Search Results for: Alice v. CLS Bank

Guest post by Prof. Holbrook: Extraterritoriality and Patent Damages Under § 271(a)

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Guest post by Tim Holbrook. Robert B. Yegge Endowed Distinguished Professor of Law and Provost's Professor, University of Denver Sturm College of Law.

United States patents are generally territorial.  Their exclusive rights only operate within the United States and its territories.  Or so one may think reading the Patent Act.  Moreover, in a global marketplace, the territorial nature of intellectual property rights can create challenges. It would be simpler for a patent holder to just use the U.S. patent to cover foreign activity. This is especially true if a domestic act of infringement has spillover effects into other countries.

So, when – if ever – can a patent owner receive damages for foreign activity that may flow from acts of domestic infringement?

The Supreme Court answered that question  

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Federal Circuit Debates Scope of 271(e)(1) Safe Harbor and the Meaning of “Solely”

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by Dennis Crouch

The Federal Circuit's recent 2-1 decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. highlights tensions in the court's interpretation of the patent infringement safe harbor under 35 U.S.C. § 271(e)(1). A forceful dissent by Judge Lourie argues that the majority's approach, while following precedent, improperly reads the word "solely" out of the statute and unduly expands the safe harbor exemption.  Lourie ends his opinion with a call for en banc rehearing.

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Judge Dodging: Apple loses Mandamus Transfer Action This Time

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by Dennis Crouch

In re Apple Inc., No. 24-111 (Fed. Cir. 2024)

Federal Circuit has denied Apple's petition for a writ of mandamus seeking to transfer a patent infringement case from the Western District of Texas to the Northern District of California. The case, Carbyne Biometrics, LLC v. Apple Inc., involves six patents related to authentication and fraud reduction technologies used in Apple devices. U.S. Patent Nos. 10,929,512; 11,475,105; 11,514,138; 9,972,010; 10,713,656; 11,526,886.

Back in May 2023, Carbyne filed the lawsuit in W.D. Tex. Austin division and the case was assigned to Judge Yeakel who promptly retired a few weeks later.  Unlike the cases filed in Waco, Carbyne's Austin filing was clearly not a case of judge shopping, but is probably explained as forum shopping.  Apple's HQ is N.D. Cal, and Carbyne appears to be NYC based -- neither forum is seen as patentee friendly. Austin is a good choice here because Apple has a billion dollar facility in the city where it manufactures some of the accused devices.

After some shuffling, the case was reassigned to Judge Alan Albright. Although Albright is in the Waco division, he loves patent cases; has extra bandwidth because patent cases have been diverted from his Waco courthouse; and he's willing to hear cases in Austin.

Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue under Section 1404(a) -- arguing that the venue was inconvenient despite the fact that Austin is the company's second-home.  The opposite of Judge Shopping, I might Apple's approach here "Judge Dodging."

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More on Reasonable Expectation of Success from the Federal Circuit

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by Dennis Crouch

In Sisvel v. TCT Mobile and Honeywell, the Federal Circuit has affirmed the PTAB's IPR findings that the claims are obvious.  The non-precedential decision provides further insight into the Federal Circuit's reasonable expectation of success test.

Sisvel's U.S. Patent 8,971,279 covers a method of sending Semi-Persistent Scheduling (SPS) deactivation signals that essentially "piggyback" on existing messages. SPS is a technique used in LTE networks to more efficiently allocate radio resources to user equipment (UE) for periodic transmissions, such as Voice over IP (VoIP). In SPS, the base station pre-allocates resources to the UE for a set period of time, reducing the need for frequent scheduling requests and grants. SPS deactivation signals are messages sent by the base station to the UE to indicate that the pre-allocated resources are being released and are no longer available for the UE's periodic transmissions. These signals are necessary to free up the resources when they are no longer needed, allowing them to be reassigned to other UEs or used for other purposes.

In the context of Sisvel's '279 patent, the invention was directed to a specific method of sending SPS deactivation signals by filling a preexisting binary field (the resource indication value or "RIV") with all "1"s. This 111111111 technique was intended to provide a more efficient way of signaling SPS deactivation while still ensuring that the deactivation message would not be mistaken for a valid resource allocation message.  In the patented system, the string of ones would always be processed as an invalid value and never mistaken for a valid resource allocation message, providing stability to the network, regardless of size.

TCT Mobile and others petitioned for IPR, asserting that the challenged claims were obvious based on various combinations of prior art, including Samsung and Dahlman. The PTAB found the claims unpatentable as obvious, and Sisvel appealed.

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The Analogous Art Doctrine Post-KSR: Insights from the Federal Circuit’s Daedalus Decision

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by Dennis Crouch

In a short nonprecedential decision, the Federal Circuit affirmed a PTAB IPR decision finding claims 15-25 of U.S. Patent No. 8,671,132 ('132 patent) unpatentable under 35 U.S.C. § 103 over combinations of prior art references. Daedalus Blue LLC v. Vidal, No. 2023-1313, slip op. at 2 (Fed. Cir. Mar. 13, 2024).  The key issue on appeal was whether the Gelb reference qualified as analogous art for the purposes of the obviousness analysis.  Daedalus unsuccessfully argued that the PTAB erred in two respects: (1) by finding Gelb to be in the same field of endeavor as the '132 patent, and (2) by determining that Gelb is reasonably pertinent to the problems addressed by the '132 patent.  This post discusses the analogous arts test and provides key guidance to patent attorneys in today's post-AIA world.

