Kathi Vidal is now the USPTO Director after being sworn-in by Federal Circuit Chief Judge Kimberly Moore.  Congratulations!

Dir. Vidal’s first press release is a call for dialogue on what needs to happen to advance the patent office and “to expand, protect, and commercialize U.S. innovation.”  In addition to IP expansionist statements, the announcement also repeatedly adds caveats: “minimizing inappropriate opportunistic behavior … deterring abuses and gamesmanship.”  The other key theme taking steps to ensure that the innovation incentive reaches broadly to all Americans “especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy . . . from every region of the Country and across gender, race, identity, socioeconomic class, and veteran status, as well as among all other groups that have been underserved and overlooked.”  This is exactly right – for our world to remain viable, we need to allow space for each person’s individual genius.   Vidal proposes reaching out to actually teach innovation “in our schools, universities, and communities and encourage the emergence of additional innovation hubs.”

Read more here.

by Dennis Crouch

Although Nautilus made it easier for a court to find claim terms indefinite, the Federal Circuit continues indicate that the definiteness test strongly favors validity.

In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. (Fed. Cir. 2022), the court has sided with the patentee–rejecting the district court’s indefiniteness finding.

Niazi’s US6638268 covers a double lined catheter designed for placing an electrical lead in the coronary sinus vein. The outer catheter is a “resilient catheter having shape memory and a hook shaped distal end.”  The inner catheter is a “pliable catheter.”  In Figure 8 below, you can see that the larger outer catheter can get most of the way to the vein destination, but its less-pliable construction makes it difficult to follow all the twists.  The pliable inner catheter is then inserted and extended to reach the vein location.

D.Minn. Judge Wright found the terms “resilient” and “pliable” indefinite and therefore that the claims were invalid. On appeal, the Federal Circuit has reversed–holding that terms meet the requirement of “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Patent law’s definiteness requirement is derived from the requirement that patent claims “particularly pointing out and distinctly claiming the subject matter” of the invention.  35 U.S.C. 112.  The purpose of express claims is to provide public notice of the scope of exclusive rights so that competitors and potential copycats can arrange their affairs to avoid infringement.  (We could pause here to question whether competitors and potential copycats do this in the ordinary course or if it is instead merely legal fiction.)  But, the Supreme Court has also recognized that claims need not perfectly delineate claim scope — rather, the claims must provide “reasonable certainty” as to their scope. Nautilus.  In particular, the Federal Circuit has repeatedly found terms of relative degree to be definite so long as POSITA would have “enough certainty.”  Further, “a claim is not indefinite just because it is broad.” Slip Op.  On the other hand, “purely subjective” claim terms are indefinite — such as “aesthetically pleasing” as used in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345, 1349–56 (Fed. Cir. 2005) (there must be some “objective anchor”).

Here, according to the court, Niazi’s claims terms provide enough guidance to avoid being labelled indefinite.

• Resilient: The claims require “an outer, resilient catheter having shape memory.”  In its decision, the court concluded that resilient is guided by the “shape memory” requirement.  The specification further explains that it may have a “braided design.” and may be made of “silastic or similar material” with the purpose of “return[ing] to its original shape” after being distorted.  The specification also categories resilience in terms of both torque control and stiffness.
• Pliable: The claims require “an inner, pliable catheter slidably disposed in the outer catheter.”  The specification provides further explanation: “constructed
  of a more pliable, soft material such as silicone;” and without “longitudinal braiding, which makes it extremely flexible and able to conform to various shapes.”

In addition to each having some amount of support from the specification, the court also noted that the two terms can be read relative to one another– the pliable inner catheter must be “more flexible than the outer.”

Definiteness is ordinarily a question of law and so the Federal Circuit reviews the issue de novo on appeal. Here, the court found sufficient reasons to find the terms definite. Reversed.

Note: The court also considered dictionary definitions.  It did not discuss whether those definitions introduced extrinsic evidence requiring deference rather than de novo review.

= = = =

Niazi’s Claim 11 is a method-of-use claim that did not use the pliable/resilient terms.   Thus, it survived the district court indefiniteness attack.  The defendant here St. Jude supplied the accused catheter, and Niazi argued that St. Jude had induced doctors and hospitals to infringe.  The district court found no inducement.  On appeal, the Federal Circuit affirmed — holding that under the correct construction of the claim terms there was no underlying direct infringement.

