued between 2009 and 2014, and expire between 2026 and 2033.

Sandoz submitted Abbreviated New Drug Applications (“ANDAs”) seeking approval from the FDA to market a generic version of pirfenidone, to which Genentech responded by bringing a Hatch-Waxman suit, asserting that Sandoz’s generic product would induce the infringement of five of the Orange Book-listed patents.  The asserted patents do not claim pirfenidone itself, or the use of pirfenidone to treat IPF. Instead, the patents claim methods for managing certain side effects that can occur when using pirfenidone to treat IPF. The patents fall into two categories: the Liver Function Test (“LFT”) patents and the Drug-Drug Interaction (“DDI”) patents.

The LFT patents are directed to methods for administering pirfenidone to a patient who has exhibited abnormal biomarkers of liver function in response to pirfenidone administration. The asserted claims in these patents recite various options, including: (1) temporarily reducing the dose of pirfenidone and then returning to the full dose, (2) maintaining the full dose of pirfenidone, (3) reducing the dose of pirfenidone, (4) discontinuing pirfenidone for a week and then returning to the full dose, and (5) discontinuing pirfenidone for a week and then returning to a reduced dose.

The DDI patents are directed to methods for avoiding adverse interactions between pirfenidone and fluvoxamine, a drug that can interfere with drug metabolism. The three asserted DDI claims involve methods for administering pirfenidone to a patient taking fluvoxamine by either discontinuing fluvoxamine or modifying the dose of pirfenidone and continuing fluvoxamine.

The district court found the LFT patents invalid for obviousness over a 2005 publication reporting the results of clinicals trials involving the use of pirfenidone in patients with IPF (the “Azuma” reference), combined with the PIRESPA label and “known, standard medical practices.”  Prior to reviewing the district court’s analysis, the Federal Circuit noted its:

initial perception that, as the district court noted, varying doses in response to the occurrence of side effects would seem to be a well-established, hence obvious, practice. Thus, claiming it as an invention would appear to be at best a long shot. The district court gave it careful scrutiny, however, as do we.

The Federal Circuit then proceeded to affirm the district court’s obviousness determination, stating that:

The asserted claims in the LFT patents do not represent the invention of a new drug, nor do they recite a novel application of an existing drug. Instead, these claims recite adjusting doses in the presence of side effects, which clinicians routinely do, and which would have been obvious in view of the prior art.

As to the DDI patents, the district court found that although warnings appearing on Sandoz’s proposed label appeared to encourage, recommend, and/or promotes infringement of the patents, there was insufficient evidence of direct infringement. The district court stated that:

Genentech had not shown that any patient would be prescribed both pirfenidone and fluvoxamine such that the methods of the DDI patents would even be relevant. [E]ven if an IPF patient were prescribed fluvoxamine, a physician would likely choose a non-infringing treatment adjustment over any of the claimed methods.

The Federal Circuit affirmed, noting that the evidence of record included testimony from physicians that, in their decades of treating IPF patients, they had never prescribed pirfenidone to an IPF patient taking fluvoxamine; and were they to find themselves in that position, they would choose a noninfringing response—i.e., prescribing nintedanib instead (nintedanib is another drug approved by FDA for the treatment of IPF).

Genentech argued that if an IPF patient needed fluvoxamine, instead of a doctor prescribing nintedanib to treat their IPF, the doctor could prescribe pirfenidone and an alternative to fluvoxamine. However, the court credited Sandoz’s expert testimony to the effect that:

a pulmonologist prescribing pirfenidone would not be able to alter another physician’s prescription of fluvoxamine or take over that aspect of the patient’s treatment. Therefore, the pulmonologist would prescribe nintedanib to be taken in conjunction with the patient’s preexisting prescription of fluvoxamine.

This was a split decision, with Judge Newman dissenting without offering an opinion.

Supreme Court Patent Law 2023

by Dennis Crouch

Although somewhat slow thus far, there is some potential that 2023 will turn out to be a major year for Supreme Court patent law jurisprudence.

