The chart below shows patent application status for published utility patent applications as of Oct 27, 2019 grouped by patent application filing date.
From the chart – About 95% of patent applications filed Nov 2014 (5 years ago) have been disposed-of (either issued or abandoned). Those 5% remaining are likely to be associated with an appeal or multiple RCE filings.
New PatentlyO Law Journal article by Jasper L. Tran (Jones Day) and J. Sean Benevento. This article builds on Mr. Tran’s prior work Two Years After Alice v. CLS Bank. 98 Journal of the Patent and Trademark Office Society, 354 (2016).
Abstract: This paper updates the statistics on the five years after Alice v. CLS Bank and discusses 19 Federal Circuit cases (including their exemplary patent claims) that found eligibility upon Alice challenges. The Alice invalidation rate at the Federal Circuit and district courts has lowered over time, averaging cumulatively 56.2% at its near-five-year mark.
From the Introduction:
Alice Corp. v. CLS Bank Int’l (commonly known as “Alice”) is no stranger to IP readers and needs little introduction. Briefly, the Supreme Court five years ago decided Alice and raised the patentability standard for (mostly) computer-implemented inventions under 35 U.S.C. § 101, such that implementing an abstract idea on a computer is insufficient to transform that idea into patentable subject matter. At the time, a Supreme Court justice even considered Alice a “minor case” in following its prior § 101 framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc. two years earlier.
But the reality has been the opposite – Alice has been a major force in patentability determinations under § 101.
For example, in the first month and a half following Alice’s release, 830 patent applications were withdrawn from the USPTO. At Alice’s one-year anniversary (June 19, 2015), lower courts (namely district courts, the Patent Trial and Appeal Board (“PTAB”), and the Federal Circuit) applied Alice to invalidate or reject software-based patent claims at an average invalidation rate of 82.9%: 69.7% at the district courts and 94.1% at the Federal Circuit. At Alice’s two-year mark (June 19, 2016), the numbers were slightly lower, at an average cumulative invalidation rate of 78.2%: 66.5% at the district courts and 92.3% at the Federal Circuit. Near the five-year mark (as of March 1, 2019), the cumulative numbers, as shown in Table 1, were even lower (though still the majority); the average cumulative invalidation rate was 56.2%: 53.7% at the district courts and 76.3% at the Federal Circuit.
Read Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019).
Prior Patently-O Patent L.J. Articles:
by Dennis Crouch
We have a more complete post coming on Monday, but wanted to highlight Arthrex v. Smith & Nephew (Fed. Cir. 2019). In Arthrex, the Federal Circuit held that the PTAB Judge (APJ) appointments process “violates the Appointments Clause, U.S. Const., art. II, § 2, cl. 2.” In particular, the court held that APJs are “principal officers” and thus require appointment by the President rather than merely the Secretary of Commerce. The court cited and relied upon Prof. John Duffy’s paper that started this whole process: John F. Duffy, Are Administrative Patent Judges Constitutional?, 2007 Patently–O Patent L.J. 21, 25 (2007) (concluding that administrative patent judges are officers as opposed to mere employees).
In the case, the court also provided a remedy — invalidating a portion of the statute that limited the PTO’s ability to remove APJs from the board. By making removal easier, the PTAB Judges are then re-classified as inferior officers — and thus were properly appointed.
by Dennis Crouch
Liqwd, Inc. v. L’Oreal (Fed. Cir. 2019) [CAFC Decision][PTAB Decision]
Liqwd’s U.S. Patent 9,498,419 covers a method for bleaching hair that includes maleic acid (0.1% – 50% by weight) alongside a bleaching formulation and without any hair coloring agent. The maleic acid apparently protects the hair from some damage caused by the bleaching agent. L’Oreal filed a post grant review (PGR) challenge soon after the patent issued, and the PTAB eventually concluded that the claims would have been obvious.
On appeal, the Federal Circuit has vacated and remanded — holding that the Board did not give proper weight to evidence of copying by L’Oreal in its obviousness analysis.
The gory setup is that Liqwd’s founder Dean Christal and the ‘419 inventor (Eric Pressley) met with L’Oreal folks in pursuit of a deal; provided L’Oreal with a copy of the then-confidential parent patent application; and disclosed to L’Oreal various technical details — all subject to a non disclosure agreement. Although L’Oreal has argued that it independently invented its product, the PTAB found copying — that L’Oreal’s use of maleic acid was “because of L’Oreal’s access to Liqwd’s confidential information.”