= = = =

Exclusion as a Discovery Sanction: In his expert report, Dr. Niazi’s technical expert (Dr. Burke) stated that he had personally infringed the Niazi patent while using the accused products.  The problem: Dr. Burke had not been identified as a fact witness as required by R.26(a)/(e).  Dr. Niazi’s damages expert relied upon several license agreements to support his report. However, those agreements were not identified during fact discovery despite a specific request for documents.  Both expert reports were provided after the close of fact discovery (as is common).  As a sanction for the late disclosures, the District Court struck those facts from the expert reports and barred Dr. Burke from testifying as a factual witness.   On appeal, the Federal Circuit affirmed on a technical ground — finding that Niazi’s appeal on this question failed because he did not challenge the actual basis for the district court’s decision–whether the delay in disclosure was “substantially justified or harmless.”

Despite the exclusion order, Niazi still presented a declaration from Dr. Burke in support of summary judgment that included a number of factual claims based upon Burke’s personal experience.  The district court struck the statements and also awarded monetary sanctions under R. 37.  The Federal Circuit affirmed:

Here, the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. We see no abuse of discretion in the district court’s decision to award monetary sanctions.

Slip Op.

= = = =

Finally, the district court also excluded Niazi’s damage expert report as unreliable.

The district court excluded Mr. Carlson’s expert opinion as legally insufficient because Mr. Carlson failed to “apportion” between infringing and noninfringing uses and because he could not properly include leads in the royalty base. We affirm the district court’s exclusion.

Slip Op.   Here, the idea was that St.Jude agued that some uses were non-infringing and the expert did not attempt to apportion-out the non-infringing uses but instead merely stated that apportionment would be “impractical in view of real-world considerations.”

Here, the claim was that sales by St. Jude (along with its instructions) were inducing infringement the method-of-use claims.  The patentee argued that apportionment does not apply to method claims.   But, the Federal Circuit disagreed with that broad statement. “Damages should be apportioned to separate out noninfringing uses, and patentees cannot recover damages based on sales of products with the mere capability to practice the claimed method. Rather, where the only asserted claim is a method claim, the damages base should be limited to products that were actually used to perform the claimed method.”

by Dennis Crouch

Courts continue to struggle with their use of evidence for claim construction.  The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation.  The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.

The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc).  That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding.  At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires  a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.”  Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003).  In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.

I see disclaimer as an examination failure.  When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly.  If the specification would not support such an amendment, then the specification also would not support the disclaimer.  In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.

Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.”  The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse.  The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer.   In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).

Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal”  (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means.  In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer.  At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer.  In particular, the district court found that  the patentee’s prosecution disclaimer required the narrow construction.

1. A user input apparatus … comprising:

user input means for producing a user input  stream;

input means for producing [an] input signal;

converting means for receiving [the] input signal and producing therefrom an input stream; and

encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.

US6219730, claim 1.

Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.”  Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.

• Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
• Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.

On appeal, the Federal Circuit has rejected that construction as unduly limiting.

During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin).  Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.).   Those all look like “input signals”–but the patentee argued  in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming.  Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision.  The examiner accepted the distinguishing argument and allowed the case.

At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz.  The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.

On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.

Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.

Slip  Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.”  That is the disclaimer, nothing more.  “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.

On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency.  In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide.  [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].

= = = =

Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.

MBHB LLP is the exclusive sponsor for Patently-O.  I joined the firm as a law clerk back in 2001 and got my first assignments from Larry Aaronson.  I still cringe thinking about the amount of red-ink he spilled editing that first office action response.

Congratulations to our newest member of the United States Supreme Court, Justice Ketanji Brown Jackson, confirmed today by by the US Senate.  Justice Brown Jackson will take office once Justice Breyer retires in June 2022.  She does not have substantial patent law experience, but does have extensive experience handling administrative law cases based upon her time as a Federal District Court Judge and Appellate Judge, both in the District of Columbia.

Longtime Commissioner of Patents Drew Hirshfeld announced today that he plans to leave the USPTO this summer.  Until that point, he will likely serve as Acting Deputy Director to help Kathi Vidal hit the ground running as she begins her tenure as USPTO Director.  Hirshfeld writes:

Kathi Vidal … is, without a doubt, the right person to lead the USPTO. Not only is she highly qualified, but she has also repeatedly shown me and so many others how thoughtful and steadfast she is in her determination to do the right things for this agency and our nation’s inventors and entrepreneurs. She will be a great leader. . . . I cannot think of a better way to conclude my time at the agency than by helping Kathi in any way I can before a permanent deputy director arrives.

