Search Results for: "sas institute"

Campbell’s Imaginary-Tiny-Cans Fail to Invalidate

Patent

by Dennis Crouch

Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019) (Campbell Soup II) (non-precedential).

This is the second appellate decision this month involving these two parties and Gamon’s  patented rack for displaying and dispensing cans. As in Campbell Soup I, this decision stems from an IPR challenge filed by Campbell Soup against a Gamon patent. The difference – while Campbell Soup I involved design patents; Campbell Soup II focuses on the related utility patent.

These patents are all part of a big patent family that started with a 2002 provisional application followed by a non-provisional in 2003, then the utility patent at issue here (US Patent 8,827,111), followed later by the design patents at issue in Campbell Soup I. The design patents do not appear to claim priority to the provisional (since that is not allowed under the law).

In the utility case, the PTAB partially instituted Campbell’s requested IPR but declined to institute as to some of the claims and some of the grounds.  Under SAS, that partial institution was improper and thus the case is remanded “to address the non-instituted claims and grounds in Campbell’s petition.”  SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018) (all claims challenged) as expanded by Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. 2018) (all grounds challenged).  As discussed below, the court also addressed the PTAB’s holding in favor of the patentee as to the instituted claims (particularly claim 27).

The claimed dispenser has a few interesting features — the most important is that its design that allows a customer to replace a can that had been removed. The basic approach is to have two chutes of cans that snake their way down the structure.  At the bottom, the lower chute and upper chute each have a flange to stop cans from rolling off, with the upper stopper offset rearwardly to leave a space for replacing a can. “This feature allows the customer to replace a product that they decide not to purchase.”  The prior art had two-chutes with an offset upper chute, but apparently was not offset enough to create a stable pocket for replacement.  (Prior art shown in drawing below)

 

Campbell noted that the replacement feature would work if someone used smaller cans — noting the prior art statement that “[o]bviously, the device may be made … in any desired size to accommodate varying sizes of cans to facilitate the dispensing thereof.”  Note Campbell’s argument:

The dispenser claimed in Weichselbaum—without any modification to the structure of the device—is capable of the functionality described in limitation [9] when Weichselbaum is used with cans smaller than those shown for illustrative purposes in its figures.

Appellants’ Br. 31 (emphasis in original). In other words, Campbell argues that the stopper location of the prior art works by changing the size of the cans relative to the dispenser (or by increasing the dispenser size relative to the cans).

On appeal, the Federal Circuit sided with the patentee — holding that the cans are part of the prior art design.  Thus, “changing the [relative] size of the cans . . . is a modification” of the prior art reference. In referencing the “obviously” quote from the patent (recited above), the Federal Circuit held that the statement could be interpreted as indicating a change in can size could be accommodated by a change in dispenser size.   Thus, “substantial evidence” supported the PTAB’s findings regarding the differences between the prior art and the claimed invention that served as a foundational fact for the PTAB’s obviousness conclusion.

As a separate reason for affirmance, the Federal Circuit concluded that the patentee’s objective indicia of nonobviousness are “sufficient to affirm” the not-proven-invalid conclusion.  The Federal Circuit did not review these findings in particular, but the PTAB held particularly:

  1. Commercial Success: Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent.  (Query how this relates to the parallel patents that are all part of the same family.)
  2. Copying: Patent Owner has established that Petitioner copied Patent Owner’s
    display racks.

Note here that the commercial success element is a bit interesting and unusual.  The “success” identified by the PTAB is not that the patented device is a huge commercial success, but instead that it led to more sales of cans — i.e., it worked well for its purpose.

Design Patent Obviousness: How to Pick a Primary Reference

Saint Regis Mohawk Tribe, Allergan v. Mylan: No Tribal Immunity for IPR

Patent

By Jason Rantanen

Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., Teva Pharmaceuticals USA, Inc., AKORN, Inc. (Fed. Cir. 2018) Download Opinion

Panel: Dyk (concurring), Moore (author), Reyna

Last fall, Allergan transferred a set of patents relating to its Restasis product (the “Restasis Patents”) to the Saint Regis Mohawk Tribe (“the Tribe”). The Tribe promptly asserted tribal sovereign immunity in the pending inter partes review proceedings involving the Restasis patents.  In February, the PTAB denied the Tribe’s motion to terminate the IPRs, a decision the Tribe appealed.  Following an expedited briefing schedule, the Federal Circuit has now affirmed the PTAB’s denial of sovereign immunity.

The panel opinion, joined by all three judges, addressed only one of the arguments against sovereign immunity: that under the Supreme Court’s analysis in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002), tribal sovereign immunity does not apply.  It’s important to note at the outset that “Generally, immunity does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action.”   Slip Op. at 5.

The Court in FMC looked to whether the adjudications at issue were “the type of proceedings from which the Framers would have thought the States possessed immunity when they agreed to enter the Union.”  Id. at 5-6. In particular, the Federal Circuit observed that “[i]n doing so, the Court recognized a distinction between adjudicative proceedings brought against a state by a private party and agency-initiated enforcement proceedings.”  Id. at 6.

This question is similar to that of whether an administrative agency can hear a dispute at all, and unsurprisingly the court looked to the Supreme Court’s recent decisions for guidance.  “IPR is neither clearly a judicial proceeding instituted
by a private party nor clearly an enforcement action brought by the federal government,” the court observed, before comparing the views offered by the Court in Oil States v. Greene’s Energy and SAS v. Iancu.  Ultimately, the court concluded, “IPR is more like an agency enforcement action than a civil suit brought by a private party….”  Thus, “we conclude that tribal immunity is not implicated.”  Id. at 8.

How is IPR more like an agency enforcement action?  For one thing, the Director chooses whether to institute an IPR.  And while that discretion is limited to an all-or-none decision under SAS, “if the Director decides not to institute, for whatever reason, there is no review.”  Id. at 8.  In addition, “the Board may choose to continue review even if the petitioner chooses not to participate,” reinforcing “the view that IPR is an act by the agency in reconsidering its own grant of a public franchise.”   Id. at 9.  There are also differences between the IPR rules of procedure and the Federal Rules of Civil Procedure; because of these distinctions “the agency procedures in FM much more closely approximated a civil litigation than those in IPR.”  Id. at 10.  Nor does the existence of more “inquisitorial” proceedings in which sovereign immunity would not apply, such as ex parte and inter parte reexamination, mean that sovereign immunity must apply to IPRs.

Judge Dyk joined the panel opinion in full, but wrote separately to describe the history of inter partes review and why those reviews are not adjudications between private parties.  His opinion is a great reference if one wants a thorough description of the history of the proceeding, complete with numerous source citations.

This dispute is clearly not at an end, and I suspect that the Tribe and Allergan will seek en banc review, if not head straight for a cert petition.  Given the expedited briefing schedule, I expect this issue to continue to move quickly.  At the same time, however, keep in mind that in the parallel infringement proceeding in the Eastern District of Texas,  Judge Bryson (sitting by designation) found the Restasis Patents obvious following a bench trial.  Allergan (now joined by the Tribe) appealed that determination.  Oral argument is currently scheduled for September.

Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure

Patent

by Dennis Crouch

Several years ago, I proposed an Administrative Claim Construction Procedure (ACC)— allowing a patentee or third party to request a claim-construction by the USPTO.  The process would be much like an Inter Partes Review (IPR) proceeding – although my proposal would end the proceedings before actually analyzing whether the prior art reads upon the claims.

The combination of (1) the USPTO’s new proposed court-like claim-construction for IPRs and (2) the Supreme Court’s SAS decision collectively provides some opportunity for a de facto administrative claim construction procedure.  It is likely that a substantial portion of IPR participants will now be focused as much on claim construction as on the underlying validity arguments themselves.  Although this is already going on to some extent, once the courts and PTO apply the same standard of law, PTAB claim construction determinations could then be taken as decided issues of law (or at least highly persuasive authority) handed back for the stayed (or upcoming) district court litigation.

In his first major action as USPTO Director, Andrei Iancu has proposed modifying the approach to claim construction that the Patent Trial and Appeal Board (PTAB) applies in IPR proceedings (as well as PRG and CBM proceedings).  Rather than using the usual examination standard of “broadest reasonable interpretation,” the proposal would shift to the “ordinary meaning” of claim terms as applied by the courts and exemplified by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and adjusted by Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).

