TracFone: Mandamus All Over Again

Patent

In re TracFone (Fed. Cir. 2021)

Here is a recap of where we are with this W.D. Tex. venue case before Judge Albright:

  • Precis Group sued TracFone in W.D.Tex. (Waco) for patent infringement, alleging that venue is proper because TracFone has a San Antonio Total Wireless store.
  • TracFone moved to transfer venue on improper venue (saying that the store was not TracFone’s store, and besides, the store was closed already) and also inconvenient venue.
  • Judge Albright did not decide the venue motion for several months, but kept the case rolling forward toward trial.  After eight months, TracFone petitioned the Federal Circuit for a writ of mandamus.
  • On mandamus, the Federal Circuit ordered Judge Albright to immediately consider the venue motion. The next day following mandamus, Judge Albright denied the motion to transfer venue — holding that venue was proper and convenient.

NOW: TracFone has filed a new petition for writ of mandamus seeking an order compelling Judge Albright to transfer the case to the Southern District of Florida, TracFone’s home court.  The Federal Circuit immediately ordered Precis to respond within 7 days.  Although not clear from the docket, I suspect that this petition will be passed to the same trio judges who handled the last one – Judges Reyna, Chen, and Hughes.

In my post on the case, I noted troubles with Judge Albright’s venue decision, and the mandamus petition picks up on those — arguing that “the district court here abused its discretion by accepting as true the venue allegations in the complaint where those allegations were directly contradicted by TracFone’s declarations, declarations not rebutted by any declarations of plaintiff.” [TracFone Second Mandamus Petition].

In his opinion, the district court accepted the complaint’s allegations as true and concluded that the plaintiff “has plead sufficient venue facts to establish venue in WDTX.”  The district court did not appear consider TracFone’s evidence that it submitted via declaration — that it did not own the store and that the store was closed “well before” the action was filed.   Typically, in this situation, courts consider affidavit evidence presented by defendants, and that was not done here.

In my mind, the only question here is whether the Federal Circuit will vacate the decision or instead simply order the transfer.

Timing the Venue Inquiry in W.D. Texas

Egregious Delay and Blatant Disregard for Precedent

 

 

 

 

Texas is Big: Albright did not Abuse Discretion in Moving Case from Midland to Waco.

Patent

by Dennis Crouch

In re True Chemical Solutions, LLC (Fed. Cir. 2021)

This is another mandamus petition out of Judge Albright’s courtroom — this time denied.  The patentee True Chem filed the declaratory-judgment lawsuit against PCC in the Midland division of W.D.Tex. back in 2018, before Judge Albright joined the bench.   In 2019 the case was reassigned to Judge Albright who conducted some of the proceedings in his Waco courtroom. Texas is big — the Western District of Texas is larger than most state, and the drive from Midland to Waco is 300+ miles (both parties are from Midland/Odessa).

Judge Albright suggested to the parties that the trial may also be handled in Waco.  Although True Chem wanted a Midland jury, PCC moved to transfer the case to the Waco Division, and Judge Albright granted the motion.  A primary reason for the transfer was that Waco already had proven procedures for a socially-distanced trial.  True Chem then petition for writ of mandamus to the Federal Circuit.

Most litigation regarding venue transfer is inter-district — from one district to another district.  This case is about intra-district — from one division to another division within the same district.  Both situations are captured by 28 U.S.C. 1404(a).

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

Id.  In its opinion denying mandamus, the Federal Circuit noted that the law generally gives district court “broad discretion” on this issue, and the discretion is “even greater” when the transfer is intra-district.   Although the appellate court did not fully endorse Judge Albright’s decision and reasoning, it found no clear abuse of discretion.

We are not prepared to say that the district court clearly abused that discretion. The district court meaningfully analyzed the transfer factors. The court found that the more congested docket in plaintiff’s chosen forum would likely cause additional delay and prejudice to PCC, particularly given it was seeking injunctive relief. The district court further found that no non party witness resides within the Midland-Odessa Division and several non-party witnesses residing in other parts of Texas would find it significantly easier, safer, and cheaper to travel to Waco for trial. The district court added that it was unlikely that an actual physical trailer located in Midland would be an exhibit during the trial and did not foresee the opportunity for any field trips during a trial. Under these circumstances, we cannot say True Chem has established a clear and indisputable right to relief.

Slip opinion.

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The lawsuit focuses on Performance Chemical Company’s  U.S. Patent No. 9,834,452 (“water treatment trailer”).   The complaint by True Chem seeks a declaratory judgment of non-infringement and invalidity.  The complaint walks through PCC’s use of this type of trailer going back to 2014 — three years before the application was filed.  True Chem then counterclaimed alleging infringement of the ”452 patent as well as the child; U. S. Patent 10,011,501.

I’ll note here the patent prosecution timeline.  PCC filed a provisional application in April 2017, followed by a non-provisional in July 27, 2017.  The patent issued December 5, 2017.  This is less than 4.5 months following Track One (prioritized examination).

Patent rights, Taxes, and Printing Money

Patent

by Dennis Crouch

One reason that patents remain a popular government program is that the system does not require any collection of taxes from the populace.  Rather, the government gives away property rights to individuals (or their corporate assignees) who prove themselves worthy by disclosing a new and useful invention and who pay fees to run the system.  The patent-give-away is different than the land-giveaway associated with American Westward Expansion (often known as “Land Patents”). Although the American West (and Midwest) is vast, it eventually proved finite. And, the space was already occupied by humans who were violently displaced.

Despite the oft quoted statements of Commissioner Duell, the patent space is not showing any signs of being limited in the conceivable future.  And, because a patent must be directed to a new invention, the rights only cover fields not previously occupied at the time of patent filing.

As a non-finite resource, we might also think of granting patents as akin to printing money — something that we know can create macroeconomic challenges.  But with patents, the government is not printing a commodity like money.  What we’re printing is an analogue of private property rights in the form of a right to exclude.  Each is different and unique, like a plot of land.

The right to exclude brings us back to the land patent analogy.  Here, is where those who complain about invention patents have some meat to chew on.  While land rights are limited to the physical bounds of space, a patent right pervades all corners of the country with a silent enforceable covenant to limit actions of the rest-of-the-people.  Even if I own the raw materials and embody the skill to work those materials, I cannot legally combine those in ways that fit the definition of another’s exclusive patent rights (without license).   This exclusivity is tempered by the 20-year timeline (unlike land patents that last throughout time), which many of us feel is enough to justify the exclusive rights in exchange for the social benefits of the invention and disclosure. Of course, in recent years patents have become more akin to paper dragons that may look dangerous but are regularly defanged by the Courts and the PTAB. In the end, these analogies all fail, but perhaps they help take us a step further in understanding.

Tracing the Quote: Everything that can be Invented has been Invented

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

Upcoming Events:

New Job Postings on Patently-O:

Who gets to become a Patent Attorney?

Patent

by Dennis Crouch

The USPTO has released a new Request for Comments about changing the qualification rules to sit for the Patent Bar Exam (“Admission to the Examination for Registration to Practice in Patent Cases”) that are set forth in the General Requirements Bulletin (GRB).

To be clear, the proposals in this RFC are quite modest and narrow:

  • Allowing graduate degrees (Masters / Doctoral) in an accepted science/engineering field to count for qualification under Category A.
  • Adding a few additional degree majors to Category A. These are all majors where applicants have been regularly able to qualify for the exam under Category B.  The change here is designed to streamline the process.
  • Modifying the lab requirement of Category B so that it no longer needs to be 8 hours in the same field.  Thus, it could be 4 hours of physics and 4 hours of chemistry (both with lab).

[Federal Register Notice: 2021-05940].  Comments should be submitted via www.regulations.gov (PTO-P-2021-0005) by May 22, 2021.

I recently spoke with the USPTO head Drew Hirshfeld who sees the proposals here as primarily making the system more efficient and less cumbersome.  About 1/3 of recent applicants to register fall under Category B, and handling the paperwork for those applications it is a time intensive process for both applicants and OED.

Dir. Hirshfeld noted that bigger changes may come later, such as addressing design patents and computer science; and considering the role that the registration requirements may play with regard to diversity.   Eliminating the requirements altogether is really not even on the radar.

Bigger policy changes are unlikely before a new director is appointed by President Biden.

