Seeds of Doubt: PTAB Rejects Plant Patent Challenge, Citing Genetic Uncertainty

Patent

by Dennis Crouch

In a recent post-grant review decision, the PTAB sided with the patentee and denied  institution of a PGR challenge to U.S. Patent No. 11,696,545 (“the ‘545 patent”), which claims an inbred maize variety designated PH4CYJ. Inari Agriculture, Inc. v. Pioneer Hi-Bred International, Inc., PGR2024-00023, Paper 15 (P.T.A.B. Oct. 15, 2024).  The case is interesting for several reasons — most notably because it upholds a utility patent covering a plant line developed through simple cross breeding.  In my post, I point to two deficiencies in the Board’s decision (1) its lack of reasoning for a determinative claim construction; and (2) its conclusion that a parent-line of maize  used in the cross breeding was not prior art because it was not publicly available at the time.

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SPEX v. Western Digital: $316 Million Verdict for Means Plus Function Claim

Patent

A Central District of California jury has awarded SPEX Technologies nearly $316 million in damages against Western Digital for infringement of a patent related to hardware encryption technology. The verdict, handed down on October 18, 2024, comes after an eight-year legal battle and raises interesting questions about infringement of means-plus-function claims and the calculation of reasonable royalty damages.

SPEX Verdict

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Pleading Stage Claim Construction

Patent

by Dennis Crouch

UTTO Inc. v. Metrotech Corp., No. 2023-1435 (Fed. Cir. Oct. 18, 2024).  This new claim construction decision has two important focal points:

  1. Is it proper at the motion-to-dismiss stage? (Answer: Yes, but with major caveats)
  2. Is a plural also singular? (Answer: Sometimes, because in patent law, even basic grammar isn’t safe from interpretation)

The case involves technology for detecting and identifying underground utility lines, with the dispute centered on the interpretation of the phrase “group of buried asset data points” in UTTO’s US9086441.  The accused device uses one data point at a time and argues no infringement.

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Federal Circuit’s Rule 36 Affirmances: A Concerning Trend in Light of Loper Bright

Patent

by Dennis Crouch

Starting with my 2017 article chastising the Federal Circuit for its R.36 practice, dozens of parties have challenged the Federal Circuit’s ongoing habit of regularly issuing a large number of no-opinion judgments.  So far, the Federal Circuit has refused to address any of the legal process complaints – favoring silent efficiency over transparency.

A new en banc petition in Converter Manufacturing, LLC v. Tekni-Plex, Inc., raises  the issue in a new way, particularly focusing on dicta from the Supreme Court’s landmark ruling in Loper Bright Enterprises v. Raimondo, 144 S. Ct. 2244 (2024). The petition highlights the tension between judicial efficiency and the court’s constitutional duty to independently review agency actions.

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Recent Patent Law Scholarship

Patent

by Dennis Crouch

This post offers some insight into four patent-focused academic articles that I’ve been reading lately.

1. A textualist approach to patent eligibility under § 101;
2. Reflections on the Myriad, ten years later
3. Message to Competition Regulators: Patents are not simply a necessary evil
4. Philosophical critique of AI inventorship

These pieces offer insights into ongoing debates within patent law and policy. Although I don’t necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics. (more…)

Allergan: En Banc Support for Stronger ODP Rules

Patent

We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context.  In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing – hoping to invalidate Allergan’s protected patent.

Prior posts:

Two amicus briefs were recently filed supporting the petition – One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB. (more…)

USPTO Tweaks PTAB AIA-Trial Counsel Rules; NO Major Overhaul

Patent

by Dennis Crouch

The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner. (more…)

The Substance of OpenAI’s Patent Pledge?

Patent

by Dennis Crouch

OpenAI’s new patent pledge promises to use their patents only for defensive purposes, as long as other parties do not assert claims against them or engage in harmful activities. The move echoes Tesla CEO Elon Musk’s 2014 declaration that “all our patent … belong to you” – a pledge that garnered significant attention but left many questions unanswered. OpenAI’s pledge suffers from similar ambiguities and limitations that may ultimately render it more of a PR move than a meaningful commitment to open innovation.

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Federal Circuit Revives Patent Suit Against Aetna Over Health Savings Cards

Patent

by Dennis Crouch

In AlexSam v. Aetna, the Federal Circuit recently revived the patentee’s infringement lawsuit against health insurance giant Aetna over its Visa and Mastercard-branded health savings account (HSA) debit cards. AlexSam, Inc. v. Aetna, Inc., No. 22-2036 (Fed. Cir. Oct. 8, 2024). The district court has dismissed the case on 12(b)(6) for failure to state a claim of infringement.  The case will likely be highly cited by future infringement plaintiffs seeking to overcome motions to dismiss, especially whether allegations in the complaint are unduly conclusory.   The appellate panel also narrowly construed a prior license agreement between AlexSam and Mastercard

AlexSam’s asserted U.S. Patent No. 6,000,608 covers a “multifunction card system” that can serve as both a debit card and a medical services card.  I have reproduced the two asserted claims below. And no, this is not an eligibility case. (more…)

Third-Party Litigation Funding in Patent Cases: Transparency, Ethics, and Policy Concerns

Patent

by Dennis Crouch

The landscape of patent litigation has been dramatically reshaped by the rise of third-party litigation funding (TPLF) over the past decade. As someone who has been involved in patent law issues for 20+ years, I can confidently say that if I were asserting a patent today, I would actively seek litigation finance to mitigate risk, even if I had sufficient resources to self-fund (which I don’t). The availability of TPLF allows patent holders to create high-caliber legal teams and can also provide a strategic advantage by demonstrating to opponents that the case has been vetted by sophisticated investors willing to back it financially.

However, this trend toward litigation finance comes with complications and controversies. While TPLF has undoubtedly increased access for many patent holders, it has also given rise to significant ethical concerns and abuses. One of the most pressing issues is the potential for effectively sidelining the nominal plaintiff – the actual patent holder – in favor of the financial interests of funders and attorneys. In addition, there is some notion that TPLF is often channeled into the US via foreign sources — something that has raised concerns that this could somehow destabilize the rule of law.

At the same time, it’s important to acknowledge the positive impacts of TPLF. The availability of litigation finance has allowed larger, more established law firms to take on plaintiff-side patent cases that they might have previously declined due to risk or resource constraints. Anyone working in a law firm knows how difficult it is to convince partners to take on risk, and TPLF offers guaranteed partial payouts from funders even if the defendant wins.  That means that these firms can assemble formidable legal teams, potentially leveling the playing field against well-resourced defendants and improving the overall quality of patent litigation. (more…)

Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress

Patent

by Dennis Crouch

The pending appeal in CeramTec v. CoorsTek Bioceramics again highlights the interplay between utility patents and trade dress protection — this one focusing on the color pink.  The case centers on CeramTec’s attempt to maintain trademark registrations for the pink color of its ceramic hip implants after its utility patent expired. While color can sometimes serve as a trademark, the Board’s decision to cancel CeramTec’s registrations appears supported by the evidence and aligns with key Supreme Court precedent on functionality.  At the same time, CeramTec offers a  powerful argument that the TTAB decision disregarded direct evidence of non-functionality based upon recent material science testing.

There is some chance that the court will issue a quick affirmance without opinion, but it is more likely that we’ll see an opinion in the next few months. (Note, the image above is marked “confidential” but was found in appellant’s non-confidential brief making it, in my view, fair game for publication). (more…)

USPTO Terminates Thousands of Chinese-Origin Patent Applications Due to Forged Attorney/Agent Signatures

Patent

by Dennis Crouch

In a stunning development, the USPTO recently terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a practitioner’s signature. This mass termination, announced on October 2, 2024, stems from an investigation that uncovered misconduct involving the unauthorized use of a registered patent agent’s electronic signature.

The outcome here appears potentially over the top in the way that it punishes the patent applicants — almost all Chinese companies — for unknowingly participating in the fraud.  As one attorney who is now representing one of the impacted applicants explained to me: “punishing the applicants for the actions of the practitioner goes a bit far, especially where the punishment is termination with no remedy.”  A number of the applicants used Chinese counsel who identified and hired the offending firm (W&K) years ago and worked with them for some time without issue.  I would not be surprised if some of these applicants push for judicial review, perhaps by filing an APA action.

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Free Post: En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements

Patent

by Dennis Crouch

This post focuses on the issues raised in the patent challenger Sun Pharma’s recent en banc petition in Allergan USA, Inc. v. MSN Laboratories Private Ltd and Sun Pharmaceutical Indus. Ltd., No. 2024-1061 (Fed. Cir. 2024).  The original panel majority opinion is controversial on two separate fronts. First, it created an obviousness-type double patenting (ODP) safe harbor for certain patents whose term had been extended via patent term adjustment (PTA); Second, the court OK’d the omission of what appeared to be an essential element (a glidant) from the claims, finding sufficient written description support despite the specification only describing formulations that included a glidant. This omission was particularly notable as it occurred after the patentee learned during litigation that the accused products did not include a glidant.