Although the BRI and Ordinary Meaning standards are actually quite close, the courts and PTO have regularly held them to be different enough to avoid preclusion or even consideration when considering a claim construction performed by another judicial body.  Thus, the PTO Notice explains: “Minimizing differences between claim construction standards used in the various fora could lead to greater uniformity and predictability of the patent grant [and] could help increase judicial efficiency overall.”  (Note – the notice does not mention issue preclusion or collateral estoppel).

The point here is that claim construction performed by the PTAB will now suddenly have an important legal impact once the case returns to the district court.

In SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that the PTO cannot partially-institute its AIA trials, but rather, it must address the patentability – and issue a final written decision – for each and every patent claim challenged in an IPR petition (if the petition is granted).  Under SAS, weaker patent challenges will now be heard — for those claims, the fight will likely be primarily about claim construction. Although the petitioner has power over the petition, the patentee also has expanded amendment rights.  Thus, both sides will have the power to seek and obtain a final decision that likely includes a claim construction of disputed claim terms.

At this point, it is difficult to know generally if the PTAB ordinary-meaning claim constructions will tend to favor the patentee or the accused infringer.  The big benefit, however, will be greater certainty prior to getting deep-into district court litigation.

In Light of the Prior Art: One important twist is that the PTAB claim construction is be done in view of the prior art – but ordinarily not with much if any consideration of the accused infringing actions.  This makes it less likely that the claim construction will fully resolve the infringement dispute – that’s OK and how it should be since infringement is a question for the jury.

 

 

 

 

 

Due Process and Separating Powers Within an Agency

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by Dennis Crouch

In this decision, the Federal Circuit has affirmed that the IPR procedure allowing the same PTAB panel to both institute an IPR and issue the final decision cancelling the claims is proper. In the process, the divided court rejected both a constitutional and statutory challenge. 

In Ethicon Endo-Surgery v. Covidien (Fed. Cir. 2016)[1], a divided Federal Circuit has affirmed the PTAB’s final judgment that all of Ethicon’s challenged patent claims are invalid as obvious.  The court also confirmed that the PTAB’s procedure of having the same panel decide both the IPR initiation petition and the final decision is proper. “Neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination.”

Ethicon’s U.S. Patent No. 8,317,070 is directed to a surgical stapling device used in endoscopic surgery.  The purported novelty of the stapler is that it uses (a) two sets of staples (with different heights) and (b) staples with non-parallel legs.  The prior art included surgical staplers with each of these features, but no prior art teaches the combination of the two. “Thus, the purported inventive aspect of the ’070 patent is the combination of these two features in a surgical stapler.”

From the majority’s perspective, the case involves a straightforward application of KSR’s holding that a “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”  Here, the court noted that the patent itself “discloses no particular synergy resulting from the combination.”  Ethicon did present evidence of commercial success of Covidien’s infringing product. However, that argument failed because, according to the court, Ethicon provided no evidence of nexus between the particular inventive combination of features and the proven commercial success.

Nowhere does Ethicon demonstrate, or even argue, that the commercial success of the Covidien products is attributable to the combination of the two prior art features—varied staple heights and non-parallel staple legs—that is the purportedly inventive aspect of the ’070 patent.

I’ll pause here to note that that the court’s nexus requirement here appears to be doctrinally different than the more traditional requirement that the commercial-success be linked to the claimed invention (as a whole) rather than the clearly more stringent inventive features of the claimed invention.  See Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“the patentee must establish a nexus between the evidence of commercial success and the patented invention.”).

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Ethicon also argued (unsuccessfully) that the PTAB’s procedure violated Ethicon’s procedural due process rights. In particular, Ethicon argued that the final decision was invalid because it was “made by the same panel that instituted the inter partes review.”   The appellate panel rejected that argument- finding that “[t]he inter partes review procedure is directly analogous to a district court determining whether there is ‘a likelihood of success on the merits’ and then later deciding the merits of a case” and that the initial decision to grant a petition did not create any presumption of prejudice or bias against the patentee.

Ethicon’s best (but still weak) argument was that the AIA does not permit the PTAB to make the institution determination.  In particular, the statute gives the PTAB power and authority to make final determinations regarding an IPR, but assigns the USPTO Director the power to institute IPRs.  The statutory scheme, according to Ethicon, requires separation of these two functions.   On appeal, the Federal Circuit rejected that argument as well – finding that the USPTO director has implicit authority to delegate her authority to officials within the agency.

Ethicon argues that because Congress (1) specifically gave the Director the power to institute, see, e.g., 35 U.S.C. § 314(a), (2) did not explicitly give the Director authority to delegate the institution decision to the Board, and (3) gave the Board the power to make the final determination, Congress intended to keep the functions of institution and final decision separate.

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The majority opinion was penned by Judge Dyk and joined by Judge Taranto.  Judge Newman wrote in dissent arguing that the statutory scheme created a clear distinction:

At the first stage, the Director determines whether the review is to be instituted. 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.”). (Of course, the Director may designate an examiner or solicitor to conduct this initial review.)

If instituted by the Director, the Board then conducts a trial on the merits. 35 U.S.C. § 316(c). . . .

The bifurcated design of post-grant review is clear not only from the language of §§ 314(a) and 316(c), but pervades the structure of these post-grant proceedings. Congress unambiguously placed these separate determinations in different decision-makers, applying different criteria. The majority’s endorsement of the PTO’s statutory violation departs not only from the statute, but also from the due process guarantee of a “fair and impartial decision-maker.”

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Phil Johnson (President of the Intellectual Property Owners Association) argued the case on behalf of Ethicon while Kathleen Daley of Finnegan argued for Covidien and Katherine Twomey Allen of the DOJ represented the USPTO as an intervenor.

The parties relied upon Supreme Court for support and the case has some chance of heading up.

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[1] Federal Circuit Appeal No. 14-1771, appeal of PTAB IPR 2013-00209. [EthiconDecision]

Guest Post: Why Administrative Law Matters to Patent Attorneys—In re Cuozzo Speed Technologies LLC

Patent, , , ,

by David Boundy

Many patent attorneys—including me—went through law school thinking “Administrative law?  What do I care?”  Administrative law matters; it is as important to intra-PTO litigation and to Federal Circuit appeals as the Federal Rules of Civil Procedure are during district court proceedings.

Administrative law provides a rich set of tools to for a party to guide rational agency decision making while a proceeding is in progress, and to challenge adverse decisions on judicial review.  Administrative law tools can:

  • require the agency to follow its own regulations as written, without ad hoc “interpretation” or creation of on-the-fly rules,
  • require the agency to consider all relevant evidence and arguments,
  • establish jurisdiction for judicial review,
  • on judicial review, obtain favorable standards of review by slotting issues into exceptions to the high deference normally accorded agency action,
  • turn weak policy-based arguments into strong arguments based on statute and Supreme Court authority,
  • challenge the agency’s evidentiary and factual rulings on standards that are often far more favorable than the standard of review applied to Article III courts—indeed, the standard of review in some instances can be less deferential than the standard applicable to jury findings,
  • adduce new evidence on appeal,
  • limit the agency’s ability to wiggle out of a case by requesting remand, and instead force the issue to a binding judgment against the agency, and
  • confine the arguments that the agency can make to defend its action, and
  • require the agency to meet the requirements of the Administrative Procedure Act and other relevant laws when promulgating its regulations or guidelines.

Competence in administrative law is essential in complex patent prosecution, ex parte appeals, PTAB trials, and appeals to the Federal Circuit from PTO and ITC actions.

The Administrative Law Requires Courts to Accept Jurisdiction to Review Agency Non-Compliance with Their Own Regulations

For example, last Wednesday, the Federal Circuit in In re Cuozzo Speed Technologies, LLC ruled that the court has no jurisdiction to review decisions by the Patent Trial and Appeal Board (PTAB) whether to institute an Inter Partes Review (IPR). An argument based on administrative law would have established the Federal Circuit’s jurisdiction, but that argument was not raised.