There has been a good amount of discussion regarding the artificial monopoly created by the GRB, and whether the requirements actually further American innovation.  Back in December 2020, Senators Tillis, Coons, and Hirono sent a letter to USPTO Director Andrei Iancu seeking information about how the Office sets is criteria for who gets to become a patent attorney.  Dir. Iancu responded just before leaving office in January 2021.

The proposed changes here are effectively identical to those proposed by Dir. Iancu in his Jan 19, 2021 letter.

My view: The proposals will incrementally improve the system, but really only at a minor level.

Who gets to become a patent attorney?: You may have been hoping that I would answer the question posed in the article title. It turns out that the answer depends greatly on your country of permanent residence.  Some require a background in science/engineering, others require a background in law, only a few require both.  In the US, a patent attorney is both a lawyers and trained scientist/engineer. However we also have patent law professionals known as patent agents who are not attorneys.

I won’t spell out the particular rules here because – as my post notes – they are in flux. But, I will direct you to the USPTO’s page titled Becoming a Patent Practitioner.

 

Exclusive: You keep using that word; I don’t think you know what it means.

Patent

The pending Supreme Court case of Warsaw v. Sasso offers an interesting question about whether there is actually some middle ground of patent-related cases subject to dual Federal and State jurisdiction. 

by Dennis Crouch

There are two different statutes regarding Federal Court exclusive jurisdiction over patent cases.  One giving US district courts exclusive original jurisdiction over US patent cases and the second giving the Federal Circuit exclusive appellate jurisdiction over appeals in patent cases.  28 U.S.C. § 1338(a) provides Federal district courts with “original jurisdiction of any civil action arising under any Act of Congress relating to patents.”  The provision goes on to make clear state courts do not have jurisdiction: “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents.”  Id.  The second provision relates to appellate courts: The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction over final decisions from US district courts “in any civil action arising under . . . any Act of Congress relating to patents” or where a “compulsory counterclaim” has been asserted “arising under, any Act of Congress relating to patents.” 28 U.S.C. § 1295(a).

Lots of work over the years has gone into determining whether a particular cause of action meets the arising under requirement of these provisions. See, for example, Gunn v. Minton, 568 U.S. 251 (2013) (patent litigation attorney malpractice lawsuit does not arise under the Patent Act).  You’ll note here that the term “arising under” comes from the U.S. Constitution:

The judicial power [of US Courts] shall extend to all cases, in law and equity, arising under this Constitution, the laws of the United States …

U.S. Const. Art. III, Section 2.  The Supreme Court has repeatedly found this clause to also limit jurisdiction — cases that do fit one of the enumerated frames cannot be heard by US Courts.  An example is a breach of contract dispute between two parties from the same U.S. state.  That case will typically arise under state law and thus not be the subject of a Federal lawsuit — barred by the US Constitution.  Some contract cases to wind their way into federal courts — typically under a principle of citizenship diversity or supplemental jurisdiction.

The US Constitution link is important. The statute abuts and parallels the Constitution, and that means statutory interpretation becomes constitutional interpretation. In the recent case of Gunn v. Minton, for instance, the court based its decision on general concepts of federalism and states rights. These are principles that regularly drive US Constitutional decisions, but rarely control statutory interpretation.

The most recent dispute on point is Warsaw v. Sasso (Supreme Court 2021).  The case adds an important layer: the doctrine of abstention.

Sasso licensed his patents to Warsaw (Medtronic).  The parties had a dispute over which products were covered under the license, and Sasso sued in Indiana state court for breach of contract (seeking money damages).   The outcome of the contract claim (apparently) largely depends upon whether the products are “covered by a valid claim” of one of Sasso’s patents.   So, there probably should have been some detailed patent analysis in the case.

Medtronic wanted the case in Federal Court where it could use more sophisticated tactics to invalidate the patent or avoid claim scope.  Medtronic first attempted to remove the case to Federal Court.  However, the Federal Judge remanded it back down. Sasso v. Warsaw Orthopedic, Inc., No. 3:13-cv-1031 (N.D. Ind. Apr. 2, 2014). Then, Medtronic filed for reexamination and a number of claims were cancelled. (Note here, that at this time Medtronic was owner of the patents and pursued ex parte reexamination as a “friendly” way to limit claim scope.)  The state court apparently refused to consider these validity issues in the contract case.

Finally, Medtronic filed a declaratory judgment action in Federal Court — asking for a declaration of “No Breach … Because No Valid Claim of the ‘313 or ‘046 Patent Covers the Medtronic Products for Which Dr. Sasso Seeks Royalties.”  The district court refused to hear the case — but rather dismissed the case on grounds of abstention.

Discretion under the DJ Act: In particular, the declaratory judgment act offers discretionary jurisdiction: “any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration.” 28 U.S.C. § 2201.  On appeal, the Federal Circuit affirmed that the court acted appropriately. See Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995) (“substantial discretion in deciding whether to declare the rights of litigants”).

To be clear, in its decision, the Federal Circuit found that the DJ action filed by Medtronic did arise under the patent laws, but that it was still appropriate to dismiss the case in favor of the state court action.  “[T]his declaratory action is within the district court’s jurisdictional authority, and we have jurisdiction to receive this appeal and to determine whether the district court abused its discretion in abstaining from exercise of declaratory jurisdiction.”

The outcome though creates a conundrum: If the Federal Courts have exclusive jurisdiction over patent cases, how can a court determine that this is a patent case but still remand it for state court determination? 

Now come the petition for writ of certiorari on the following question:

Whether a federal court with exclusive jurisdiction over a claim may abstain in favor of a state court with no jurisdiction over that claim.

[Warsaw Petition for Writ of Certiorari].   Although this appears to be a case of first impression, Warsaw grounds its petition in the language of prior abstention cases. In particular, a key focus in those cases is whether the dispute “can better be settled in the proceeding pending in the state court.”  Wilton. Here, Warsaw argues, the state is actually precluded from deciding the key issues.

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Middle Ground Overlap: The statutes are worded in a way creates bright-line rules: Federal courts have exclusive authority over cases arising under the patent laws; Federal courts have no authority over patent-related disputes that don’t meet that threshold (absent other justification for Fed. Ct. Jurisdiction).  The appellate decision in this case though appears to present a middle ground — cases where dual Federal/State authority is appropriate.  Although this result is perhaps surprising, there is nothing Constitutionally troubling about dual jurisdiction.  At the same time, the answer will almost necessarily come from analyzing and interpreting the Constitution.

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Note: Justice Barrett may end up recusing herself. Her husband at one time represented Warsaw in the case .

Guest Post by Alan Cox: The Damages Testimony in VLSI Technologies v. Intel

Patent

Alan Cox is an economist with over thirty years’ experience testifying in Antitrust and Intellectual Property matters. He holds a Ph.D. in Economic Analysis and Policy from the Haas School of Business at the University of California at Berkeley.  He is an Affiliated Consultant at NERA Economic Consulting.  In this guest post he provides his observations of the damages testimony in VLSI Technologies v. Intel. As noted in the letter from Professor Chao that Dennis posted earlier, key filings in this case are not publicly accessible (nor are the transcripts). – Jason

Introduction

VLSI Technologies sued Intel for the alleged infringement of several patents.  At trial VLSI asserted two patents: 7,523,373 (“the ‘373 Patent”), and 7,725,759 (“the ‘759 Patent”).  VLSI asserted that the technology described in these patents was incorporated into 987 million Intel microprocessors of various models.  On March 2, a jury in the Western District of Texas awarded VLSI $2.18 billion in damages for Intel’s pre-trial use of the patents.

The court allowed the public to listen to public portions of the trial by telephone.  This article describes aspects of the testimony and attorney statements on damages as logged in contemporaneous notes.

The damages testimony in this trial is interesting for several reasons, including Plaintiff’s presentation of a regression analysis as the basis of its damages claim.  Regression analysis is a sophisticated quantitative technique that is widely used in the academic literature, in making business decisions and in many areas of litigation, though it is seldom presented in patent trials.  The data necessary to undertake regression analysis is generally unavailable in patent matters.  As is often the case in the application of complicated statistical methods, the results can vary with inputs, underlying assumptions, data availability and other factors.  While Intel did address possible problems or partiality in the application of the methodology, the defendant’s core attack on the regression analysis was its repeated assertion that the method has never been undertaken in the real-world process of licensing patents.