To be clear, L’Oreal did not copy Liqwd’s product (Liqwd didn’t have one at the time covered by the patent), but rather copied (allegedly copied) Liqwd’s technology after obtaining a copy of its yet-unpublished patent application.
Copying by a competitor is a classic objective indicia of nonobviousness. As the story goes, if the innovation were obvious, the competitor wouldn’t have needed to copy. Here, however, the PTAB ruled that this copying didn’t count because ““copying
requires the replication of a specific product” and “cannot be established without showing that Petitioner copied a patented product, rather than Patent Owner’s technology generally.” PTAB Final Written Decision, quoting Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004). On appeal, the Federal Circuit has rejected that analysis — narrowing its interpretation of Iron Grip to the following one-liner:
In other words, more is needed than merely showing that similarity exists between the patent and the competitor’s accused product.
Liqwd. The basic copying-of-a-product focus was designed by the court to avoid an undue overlap between proof of infringement and the nonobviousness secondary indicia of copying. Copying is often proven by the combination of access + resulting similar product, the court felt that the doctrine could get out of hand if proof of infringement + access to the patent document were sufficient. In Liqwd, the court looked back to its prior cases on this issue and summarized:
Our primary concern in each of these cases has been to avoid treating mere infringement as copying simply because the claims of a patent arguably read on a competitor product.
Id.
Evidence of Access vs Evidence of Copying: In Liqwd, the court found a different situation than many prior cases because the copying was not based simply upon access and resulting product, but instead found “evidence of actual copying efforts.” When such evidence exists, “that evidence is always relevant.”
The evidence presented by Liqwd shows more than merely a “competing product that arguably falls within the scope of a patent.” Wyers. Determining that this evidence is relevant does not implicate our concern with avoiding every infringement suit turning into a confirmation of the nonobviousness of a patent. Because this evidence of actual copying efforts is relevant, the Board erred by disregarding its finding.
Id. On remand, the PTAB will now need to give weight to the copying in the obviousness analysis and ask whether that shift is enough to tip the scales in favor of patentability.
= = = = =
by D.Crouch
The Senate IP Subcommittee heard testimony today on the topic of patent quality:
Promoting the Useful Arts: How can Congress prevent the issuance of poor quality patents?
Testimony from PTO Commissioner Drew Hirshfeld; Professors Polk Wagner, Melissa Freeney Wasserman, Colleen Chien; and Former PTO Acting Driector Teresa Stanek Rea. Sen. Tillis began with his remarks with a statement that about the “madness” of patent eligibility, including the Chamberlain case that found a garage door opener to lack patent eligibility. “No one can blame the USPTO” for this situated by the courts. That said, Sen. Tellis is looking for a consensus option.
In his testimony, Commissioner Hirshfeld began with an interesting statement on new examiner time allotment program:
Starting this month, all examiners began receiving additional examination time tailored to specific attributes of an application, including the overall number of claims, the length of the specification, and the number of pages in any filed information disclosure statements. Also starting this month, examiners with the least amount of examination time in our production system also began receiving additional time to align their time allotments with the requirements for current patent examination.
Beginning next fiscal year, we will utilize an updated process for assigning patent applications to patent examiners. This process will automatically match each application to the examiner best suited to examine the application, taking into account the complete technological profile of the applications, the work experience of each patent examiner, and the workload balancing needs of the agency.
Prof. Wagner:
One lesson here, I think, is to tread quite carefully when seeking to improve patent quality. The small firms and individuals who desperately need the patent system to bridge the gap between great idea and successful technology can be (and often are) disproportionately impacted by reforms that are of little consequence for large companies. . . . .
Many patentees have incentives to make their patent documents as unclear as possible.
Prof. Wasserman:
Indeed, invalid patents are unnecessarily reducing consumer welfare, stunting productive research, and discouraging innovation. . . . Patent Office’s fee schedule should be restructured to minimize the risk that the Patent Office’s revenues will be insufficient to cover its operational costs and to diminish the Agency’s financial incentive to grant more patents when revenues fall short.
Ms. Stanek Rea:
But we do not want to rely exclusively on reviewing the quality of a patent only after it has issued. We also need to focus on front end modifications during examination.
Prof Chien:
[Congress should] encourage and expect the USPTO to engage in bold, persistent, and rigorous policy piloting and evaluation.
[A]s to the supposed public use of Wyeth’s machine before his application for a patent. To defeat his right to a patent, under such circumstances, it is essential, that there should have been a public use of his machine, substantially as it was patented, with his consent.