The Federal Circuit’s holding was so broad as to oust the court of jurisdiction to review whether the PTAB’s decision was made on criteria contrary to statute or the regulations that the PTAB promulgated for itself.  The court read 35 U.S.C. § 314(b) so broadly as to insulate from judicial review all decisions to institute or not institute an IPR, in all circumstances.

But the administrative law requires a court to exercise jurisdiction to review agency compliance with the agency’s own regulations and guidance, and to set aside agency action issued “without observance of procedure required by law.”[1]  The Supreme Court has addressed the following fact pattern on about a dozen occasions.  An agency acts outside its procedures.  The aggrieved party sues.  The agency points to a statute that precludes review, and asks the court to deny jurisdiction on that basis.  In every such case, the Supreme Court holds that even if a statute purports to preclude review, jurisdiction remains to review the agency’s procedures, to assess whether the agency action was “without observance of procedure required by law.”  “Only in the rare—some say non-existent—case  … may review for ‘abuse’ be precluded.”[2]  The Court holds that preclusion statutes must be read narrowly, to preclude review only of the ultimate decision on the merits, leaving intact jurisdiction to review whether the agency departed from procedural requirements.  The Supreme Court has applied this principle to statutes even broader and clearer than § 314(b), and to government interests far more fundamental.  It is a very strong principle.

Had that administrative law argument been raised, the Federal Circuit would unquestionably have accepted jurisdiction in Cuozzo.

The Administrative Law Confines the Board’s Discretion to Deny Motions to Amend During IPR’s

Cuozzo’s brief argues that the Board erred in denying a motion to amend claims.   The argument cites no authority.  This argument could have been converted from a weak argument to a very strong one, by grounding it in the administrative law.

When an agency promulgates a regulation, it is required to explain the regulation in a Final Rule notice in the Federal Register.  Any gloss put on the regulation in that notice binds the public under Chevron[3] deference (though the many exceptions to Chevron are far less known).  This gloss is binding on the agency as well—an agency can’t twist its regulations like a nose of wax.  Nor can an agency move regulatory burden from one regulation to another, like a confidence man moving a pea from under one shell to another, by giving inconsistent rationales and interpretations for regulations.

In promulgating the IPR regulations, the PTO justified its choice of a “broadest reasonable interpretation” standard for claim construction by pointing to “a party’s ability to amend claims to avoid prior art—which exists in these proceedings (§ 42.221).”[4]  But the PTAB almost never grants these motions to amend.[5]  Thus, as a practical matter, the agency’s basis for adopting “broadest reasonable interpretation” is illusory.  The administrative law does not allow agencies to have things both ways—the PTO can’t both uniformly deny motions to amend and point to that “right” as justification for broadest reasonable interpretation.

The strong argument is based in administrative law.  While most “arbitrary and capricious” cases are hard, a few subcategories are easy.  PTAB decisions frequently raise issues that can be slotted into these easy subcategories for appeal.

The PTAB’s Trial Regulations Were Issued with Insufficient Attention to Rulemaking Procedure

Cuozzo also affirms the PTO’s choice of “broadest reasonable interpretation” as the standard for claim construction. However, the PTO’s “broadest reasonable interpretation” rule—like many of the PTO’s other regulations—is subject to challenge because the PTO was less than rigorous in following rulemaking procedure.

Agency rulemaking is governed by a number of statutes, including the Administrative Procedure Act, Regulatory Flexibility Act, Paperwork Reduction Act, Information Quality Act, E-Government Act of 2002, Independent Offices Appropriations Act, regulations on Information Collections, guidelines on Information Quality, and Executive Order 12,866.  These laws require specific procedures, disclosures, and analyses.  For example, they require an agency to disclose its assumptions, factual and statistical information and models and their underlying support on the agency’s web site.  The agency must ask specific questions to seek comment.  The agency must show cost-benefit analyses to asses effect on small entities and overall economic effect, and must show that the agency has sought to minimize (not just reduce, but minimize) paperwork burdens.  The agency must show its work, and provide supporting evidence, similar to that required for a peer-reviewed journal article.

The Paperwork Reduction Act is especially interesting, because it is little known and exceptionally powerful.  As you may recall, the PTO had to stand down on its Appeal regulation on the morning it was to go into effect because the Office of Management and Budget withheld the PTO’s power to enforce those regulations, after a number of letters pointed out PTO violations of the PRA.  (I had a little influence in that outcome.)  Likewise, OMB directed PTO to stand down on the Continuations, 5/25 Claims, and IDS regulations (I also had something to do with that).

During the rulemaking process for the PTO’s AIA regulations, several of the comment letters noted procedural deficiencies in the PTO’s Notices of Proposed Rulemaking and its supporting materials.  The letters warned that these deficiencies would expose the PTAB’s decisions to challenge because the PTAB’s regulations were not validly promulgated.  The oversights were not corrected before the final regulations were published.

Many PTAB decisions present winnable issues for appeal based on faulty procedure during rulemaking.  Cuozzo likely could have been such a case, but administrative law opportunities were missed.

Conclusion

Some administrative law statutes permit issues to be raised at any time, and such issues have been successfully raised for the first time in courts of appeals.  Unfortunately, in Cuozzo, these administrative law arguments weren’t squarely raised.  The lesson of Cuozzo is that patent attorneys—especially those that practice in contested cases before the PTAB and in appeals to the Federal Circuit—need to know the administrative law as well as they know the patent law.

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David Boundy is a patent attorney in Cambridge Massachusetts, specializing at the intersection of administrative law and patent law.  While Vice President for Intellectual Property at Cantor Fitzgerald, in 2006-10 Mr. Boundy led teams that advocated with the Office of Management and Budget in the Executive Office of the President for the withdrawal by the PTO of the Continuations, 5/25 Claims, IDS, and Appeal rules.  Mr. Boundy consults and provides legal services on administrative law issues for intra-PTO trials and judicial review cases.

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[1] 5 U.S.C. § 706(2)(D).

[2] Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667, 672 n.3 (1986)

[3] Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

[4]  Patent and Trademark Office, Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents; Final Rule, 77 Fed. Reg. 48680, 48693 (Aug. 14, 2012).

[5] Richard Neifeld, “Kill Rate of the Patent Death Squad, and the Elusory Right to Amend in Post-Grant Reviews,” Intellectual Property Today, (April 2014), at http://www.neifeld.com/pubs/Kill%20Rate%20of%20the%20Patent%20Death%20Squad%20-%20Part%20I.pdf

Intellectual Property Legal Administrator – Research Institute – Brookline, MA

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Dana-Farber Cancer Institute is seeking an Intellectual Property Legal Administrator for its Office of General Counsel.

Primary responsibilities include:

  • Serve as primary contact for intellectual property-related inquiries and requests from faculty and staff members, law firms, licensing entities, and collaborating institutions.
  • Review and process all intellectual property-related correspondence including all electronic mail sent to the Intellectual Property Docketing Inbox.
  • Enter new Institute intellectual property assets, deadlines, and documents into and audit existing data in the electronic database/filing system.
  • Prepare docket reports tracking intellectual property disclosures, assets, and deadlines.
  • Submit renewal service payments to patent offices via an online service provider interface.
  • Research and respond to requests for protection filing documents and statuses using internal systems and online patent office portals, including USPTO Public/Private PAIR.
  • Assist with the supervision of law firms in the acquisition and maintenance of Institute intellectual property assets.
  • Develop and document policies and procedures for new and existing functions, systems, and personnel.
  • Work closely with technology transfer professionals in the Belfer Office for Dana-Farber Innovations to support business development, sponsored research, licensing, and compliance efforts.
  • Prepare, coordinate execution of, and record intellectual property assignment, declaration, and power of attorney documents.
  • Maintain electronic and/or hardcopy files of signed documents and trademark specimens.
  • Coordinate Patent Committee meetings, keep minutes, and correspond with outside counsel regarding Patent Committee decisions.
  • Perform duties related to other special projects as required.

apply online via the following link: https://careers-dfci.icims.com/jobs/15523/intellectual-property-legal-administrator%2c-office-of-general-counsel/job?mobile=false&width=1903&height=500&bga=true&needsRedirect=false&jan1offset=-300&jun1offset=-240

Additional Info
Employer Type: Non-Profit
Job Location: Brookline, MA

American Conference Institute: Upcoming Conferences

American Conference Institute American Conference Institute (ACI) monitors trends and developments in every major industry with a view to providing timely and leading-edge information to our delegates. Produced by some of the industry’s most seasoned professionals, ACI’s production team sets the benchmark for quality in content. Their conferences and courses cover current issues in business for both the public and private sectors. Please visit this media partner for more information on the following upcoming conferences.