By way of additional background, it appears that ownership of the patents had changed hands at least twice as the result either of mergers or as part of a sale of the patents themselves, including the sale to VLSI.  These transactions indicated a much lower value for the patents than was claimed by VLSI and awarded by the jury.  The patented technology had been originally assigned to Freescale, an integrated circuit manufacturer spun off from Motorola, later purchased by another semiconductor manufacturer, NXP.  Freescale was the owner of the patents at the time that Intel first allegedly infringed them.  Finally, as Intel pointed out at trial, VLSI is a non-practicing entity that undertakes no research nor production and has two employees.

VLSI’s Regression Analysis

A regression is a statistical analysis that is used to estimate the impact of several variables on another variable.  One use of the method, hedonic regression, measures the impact of product attributes on the price of that product.  For example, hedonic regressions have been used to determine how prices of automobiles vary with changes in horsepower, gas mileage, brand, and other attributes.  Hedonic regressions provide ratios that measure the amount by which prices will change with a change in one of these attributes.  For example, such a ratio may be the percentage by which the price of a car increases with a percentage increase in horsepower.

In this case, VLSI’s affirmative damages case was presented by a Ph.D. economist, Ryan Sullivan.  He applied regression analysis to estimate the impact of different attributes of Intel microprocessors on the price of those microprocessors.  Most important was his estimate of the response of price to changes in microprocessor speed.  His regression result indicated that a one percent increase in microprocessor speed increased the price of an Intel microprocessor by 0.764 percent, holding all other attributes of the microprocessor constant.

There was little discussion of the regression analysis at trial since VLSI clearly wanted to focus on demonstrating how the regression resulted in a large damage number and Intel did little to challenge the implementation of the methodology.  In cross examining Dr. Sullivan, Intel’s attorneys did, however, challenge VLSI’s expert about his inclusion of some potential explanatory variables and the exclusion of others.  Some of VLSI’s expert’s responses indicated that Intel may have had some effective points of attack of VLSI’s implementation of the regression methodology had it chosen to pursue them.

Calculating Damages from Regression Results

Next, VLSI’s damages expert used his regression results to calculate the total value that Intel purportedly received for the use of the two patents.  For this he relied on VLSI’s technical experts who had testified that the ‘373 patent decreased microprocessor power consumption by 5.45 percent and that the ‘759 patent increased microprocessor performance by 1.11 percent.  He also relied on a crucial assertion by VLSI’s technology experts that a one percent improvement in power consumption or a one percent increase in performance could be “valued as” a one percent increase in speed.  Using those asserted equivalencies in the value of microprocessor speed, power consumption and performance, VLSI’s damages expert calculated the value of the benefit of the patented technology by multiplying these percentage improvements in power consumption and performance by the percentage increases in price attributable to increases in speed.  Finally, he multiplied the resulting percentage increase in revenue by the total revenue that Intel had earned on the accused products.

This calculation can be restated concisely in summary mathematical form.  VLSI’s damages expert undertook the following calculations:

Intel’s Increase in Revenue due to its use of the ’373 Patent =

Price-Speed Ratio X % Reduced Power Use X $Accused Product Sales =

0.764 X 5.45% X $Accused Product Sales

 

Intel’s Increase in Revenue due to its use of the ’759 Patent =

Price-Speed Ratio X % Increased Performance X $Accused Product Sales =

0.764 X 1.11% X $Accused Product Sales

VLSI’s damages expert testified that there would be no increase in direct manufacturing costs from utilizing the patented technology and only a very small increase in selling and marketing costs.  Since there were no incremental costs to subtract from the additional revenue allegedly earned from using the patented technology, the increase in profits was equal to the claimed increase in revenues.

The Outcome of the Hypothetical Negotiation

The next step was to determine how Intel and VLSI would share these benefits in a hypothetical negotiation, the fictional event that takes place on the eve of first infringement during which the litigants are imagined to reach agreement on a royalty.  It is often customary to discuss the negotiating process over the sharing of benefits as being shaped by the relative bargaining power of the parties at the hypothetical negotiation.  VLSI’s damages expert instead undertook an unusual calculation.  He first calculated what he claimed was Intel’s contribution to the commercial success of its microprocessors.  He then subtracted the amount of Intel’s contribution from his estimate of Intel’s increase in profits due to its use of VLSI’s patents.

To implement this division, VLSI’s damages expert started by claiming that Intel’s contribution to its success in generating the patent-related additional profit could be measured as the sum of certain costs divided by its total revenue.  The reasoning that justified this approach was that these costs were incurred in the development and marketing of Intel chips.  More specifically, he took the sum of Intel’s Selling and Marketing Costs (S&M); its General and Administrative Costs (G&A); and its Research and Development Costs (R&D) and then divided that sum by Intel’s total revenue.  That is:

Intel’s Proportional Contribution = (S&M + G&A + R&D) / Intel’s Total Revenue

The result, 20.7 percent, was deemed to be Intel’s share of the estimated increase in profits that it earned from incorporating the patented technology into its microprocessors.  The remaining 79.3 percent was, therefore, attributable to VLSI.

The asserted outcome of the hypothetical negotiation was then simply the result of multiplying 79.3 percent by the increase in Intel profits, described above.  VLSI’s damages expert estimated the amount of money that a reasonable royalty would have generated before trial, a figure presumably close to the over $2 billion awarded by the jury.  VLSI’s damages expert claimed that Intel would have been willing to pay such a royalty because it faced strong competition and needed the competitive edge that the patented technology provided to maintain its market position.

The presentation of damages as a single payment for past infringement did create a potential problem for VLSI.  During the trial, Intel asserted that VLSI’s expert had not presented a per unit royalty in his pre-trial disclosure and should not be allowed to present a per unit royalty in court.  A ruling in Intel’s favor may have made future royalties unavailable.  As it happened the court ruled in VLSI’s favor on this point.

VLSI’s Anticipation of Defendant’s Critiques

In its direct testimony on damages, VLSI addressed several additional critiques that had been raised by Intel in pretrial filings, reports or deposition testimony.  First, VLSI’s damages expert was asked in his direct testimony about Intel’s claim that VLSI and its experts had not identified any comparable real-world licenses that resulted in payments as high as those that he was claiming to be reasonable; that is, in the hundreds of millions or billions of dollars.  They also asked him about the much lower patent values implied from the purchase of Freescale and the sale of the patents to VLSI, mentioned above.

VLSI’s damages expert responded that none of those real-world licenses and sales were analogous to the hypothetical license in this case.  He asserted that licensors in real-world licensing negotiations do not have comprehensive knowledge of the importance of the patents that are under negotiation.  Similarly, purchasers of the ‘373 and the ‘759 patents would not have known of the value of the patents to Intel or even the extent of the use of the patented technologies.  Any of the earlier transactions involving the patents would not, he claimed, have incorporated Intel’s expectations and experience of the benefits of using the technology.  VLSI frequently claimed through this and other witnesses that only Intel would have understood the value of the patented technology that it was exploiting.

VLSI’s damages expert characterized the hypothetical negotiation, by contrast, as one in which both side’s “cards were facing up.”   Consequently, the licensor, Freescale, would have been fully informed of everything that Intel knew about the usefulness and value of the licensor’s technology.  VLSI appeared to claim that the information that was available to Freescale in the up-facing cards included information about sales, profits and other outcomes after the date of the hypothetical negotiation.  VLSI’s damages expert indicated that the royalty rates found in Intel’s purported real-world comparable licenses were analogous to what Tom Brady was paid as a rookie before he had demonstrated his abilities as a quarterback in a professional football league.  According to VLSI, what was relevant at the time of the hypothetical negotiation was equivalent to what Tom Brady was paid during the peak of his career, not on what was known about him before his rookie year.  The use of the analogy appears to indicate that VLSI viewed the hypothetical negotiation as being informed by events and outcomes that took place after Intel’s earliest infringement, sometimes rationalized by reference to the “Book of Wisdom.”