Full Scope Enabling Written Description: The court has granted only one petition, Amgen Inc., v. Sanofi, No. 21-757, with merits briefs due beginning December 27, 2022. Although Amgen presented two questions in its petition, the Supreme Court indicated its interest only in hearing the second:

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed  embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “ ‘time and effort,’ ”

Amgen Petition.  Enablement rejections continue to primarily be found in chem and biotech areas.  This case, for instance, focuses on a functionally claimed monoclonal antibody.  Still, the Federal Circuit has been clear in recent years that the “full scope” requirement applies to all tech areas and both to enablement and written description requirements.   The parallel full-scope written description issue is raised in the parallel case of Juno Therapeutics, Inc., v. Kite Pharma, Inc., No. 21-1566.  Juno’s petition argues that the Federal Circuit’s test goes too far by requiring the original patent filing “demonstrate the inventor’s possession of ‘the full scope of the claimed invention,’ including all ‘known and unknown.'”  Juno Petition.  The Court is holding conference on January 6, 2023 to consider the fate of Juno.  Although petition-stage briefing is complete in Juno, questions raised by Amgen and its amici will hopefully influence the court to simultaneously pick-up this Juno case.  USPTO written description rejections most often occur based upon late-stage claim amendments, and those can happen in any area of technology.  (Note here that often the result is refusal to permit a priority claim resulting in intervening prior art rather than a straight written description rejection.)

Six additional petitions remain pending. Of these, the Court has indicated at least some interest in five (three CVSGs and two additional requests for responsive briefing).  The sixth petition was only recently filed and so the court has not had the opportunity to indicate interest.

Eligibility: Similar to the enablement/WD cases, the eligibility petitions all come from patent holders who argue that their claims were wrongly invalidated.

  • Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281 (System for displaying media information while simultaneously experiencing the media content).
  • Tropp v. Travel Sentry, Inc., No. 22-22 (method of using a luggage lock with a master key held by TSA for airport security).

Both of these cases argue that the Federal Circuit has taken Alice Corp., too literally and in a way that is limiting the patentability of traditionally eligible subject matter.  Also in both, the Supreme Court has asked for views of the Solicitor General (CVSG) and will very likely await that filing before deciding whether to grant or deny certiorari. In my view, the Interactive Wearables claims are much stronger because they recite an arguably novel device. See, US9668016.  It will be interesting to see whether the SG splits hairs or simply refiles a version of its American Axle brief supporting certiorari.

Skinny Label: Although it involves a fairly narrow issue, the pending case of Teva Pharms. v. GlaxoSmithKline LLC, No. 22-37, has a good chance of being heard by the Court, although it may be better for Congress to work to resolve the pending questions.  The basic issue here involves a generic drug with several medical treatments.  Some of the treatments are covered by method-of-use-patents while other treatments are no longer patented.  Teva has been selling the drug for the non-patented uses, and the question is whether the FDA-approved drug label that purported to carve-out the patented actually encourages infringement.  Question presented:

If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?

Teva petition.  The Federal Circuit held that the drug label could induce infringement, even though FDA approved it.  In my view, the generic manufacturer here has a very strong estoppel defense because the patentee itself proposed the language used on the generic label.  That defense has not yet been considered at the district court.  As with the eligibility cases, the Supreme Court has asked for the views of the Biden Administration in this case as well.  Although the SG’s views have often been important in guiding certiorari grant/denial, it is unclear to me what influence Solicitor General Prelogar’s statements will have on the strongly conservative court.

Estoppel and Procedure: The remaining three pending petitions all relate to some form of estoppel or procedure.

  • Apple Inc., et al. v. California Institute of Technology, No. 22-203.  Following  an inter partes review, the petitioner is estopped from re-raising validity arguments that “reasonably could have been raised during that inter partes review.”  Apple lost the IPR against CalTech’s patent and wants to raise additional defenses in the district court litigation.  Apple has argued for a very narrow interpretation of the 315(e) estoppel while the Federal Circuit broadly interpreted the statute.
  • Jump Rope Systems, LLC v. Coulter Ventures, LLC, dba Rogue Fitness, No. 22-298. This case focuses on the doctrine of collateral estoppel and asks whether the Federal Circuit is correct that “a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”  In other parallel scenarios, there would be no collateral estoppel because the first decision (invalidity at PTAB) is judged with a lower preponderance-of-the-evidence standard as compared with the later district court case that requires clear-and-convincing-evidence.
  • Innovation Sciences, LLC v., Inc., No. 22-554.  This final asks the Supreme Court to reinvigorate its old precedent requiring contemporary corroboratory evidence in order to invalidate a patent based upon prior art.