If it was merely used occasionally by himself in trying experiments, or if he allowed only a temporary use thereof by a few persons, as an act of personal accommodation or neighbourly kindness, for a short and limited period, that would not take away his right to a patent. To produce such an effect, the public use must be either generally allowed or acquiesced in, or at least be unlimited in time, or extent, or object. On the other hand, if the user were without Wyeth’s consent, and adverse to his patent, it was a clear violation of his rights, and could not deprive him of his patent.
Wyeth v. Stone, 30 F. Cas. 723, 726 (C.C.D. Mass. 1840)
I went through the STEPP training and thought it was really excellent:
If you are a patent attorney or agent, it helps to think like an examiner. Sunday, November 10, 2019 is the last day to sign up for the January Stakeholder Training on Examination Practice and Procedure (STEPP) agent/attorney course. This three-day course takes place on January 28-30, 2020 at the Miami Beach Regional Library in Miami, Florida.
The training is limited to those who have passed the patent bar, since it will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. Priority will be given to those who have recently passed the patent bar. USPTO trainers lead the course, which is based on material developed for training USPTO employees.
We are applying for CLE credit in Florida for this course.
Use the STEPP sign-up form to register.
You can learn more about the program and upcoming sessions on the STEPP page of the USPTO website.
Recent Headlines in the IP World:
Commentary and Journal Articles:
New Job Postings on Patently-O:
Guest Post by Emil J. Ali and David E. Boundy. Emil J. Ali is a partner at Carr Butterfield, LLC, and David Boundy is a partner at Cambridge Technology Law. More detail about the authors is provided at the end of the post.
On October 9, 2019, the White House issued two executive orders, Promoting the Rule of Law Through Improved Agency Guidance Documents, (E.O. 13891), reprinted at 84 Fed. Reg. 55235 (Oct. 15, 2019), and Promoting the Rule of Law Through Transparency and Fairness in Civil Administrative Enforcement and Adjudication (E.O. 13892), reprinted at 84 Fed. Reg. 55239 (Oct. 15, 2019). Both Executive Orders are generally directed to requiring federal agencies to “act transparently and fairly with respect to all affected parties … when engaged in civil administrative enforcement or adjudication.” E.O. 13892 goes on to explain that individuals should not be subject to enforcement actions without “prior public notice of both the enforcing agency’s jurisdiction over particular conduct and the legal standards applicable to that conduct.”
Executive Orders 13891 and 13892—in General
For the most part, Executive Orders 13891 and 13892 are simple reminders and restatements of long-standing requirements of the Administrative Procedure Act (APA). For example, E.O. 13891 § 1 and E.O. 13892 § 3 remind agencies that they may not enforce “rules” against the public unless those rules are promulgated as “regulations,” in full compliance with the APA and similar laws. E.O. 13892 § 3 and § 4 remind agencies that the APA allows agencies to use sub-regulatory guidance documents to “articulate the agency’s understanding” of other law, or announce tentative positions, but may not apply those soft-edged understandings as if they were hard-edged enforcement standards, unless the agency has followed certain procedures required by the APA. E.O. 13891 and 13892 each state that agencies have sometimes inappropriately exerted authority, without following statutorily-required procedures.
In addition, Executive Orders 13891 and 13892 go above statute to add a few additional requirements for fairness and transparency. These above-statutory requirements ask agencies to give notice of all their sub-regulatory guidance documents. Covered guidance documents are defined to include anything to which the agency intends to give prospective effect, that is promulgated without the formality of “regulation” (E.O. 13291 § 2(b)). That class includes the Manual of Patent Examining Procedure, the Patent Trial and Appeal Board’s Trial Practice Guide, and the Manual of Trademark Examining Procedure, and likely includes decisions of the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and OED on which the agency intends to rely for future effect, including ones the USPTO considers “precedential.” (These decisions are excluded from coverage to the extent they decide past issues in specific cases, E.O. 13892 § 2(c)(iv); they’re covered only to the extent an agency relies on them for future effect.) For example, E.O. 13892 requires agencies to “afford regulated parties the safeguards described in this order, above and beyond those that the courts have interpreted the Due Process Clause of the Fifth Amendment to the Constitution to impose” (emphasis added). E.O. 13892 explains that agencies, like the USPTO, must work to “foster greater private-sector cooperation in enforcement, promote information sharing with the private sector, and establish predictable outcomes for private conduct.”
Among the new requirements added by Executive Orders 13891 and 13892 to promote transparency and predictability are the following:
The Orders then return to statutory underpinnings, and require agencies to apply them in a consistent and predictable fashion.