He was also asked about the evidence that the technology was not used by any other company other than Intel, not even by Freescale and NXP, the semiconductor manufacturers who had previously owned the patents.  He described that point as merely a “red herring” since use by the patent owner was not the only determinant of the value of the patents.  As a basis for this point, he cited the Georgia-Pacific factors that call for consideration of the extent to which the infringer has made profitable use of the invention.

Damages-Related Testimony from Other VLSI Witnesses

Before the Plaintiff’s damages expert was called, a VLSI technical witness presented the results of a “patent scoring” exercise undertaken by Innography, an IP management firm.  According to Innography’s scoring, the two patents at trial were in the top 10 percent of patent value.  VLSI’s introduction of this result may contradict its key point that only Intel had sufficient information to have some understanding of the value of the technology since Innography could presumably only make such a claim from public data.

Defense Response on Damages

Intel had apparently provided expert reports on damages from at least three expert witnesses.  These included: a Professor of Operations, Information, and Decisions at Wharton with a Ph.D. in Management from MIT; a CPA with extensive experience as an IP damages expert; and an electrical engineer with 20 years of experience as a licensing executive with IBM.  VLSI moved to have the CPA’s “cumulative” opinions excluded as being redundant and “an improper attempt to bolster” the opinions of Intel’s other damages experts.  Whatever the court’s ruling on this and other motions to exclude, Intel called only the former licensing executive, Hanc Huston, to rebut VLSI’s damages expert.

Most of Intel’s damages testimony was not available on the public telephone feed because it involved confidential information primarily related to the comparable licenses that he had identified.  Intel’s damages expert brought up the point that the patented technology had not been used by any of the assignees of the patents and that VLSI had not identified anyone else who had used the technology.  He asserted that, in his experience, such lack of use of a patent was indicative of its low value and would have driven down the royalty paid on a licensed patent.  He also testified that he had never heard of hedonic regression being used in patent licensing negotiations.

He also disagreed with VLSI’s assertion that only Intel had the information necessary to comprehend the extremely high value of the patented technology.  He pointed out that the patent itself was public knowledge and that VLSI and others could have reverse engineered Intel to understand the extent that its technology was being used.

After discussing 18 licenses that he had determined were comparable, VLSI’s damages expert concluded that a reasonable royalty for Intel’s use of the technology described in the two patents totaled $2.2 million.

On cross-examination, Intel’s damages expert was asked about a policy at IBM to license patents for a one percent royalty per patent up to a maximum royalty of five percent.  VLSI pointed out, in cross and in closing, that a one percent per patent royalty was more than the amount that VLSI was asking in damages.  He was also asked about specific licenses and settlements between IBM that involved payments in the hundreds of millions of dollars.

The Testimony of VLSI’s Rebuttal Damages Expert

The final witness on damages was Mark Chandler, the president of another IP management firm, who was called to rebut Intel’s damages testimony.  He criticized Intel’s damages expert as relying on the “indirect evidence” of royalty rates from purportedly comparable licenses as opposed to the evidence of Intel’s success with the accused products.  He also repeated the claim made by VLSI’s affirmative damages expert that none of the previous transactions were indicative of the outcome of the hypothetical negotiation.  Those transactions, he asserted, could not have taken into account the value of the technology to Intel.  He further criticized Intel’s expert’s process for identifying ostensibly comparable licenses, indicating that his method was based on technical considerations without consideration of the commercial value of the licensed patents or any other economic considerations.

This expert also indicated that Intel’s damages expert had calculated per patent royalty rates by merely dividing the reported royalty in his purportedly comparable licenses by the number of patents being licensed.  Such an average, he testified, fails to take into account the range of values of the licensed patents.  He further testified that Intel’s expert had “cherry-picked” from among over 300 licenses that were part of the record in this case, ignoring licenses that resulted in payments of hundreds of millions of dollars with at least one being over a billion dollars.

This expert also claimed that Intel had ignored “direct evidence” of the value of the patents, the value of the use that Intel had made of the patents and the additional profits allegedly derived therefrom.  He repeated the claim that, unlike in the real world, in the hypothetical negotiation the parties would be “playing with their cards up” and have full knowledge of the value of the patents to each other.

Conclusion

The trial in VLSI Technologies provided not only a dramatic outcome but useful insights in the presentation and rebuttal of a damages case.  Interested observers can look forward to further motions, orders and appeals that should provide additional information about the technology and the appropriateness of the award.

Disclosure: I have no involvement with any of the parties or the law firms at this time. I have had no involvement in this litigation. I have never worked with VLSI. I have worked on at least one litigated matter with Wilmer Hale. I have consulted for Intel twice and testified for them once over my entire career but, to repeat, have no involvement with Intel at this time.

Seeking Transparency in Waco

Patent

The following short statement was written by Prof. Bernard Chao (Denver) and then joined by 20+ additional professors whose names are listed below.  Chao was a patent attorney and patent litigator for 20 years before becoming a professor and I have long valued his insight. You’ll note that I also signed below – DC. 

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Judge Alan Albright’s court in the Western District of Texas is rapidly becoming the latest hot spot for patent litigation. While only a total of two patent cases were filed in 2016 and 2017 in Judge Albright’s Waco federal courthouse, the number of patent filings rose to seven hundred and ninety-three (793) in 2020.  See J. Jonas Anderson & Paul R. Gugliuzza, Federal Judge Seeks Patent Cases, (forthcoming Duke L. J 2021). Professors Anderson and Gugliuzza provide a thorough explanation (and critique) of this sudden ascent. I have a smaller, but nonetheless important, point to make. If the Western District of Texas is going to hear some of patent law’s most important cases, it should not do so in secret. Unfortunately, that appears to have just what happened in one the highest dollar value patent trials in recent history.

The patent world has been abuzz about the $2.18 billion verdict that the Waco jury handed down on March 2, 2021 in VLSI Technology v. Intel. The public debate in patent law has often focused on whether courts and juries are getting patent damages right. Looking at relevant filings on damages provides critical information for this important discussion. In high stakes cases, parties typically file summary judgment motions on damages and Daubert motions attempting to exclude certain theories. These motions often attach expert reports and deposition testimony as exhibits. Together these documents illustrate how patent doctrine shapes damage awards. For example, filings often explain how the parties seek to apportion damages between the value of the infringing features and the product as a whole. This is not an easy task and parties have taken many approaches to apportionment with varying levels of success.

However, these documents cannot be retrieved from the VLSI Technology v. Intel docket. To be clear, sealing is appropriate in some instances. Companies should be able to keep their confidential technical and financial information under wraps. But at least as of March 15, 2021, the following docket entries were wholly unavailable (i.e. not even redacted copies were available).

Docket No. Date Title (some abbreviated)
252 10/8/2020 DEFENDANT INTEL CORPORATIONS SEALED MOTION FOR SUMMARY JUDGMENT OF NO PRE-SUIT INDIRECT INFRINGEMENT OR WILLFULNESS AND OF NO POSTSUITWILLFULNESS OR ENHANCED DAMAGES
258 10/08/2020 DEFENDANT INTEL CORPORATION’S SEALED MOTION FOR SUMMARY JUDGMENT OF NO PRE-COMPLAINT DAMAGES UNDER 35 U.S.C. § 287.
260 10/08/2020 DEFENDANT INTEL CORPORATION’S SEALED MOTION FOR SUMMARY JUDGMENT OF NO INFRINGEMENT AND/OR NO DAMAGES FOR CLAIMS 1, 2, 4, 17, 19, AND 20 OF U.S. PATENT NO. 7,793,025.
276 10/08/2020 VLSI’S DAUBERT SEALED MOTIONS TO EXCLUDE DAMAGES-RELATED TESTIMONY OF DEFENDANT INTEL’S EXPERTS
431 2/18/2021 Sealed Document filed: Defendant’s Response to Plaintiff’s Daubert Motions to EXCLUDE DAMAGES-RELATED TESTIMONY OF INTELS EXPERTS
443 2/18/2021 Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO PRE-COMPLAINT DAMAGES UNDER 35 U.S.C. §§ 287 258
445 2/18/2021 Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO INFRINGEMENT AND/OR NO DAMAGES FOR CLAIMS 1, 2, 4, 17, 19, AND 20 OF U.S. PATENT NO. 7,793,025 260
446 2/18/2021 Sealed Document filed: VLSI’S OPPOSITION TO INTEL’S MOTION FOR SUMMARY JUDGMENT OF NO PRE-SUIT INDIRECT INFRINGEMENT OR WILLFULNESS AND OF NO POST-SUIT WILLFULNESS OR ENHANCED DAMAGES 252

Two short orders granted motions to seal these filings. However, the sealed filings appear to go far beyond damages. The first order (dated October 8, 2020) granted roughly thirty motions (Docket Entries 214-244) and the second order (dated February 18, 2021) granted even more (Docket Entries 287-89, 293-319, 321-345, 374-381, 398, 404, 405, 410, 416. 418, 420, 424, 425). Many of the sealed motions are motions in limine that do not have a descriptive title.  They are simply numbered (e.g. Motion In Limine #3).  So, there is no way to even know what subjects they cover.

