You may have heard that most US utility patent claims use the open transition phrase COMPRISING. Here’s the data to support that hearsay. The chart below shows data from independent claims gleaned from issued US patens grouped by patent issue year.
To make the chart, I calculated the percentage of independent claims that include the phrase comprising or comprises or comprise as the first traditional (or only) transitional phrase within the claim text.
Patent courses traditionally talk about the three primary transition phrases:
Comprising/Comprises/Comprised of (Open Transition)
Consisting of (Closed Transition)
Consisting Essentially Of (Hybrid Transition)
In recent patents, fewer than 1% of claims use “consisting of” or consisting essentially of.” Rather, the biggest non-comprising segment is the category of claims that lack any traditional phrase as shown in the chart below. These non-traditional claims might use the word “having” or “including” as a transitional phrase, or they might not use any word at all.
Here are a few examples of these non-traditional transitions from 2021 patents:
One or more non-transitory, computer-readable media having instructions that, when executed by one or more processors, cause a device to: …
A non-transitory computer-readable medium configured to store instructions that, when executed by one or more processors, cause the one or more processors to perform operations that include:
A handheld, self contained, air cooled induction heater including …
A compound or a pharmaceutically acceptable salt thereof, wherein said compound is: …
A compound, or a pharmaceutically acceptable salt thereof, having the structure of
A method, by one or more processors, for managing text in rendered images: [No transition at all except for a colon]
Intermediate of formula B-20 [showing structural diagram of compound and going on to include several markush groups]
In many cases it appears that attorneys may be using the alternative transitions as part of their claim stratification strategy. Thus, many of the claims relying upon a non-traditional transition sit alongside other claims in the same patent that use “comprising.”
The Supreme Court has strongly supported arbitration as an alternative dispute resolution mechanism. The Federal Arbitration Act (FAA) codifies this “liberal federal policy favoring arbitration agreements.” Quoting Moses H. Cone Mem’l Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 24 (1983). Although the right to arbitrate patent cases is seemingly clear from the FAA, Congress went further in its 1982 PTO appropriations bill to expressly codify the enforcement of arbitration agreements for “any dispute relating to patent validity or infringement.” 35 U.S.C. 294. Sometimes a party subject to arbitration will still file their dispute in court. At that point, the opposing side will move to stay or dismiss the case and compel arbitration.
The core question in MaxPower Semiconductor (Fed. Cir. Sept 8, 2021), is whether the arbitration agreement can be used to cut-short an inter partes review (IPR) proceeding. Here, the Federal Circuit effectively sided with the PTO and the patent challenger and refused to compel arbitration. The majority opinion is by Judge Reyna and joined by Judge Chen. Judge O’Malley dissented — arguing that the court failed to live up to the statute:
The majority’s denial of a writ of mandamus in this case allows the Patent Trial and Appeal Board to add a new caveat to Congress’s clear instruction that agreements to arbitrate patent validity shall be “valid, irrevocable, and enforceable”—i.e., except during inter partes review.
O’Malley in Dissent.
Background: MaxPower worked for several years with Rohm Semiconductor to develop RFP power transistor technology. MaxPower obtained the patents and licensed those to ROHM with an ongoing running royalty. The license included an arbitration agreement. Money flowed for several years. Rohm eventually developed a new silicon carbide transistor and privately suggested new product was not covered by the agreement. At that point, MaxPower provided notice that it was planning to initiate arbitration in 30 days. ROHM acted first — filing the IPR petition at issue here as well as a lawsuit in N.D. Cal. seeking a declaration of non-infringement of the same patents. The N.D. Cal. Judge granted MaxPower’s petition to compel arbitration, and the appeal of that determination is separately pending before the Federal Circuit.
The PTAB instituted the IPR — holding that it was not bound by the Federal Arbitration Act or Section 294 of the Patent Act. According to the PTAB, those provisions are tied to civil litigation, not USPTO proceedings. PTAB explained:
After careful consideration of this issue, we conclude that the arbitration clause is not a reason to decline institution. Even if Patent Owner’s recitation of the facts is true, and even if the question of whether patentability falls within the scope of the agreement to arbitrate is committed to the arbiter, we nevertheless do not find a statute, rule, or policy that would preclude the Office from acting on the Petition.
NonAppealable: The first problem with MaxPower’s appeal is the statutory rule that institution decisions are nonappealable. 35 U.S.C. § 314(d). The court also ruled that mandamus was not appropriate here because it was being used as a “means of avoiding the statutory prohibition on appellate review of agency institution decisions.” In re Power Integrations, Inc., 899 F.3d 1316 (Fed. Cir. 2018). Another way to get to appeal is via the collateral order doctrine, but, according to the court, that doctrine also requires an issue of rights that “will be irretrievably lost in the absence of an immediate appeal.” Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214 (Fed. Cir. 2013).
The FAA itself also creates a right of appeal for refusing to stay any action subject to arbitration. However, the right to stay under the FAA is limited to stays of proceedings in Federal Court. As such, that provision also does not apply.
In the end, the Federal Circuit found no authority to hear the appeal, and thus dismissed the appeal and denied the mandamus petition. The court suggested that it might be able to do something once the IPR concludes and a right to appeal attaches. However, the court also noted that the questions here might all be wrapped-up in non-appealable initiation questions. “If MaxPower is truly not raising matters that are absolutely barred from appellate review under section 314(d) (an issue we need not decide here), then MaxPower can meaningfully raise its arbitration-related challenges after the Board’s final written decisions.”
In dissent, Judge O’Malley would have heard the case on mandamus. The court’s failure to hear the case “cast[s] a shadow over all agreements to arbitrate patent validity, which, after today, apply only in district courts and not in inter partes review proceedings.”
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I have not seen the arbitration agreement in this case. But there is usually a big question about whether patent validity and/or infringement are covered by the agreement that is particularly focused on licensing. The district court’s parallel decision staying its case to await the arbitration outcome is set for Oral arguments in October. The Judge did not actually determine the question of arbitrability, but rather found that issue was for the arbitrator to resolve.