“Unfair surprise”
“When an agency takes an administrative enforcement action, engages in adjudication, or otherwise makes a determination that has legal consequence for a person, it may apply only standards of conduct that have been publicly stated in a manner that would not cause unfair surprise.” E.O. 13892 § 4. Anyone that has ever phoned the USPTO and been told that words on a page don’t mean what the words look like they mean will be reassured that that is never supposed to happen again after October 9, 2019.
Moreover, the definitions section of E.O. 12892 highlights the breadth of what it means for an Agency’s position to be an “unfair surprise,” as discussed in Christopher v. SmithKline Beecham Corp., 567 U.S. 142 (2012). In Christopher, the Supreme Court noted that agencies are required to provide fair warning regarding the conduct that a regulation requires or prohibits and can’t rely on principles of judicial interpretation to save an unfairly-vague rule or give it enforceable “teeth” ex post. See 567 U.S. at 156. E.O. 13892 explains that agencies “must avoid unfair surprise not only when it imposes penalties but also whenever it adjudges past conduct to have violated the law.” E.O. 13892 appears to be a step in the right direction to help inform practitioners (and others) about the practical implications of otherwise innocuous conduct.
When an agency states a position in sub-regulatory guidance, the law has long recognized that the agency may not stand on that guidance as the last word; rather, the agency must entertain alternative positions. “Interpretive rules do not have the force and effect of law and are not accorded that weight in the adjudicatory process.” Perez v. Mortgage Bankers Ass’n., 135 S.Ct. 1199, 1204 (2015). E.O. 13892 § 6 requires the agency to give an aggrieved person an opportunity to be heard to contest an agency guidance position, and give a written decision that articulates a basis for its action.
Example: the Office of Enrollment and Discipline
The Office of Enrollment and Discipline (OED) may be considered as one example office within the USPTO, which may have to retool to comport its conduct to the new Executive Orders. Simply reading 37 C.F.R. Part 11 and the Final Orders issued by OED does little to instruct practitioners of the practical standards applied by OED, or implications of practitioners’ conduct. While OED appears to attempt to provide helpful guidance to practitioners into Final Orders, much of this guidance is after the USPTO has already disciplined others, who themselves likely were not aware of the ramifications of their own acts, omissions, or mistakes. While OED may inform individual practitioners that their response to a Request for Information is an opportunity under 5 U.S.C. § 558(c) to demonstrate compliance with the USPTO Rules of Professional Conduct, OED often finds that compliance to be “too little too late,” leaving practitioners subject to discipline.
Of course, many practitioners claim they either never heard of OED because they practice only in trademark law, or they were not properly informed that their conduct, including outside of patent and trademark law, implicated OED’s interpretation of the USPTO Rules of Professional Conduct. Many practitioners, on first hearing of an OED position asserted against them in a Request for Information and Evidence (the typical “first knock at the door” from OED), complain of unfair surprise, because the USPTO does not give practitioners fair advance notice of its standards. That is truly a fair criticism, often not understood by OED.
Case in point—OED’s “publication” of decisions does not comport with legal requirements set by the APA, at least if the agency intends to rely on these past decisions as precedent for future decisions. 5 U.S.C. § 552(a)(1) and (2) (and now E.O.s 13891 and 13892) require agencies to publish their adjudicatory decisions in the Federal Register, and/or provide useful indexing on their websites (depending on the level of future reliance the agency intends to apply to its own past decisions). Admittedly, OED does publish its decisions on its website and in the Official Gazette, but only those who know where to look can find them, and they aren’t “indexed” as required by law. Truly, it is troubling to see the “enforcement arm” of the USPTO, which has the power to end careers, exercise discretion without careful observance of statutory due process. Furthermore, many such practitioners are caught in the reciprocal discipline web, as we described in an earlier post on Mr. Ali’s blog, which could result in double disbarment by the USPTO.
Implementation for the USPTO
The USPTO faces a scramble to clean up decades of noncompliance with law. With very few exceptions, Executive Orders 13891 and 13892 are simply restatements of principles that have been in effect for decades, under the Administrative Procedure Act (in effect since 1948), Regulatory Flexibility Act (since a large statutory amendment in 1996), Paperwork Reduction Act (1995), Executive Order 12866 (1992), prior Executive Orders 13258 and 13422 (which were in effect until 2009, and significantly overlap with E.O. 13891), and the Bulletin on Agency Good Guidance Practices, 72 Fed. Reg. 3432 (2007). The USPTO has on occasion expressed overt hostility to Presidential authority. For example, in 2011, one of the USPTO’s senior-most officials plainly refused to implement one of these predecessor orders of the President of the United States.[i] Because of these decades of what appears to be noncompliance, what should be a straightforward addition to various pages of the USPTO’s website may require a ground-up rebuild of the USPTO’s compliance/regulatory function, and review of the entirety of the USPTO’s regulatory corpus.
