Special thanks to my friends at the MBHB law firm for being the exclusive sponsor for Patently-O.  Their contribution has kept Patently-O free to the public and virtually ad-free for almost two decades.  I started the blog with $0 investment, just my own time, but now I pay for the secure server, bandwidth, newsletter software, etc.  All that adds up pretty quickly.

I was happy to see that Jori Fuller and Jordan Pringle have been named equity partners at MBHB.   At the same time, Bryan Helwig, Ph.D., and Colin Wright were promoted from associate to partner.  Congratulations!

The chart below shows a histogram of the total number of references per patent. (Utility patents issued in 2021) with the mode, median, and average noted.

by Dennis Crouch

Nature Simulation Systems v. Autodesk (Fed. Cir. 2022)

We have an interesting split decision focusing on the doctrine of indefiniteness in the context of an “examiner’s amendment.”  Judge Newman wrote for the majority and favored the patentee; Judge Dyk wrote in dissent and concluded that the patent claims were indefinite. The judges particularly differed on what level of deference should be given to USPTO examiners with the majority holding that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions.”  The dissent argued instead that deference has no role in the definiteness inquiry:

The test …is whether the claims ‘inform those skilled in the art about the scope of the invention with reasonable certainty,’ Nautilus, not whether the claim language was added by a patent examiner or was not indefinite to the examiner.

Slip op. (Dyk, J. in dissent).

You likely know about Boolean logic operations such as AND, OR, and NOR.  In CAD software, Boolean operators are similarly used to recognize intersection of geometric objects, using alternative terminology such as INTERSECT, UNITE,  and SUBTRACT.  Mathematical methods for performing these operators have been known for decades–as developed by “Watson.” NSS created a new version that it calls the “modified Watson method.”

During prosecution, the examiner rejected the claims as indefinite, but then withdrew the rejection based upon his own examiner’s amendment.  The original claim required use of the “modified Watson method,” but the examiner suggested that was not definite enough, and suggested adding additional definitional requirements:

wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;

Exr. Amendment found in Notice of Allowance.

Later, NSS sued Autodesk for infringement, and the defendant responded that the language added by the examiner was actually indefinite and created confusion as to what is actually included within modified Watson.  The parties consented to have the local Magistrate Judge (Sallie Kim) hear their case, and Kim sided with the defendant.  The Magistrate opinion is notable in that it does not cite to the leading precedent  on definiteness – Nautilus v. Biosig (2014). Rather, the court appeared to primarily rely upon Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) or no precedent at all.  The district court’s approach appears to be looking for “unanswered questions” of claim scope:

Thus, the question is thus: if the PTO issues a patent after amendment to clarify an indefinite term, but an expert later opines that a POSITA would not understand the term, how does the Court determine whether the term is indefinite? The only way to do so here is to look at each argument to see if Autodesk raises any unanswered questions.

[Nature_Simulation_Systems_Inc._62]. The Magistrate clearly missed the mark on its explanation and application of the law of definiteness.  (Although Judge Dyk calls the opinion detailed and thorough).

Since indefiniteness is seen as a question of law, the court also took the second step of determining whether the erroneous application of law also led to an erroneous outcome.  Yes it did.  On this point, Judge Newman pointed to the specification’s offering of two algorithmic charts showing the modified Watson method and also the patent examiner’s specific determination on this very point.

The district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. . . .

Actions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.

Slip Op (majority).  The court has written on this very point in some prior cases — perhaps most pointedly in Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011, 1020 (Fed. Cir. 2018) (“We presume that an examiner would not introduce an indefinite term into a claim” with an examiner’s amendment).  Judge Newman cited Tinnus, but did not mention that the case was non-precedential.

For his part, Judge Dyk argues that the test for indefiniteness is an objective test based upon the understanding of those skilled in the art “not whether the claim
language was added by a patent examiner or was not indefinite to the examiner.”  The majority responded to this criticism by noting that an examiner is presumptively a person of skill in the art.

Here is a fun chart showing the percentage of U.S. patents that cite to Wikipedia as prior art. I created this from data downloaded from the USPTO.

by Dennis Crouch

Masimo Corp. v. True Wearables, Inc. (Fed. Cir. 2022) (nonprecedential)

This trade-secrecy decision includes a few interesting holdings:

1. Published and Widely Distributed, but Still a Trade Secret: The fact that information was found in a prior publication “that has been cited over 1,200 times . . . does not necessarily compel a finding that the information cannot maintain its status as a trade secret for a party in an entirely different field.”
2. Serious Questions: A preliminary injunction in trade secrecy cases require only a “fair chance of success on the merits or questions serious enough to require litigation.”  Here, the plaintiff raised “a serious question” and that was enough.
3. Order to Keep the Patent Filings Secret: The defendant has several patent applications pending at the USPTO which apparently include the trade secret algorithm within its specification.  The district court ordered the defendant to “take all necessary steps to prevent publication” of those applications or resulting patents. On appeal, the Federal Circuit affirmed that preliminary injunction as warranted based upon California state trade secrecy law.