Editor’s Note: Avery Welker is a 2L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch
By Avery Welker
My Civil Procedure I outline turned out to be the longest outline of my first law school semester. Personally, I was betting on joinder and class actions to contain the most notes throughout the semester. As it turned out, discovery took the “most notes” crown. That makes sense – there’s a lot to discover in a lawsuit! Upon review of my outline, some of these rules started to come back to me.
That includes, of course, Rule 26, which outlines discovery generally and contains rules on the duty to disclose.[1] Wrapped within Rule 26 are details about expert testimony.[2] While Rule 26 didn’t end up wholly dispositive of this lawsuit, it certainly was the final nail in the coffin for an inventor’s testimony through the course of Pandrol USA, LP v. Airboss Railway Products, Inc.[3]
This appeal arose from a summary judgment grant to Pandrol[4] (Plaintiffs-Appellees) over Airboss[5] (Defendants-Appellants), declaring that Airboss failed to show clear and convincing evidence of patent invalidity.[6]
The patent at issue, U.S. Patent No. 5,110,046 (’046 Patent), relates to preventing abrasion on tie rail seats by using a plate designed to absorb abrasion between the rail pad and rail tie.[7] FIG. 1 below shows the abrasion plate (labeled 10) in between the pad (labeled 4) and the tie (labeled 1).[8]
One issue in the appeal centered on the testimony of the ’046 Patent’s inventor, Hartley Young.[9] Normally, an inventor testifies on behalf of the patentee. However, by the time of this lawsuit, Young had taken a job with the defendant, Airboss, and submitted a declaration supporting his new employer’s contention that the patent was invalid.[10] At the district court level, assignor estoppel quickly put a stop to that testimony.[11] The Federal Circuit agreed and noted that exclusion of the inventor’s anti-patent testimony was justified based on “unfairness and injustice.”[12]
Where Rule 26 comes into play is the rest of the testimony.[13] Under Rule 26(a)(2), Airboss was required to file an expert report for Young’s declaration because the declaration contained .[14] This declaration contained Young’s opinion on the patent specification interpretation to be used on other issues in the trial.[15] The district court noted that Young’s testimony falls under Federal Rule of Evidence 702 and requires an expert report.[16] On appeal, the Federal Circuit agreed. Even though Young was an inventor and thus a potential fact-witness, his declaration also “contains expert opinion because he opines on claim construction and interpretation of the original application.”[17] In the end, the Federal Circuit affirmed district court’s exclusion of Young’s testimony on both the assignor estoppel and Rule 26 grounds, thus putting the final nail in his testimony.[18]
With Young’s testimony excluded entirely, clearly, that evidence could not come in. Many can speculate on what the outcome of this case would have been including Young’s testimony. No doubt that information from the inventor himself would be very relevant and accurate as to factual issues! However, one bullet point in my notes on expert witnesses lays out the base reasoning for this rule: “Essentially making sure experts are qualified and aren’t using ‘quack science.’”
Rule 26 certainly has plenty of moving parts. The overarching tools of discovery have many checkboxes and procedural steps to jump through. Sometimes I wonder how I kept it all straight on my final exam last year!
E.D. Va. Judge Brinkema sides with USPTO — holding that the Patent Act’s use of the term “individual” is limited to a human person — and thus that only humans can be inventors. Read the decision here: Thayler v. USPTO AI patent Decision
Lubby’s US9750284 covers a vape-pen (“personal vaporizer”). Lubby sued Henry Chung for patent infringement and won at trial with a jury verdict of almost $1 million. On appeal though the Federal Circuit has reversed-in-part — holding that the pre-suit damages were not available under 35 U.S.C. § 287.
In general, the patent laws bar a remedy for any infringement that occurred more than six years prior to the filing of the lawsuit. “[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.” 35 U.S.C. § 286. Back damages are further limited in by the patent marking statute of Section 287. That provision calls for a patentee to to mark any “patented article” that it sells or licenses-for-sale with the patent number. If the patentee sells/licenses-to-sell a product covered by the patent without so marking, then back damages can only be recovered for infringement after the infringer is “notified of the infringement and continues to infringe thereafter.” Id.; See also 35 U.S.C. § 287(a) (“Filing of an action for infringement shall constitute . . . notice.”).
Here, the patent covers an article (a personal vaporizor) and Lubby sells articles that appear to be covered by the patent (the J-Pen). In this case, Lubby did not disclose its damages computations until the day before trial, and those computations included request for back damages. The court’s approach is actually to assume marking unless the defense objects with at least some minimal evidence of the lack of marking. Here, Chung objected on that same day and pointed to the J-Pen’s lack of marking of the patent number. At that point, Lubby should have presented its evidence of marking. However, Lubby did not present any such evidence at trial. As such, Lubby “can only recover damages for the period that it provided actual notice,” which is the date that it notified Chung of the infringement.
Chung did have notice that the patent existed, but that is also different than notice of infringement under the statute. “[T]he actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether by license or otherwise.” SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462 (Fed. Cir. 1997).
The appellate court ordered a new trial on remand to calculate the post-filing sales numbers that will serve as the appropriate damages award.
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Chung also appealed on the merits of the infringement case. However, Chung did not file a R.50(a) JMOL motion on the issue and therefore lost his primary right to appeal. Chung did request a new trial under R.59, and the court does have power to hear an appeal of a denial of new trial. However, that standard is much higher — requiring an “absolute absence of evidence to support the jury’s verdict.” Here, the court found some evidence supporting infringement and thus upheld the verdict.
The Federal Circuit has confirmed that Belcher’s U.S. Patent No. 9,283,197 is unenforceable due to inequitable conduct based upon materials withheld during prosecution. The patent covers l-epinephrine formulations at pH between 2.8 and 3.3 and with certain impurity level limitations. During prosecution, the examiner found a prior art reference with a wider encompasing pH range of 2.2 to 5.0, but the patentee successfully argued that its narrower range was a critical element of the invention and necessary to prevent racemization of the l-epinephrine.