American Conference Institute

American Conference Institute American Conference Institute (ACI) monitors trends and developments in every major industry with a view to providing timely and leading-edge information to our delegates. Produced by some of the industry’s most seasoned professionals, ACI’s production team sets the benchmark for quality in content. Their conferences and courses cover current issues in business for both the public and private sectors. Please visit this media partner for more information on the following upcoming conferences.

• Litigating Disability Insurance Claims, June 12, 2008, Boston, MA

• Biotech Patents, September 15-16, 2008, Boston, MA

• India LPO Summit, September 15-16, 2008, New York, NY

• FDA Boot Camp, September 17-18, 2008-Boston, MA

• USPTO Boot Camp: Patent Edition, September 22-23, 2008-Washington, D.C.

• Positioning Class Actions Early Success, October 2008, Phoenix, AZ

• Maximizing Pharmaceutical Patent Lifecycles, October 22-23, 2008, New York, NY

• Wage & Hour Litigation, October 28-29, 2008, San Francisco, CA

• Automotive Product Liability Litigation, October 29-30, 2008, Chicago, IL

• India LPO Summit, January 2009, New York, NY

• Consumer Finance Class Actions, January 27-28, 2009, New York, NY

• Complex Litigation, February 2009, (tentative location)

• FDA Boot Camp, March 30-31, 2009-New York, NY

• FDA Boot Camp, May 28-29, 2009-San Francisco, CA

Unfair Competition at the USITC

Patent

Amarin Pharma, Inc. v. International Trade Commission (Fed. Cir. 2019)

In 2017, Amarin filed a Section 337 complaint at the ITC — alleging unfair competition against several dietary supplement importers.  Amarin sells a prescription drug containing a particular omega-3 fatty acid known as EPA (eicosapentaenoic acid).

A number of supplement companies started importing synthetic omega-3 fatty acids and Amarin looked for a way to shut them down.  Although Amarin’s formulation is patented, the importers are apparently not close-enough to infringe the patents.  Amarin thus turned to unfair competition law with the following logic: The imported “supplements” are actually drugs that have not been FDA approved and are not properly labelled.  The Food, Drug, and Cosmetic Act (FDCA) requirements served as the foundational basis for the lawsuit.  Here, however, the FDA intervened to argue that the FDCA prohibits private enforcement actions “including unfair trade practice claims that seek to enforce the FDCA.” (quoting opinion).

The ITC then dismissed the case — agreeing that the allegations here are precluded by the FDCA.  POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 109 (2014) (“Private parties may not bring [FDCA] enforcement suits.” (citing 21 U.S.C. § 337)).

On appeal, the Federal Circuit has affirmed holding:

  1. The appellate court has authority to review refusals to non-institution decisions that are effectively final determinations on the merit.
  2. The ITC has discretion as to whether to institute an investigation. In particular, “the Commission may decline to institute an investigation where a complaint fails to state a cognizable claim under § 337.”
  3. On the merits here, the “complainant fails to state a cognizable claim under § 337” since the claim cannot be fundamentally based upon a yet-unadjudicated  claim of FDCA violation. “Such claims are precluded by the FDCA.”

The majority opinion was authored by Chief Judge Prost and joined by Judge Hughes.  Judge Wallach wrote in dissent —  arguing that the court did not have appellate jurisdiction because the ITC’s refusal to institute an investigation does not count as a “final judgment” as required by the Federal Circuit’s jurisdictional statute. (The court has jurisdiction “to review the final determinations of the [ITC] relating to unfair practices in import trade, made under [§ 1337].” 28 U.S.C. § 1295(a)(6).)

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In my mind, the case leaves-out a major element — the fact that ITC Section 337 litigation is not a civil action brought by a private party.  Rather, investigations are instituted and conducted by the ITC. This is why, on appeal, the ITC is always a party rather than just the decision-maker.   Thus, at least technically, ITC proceedings are “by and in the name of the United States” as required by the FDCA act.

PTO Brief – Looking for Supreme Support for its AIA Trial Regime

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Oral arguments in Cuozzo v. Lee are set for April 25, 2016 addressing two particular questions:

  1. Whether the PTO may require that, during an inter partes review, the claims in a patent will be given the “broadest reasonable construction” consistent with the patent’s specification [as opposed to the standard construction for issued patents].
  2. Whether a party may seek to overturn the PTO’s final decision in an inter partes review based on an alleged error in the PTO’s threshold decision to institute the review, which Congress provided “shall be final and nonappealable,” 35 U.S.C. 314(d).

The briefs are available now on ScotusBlog.

The U.S. Government has also filed its responsive merits brief.  The brief appears to be a joint effort of the Solicitor General (DOJ) and the USPTO and does a solid job of justifying its positions:

On BRI:

  1. Historical: The PTO has “long applied the broadest reasonable-construction standard in all agency proceedings in which patent claims may still be amended.”
  2. Statutory: Here, although claim amendments have allowed in only exceedingly rare cases, the IPR statute does suggest that amendments are possible.  (Of course, once the motion to amend is denied, then claims cannot ‘still be amended.’
  3. Deference: The USPTO was given rulemaking authority in this area (AIA procedures) and the BRI standard is a exercise of that delegated authority.  (It is unclear what happens if the court would find this ‘substantive’ rather than ‘procedural’ and what level of deference should apply in either case).

On Appeal of Decision to Institute:

  1. Statutory: “The statute bars all judicial review, not just interlocutory appeals, of the PTO’s decision whether to institute an inter partes review.”  Rather, judicial review is limited to the Agency’s final decision on patentability.
  2. Policy: The no-review approach fits the AIA-Trial purpose of being “an efficient non-judicial alternative for testing the patentability of issued claims.”

The PTO is looking for a strong decision in this case to effectively shut-down the myriad challenges it is currently facing.

 

Alleged Copyright Infringement by Patent Prosecutors

Copyright, Patent, Patent Cases 2012, Patent Prosecution

By Dennis Crouch

American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn)

Publishers John Wiley & Sons and American Institute of Physics have asked the Minnesota District Court for leave to amend and narrow their complaint against the Schwegman law firm. The amendment would drop any allegation that submitting copies of copyright works to the USPTO constitute copyright infringement. The plaintiffs write that the amended complaint

does not allege that this unauthorized copying includes (i) making such copies of a copyrighted work for submission to the PTO as may be required by the rules and regulations of the PTO, (ii) transmitting such copies to the PTO, or (iii) making an archival copy of that work transmitted to the PTO for Defendants’ internal file to document what has been transmitted.

To be clear, however, the plaintiffs have not dropped their case, but continue to allege that other copies and transmission do constitute copyright infringement. Further, because Wiley does not have any proof of those other activities, it argues that the now unchallenged submission to the PTO serves as “evidence of broader use and circulation” sufficient to permit the complaint to move forward.

The newly amended complaint thus recites no factual basis other than the fact that Schwegman is a law firm that prosecutes patents and that, because Schwegman submitted copies of certain articles to the USPTO that it must have also made unauthorized copies. The complaint:

14. Upon information and belief, Defendants have engaged in Unauthorized Copying with respect to the copyrighted articles from Plaintiffs’ journals, including but limited to the articles identified on Schedule A.

15. Plaintiffs cannot know the full extent of Defendants’ Unauthorized Copying without discovery.

The amended complaint also adds a further list of obscure scientific articles that were submitted to the PTO by Schwegman and were allegedly copied internally in an unauthorized manner. The plaintiffs have not yet filed any proposed amendments in the MBHB case.

The USPTO intervened in these cases supporting the law firms. It appears that this amendment is meant to appease the USPTO so that it will fall out of the case – making the defendants look much less sympathetic.