The companies here compete in the market for creating specialized finger-LED equipment and accompanying data analysis services.  This case focuses on calculating total hemoglobin (“SpHb”) based upon light absorption readings from the finger-LED.

How does it work: The LED emitter sends out a pulse of light through the fingertip; a sensor on the other side then measures how much light passed through at various wavelengths. Hemoglobin has a particular light adsorption pattern, and so those results can be used to calculate a relative amount of Hemoglobin.  They do this with a simple linear aggregation: “SpHb = Ax + By + Cz . . .,” where x, y, and
z are various absorption measurements from the monitoring device (such as different wavelength readouts) and A, B, and C are coefficients that reflect the relative importance of the different measurements.

Each product line will have a different equation because it will likely have a different LED configuration; have different sensors; and have a different physical form.  So, a product developer needs to run a clinical trial of its product in order to estimate the most accurate coefficients. For each person in the trial, you do a blood test for SpHB level (the gold standard) and then also take measurements with the finger LED.

What is the Trade Secret: The trade secret at issue here is the optimization algorithm for determining all the equation coefficients.  How do you take data from the clinical trials and turn that into an operational equation for measuring SpHB?

Answer, if you have studied linear algebra this is all straightforward and largely developed in the 1960s.  Math and engineering students across the country take classes on linear programming and linear optimization and have done so for decades. These same models are a basis for most of the system we call “AI.”

The defendants pointed to a particular 2008 IEEE article that spells out the particular approach claimed to be a trade secret here — – the parties refer to this algorithm as “TSS.”  We don’t know the title of this article (it is redacted), but we do know that this is a very well known article with 1,200+ citations.  The description below comes from the appellate briefing:

The footnote explains: “[T]he complete citation for this publication is not reproduced in this brief as Masimo has asserted that the identity of the publication is  confidential.”

Under California law, information that is “generally known” cannot be a trade secret.  Here, however, the Federal Circuit affirmed the lower court ruling that the publication did not render the information “generally known” to folks in the particular field in question.

Under some circumstances, the publication of an alleged trade secret will clearly be sufficient to indicate that the information is generally known. However, the fact that the trade secret has been revealed in some publication somewhere [even if highly cited] does not necessarily compel a finding that the information cannot maintain its status as a trade secret for a party in an entirely different field from the one to which the publication was addressed.

Slip Op.  The Federal Circuit previously wrote that disclosure in a patent renders information “generally known” for trade secrecy purposes, but endeavored to distinguish that conclusion here. Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., 587 F.3d 1339, 1355–56 (Fed. Cir. 2009).

I’ll note here that there are some other factors at play – namely, the founder of True Wearables (Dr. Lamego) is a former Masimo employee. He is the one that  mathematically derived implemented the TSS algorithm at Masimo. And, while there, labeled it a “trade secret.”  These actions of the parties tend to make it look like a trade secret.

I have a Serious Question: On appeal, the Federal Circuit did conclude that the trade secret issue was questionable, but still found that the plaintiff had raised a “serious question as to the validity of the trade secret” which is apparently sufficient for a preliminary injunction.  That appears to be a lower standard than the more traditional “likelihood of success.”

The Preliminary Injunction: Lamego has several patent applications pending, and the preliminary injunction orders Lamego to make sure that those applications do not become public.  Here, the court found the remedy appropriate since “Once the information is in the public domain and the element of secrecy is gone, the trade secret is extinguished.” (Quoting Ultimax).  In this portion of the opinion the court did not contend with its statement a few paragraphs before that publication does not necessarily extinguish a trade secret.

I held a contest and Apple wins–for having the patent with the largest number of cited prior art references (patents issued 2005-2021).  Apple’s U.S. Patent No. 11,037,565 is directed to a version of Siri that works across devices – an “Intelligent digital assistant in a multi-tasking environment.”   The total, 9,441 cited references — 3 of which were cited by the examiner. Apple.Patent.

Here is claim 1:

1. A non-transitory computer-readable storage medium storing one or more programs, the one or more programs comprising instructions, which when executed by one or more processors of a first electronic device, cause the first electronic device to:

provide a media output;

while providing the media output: receive a speech input requesting to continue providing the media output at a second electronic device different from the first electronic device;

determine, based on the speech input, whether to continue providing the media output at the second electronic device; and

in accordance with a determination to continue providing the media output at the second electronic device: cause the second electronic device to continue providing the media output by resuming the media output based on where the media output was previously stopped at the first electronic device.