Prior to the application’s issuance, Belcher’s Chief Science Officer (Rubin) obtained possession and tested samples from two competing products (JHP & Sintetica) and found that they were both within the claimed pH range and within the claimed impurity levels. In addition, Rubin was in possession of a reference (Stepensky) that disclosed an overlapping pH range (3.25 to 3.7). In fact, while the application was pending, Rubin communicated with the FDA regarding these samples. However, none of them were disclosed to the USPTO.
Patent applicants and their attorneys are bound by a duty of candor and good faith in dealing with the USPTO. As part of this, 37 C.F.R. § 1.56 establishes a duty to disclose information material to patentability. This duty exists as long as the patent application is pending and applies to all “individuals associated with the filing or prosecution of [the] patent application.” The Office has generally tied the duty only to human-persons, and so the duty has not been applied directly to corporate applicants. As here, the focus is typically whether there is an individual person who has a duty and who failed their duty.
Patent examiners rarely exert their investigatory authority and so patents associated with a duty-of-candor violation are rarely uncovered until litigation. At that point, the patent is not automatically invalid. Rather, the patent may be deemed unenforceable due to inequitable conduct during prosecution, but only if the violation is both material and intentional.
To prevail on an inequitable conduct defense, a defendant must establish both the materiality of the withheld reference and the applicant’s intent to deceive the PTO.
Duty: Rubin testified that he was helped draft the patent application, including the claims and also helped formulate responses to office actions. That was enough to bind Rubin with the duty of candor.
Materiality: Here, the claims were found obvious by the district court based upon the withheld prior art, a finding that was not appealed. That was enough for the Federal Circuit to conclude that the documents were material to patentability.
Intent: On deceptive intent, the case lacked direct evidence that Rubin intended to deceive the USPTO, but the district court found sufficient circumstantial evidence within the repeated discussion of the references with the FDA. In particular, Rubin modified the proposed pH range from a wider range to the narrower range in order to take advantage of the data from Sintetica reference product and thus expedite FDA approval.
Unenforceability affirmed.
I’ll note here that some of you might be thinking — but the claims are obvious anyway. I’ll be curious to see whether the inequitable conduct finding results in an unfair competition claim against Belcher.
Second note – Belcher was a quite inexperienced patent applicant at the time that likely was part of the failures here.
This is a follow-up post on the pending SAS v. WPL appeal before the Federal Circuit. The focus of the case is copyrightability of the SAS statistical software and its outputs. SAS argues that it made a “plethora of creative choices” in developing its material, and that creativity is more than sufficient to satisfy the originality requirements of copyright law. Thus far, the courts have disagreed with SAS and rejected its copyright assertions. However, the company has now positioned its case before the intellectual property friendly Court of Appeals for the Federal Circuit.
The software at issue here is most aptly described as a programming language that consists of a set of functions & options that the plaintiff calls “input formats” used to produce formatted reports. In addition, SAS argues that the formatting of the reports is also copyrighted. There apparently is no claim of copying of any lines of software, but instead it is copying of the functionality and use of the particular coding language. My understanding is that WPL designed its software so that its software would execute the same input-procedure used on SAS and produce an equivalent output. Although these are functional aspects, they also involve creative choices.
In a prior post, I wrote about the SAS appeal including a number of amicus briefs supporting their strong copyright claim. Now the other-side has had its chance to respond, including substantial amicus support. The Federal Circuit’s Google v. Oracle decisions are sitting in the background. Although the Supreme Court eventually sided with Google on fair use grounds, it did not disturb the Federal Circuit’s copyrightability decision that strongly supported copyright protection even for functional software. WPL’s amicus supporters are concerned that the Federal Circuit will reinvigorate its approach to copyrightability in SAS.
New briefs in support of the accused infringer WPL:
Electronic Frontier Foundation (EFF): The law treats copyrightability of software differently than other literary works (as it should). Patents should be the go-to in this area. I’ll note that EFF has also repeatedly argued against patentability of software.
44 Intellectual Property Law Scholars: Focusing substantially on application and procedure for the abstraction-filtration-comparison (AFC) test — arguing that the AFC approach should not be rejected for a general “creative choices” test.
Computer & Communications Industry Association (CCIA): “A Copyright’s presumption of validity does not create a presumption that the entire work is protected expression.”
54 Computer Scientists: This brief is helpful in understanding the details of how SAS and WPL operate in the context and history of computer programming languages.
GitHub, Inc.: “Vague allegations of nonliteral copyright infringement” lead to FUD — fear, uncertainty, and doubt.
Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119 (1986) .
Richard H. Stern, Copyright in Computer Programming Languages, 17 Rutgers Computer & Tech. L.J. 321 (1991);
Ronald L. Johnston & Allen R. Grogan, Copyright Protection for Command Driven Interfaces, 12 COMPUTER L. INST. 1 (1991)
William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003)
Pamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright Infringement, 107 Nw. U. L. Rev. 1821 (2013)
Pamela Samuelson, Three Fundamental Flaws in CAFC’s Oracle v. Google Decision, 37 Eur. Intell. Prop. Rev. 702 (2015)
Lydia Pallas Loren & R. Anthony Reese, Proving Infringement: Burdens of Proof in Copyright Infringement Litigation, 23 Lewis & Clark L. Rev. 621 (2019).
Christopher Jon Sprigman & Samantha Fink Hedrick, The Filtration Problem in Copyright’s “Substantial Similarity” Infringement Test, 23 Lewis & Clark L. Rev. 571 (2019)
This is an old-school claim construction case. The district court narrowly construed DET’s claim term “three-dimensional spreadsheet” and consequently ruled that Google does not infringe. On appeal, the Federal Circuit has affirmed.
DET’s invention here is mainly about adding tabs to a spreadsheet to make it “three dimensional.” In a prior decision, the Federal Circuit found the claims patent-eligible. “[T]he claim is directed to a specific method for navigating through three-dimensional electronic spreadsheets. . . . The Tab Patents solved [a] known technological problem in computers in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment.”
Judge Stark had construed the claims prior to his eligibility ruling. On remand, however, Google asked for additional claim construction of the preamble term “three-dimensional spreadsheet” since that aspect of the invention had been critical to the Federal Circuit’s eligibility determination.