Notes:

NHK-Fintiv at the Supreme Court

Patent

I recently wrote about Apple’s pending petition to the Supreme Court on the NHK-Fintiv Rule.  Now Mylan Labs has followed up with an additional petition focusing on the same issues:

  1. Does the no-appeal provision of 35 U.S.C. § 314(d) “categorically preclude appeal of all decisions not to institute inter partes review?”
  2. Is the NHK-Fintiv Rule substantively and procedurally unlawful?

Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V. (Supreme Court 2021) [Petition]

 

No Appeal of Real-Party-In-Interest Errors

Patent

by Dennis Crouch

Esip Series 2, LLC v. Puhzen Life USA, LLC (Fed. Cir. 2020)

In its decision here, the Federal Circuit has applied Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020) and refused to consider whether the USPTO erred in its real-party-in-interest analysis.

In Cuozzo (2016), the Supreme Court held that this Court is precluded from reviewing Board decisions concerning the “particularity” requirement under § 312(a)(3). The Court explained that § 314(d) bars appellate review of “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” The Court further explained that “where a patent holder grounds its claim in a statute closely related to that decision to institute inter partes review, § 314(d) bars judicial review.”

[I]n Thryv (2020) … the Supreme Court held that § 314(d) also precludes judicial review of the agency’s decision whether to apply the one-year time bar set forth in § 315(b)). . . .

In view of Cuozzo and Click-to-Call, we find no principled reason why preclusion of judicial review under § 314(d) would not extend to a Board decision concerning the “real parties in interest” requirement of § 312(a)(2). ESIP’s contention that the Board failed to comply with § 312(a)(2) is “a contention that the agency should have refused to institute an inter partes review.” Indeed, ESIP expressly argues that the agency should have refused to institute inter partes review because of Puzhen’s failure to identify all “real parties in interest.”

Slip Op. Here, the statute requires that a petition for inter partes review “may be considered only if” the petition identifies all real-parties-in-interest.  In the case, ESIP argued that doTERRA should be considered a real-party-in-interest because the company is a co-defendant in the underlying litigation, sells the accused Puhzen product, and agreed to be bound by the IPR estoppel.  The Board’s approach to the issue will stand without considering whether it is in accordance with the law.

Thryv was released after briefing and oral arguments had been complete.  The court did accept the supplemental authority, but those are severely limited.  In its statement to the court, patentee ESIP argued that it wasn’t (only) appealing the institution decision but rather (also) whether the petition met the statutory requirements: “[We] contend that Puzhen’s IPR Petition did not satisfy the statutory requirement in 35 U.S.C. § 312(a)(2).”

= = = =

On the underlying merits, the Federal Circuit affirmed the PTAB’s obviousness final decision regarding the claimed “method for introducing a scent into breathable air,” US9415130; IPR2017-02197.

Upcoming Patent Law Practice Events with Profs. Crouch and Hricik

Patent

By Dennis Crouch

I’m looking forward to a few of upcoming IP Law events.  Next week, I’ll be joining several hundred IP attorneys at the AIPLA annual meeting in Washington DC.  I am the final speaker of the event — you guessed it Professional Responsibility & Ethics.  The talk will take a comparative-law approach — looking at how duties and responsibilities shift according to the forum (litigation, prosecution, AIA Trials).  My ethics talk follows a year-in-review panel with four all-star speakers:

  • Trademarks – Prof. Christine Haight Farley (American)
  • Patents – Prof. Mark Lemley (Stanford)
  • Trade Secrets – Prof. Elizabeth Rowe (Florida)
  • Copyrights – Meaghan Kent (Venable)
  • Ethics Prof. Dennis Crouch (Missouri)

Because I already follow patent issues so closely, I typically learn the most from non-patent panels.  I am particularly looking forward to hearing from Daniel Lee who is a deputy U.S. Trade Representative in charge of Innovation and Intellectual Property.

After that, I’ll be headed back to Chicago for the JMLS Annual IP Conference on Nov 2 where Judge Newman will give a keynote on how “The Future Is in Our Hands.”  Thanks to Prof. Daryl Lim for organizing this event.

Meanwhile, my co-blogger Prof. David Hricik (Patent Law Ethics) has several interesting upcoming events:

Jumping ahead to January — I’m headed to the final Colorado Bar Ass’n SkiCLE (it will likely continue in future years in some other form) January 2-6 2019 in Aspen/Snowmass.  Use code “FACULTYINSIDER” for $100 off.  See you on the slopes.

Supreme Court: Three Patent Cases This Term!

Patent

by Dennis Crouch

The Supreme Court patent docket is light this year – at least in terms of granted petitions.  We all await the outcome of Oil States. Conventional wisdom is that the case will be a dud and that the Supreme Court confirm the viability of Inter Partes Review proceedings.  Still, the case is fascinating for its potential dramatic outcome; historic antecedents and core constitutional arguments.  The companion to Oil States is SAS Institute, which focuses on the more nuanced issue of whether the PTO can partially-grant an IPR petition.  [I’ll note here that SAS is something of a sleeper case this term being overshadowed by Oil States (I actually forgot about it when writing this post).  The outcome though could substantially change IPR strategy.]

The third case – WesternGeco v. ION Geophysical has a much more narrow focus – whether lost profit damages are available for an infringer’s extra-territorial use of an unlicensed export.  The case would have been much bigger but for the 2007 Supreme Court decision in Microsoft v. AT&T holding that electronic files don’t count as components under the export provisions of 35 U.S.C. 271(f).

Question presented in WesternGeco:

Whether the U.S. Court of Appeals for the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).

I previously discussed WesternGeco’s opening brief and supporting amici (including USDOJ) arguing that lost profits should be available under the Patent Act.  The basic argument is that 271(f) is a form of infringement, and 35 U.S.C. § 284 requires an award of “damages adequate to compensate for the infringement.”  WesternGeco argues that this provision includes lost-profits when proven.  The Federal Circuit disagreed — holding that, after considering the presumption against extraterritorial application of US law, those eventual profits were too remote from the actual act of infringement (component export) to be actionable.

SCOTUS: Damages for Foreign Lost Profits Stemming from US Infringement

The adjudged infringer Ion has now responded along with two supporting briefs.

Respondent’s Brief: The respondent begins its brief with a restatement of the question presented — focusing on the fact that the claimed lost profits are associated with a “third party’s subsequent foreign use of the infringing product.”

Whether a patentee that establishes infringement of its patent is entitled to recover lost profits under 35 U.S.C. 284 for a third party’s subsequent foreign use of the infringing product.

In its brief ION walks through its position:

Petitioner seeks to recover the profits it would have earned for conducting marine surveys in international waters. . . The Patent Act, however, does not allow recovery for an injury that occurred outside the territorial jurisdiction of the United States. The presumption against extraterritoriality forecloses petitioner’s claimed lost-profits damages in this case. . . .

Applying this Court’s two-step framework for analyzing the extraterritorial effect of a statute. . . As to the first step: Section 284, which instructs a court to “award the claimant damages adequate to compensate for the infringement,” gives no “clear, affirmative indication” of extraterritorial reach. RJR Nabisco. . . . As to the second step: it cannot seriously be disputed that awarding lost-profits damages here requires a foreign application
of the statute, because it compensates petitioner
for a foreign injury—one that occurred outside the United States only after third parties took actions abroad. Indeed, petitioner repeatedly dubs its lost profits “foreign.” The only link that petitioner’s foreign injury has to the United States is that respondent’s act of domestic infringement is a but-for cause of that injury—a link the Court has deemed insufficient in applying the presumption against extraterritoriality.

The brief here does a nice job of directly addressing and confronting particular points made by petitioner and the US Gov’t in their briefs.

Both the EFF brief and the Fairchild Semiconductor brief argue, inter alia, that the proposed “worldwide damage regime” will have the negative consequence of overcompensating patent owners.  (quoting EFF brief).

The closest companion case this term is another Microsoft case — this one involving the extraterritorial scope of a U.S. warrant — does Microsoft need to turn-over data stored on a foreign server?

Oral arguments in WesternGeco are set for April 16.