Judge Albright did give a small nod to transparency in his February 18, 2021 order which required “[t]he filing party shall file a publicly available, redacted version of any motion or pleading filed under seal within seven days.” Unfortunately, the redacted versions do not appear to have been filed.  A few days earlier, Judge Albright also issued a February 12, 2021, standing order that requires parties to do the same in all cases pending in his court.

But these orders are inadequate in several ways. First, they explicitly permit parties to file purportedly confidential information under seal without a motion. But the parties have no incentive to be transparent. It is the court’s job to protect the public interest, and this order abdicates that duty.  Second, there also appears to be no safeguard for parties that redact too much information in their filings, a problem we have seen before. See In re Violation of Rule 28(D) (Fed Cir. 2011)(sanctions for redacting information that was not confidential including case citations).  Third, the order does not require parties to redact exhibits. But some of the most critical information like deposition testimony and expert reports are exhibits. Finally, the order is not retroactive allowing most of the VLSI v. Intel case to remain in the dark.

This is not the first time that patent litigation has suffered from transparency problems. Other district courts have allowed too many documents to be sealed in previous high stakes cases like Broadcom v. Qualcomm (S.D. CA) and Monsanto v. Dupont (E.D. MO).  See, Bernard Chao, Not so Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent L.J. 6 & Bernard Chao & Derigan Silver, A Case Study in Patent Litigation Transparency, 2014 Journal of Dispute Resolution 83.

While these stories appear to paint a bleak picture for transparency in patent litigation, some courts are making an effort to keep their dockets accessible to the public. There have been notable decisions to ensure that filings are accessible. For example, in 2016 the Electronic Fronter Foundation successfully intervened and obtained an order from the E.D. of Texas to unseal records in a patent case, Blue Spike LLC, v Audible Magic Corp.  Earlier this month, the Federal Circuit, affirmed a lower decision rejecting attempts to seal specific filings in another patent dispute. See DePuy Synthes Products Inc. v. Veterinary Orthopedic Implants (Fed. Cir. Mar. 12 2021).

Moreover, individual court rules are now requiring greater transparency. The Federal Circuit’s latest rules clearly seek to maximize public disclosure. In each filing, Rule 25.1(d) only allows parties to mark “up to fifteen (15) unique words (including numbers)” as confidential.  A party seeking to exceed that limit must file a motion. As Silicon Valley’s home venue, the Northern District of California entertains numerous patent cases.  The court’s local rules say that material may only be sealed when a request “establishes that the the document, or portions thereof,  are privileged, protectable as a trade secret or otherwise entitled to protection under the law.”  Moreover, the request must “must be narrowly tailored to seek sealing only of sealable material.”  Ironically, even Texas state courts, which obviously do not hear patent cases, treat requests to seal far more seriously than the W.D. of Texas.  Specifically, Texas Rule of Civil Procedure 76a states that court records are “presumed to be open to the general public”, and only allows records to be sealed upon a showing that “a specific, serious and substantial interest which clearly outweighs” various interests in openness.

In short, the Western District of Texas should join these other courts and take its duty to ensure transparency seriously. As the Fifth Circuit recently put it , “[w]hen it comes to protecting the right of access, the judge is the public interest’s principal champion.” Binh Hoa Le v. Exeter Finance Corp. (5th Cir. Mar. 5, 2021). Accordingly, we make a few basic recommendations.  First, parties should not be able to file material under seal without judicial scrutiny. They should be required to file motions and justify their requests. Of course, a court also cannot rubber stamp these requests. If resources are a problem, the court can appoint a special master in larger cases. Second, parties should have to redact exhibits too. There can be valuable non-confidential information in those exhibits. Finally, a quick aside, even though judges bear the primary responsibility for making their dockets transparent, that does not mean the parties should not show more restraint. To the extent that either side is a repeat player, and thinks the patent system needs reform, they should be careful not to over seal. Their filings might end up being important contributions to the public debate.

Signatories (more…)

What do you call it? For almost two-thirds of you, it’s the “specification”

Patent

By Jason Rantanen

First of all, I’m overwhelmed by the survey responses on § 112(a) – thanks to everyone who responded to this short survey.  You’re terrific.

As of this afternoon, over 800 readers had responded to the question about how you refer to the part of the patent application that is required by 35 U.S.C. § 112(a).  The graph below shows the distribution of responses. (n=720)

When asked “What term do you use most often to refer to the part of the patent or patent application that is required by 35 U.S.C. § 112(a)?,” sixty-three percent of respondents answered “specification,” while another twenty-four percent answered “written description.”  A notable minority (9%) said “detailed description.”  There were also some write-ins, although most of them were either “Spec” or “Disclosure”

Results were consistent for patent attorneys and agents, but none of the litigators who responded used anything other than “specification” or “written description,” while 50% of the examiners who responded used “specification.” (with the caveat that examiners and litigators are a smaller n).

In addition, after results started coming in I had some concern that the initial question was ambiguous, so modified the survey to give a random set of respondents the following question instead.  Responses were similar to the first question, with a bit lower rate for “specification” (58%) and a bit higher rate for “technical description” (11%) for this version of the question.

(n=115)  (I probably should have asked this question at the outset; hindsight looms large.)

Here’s the overall distribution of respondents:

  • Patent attorney: 68%
  • Patent agent: 11%
  • Litigator: 10%
  • Examiner: 5%
  • Other categories: 6%

Finally, here’s the “patent law” definition of  “specification” from Webster’s New International Dictionary of the English Language, Unabridged, Second Edition, published in 1957:

Specification

5. Patent Law. A written description of the invention or discovery and of the manner and process of making, constructing, compounding, and using the same, concluding with a specific and distinct claim or claims of the part, improvement, or combination which the applicant regards as his discovery or invention, this latter part being often called the claim.  When the term specification is used alone it includes the claim.

Thanks to the University of Iowa College of Law law library for pulling the definition from the 1957 edition of Webster’s for me. Also, note that response choices other than “Other” were presented in a random order to avoid any order bias.

IDEA Act of 2021

Patent

The first step in a non-discriminatory US patent system is to make sure it is available to all Americans without legal limit.  The second step, and the one with real potential to drive an innovation economy, is to takes steps to ensure that the system is inspiring to all Americans.  The trick is how to get there without causing undue damage.  One underlying issue is also a lack of information about what’s really happening.

A bipartisan group of Senators and Representatives have re-introduced the IDEA Act. (Inventor Diversity for Economic Advancement (IDEA) Act of 2021).  S.632; H.R.1723.   Right now, the USPTO does not ask inventors their for any demographic information other than contact information and country of residence.  The legislation would require the PTO director to collect  inventor-level information on “gender, race, military or veteran status, and any other demographic category that the Director determines appropriate.”  Under the provision, inventors would not be required to submit the information, and any submissions would be kept “confidential and separate from the application.”  However, disaggregated information could be available for data analysis and for an annual report from the PTO.

  • S.632. Sponsor: Sen. Hirono; Cosponsors: Sens. Tillis, Coons, Leahy, Grassley.
  • H.R.1723. Sponsor. Rep. Velazquez; Cosponsor, Rep Stivers.

The proposals are now before the respective judiciary committees.  Sen. Leahy is the chair of the Subcommittee on Intellectual Property, and Sen. Tillis is the ranking member.   In the House, Intellectual Property does not have its own committee this session, but rather is part of the Subcommittee on Courts, Intellectual Property, and the Internet chaired by Rep. Johnson. Rep. Issa is the ranking member.

What do you call it?