The application claims priority back to a 2016 provisional application and has three additional family member patent already issued.

In re Netflix (Fed. Cir. 2022)

This was an easy mandamus transfer.  The plaintiffs, CA Inc. and Avago Technologies Int’l,  are both subsidiaries of Broadcom Corp. The plaintiffs are both headquartered in San Jose and Broadcom is down in Southern California.  Netflix is also Silicon Valley. Still, the plaintiffs sued Netflix for patent infringement in the Eastern District of Texas.  Although Netflix itself does not have a place of business in EDTex, the district court found that its intimate relationship with ISPs to provide local content delivery was sufficient.  The vast majority of Netflix content is delivered directly from local residential Internet Service Providers (ISPs).

The district court also refused to transfer for inconvenient forum. Although N.D. California was certainly the locus-of-relevant-events, the court noted court congestion and access to evidence weighed against transfer.  Although the source code is located in N.D. California, the court saw no evidence showing that it would be difficult to get that data to Texas. Netflix does have more internet traffic than any other company, right!

On mandamus, the Federal Circuit only addressed the inconvenient forum question — ordering the case transferred.   The appellate panel particularly focused on the district court’s apparent bias against transferring venue.  In particular, the district court discounted Netflix arguments of evidence availability because Netflix did not “articulate the precise way that the evidence supports its claim or defense.”  At the same time, the court did not place the same precision requirement on CA regarding its evidence.  This bias was improper:

[W]e see no basis for reasonably demanding more from Netflix than it provided at this stage of the litigation, when a transfer motion must be filed and ruled on. . . . Nor have we been shown any reasons here to doubt that the documents and sources would be relevant and material to the issues here.

Id.

Venue – we have a very broad federal venue statute, except that it is super-narrow for patent lawsuits. Should we expand patent venue?

— Dennis Crouch (@patentlyo) January 19, 2022

by Dennis Crouch

Back in 1969, long before Bubba Gump, Louisiana Judge Alvin Rubin explained the virtues of shrimp: “Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight.”  Laitram Corp. v. Deepsouth Packing Co., 301 F. Supp. 1037 (E.D. La. 1969).  The Deepsouth case was about patented equipment for deveining shrimp in order to render them “more pleasing to the fastidious as well as more palatable.” Id.  Deepsouth litigated its case to the Supreme Court, and the Court eventually allowed the company to escape some portion of its adjudged liability based upon the territorial limits of U.S. patent law.

We know that U.S. patents are territorially limited.   Although Deepsouth was barred from using Laitram’s patented inventions throughout the United States, Deepsouth began selling its deveining machine to folks outside of the US in a partially constructed form.  The company explained the setup to one of its customers in Brazil:

We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil.

The Fifth Circuit had sided with the patentee — holding that “Such a dependence on technicality would require us to countenance obvious schemes, perhaps as simple as omitting an important screw, designed to evade the mandate of § 271(a).”  However on certiorari, the Supreme Court felt itself bound by the statute and precedent. The court particularly rejected the notion that “substantial manufacture” can constitute direct infringement ”

[W]e have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts.

Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 528 (1972).  The decision was 5-4, with Justice Blackman writing in dissent and arguing that “The Court has opened the way to deny the holder of the United States combination patent the benefits of his invention with respect to sales to foreign purchasers.”  Bills eliminating this loophole were quickly introduced into Congress, and eventually became law in 1984, creating 35 U.S.C. § 271(f).  Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 98 Stat. 3383.  The new law creates two avenues for liability:

1. Supplying a “substantial portion” of the uncombined components of the  patented invention from the US in a way that induces combination abroad. 271(f)(1).
2. Knowingly supplying a part from the US that is especially designed as a component of a patented invention and not a staple article or commodity with substantial non-infringing use. 271(f)(2).

Deepsouth has important implications beyond the component-export arena.  The case is an important example of the Supreme Court refusing to fill a gap in statutory language. However, the court majority was also clear that the refusal to gap-fill was one-sided — the majority did not want to expand patent rights without Congressional input:

[W]e should not expand patent rights by overruling or modifying our prior cases construing the patent statutes, unless the argument for expansion of privilege is based on more than mere inference from ambiguous statutory language. We would require a clear and certain signal from Congress before approving the position of a litigant who, as respondent here, argues that the beachhead of privilege is wider, and the area of public use narrower, than courts had previously thought. No such signal legitimizes respondent’s position in this litigation.”

Deepsouth at 531.  The dissent suggested that the precedent was not so clear and so the demand to overrule or modify was fairly slight.