In this structure, Andy Faile will stay on as acting Commissioner for Patents until a new Commissioner is appointed by the Secretary of Commerce. 35 U.S.C. 3 (“The Secretary of Commerce shall appoint a Commissioner for Patents . . . for a term of 5 years.”).  Dave Berdan has been serving in the role of deputy director under Hirshfeld.  Berdan will likely return to his role as General Counsel — pushing Will Covey back to his permanent role of Deputy General Counsel and Director for the Office of Enrollment and Discipline (OED).

by Dennis Crouch

In an important 2018 decision, the Federal Circuit sided partially with Berkheimer on a procedural eligibility grounds — finding disputed questions of material fact as to whether aspects of the claimed invention were “well-understood, routine, and conventional to a skilled artisan.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert denied 140 S.Ct. 911 (2020).  The district court had invalidated claims 1-9 as ineligible and 10-19 as indefinite. The appellate panel vacated that decision as to claims 4-7 but otherwise affirmed.

Back on remand, the district court Judge John Lee has now ruled that the remaining claims are also indefinite under section 112p2. Steven E. Berkheimer, Pl.  v. HP, Inc., 12-cv-9023, 2022 WL 910580 (N.D. Ill. Mar. 29, 2022).  [Berkheimer_v._Hewlett-Packard__314]

The invention is a method of parsing computer files into “multi-part object structures” with “searchable information tags.” The system then uses “manual reconciliation” that involves looking for a measure of variance. The basic idea is that this system provides a searchable archive with reduced redundancy.  Claims 10-19 require “minimal redundancy.”  That term was not defined in the specification, and the district court found it indefinite.  Berkheimer v. Hewlett-Packard Co., 2015 WL 4999954 (N.D. Ill. Aug. 21, 2015).  The Federal Circuit then affirmed that decision.

The specification uses inconsistent terminology to describe the level of redundancy that the system achieves. For example, it describes “minimiz[ing] redundant objects,” “eliminating redundancy,” and “reducing redundancies.” The only example included in the specification is an archive that exhibits no redundancy. … The specification contains no point of comparison for skilled artisans to determine an objective boundary of “minimal” when the archive includes some redundancies.

The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.

Berkheimer (Fed. Cir. 2018).  The remaining claims 4-7 do not use the term “minimal redundancy”, but instead require an archive “without substantial redundancy.”  On remand, the district court found that term equally problematic and ultimately concluded that it failed delineate “the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Without Substantial Redundancy: The district court identified the “substantial” wiggle-word as “facially ambiguous”–but concluded that ambiguity could be permissible someone of skill in the art had sufficient guideposts.  Typically, those guides might come from examples within the specification.  Here, however, the patent specification only includes an example of no-redundancy.  And, during prosecution it appears that the examiner and Berkheimer treated “without substantial redundancy” and “minimal redundancy” as synonyms.  Thus, the district court found that “substantial redundancy” lacked reasonable certainty for the same reasons as “minimal redundancy.”

Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.

“Judgment is entered in HP’s favor, and this case is terminated.”

= = = =

The district court invalidated the “minimal redundancy” claims as part of its 2015 claim construction order.  At that time, neither party suggested that “without substantial redundancy” needed construction or was invalid.   It was only on remand that HP raised the new argument.  Berkheimer unsuccessfully argued waiver. The district court noted that its scheduling order did not preclude late-stage indefiniteness arguments.

Oddly, the district court went on to conclude that “the construction of ‘without substantial redundancy’ only became relevant after the Federal Circuit held that the synonymous term ‘minimal redundancy’ was invalid.”  This statement is wrong.  The issue was already relevant well before; and the Federal Circuit affirmed a prior invalidity finding.  What is true: back in 2015, the parties were limited to only 10 claim construction issues and ‘without substantial redundancy’ didn’t make the top-ten list.  The Federal Circuit decision pushed it up in the ranking.

= = = =

One result here is that Berkheimer will never get the chance to present the eligibility issues to the jury for their factual findings.

by Dennis Crouch

Andy Warhol Foundation v. Goldsmith (Supreme Court 2022)

Although Warhol is dead, his art, legacy, copyrights, and potential copy-wrongs live on.  In the 1980s, Warhol created a set of silkscreens of the musician Prince.  Prince did not personally model for the prints.  Rather, Warhol worked from a set of studio photographs by Lynn Goldsmith. Apparently Vanity Fair commissioned Warhol to make an illustration for its 1984 article on Prince.  As part of that process, VF obtained a license from Goldsmith, but only for the limited use “as an artist’s reference in connection with an article to be published in Vanity Fair Magazine.” The published article acknowledges Goldsmith. As part of that process, Warhol created a set of 16 Prince prints. Those have been sold and also reproduced in various forms in ways that go well beyond the original license.