Patent

By Jason Rantanen

What do you call the part of the patent or application that is required by 35 U.S.C. § 112(a)?   The world would love to hear your responses.  Here’s a two-question survey that will take  about 10 seconds to complete.  If there’s a reasonably large number of responses, I’ll post the results later this week.

Link to survey.

 

 

 

Priority Claims in US Applications

Patent

by Dennis Crouch

The vast majority of US non-provisional patent applications (utility) claim some form of priority relationship back to a previously filed patent document.

The chart below shows the percentage of applications that assert these various forms of priority claims.  Note that continuation applications have continued to rise while provisional applications show a plateau.  The 35 % for US Provisionals is quite high considering that about half of patent applications come from foreign applicants who typically do not file provisional applications. In these charts I didn’t include foreign national or regional priority claims because I didn’t compile that data yet.

Notes. (1) the population here is limited to only published patent applications, and the data-point is the priority claim as of its publication date. (2) You can see the data here: Link to Google Sheets.

IPR Games: RPI; No Appeal; and Analogous Arts

Patent

CyWee Group v. Google (Fed. Cir. 2021)

Google won its IPR challenge against CyWee’s U.S. Patent Nos. 8,441,438 (claims 1 & 3-5) and 8,552,978 (claims 10 & 12). On appeal, the Federal Circuit has affirmed with a short opinion by Chief Judge Prost focusing on three discrete issues:

Real Party in Interest: The patentee argued that Google did not disclose all real parties in interest as required by statute 35 U.S.C. § 312(a)(2).  On appeal, the Federal Circuit held that institution stage real-party-in-interest questions are institution related and thus is not reviewable under the no-appeal provision of 35 U.S.C. § 314(d).  This issue was previously decided in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020).   One difference here from ESIP is that the challenge was not raised to the institution decision itself, but rather as part of a post-institution motion to terminate based upon newly discovered evidence.  On appeal though, the Federal Circuit found the new motion equivalent to a request to reconsider the institution.  The court also held that the Board’s refusal to allow ESIP additional discovery was “similarly unreviewable” because the discovery ruling is tightly associated with the institution decision.

The court did not delve into the RPI issue, but CyWee was complaining about a coordinated effort by defendants in the district court litigation (including Samsung and Google) to ensure that Backmann was only seen by the Board and not also by Judge Bryson who was sitting by designation in the district court.

Approximately one month after Google filed its IPR petitions, Samsung dropped Bachmann from its invalidity contentions in the Samsung Litigation. This is consistent with what appears to be a coordinated effort between Samsung and
Google to block consideration of Bachman in the Samsung Litigation before Judge Bryson. Due to Bachmann’s shortcomings, neither wanted a summary judgement decision issuing from the district court, as CyWee’s lawsuit against Samsung was speeding toward trial and would outpace the Google IPRs. Dropping Bachmann from the Samsung Litigation assured that it could be addressed solely by the Board. This plan became more evident in January 2019 when, after the Google IPRs had been filed, Samsung moved to join the Google IPRs, thereby resurrecting its ability to rely on the Bachmann.

The PTAB concluded that this timing alone was not sufficient to find Samsung to be a Real Party in Interest and likewise found no RPI even though Samsung was being accused of infringement based upon its use of Google’s Android product.  In its decision, the PTAB noted that the fact that Patent Owner had sued each company separately, in a separate lawsuit, also provided evidence that they are not real parties in interest. (I’d call this final conclusion quite tenuous).

Appointments Violation: The patentee raised an appointments clause issue, that was rejected under Arthrex (Fed. Cir. 2019). In particular, the Federal Circuit’s Arthrex decision purported to cure all appointments clause issues for AIA Trials that had not yet reached a final written decision. It is possible that this issue will get new legs once the Supreme Court issues its opinion in the case.

Obviousness: On the merits of the obviousness case, the patentee argued that the key prior art reference was not “analogous art” and therefore could not be used for obviousness.  There are traditionally two ways to find a reference “analogous”:

  1. If the art is from the same field of endeavor, regardless of the problem addressed; or
  2. If the art is “reasonably pertinent to the particular problem with which the inventor is involved.” Bigio.

The CyWee patents cover a “3D Pointing Device” that uses a particular comparison algorithm for improved error compensation.  The prior art (Bachmann, U.S. Patent No. 7,089,148), was created by the Navy and is directed to motion tracking of bodies. Thus, the PTAB found that it was not from the “same field or endeavor.”

The PTAB did, however, conclude that Bachmann was “reasonably pertinent to the particular problem with which the inventor is involved.”  In particular, Bachman discloses a comparison algorithm for improved error compensation associated with the movements of a 3D pointing device.  Note here, if you look at the image above, you don’t see any “pointing”, but the Board broadly defined the term to include a device to “control actions on a display.” Thus, we have a reference addressing the particular problem addressed in CyWee’s patents — and thus it is analogous.  On appeal, the Federal Circuit affirmed on substantial evidence. (Analogous arts determination is a question of fact).

CyWee argued that there were too many differences between its invention and Bachmann to allow the reference to be considered analogous.  The Federal Circuit rejected that argument — holding that “a reference can be analogous art with respect to a patent even if there are significant differences between the two references.” Quoting Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353 (Fed. Cir. 2020).

Note. Jay Kesan handled the appeal for the patentee; Matthew A. Smith for Google.

Note 2. The diagram looks a lot like a Wii. CyWee’s patents claim priority back to 2010 (Wii was released in 2006). [UPDATE – I had a big typo with a 2001 priority date. That would make a bit difference. Sorry.]

 

Guest Post: The Open Source Hardware Association’s Perspective on GSK v. Teva

Patent

Guest Post by Michael Weinberg, Executive Director of the Engelberg Center on Innovation Law & Policy at NYU Law and the Board President of the Open Source Hardware Association (OSHWA) and David Wechsler, a 3L at NYU Law.

To the Open Source Hardware (OSHW) community, the Federal Circuit’s October opinion in the ongoing appeal of GlaxoSmithKline LLC v. Teva (“GSK”), No. 2018-1976 (Fed. Cir.) was a wolf in wolf’s clothing. Some language in the panel majority’s opinion suggested an expansion of induced infringement liability to transform mere statements of equivalence made on promotional materials into triggers for liability. This language came dangerously close to swallowing an industry extolled for democratizing science and helping the United States overcome its PPE shortage in the heart of the COVID-19 outbreak. The Federal Circuit’s subsequent choice to vacate its initial opinion and re-hear the case signals that crisis may have been averted, but the close call was a reminder of the uphill battle open design faces despite the significant public benefits it creates. We cannot predict exactly what the Federal Circuit’s new opinion will look like, but as advocates for the OSHW community, we hope the panel treads carefully.

I. The Importance of Open-Source Hardware to Innovation

Open source hardware is a physical item whose source files have been shared with the world and can be freely copied or modified. By enabling anyone to study, modify, distribute, make, and sell the design or hardware, open source hardware allows the sharing of knowledge and encourages innovation through the open exchange of designs. In contrast to proprietary hardware, any relevant documentation related to open source hardware is licensed for individuals to openly participate in the design and development of the hardware, or to replicate and manufacture the hardware devices. By making it easier to begin engineering from a prior design, open source design quickens invention and commercialization of new technologies.

The benefits of open source hardware were on vivid display last year, as the demand for PPE skyrocketed amid the COVID-19 outbreak and caused a “chronic shortage” of supply. Relying on open-source hardware and design, thousands of individuals met this moment of need with ingenuity. To name a few inspiring examples

Open source hardware facilitated this process by disseminating the designs for novel reusable PPE publicly, which not only enabled DIY enthusiasts to collaboratively iterate and manufacture designs for safe equipment at a low cost, but also solved local shortages in equipment. The response to COVID has exposed manufacturing and distribution as primary logistical challenges to disaster response, yet the use of open design to create PPE highlights how distributed manufacturing and supply chains—enabled by openness—can overcome logistical hurdles. Harnessing the power of open design to respond to global crises didn’t begin with the pandemic. Glia Project, for example, has responded to a need for stethoscopes and tourniquets among doctors in the Gaza Strip by sharing 3-D printable open source designs for these devices since 2018.