The anti-patent-right-expansion policy of Deepsouth was repeated in Parker v. Flook, 437 U.S. 584, 596 (1978) (“we must proceed cautiously when we are asked to extend patent rights into areas wholly unforeseen by Congress”) and again in Justice Brennan’s dissent in Diamond v. Chakrabarty, 447 U.S. 303, 319 (1980) where he wrote:

[W]e must be careful to extend patent protection no further than Congress has provided. In particular, were there an absence of legislative direction, the courts should leave to Congress the decisions whether and how far to extend the patent privilege into areas where the common understanding has been that patents are not available.

Chakrabarty.  See also, Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 195 (1995) (“A statutory restraint on this basic freedom [of Farmers to have right to collect and replant seeds] should be expressed clearly and unambiguously.” Stevens, J. in dissent).

Deepsouth was decided before the PCT became available and well before TRIPs and  the global expansion of patent rights. We might question whether there is still a need for the US to extend rights to overlap those available abroad, especially as it tends to injury U.S. manufacturing capability.

We have snow on the ground here in Missouri. That makes me think of Gary Reinert’s new patent entitled “method and apparatus for rapid stopping of a motor vehicle particularly on snow or ice.” U.S. Pat. No. 11,091,154.  The image below from the patent tells the story.  Conventional brakes are awful. Antilock Brakes are much better, but the Reinert Snow Brakes take the cake.  Rather than just stopping the wheels, the Reinert Snow Brakes actually shift the car into reverse and spin the tires backward to slow-down the car.  I feel like I saw this in Cannonball Run II, but I’m probably misremembering.

Here is claim 1:

A method for emergency stopping of a motor vehicle comprising the steps of:

activating the emergency stopping of the motor vehicle;

stopping the forward rotation of each wheel immediately following the activation of the emergency stopping of the motor vehicle;

activating a transmission of the vehicle, which shifts an engine of the motor vehicle between driving the wheels in the forward rotation direction, a neutral park position and a reverse rotation direction, immediately after the forward rotation motion of each wheel has ceased such that each wheel maybe driven in the reverse rotation direction;

rotating each driven wheel in the reverse rotation direction until the vehicle is stopped;

activating the transmission of the vehicle once the vehicle is stopped to place the transmission into the original forward rotation position or into the park position,

wherein the step of activating the transmission includes using an on board electronic control unit whereby the method for emergency stopping of a motor vehicle is controlled by an on board electronic control unit, and

wherein the step of activating the transmission includes using sensors on each ground engaging wheel.

The examiner found several on-point references, including US5492512A – Brake system with wheel-reversing means for an automobile (Wu). Reinert distinguished those references by requiring a particular shifting through “neutral park position” before heading to reverse, and also requiring sensors on the wheels that are used to activate the emergency stop.

Field v. De Comeau, 116 U.S. 187 (1886)

Field’s patent uses a spring to make it easier to slip on tight-fitting gloves.  The case reached the Supreme Court in 1886, but the court sided with the accused infringer.  The case involved admitted-prior-art.  In particular, the patent specification admitted “that springs had been combined before with the wrists of gloves” in the past. That admission assured the court that the patent cannot cover “the combination of springs in every form with the wrists of gloves to close them.”  The accused infringer was also using a spring-glove combination, but a different form than that claimed. As such, no infringement.

In this case, the court primarily used the admitted-prior-art to limit the scope of the patent in the infringement context, after recognizing that a broader interpretation would render the patent invalid.  That approach is common of the era.  Today, courts rarely rely upon the prior art when interpreting claim scope.  Still, admitted prior art would seemingly be quite relevant as part of the intrinsic analysis of claim scope.

by Dennis Crouch

The chart below shows the number of Supreme Court patent decisions broken-up by decade. The ramp-up in the late 1800s is tied to the “second industrial revolution” in the US.  The drop in cases after 1890 is largely procedural. Congress created the regional circuit courts of appeals as a buffer between the trial courts & Supreme  Court.  Subsequently, the Court limited the number of patent cases it heard via the certiorari process.  Read more about this transition in my Kessler Cat paper (with Homayoon Rafatijo).

We are 2 years into the 2020s and have 5 decisions thus far (counting Google v. Oracle, which discusses substantive patent issues).  If that trend continues, then the  final figures for the 2020s would be similar to that of the 2010s.  Of course, thus far in the 2021-22 term, the Supreme Court has not yet granted certiorari in any patent cases.

To get this data, I used Westlaw’s case search and limited the results to Supreme Court decisions identified as “patent” decisions by Westlaw and that have a patent law related WL KeyCite headnote.  Reasonable minds will differ on what counts as a “patent case.”