Litigation ensued, and the basic question in the case is whether Warhol’s unlicensed uses constitute “fair use” under Section 107 of the Copyright Act. 17 U.S.C. § 107.  Here, in particular, Warhol argues that his use is so “transformative” of the original photographs that no license is needed.  The 2nd Circuit sided with the photographer Goldsmith — finding “the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law” and that “all four [fair use] factors favor Goldsmith.”   Although art critics and art historians will certainly see the works as quite different (especially if they know Warhol was the artist), the Second Circuit concluded copyright law does not ask Federal Judges to serve in that role:

[T]ransformative[ness] cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that
matter, a judge – draws from the work. . . . In conducting this inquiry … the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is so both because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective.

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).

The Supreme Court has now granted Warhol’s petition for writ of certiorari focusing  primarily on the transformative messaging provided by his works.  The petition argues that the Second Circuit unduly limited its analysis in ways contrary to prior Supreme Court precedent.

Question Presented: Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court
is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the Second Circuit has held).

Warhol petition.  In its opposition briefing, Goldsmith reframed the question, focusing on the fact that the creation reproduced major elements of the photographs for the purpose of being published in the same magazine where Goldsmith’s own photographs have been repeatedly published.

Andy Warhol produced a series of silkscreens by reproducing respondent Lynn Goldsmith’s photographic portrait of the musician Prince and adding additional elements. Petitioner Andy Warhol Foundation then licensed those works to Vanity Fair, a magazine that has also featured Goldsmith’s portraits of musicians and celebrities.

The question presented is whether the Second Circuit correctly held that Warhol’s silkscreens of Prince did not constitute a transformative use, where Warhol’s silkscreens shared the same purpose as Goldsmith’s copyrighted photograph and retained essential artistic elements of Goldsmith’s photograph.

Goldsmith Brief in Opposition.

Parties (and amici) will file their merits briefs over the summer and we can expect oral arguments in the Fall.

[Updated 4/2/2022 to account for differences between refusals under Section 2(a) vs 2(e)(1)]. 

In re Dolce Vita Footwear (Fed. Cir. 2022)

This is a pending trademark case involving the mark CLEAR that Dolce Vita uses on their shoes. I remember the 1980s and gel-sandals; my internet search also reveals some beautiful translucent Crocs. Still, when I saw the brand name CLEAR as applied to footwear, I did not expect for the shoes to be transparent.  

The USPTO did expect the CLEAR shoes to be transparent and so refused to register the trademark because it was deceptively misdescriptive.  Note here that the applicant was seeking to register the mark for both Footwear and Bags/Cases.

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . .

Section 2(e) (15 U.S.C. 1052(e)).

The Federal Circuit provides a three-part test for deceptive misdescriptiveness:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the decision to purchase?

In re Budge Mfg. Co., Inc., 857 F.2d 773 (Fed. Cir. 1988).  In Budge, the Federal Circuit found substantial evidence to support the conclusion that “LOVEE LAMB” seat covers were deceptive in their misdescription because they were made of synthetic fibers rather than sheepskin.  Note here that Budge was decided under 2(a), which bars “deceptive” marks generally.  In Dolce Vita, the TTAB cited Budge, but cut the test down to just the first two parts. The TTAB did not explain its justification for this difference, but it comes down to how the USPTO has a different treatment for deception under 2(a) compared with 2(e).

In prior cases, the TTAB had explained that

The test for deceptive misdescriptiveness [under 2(e)] has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation.

In re Quady Winery Inc., 221 USPQ 1213 (TTAB 1984).  The third question in the Budge test is “used to distinguish between marks that are deceptive under … Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1).”  See In re Perfect Fit Industries, Inc., 223 USPQ 92 (TTAB 1984). TMPE 1203.02(c).  The distinction between 2(a) deceptive marks and 2(e) deceptively misdescriptive marks is important.  The TTAB has interpreted the trademark laws as creating an absolute bar to registering deceptive matter under 2(a), but deceptively misdescriptive marks are registrable in the principle register upon a showing of acquired distinctiveness, as permitted under 2(f).  (Thanks to Professor Tyler Ochoa for suggesting further clarification here).

In any event, the TTAB concluded “we have no doubt that consumers will immediately perceive the word ‘clear’ as describing a feature or attribute that Applicant’s footwear and clothing could plausibly have.”

Now, Dolce Vita has appealed to the Federal Circuit arguing that its recitation of its products as “non-transparent goods” sidesteps the misdescription issue.  “There is no evidence that consumers understand CLEAR to be misdescriptive in these circumstances, as non-transparent goods cannot plausibly be transparent.”   This argument appears to fall within the English saying of “too clever by half.”

Dolce Vita also pointed to a lack of evidence that “reasonably prudent purchasers” are likely to fooled by the misdescription.  Prudent buyers looks at the shoes (or image of the shoes) before purchasing–“the quintessential consumer goods that buyers will invariably visually inspect (and often try on) before purchase.”  Thus, even if there is some potential for initial confusion, nobody would be fooled for long. Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1361 (Fed. Cir. 2001) (focus on whether misdescription “materially induce[s] a purchaser’s decision to buy”), quoting 2 McCarthy on Trademarks § 11:56 (2000).