The district court did construe the term in a narrow fashion — requiring “a mathematical relation among cells on different spreadsheet pages.” This construction essentially requires each tab to be a layer in a stack of sheets and that the order of the sheets have mathematical importance. In the example above the “Salads” layer is one-page away from “Entrees”, and two pages from “Desserts.” A mathematical relationship is necessary to allow for 3-D features such as 3-D ranges. The specification explains that
Three-dimensional spreadsheets allow the user to create a worksheet having cells arranged in a 3-D grid. In this manner, the user can manipulate multi-dimensional ranges, i.e., Solid blocks of cells. This feature has distinct advantages. For example, the user can build a worksheet consisting of multiple two dimensional spreads, define 3-D ranges that span these spreads, and copy a range of rows and columns into each of many 2-D spreads at once. This feature eases difficult choirs, such as consolidation of multiple spreads.
‘259 Patent at Col. 2-3. Further, in the prosecution history, the patentee distinguished a Lotus-123 prior art reference allowing linking between different pages as not representing a “true 3D spreadsheet.”
One issue here is that the 3D spreadsheet requirement is part of the preamble of the claim, not the body of the claim.
12. [A] computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising . . .
Ordinarily, preambles are not limiting. Here, the Federal Circuit though fell back on the nose-of-wax analogy — explaining that the patentee had already pushed the wax in one direction and is now estopped from pushing it back. Namely, during the eligibility determination, the patentee pushed its case as an improvement to three-dimensional spreadsheets, and the court relied upon those arguments to find the invention eligible for patenting.
The COVID vaccines do not genetically modify your DNA, but Juno’s patented CAR T-Cell therapy certainly does. Sloan Kettering owns U.S. patent No. 7,446,190 and Juno (BMS) is the exclusive licensee. The patent claims a nucleic acid polymer (DNA/RNA) that encodes for a particular “chimeric T cell receptor.” The idea here is part of a revolutionary CAR T-Cell therapy that genetically modifies a patient’s own T-Cells so that it will be able to recognize (and thus attack) specific antigens. The inventors have been awarded numerous accolades for showing that this approach works to treat some lymphomas. Kite’s “YESCARTA” therapy was found to infringe.
The jury awarded the patentees $1.2 billion for Kite’s infringement. On appeal, the Federal Circuit has reversed — finding the claims invalid for lack of written description.
Functional Binding element: The claims are directed to DNA (or some other nucleic acid) coding for a “binding element that specifically interacts with a selected target” in the form of a single chain antibody. But, the patent does not actually disclose the DNA sequence of such a binding element. That failure led the court to find that the claim lacks written description.
The patent does disclose a couple of single-chain antibody fragments that work (and their binding sites): one derived from the “SJ25C1 antibody” that binds to B-cell lymphoma cells; and another derived from the “J591 antibody” that binds prostate cancer cells. The patent explains how those were obtained used, but does not disclose the amino acid sequence of either of these antibodies or their coding nucleic acid sequence.
The basic written description question is whether the functionally claimed “binding element” genus is sufficiently supported by the two examples provided in the specification.
Written description is a question of fact, and the jury sided with the patentee — finding invalidity had not been proven with clear and convincing evidence. The district court supported that ruling and denied Kite’s renewed JMOL motion. On appeal though, the Federal Circuit flipped the verdict — holding that “no reasonable jury could find the ’190 patent’s written description sufficiently demonstrates that the inventors possessed the full scope of the claimed invention.”
Full Scope Written Description: The Patent Act requires that the specification include “a written description of the invention.” 35 U.S.C. § 112*(a). The specification needs to convey that the inventor had “possession” of the claimed invention as of the patent application’s filing date. Written description regularly arises with regard to genus claims — claims covering multiple embodiments. In that situation, the court is looking for possession of the “full scope” of the invention as claimed. Typically this involves disclosure of “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad. The test is even tougher for functionally-defined genus since structure cannot be derived from the claim language itself.
Here, the court found that the patent provided “no details” about specific embodiments beyond “an alphanumeric designation, SJ25C1, as the source”, and no “general characteristics that would allow” the binding portion to operate.
Without more guidance, in a vast field of possible CD19-specific scFvs with so few of them known, no reasonable jury could find the inventors satisfied the written description requirement.
Slip Op. During the trial, the patentee’s expert witnesses provided explanations regarding how the approach here has facilitated multiple CD-19 specific antibodies to be used as the way claimed by the inventors. On appeal though, the court reminds us that written description must be shown in the patent document istelf — not based upon post-solution activity. “Dr. Sadelain’s testimony about post-priority date developments, therefore, is irrelevant to the inquiry before us.”
Reversed.
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The case does not go into this, but the original application here is a copy of the nature biotechnology article published by the inventors in January 2002 along with 1-page of text all filed in May 2002. [Provisional App: 52334_60383872]. The issued claims are almost identical to those in the non-provisional filed in May 2003.
The Alice test officially includes two steps. But these are highly correlated steps. Thus, if a claim fails step one, it usually fails step two as well. In this case, the court appears to borrow heavily from typical step two analysis in order to make its step one conclusion:
Universal Secure Registry v. Apple and Visa (Fed. Cir. 2021)
The district court dismissed USR’s patent infringement complaint, holding of all four asserted patents were ineligible under the abstract idea test incorporated into 35 U.S.C. § 101. On appeal, the Federal Circuit has affirmed. U.S. Patent Nos. 8,856,539; 8,577,813; 9,100,826; and 9,530,137.
The patents here are directed to technology for securing electronic payment transactions. This is an area of technology that the Federal Circuit has previously addressed. Here, the court notes that cases “often turn[] on whether the claims provide sufficient specificity to constitute an improvement to computer functionality itself.” Slip Op. Note that this statement from the court has two specific requirements: (1) that the claims be drafted with specificity; and (2) that the element claimed by an “improvement to computer functionality.” Generic claims are not enough; neither are specific claim limitations directed toward elements already well known in the art.
Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905 (Fed. Cir. 2017) (use of conventional generically claimed barcode to communicate information about the object being mailed was an abstract idea).
Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178 (Fed. Cir. 2020) (requirement of input, storage, and use of generically claimed authentication information was abstract).
Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161 (Fed. Cir. 2019) (use of well known check verification method did not save the claims from being abstract).
Prism Technologies LLC v. T-Mobile USA, 696 F. App’x 1014 (Fed. Cir.
2017) (receiving and authenticating identity data to permit access was abstract since they were claimed generically rather than offering a “concrete, specific solution”).
Here, the claimed method enables a merchant transaction. The merchant is given a time-varying code instead of a credit card number. That code is then set the credit card company servers for authorization, including any restrictions on transactions with the merchant. The company then either approves or denies the transaction. This approach allows for purchases without actually providing the merchant with the “secure information” such as the credit card or account number.
The district court identified the abstract idea here of “obtaining the secure verification of a user’s identity to enable a transaction.” On appeal, the Federal Circuit suggested that analysis wasn’t entirely correct, but did agree that the claims are directed to an abstract idea.
In our view, the claims “simply recite conventional actions in a generic way” (e.g., receiving a transaction request, verifying the identity of a customer and merchant, allowing a transaction) and “do not purport to improve any underlying technology.” Solutran. Accordingly, the claims are directed to an abstract idea under Alice step one.
[T]he asserted claims are directed to a method for verifying the identity of a user to facilitate an economic transaction, for which computers are merely used in a conventional way, rather than a technological improvement to computer functionality itself.
Slip Op. The court found this case “closer to the demarcation line between what is abstract and non-abstract” than some other cases, but still on the wrong side of the line.
As you’ll see, the court’s conclusions in Alice Step One (conventional actions in a generic way) fully answer Alice Step Two as well. The court particularly notes that time-varying codes were already well known in the field. Further, this case of using a third-party intermediary is also well known and an abstract idea itself.
Invalidity Affirmed.
Notes
The court walked through several other related claims, including the use of a biometric sensor, but found them all abstract.
The decision discussed here was precedential. The court also released four non-precedential USR v. Apple decisions. Apple v. USR, 20-1330. The PTAB sided with the patentee in an IPR and found claims of US8856539 not proven invalid. That decision was vacated based upon the invalidity finding. See also, Visa and Apple v. USR, 20-1662 (Same result); Apple v. USR, 20-1222 (appeal rendered moot); Apple v. USR, 20-1223 (appeal rendered moot; vacate and remand for dismissal; holding that substitute claim was also ineligible).
The Federal Circuit’s new decision in DynCorp v. US (Fed. Cir. 2021) involves a bid-protest regarding a government contract. The court’s opening offers a brief insight on the complex world of DOD governmental contracts.
This bid-protest case arises from a peculiar procurement mechanism. Contracting officers often must discuss deficiencies and significant weaknesses in proposals with
offerors before proposals are final. And so when an offeror proposes a price that is unreasonably high (so as to preclude an award), the government must discuss that unreasonableness with the offeror, potentially giving it a chance to revise its proposal to fix what may have went wrong. If the price is too high yet not unreasonable, the government need not discuss it and the offeror need not get another try. The upshot is that an offeror whose initial proposal is unreasonably priced may fare better than one whose isn’t.
Here, six firms vied for spots to perform logistics work for the Army across the globe. DynCorp lost. Its prices were higher than its competitors’; its proposed technical approach was worse. After balancing four proposal-evaluation factors, none of which DynCorp was best on, the Army went with other offerors.
Now DynCorp argues that the price it gave the Army was so high as to be unreasonable—and that the Army should have concluded as much and given it the opportunity to revise its proposed approach. DynCorp takes issue with the Army’s price-reasonableness analysis, which it says skirted regulatory requirements and was irrational besides.
The Court of Federal Claims dismissed DynCorp’s bid protest, finding no error in the Army’s analysis. As we explain below, we agree. Accordingly, we affirm.
The next big software copyright case is before the Federal Circuit in the form of SAS Institute, Inc. v. World Programming Limited, Docket No. 21-1542. The litigation has substantial parallels to Google v. Oracle, but might end up with a different outcome. In Google, the Supreme Court found fair-use but did not decide the issue of copyrightability. That issue is front-and-center in this case.
WPL is a UK based software company who obtained several copies of SAS statistical software and made a clone version. SAS sued in E.D.Tex for both copyright infringement and patent infringement. The district court dismissed the copyright claims — holding that the software was unprotectable.
Plaintiff SAS showed that it holds a registered copyright, amply argued that its asserted works are creative, and presented repeated evidence of factual copying. … Defendant WPL then came forward with evidence showing that material within the copyrighted work was unprotectable. … SAS thereafter failed to show any remaining protectability, either by affirmatively showing some elements of the work to be protectable or by combatting Defendant’s showing of unprotectability.
Dismissal Memorandum. SAS also stopped pursuing the patent allegations and they were dismissed with prejudice. Their inclusion in the case appears to have been enough to give the Federal Circuit jurisdiction rather than the Fifth Circuit, even though only copyright issues are on appeal. I’ll note that a parallel copyright claim was rejected by the U.K. courts who determined that WPS had “reproduced only aspects of the program that are not protected by U.K. copyright law.” Separately, SAS also previously litigated this copyright case in North Carolina federal court. That court also granted summary judgment to the accused infringer on the copyright claim. However, 4th Circuit vacated the copyright holding as moot and that claim was dismissed without prejudice. Thus, as WPL writes in its brief: “This is the third time SAS Institute Inc. (“SASII”) has sued World Programming Limited (“WPL”) for copyright infringement. It is also the third time courts have rejected SASII’s copyright claims.”
SAS is hoping to change that outcome and has taken its appeal to the Federal Circuit with Dale Cendali (Kirkland & Ellis) leading the charge. We shall see, but the Federal Circuit is likely one of the most pro-copyright courts in the country. SAS’s primary arguments on appeal:
Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.
WPL’s responsive brief was recently filed by Jeffrey Lamken (MoloLamken). The appellee restates the key copyrightability issue as follows: “Whether copyrights over a computer program protect (a) the functionality of executing programs written by users in a free-to-use computer language or (b) outputs dictated by user-written programs.”
A number of amicus briefs have already been filed in the case supporting the copyright holder. The the deadline for briefs in support of WPL has not yet passed.