Beyond providing society with useful tools in responding to crises, open source hardware also has the higher order capacity to democratize science. Research equipment made with open source design is cheaper for scientists to acquire or build on their own, as well as modify to match local conditions, thus lowering the cost barrier to scientific research across the globe. The OSHW community believes that technological capacity should not depend on where one is born; open source hardware therefore offers a promising vision of the future by allowing scientific education in the poorest parts of the world to move past theoretical discussions and into practical applications.

II. GSK v. Teva: The Original Decision

Contrary to popular belief, legal education does not begin with learning the concepts of offer and acceptance in contracts, negligence in torts, or even well-pleaded complaints in Civil Procedure. No, legal education begins during recess period, when one friend (Charlie) encourages another friend (Skyler) to throw the only kickball over the school fence. When caught in the act, Skyler points the finger at Charlie’s encouragement, and the teacher must engage in a fact-finding mission to determine Charlie’s culpability. Depending on how actively Charlie encouraged Skyler, Charlie too may be spending Saturday morning in detention.

The doctrine of inducement infringement in intellectual property law is no different. 35 U.S.C. § 271(b) states “whoever actively induces infringement of a patent shall be liable as an infringer.” Traditionally, § 271(b) has been interpreted as requiring more than mere knowledge: plaintiffs must show active steps taken by the defendant that encouraged direct infringement. See, e.g., Takeda Pharm. U.S.A., Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed Cir. 2015) (“Merely describing an infringing mode is not the same as recommending, encouraging, or promoting an infringing use, or suggesting that an infringing use ‘should’ be performed.”) (cleaned up). To further the recess analogy, Charlie might be in trouble for imploring Skyler to throw the ball over the fence, but probably avoids culpability by merely explaining how to throw a ball so high as to clear the fence.

The ongoing pharma case GSK v. Teva—chronicled by PatentlyO here and here—has the potential to expand inducement liability to encompass far more than just “active encouragement.” But doing so would threaten the OSHW community, which would have deleterious downstream effects on innovation, crisis response, and the democratization of science.

The panel majority’s original opinion found Teva liable for inducing infringement of GSK’s patent on Coreg to treat congestive heart failure (“CHF”). Relevant to the OSHW community, GSK’s patents on Coreg and its non-CHF-related uses had already expired. Nevertheless, relying heavily (as Judge Prost points out in dissent) on evidence that Teva’s promotional materials referred to its generic tablets as “AB rated” equivalents of the Coreg tablets, Teva was found liable for inducing infringement despite only instructing patients and doctors to use its product for off-patent (i.e., non-CHF) uses.

The panel majority seemed to assume that doctors and pateints would combine the “AB rating” with instructions GSK (not Teva!) provided on how to use Coreg to treat CHF in finding Teva liable for inducement infringement. The panel majority’s reasoning indicates that a distributor of an unpatented product used for unpatented uses A and B could still be held liable if the product was also capable of being used for patented use C.  This would be true even if the distributor of the product made no mention of use C in advertising or educational materials. This broad language lessens patent holders’ burden of proving inducement and could create liability for wholly innocent OSHW developers whose statements of equivalence relate to off-patented uses entirely sepearate from and uninterested in the patented uses.

Statements of equivalence are a far cry from the traditional active encouragement test, spelling bad news for Charlie, our fearless recess ringleader, and potentially worse for designers of open source hardware. Would an open source hardware developer be subject to liability by simply promoting their product as structurally equivalent to a brand-name product, despite not encouraging, mentioning, or even being aware of a specific infringing use? The original panel majority’s focus on Teva’s AB rating suggests that it might be. But then how would the public benefit from the innovation and utility that flow from these cheaper and more accessible alternatives?

Further, the OSHW community would be burdened with administrative costs associated with monitoring which unpatented designs have patented uses. The OSHW community might also fall victim to an avalanche of new patent infringement claims from patent trolls.

The original GSK opinion was not only unduly broad, but also worryingly vague. What type of knowledge and marketing, for example, is sufficient to trigger liability under the panel majority’s rubric (“the provider of an identical product knows of and markets the same product for intended direct infringing activity”)? Without a clear statement on what type of promotional activity triggers inducement liability, open source developers, many of which are too small to afford sophisticated legal departments, will either have their activities chilled or expose themselves to liability. The confused expansion of inducement doctrine contained in the Federal Circuit’s October opinion could have been the death knell of a highly useful emerging industry.

Part III: GSK v. Teva: The Future

 Thankfully, the panel rehearing (which took place on February 23rd) may signal that the panel will decide the GSK case on clearer and—we hope—narrower grounds that do not inhibit the progress of the OSHW community. One way a new opinion could do so is by clarifying that mere statements of structural, chemical, or therapeutic equivalence are insufficient to create inducement liability. The panel can and should reaffirm that inducement can only be established through evidence of active steps taken by the defendant that encouraged direct infringement. Doing so would properly protect incentives to innovate without prohibiting the public from off-patent uses of the same: a win-win for innovators everywhere.

As we hope to have made clear, the open source hardware community spurs innovation and supports the public interest by reducing the cost of scientific research and increasing manufacturing capabilities. Any good intellectual property regime means to serve these interests.

 

Disclosure Statement: Michael Weinberg is the Executive Director of the Engelberg Center on Innovation Law & Policy at NYU Law and the Board President of the Open Source Hardware Association (OSHWA). David Wechsler is a 3L at NYU Law and a participant in NYU’s Technology Law & Policy Clinic, which represents OSHWA.

 

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Timing the Venue Inquiry in W.D. Texas

Patent

by Dennis Crouch

I wrote earlier about the Federal Circuit’s TracFone decision, calling-out W.D. Texas Judge Albright for his months long delay in deciding defendant’s motions to transfer/dismiss for improper/inconvenient venue. In its decision, the appellate court repeated a prior conclusion that Judge Albright’s approach represented “egregious delay and blatant disregard for precedent.”

Egregious Delay and Blatant Disregard for Precedent

The following day (March 11), Judge Albright complied with the order and issued a 17 page opinion denying TracFone’s motion to dismiss or transfer.

Proper Venue: Congress created a particular venue statute for patent infringement lawsuits (28 USC 1400(b)) that is substantially narrower than the general venue statute used in Federal Courts. (28 USC 1391).  For an out-of-state-defendant (such as TracFone), venue in W.D. Texas will be proper if the defendant “has a regular and established place of business” within the district and has also “committed acts of infringement” within the district.

Precis Group, LLC v. TracFone Wireless, Inc., Docket No. 6:20-cv-00303 (W.D. Tex. Filed Apr 21, 2020)

Regularly established place of business: In this case, the plaintiff Precis alleged that TracFone operates a store in San Antonio using its d/b/a name Total Wireless.  The address is 1825 SW Military Dr., San Antonio, TX 78221.  The photo below comes from a Google search and is dated May 2019. Google tells me that the store is now closed, but we don’t know the date when it closed.  [COULD someone drive by and snap a photo for me?].

Total Wireless Store Photo from 2019

In its briefing, TracFone (1) denied that this was its store — but rather was “an independently owned retailer of TracFone products” and (2) alleged that the store was already out of business “well before this action was filed” in April 2020.  To support its motion to dismiss, TracFone submitted an affidavit from a TracFone employee who stated that the referenced store above is a Click Mobile store and that “TracFone has no ownership or other interest in Click Mobile and no relationship with it other than its rights to sell TracFone products and services.”  In a later filing, the defendant did admit that the “store exclusively sold Total Wireless products and accordingly used that mark.”  From the pictures and the admission of exclusive dealing, it sure looks like the relationship must have gone a bit deeper than simply “rights to sell TracFone products.”

In its responsive briefing, Precis provided images from TracFone’s TotalWireless website showing that this was an exclusive Total Wireless store. Those have since been removed from the website.

Note here that Precis did not provide its own affidavits.  And, the normal rule of a venue motion to dismiss/transfer is that uncontroverted plausible allegations in plaintiff’s complaint must be taken as true. However, the court should take into account evidence presented by the defense (including affidavits).  Still, any conflicts between affidavits should be resolved in the plaintiff’s favor.

In my mind, there are two big issues (1) is the store attributable to TracFone? and (2) what about the timing issue — what result if it closed before the complaint was filed?