 

Remarks By Director Michelle K. Lee at the George Washington University School of Law

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The following is an excerpt from PTO Director Michelle Lee’s keynote address today, at George Washington University Law School. Read the full remarks here.- DC

How do we continue to incentivize … incredible innovations? First, we must ensure that the USPTO issues the highest quality patents as quickly and efficiently as possible. This means, at a minimum, continuing to bring down our backlog and pendency so that good ideas can be patented quickly. Which is why I am proud to report that we’ve reduced our backlog of unexamined patent applications by almost 30 percent from its peak in January 2009, despite a 32 percent increase in applications over this time period. Our so-called first action pendencies – that measure the time from filing an application to the time of obtaining an initial decision from the examiner— are down by 43 percent—from 28 months in 2011 to 16 months today. Our total pendencies – the time from filing an application to the time of obtaining a final office action, such as an allowance—are down by 26 percent—from 35 months in 2010 to 26 months today. Our backlog of Ex Parte Appeals – that’s not AIA proceedings, but our internal appeal process to the Board after the examiner issues her decision – has also gone down. We have reduced our inventory of ex parte appeals by 45 percent from a high of about 26,000 in 2012 to about 15,000 today. And, we have reduced the average pendency for appeals by 30 percent from 28 months in 2016 to 19 months today. In short, our backlog and pendencies are now lower than they’ve been in more than a decade, and they will continue to go down. Simply stated, this means more inventors are obtaining more patents more quickly. . . .

We constantly welcome—in fact, we solicit—feedback and input. And we have shown that we are willing to refine and improve as many times as needed. For example, we’ve provided applicants with more access to examiner interviews more than doubling the number of interview hours in just eight years. We’ve had more RFC’s, Proposed Rules, and public roundtables than ever before – including on such topics as our Enhanced Patent Quality Initiative, our 101 guidance, and our Patent Trial and Appeal Board proceedings. We’ve also brought a broader range of services to support American innovators where and when needed, including through four regional offices across the country, and through over a dozen IP attaches across the globe. For those of you who may not know, our attaches in China, the EU, India, Brazil, and other locations help U.S. innovators obtain and enforce IP rights outside the US, and also help advocate for improved IP laws outside the U.S. . . .

Examining patents quickly and efficiently is only part of the job. The public relies on us to issue quality patents. Today, we have about a dozen programs underway that we believe will meaningfully improve patent quality. These include programs for making sure we’re getting the most relevant prior art before our examiners as early as possible by making prior art cited in our PTAB proceedings available to examiners handling related applications, and transitioning all our examiners from the decades old, antiquated U.S. Patent Classification System to the updated, increasingly global Cooperative Patent Classification System. Developing best practices such as for enhancing the clarity of the record. And developing new and better ways to measure our progress. For example, with our Master Review Form, we are now processing twice as many reviews, and capturing data not only about the correctness of our actions, but also about the clarity of our actions. This helps us identify trends, and helps us pinpoint very specific areas for training. Finally, and, importantly, for the first time in 40 years, we are doing a comprehensive review of the amount of time our examiners need to do their work in light of the many recent changes within the patent system. We are already seeing measurable and statistically significant results in our patent quality efforts even in the short amount of time since we began the Enhanced Patent Quality Initiative. And you can look forward to more improvements in the future. In sum, the USPTO is operating well, and is issuing more, higher quality patents than ever. …

What work lies ahead? Our top priority today is to make sure the Patent Trial and Appeal Board’s AIA proceedings are as effective and as fair as possible–within our Congressional mandate. Now is the right time to examine and make any needed reforms to these proceedings, because we have five years of data and experience to guide us. …

Let’s take a look at where we are with the AIA trials today. We have shared regular updates on the number of cases and the results of those cases, but we want to break down the numbers even further so that everyone has the facts, as there have been many numbers cited – some of which are accurate, some of which are not.

Slide 1 Revised

This waterfall slide is our attempt to present even more data in a more accessible and transparent format. According to waterfall slide data, which shows the status of every petition filed since beginning of AIA, of those petitions that have reached some sort of final disposition (i.e., are not pending), about one third of all petitions are denied institution and do not go to trial; about one third of all petitions settle either before or after the decision to institute; and only about one third of all petitions ever reach final written decision. It is only at that point of reaching final written decision is it relevant to talk about the patentability or unpatentability of the claims of a patent. And, at that point, it is true that 66 percent of petitions will find all instituted claims of the patent unpatentable, 17 percent of petitions will find all instituted claims of the patent patentable, and an additional 17 percent will have mixed results (some instituted claims will be found to be patentable and some will be found to be unpatentable). So statements that “all” or 95 percent or even 80 percent of patents are found unpatentable are not supported by the data and do not account for prior disposition by settlement or by denial of institution.

Slide 2 Revised

Drilling down further on the institution rate, here is some helpful data from the years the AIA trials have been in effect. As you can see, the institution rate in our proceedings has been steadily declining from a high of 87 percent in the beginning, to about two thirds today. These are the numbers, and these are the facts. Now, our stakeholders have understandably asked how the rates of unpatentability in AIA proceedings, reflect on the quality of all of the other patents we’ve issued. . . . [T]here are almost 2.8 million patents in force. Incredible. Of those 2.8 million about 4,000 patents have been challenged in AIA trials. This represents less than 0.2 percent of the patents currently in force. …

As I have said many times in the past, the USPTO is constantly looking for ways to make the AIA trials as effective and as fair as possible within our Congressional mandate.  And we welcome your suggestions and ideas, the more specific, the better. To this end, we’ve set up a mailbox where you can submit your ideas at PTABProceduralReformInitiative@uspto.gov. This is an early opportunity to provide input. Your feedback here will help form the basis for our recommendations to the administration on next steps.

In fact, we have already heard from a number of you regarding a number of issues. As discussed:

  1. Multiple petitions, and how best to curb abusive practices.
  2. Whether to provide other opportunities to amend claims later in the proceedings when patent owners may have a better sense of where their claims stand,
  3. Whether to reevaluate our claim construction standards in view of new data and experiences, and
  4. How to best incorporate the findings and legal conclusions of prior proceedings at the USPTO, including examination and other post-grant proceedings, as well as, importantly, proceedings conducted in the federal courts.
  5. What considerations should go into a decision to institute, for example, how can we better take into account considerations such as the interests of justice, economic factors, and hardship.
  6. As to decisions to institute, whether there should be additional review of institution and termination decisions—and by whom.
  7.  When and how to permit parties to join proceedings.
  8. When and under what circumstances might it be appropriate to extend the length of the proceedings beyond 12 months and what impact would extensions have on litigations before, not only the Board, but district courts. . . .

[W]e are [also] streamlining the way the Board identifies and designates opinions as precedential, with the goal of designating more opinions precedential. Why? Because doing so 1). Improves the consistency across panels of the Board, and 2). Provides greater notice to the public to help you make better informed decisions on how to manage your Board proceedings. . . .

Fees: Finally, we are also proposing increases to our AIA trial fees. . . . We believe, as many of you do, that these proceedings should be self-funded. I commend our team for making thoughtful initial cost projections and for recommending revisions to ensure that these proceedings are fully self-funded. There is much to do on AIA proceedings, patent quality, and in many other areas, and I promise you that we are working diligently, with a sense of purpose, every day.

In closing, we all want what’s best for this country’s inventors, innovators and entrepreneurs. Because it is through their efforts that our country remains at the forefront – economically and globally. Simply stated—and I think President Trump and Secretary Ross would agree—we want the United States to out-innovate and out-perform our global competitors, producing new jobs and new technologies and new industries that benefit all Americans, including individual inventors and those in our small businesses and startups. Let’s not forget that the modest businesses and unknown inventors of today may become the largest and most well-known drivers of our economy tomorrow. To make that happen, Congress, the courts, the administration (especially the USPTO), and even all of you here today, must all work together to make sure the system envisioned by our Founding Fathers lives up to its purpose to promote innovation. You have the commitment of the entire USPTO team that we will play our part to ensure that we continue to incentivize the kind of innovations that make our lives better and safer And that put men and women—like Mr. Iver Anderson with his lead-free solder—in the National Inventors Hall of Fame. Our future depends upon it. Thank you.