• DolceVitaBrief
• TTAB Decision

The First Amendment has been doing some work in trademark law — but the bar on “deceptively misdescriptive” marks will likely stand, at least under Central Hudson’s test focusing on “nonmisleading commercial speech.” C. Hudson Gas & Elec. Corp. v. Pub. Serv. Commn. of New York, 447 U.S. 557, 563 (1980) (“The government may ban forms of communication more likely to deceive the public than to inform it.”).

Shoe brand is "CLEAR." But, it turns out that the shoes are not actually transparent.

— Dennis Crouch (@patentlyo) April 1, 2022

by Dennis Crouch

Correll v. Hirshfeld (Fed. Cir. 2022) (pending appeal)

From 2002-2017, Kevin Correll worked as an electrical engineer for the US Navy.  Correll is also a patent attorney and during that time Correll ran his own small firm.  In 2016, someone at the Navy figured out that this was a problem and worked with the USPTO Office of Enrollment & Discipline to begin an investigation.  Why is this a problem — at least according to the USPTO “U.S. Government employees are not available to accept private clients or to represent clients other than their agency before the United States Patent and Trademark Office.”  This quote comes from the USPTO mandatory survey of registered practitioners and is only loosely based upon the most on-point statute and regulations. 18 U.S.C. §§ 203, 205; 37 CFR § 11.111.  Rather, Rule 11.111 limits Federal Employees from acting “contrary to applicable Federal ethics law, including conflict of interest statutes.”  Here, the conflict of interest statutes (18 U.S.C. §§ 203, 205) include the following prohibitions:

Whoever … receives … any compensation for any representational services, as agent or attorney or otherwise … (B) at a time when such person is an … employee … of the United States … in relation to any … application … in which the United States is a party or has a direct and substantial interest, before any department, agency, court, court-martial, officer, or any civil, military, or naval commission [shall be punished]. 18 U.S.C. § 203.

Whoever, being an … employee of the United States … (2) acts as agent or attorney for anyone before any department, agency … in connection with any covered matter in which the United States is a party or has a direct and substantial interest shall be subject to the penalties … 18 U.S.C. § 205.

In a 2001 informal advisory letter, Marilyn Glynn General Counsel for the Office of Government Ethics concluded that these provisions should be seen as prohibiting current government employees from moonlighting as patent attorneys for private paying clients.  But, that opinion was based upon rather weak analysis.

= = =

An Administrative Law Judge (ALJ) found that Correll engaged in improper conduct by representing private clients and concluded that he should be suspended from practice for 5 years.  The USPTO Director then confirmed that judgement.  Correll then took his case to the E.D.Va. District Court who denied his motion for a preliminary injunction. Now, Correll has brought that case to the Federal Circuit.

In the appeal, Correll presents three arguments:

1. The restriction on practice suppresses Correll’s rights of free speech and free association.
2. The USPTO’s broad prohibition improperly reaches beyond what is provided by either statute or rule.  See Van Ee v. Envt’l Protection Agency, 202 F.3d 296 (D.C. Cir. 2000).
3. The district court improperly gave deference to the USPTO’s interpretation of the statutes.

In its briefing, the USPTO makes a big deal its survey that clearly put Correll on notice.

Of course, this type of notice only carries weight if it is also supported by law. If the Federal Circuit is willing to engage, it could become a quite interesting opinion.

Documents:

• Carroll_FedCirPetition
• Carroll_USPTO_OPPOSITION

by Dennis Crouch

Functional claim language has long been a mainstay of U.S. patent law. In the historic case of O’Reilly v. Morse, 56 U.S. 62 (1853), the famous inventor of the single-line telegraph (Morse) claimed patent rights to the use of electro-magnetism for transmitting a signal–without limit to any “specific machinery or parts.” Id. The Supreme Court found the claim “too broad and covers too much ground.” Although Morse’s claim directed to a single functionally described element was deemed improper, patent attorneys quickly learned that a combination of functionally-claimed elements could work. An example of this is famously seen in the Wright Brothers early aircraft patents. See US821393.