Brief of Ralph Oman (former Register of Copyrights): Computer programs are literary works entitled to full copyright protection. Once registered, the copyrights are entitled to a presumption of validity.
Author’s Guild (et al): Upsetting the burdens undermines copyright. Although this is a software case, it has major spillover potential in other areas such as photography, writing, and music.
Copyright Alliance: Software is protectable by copyright.
Mathworks and Oracle: The court “flubbed its application of an otherwise sensible burden shifting approach.”
My favorite part of the appellee brief is that the redaction was done in MadLib format:
CommScope and Dali are competing in the wireless communications infrastructure market. Both of the parties are making distributed antenna systems that allow for seamless wireless communications within a wide area. CommScope has 30,000 employees and is a Goliath. Although Dali’s CEO Albert Lee has no sling+pebble, he does have a potential secret weapon. Lee is a former patent attorney. The two companies have been battling in court and before the PTAB for the past several years.
In 2019, CommScope sued Dali for patent infringement (asserting five different patents); Dali counterclaimed asserting two of its own patents. A jury agreed, and found that both sides were infringing. N.D.Tex. Chief Judge Lynn denied the cross-JMOL motions and entered judgment. Dali gets $9 million and CommScope gets $6 million and a permanent injunction against sales of particular distributed antenna systems. On appeal, the Federal Circuit has reversed in-part – finding no infringement of Dali’s ‘521 patent.
Here, the asserted method claim requires “switching a controller off” as part of a diagnostic training process. The accused device was shown to switch off feedback from the controller, but not the controller itself. Although the accused device achieves the same diagnostic results, it uses an approach that is not literally claimed. Dali called the distinction “hair-splitting” and “irrelevant in light of the purpose of the invention.” On appeal, the Federal Circuit concluded that hair splitting is what we do in the context of literal infringement. If the patentee wanted more nuance then it should have presented its case under the doctrine-of-equivalents.
Before the district court, Dali presented only a literal infringement case, and not a doctrine-of-equivalents alternative. Thus, Dali’s argument that the FlexWave switch/controller is effectively “nonoperating” because it is not passing a feedback signal of the power amplifier of interest is irrelevant because Dali failed to produce evidence below to show that the accused controller is literally nonoperating, as the district court determined was required by the claim.
Slip Op.
= = = =
Patentees have to thread a narrow needle during infringement litigation. The claims must be broad enough to capture the accused infringing activity, but narrow enough to avoid the prior art. Although infringement and novelty are two separate considerations, they are tightly related. “That which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). Often a defendant will attempt to show that its product is essentially the same as the prior art — and offer the conclusion that either (1) we don’t infringe or (2) the patent is invalid.
Here, the court bolstered its non-infringement conclusion by looking at the patentee’s arguments regarding anticipation. In particular, the patentee argued that the prior art reference (Wright) did not anticipate because it did not disclose turning-off the controller. The failing of the prior art asserted by the patentee lines up neatly with the failing of the infringement evidence asserted by the accused infringer. “Dali cannot simultaneously argue” both infringement and non-anticipation. Slip Op.
“This case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.'”
Quoting Amazon (Fed. Cir. 2021). See also White v. Dunbar, 119 U.S. 47, 51 (1886) (“Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.”)
Justice Joseph Bradley penned his “nose of wax” metaphor in the 1886 decision of White v. Dunbar. By that time, the phrase was already well known. As an American example, the Connecticut Puritan Gershom Berkeley included the following quip in his 1692 book titled Will and Doom: “I think no man should make arbitrary laws, which, like a nose of wax or leaden rule, may be twisted which way a man will.” An earlier use of the idiom may be in Robert Burton’s 1621 book The Anatomy of Melancholy.
To see so many lawyers, advocates, so many tribunals, so little justice; so many magistrates, so little care of common good; so many laws, yet never more disorders . . . to see a lamb executed, a wolf pronounce sentence . . . Laws altered, misconstrued, interpreted pro and con, as the Judge is made by friend; bribed, or otherwise affected as a nose of wax, good today, none tomorrow …
Burton. The earliest pushed form appears to be a 1532 work by William Tyndale — arguing about the improper use of biblical scripture.
Campbell Soup v. Gamon Plus (Fed. Cir. 2021) [OPINION]
Obviousness of a design patent is governed by 35 U.S.C. 103, just like utility patents. However, the methodology is a bit different. Importantly, the Federal Circuit suggests that the obviousness inquiry should begin with a primary reference whose whose “design characteristics … are basically the same as the claimed design” and that creates “basically the same visual impression.” That primary reference can then be combined with other references to fill in gaps that would have been obvious in order to create the “same overall visual appearance as the claimed design.” Apple v. Samsung (Fed. Cir. 2012).
Soup Dispenser Design patent case is back before the Federal Circuit.
Gamon’s design patents cover a can dispenser that might be used for cans of soda or cans of soup. U.S. Design Patent Nos. D612,646 and D621,645. In the IPR, the PTAB originally sided with the patentee–finding that the asserted prior art (Linz) could not serve as a primary reference. The basic issue was that the design patents claim a dispenser holding a can, and the key prior art (Linz) did not show the can itself. On appeal, the Federal Circuit vacated — holding instead that Linz was a proper primary reference since it is clear Linz “is made to hold cylindrical objects in its display area.” The primary reference also lacked tabbed holders found in the patents, but the appellate panel identified those as “ever-so-slight differences.”
Back on remand, the PTAB again sided with the patentee–holding that the asserted references failed to show that the claimed design would have been obvious. Now, back on appeal the Federal Circuit has reversed and finally concluded that the patented designs are obvious.
Partial designs: At first glance, these designs appear to cover a fairly complex soup can dispenser. However, the dashed lines are shown only for context. Once those broken lines are removed, all that remains is a boundary-free label area, rectangular stops, and a can. The image below compares the claimed portion of the design against the Linz prior art.
Differences here – Can vs. no can; rectangular tabs vs curved tabs, elongated display portion. Despite these differences, on remand, PTAB found that Linz had the same overall visual appearance. Still, the PTAB sided with the PTAB based upon secondary considerations — so called “objective indicia of nonobviousness.”