Federal Circuit on PTAB Initiation Decisions: Still No Appeal …

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Wi-Fi One v. Broadcom (Fed. Cir. 2016)

Wi-Fi One is the new owner of Ericcson’s U.S. Patent No. 6,772,215 that covers a method for encoding and sending packet-receipt error messages over the internet. In 2013, Broadcom brought this IPR challenge and the Board eventually found many of the claims anticipated.

On appeal here Wi-Fi challenges Broadcom’s standing to bring the IPR challenge under 35 U.S.C. § 315(b).  Section 315(b) indicates that an IPR proceeding may not be instituted if the petitioner (or its privy) had been served with an infringement complaint more than one year prior.

315(b) Patent Owner’s Action.— An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Although Broadcom had not been previously sued on the patent, Wi-Fi argues that its privies had been previously sued.  The PTAB rejected that argument – finding that Broadcom was not a “privy” of the prior litigants because Wi-Fi did not prove that Broadcom had power to control the prior district court litigation or that Broadcom would be bound by the outcome of that prior litigation. The Board also refused Wi-Fi’s request for further discovery on the matter.

On appeal, the Federal Circuit affirmed — holding that the question of proper institution is unreviewable based upon the statutory statement that “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d).  Although I have not quite found the line in the decision, is appears that the court also held that even the denial of discovery is unreviewable.

The Supreme Court extended the preclusion of judicial review to statutes related to the decision to institute; it did not limit the rule of preclusion to substantive patentability determinations made at the institution stage, as the facts of Cuozzo itself make clear.

Slip Opinion at 8.  The decision here essentially follows the Federal Circuit’s prior ruling in Achates.

The court also sided with the Board on Wi-Fi’s substantive argument – affirming the Board decision that the prior art anticipates.

 

 

 

Again with the Redundancy: Although MPHJ’s claim might be obvious, HP can’t pursue that argument

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HP v. MPHJ (Fed. Cir. 2016)

Over the past few years, MPHJ has raised the ire of many with its enforcement campaign of U.S. Patent No. 6,771,381.  The claims seemingly cover HP’s multi-function scanner-printers that can be configured to email the scanned documents.  However, rather than suing HP for infringement, MPHJ sent letters to tens of thousands of businesses who HP printers seeking royalties.  A number of states took direct action against MPHJ, including Vermont and Nebraska.

HP’s response to this was to file an inter partes review proceeding challenging all 15 claims of the ‘381 patent.  IPR2013-00309.  The PTAB largely sided with HP – finding 14 of the claims unpatentable, but confirmed the patentability of claim 13.  HP appealed on claim 13, but the Federal Circuit has affirmed the Board ruling.

HP challenged claim 13 on both obviousness and anticipation grounds. However, the Board refused to institute review on the obviousness grounds — seeing that ground a ‘redundant’ to the two counts of anticipation.  The unique aspect of claim 13 is that it requires a “list of available module means for maintaining a registry” (e.g., “input, output, and process modules”).  This list was not found in either of the two separate anticipation references (Cotte or SJ5) as such, the Board found no anticipation. 

As a question of fact, an anticipation conclusion by the Board is given substantial deference on appeal and will be affirmed if “a reasonable mind might accept the evidence presented as sufficient to support the finding.” Here, the appellate panel agreed that at least some evidence supported the conclusion that the element was missing from the prior art since HP was “unable to specify” how the required list was disclosed in the prior art.

HP also challenged the Board’s refusal to institute on obviousness grounds and its failure to explain its redundancy conclusion.  On appeal, the Federal Circuit refused to address that issue — finding that appellate review of the institution decision is barred by statute.

Allowing an APA challenge to the Board’s decision to institute on the basis that the Board had insufficiently articulated its reasoning would eviscerate § 314(d) by allowing substantive review of the institution decision. Although there is a strong presumption of judicial review of administrative action, that presumption may be overcome where “there is persuasive reason to believe that such was the purpose of Congress.” Bowen v. Mich. Acad. of Family Physicians, 476 U.S. 667 (1986). Congress, through § 314(d), has explicitly stated that the Board’s institution decision “shall be final and nonappealable.” Thus, that specific statutory language precludes our review.

It is unclear to me at this point whether Claim 13 is valuable – i.e., do the current HP models infringe? I guess that we’ll see.

 

= = = = =

MPHJ’s case against Vermont is still pending before the U.S. Supreme Court.

= = = = =

The court here did not address how HP had standing to appeal, from the briefs neither party addressed that issue as well.

Federal Circuit: Our Muscles Are Not Working :{}

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by Dennis Crouch

Shaw Industries v Automated Creel Systems[1] involves several interesting issues involving inter partes review proceedings.

One Year Filing Bar: The first involves the one-year deadline for inter partes review petitions following the service of a complaint to the future-petitioner.[2]  “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

Here, the patentee ACS had filed an infringement lawsuit and served Shaw more than one year before the IPR filing.  However, the parties voluntarily dismissed the lawsuit without prejudice in a joint filing.  In considering the issue, the Board determined that the voluntary dismissal “nullifie[d] the effect of the alleged service of the complaint on Petitioner.” As such, the Board was free to institute the inter partes review proceeding.

On appeal the Federal Circuit followed its prior ruling Achates[3] that the appellate court lacks jurisdiction to the Board’s decision on whether the time-bar of Section 315 applies.  The panel[4] did not support the PTO’s decision and noted that the Supreme Court’s decision in Cuozzo[5] “may affect this court’s holding regarding the reviewability of the decision to institute in Achates.”

As an aside, a petition for writ of certiorari had been filed in Achates, that case, however, has settled. We’ll see if ACS takes the case up here.

The Non-Doctrine of Redundancy: The second issue involves the PTAB’s non-doctrine of redundancy.  Shaw filed two IPR petitions and in each petition the Board implemented the IPR on one ground for each claim, but declined to implement IPR on the additional grounds because they were ‘redundant’ without further explanation of that redundancy. The redundant arguments included anticipation grounds found redundant to obviousness grounds. Oddly, the PTO has stated repeatedly in the case that “there is no redundancy doctrine.”

In the appeal, the Federal Circuit again stated that it has no authority to review the Board’s decision to institute an IPR.

In the case, Judge Reyna joined the court’s opinion but also penned a judgment “concurring specially” to reflect his “deep[] concern[] about the broader impact that the Redundancy Doctrine may have on the integrity of the patent system.”  Here, the doctrine’s existence is expressly denied by those applying it. The PTO argues that it need not explain what’s happening because “the Director has complete discretion to deny institution . . . and [does] not even have to state in our institution decisions why were choosing not to go forward.”[6] Judge Reyna responds:

The PTO’s claim to unchecked discretionary authority is unprecedented. It bases this claim on the statute that makes institution or denial of inter partes review “final and nonappealable.” See 35 U.S.C. § 314(a), (d). Regardless of appealability, administrative discretion is not and never can be “complete” because it is always bounded by the requirement that an agency act within the law and not violate constitutional safeguards. See 35 U.S.C. § 2(b)(2) (PTO “may establish regulations, not inconsistent with law”). There is good reason for this. “Expert discretion is the lifeblood of the administrative process, but unless we make the requirements for administrative action strict and demanding, expertise, the strength of modern government, can become a monster which rules with no practical limits on its discretion.” Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 167 (1962) (internal quotation marks omitted).

Indeed, regardless of whether the Board’s institution decisions can be appealed, the Board cannot create a black box decisionmaking process. Conclusory statements are antithetical to the requirements of the Administrative Procedures Act (“APA”), which the PTO and its Board are subject to. 35 U.S.C. § 2(b)(2)(B); see also Dickinson v. Zurko, 527 U.S. 150, 154 (1999). The APA requires “reasoned decisionmaking” for both agency rulemaking and adjudications because it “promotes sound results, and unreasoned decisionmaking the opposite.” Allentown Mack Sales & Serv., Inc. v. N.L.R.B., 522 U.S. 359, 374– 75 (1998) (citation omitted). The APA requires that Board decisions evince both its authority to render the decision and a reasoned basis for rendering that decision. Id. at 372 (“Not only must an agency’s decreed result be within the scope of its lawful authority, but the process by which it reaches that result must be logical and rational.”). The problem here is not that the Board’s reasoning is illogical or irrational; the problem is that there is no reasoning at all.