In his order, Judge Albright sided with the patentee — holding that allegations and evidence suggests enough link to conclude that the store a TracFone “place of business.” The court writes:

While TracFone disputes its ownership of the property, Precis alleges that the store belongs to TracFone’s corporation, doing business under the assumed business name “Total Wireless.” Additionally, Total Wireless’s terms and conditions agreement states that: “Total Wireless is a brand of TracFone Wireless, Inc. d/b/a Total Wireless.” Total Wireless holds itself out as a being owned by and essentially one and the same as TracFone. Furthermore, TracFone is the owner of the Total Wireless trademark.

[Precis_Group_LLC_v._Tracfone__53].  Judge Albright did not address the TracFone affidavit indicating only a distant relationship with the actual store owner. Although I believe that it could be distinguished based the seeming exclusive dealing and trademark linkage, the court should have walked through the process.

The Store Closing: The bigger failing of Judge Albright’s opinion is that he did not address the issue of the store closing prior to the complaint being filed.  Venue needs to be proper as of the filing of the complaint, and the defendant submitted uncontroverted evidence that the store had already closed.  Note here that there is some disagreement among the lower courts about whether timing for the place-of-business should focus on infringement or filing of the lawsuit.  In Raytheon Co. v. Cray, Inc., 258 F. Supp. 3d 781 (E.D. Tex. 2017), the court held that the appropriate timing was at the time of infringement. That decision was later vacated by the Federal Circuit, although the court did not address the timing issue. In Pers. Audio, LLC v. Google, Inc., 280 F. Supp. 3d 922 (E.D. Tex. 2017), the court held that the place of business must be in existence as of the filing of the complaint.  In any event, the Judge Albright did not even address the issue in his opinion.  I would recommend to Judge Albright that he draft up a new opinion tonight that also addresses the store-closing issue. Otherwise we’ll likely see a quick reversal from the Federal Circuit.

The court also denied the motion to transfer for on grounds of inconvenient forum (or that there is another more convenient forum) under 28 USC 1404.

The Court finds that the ease of access to relevant sources of proof and the court congestion factors weigh slightly in favor of transfer, the cost of attendance of willing witnesses weighs against transfer, and all other factors are neutral. The Court notes that the convenience of witnesses is the single most important factor in the transfer analysis and that the court congestion factor is the most speculative and cannot outweigh the other factors. As such, the Court finds that TracFone has not met its significant burden to demonstrate that the Southern District of Florida is “clearly more convenient.”

Id.

Stanford’s Abstract Idea: A Method for Resolving Haplotype Phase

Patent

In re Stanford University (Fed. Cir. 2021).

This case appears to potential be a good test case on patent eligibility for the U.S. Supreme Court. The Federal Circuit here held that Stanford’s bioinformatics innovation – “a method for resolving haplotype phase” – lacks eligibility under Section 101 because it is directed to an abstract idea under Alice Corp.

Gene inheritance is a super interesting biologic process.  Each person inherits a set of chromosomes from each parent.  At times, it is helpful to understand which genes came from which parent — especially if tracing disease patterns or researching various diseases.  The problem though is that the chromosomes are not labelled “dad” & “mom” (except potentially the sex linked one).

The general purpose of the invention is to provide a better method for figuring out which genes are associated with which parent.  The approach is to first obtain allele data from the subject as well as three other family members (two parents and a sibling).  The claims then use a statistical inference process (Hidden Markov Model) to identify the likely inheritance state.  The claims define key parameters of the model (the hidden states). In addition to HMM, the claims also require a series of error-reduction techniques that use population data as well as consideration of sequencing errors. The prior art includes other methods of resolving haplotype phase, and other would-be non-infringing methods have also been developed since then. [Read Claim 1].  Apparently, the prior-art method had ~80% accuracy while the invention here boosts accuracy to ~98% (for heterozygous positions).

Prosecution History: Stanford researchers filed a couple of provisional applications back in 2011 followed in 2012 by the non-provisional application at issue here (App. No. 13/445,925).  After two rejections, an RCE, and several claim amendments, the examiner eventually issued a notice of allowance in 2016. Stanford paid the issue fee and the patent issued on September 13, 2016.  The next day (on September 14, 2016), the USPTO withdrew the patent from issue on order of the Tech Center 1600 director, and the subsequently issued a new rejection focusing on patent eligibility.  That rejection was affirmed by the PTAB and how has been affirmed by the Federal Circuit.

Patenting Math: On appeal, the Federal Circuit found the claims directed to an abstract mathematical calculation. In its analysis, the court broke-down the claim into a three step process:

  1. Receive data
  2. Process data
  3. Store or output data.

This is an information processing claim, but it does not “DO” anything with the information. The court explains “claim 1 recites no concrete application for the haplotype phase beyond storing it and providing it upon request.”  Now, some data processing approaches have been patentable, but those have focused on improving computer functionality itself.  The distinguishing point here is that Stanford’s innovation simply provides a better data output.

With Alice Step 2, the court found no inventive concept beyond the abstract idea.  Rather, all of the innovative features were basically combining various mathematical algorithms to do a better job of processing data — but we already said that is an abstract idea.

That a specific or different combination of mathematical steps yields a greater number of haplotype predictions than previously achievable under the prior art is not enough to transform claim 1 into a patent eligible application.

Slip Op.

Some of the dependent claims include a “diagnosis” or providing a “drug treatment.” However, the court found that the generalized element was equivalent to saying “apply it.”  In other words, a specific application is required before a mathematical algorithm such as this will be deemed patent eligible.

What is the Level of Contribution for Joint Inventorship?

Patent

Ono Pharmaceutical Co., Ltd., v. Dana-Farber Cancer Institute, Inc. (Supreme Court 2021)

The Federals Circuit issued an important decision in this case back in 2020 that, in my view, further lowered the bar for joint inventorship. Traditionally, we have thought that a joint inventor must do more than simply tell the other inventors about the current state-of-the-art. In Ono, some of the inventive contribution made by Dana Farber scientists was published and made part of the prior art before the complete conception of the invention as claimed.  On appeal though, the Federal Circuit found those contributions could still count toward joint inventorship:

[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.

Fed. Cir. Opinion.  The end result in the case was that Dana Farber became co-owner of valuable patents to which Ono had previously claimed sole rights.

Now, Ono has petitioned the U.S. Supreme Court with the following question:

[35 USC 116] provides that “when an invention is made by two or more persons jointly, they shall apply for a patent jointly.” A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256.

The Federal Circuit has held that “to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

In this case, in conflict with this Court’s guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception. App. 13a.

The question presented is:

Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception.

[Ono Petition for Writ of Certiorari].

Note here that the 4th Circuit decision referenced here is an Levin v. Septodont Inc., 34 Fed. Appx. 65 (4th Cir. 2002)(unpublished).  In that case, Levin sued Septodent for breach of contract associated with payments on a patent sale agreement. The district court, found no breach because the patent was invalid for failing to properly list Donald Kilday as an inventor. In its decision the 4th Circuit explained the “significant contribution” requirement of a joint inventor should focus on patentability — “asking whether the contribution helped to make the invention patentable.”  Note that in that case, 4th Circuit was purporting to follow the Federal Circuit’s decision in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).  Pannu remains good law and was extensively cited and quoted in the Federal Circuit’s Ono opinion.

The petition cites one 19th century case – O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).  In its decision, the Supreme Court wrote that Morse should still be considered the inventor, even though he had received information and advice from various “men of science.”

Neither can the inquires he made, or the information or advice he received, from men of science in the course of his researches, impair his right to the character of an inventor. No invention can possibly be made, consisting of a combination of different elements of power, without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other. And it can make no difference, in this respect, whether he derives his information from books, or from conversation with men skilled in the science. If it were otherwise, no patent, in which a combination of different elements is used, could ever be obtained. For no man ever made such an invention without having first obtained this information, unless it was discovered by some fortunate accident. And it is evident that such an invention as the Electro-Magnetic Telegraph could never have been brought into action without it. For a very high degree of scientific knowledge and the nicest skill in the mechanic arts are combined in it, and were both necessary to bring it into successful operation. And the fact that Morse sought and obtained the necessary information and counsel from the best sources, and acted upon it, neither impairs his rights as an inventor, nor detracts from his merits.

O’Reilly v. Morse, 56 U.S. 62, 111 (1853)