The Supreme Court pushed-back again on functional claims–perhaps most notably in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).  In Halliburton, the Supreme Court invalidated Walker’s means-plus-function claims as indefinite after holding that it was improper to claim an invention’s “most crucial element … in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.”  Id. Halliburton can be read as distinguishing between, on the one hand, claim elements that were already well known in the art, and on the other hand entirely new elements.  Well-known functionality will be understood by those skilled in the art as translating to particular machinery or processes.  And, the existence of prior art means that the patent doctrines of obviousness and anticipation will limit unduly broad scope.  On the other hand, newly invented functionality has the potential of resulting in quite broad scope if divorced from the underlying mechanisms of operation.  The Halliburton decision was not a surprise given that the Supreme Court had already repeatedly criticized functional claims.  A good example of that criticism is seen in the 1938 General Electric decision where the court complained about the “vice” of functional claim limitations:

But the vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.

Gen. Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938).

Halliburton did not stand for long. Rather, the Patent Act of 1952 was expressly designed to overrule Halliburton and revive the use of means-plus-function claims.  The new law, now codified in 35 U.S.C. § 112(b) reads as follows:

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Id.  You’ll note that the statute does not suggest any difference between well-known or novel elements in their use of means-plus-function language.  One key feature of Section 112(f) is its particularly narrow interpretive scope.  Means-plus-function elements are not interpreted as extending to the full scope suggested by their broad claim language.  Rather, as the statute recites, the scope is “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id.  Thus, a claim directed toward a “fastening means” appears quite broad on its face as covering all conceivable ways of fastening, but the term would likely be quite narrowly interpreted if the patent specification is also narrowly drafted.  If the specification disclosed a “nail” as its only example, the court would likely limit “fastening means” to only include nails and their equivalents.  Id. (“structure … described in the specification and equivalents thereof.”).

Invalid as Indefinite: Section 112(f) does not tell a court what to do in cases where the specification lacks disclosure of any “corresponding structure.”  The Federal Circuit’s approach is to hold those claims invalid as indefinite under 35 U.S.C. § 112(b). In re Donaldson Co., 16 F.3d 1189 (Fed.Cir.1994) (en banc).  Indefiniteness was also the hook used by the Supreme Court in Halliburton, then codified within Rev. Stat. § 4888.  I am fairly confident that the Supreme Court would affirm the Donaldson precedent if it ever heard such a case. But, as discussed below, this interpretation leads to some seemingly unjust results.

Structure Plus Function: Because of the narrow construction and indefiniteness concern, patent drafters today largely shy-away from using means-plus-function claim language. Still, functional limitations offer powerful exclusive rights if given their full scope. In the marketplace, consumers  ordinarily care more about whether a machine serves its appointed function rather than how it particularly works. A common approach for many skilled patent attorneys is to take advantage of functional limitations while still endeavoring to avoid being categorized as Section 112(f) means-plus-function limitations. This approach is often quite natural as the English language regularly identifies machines and parts by their function: a brake, a processor, a seat.  These terms are inherently functional but are also tied to known mechanical structures.  I call this approach “structure plus function” and it requires a threshold amount of structure sufficient to ensure that the limitation is not MPF. Structure-plus-function regularly results in broader claims than MPF and claims that that are less likely to be invalidated as indefinite. Again, this is nothing new, and they exact type of language discussed by the Supreme Court in its 1938 GE decision. Still, in recent cases the Federal Circuit has been more aggressively putting claims in the Section 112(f) MPF box.  The key case on point is Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).

The MPF rules are particularly pernicious in situations where the claim element at issue is already widely available in various forms.  Since it is already widely available, the inventors (and their patent attorneys) typically feel less need to fully describe and specify particular examples of the well-known element.  That inventor “feeling” is generally supported by strong precedent that a thin specification is appropriate for elements of the invention already known to the public. This well-known-element situation is also outside of the point-of-novelty policy concerns raised by Halliburtan.  So, ordinarily, well known elements need only a thin disclosure within the specification.  An off the shelf-component might not receive any structural disclosure at all other than identifying its name and how it connects-in with the rest of the invention.  BUT, that all changes if the claim element is interpreted as MPF.  If its MPF, the claim scope is limited only to what is disclosed (and equivalents), and a specification without structural disclosure will render the MPF claim invalid as indefinite.  Thus, we have two entirely different drafting approaches that will depend greatly on how the claim is interpreted.  And, following Williamson there is no longer a strong MPF interpretive presumption based upon the presence/absence of traditional MPF language such as “means for.”  What that means practically is that the threshold is high-stakes, but unpredictable.

Recently, the Federal Circuit decided two Section 112(f) cases that push back a bit on Williamson:

• Dyfan, LLC v. Target Corp., — 4th —, 2022 WL 870209 (Fed. Cir. Mar. 24, 2022) (“code”, “application” and “system”); and
• VDPP LLC, v. Vizio, Inc., 2022 WL 885771 (Fed. Cir. Mar. 25, 2022) (non-precedential) (“storage” and “processor”).