These final three cases are all in the petition briefing stage.  They could still be heard and decided by June if the Court quickly grants certiorari.  However, it is increasingly more likely that the briefing would extend over the summer.

Three more petitions likely coming soon:

  • Thaler v. Vidal (patentability of AI-created inventions)
  • Novartis v. HEC. (Written description and changed panel composition)
  • Wakefield v. Blackboard (pro se; indefiniteness of means-plus-function claim for failure to disclose corresponding algorithm in the specification)

Reasonable Stories of Inventorship

by Dennis Crouch

Patents filed before March 2013 are examined using the pre-AIA rules of patentability, including 35 U.S.C. 102(f):

A person shall be entitled to a patent unless — (f) he did not himself invent the subject matter sought to be patented.

35 U.S.C. § 102(f).  Under this old law, an accused infringer was able to assert a defense of invalidity if the issued patent fails to name the correct inventors.

In 2020 Plastipak sued its competitor Premium Waters for infringing a collection of twelve related patents covering the “neck finish” of a plastic bottle. The neck-portion is more costly and the inventions here generally allow for a reduced neck size while still including tamper-evident formations. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021) reversed on appeal in Plastipak Packaging, Inc. v. Premium Waters, Inc., — F.4th — (Fed. Cir. Dec. 19, 2022).

The patents list two inventors, Richard Darr and Edward Morgan.  But, on summary judgment the district court concluded they should have listed a third inventor, Alessandro Falzoni.  Usually it is no problem for a company to add additional inventors – even after the fact.  Here, though Falzoni was not a Platipak employee or subject to any agreement to assign rights, and so shared inventorship would mean shared ownership with an industry competitor.

What happened: Falzoni designed an improved neck while working for his Italian packaging company SACMI.  SACMI then proposed the design to various US parties, including Plastipak.  As part of that process, Falzoni emailed a 3D model of the design to Darr.  Darr responded with a finished drawing using the Falzoni model; and Falzoni found those drawings acceptable.  Darr asked for SACMI exclusive rights to the design, but, the parties could not agree on a deal. Eventually, Plastipak ended up filing for its own patent rights and manufacturing using alternate sources.

Taking all this in, the district court concluded that Falzoni had contributed significantly to the claimed invention and therefore should have been listed as an inventor. Since he was not listed, the claims were all invalid. Plastipak Packaging, Inc. v. Premium Waters, Inc. (W.D. Wis. Aug. 19, 2021).

The figure above compares the Falzoni design with that found in Plastipak invention (Fig 2).  The prior art being overcome is found in the middle (Fig 1).

In making its ruling, the district court focused on three primary factors: the “striking similarities” between Plastipak’s engineering drawings and the Falzoni design; the collaboration between Falzoni and Darr at arriving at the invention; and the  financial motivation to exclude Falzoni that made an “honest mistake” unlikely.

= = =

On appeal, the Federal Circuit has vacated, holding that the case was not quite as open-and-shut as the district court claimed.  Although the evidence seems to suggest Falzoni is an inventor, the patentee has a right to a jury trial on this issue because there remain disputed issues of material fact.  In particular, the size of the neck appears to be the critical improvement here, but the patentee raised disputes about the size of Falzoni’s proposed neck.

Ultimately, we agree with Premium Waters that it presented sufficient evidence from which a reasonable factfinder may find clear and convincing evidence that Falzoni was a joint inventor of the X Dimension Patents. Such a finding could be grounded in Falzoni’s testimony, as corroborated by the 3D model and the testimony of another SACMI employee, as well as the arguably suspicious timeline, in which the collapse of Plastipak’s efforts to license SACMI’s ML27 design was quickly followed by Darr and Morgan filing their patent application. Such a finding could lead to the conclusion that the X Dimension Patents are invalid for failure to name Falzoni as an inventor. Crucially, however, nothing in the record requires a reasonable factfinder – particularly one who is resolving all fact disputes, and drawing all reasonable inferences, in Plastipak’s favor – to make these necessary findings. Accordingly, summary judgment of invalidity is not warranted.