Judge Reyna pushes further by highlighting the impact of the PTO’s non-decision on the eventual estoppel issues. The PTO suggested in the case that estoppel would not attach to the non-instituted redundant grounds since they were not instituted, but that argument makes little sense to me.[7]   And, as Judge Reyna points out, “[w]hether estoppel applies, however, is not for the Board or the PTO to decide. . . . These tribunals should not have to parse cryptic statements or search out uncited [and denied] doctrines to make this determination.”

= = = = =

Notes

[1] Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., Appeal No. 2015-1116 (Fed. Cir. March 23, 2016), on appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2013-00132, IPR2013-00584 challenging validity of U.S. Patent No. 7,806,360.

[2] 35 U.S.C. §  315(b).

[3] Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015).

[4] Opinion authored by Judge Moore and joined by Judges Reyna and Wallach.

[5] Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 890 (2016).

[6] Quoting PTO brief and oral arguments.

[7] The PTO’s argument does have some logical merit. The statute creates estoppel for arguments “raised or reasonably could have [been] raised during that inter partes review.”  Although the denied arguments were actually raised, there were raised during the institution proceeding and not the actual review.  And, since the PTO denied institution on those grounds, the party was then prohibited from raising those grounds during the review itself.

Patent Case Management Goes Cross-Institutional and Global

Patent

Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law

Prior to the mid-1990s, patent litigation took place in district court silos.  District judges managed these cases based on their general litigation background, which rarely extended to patent cases.  Experienced patent litigators, many of whom also prosecuted patents, brought their technical and litigation experience to the table.  As a result, each patent case reinvented the patent litigation wheel to a significant extent.

With the growth of high technology patent litigation in the 1980s and early 1990s, a new breed of general litigators entered the fray.  They saw advantages to trying patent cases to juries.  In addition, the newly established Federal Circuit was getting its sea legs and began to focus on the disarray.  With the Markman decisions of the mid 1990s, the Federal Circuit and the Supreme Court triggered a new patent litigation era.  Pre-trial “Markman” hearings to construe claims became the norm, and with that, the development of the Northern District of California’s Patent Local Rules for managing patent cases led by Judge Ronald Whyte.  Although initially put forth as a voluntary case management model, practitioners quickly embraced these rules.  Busy federal judges were all too happy to see the patent bar following these rules, thereby reducing the case management challenges.

It was around this time, in 1997, that I reached out to the Federal Judicial Center to offer the Berkeley Center for Law & Technology’s assistance in training federal judges in the intricacies of intellectual property law and case management.  That led to a 25 year collaboration leading annual week-long training programs, panels at FJC regional and national events, webinars, and the development of the Patent Case Management Judicial Guide (“PCMJG”).  These programs have educated much of the federal judiciary—including a substantial portion of district judges, magistrate judges, and bankruptcy judges—as well as involved Federal Circuit judges.  At the urging of former Federal Circuit Chief Judge Paul Michel, I developed programs and orchestrated a patent investigation guide for the International Trade Commission.  These efforts helped to persuade ITC administrative law judges to implement Markman hearings.

These efforts spread the wisdom of a new civil procedure framework for patent litigation.  Numerous districts followed the Northern District of California’s lead, adopting patent local rules and standing orders.  I also found myself working with judges in the District of New Jersey on a new branch of patent case management rules for pharmaceutical cases, which are predominantly pursued there and in Delaware.  The advantages of standardized and coordinated patent case management became apparent and have revolutionized patent case management.

These programs and publications brought together leading practitioners and judges from the most active districts to discuss patent case management.  The Patent Case Management Judicial Guide, now in its third edition and published by the Federal Judicial Center for judges and available for free via SSRN, has been widely used and cited.  Dennis Crouch referred to it as the Bible for patent litigators.  It is now commonly assigned for teaching patent litigation and is among the most important resources for newly appointed federal judges and clerks dealing with patent litigation.

Patent Case Management Goes International

I was delighted to be invited in the summer of 2020 to assist the World Intellectual Property Organization (WIPO) in developing an International Patent Case Management Judicial Guide.  In conjunction with Eun-Joo Min, Director of the WIPO Judicial Institute, and Judge (ret.) Jeremy Fogel, Executive Director of the Berkeley Judicial Institute, I have worked over the past two years with leading judges from eight of the most significant industrial nations (Australia, Brazil, China, Germany, India, Japan, Republic of Korea, and the United Kingdom) to develop an international version of the Patent Case Management Judicial Guide.  Judge (ret.) Kathleen O’Malley, who served as both a district judge and Federal Circuit judge, has also advised WIPO’s efforts.  My colleague Allison Schmitt, Director of BCLT’s Life Sciences and Innovation Project, and I have developed the U.S. chapter.  WIPO anticipates publishing the International Patent Case Management Judicial Guide by December 2022.  This volume promises to promote the advantages of nuanced patent case management on a global scale, enhance the capacity of litigators and in-house counsel to assess international patent litigation, and harmonize patent systems and policies.

Patent Case Management Goes Cross-Institutional

When I agreed to collaborate on the International Patent Case Management Judicial Guide, I mistakenly thought that producing the U.S. chapter would be relatively straightforward.  After all, the PCMJG was the model for the project.  But as discussions with the other participants revealed, the U.S. patent system is far more extensive and complex than district court litigation.  Other nations employ a variety of specialized tribunals and several treat invalidity challenges in separate tribunals.  The U.S. has moved in that direction with the establishment of the Patent Trial and Appeal Board’s Inter Partes Review and Post-Grant Review authority.  It was time to integrate PTAB case management into U.S. patent case management.  The project illuminated the U.S.’s distinctive approaches to dealing with border control (the ITC’s Section 337 authority) and pharmaceutical patents (Hatch Waxman and the BPCIA).  It also highlighted the growing importance of SEP/FRAND issues.  Thus, the WIPO project has spurred better appreciation of the many dimensions of U.S. patent case management and highlighted lessons for improving the U.S. system.

As a way of harmonizing the presentation of patent case management regimes across the broad array of patent systems, WIPO developed the following template:

  1. OVERVIEW OF THE PATENT SYSTEM
  2. PATENT INSTITUTIONS AND ADMINISTRATIVE REVIEW PROCEEDINGS
  3. JUDICIAL INSTITUTIONS
  4. PATENT INVALIDITY
  5. PATENT INFRINGEMENT
  6. JUDICIAL PATENT PROCEEDINGS AND CASE MANAGEMENT
  7. REMEDIES
  8. THREATS ACTIONS
  9. CRIMINAL PROCEEDINGS
  10. ENFORCEMENT
  11. APPELLATE REVIEW
  12. BORDER MEASURES
  13. SELECTED TOPICS
  14. KEY CHALLENGES AND EFFORTS TO IMPROVE PATENT CASE MANAGEMENT

We developed a summary of PTAB case management in Chapter 2, ITC Section 337 patent investigation management in Chapter 12, and SEP/FRAND enforcement and pharmaceutical patent case management in Chapter 13.  The appendix contains a chart comparing district court patent adjudication, ITC patent investigations, and PTAB Inter Partes review.  The draft of the U.S. chapter can be downloaded by clicking on this link: WIPO International Patent Case Management Judicial Guide: United States.

This draft is undergoing review.  We welcome comments from the Patently-O community on any aspects.  Please send these comments to pmenell@law.berkeley.edu and aaschmitt@berkeley.edu.

The Future of Patent Case Management (and IP Case Management More Generally)

We are heartened to see growing interest in the study of patent (and IP) case management.  Allison and I are developing a comprehensive patent case management guide that is geared for the U.S. patent system.  We hope to finish that more extensive project by late 2022.  I am also working with other teams of practitioners and scholars on copyright, trade secret, and trademark analogs. The trade secret project is close to fruition and we hope to release a draft this summer.

These projects help to demystify and improve the functioning of intellectual property systems, which is especially important in the United States where such matters are tried to generalist judges and lay juries.  They also enable judges, practitioners, scholars, and law students to delve more deeply into the ways in which the legal system can more effectively and efficiently resolve disputes.  We are grateful to BCLT, BJI, the Federal Judicial Center, and WIPO for supporting our efforts, as well as the many practitioners and judges who have shared their experience and insights.