I’ve divided this post into two parts: Part I – ODP Safe Harbor and Part II – Written Description Essential Element. (more…)

Supreme Court denies Cert

Patent

by Dennis Crouch

The Supreme Court has denied certiorari in all of the patent cases it considered in its  first conference of the October 2024 term:

  • Denied: 23-1349 Provisur Technologies, Inc. v. Weber, Inc..  Does an on sale product constitute a printed publication that can be asserted in an IPR.
  • Denied: 23-1298 United Therapeutics Corporation v. Liquidia Technologies, Inc. Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO’s reliance on new grounds and new printed publications—not raised in the initial petition?
  • Denied: 23-1231 Cellect, LLC v. Vidal.  Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment created an improper term extension under the judge-made doctrine of obviousness type double patenting.
  • Denied: 23-1217 Chestek PLLC v. Vidal. Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
  • Denied: 23-1184 Eolas Technologies v. Amazon.com, Inc. Whether the claims recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp.
  • Denied: 23-1142 Surti v. Fleet Engineers, Inc. Whether the Court erred in denying proper compensation.

Only a handful of cases are still pending before the court: (more…)

Treading Carefully: Federal Circuit Expands “Absolute Litigation Privilege” and Affirms Trade Dress Invalidity in Toyo Tire v. Atturo Tire

Patent

by Dennis Crouch

In a recent decision, the Federal Circuit addressed several key issues in intellectual property litigation, including the scope of “absolute litigation privilege” under Illinois law, trade dress functionality, and the consequences of discovery sanctions. Toyo Tire Corp. v. Atturo Tire Corporation, No. 2022-1817, 2022-1892 (Fed. Cir. Oct. 4, 2024).

The decision here is non-precedential, likely because it does not include any patent-law issues and thus is entirely based upon regional circuit law (here, the Seventh Circuit). Still, the case includes a number of interesting and important holdings.  In this post, I focus on two particular issues: (1) the scope of privilege against being sued for defamation or other similar torts based upon statements made in a court proceeding; (2) the strong functionality doctrine that limits protection of trade dress on three-dimensional product design.

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Distinguishing Dastar: False Patent Marking Claims Get New Life Under the Lanham Act

Patent

by Dennis Crouch

In a significant ruling that breathes new life into false patent marking claims, the Federal Circuit has held that falsely advertising a product as “patented” can give rise to liability under the Lanham Act’s prohibition on false advertising. In Crocs, Inc. v. Effervescent, Inc., the appellate panel reversed a Judge Brimmer (D.Colo) summary judgment ruling, thus allowing competitor Dawgs to pursue false advertising claims against Crocs for allegedly misrepresenting its “Croslite” material as patented and ‘exclusive.’  One advertisement read to the appellate panel stated: The reason the shoes are so comfortable is that they are made of a patented closed-cell resin. The resin has many positive aspects …”  But, the closed-cell resin was not patented and instead was commercially available for anyone to use.

This ruling opens up a new avenue for challenging false patent marking after the America Invents Act severely curtailed such claims under the Patent Act itself. The decision also clarifies the scope of false advertising claims under the Lanham Act in light of key Supreme Court and Federal Circuit precedents such as Dastar and Baden Sports.

Professor Rebecca Tushnet is a leading commentator on Dastar and its progeny. In an earlier post, she also argued that the district court decision was “wrong” for much the same reason expressed by the appellate panel:

The patented/proprietary/exclusive language here is not the same as claiming authorship; it’s claiming uniqueness as a reason for consumers to believe that Crocs possess superior product characteristics to those of competitors’ products. To the extent that the claims lead consumers to believe that Crocs are “made of a material ‘different than any other footwear,’” a difference made credible to consumers by reference to patents and/or proprietary knowledge, that is a claim about the physical nature of specific product components, not about authorship. When the Supreme Court left 43(a)(1)(B) claims open in Dastar, this is the kind of thing that fits well.

Tushnet (September 2021).  See also, my prior discussion of the case that includes links to the briefs.

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Secret Springing Prior Art and Inter Partes Review

Patent

by Dennis Crouch

The Federal Circuit is set to decide an important issue regarding the scope of prior art that can be considered during inter partes review (IPR) proceedings in the pending appeal of Lynk Labs, Inc. v. Samsung Electronics Co., Ltd.  At issue is whether section 102(a)(2) prior art qualifies for use in an IPR proceeding because those applications were not yet publicly accessible until after the priority date of the challenged patent.  This case has very significant implications because 102(a)(2) prior art is extensively used – especially in crowded and rapidly moving areas of technology.  The question, is whether this type of 102(a)(2) prior art qualifies as a “patent or printed-publication” under the IPR limits of section 311(b).   Note that the same issue is raised in  another pending CAFC case VLSI Tech. LLC v. Patent Quality Assurance LLC, No. 23-2298 (Fed. Cir.).