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Making a Proper Determination of Obviousness

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by Dennis Crouch

Earlier this week, the USPTO published updated examination guidelines regarding obviousness determinations under 35 U.S.C. §103. While these new guidelines are not legally binding, they offer important insight into how the Office plans to apply an even more flexible approach to obviousness -- something Director Vidal sees as mandated by the Supreme Court’s 2007 decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). (2500 words).

Read the Guidance Here.

Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility.  Still, the guidelines spend some time on the requirements of a prima facie case; the necessity of both evidence and reasoning to support any obviousness rejection; and consideration of all evidence before the examiner.  Obviousness is already the most common rejection - with the vast majority of applications being initially rejected as obvious.  It will be interesting to see whether the rates go up even further following this new guidance. 

This post breaks down the guidelines and walks through some potential strategies for patent applicants. 

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Ethical Infantilism in the Age of Technological Advancement

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by Dennis Crouch

Martin Luther King Jr. received the Nobel Peace Prize in 1964, and I re-read his speech today -- especially the portion contrasting development of science and technology against development of the human spirit.  The past 60 years have continued to reveal astonishing discoveries and invention. Yet King’s words and warnings continue to resonate because we have continued to neglect our internal realm.

Every man lives in two realms, the internal and the external. The internal is that realm of spiritual ends expressed in art, literature, morals, and religion. The external is that complex of devices, techniques, mechanisms, and instrumentalities by means of which we live.

King.  In his speech, King did not decry advances in technology, but argued that the level of attention paid to material advances should be matched by attention to moral and spiritual humanism.

Modern man has brought the whole world to an awe-inspiring threshold of the future. He has reached new and astonishing peaks of scientific success. He has produced machines that think, and instruments that peer into the unfathomable ranges of interstellar space. He has built gigantic bridges to span the seas and gargantuan buildings to kiss the skies. His airplanes and spaceships have dwarfed distance, placed time in chains, and carved highways through the stratosphere. This is a dazzling picture of modern man’s scientific and technological progress.

Yet, in spite of these spectacular strides in science and technology, and still unlimited ones to come, something basic is missing. There is a sort of poverty of the spirit which stands in glaring contrast to our scientific and technological abundance. The richer we have become materially, the poorer we have become morally and spiritually. We have learned to fly the air like birds and swim the sea like fish, but we have not learned the simple art of living together as brothers.

Id.

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Federal Funded Innovation and March-In Rights

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by Dennis Crouch

The Biden Administration is seeking comment on its proposed framework for how how agencies should evaluate exercising “march-in rights” over federally funded inventions. For those familiar with march-in rights, this guidance has been a long time coming. While these powers have technically existed for years under the Bayh-Dole Act, the lack of clear procedures around their use has rendered them largely theoretical. This proposal could change that.

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Plagiarism Police come for Winston & Strawn

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Hsuanyeh Law Group v. Winston & Strawn, 23-cv-11193 (S.D.N.Y. 2024)

A recent copyright infringement lawsuit filed by small Boston intellectual property boutique Hsuanyeh Law Group PC (HLG) against international giant Winston & Strawn LLP focuses a dividing line that can highlight when copying the work of another firm is permissible.  I believe that Winston & Strawn will eventually prevail based upon a fair use defense, but it is still an embarrassing situation for the firm and attorneys involved.  I hope that they did not overbill the client.  The role of attribution is also receiving increasing focus as attorneys begin to rely more heavily on AI outputs for their legal documents.

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No Patent for Robot Inventions: UK Supreme Court Rules on AI Inventorship in Thaler v. Comptroller-General

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by Dennis Crouch

Thaler v. Comptroller-General of Patents, Designs and Trade Marks, [2023] UKSC 49. 

In a December 20, 2023 decision, the UK Supreme Court has agreed with American courts that an inventive machine is not deserving of patent rights.  The underlying case will be familiar to many with Dr. Stephen Thaler of St. Louis seeking to patent a thermal-mug designed by an artificial intelligence machine that he created.  Thaler has argued that the AI (called DABUS) conceived of the particular invention in question and also identified its practical utility.  The UK Supreme court based its holding upon the text of the UK Patents Act of 1977 as it reached the same ultimate conclusion as the Federal Circuit in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), cert. denied, 143 S. Ct. 1783 (2023).

These Thaler cases showcase that under the current patent law regime, autonomous AI systems cannot qualify as inventors entitled to patent rights, irrespective of their creativity. For AI-generated inventions to become patentable, intervention by policymakers to amend inventorship laws would likely be necessary. However, the arguably bigger questions of immediate importance surround collaborative human-AI inventions where both human and machine contribute in creation of a new invention. Thaler expressly disclaimed any human input into DABUS’s inventions, but going forward mixed human-AI inventor teams seem inevitable. Neither the UK Supreme Court’s decision nor the parallel US rulings provide direct guidance on the requisite threshold quality or quantity of human participation in such collaborative inventions to satisfy legal inventorship requirements. Thus, for instance, an open issue remains whether token perfunctory human approval of an AI-devised invention would suffice, or if substantive intellectual contribution is needed. And for primarily AI-driven inventions, are minor tweaks by a human collaborator enough? Or must the human contributor objectively supply the novel concept?

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