Long-standing statutory requirements that might now be implemented because of the two Orders, and corrective action we may expect from the USPTO, include:
Practical implementation for the public
Some practical implications for practitioners are immediately clear, as the White House reminds parties of rights they’ve had under statute and regulation for decades. Others will become clearer over time, as the Office of Management and Budget issues implementing guidance, as the USPTO implements the Orders and guidance, and as OED and the rest of the USPTO issue decisions. Practitioners should review forthcoming regulations and notices published in the Federal Register. For example, going back to our case study with OED, the office may propose procedures under this Executive Order, which discusses self-reporting, voluntary information setting, and other actions related to practitioners. Of course, those practitioners currently facing OED proceedings may benefit from this Executive Order by offering an explanation that the public was not properly put on notice of OED’s newfound interpretations of its rules.
We hope to see the USPTO create a dialogue with stakeholders of all shapes and sizes, and institute a new commitment to the rule of law, with predictable compliance with statutes, regulations, and Executive Orders. We’re available to help in any way we can. Director Iancu, you know where to find us.
[i] Then-Acting Associate Commissioner for Patent Examination Policy Robert Bahr, Decision on Petition, 10/113,841 (Jul. 14, 2011) at pages 19-20, refusing to implement the Bulletin for Agency Good Guidance Practices, OMB Bulletin 07-02 (Jan. 18, 2007), reprinted in 72 Fed. Reg. 3432-40 (Jan. 25, 2007). The Bulletin carries the same binding effect against agencies as an executive order.
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Emil J. Ali is a partner at Carr Butterfield, LLC where his practice includes advising and representing intellectual property attorneys in ethics investigations and litigation matters before the Office of Enrollment and Discipline (OED), as well as various state bars. Mr. Ali also provides conflicts and compliance advice to various law firms and in-house departments regarding managing effective compliance policies, and transitioning intellectual property professionals.
Mr. Ali is active in several intellectual property and ethics associations, and serves as the Vice-Chair of the ABA-IPL Ethics & Professional Responsibility Committee as well as being part of the Oregon State Bar Unlawful Practice of Law Committee. In addition to being a Registered Patent Attorney, Mr. Ali is admitted to practice in California, the District of Columbia, and Oregon. Emil writes about intellectual property legal ethics and OED procedure at www.oedethicslaw.com/blog.
David Boundy is a partner at Cambridge Technology Law. Mr. Boundy practices at the intersection of patent and administrative law, and consults with other firms on court and administrative agency proceedings, including PTAB trials and appeals. In 2007–09, Mr. Boundy led teams that successfully urged the Office of Management and Budget to withhold approval of the USPTO’s continuations, 5/25 claims, information disclosure statements, and appeal regulations under the Paperwork Reduction Act. In 2018, the Court of Appeals for the Federal Circuit asked Mr. Boundy to lead a panel of eminent administrative law academics and the President’s chief regulatory oversight officer in a program at the court’s Judicial Conference on administrative law issues. Judge Plager recommended Mr. Boundy’s article published in ABA Landslide, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rulemaking, to the patent bar. Another recent article, The PTAB is Not an Article III Court, Part 3: Precedential and Informative Opinions explains the role of sub-regulatory guidance. He may be reached at DBoundy@CambridgeTechLaw.com.
by Dennis Crouch
ChargePoint, Inc., v. SemaConnect, Inc. (Supreme Court 2019) [Petition]
Another new eligibility petition, this one filed by by top Supreme Court Carter Phillips. Questions presented:
I drive a Honda Clarity — a Plug-in Hybrid Electric Vehicle (PHEV) — and use ChargePoint connected charging stations when I travel out of town. The patent here — U.S. Patent No. 8,138,715* — essentially covers remote-control of the charging station (i.e., via your phone). Asserted claim 1 requires a transceiver that receives a “turn on” signal from a remote server. The transceiver then sends a signal to a “controller” that then triggers a switch (“control device”). Dependent claim 2 adds an electrical coupler whose electric supply is switched on/off by the control device. My understanding is that all of these items could be configured within item 110 (below) that the inventors lexicographed as a “Smartlets™” — although the claims do not require the apparatus to take the cute boxy-shape displayed below. 