The dispute stems from an IPR petition filed by Samsung challenging claims of Lynk Labs’ U.S. Patent No. 10,687,400 (“the ‘400 patent”) related to LED lighting systems. Samsung’s petition relied upon a prior-filed patent application (“Martin”) as a key prior art reference. (Application No. 10/417,735 subsequently published as U.S. Patent App. Pub. No. 2004/0206970).  This prior application is not prior art under 102(a)(1) – because it was not patented or published until after Lynk’s effective filing date. However, the prior application is prior art under the “secret springing prior art” provision of 102(a)(2), since it was on file prior to Lynk and then subsequently published.  I refer to this as “secret springing prior art” because Martin was only secretly on file at the time Lynk filed its application – later, once Martin published it suddenly became prior art –back dated to the application filing date.

The PTAB instituted review and ultimately found the challenged claims unpatentable based in part on the Martin reference. (more…)

Federal Circuit Slices Through Patent Infringement Verdict: A Damage Apportionment Preview

Patent

The Federal Circuit recently issued a decision in Provisur Technologies, Inc. v. Weber, Inc., No. 23-1438 (Fed. Cir. Oct. 2, 2024), partially reversing a $10.5 million jury verdict in a patent infringement case involving food processing machinery. This decision marks the latest chapter in an ongoing legal battle between the two food processing equipment manufacturers. The case has a complex procedural history, including parallel inter partes review (IPR) that is now on petition to the U.S. Supreme Court.

This October decision covers some of the ground that the court may address in the upcoming en banc rehearing of EcoFactor v. Google, offering some foreshadowing of likely outcomes. Here, the court strongly sided with the accused infringer in requiring particularized apportionment related evidence before allowing a patentee to use the entire market value of a product as the royalty base.  In EcoFactor, the court will similarly focus on the evidentiary standard required of expert testimony on damages apportionment. Provisur was authored by Chief Judge Moore, one of the most ‘pro patentee’ judges — signaling that patent owners are unlikely to smile when they read the EcoFactor decision. (more…)

Diamond in the Rough: Can a Composition of Matter Claim Be an Abstract Idea?

Patent

by Dennis Crouch

US Synthetic Corp. v. ITC, Docket No. 23-01217 (Fed. Cir., pending appeal)

The United States International Trade Commission (ITC) is often seen as a pro-patentee venue — but not for US Synthetics and its attempts to enforce its patents covering drill bit diamond tips.

In its October 2022 decision, the ITC found the asserted claims of USS’s US10508502 invalid under 35 U.S.C. § 101 even though the patent claims polycrystalline diamond compacts (“PDCs”) used in drill bits and other applications. The ITC’s decision is now on appeal to the Federal Circuit, with oral arguments set for October 8, 2024.  PhRMA provided amicus support for the patentee, arguing that the ITC’s decision represents an unprecedented expansion of abstract idea analysis to invalidate composition of matter claims. PhRMA contends such claims should be deemed inherently non-abstract and tangible, unlike computer programs that may rightfully be seen as mental processes or mathematical concepts.

Professor Jeffrey Lefstin (UC SF Law) provided an earlier blog post on the original ITC decision that included a detailed historical perspective on this case. Lefstin traced the evolution of functional claim language in patent law, from its initial rejection in cases like General Electric v. Wabash Appliance (1938) to its acceptance in In re Swinehart (1971). He argued that the ITC’s decision in the PDC case, following the Federal Circuit’s reasoning in American Axle, represents a dramatic shift away from decades of established patent jurisprudence. His analysis underscores the potential far-reaching implications of applying the American Axle framework to composition claims, suggesting it could invalidate many biotechnology patents and upend well-established enablement doctrines.

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USPTO announces End of AFCP 2.0

Patent

by Dennis Crouch

Termination of AFCP 2.0 Program: The USPTO has announced that the After Final Consideration Pilot (AFCP) 2.0 program will expire on December 14, 2024. This decision comes after the Office proposed implementing a new fee for AFCP 2.0 requests earlier this year, which received significant pushback.

Take-Home Points for Patent Practitioners:

  1. AFCP 2.0 has been popular with over 60,000 requests filed annually for the past 8 years.
  2. Last day for AFCP 2.0 requests: December 14, 2024
  3. Reason for termination: Program is costly and applicants do not provide any direct fee recovery.
  4. Proposed fee ($500 for large entities) was met with significant push-back.

As the USPTO bids farewell to this popular program, patent practitioners are focusing on reshuffling their after-final strategies. (more…)