None of the claim elements at issue in the cases used the word “means” as a signal of intent.  Still, the two district courts interpreted the limitations as written in means-plus-function form. In addition, both district courts concluded that the claims were invalid as indefinite since the specifications lacked disclosure of corresponding structure.

The first step in 112(f) analysis is to determine whether a claim element should be classified as a means-plus-function claim.  The most obvious clue is whether the element is written in traditional means-plus-function style–using the word “means” and also including some functional purpose.  An element that does not use “means” is presumptively not a means-plus-function claim.  However, that presumption is not longer a strong presumption. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).  And, the presumption can be overcome by a showing that the claim “fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. (internal quotation marks removed).  In addition, “nonce words” are seen as effectively using the word “means.” Id.   Taking all this together, we know that Williamson is a quite important decision. It (1) moved away from a strong presumption against MPF interpretation absent “means” language and (2) established the “nonce word” doctrine. Not surprisingly, the case is the most-cited Federal Circuit decision of 2015.  Still, some members of the court appear to see Williamson as potentially going too far, and that can be seen in the Dyfan and VDPP decisions by Judges Lourie (in both); Dyk, Stoll, Newman, and Taranto.

Claim Construction: The question of whether a claim element is in means-plus-function form is part of claim construction. It is thus the role of the court (rather than a jury) to decide and is ordinarily seen as a question of law with de novo review on appeal.  One exception  to this is comes when a party presents evidence leading to underlying factual  conclusions. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015). Those factual conclusions are given deference on appeal.  Id. In some cases, the factual conclusions may conceivably so intertwine with the legal conclusions that the ultimate claim construction should also be treated as a mixed-question of law and fact and thus given deference on appeal.  (This last sentence should be seen as my speculation on the correct rule rather than black-letter caselaw.)

In most situations, claim construction is purely a question of law and comes-in most commonly when the parties are endeavoring to show the level of understanding of a person of skill in the art (POSA).  For MPF interpretation, this type of expert factual evidence appears to be more common than ordinary claim construction as the parties endeavor to show that a particular claim element would be understood as connoting “structure.” See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018).

Dyfan’s patents are directed to location-based triggers in mobile phones. Coincidentally, I used my idea of this technology in my internet law course recently in our discussion of privacy law–imagining Ads pop-ups based upon a user’s particular micro-location. In our example here, imagine that as you walk near the vacuum cleaner aisle of Target, your phone receives a “targeted” vacuum cleaner advert or coupon.

The Dyfan claim is directed to a “system” and requires “code” to cause a mobile device to output “visual information” based upon “location-relevant information.”  The claim’s “wherein” clause requires certain timing of the outputs (automatic output of visual information after receiving a communication receipt but without requiring a separate “first message”).  The wherein clause ties itself to the “system” (“wherein the system is configured…”) and does not state if the action is also done by the code. Thus, the courts identified this clause as the “system” element.

The district court found these two claimed elements to lack “structure” and therefore interpreted them as MPF elements.  At step two, district court examined the disclosure documents found no corresponding structure within the specification.  The result then is that the Code and System elements were un-construable and the entire claim invalid as indefinite.

On appeal, the Federal Circuit reversed and remanded–holding that the district court had improperly shifted the burden to the patentee to prove that the elements were not MPF.  This presumption of no-MPF exists because the claims did not use the term “means.” In its decision, the appellate court began in an odd way by stating that overcoming the presumption requires “a preponderance of the evidence.”  I call this ‘odd’ because preponderance of the evidence is the standard used for questions of fact rather than questions of law. As I mentioned, claim construction has been repeatedly deemed a question of law except for limited circumstances.  Here though, there was expert testimony that those skilled in the art would understand “code” to be a particular term of art that encompasses a computer program, and that “off-the-shelf-software” was available to perform the specific function claimed.  On appeal, the Federal Circuit began with a presumption that the code was not-MPF, and that presumption was further solidified by the unrebutted testimony indicating structure.  As part of this, the appellate panel also rejected the notion that the code limitation was “purely functional.”

The system limitation is a bit more complicated — certainly the “system” has structure.  The claim actually requires that the system include a physical building. But, the claim also requires that the system be “configured such that” messages are sent in a particular order and based upon particular triggers.  “A system comprising . . . wherein the system is configured such that . . . .”  Section 112 speaks in terms of an “element”, and the court was faced with the question of whether (1) the system itself is the element, or instead (2) the element is the sub-part of the system that performs the claimed function.  On appeal, the Federal Circuit did not decide this question, but instead held that the claims provide sufficient structure either way.  The court particularly noted that the aforementioned ‘code’ is part of the system and it it is pretty clear that the code would be doing the work here as well.