The district court dismissed the case for failure to state a claim — finding the claims ineligible as a matter of law. On appeal, the Federal Circuit affirmed with the following holdings:
Alice Step 1: The focus of the claims – as a whole – is the abstract idea of the internet-of-things (IoT): “communication over a network to interact with a device connected to the network.” In reaching that conclusion, the court looked to “problem” identified in the specification — a lack of communication network to allow for efficient charging control, including paying for the electricity consumed. From the specification, the court found it “clear that the problem perceived by the patentee was a lack of a communication network for these charging stations, which limited the ability to efficiently operate them from a business perspective.”
In short, looking at the problem identified in the patent, as well as the way the patent describes the invention, the specification suggests that the invention of the patent is nothing more than the abstract idea of communication over a network for interacting with a device, applied to the context of electric vehicle charging stations.
The court went-on to hold that the claim breadth “would preempt the use of any networked charging stations.”
Alice Step 2: At step-2, ChargePoint argued that it solved practical problems in the field by creating a new way of remote control and network control of a charging system. The problem for the Court was that the alleged inventive concept here is network control — which the court already found to be the problematic abstract idea.
The court gives ChargePoint props for a good idea and implementation — but the problem here really is the breadth of the claims that basically join together two well-known concepts.
In short, the inventors here had the good idea to add networking capabilities to existing charging stations to facilitate various business interactions. But that is where they stopped, and that is all they patented. We therefore hold that claim 1 is “directed to” an abstract idea. As to dependent claim 2, the additional limitation of an “electrical coupler to make a connection with an electric vehicle” does not alter our step one analysis.
Id.
The petition calls-out Alice as a “failed experiment” especially when placed “in the Federal Circuit’s hands.”
[T]he Federal Circuit and various parties have used the chaos that has trailed the Court’s decision to eliminate numerous patents. Indeed, the period following Alice has seen, by one estimate, a 914% increase in the number of patents invalidated under Section 101. [Citing Sachs]. Alice’s warning to “tread carefully in construing [the Section 101] exclusionary principle lest it swallow all of patent law,” 134 S. Ct. at 2354, has largely been realized.
Petition. (more…)
by Dennis Crouch
In Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319 (Fed. Cir. 2019), the patentee (Arthrex) argued that the inter partes review is an unconstitutional due process violation when applied retroactively against pre-AIA patents. The Federal Circuit rejected the basis for the argument — Although Arthrex filed its patent applications prior to passage of the AIA, the patent issued afterward. In somewhat cryptic analysis the court worte:
That Arthrex filed its patent applications prior to passage of the AIA is immaterial. As the Supreme Court has explained, “the legal regime governing a particular patent ‘depend[s] on the law as it stood at the emanation of the patent, together with such changes as have since been made.’” Eldred v. Ashcroft, 537 U.S. 186, 203 (2003) (quoting McClurg v. Kingsland, 42 U.S. 202, 206 (1843)). Accordingly, application of IPR to Arthrex’s patent cannot be characterized as retroactive.
Id. The two cases cited by the Federal Circuit here are interesting.
McClurg is best known as the case establishing “shop-rights doctrine.” In the case, the inventor (Harley) created a mold for casting metal cylinders so that the strongest material was toward the outer wall. Harley made the invention while on the job for the defendant Kingsland and Kingsland continued to use the invention for some time with without objection from Harley. Meanwhile, Harley obtained a patent and assigned it to McClurg who later sued Kingsland for infringement. The Supreme Court explained that such a situation created an implied license:
The Circuit Court … held that the defendants might continue to use the invention, … that they might presume a license or grant from Harley.
McClurg v. Kingsland, 42 U.S. 202 (1843).
In Arthrex, the focus on McClurg is for a different reason — congressional plenary power to legislate in the area of patent law — even retroactively.
The inventor in McClurg (Harley) obtained his patent in 1835 – a few months before passage of the Patent Act of 1836 that constituted a major revision of U.S. Patent Law. By its terms, the new law applied to old patents (with a few exceptions) but the case challenged whether Congress had the power to take such action. And the Supreme Court offered strong words allowing for Congress modify the law of patents without any restraint:
Whether [the appeal is] well taken or not, must depend on the law as it stood at the emanation of the patent, together with such changes as have been since made; for though they may be retrospective in their operation, that is not a sound objection to their validity; the powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and as there are no restraints on its exercise.