Slip Op.

The court goes on to hold that “overwhelming evidence” of joint inventorship is not necessarily enough for summary judgment.  The question instead is whether a reasonable juror could find independent inventorship.  The appellate court also noted that the district court erred in failing to believe the Plastipak testimony.  While the appellate court appeared to agree that a Plastipak’s story of independent invention appeared concocted, the issue of credibility is for the jury to decide.

On remand, the case might still not get to a trial — the district court had not decided all of the summary judgment motions because it found this one dispositive.

Question for you: How do you think a court should handle a similar inventorship issue post-AIA?

= = =

Christopher Dillon (Fish & Richardson) argued for the patentee Plastipak.  Jeffrey Costakos (Foley & Lardner) represented Premium Waters. Both lawyers led their respective trial and appellate teams.

Smart Wallets and Measuring Credibility of the Prior Art

by Dennis Crouch

“Smart wallets” are growing in popularity.  I have one branded FIDELO with a  carbon-fiber case that claims to block scammers trying to read the chip on my credit card.  I think of these generally as “smart wallets” but I learned today that the company Storus has a registered trademark for that term. What should I call them now?

Mosaic Brands, Inc. v. Ridge Wallet LLC, — F.4th — (Fed. Cir. 2022).

In 2020, Storus (AKA “Mosaic Brands”) sued Ridge Wallet for both patent infringement (US7334616) and product-design trade dress misappropriation.  Ridge counterclaimed with its own patent infringement contentions (US10791808, Fig 11 shown above).  The district court denied all the claims pre-trial.

  • Summary Judgment: Mosaic ‘616 patent was not infringed based upon a somewhat narrow claim construction.
  • Summary Judgment: Mosaic lacked product design trade dress rights.
  • Summary Judgment: Ridge ‘808 patent was invalid as anticipated.

On appeal, the Federal Circuit has sided with Ridge: Affirming that Mosaic has no case and vacating the anticipation summary judgment in Ridge’s favor.  On remand, the case should proceed to trial on the infringement counterclaims Ridge brought against Mosaic.

Is it Prior Art?: From a patent law standpoint, the most interesting part of the appellate decision focuses on anticipation and the basic patent-law game show question “Is it Prior Art?”

The purported prior art to the Ridge patent is a product manufactured and sold by Mosaic at a trade show.  The district court compared the asserted claims of Ridge’s US10791808 against the Smart Money Clip II (SMCII) and found each and every limitation embodied by the product. Mosaic presented testimony of its founder (Kaminski) that the SMCII product was on-sale more than 1-year before Ridge’s application filing date.  Mosaic also corroborated that testimony with invoices showing the SMCII was sold at a trade show in 2011.

On appeal, the Federal Circuit concluded that the evidence presented was sufficient for a jury to find anticipation.  But, the procedural problem here is that the district court superseded the jury and instead decided the case on summary judgment. In particular, the jury must decide whether the admittedly biased testimony is credible and whether the documents are authentic, taking into account the high standard of clear and convincing evidence.

While the District Court correctly concluded that the evidence was sufficient to satisfy the corroboration requirement, the District Court erred by proceeding to grant summary judgment of anticipation. Finding that Mosaic presented legally sufficient evidence to corroborate the inventor’s testimony does not necessarily mean that Mosaic’s evidence would also lead every reasonable factfinder – taking the evidence in the light most favorable to Ridge, as the non-moving party – to find by clear and convincing evidence that the SMCII does, in fact, predate the ’808 patent’s critical date. . . . Before the anticipation issue presented in this case can be resolved, a factfinder will have to evaluate the credibility and persuasiveness of the evidence of corroboration and make its own judgment as to whether Mosaic has proven, clearly and convincingly, that the SMCII is prior art to Ridge’s ’818 patent.

Slip Op.  To be clear, this opinion does not shut the door on anticipation summary judgment. But, for over 150 years the courts have hotly questioned and challenged  the credibility of self-serving prior art that first comes to light during the litigation.  The gold standard is always published documents (including patents and patent applications).

A patentee wanting to avoid summary judgment on witness credibility or document authenticity issues will need to provide some showing of a material dispute that creates reasonable doubt. But, because the patent challenger has such a strong burden of proof, the patentee’s showing does not require the presentation of contradictory evidence. Rather, it can be sufficient to simply present logical holes sufficient to create some reasonable doubt.

The District Court appears to have based its summary judgment decision, at least in part, on its belief that Ridge produced no affirmative evidence challenging Kaminski’s testimony. This was not consistent with our precedent, which holds that affirmative evidence is not always necessary in order to create a genuine dispute.

Slip Op.  Here, the patentee argued (1) the documents could have easily been backdated; (2) a lack of images of the SMCII from 2011; (3) a lack of any further documented sales; (4) a lack of meta-data associated with the provided documents showing their provenance; (5) Kaminski’s financial motive to misrepresent the information; and (6) the absence of any third-party corroborating evidence.  The patentee also presented some affirmative evidence — testimony that nobody had heard of Mosaic until 2019.  The appellate panel found these holes sufficient to create a dispute of material fact and thus avoid summary judgment:

Under these circumstances, Ridge is entitled to an opportunity to cross-examine Kaminski, in order to allow the factfinder to evaluate his credibility and the related issue of the authenticity of the corroborating documentary evidence. If the factfinder were to find that Kaminski is not credible, and that the documents on which Mosaic relies are not authentic, the record would then lack the requisite corroborating evidence and Mosaic would be unable to meet its clear and convincing burden.

Slip Op.  As an aside, I’ll note that that decision relates directly to the recent petition for writ of certiorari filed in Innovation Scis., LLC v., Inc. (Supreme Court 2022)

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I won’t go into this here, but the Federal Circuit opinion includes a discussion of product design trade dress. The court affirmed that the trade dress rights are invalid because the product design is functional.

Anticipation for Dummies

by Dennis Crouch

My personal name is fairly unique. But, there are several of us, including the most famous Dennis Crouch, the world’s most famous folk music double bassist. The photo below shows Dennis Crouch performing alongside Allison Kraus and Robert Plant. Sometimes folks get confused about who-is-who, but we quickly figure it out.  And, in our world of easy data-tracking, some folks prefer having common names to help avoid undue detection.  There is no central naming authority and so any attempt to ensure unique names would likely fail.

RFID chips are little electronic identification tags and, like names, RFID chips work best when given a unique serial number.  For commercial products, a common approach is to have a three-part ID number that identifies the brand, the class of goods, and the particular product.  The hardware does not have any anti-authoritarian bias, but it is still a tricky process to ensure uniqueness – especially in a distributed global system.

Adasa Inc. v. Avery Dennison Corp., — F.4th. — (Fed. Cir. 2022).

Adasa’s U.S. Pat. No. 9,798,967 facilitates unique RFID serial numbers, allowing them to be created on-demand and without additional authorizations or queries to some central authority. The basic solution here: some RFID authority allocates a block of serial numbers to the RFID creator who then gives each RFID being created a unique serial number taken from the block.

In 2017, Adasa sued Avery Dennison for patent infringement. At the close of discovery, both sides made several summary judgment arguments:

  • Avery Dennison moved for summary judgment of non-infringement — DENIED.
  • Avery Dennison moved for summary judgment of ineligibility — DENIED.
  • Adasa moved for summary judgment that its claims were not-invalid as anticipated/obvious (vis-a-vis prior art suggested by AD). — GRANTED.
  • Asada moved for summary judgment that its claims were infringed — GRANTED IN PART (District court held claim 1 was infringed).

Thus, at the summary judgment (pre-trial), the district court completely sided with the patentee as to claim 1, finding it infringed and not invalid.  All that was left for claim 1 was a trial on damages.  At that point, other claims were still pending, but the patentee successfully requested that those claims be dismissed without prejudice so that the case could efficiently move forward.  At trial, the jury returned a verdict of 0.45 cents per chip — which added up to $35 million.   The district court also added a $20 million sanction against the defendant for discovery abuse. (AD had failed to disclose more than two-billion RFID chips it had sold until a post-trial audit revealed their existence).

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As I was reading this case, I was sure that the Federal Circuit was going to flip the whole table based upon eligibility.  But no, the Federal Circuit affirmed the district court’s conclusion that the claims are directed to a “hardware-based RFID serial number data structure designed to enable technological improvements to the commissioning process.”  It certainly helped the patentee here that Chief Judge Moore was on the panel, but Judge Hughes and Stark also signed-on to the opinion.

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Patentee did not fare as well on anticipation/obviousness. Defendant had relied upon “RFID for DUMMIES” as the key prior art.  That reference included a description of how ID allocation worked when the central server was unavailable. And, the court concluded that a reasonable juror “could find RFID for Dummies discloses each element of claim 1.”

RFID for Dummies describes a methodology for ensuring the assignment of unique serial numbers to RFID tags when a central numbering authority is inaccessible or impractical, for example, when a company utilizes multiple manufacturing lines to produce the same product. To decentralize and make feasible the allocation of unique serial numbers across all manufacturing lines, RFID for Dummies discloses an “intelligent hierarchy” in which “a range of serial numbers for each product is allocated to each manufacturing facility.” “Within a facility, a range of numbers from those allocated to the facility is allocated to each line” thereby effectively subdividing the serial number “into a facility number, line number, and subserial number in which the allocation hierarchy is maintained between facility number and line number.”

According to the court, this description could be read to be the same thing that is claimed. In other words, this is an issue for the jury.  Although the focus was on anticipation, the Federal Circuit here also vacated the single reference summary judgment of non-obviousness.  (The court also concluded that a second reference also could reasonably be seen as anticipatory and that summary judgment had been inappropriate).

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On remand, the court will likely hold a new trial on anticipation/obviousness. If the claims are still valid then the damages verdict should stand.

The defendant on appeal argued that the judge should have asked the jury for a lump-sum payment rather than only a per-piece royalty amount.  But, during trial the defendant never advanced a lump-sum damages theory.

It may be that in some circumstances licenses, standing alone without supporting lay or expert testimony, can support a lump-sum instruction. This is not such a case. Here, Avery Dennison clearly and repeatedly argued against the relevancy of the [lump sum] licenses upon which it now relies. Its damages expert opined at least two of the three licenses were not helpful to understanding the value of a hypothetical negotiation. . . . Avery Dennison instead focused its damages theory at trial on design-around costs, which it presented to the jury as a starting-point in a hypothetical negotiation for a running royalty, not a lump-sum payment.

Where Avery Dennison failed to present a lump-sum damages theory to the jury and, moreover, actively undermined the very evidentiary basis it now contends required a lump-sum instruction, the district court did not err in declining to include such an instruction. Further, because there was insufficient evidence to warrant a lump-sum instruction, the district court appropriately declined to include a lump sum option on the verdict form.

Slip oP.

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Sanctions: After trial had completed, Avery Dennison disclosed that it had sold more than 2-billion additional RFID tags.  The district court at that point sanctioned the company an additional .2 cents per infringing tag. The district court additionally noted Avery Dennison’s bad behavior throughout the litigation process: “patent and continuous disregard for the seriousness of this litigation and its expected obligations.” On appeal, the Federal Circuit found no general problem with awarding sanctions or the process involved.

However, the Federal Circuit did find fault with the district court’s sanction calculation. In particular, the district court sanctioned the defendant 0.2 cents for every infringing tag. It should have imposed the penalty only on the 2 billion that were disclosed late in the process. That would have totaled out to ~ $5 million  sanction instead of ~ $20 million.

On remand, the district court can re-institute the sanctions.  The appellate panel recognized that a new validity trial will be ongoing, but noted that the sanctions award can persist even if the defendant ultimately wins the new trial.

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Derek Shaffer (Quinn Emanuel) handled the appeal for Avery Dennison with Robert Greenspoon (Dunlap Bennett) for Adasa.

Welcome Vaishali Udupa; New Commissioner of Patents

by Dennis Crouch

For most of US history, the Commissioner of Patents was appointed by the President and led the USPTO.  Things shifted in the 1990s with the creation of Director and Deputy-Director positions at the top.  But, the Commissioner remains vitally important and manages a workforce and throughput that is larger than ever.   Earlier in 2022, Commissioner Drew Hirshfeld stepped down after a long USPTO career (joining the Schwegman law firm). His immediate replacement, Andrew Faile, has been acting Commissioner, but Andy is also retiring after a really successful USPTO career.  Now, Dir. Kathi Vidal has announced their replacement — Vaishali Udupa. Ms. Udupa has been working in patents since she graduated from American Univ Law in 2000: First at Pennie & Edmonds before its breakup; then at Jones Day for a decade as a patent litigator; and finally at Hewlett Packard for the past decade as Associate General Counsel for litigation.  Like Dirs. Vidal and Lee, Udupa is a longtime member of ChIPs. Throughout her career, Udupa has stayed primarily in the Washington DC area.