Although the wherein clause does not expressly refer to the previously recited “code,” it references specific functions that are defined or introduced in the code limitations and thus demonstrates that it is the code that performs the function recited in the wherein clause.

Slip Op. Since these claim elements included sufficient structure, the appellate panel concluded that they were not written in means-plus-function form. And, as a consequence the indefiniteness ruling

VDPP is non-precedential, but reaches the same results. And, although decided only one-day after Dyfan, it favorably cites that decision and particularly the shifting of burdens and evidentiary requirements.  VDPP’s patents relate to technology for blending 2-D video streams so that they appear 3-D. US9699444B2 claim 1 is directed to “an apparatus” having two elements: (1) a storage and (2) a processor.  The storage is “adapted to store one or more frames.”  The processor has a number of  claimed functions, including obtaining and expanding an image; creating a ‘bridge frame’ that is a “non-solid color”; and blending various frames for display.   The patent has a 2001 priority date, and the claims here have shifted substantially to capture market development.

The C.D.Cal. district court determined that VDPP’s claimed  “processor” and “storage” elements were both subject to § 112(f) since they “do not describe how to carry out the recited functions—only that they do” somehow accomplish those functions.  That statement appears almost lifted from Halliburton’s definition of means-plus-function claiming.  In another pithy restatement of its conclusions, the district court also identified each term as a “black box for performance of a function.” On appeal the Federal Circuit reversed–holding that the “processor” and “storage” elements contained sufficient structure.

In the case, the district court “summarily concluded that the limitations [were] subject to § 112(f).”  On appeal, the Federal Circuit found that erroneous because claims without the “means” term are presumed to not be MPF.  This issue here seems to get to the heart of the nonce-word debate. My understanding of ‘nonce words’ is that they are presumed to be MPF triggers.  Thus, the district court’s opinion appears to be based on its conclusion that the processor and storage are “nothing more than
nonce words.”  On appeal, however, the Federal Circuit took a different path. Rather than starting with the nonce work question, the court began with the presumption of no-MPF absent the word “means.”  The court then quoted Dyfan’s statement that overcoming the presumption requires evidence.

Vizio was required to provide at least some evidence that a person of ordinary skill
would not have understood the limitations to ‘recite sufficiently definite structure[s].’

Slip Op. (quoting Dyfan).  The district court had avoided this presumption by identifying the terms as nonce words. That approach was apparently wrong: “The court pointed to no such evidence from Vizio, instead summarily concluding that the limitations are subject to § 112(f). . . That is insufficient to overcome the presumption
against application of § 112(f).” Perhaps the best way to reconcile the developed doctrine here is that a district court should not identify a word as a ‘nonce’ word based upon reasoning alone. Rather, that determination requires some sort of evidence.  In VDPP, the court again referred back to Dyfan and shows district courts how to cite the case:

Vizio’s arguments are particularly unpersuasive in view of our holding in Dyfan. In Dyfan, the district court determined that the limitations “code” and “application” were subject to 112(f).
We reversed the district court’s construction of those terms (among others), explaining that the court did not give effect to the presumption against § 112(f). More specifically, we held that the defendant failed to show “that persons of ordinary skill in the art would not have understood the ‘code’/‘application’ limitations to connote structure in light of the claim as a whole.” That same rationale applies here. As explained above, the court ignored that it was Vizio’s burden to rebut the presumption against § 112(f), and Vizio failed to meet that burden.

Slip Op.  I’ll just note that this type of talk of ‘presumption’ and presumably external ‘evidence’ is radically different from how the court usually discusses claim construction.  Rather, claim construction is a question of law where we are searching for the proper construction.  Typically neither party has a burden of proving a question of law.

In VDPP, the district court also pointed to evidence presented that the storage and processor are known structural forms.  The patentee had fallen into the pernicious trap noted above by explaining in the specification that that “processors” and “storage” are “well-known” in the art.  Here, the court concluded that the specification statement that these are “well known” provides good evidence that the terms were not intended as MPF (without further elaboration or explanation of the reasoning here).

The one problem with the court’s analysis in VDPP is that it implicitly concludes that the “processor” counts as the “element” for MPF analysis.  But, the claim is directed to a particular function, not simply a “processor for processing.” Here, for instance, the claim requires “a processor adapted to: obtain a first image frame from a
first video stream; ….” Although a general processor may be well known, a processor “adapted” as claimed was not well known in the art, and the question that the court needs to ask with regard to structure is whether the claim itself provides the structure for performing the recited function.

As you can see, this area is ripe with historical confusion, statutory bright lines, and shifting precedent.  I expect that the court will continue to develop precedent, but I expect that this pair of cases will begin to tone-down the impact of Williamson while also shifting litigation tactics.