Id. This is the portion of the decision that is quoted by the Supreme Court in Eldred and again in Arthrex. I should note that the court actually goes on to put a pretty big caveat on congressional plenary power (as mentioned justice Stevens dissent in Eldred):
… so that they do not take away the rights of property in existing patents. . . . This repeal, however, can have no effect to impair the right of property then existing in a patentee, or his assignee, according to the well-established principles of this court in 8 Wheat. 493 [a real property case]; the patent must therefore stand as if the acts of 1793 and 1800 remained in force; …
Patentee Cannot Escape Estoppel via Pre-IPR-Institution Disclaimer
Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)
Although the PTAB granted Google’s IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.
The non-precedential decision includes an interesting bit on PTAB procedure. The IPR was instituted on both obviousness and anticipation grounds. During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art. Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips “did not have a fair and meaningful opportunity to respond.”
On appeal, the Federal Circuit has affirmed — holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”
Copyright Alternative in Small-Claims Enforcement Act of 2019
H.R. 2426 passed the House with a vote of 410-6. The Bill now moves to the Senate.
The proposal would create a small claims copyright infringement court handled by 3 judge administrative panels handled by the Copyright Office.
Would you take your patent infringement case to the PTAB?
by Dennis Crouch
Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. § 311(b).
A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings. Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?
In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).
On appeal, Uniloc argues that the denial on 101 grounds was improper:
Interpreting the IPR statutes to allow a § 101 challenge through the back door, merely because a patent owner exercises the right to propose a narrowing amendment, threatens to disrupt the streamlined and focused nature of the IPR adjudication. Amended claims that meet the statutory requirements for motions to amend are narrower than claims that have previously been examined in full and, to the extent there is any room for further challenges under § 101, an accused infringer that cannot avail themselves of a PGR or CBM challenge can still assert ineligibility in a civil action for infringement.
In its briefing, the PTO agrees that § 311(b) limits the scope of petition, but focuses on § 318(a) that requires the PTO to address “patentability of . . . any new claim added” during the course of the proceeding. For the PTO, Uniloc’s approach appears to be off-the-rails because it could force the PTO to issue new claims via IPR that were never examined for eligibility, utility, written description, or enablement.
One distinguishing feature here, however, is that PTO issued particular regulations regarding amendments and Section 112 — requiring a showing of “support in the original disclosure” for any amendments. The regulations say nothing about eligibility. 37 C.F.R. § 42.121(b). The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.
The additional feature of the argument here has to do with the nature that IPR amendments are narrowing amendments. Narrowing amendments basically do not raise new eligibility problems.
In its brief, Uniloc also has an alternative request — that the Court remand for a new eligibility analysis based upon the PTO’s new eligibility guidance. (The PTAB’s denial here was made prior to the Jan 2019 eligibility guidance, and that guidance was recently updated in October 2019). USPTO responds that Uniloc did not explain how its amendments would be sufficient to overcome the collateral district court invalidity finding — “Uniloc bears the burden of showing that the Board committed reversible
error.”
Askeladden filed an amicus brief supporting the PTO and patent challenger arguing that the Board has “a statutory obligation to consider the subject-matter eligibility” of proposed amended claims during IPR proceedings.
Briefs: [Uniloc Brief] [PTO Brief] [Hulu / Netflix Brief] [Askeladden Brief]
Patent at issue: U.S. Patent No. 8,566,960 B2 (claimed “system for adjusting a license for a digital product over time”).
= = = =
by Dennis Crouch
The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners. Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).
In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.
Claim:
I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.
U.S. Patent No. 11,766.
The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873). In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.
Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.” The court explained:
What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman’s invention, he could not then have claimed anything more than the particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.
Id.
At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.” As such, the court allowed the patent to be enforced.
In contrasting somewhat parallel language found in the “great case” of O’Reilly v. Morse, Court noted that there is a difference between a patent for a process (patentable) and a patent for a mere principle (unpatentable).
The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself,—a claim put forward on the ground that the patentee was the first to discover that it could be thus employed. This claim the court held could not be sustained.
The court then contrasted Tilghman’s invention:
The claim of the [Tilghman] patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. . . . He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam. This is most certainly a process. . . .
It is our opinion that the patent is for a process, that it is a valid patent, and that the defendants infringe it.
Id.
Today the Supreme Court is meeting to consider certiorari in Lilly v. UroPep.
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 v. Walker, 329 U.S. 1 (1946). pic.twitter.com/lSVWKplIMW
— Dennis Crouch (@patentlyo) October 18, 2019
The argument her turns on the fact that the express language of 35 USC 112(f) excuses functional limits in "a claim for a combination" but says nothing about a one-step claim. https://t.co/7TbBsJvXhU
— Dennis Crouch (@patentlyo) October 18, 2019
Supreme Court: What is the Role of Functional Claim Limitations?