Gamon’s commercial success in selling its product that epitomized the patent (the iQ Maximizers)
Campbell’s praise of, and commercial success in using Gamon’s product; and
Copying of the design by a third party.
On appeal, the Federal Circuit rejected these considerations — finding a lack of nexus between the scope of the claims and the commercial success, praise, and copying.
In Graham v. Deere, the Supreme Court explained that “secondary considerations [such] as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized . . . [a]s indicia of obviousness or nonobviousness.” Still, in order to even be considered, the activity must have a close nexus by to the invention: The success was due to the invention (not just marketing); the innovative and patented aspects of the invention were copied or praised; etc.
The burden of proving nexus is generally placed on the patentee. However, nexus can be presumed when the patent is commensurate in scope with the product being sold/praised/copied. Here, the PTAB found that Gamon’s patented designs were directly incorporated into its iQ Maximizer products.
On appeal, the Federal Circuit reversed — finding that design patent only covers partial product and therefore the two are not essentially the same. Here, the product includes many unclaimed features that are only dashed lines in the patent. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019). The PTAB had considered the argument, but found the unclaimed features of the product “insignificant to the ornamental design.” In particular, the dispensers are generally lined-up side-by-side and so you generally only see the front display in a store. On appeal, the Federal Circuit rejected that analysis.
The Board reasoned that “[t]he unclaimed rearward rails and side portions are not prominent ornamental features,” and those portions are, therefore, “insignificant to the ornamental design.” This circular reasoning reflects a misunderstanding of the law. In determining coextensiveness, the question is not whether unclaimed features are insignificant to a product’s ornamental design. The question is instead whether unclaimed features are “insignificant,” period. That is because the purpose of the coextensiveness requirement is to ensure that nexus is presumed only when the product “is the invention disclosed and claimed.” By limiting its analysis to ornamental significance, the Board simply did not answer the relevant question: whether the iQ Maximizer “is the invention.”
Slip. Op. The result here is that partial product claims will be hard-pressed to get a presumption of nexus.
Gamon had also attempted to prove the nexus — showing that the secondary indicia were directly related to the claimed features. On appeal though, the Federal Circuit rejected that evidence — holding that the secondary indicia is only permissible when associated with points-of-novelty within the design.
To establish nexus, Gamon needed to present evidence that the commercial success and praise of the iQ Maximizer derived from “unique characteristics” [of the patent.] It failed to do so. Instead, it presented evidence that merely ties commercial success and praise to aspects of the [product] that were already present in the prior art.
Slip Op.
The patentee had also proven copying, and the Federal Circuit simply concluded that it was not enough.
For purposes of this appeal, we assume substantial evidence supports the Board’s finding that Trinity copied the unique characteristics of the claimed designs. Even accepting the evidence of copying, we conclude that this alone does not overcome the strong evidence of obviousness that Linz provides.
Slip Op.
The opinion is interesting because it reads as if the Federal Circuit is re-weighing the evidence as it walks through. On careful analysis though, the court does not disturb any factual finding. Rather, the trick is that several aspects of the obviousness analysis are questions of law, including the ultimate conclusion. For those questions of law the court reviews the PTAB determination de novo and substitutes its opinion as authoritative.
I’m getting ready to teach my Fall 2021 Patent Law class, and that means doing an updated patent grant graph. This year’s version shows U.S. utility patents granted per year from 1840-2020:
Data for 2021 isn’t included in the table, but as of July 31, 2021, the authority file contains 195,480 patents. If the pace remains the same, that would predict about 335,000 patents granted this calendar year–around 10% [correction: 6% – 356k minus 335k is 21k, not 31k] lower than 2020 (356,640 granted patents). Looking at the spreadsheets on the Patents Dashboard, it looks like filings are a smidgen lower, but the real difference is the number of allowances: as of the end of June, 2020, the PTO had issued 278k allowances for UPR’s that fiscal year, while as of the end of June, 2021, it had issued 249k allowances for FY 2021.
Methodology:
I used the 2021-07-31 Patent Grant Authority file, parsed it by date, and tabulated the number of A1, B1 and B2 kind code records by year. (For those who might be confused by the use of A1, the authority file uses A1 to indicate pre-2001 utility patent grants). I included patents that are marked as Withdrawn. This graph uses calendar years (Jan. 1 – Dec. 31) instead of fiscal years (Oct 1 to Sept. 30). UPR stands for “utility, plant, reissue.”
Event: I am looking forward to presenting a new project at the annual BYU Copyright Symposium on Thursday, August 19, 2021. The event is online and free, but you must register first. My co-author and co-presenter is Dr. Homayoon Rafatijo who has been a Chemistry professor and also finishing his JD this semester. Our paper criticizes the Supreme Court’s sovereign immunity decision in Allen v. Cooper (2020), looking primarily at constitutional history issues. [Symposium Home] [Schedule]. I believe that folks who register have access to the paper. We’ll distribute more publicly after incorporating some feedback from the event.
Publication Opportunity: I have been newly appointed as the advisor for Mizzou Law’s business law journal: the Business, Entrepreneurship & Tax Review (BETR). I have an essay coming out in the next issue on the topic of inventorship attribution and reattribution. The staff is looking for one more outside article this Fall. They prefer shorter articles (~20 pages) written and footnoted in law review style. Submit here: mulawbetr@missouri.edu.
Publication Opportunity: Homayoon is lead articles editor for the Journal of Dispute Resolution (JDR) and they are also looking for an additional article for the fall. With a grant from the NAA, the journal is also awarding prize money ($3k; $1k) for the best professional and student articles relating to labor and employment dispute resolution. Lots of work is going on in this area involving non-compete, confidentiality, and IP transfer agreements within and between firms. Submit here: jdr@missouri.edu.
Duncan Ironmonger and Simon Burgess founded the UK companies Scuf Gaming and also Ironburg with the goal of reengineering the gaming console. Corsair purchased the companies in 2019, but by that time the litigation with Valve was well underway. Ironburg won a $4 million judgment regarding two patents (now on appeal) and the district court stayed the litigation regarding U.S. Patent Nos. 9,289,688 and 9,352,229. Those two patents are the subject of this appeal.