The law calls for the Secretary of Commerce to appoint a Commissioner who is (1) a “United States [citizen] with demonstrated management ability and professional background and experience in patent law.”   Although politics are involved in the appointment of a Commissioner, this is a real job of day-to-day management of an intellectual production line involving 10,000+ patents employees.  It is a 5-year appointment.

According to the USPTO, Ms. Udupa will join the USPTO on January 17, 2023. Congratulations Vaishali Udupa on the new position and to Andrew Faile on a really impactful career.

The appointment of a USPTO outsider to the Commissioner position is quite unusual, and I expect that the move represents a major commitment to change at the USPTO with an ongoing focus on diversity and inclusion within our intellectual property system.  The move comes with some risks as Udupa confronts her management team who are likely to respond with “that is how things have always been done.”

Throwing some Chill back on WDTex

by Dennis Crouch

I posted yesterday about changes in W.D.Tex. distribution of patent cases under the lead “Waco may be Heating Up Again this Winter.”  I noted a new order from Judge Garcia that seemed to implicitly distribute Waco patent cases back to Judge Alan Albright.  I also noted initial statistics for December 2022 showing the vast majority of Waco cases being assigned to Judge Albright.  The only exception so-far in December is a pair of related cases assigned to Judge Yeakel.

This post pulls-back a bit. I dug into the data a bit further, with the following results:

  • 18 cases filed in the Waco Division of W.D.Tex.
  • 13 of these have been assigned to Judge Albright. BUT, all 13 are directly related to a case either currently before Judge Albright or one that was dismissed within the past year.
  • 2 of the cases were assigned to Judge Yeakel; and 3 of the cases are unassigned.  None of these appear related to a case currently before Judge Albright.

What all this means: (1) there is still some amount of distribution ongoing; and (2) we don’t know what is really happening from any official position. The key takeaway then is that we’ll need to wait and see what actions new Chief Judge Moses takes.

In case numbers overall, For December 2022 WDTex remains the most popular district but is closely followed by NDIll and NDCal.

One interesting case to watch is Apple Inc. v. AliveCor, Inc., Docket No. 5:22-cv-07608 (N.D. Cal. Dec 02, 2022).  AliveCor appears to be winning its case in the ITC showing that the the Apple Watch is infringing. Now, Apple has sued AliveCor, alleging that the startup’s wearable heart monitors infringe Apple patents. [APPLE ALIVECOR complaint].

Waco may be Heating Up Again this Winter

by Dennis Crouch

Waco Texas has been a hot spot for patent infringement litigation over the past several years.  We all love “Fixer Upper”  and Baylor.  But, the Waco difference for patent cases is Judge Alan Albright. Judge Albright is a former patent litigator appointed to the bench by President Trump in 2018.  Everyone loves having a patent-knowledgeable judge and there are no  clear statistics suggesting that Albright unduly favors patentees.  However, Judge Albright is now predictable in his approach and has a “get-the-case-to-trial” focus that plaintiffs love.  Defendants often prefer to spend more time on dispositive motions — hoping to throw-the-case-out before trial.  In addition Defendants often prefer to stay litigation pending patent office IPR review.

Judge Albright is the only Federal judge in Waco, and that has made a big difference.  And, Under traditional WDTex rules an action filed in Waco will be heard by Judge Albright.  This is quite different from other courts that have multiple judges with random assignment of new cases.

Garcia Order I: Back in July 2022, Western District of Texas Chief Judge Orlando Garcia issued a major order shaking up the rules of judicial assignment.  In particular, the order states that new patent cases filed in Waco will be randomly distributed among 12 different WDTex judges.  This change somwhat slowed down new-case filing in Waco.  Cases have been distributed among the judges, although Judge Albright continues to receive about half of the new cases.  Most of the rest have been assigned to Judges Judge Pittman, Garcia, Yeakel, and Rodriguez.

Garcia Order II: In November 2022, Judge Garcia took Senior Status and stepped down from his role as Chief Judge. A few days before stepping down, Garcia issued a new order that does not expressly mention patent cases, but does indicate that Judge Albright will be assigned “[a]ll cases and proceedings in the Waco Division.”  On its face, the new order seems to overrule Order I, but that remains unclear.  The New Chief Judge Alia Moses will need to clarify.  I will note that some of the cases assigned to Chief Judge Moses under the Garcia I order have already been transferred back to Judge Albright.

The Garcia II order took effect on December 1, 2022.  Since then, 18 new patent infringement lawsuits have been filed in  W.D.Tex. (Waco) (according to PACER) with the following assignments:

  • 13 are assigned to Judge Albright
  • 2 are assigned to Judge Yeakel (these are related, both filed by Vilox).
  • 3 are not yet assigned to any judge.

These results suggest Garcia II has changed the game and that Judge Albright will be receiving the bulk of the patent docket going forward.  We’ll be looking for a more positive statement from the court, but those tend to be rare. 

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Seriously, I don’t have HGTV at my house, but whenever we travel, my wife and I often just lay in the big hotel bed and watch Fixer Upper.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

US Utility Patent Application Status.

by Dennis Crouch

This updated chart groups patent applications by filing date and then divides each group into three categories: Patented, Abandoned, and Pending.  Some insights from the data:

  • The grant rate rose substantially from 2011 to 2018. This may be due to the movement among patent attorneys to draft more technical and detailed patent applications. I have not yet attempted to measure whether the increase marks a new level of patent application complexity. (Remember, I’m comparing applications filed in 2011 to those filed in 2018).
  • Abandonments typically occur after multiple rounds of prosecution. Thus, there are only a few abandonments in applications pending less than three years.  (Look at the applications filed in early 2021).
  • Less than 10% of cases are still pending after 4-years of prosecution, with most issuances happening within 30-months of filing.

For data consistency, I used only published applications as I generally cannot see abandoned/pending data for unpublished applications.  In addition, some of the issued patents have already expired after failing to pay the maintenance fees. Those expired patents were categorized in this chart as patented.


Contract vs Copyright and Crowdsourcing of Lyrics

I previously wrote about the copyright preemption case of ML Genius v. Google  that is pending before the Supreme Court. The court took a step toward granting certiorari with its request for the Government to file an amicus brief (CVSG).  Genius doesn’t  hold copyright to the song lyrics that it has on its website, but it does (arguably) require users of its site to contractually agree not to copy and use those lyrics for commercial purposes. Google scraped the site and (apparently) is using the lyrics for its own commercial gain.  The appellate court sided with Google, holding that the Copyright Act preempts a breach-of-contract claim because it is “equivalent to … exclusive rights within the general scope of copyright,” 17 U.S.C. § 301(a). Other circuits have held that similar contracts are not preempted by the Copyright Act.

Question presented: Does the Copyright Act’s preemption clause allow a business to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?

Petition.  The SG’s office already has three other CVSG briefs that it should now be drafting in patent cases:

  • Tropp v. Travel Sentry (eligibility)
  • Interactive Wearables v. Polar Electro (eligibility)
  • Teva v. GSK (FDA/Patent skinny label infringement)

Certiorari tends to be much more likely if the SG supports the case.  That said, the  SG did not support the one patent case granted certiorari this term.  Amgen v. Sanofi (enablement).

Prosecution Suspended

Did you know: A few thousand patent applications are currently lying dormant at the USPTO with their prosecution “suspended” under 37 C.F.R. 1.103(c)/(d).  Part D allows allows for a patent applicant to defer examination for up to 3-years from the application effective filing date. To take advantage of the deferral, the filing and publication fees must be paid; the case must be in condition for publication; and have no issued office actions.  Part C suspends examination following the filing of an RCE for up to three-months.

One company – Intel – is responsible for the majority of applicant-requested suspended prosecution, with 2000+ applicants pending in suspended form. FujiFilm and Lyft are the two other big users, each with 100+ pending cases.

Would your clients benefit from a little bit more time?