Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Sarnoff on After-Arising Technologies and the Doctrine of Equivalents

By Jason Rantanen

DePaul Professor Joshua Sarnoff has a new article addressing a recently reinvigorated subject: the doctrine of equivalents.  In Correcting Misunderstandings of Literal Infringement Scope Regarding After-Arising Technologies Protected By the Doctrine of Equivalents, forthcoming in the Akron Law Review, Professor Sarnoff argues that while it is conventional wisdom that, for purposes of ‘literal’ infringement, interpreted claim meaning and the application of such meaning can expand over time to encompass after-arising, equivalent technologies, this conventional wisdom is wrong: “current case law regarding literal infringement does not authorize claims to literally encompass or apply to after-arising technologies.” Id. at 6.

The term “after-arising technologies” refers to the idea that there are technologies that are developed after an application is filed or a claim is written.  Due to the centrality of time to patent law, a central question in patent law is whether a patent’s claims can (and should) encompass technologies that were unknown–and indeed may have been unforseeable–at the time the claim was drafted.  Excellent examples of this problem can be found in Kevin E. Collins, The Reach of Literal Claim Scope into After-Arising Technology: On Thing Construction and the Meaning of Meaning, 41 Conn. L. Rev. 493 (2008) and Robert P. Merges & John F. Duffy, Patent Law and Policy: Cases and Materials, 7th ed. (2017), at 273-277 (discussing the “temporal paradox” mostly in the context of enablement).

Professor Sarnoff advances his premise through several arguments, drawing from the Federal Circuit’s precedent in Schering Corp. v. Amgen, which “limits the temporal meaning and scope of application for literal infringement to equivalent technologies known to be embodiments of the claim language as of effective filing date of the claim,” as well the statutory interpretive rule of § 112(f).  Sarnoff at 3.

Central to Professor Sarnoff’s premise is the corollary that:

If claim meaning or the scope of application of such meaning can expand over time for literal infringement purposes, then there is less need to resort to the doctrine of equivalents to protect against after-arising technologies.  However, if claim meaning or application scope is limited to technologies that were known as of the filing date to be claim embodiments, then the doctrine of equivalents is necessary for any such protection. 

Id. at 1. Thus, Professor Sarnoff argues, decreased ability to rely on literal claim scope to reach after-arising technologies puts more pressure on the doctrine of equivalents–indeed, it’s ability to encompass after-arising technologies has been offered as a primary justification for the doctrine.  But this additional pressure creates its own problems given the fuzziness of scope that the doctrine of equivalents allows.  Restricting literal claim scope to known embodiments may also conflict with the ‘”pioneering invention patent doctrine,” to the except that doctrine continues to be viable.

Read the whole article here:

En Banc Denial.

As courts continue to streamline their operations, the Federal Circuit has denied three petitions for en banc rehearing:

  • 19-1177 Koninklijke Philips N.V. v. Google LLC (obviousness: propriety of using a prior art reference to show ‘general knowledge’ and thus avoid the the need to consider limitations on combining prior art.)
  • 18-1768 Polaris Innovations Limited v. Kingston Technology Co. Inc. (Arthrex redux)
  • 19-2026 Mirror Imaging, LLC v. Fidelity Information Services (Arthrex redux)

The question I’m posing in civil procedure: What are other ways that we can streamline our legal process to still provide equal protection and substantial justice while avoiding the current difficulties created by COVID-19? Can we use this as an inflection point to build a better system?

Comcast v. ITC and Rovi: Supreme Court petition.

The USITC sided with Rovi against Comcast and barred importation of the set top boxes that Comcast uses for its X1 cable service.  Comcast has now petitioned its case to the U.S. Supreme Court with three questions:

  1. Should the case be vacated as moot since the patents are now expired?United States v. Munsingwear, Inc., 340 U.S. 36 (1950).
  2. The statute focuses on “articles that  . . . infringe.” Here, the accused set-top boxes themselves don’t infringe and are not infringing when imported.  The infringement only occurs when used by customers.   What gives?
  3. The ITC found that Comcast did not actually import the set top boxes, but should still be liable for “importation” of the boxes.  What gives?

[Petition]  The petition explains that the ITC’s approach here has shifted over the past few years:

The Commission has increasingly asserted authority over purely domestic patent infringement that is the province of Article III courts and juries. Here, the Commission issued an order banning importation of set-top boxes that are integral to Comcast’s X1 cable service, even though those boxes are staple articles of commerce that infringe no patents; the purported inducement and infringing uses occurred domestically after importation; and Comcast did not itself import the boxes.

Id. The petition repeatedly notes that ITC actions allow patentees “to evade limitations on injunctive relief in litigation” setup by the Supreme Court in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

CARES Act – Patent Deadline Extensions for COVID-19 Related Delays

The CARES Act (March 27, 2020) provides the USPTO Director with authority to extend deadlines to account for our current national emergency regarding the COVID-19.  Dir. Iancu today announced a set of extensions noting that “we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes.”

The basic rule is that most PTO prosecution deadlines March 27 to April 30 are eligible for a 30-day extension if filed with a statement that the delay “is due to the COVID-19 outbreak” and some party involved with the prosecution “was personally affected.”  Here, the personal impact can apply to applicants, patent owners, 3rd party requesters, inventors, practitioners, etc. This list presumably includes non-human corporate owners. The “personally affected” clause is quite broad and includes office closures, cash flow interruptions, inaccessibility of files, travel delays, family illnesses, or other non listed reasons.

Read the rules: NOTICE of waiver of patent-related timing deadlines.

Note, the extension does not cover original filing deadlines; PCT or national stage filing deadlines; Deadlines for filing a non-provisional application following a provisional; or deadline for filing an inter partes review petition.

Finally, the notice says “Yes” — “The USPTO is open for the filing of patent documents and fees.”

Particular questions: or OPLA (571) 272-7704.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Teaching Online, Copyright, and Queen Anne’s Revenge

Guest post by Kevin L. Smith, Dean of Libraries at the University of Kansas

On March 23, 2020, the Supreme Court announced a decision in one of the three copyright cases before it this term, Allen v. Cooper, a case that involves alleged copyright infringement by the state of North Carolina for using some video shot by a private videographer of the salvage operation for Blackbeard’s notorious pirate ship, the Queen Anne’s Revenge. Predictably, the Justices cannot resist word play about piracy and copyright infringement. The truth is that the case is really about sovereign immunity, so the jokes might have more appropriately focused on Queen Anne. The question presented in the case was whether a state can be sued in federal court for copyright infringement, and, specifically, was the effort to allow such lawsuits through the Copyright Remedies Clarification Act a valid exercise of Congressional authority.

Both these questions received a resounding “no” in the unanimous opinion. The Court found that Congressed did not have authority, either under its Article 1 power to grant patents and copyrights or under section 5 of the 14th Amendment, to abrogate sovereign immunity to create state liability for copyright infringement. Patent practitioners will not be surprised that much of the discussion focused on the Court’s 1999 precedent in Florida Prepaid. Indeed, most of the debate in the case, which feature a majority opinion and two different concurrences, focused on the amount of deference due to established precedent, and it seems pretty clear that much of the background in this discussion are positions being established regarding Roe v. Wade.

To me the big question coming out of this case is how much it changes the landscape for teachers working in public schools or universities. Can we all breathe a sigh of relief and no longer worry about copyright infringement? I want to suggest that this decision doesn’t really change much, and that educators employed by states should pretty much continue to do what they are doing, relying on fair use but not throwing all caution to the wind. Two important points occur to me.

  1. There is still injunctive relief available against a state entity for continuous violations of federal law, under the Ex Parte Young doctrine. The long running lawsuit by three academic publishers against Georgia State University is premised on this doctrine, and, even though the publishers seem to have largely lost on fair use grounds, this case that is now as old as some fine Scotch is still costing GSU time and money. So simply relying on a “go ahead, try to sue me” attitude still seems unwise.
  2. Employees of non-profit educational institutions also have another protection from liability, in section 504(c)2 of the U.S. copyright law. This statutory defense remits all statutory damages – the biggest bite available to most copyright plaintiffs – for such employees who have a good faith belief that their actions were fair use. If this provision is to mean anything, it must mean that the revision applies even (indeed, only) when that belief was mistaken, so that a court has gotten to the issue of damages. In effect, this provision has already widened the scope for fair use decisions made by the very teachers and faculty who might think they could benefit from the ruling in Allen v. Cooper.

So maybe it is only the folks who represent state institutions who need to pay much attention to this case. It is an arrow in their quiver of defenses to raise if they get sued. But teachers and faculty at those institutions should go on as before, making smart fair use decisions, even as they recognize that both Congress and the Court have given them some extra breathing room.

Fair use is crafted for the benefit of educators and researcher. The examples of the kinds of activities that might be fair use makes this clear, since five of the six examples are education related: criticism, comment, teaching, scholarship, and research. These examples are not per se fair use; the factor analysis still must be applied. But they do indicate that Congress intended to give educators a great deal of latitude in making fair use decisions, as well as a reduced risk, based on the 504(c)2 provision discussed above.

As most educational institutions move to online teaching during this period of efforts to contain the outbreak of COVID-19, teachers and faculty should keep this latitude in mind. Our first priority should be providing the best education to students in the online environment, and doing it as expeditiously and efficiently as possible. Many publishers of academic materials are moving to make the resources they publish widely available. In my own copyright law class, I use an open casebook, but also asked my students to obtain and read a monograph from MIT Press, and at our request, the Press gave each student a link to download a no-cost copy of the book, in case they did not have the purchased copy with them when they were told to stay at home. I mention this to illustrate that publisher are thinking about these issues with us, and have tried to be helpful. It is also the case, however, that sometimes we will have to rely on fair use, and that is OK. With or without the Supreme Court’s ruling in Allen v. Cooper, fair use was made for us, and it was made flexible precisely so that we could respond to changing circumstances.

Recently, a group of copyright specialists in academic libraries, many, but not all of whom are lawyers, drafted a statement about fair use in a time of emergency, which can be found online with a list of signers and those who have endorsed it (full disclosure: I am one of the signers). This statement recognizes a long-acknowledged fact about fair use — it is extremely driven by circumstances – and makes an effort to assess how the extraordinary circumstances under which teachers and academics are now trying to deliver their courses might impact a fair use analysis. It really simply serves to remind us that fair use is flexible, adaptable, and designed to support teaching and research. Whether or not our state institutions can be liable for copyright infringement damages (and the Court has now told us that they cannot be), fair use remains our most useful and productive legal tool in this enterprise.

Claiming Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg

Motupalli v. Iancu (Supreme Court 2020)

This pro se petition to the Supreme Court has a number of major problems, but does ask one interesting question:

Whether 35 U.S.C. §112 [the enablement doctrine] is satisfied when the specification of a patent application is enabling to an interdisciplinary team of two or three persons, working in cooperation?

[petition].  The statute is written as directed toward a single person: “enable any person skilled in the art to which it pertains.” But, a project of this size is unlikely to be understandable by any single human (See below).

The case itself is a nonstarter if only based upon the title of the invention at issue:

Necktie-imitating Persona Extender / Environment-Integrator and Method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg or Wedded Avatar of Christ with eThrone for Global Governance

See US Pub No. 20120253517.


Motupalli’s full biography can be found on

Oral Arguments at the Federal Circuit (via Telephone)

The Federal Circuit is set to start holding oral arguments again for the week of April 6, 2020. The arguments not be in-person but rather conducted via telephone (audio only).  The currently conceived setup won’t allow non-parties to listen-in on the conversation but the court is recording oral arguments and has indicated that it “will continue to release same-day audio for all arguments.” Additionally, a substantial number of scheduled arguments have been cancelled with a notice that:

The panel of judges that will decide this appeal has determined that oral argument is unnecessary. See Fed. R. App. P. 34(a)(2)(C).

The cited rule of appellate procedure indicates that a party’s request for oral arguments may be denied based upon unanimous agreement from the assigned panel of three judges agree that “oral argument is unnecessary” because:

(A) the appeal is frivolous;

(B) the dispositive issue or issues have been authoritatively decided; or

(C) the facts and legal arguments are adequately presented in the briefs and record, and the decisional process would not be significantly aided by oral argument.

Fed. R. App. Proc. R. 34(a)(2).

The rules of appellate procedure allow for use of “physical exhibits other than documents” during oral arguments. R. 34(g). That’s probably not happening either.

“A single inartful statement in the prosecution history”

Genentech v. Iancu (Fed. Cir. 2020)

Hospira, Samsung Bioepis, Celltrion, and Pfizer each filed one or more inter partes review (IPR) petitions challenging Genentech breast-cancer slow-down patents: US7846441 and US7892549.  The patents recognize that some breast cancer patients make too much ErbB2 protein.  The offered solution is administration of an antiErbB2 antibody and “a taxoid, in the absence of an anthracycline derivative.”  The claims do not require a specific dosing except that it be adequate to do the job without causing major problems:

… in an amount effective to extend the time to disease progression in said human patient, without increase in overall severe adverse events.

‘441 patent, claim 1 (elsewhere claimed “effective amount”). The Board found a number of the claims invalid and Genentech appealed.  None of the petitioners participated in the appeal to defend the Board’s decision as part of a settlement with Genentech, but the USPTO intervened.

The question on appeal is the meaning of the claimed “amount effective to extend the time to disease progression.”  The problem for the patentee is that the specifications do not define the required comparisons. During prosecution the examiner originally rejected “extend the time to disease progression” as indefinite after explaining that the specification “never set[s] forth what the extension of time to disease progress is relative to.”

After receiving the indefiniteness rejection during prosecution, the patent applicant did not amend the claims but rather explained that “clearly” the effectiveness of the claimed combination should be compared with the baseline “relative to an untreated patient.”  Later, during the IPR, the Board used the statement to construe the claim term as stated and find the claim invalid as obvious.

Genentech argues that its claims should not be limited “Based on a single inartful statement in the prosecution history.” In particular, Genentech argues that the claimed improvement in disease progression should be compared to treatment with paclitaxel (the taxoid alone) – not with an untreated patient.  And, that in that framework the improvement in outcomes would have been nonobvious.

On appeal, the Federal Circuit has affirmed the PTAB claim construction and the obviousness determination.  The appellate panel noted that Genentech might have an argument except for the fact that “[t]he specification does not … expressly define the disputed terms.” In its indefininteness rejection, the examiner asked particularly — is the time “relative to untreated patients? Pateients who received antibody or taxoid alone? …”  The patentee then responded “untreated patients” and is now arguing that the correct answer should have been “taxoid alone.”

Genentech expressly rejected this comparator during prosecution and instead clearly stated that it was effectiveness relative to an untreated patient. Genentech provided an unequivocal, direct response to the examiner’s inquiry—that the term “extend the time to disease progression” was compared to an untreated patient.

Slip Op.  The response discussed above was provided in the ‘441 patent prosecution history.  In the appeal, the Federal Circuit also agreed that the same construction should apply in the ‘549 patent “which shares a specification and is in the same patent family.” “We see no error in the Board’s constructions.”


Patent Abandonment

The US is reporting more new jobless claims last week than for the entire prior year — ending a 10-year streak of month-by-month “job growth” that began shortly after Pres. Obama took office and has continued for the past three years under Pres. Trump.

In addition to cutting employees, businesses are likely to cut patents. Russ Krajec offers some preliminary numbers on abandonment of rejected claims — finding that the number for the first half of March 2020 show an abandonment rate of double normal.

Effects of COVID-19 on Patents – Twice The Number of Abandonments


CARES Act Text – PTO Related Deadlines

The following is the text of the CARES Act as it relates to the USPTO deadlines. [Full Text of the Bill].

SEC. 12004. 

(a) IN GENERAL.—During the emergency period described in subsection (e), the Director may toll, waive, adjust, or modify, any timing deadline established by title 35, United States Code, the Trademark Act, 19 section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder, in effect during such period, if the Director determines that the emergency related to such period—

(1) materially affects the functioning of the Patent and Trademark Office;
(2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or
(3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.

(b) PUBLIC NOTICE.—If the Director determines that tolling, waiving, adjusting, or modifying a timing deadline under subsection (a) is appropriate, the Director shall publish publicly a notice to such effect.

(c) STATEMENT REQUIRED.—Not later than 20 days after the Director tolls, waives, adjusts, or modifies a tim13 ing deadline under subsection (a) and such toll, waiver, adjustment, or modification is in effect for a consecutive or cumulative period exceeding 120 days, the Director shall submit to Congress a statement describing the action taken, relevant background, and rationale for the period of tolling, waiver, adjustment, or modification.

(d) OTHER LAWS.—Notwithstanding section 301 of the National Emergencies Act (50 U.S.C. 1631), the au21 thority of the Director under subsection (a) is not contin22 gent on a specification made by the President under such section or any other requirement under that Act (other than the emergency declaration under section 201(a) of such Act (50 U.S.C. 1621(a))). The authority described in this section supersedes the authority of title II of the National Emergencies Act (50 U.S.C. 1621 et seq.).

(e) EMERGENCY PERIOD.—The emergency period described in this subsection includes the duration of the por5 tion of the emergency declared by the President pursuant to the National Emergencies Act on March 13, 2020, as
7 a result of the COVID–19 outbreak (and any renewal thereof) beginning on or after the date of the enactment of this section and the 60 day period following such duration.
(f) RULE OF CONSTRUCTION.—Nothing in this section may be construed as limiting other statutory authorities the Director may have to grant relief regarding filings or deadlines.

(g) SUNSET.—Notwithstanding subsection (a), the authorities provided under this section shall expire upon the expiration of the 2-year period after the date of the enactment of this section.

(h) DEFINITIONS.—In this section:

(1) DIRECTOR.—The term ‘‘Director’’ means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

(2) TRADEMARK ACT.—The term ‘‘Trademark Act’’ means the Act entitled ‘‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et seq.).

(i) EMERGENCY REQUIREMENT.—The amount provided by this section is designated by the Congress as being for an emergency requirement pursuant to section 251(b)(2)(A)(i) of the Balanced Budget and Emergency Deficit Control Act of 1985.

Coronavirus Aid, Relief, and Economic Security (CARES) Act and the USPTO


Coronavirus Aid, Relief, and Economic Security (CARES) Act and the USPTO

The $2 trillion stimulus and economic rescue bill known as the CARES Act is moving forward in the Senate.  Although not generally a key aspect of the legislation, the current proposal on the table includes temporary authority for the USPTO Director to “toll, waive, adjust, or modify, any timing deadline” established by the patent or trademark laws or by prior PTO regulation.  In order to take action, the director must determine that the COVID-19 National Emergency:

(1) materially affects the functioning of the Patent and Trademark Office;

(2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or

(3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.

Here the “emergency” period is defined as the National Emergency declared by President Trump on March 13, 2020, as a result of the COVID–19 outbreak. The Director’s authority would begin with the enactment of the legislation and last until the end of the Emergency (including any renewals) plus 60 more days.  In addition, the whole thing sunsets in 2-years.

Dir. Iancu has privately indicated a need for the legislation, but has not stated publicly what if he would make any immediate actions or whether he would delegate his authority to the PTAB to make these determinations.

My reading of the proposal is that it provides authority to the USPTO Director but does not place any requirement on the Director to act. Thus, a particular party who experiences problems with filing or meeting other deadlines will not have a claim under the statute.

All of the deadlines are easy for the PTO Director to adjust with the one exception being the original filing date. In addition, international obligations may create some problems with adjusting PCT-related dates — although WIPO and the big-five are working through potential arrangements as we sit here today.

Consisting of . . . and optionally . . .

I am writing a separate post on Galderma Labs., L.P. v. Amneal Pharms. LLC (Fed. Cir. March 25, 2020), but wanted to note the claim language found in Gladerma’s U.S. patent No. 8,206,740.  In particular, I was first surprised to see the final element of the claim written as an “optional” limitation:

1. An oral pharmaceutical composition of doxycycline, which at a once-daily dosage will give steady state blood levels of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml, the composition consisting of

(i) an immediate release (IR) portion comprising 30 mg doxycycline;

(ii) a delayed release (DR) portion comprising 10 mg doxycycline; and

optionally, (iii) one or more pharmaceutically acceptable excipients.

The MPEP offers some ambiguous thoughts on use of the term “optionally” within claim language — concluding that it may raise indefiniteness concerns where ambiguity arises from a “list of potential alternatives.” MPEP 2173.05(h) Alternative Limitations.   In the usual claim situation, an “optional” limitation creates confusion because it doesn’t appear to do any actual work in the claim because a claim “comprising” a list of features may also include other features as well. In that situation, the ambiguity comes into play because we still want to assign some meaning to the claim element even though it is largely meaningless.

In the claim above, however, the “optionally” language complements a “consisting of” transition.  It does substantial work because of the closed transition — without the optionally limitation a formulation having the “pharmaceutically acceptable excipients” would be found not literally infringing.

Customer Suit Exception and Stays for Judicial Economy

In re Sprouts Farmers Market, Inc. (Fed. Cir. 2020)

Sprouts is a supermarket chain sued by Motion Offense, LLC in W.D.Tex. for infringing its patents, US10013158  & US10021052 (processing and sharing a “data object”).  The basic allegation in the case is that Sprouts’ is infringing the patents by using Dropbox.  After hearing that its customers were being sued, Dropbox itself brought a declaratory judgment action in D.Del. against Motion Offense seeking a non-infringement declaration.

Asserting a “customer-suit exception,” Sprouts motioned for a stay of the W.D.Tex case pending outcome of the D.Del. dispute.  Judge Albright refused to stay the case and Sprouts then petitioned for writ of mandamus.  Meanwhile, the Delaware court ordered the DJ lawsuit transferred to W.D.Tex so the cases could be decided together, but also stayed that action pending outcome of the mandamus.

The Federal Circuit has now denied mandamus without particularly discussing the “customer-suit exception,” the court found that Sprouts had not met the “very demanding standard” of mandamus.

Only exceptional circumstances, amounting to a clear abuse of discretion or judicial usurpation of power, will justify the extraordinary remedy of mandamus. In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985).

On remand, the court did not provide any order to the district court but did offer its expectation:

now that both related cases are in the Western District of Texas, we expect the district court to consider whether the most efficient resolution entails staying or consolidating at least some of the underlying proceedings.


More Background: The “customer suit exception” is an exception to the normal first-to-file approach to civil litigation stays.  The first-to-file approach works as follows:

  • When there are multiple similar and overlapping lawsuits filed in parallel, the district court may want to stay some of the lawsuits for judicial economy.
  • The first-to-file “rule” indicates that the court should let the first-filed lawsuit keep running and stay the later filed lawsuits.

I’ll note here that this first-to-file approach is not a RULE rule but rather a rule-of-thumb type of rule — a typical approach within the sound discretion of the district court judges involved in the litigation.

In patent cases, courts have recognized a customer suit exception to the first to file rule in a situation where there are parallel lawsuits involving (1) the prime manufacturer/originator of an infringing product/service and also (2) customers of the prime manufacturer. Even if the customers were sued first, courts have found it proper and appropriate to stay those cases pending outcome of the big one against the prime manufacturer. Other approaches abound — including synchronizing motion practice and partial joinder.  The guiding principles for all of these approaches is “efficiency and judicial economy” Tegic Commc’ns Corp. v. Bd. of Regents of Univ. of Texas Sys., 458 F.3d 1335 (Fed. Cir. 2006).  As stated by Rule 1 of the Federal Rules of Civil Procedure: The rules “should be construed, administered, and employed by the court and the parties to secure the just, speedy, and inexpensive determination of every action and proceeding.”

Fote v. Iancu: R.36 Decisions and the Reasons for Judgment

I previously discussed Fote v. Iancu. Charles Fote has now petitioned the Supreme Court for certiorari — asking the following question:

Whether a court of appeals must provide an opinion explaining its reasoning in an appeal that involves a complex and unsettled area of the law and in which a written opinion would likely provide the appellant with a viable basis for seeking rehearing, rehearing en banc, or certiorari.



Respect for Judgment: Challenging the Federal Circuit’s Unique Finality Rule

by Dennis Crouch

My Civil Procedure class at Mizzou is now “Online Civil Procedure.”  The final topic in the course will be “respect for judgments.”

A basic setup of our  legal system is to offer substantial justice — giving all parties due process including an opportunity to be heard and judged by an impartial tribunal.  Once that process is complete, the result is then seen as final and further challenges regarding the same issues or claims are precluded.

In patent law, the sense of finality and respect for judgment has been substantially complicated with the rise of AIA trials.

A case-in-point is Chrimar Systems v. Ale USA (Supreme Court 2020).  Chrimar is typical of many contemporary cases because it involves parallel district court and PTAB litigation.

Here is a timeline of the district court litigation.

  • Chrimar sued ALE for infringement on four patents.
  • ALE admitted infringement and a jury rejected ALE’s invalidity defenses. The district court entered judgment awarding damages and ongoing royalties.
  • On appeal, the Federal Circuit affirmed except to claim construction of one term in one of the four patents. The appellate court particularly stated that the partial reversal was “immaterial to damages
    because any damages that would result from the alleged
    infringement of the [remanded] ’012 patent also results from
    the infringement of the ’107 and ’760 patents.”
  • Back on remand, Chrimar issued a covenant-not-to-sue on the ‘012 patent and the district court amended its final judgment favoring Chrimar – now  just include the other three patents with the same damage award.

Meanwhile at the PTAB:

  • After the original lawsuit was filed, Chrimar filed for IPR petitions — challenging each of the asserted patents.  The PTAB granted those petitions.
  • After the jury verdict and district court (original) final judgment, the PTAB sided ALE — cancelling the all of the asserted claims.

Finally at the Federal Circuit:

  • September 9, 2019: The Federal Circuit affirmed the PTAB Decisions in a R.36 Judgment Without Opinion
  • September 9, 2019: The Federal Circuit vacated the district court final judgment and “remanded for dismissal.” The court held that its simultaneous affirmance of the IPR decisions gives effect to the PTAB judgments that applies to all still pending cases. Since an appeal was still pending in the district court litigation, that it applies there. “Our affirmance of the Board’s decisions of unpatentability of the patent claims at issue in the present case has ian immediate issue-preclusive effect on any pending or copending actions involving the patent[s].’ XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).

Now to the Supreme Court:

Chrimar has now petitioned the U.S. Supreme Court in the case with the basic argument that the lawsuit was already finally decided by the district court and an administrative agency (the PTO) does not have the right or power to reopen that final judgment.  The petition explains:

Chrimar brought an action for infringement against ALE under four patents. A jury rejected ALE’s invalidity defenses and awarded past damages. The District Court then awarded post-judgment ongoing royalties. The … Federal Circuit affirmed liability and damages, expressly holding that a partial remand to reconstrue one patent was “immaterial to damages because any damages that would result from the alleged infringement of the [remanded] ’012 patent also results from the infringement of the ’107 and ’760 patents.” App. 48a.

After the District Court’s entry of the eventually-affirmed judgment, the Patent Trial and Appeal Board (“PTAB”) (part of an Executive Branch agency) rendered final decisions finding unpatentable all asserted claims (a decision later affirmed). On this basis, the Federal Circuit ordered that the Article III damages judgment be vacated and remanded for dismissal. The Federal Circuit reasoned that the later Executive Branch administrative outcome required vacating the prior already-affirmed Article III judgment.

The questions presented are:

1. Whether the Federal Circuit may apply a finality standard for patent cases that conflicts with the standard applied by this Court and all other circuit courts in non-patent cases.

2. Whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency, merely because an appeal having nothing to do with liability, damages or the proper calculation of the ongoing royalty rate is pending.

The petition here is correct that the Federal Circuit’s preclusion principle here “is the sole invention of the Federal Circuit, having been adopted by no other court.”

This legal rule has earned sharp rebuke from academics and jurists alike. It is legally incorrect and conflicts with the decisions of all other circuits and of this Court. The legal rule incentivizes unfairness against patentees, motivates gamesmanship by accused infringers, leads to wasted judicial effort by trial and appeals courts, and disincentivizes innovation by undermining confidence in the patent system.

Petition at 4. See  Paul R. Gugliuzza, (In)valid Patents, 92 Notre Dame L. Rev. 271 (2016); Peggy P. Ni, Rethinking Finality in the PTAB Age, 31 Berk. Tech. L.J. 557 (2016)

USPTO launches the Expanding Innovation Hub, a new online platform to encourage greater participation in the patent system

The following post is republished from the USPTO Director’s Blog and is authored by USPTO Director Andrei Iancu and Deputy Director Laura Peter. 

Red, yellow, and blue silhouettes of heads look left and right.

“To maintain our technological leadership, the United States must broaden our innovation ecosphere demographically, geographically, and economically.”—USPTO Director Andrei Iancu

Today, as part of Women’s History Month, the USPTO has officially launched the Expanding Innovation Hub (“the Hub”), an online platform available on the USPTO website that provides resources for inventors and practitioners to encourage greater participation in the patent system. The new platform is yet another step the USPTO has taken to broaden the innovation ecosphere, to inspire novel inventions, to accelerate growth, and to drive America’s global competitive edge. It builds on our SUCCESS Act report to Congress of 2019, as well as our Progress and Potential report on women inventors. (more…)

En Banc Denial in Arthrex

by Dennis Crouch

Arthrex, Inc. v. Smith & Nephew, Inc. and U.S. as intervenor (Fed. Cir. 2020) (en banc denial)

None of the parties in this case were happy with the Federal Circuit’s original decision in Arthrex and all filed petitions for en banc rehearing.  Those petitions have now been denied in what appears to be a 8-4 split with Judges Newman, Wallach, Dyk, and Hughes expressly dissenting from the denial.  Judge Moore authored the original opinion in the case and also authored an opinion here defending that original opinion. She was joined on the opinion by her original panel members of Judges Reyna and Chen as well as Judge O’Malley explaining that (1) the original decision was correct and (2) conducting a rehearing would “only create unnecessary uncertainty and disruption.”

The Arthrex panel followed Supreme Court precedent to conclude that the administrative patent judges (APJs) of the USPTO’s Patent Trial and Appeal Board were improperly appointed principal officers. It further followed the Supreme Court’s direction by severing a portion of the statute to solve that constitutional problem while preserving the remainder of the statute and minimizing disruption to the inter partes review system Congress created.

Judge Moore Op. Concurring in the en banc denial.  This quote mentions the the “severing” element of the original panel decision. In particular, the court invalidated the removal restrictions of 5 U.S.C. § 7513 as it applies to APJs — thus making it easier for the USPTO director to remove APJs at will. This move – according to the court – was sufficient to shift APJs from principal Officers to inferior Officers and thus “save” the system.

Judge O’Malley wrote her own concurring opinion that included the following statement:

While I agree with Judge Dyk and Judge Hughes that Title 5’s protections for government employees are both important and long-standing, I do not believe Congress would conclude that those protections outweigh the importance of keeping the remainder of the AIA intact—a statute it debated and refined over a period of more than six years.

The leading dissent by Judge Dyk argues that the severance choice here is an improper, “draconian remedy” that “rewrites the statute contrary to Congressional intent.  Judges Hughes and Wallach each wrote their own dissenting opinions – arguing that APJs were already inferior officers based upon the extensive control and authority exerted by the USPTO director.

= = = = =

The basic issue in the case is the Constitutionality of the appointments process for Administrative Patent Judges (APJs) sitting on the Patent Trial & Appeal Board (PTAB).  The Appointments Clause of the U.S. Constitution indicates that all “Officers of the United States” shall be nominated and appointed by the US President with the Advice and Consent of the Senate.  The provision then goes on to say that Congress has the power to alter this process for “inferior Officers, as they think proper.” In particular, Congress may allow inferior Officers to be appointed by “Heads of Departments.”  U.S. Const. Art. II, Sec. 2, Cl. 2.  An improperly appointed officer isn’t really an officer at all and so should have no power to render judgment to cancel privately held property rights.

APJs used to be hired by the USPTO Director.  However, Prof John Duffy shook that cage in his 2007 article: Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. In the article, Duffy argued that APJs are likely best classified as inferior Officers and thus could be appointed by a Head of Department — namely the Secretary of Commerce.  Congress quickly acted on Duffy’s submission and altered the law to fix the problem.

The America Invents Act (AIA) greatly increased the power of APJ with the advent of inter partes review (IPR) proceedings and the other AIA trials.  The PTAB has become the most frequented patent court in the country and thousands of patents have been cancelled based upon APJ rulings.

After losing before the PTAB in an inter partes review, Arthrex appealed to the Federal Circuit with the argument that the increased power granted by the AIA ratches APJs up to the status of principal Officers rather than inferior Officers.  The result of that conclusion would be that APJs would need Presidential Appointment with Senate consent.  In Arthrex, the Federal Circuit agreed with the contention, but rather than requiring Presidential Appointment, the court decided instead to invalidate a statute that provides job security to APJs.  Since job security (ability to be easily fired by someone other than the President) is an element of the inferior/principal Officer distinction, the Federal Circuit found that severing that portion of the statute was enough to change the nature of the role.

= = = =

The case offers an interesting constitutional query – but is also being used as a tool for those who are hoping for the IPR system to fail.