Supreme Court 2019-2020: Introduction to the Term’s Patent Cases
I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.
Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO. Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims. The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.
Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality. What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow. Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top. This is the right approach — examiner expertise is prior art and claim definiteness, not whether an invention would be unduly preemptive of freedoms held by all humanity. Now, we can debate on whether the bridge should be veering right vs left — this one certainly favors patentees. But, there is a lot to be said for a clear-pathway even if it leads a bit off center.
Speaking of swamp-walking. I do want examiners to get dirty with their work — but expertise is the swamp known as finding and analyzing the best prior art, not answering amorphous questions of law.
By Jason Rantanen
I’m thrilled to announce the publication of the articles from the Iowa Law Review’s symposium, Administering Patent Law. (Although Chris Walker beat me to the punch by a mile.) It’s a terrific group of articles that focus on issues at the intersection of patent law and administrative law. Here’s the abstract of my introduction to the issue:
Ten years ago, few people—with the exception of a handful of visionary academics—spent much time thinking about the significance of administrative law to the patent system. Today, administrative law issues pervade the patent system, from examiners and patent judges up to the United States Supreme Court. At the same time, modern administrative law itself faces a series of challenges that call into question its fundamental premises, such as the degree of deference that courts should grant agencies and the amount of political control that is constitutionally permissible or required. What does all this mean for the future of patent law?
Thanks to the support of the David F. Hellwege fund at the Iowa Law School Foundation, this issue of the Iowa Law Review contains an amazing array of scholarship on these topics from some of today’s brightest and most prominent patent law thinkers.
And the articles themselves:
Administering Patent Law, Jason Rantanen
Rigorous Policy Pilots: Experimentation in the Administration of the Law, Colleen V. Chien
Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office, John F. Duffy
A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact, Rebecca S. Eisenberg
Patent Trial and Appeal Board’s Consistency-Enhancing Function, Michael D. Frakes & Melissa F. Wasserman
PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unlawful, John M. Golden
Elite Patent Law, Paul R. Gugliuzza
Patent Court Specialization, Sapna Kumar
Institutional Design and the Nature of Patents, Jonathan S. Masur
The Hamiltonian Origins of the U.S. Patent System, and Why They Matter Today, Robert P. Merges
Statutes, Common Law Rights, and the Mistaken Classification of Patents as Public Rights, Adam Mossoff
Machine Learning at the Patent Office: Lessons for Patents and Administrative Law, Arti K. Rai
Renewed Efficiency in Administrative Patent Revocation, Saurabh Vishnubhakat
Constitutional Tensions in Agency Adjudication, Christopher J. Walker
Prior Art in Inter Partes Review, Stephen Yelderman
All of the articles are available through direct links above. If you would like a physical copy of the issue, the Iowa Law Review editors have told me that you should contact the printer at on.demand@christensen.com and request a copy of Volume 104, Issue 5. I’m not sure what the exact price is, but it’s likely be about $30 including shipping. (The whole volume is $53).
Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG). On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”
[January 2019 PEG][October 2019 UPDATE]
The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and Mental Processes. Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas” except in “rare circumstance.” Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”
The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:
(I) What does it mean to “recite a judicial exception?”
- Answer: “recite” includes implicit “description” in the claim;
- See examples 37-46
(II) Can you further define the abstract idea “groupings?”
- Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations
- Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);
- Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process.
(II) Extended – What if an examiner thinks that a claim recites an abstract idea that doesn’t fit in the grouping?
- Answer: this must be approved by the TC Director!
(III) How to know if the recited judicial exception is integrated into a practical application? (Still under Alice Step 1)
- Answer: Ask whether the claim recites “additional elements that integrate the judicial exception into a practical application.”
- Example: A claim whose “additional limitations reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field.”
- In understanding whether a practical technical improvement is claimed, examiners are told to look to the specification for “sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” A patent will likely fail here if the specification recites the practical tech in conclusory form.
(IV) How does an examiner establish a prima facie case of ineligibility?
- Inter alia, Examiners should identify the particular claim limitations that recite an abstract idea and explain its grouping. Examiners need not provide “evidence” beyond an explanation.
[Read it here] We’ll do a series on this over the next several days.
If you have a trademark deadline coming up in the next two weeks, I’d advise that you plan ahead just a bit to ensure that you have enough time to make it through the new USPTO security. The new system will require two-step authentication both for TEAS and TEASi (international version).