After being sued for infringement, valve filed inter partes review (IPR) petitions challenging the validity of Ironburg’s US Patent Nos. 9,289,688 and 9,352,229. The Board split its decision, cancelling some claims obvious and left others in place. On appeal, the Federal Circuit has sided with Valve — upholding the obviousness determination and holding that the remaining claims may also be invalid.
The focus of the appeal is whether the purported “Burns” reference should count as prior art. Valve submitted a printout of Burns and argues that it was a printed copy of an online review of a Scuf controller from 2010. The same reference had been submitted and cited in both patents, although Valve submitted a more recent print-out.
Authentication: Before relying upon a documented evidence, it must first be authenticated — a showing that the document “is what the proponent claims it is.” Fed. R. Evid. 901(a). Here, the Board found that the Burns printout submitted by Valve had not been authenticated as the same document cited during the examination. On appeal, the Federal Circuit quickly rejected that finding — holding instead that the new submission can quickly be authenticated by comparison.
Here, a simple comparison of the Exhibit with the ’525 Burns article confirms their near identity. The text of the twelve paragraphs and the 23 images (depicting the controller and a user guide) are the same in the Exhibit and the ’525 Burns article—i.e., the prior art disclosures of these documents are the same.
Slip Op. The Board had refused to compare the two documents since Valve had not presented any testimony that the two were substantially identical. On appeal here, the Federal Circuit found that the comparison here needed no testimony because the comparison was not burdensome. (10 pages, 23 images).
Isenburg also argued that the document had not been shown to be a prior printed publication. On appeal, the Federal Circuit found “overwhelming evidence” that the reference was prior art. In particular, one of the inventors (Burgess) testified that he had facilitated the publication back in 2010 for marketing purposes. The court also gave weight to an examiner statement during prosecution that the document was “published on October 20, 2010.”
Patent examiners are trained and required to determine publication dates. See, e.g., MPEP § 2128 (9th ed. Rev. 10, June 2020). The patent examiner’s determination of the publication date is a “factual finding[] from a legally authorized investigation.” Fed. R. Evid. 803(8)(A)(iii). It also “is supported by sufficient guarantees of trustworthiness.” See Fed. R. Evid. 807(a)(1).
Slip Op. The applicant did not, at that time, dispute the examiner’s statements regarding the publication. The court also looked to the IDS document where the applicant had stated that the document was published in 2010. Finally, the court also suggests that the PTAB should have relied upon the Internet Archive – Wayback Machine to further verify the authenticity.
Editor’s Note: Avery Welker is a rising 2L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch
NetScout had lost a case against Packet Intelligence in the Eastern District of Texas in 2018. Id. at 1303. Packet Intelligence owns three patents at issue in the district court case: US 6,665,725, US 6,839,751, and US 6,954,789 (the “asserted patents”). Id. At their core, the patents involve packet transmission and monitoring in a computer network. Id.
Packet Intelligence asserted these patents in a jury trial against NetScout’s “G10” and “GeoBlade” products. Id. at 1304. NetScout unsuccessfully brought invalidity defenses, and the jury found all asserted patents’ claims infringed, awarding pre- and post-suit damages, along with enhanced damages. Id. at 1304-05. Upon appeal, the Federal Circuit affirmed all aspects of the district court’s judgment save for vacating the pre-suit damages award. Id. at 1303.
For NetScout, a little bit of Civil Procedure went a long way (to the tune of $3,500,000; Id. at 1313) in arguing against the pre-suit damages. Getting to appeal is half the battle. Most casebooks for my 1L year exclusively taught the law to me through the lens of appellate review, just like many other 1Ls across the United States. So, it makes sense that one of the first things that I learned in my 1L was how a case got to an appellate review at all! Preservation is the key, and sometimes the method matters, as it did here.
NetScout chose one of the many other paths to appeal, using a Rule 50 motion for judgment as a matter of law on the issue of pre-suit damages. Fed. R. Civ. P. 50 (2020); Packet Intel. LLC, 965 F.3d at 1313. In doing so, NetScout brought a sufficiency of the evidence argument: Packet Intelligence failed to bring sufficient evidence that an unmarked product did not practice one of the asserted patents. Packet Intel. LLC, 965 F.3d at 1313. The district court denied this motion. Id.
To rebut the motion on appeal, Packet Intelligence argued that Federal Circuit case law supported the notion that the evidentiary burden belonged to NetScout to prove that the product at issue practiced the asserted patent claims because NetScout did not object to the jury instructions on the issue. Id. However, the Federal Circuit quickly dismissed this argument:
As a preliminary matter, we disagree that the failure to object decides this matter. We are bound by the law, not by the jury charge, even if the charge was not objected to. And NetScout’s failure to object to the district court’s jury instruction does not render the instruction law of the case for evaluating the sufficiency of the evidence.
Id. (Internal citations removed).
The court noted further that NetScout had the original burden for this issue of identifying an unmarked product that allegedly practiced an asserted patent, that NetScout, in fact, met this burden, and that Packet Intelligence’s presented evidence was insufficient to rebut NetScout’s evidence of an unmarked product. Id. at 1313-14.
Packet Intelligence’s attempt to shift the burden reflects an interesting appellate strategy for fighting a sufficiency of the evidence argument. However, failing to object to a jury instruction does not preclude an argument regarding the sufficiency of the evidence. Id. at 1313 and citations therein. NetScout’s choice of their road to Rome – a sufficiency of the evidence argument – served its purpose well and is a compelling example that highlights the importance of internalizing the rules of civil procedure. It might just save a few million dollars one day!
[1] “NetScout” is the collective label for NetScout Systems, Inc. and NetScout Systems Texas, LLC, Defendants-Appellants.
[2] See here for a previous Patently-O post regarding this case and its outcome authored by Dennis Crouch.
To make the chart, I calculated the percentage of independent claims that include the phrase comprising or comprises or comprise as the first traditional (or only) transitional phrase within the claim text.
Here are a few examples of these non-traditional transitions from 2021 patents:
