Federal Circuit Filters Out Late Argument

Google LLC v. Koninklijke Philips N.V. (Fed. Cir. 2019)

Although the PTAB granted Google’s IPR petition, it ultimately concluded that Google had failed to prove the challenged claims unpatentable. On appeal, the Federal Circuit has affirmed. U.S. Patent No. 6,772,114; IPR2017-00437.

The non-precedential decision includes an interesting bit on PTAB procedure.  The IPR was instituted on both obviousness and anticipation grounds.  During the trial briefing Google shifted obviousness theory. In particular, Google began to argue that the claimed high-pass-filter element would have been obvious. This was a change because Google had previously argued that the filter was disclosed in the cited art.  Note here that Google did not present this argument until the reply-brief stage. At that point, the Board refused to consider the argument because it was raised at such a late stage and that Philips “did not have a fair and meaningful opportunity to respond.”

On appeal, the Federal Circuit has affirmed — holding that the “Board was within its discretion in declining to consider this obviousness theory that was outside the scope of the petition for inter partes review.”


Eligibility issues During Inter Partes Review Proceedings

by Dennis Crouch

Everyone understands an important limitation of inter partes review — that an IPR petition are only permitted in the form of anticipation and obviousness challenges relying upon published prior art documents. 35 U.S.C. §  311(b).

A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Id. An issue arises when the patentee amends its claims or adds new claims during the IPR proceedings.  Namely, may the PTAB consider other conditions of patentability with regard to the proposed new or amended claims?

In Uniloc v. Hulu now pending before the Federal Circuit, the patentee submitted a set of substitute claims during the IPR proceedings after its original claims were found ineligible in a separate court proceedings. The PTAB denied Uniloc’s motion to enter the substitute claims — finding that those new claims are also ineligible under 35 U.S.C. § 101. I’ll note here that the the amended claims are narrower than the original claims (the amendment added additional limitations).

On appeal, Uniloc argues that the denial on 101 grounds was improper:

Interpreting the IPR statutes to allow a § 101 challenge through the back door, merely because a patent owner exercises the right to propose a narrowing amendment, threatens to disrupt the streamlined and focused nature of the IPR adjudication. Amended claims that meet the statutory requirements for motions to amend are narrower than claims that have previously been examined in full and, to the extent there is any room for further challenges under § 101, an accused infringer that cannot avail themselves of a PGR or CBM challenge can still assert ineligibility in a civil action for infringement.

In its briefing, the PTO agrees that § 311(b) limits the scope of petition, but focuses on § 318(a) that requires the PTO to address “patentability of . . . any new claim added” during the course of the proceeding.  For the PTO, Uniloc’s approach appears to be off-the-rails because it could force the PTO to issue new claims via IPR that were never examined for eligibility, utility, written description, or enablement.

One distinguishing feature here, however, is that PTO issued particular regulations regarding amendments and Section 112 — requiring a showing of “support in the original disclosure” for any amendments.  The regulations say nothing about eligibility.  37 C.F.R. § 42.121(b).  The basic idea here favoring Uniloc is that this is an area where the PTO could regulate, but it cannot regulate from the hip via PTAB decisions. See Aqua Prods.

The additional feature of the argument here has to do with the nature that IPR amendments are narrowing amendments.  Narrowing amendments basically do not raise new eligibility problems.

In its brief, Uniloc also has an alternative request — that the Court remand for a new eligibility analysis based upon the PTO’s new eligibility guidance. (The PTAB’s denial here was made prior to the Jan 2019 eligibility guidance, and that guidance was recently updated in October 2019).  USPTO responds that Uniloc did not explain how its amendments would be sufficient to overcome the collateral district court invalidity finding — “Uniloc bears the burden of showing that the Board committed reversible

Askeladden filed an amicus brief supporting the PTO and patent challenger arguing that the Board has “a statutory obligation to consider the subject-matter eligibility” of proposed amended claims during IPR proceedings.

Briefs: [Uniloc Brief] [PTO Brief] [Hulu / Netflix Brief] [Askeladden Brief]

Patent at issue: U.S. Patent No. 8,566,960 B2 (claimed “system for adjusting a license for a digital product over time”).

= = = =


Claiming a Process Rather than a Mere Principle

by Dennis Crouch

The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).

In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.


I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

U.S. Patent No. 11,766.


The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873).  In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.

Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.”  The court explained:

What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman’s invention, he could not then have claimed anything more than the  particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.


At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.”  As such, the court allowed the patent to be enforced.

In contrasting somewhat parallel language found in the “great case” of O’Reilly v. Morse, Court noted that there is a difference between a patent for a process (patentable) and a patent for a mere principle (unpatentable).

The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself,—a claim put forward on the ground that the patentee was the first to discover that it could be thus employed. This claim the court held could not be sustained.

The court then contrasted Tilghman’s invention:

The claim of the [Tilghman] patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. . . . He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam. This is most certainly a process. . . .

It is our opinion that the patent is for a process, that it is a valid patent, and that the defendants infringe it.


Lilly v. UroPep

Supreme Court: What is the Role of Functional Claim Limitations?

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases


PTO Guidance: Bridging the Swamp

I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.

  • 43. Treating Kidney Disease
  • 44. Denveric Acid
  • 45. Controller For Injection Mold
  • 46. Livestock Management

Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO.  Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims.  The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.

Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality.  What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow.  Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top.  This is the right approach — examiner expertise is prior art and claim definiteness, not whether an invention would be unduly preemptive of freedoms held by all humanity.  Now, we can debate on whether the bridge should be veering right vs left — this one certainly favors patentees. But, there is a lot to be said for a clear-pathway even if it leads a bit off center.

Speaking of swamp-walking.  I do want examiners to get dirty with their work — but expertise is the swamp known as finding and analyzing the best prior art, not answering amorphous questions of law.

[Read the Examples]

USPTO Eligibility Examination Practice

2019 Iowa Law Review Issue: Administering Patent Law

By Jason Rantanen

I’m thrilled to announce the publication of the articles from the Iowa Law Review’s symposium, Administering Patent Law.  (Although Chris Walker beat me to the punch by a mile.)  It’s a terrific group of articles that focus on issues at the intersection of patent law and administrative law.  Here’s the abstract of my introduction to the issue:

Ten years ago, few people—with the exception of a handful of visionary academics—spent much time thinking about the significance of administrative law to the patent system. Today, administrative law issues pervade the patent system, from examiners and patent judges up to the United States Supreme Court. At the same time, modern administrative law itself faces a series of challenges that call into question its fundamental premises, such as the degree of deference that courts should grant agencies and the amount of political control that is constitutionally permissible or required. What does all this mean for the future of patent law?

Thanks to the support of the David F. Hellwege fund at the Iowa Law School Foundation, this issue of the Iowa Law Review contains an amazing array of scholarship on these topics from some of today’s brightest and most prominent patent law thinkers.

And the articles themselves:

Administering Patent Law, Jason Rantanen

Rigorous Policy Pilots: Experimentation in the Administration of the Law, Colleen V. Chien

Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office, John F. Duffy

A Functional Approach to Judicial Review of PTAB Rulings on Mixed Questions of Law and Fact, Rebecca S. Eisenberg

Patent Trial and Appeal Board’s Consistency-Enhancing Function, Michael D. Frakes & Melissa F. Wasserman

PTO Panel Stacking: Unblessed by the Federal Circuit and Likely Unlawful, John M. Golden

Elite Patent Law, Paul R. Gugliuzza

Patent Court Specialization, Sapna Kumar

Institutional Design and the Nature of Patents, Jonathan S. Masur

The Hamiltonian Origins of the U.S. Patent System, and Why They Matter Today, Robert P. Merges

Statutes, Common Law Rights, and the Mistaken Classification of Patents as Public Rights, Adam Mossoff

Machine Learning at the Patent Office: Lessons for Patents and Administrative Law, Arti K. Rai

Renewed Efficiency in Administrative Patent Revocation, Saurabh Vishnubhakat

Constitutional Tensions in Agency Adjudication, Christopher J. Walker

Prior Art in Inter Partes Review, Stephen Yelderman

All of the articles are available through direct links above.  If you would like a physical copy of the issue, the Iowa Law Review editors have told me that you should contact the printer at on.demand@christensen.com and request a copy of Volume 104, Issue 5.  I’m not sure what the exact price is, but it’s likely be about $30 including shipping. (The whole volume is $53).

USPTO Eligibility Examination Practice

Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG).  On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”

[January 2019 PEG][October 2019 UPDATE]

The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and Mental Processes.  Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas” except in “rare circumstance.”  Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”

The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:

(I) What does it mean to “recite a judicial exception?”

  • Answer: “recite” includes implicit “description”  in the claim;
  • See examples 37-46

(II) Can you further define the abstract idea “groupings?”

  • Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations
  • Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);
  • Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process.

(II) Extended – What if an examiner thinks that a claim recites an abstract idea that doesn’t fit in the grouping?

  • Answer: this must be approved by the TC Director!

(III) How to know if the recited judicial exception is integrated into a practical application? (Still under Alice Step 1)

  • Answer: Ask whether the claim recites “additional elements that integrate the judicial exception into a practical application.”
  • Example: A claim whose “additional limitations reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field.”
  • In understanding whether a practical technical improvement is claimed, examiners are told to look to the specification for “sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.”  A patent will likely fail here if the specification recites the practical tech in conclusory form.

(IV) How does an examiner establish a prima facie case of ineligibility?

  • Inter alia, Examiners should identify the particular claim limitations that recite an abstract idea and explain its grouping.  Examiners need not provide “evidence” beyond an explanation.

[Read it here] We’ll do a series on this over the next several days.

Trademark Filing Issues

If you have a trademark deadline coming up in the next two weeks, I’d advise that you plan ahead just a bit to ensure that you have enough time to make it through the new USPTO security. The new system will require two-step authentication both for TEAS and TEASi (international version).

Donald R. Dunner (1931-2019)

Donald Dunner passed away this week at 88. He was a dean of the patent bar, excellent attorney, and a good friend to many of us. I personally learned a tremendous amount from Don – both in our private conversations and in watching his craft.  Patent law mainstay Hal Wegner called him “one of the most important figures in the American patent field of recent decades.” I already miss him.

Campbell’s Imaginary-Tiny-Cans Fail to Invalidate

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

Georgia v. Public Resource: Twenty-five centuries of history reject the foundation of Petitioners’ case

by Dennis Crouch

It makes sense that the government cannot use Copyright to keep the law out of the hands of the general public. The Government Edicts Doctrine takes care of this for statutes and precedential judicial opinions.  The question before the Supreme Court now asks how far that doctrine extends. In particular, in Georgia v. Public.Resource.Org Inc., the state of Georgia argues that the official annotations to its statutes can be protected by copyright. Thus, question presented (as simplified):

Is the Official Code of Georgia Annotated (OCGA) an edict of government?

Briefing in the case is ongoing, but I want to highlight the most interesting brief filed so far — the history-focused amicus filed by Charles Duan on behalf of R Street, Wikimedia, and Public Knowledge.


Duan writes in his introduction:

Twenty-five centuries of history reject the foundation of Petitioners’ case. In contending that it may assert federal copyright law against its citizens to block distribution of the OCGA, the State of Georgia contemplates a bright line between its uncopyrightable statutes and all other edicts of government that “lack the force of law.” No such line exists. On the contrary, sovereigns since antiquity have promulgated not only statutes but also proclamations, explanations, commentaries, and even annotations, all of which, even lacking “force of law,” carry great weight for the rule of law and the functioning of government. History reveals not a binary divide between statutes and all else, but a spectrum of edicts of government.

To fill this historical void in the record, this brief surveys nonbinding pronouncements, particularly attached to statutes or codes of law, across time and around the world, from Rome and China to England and America. This historical review—which traverses a Roman whistleblower, the Justinian Code, a dark side of Confucianism, English libertarianism, New York suppressing the press, and the Mayor of London being thrown in jail — reveals multiple important lessons that question the basis upon which Georgia’s argument stands.

R Street, et al. Amicus.

Columbus Day

In the US, we are still celebrating Columbus Day at the Federal Level. So, USPTO and the Courts are closed. (The Law School is still in operation and I’m teaching today.)

U.S. Patent 4,915,391 claims:

1. A board game comprising:

a. a game board having an endless path of contiguous blocks, some of the blocks representing property which is purchasable and a plurality of the blocks each displaying two alternative directions,

b. a plurality of destiny cards, each card describing an event,

c. a plurality of ownership cards, each card describing commercial transactions for a different piece of property,

d. a device operable by the players for determining randomly between said two directions,

e. a plurality of tokens, one for each player,

f. a plurality of property markers for identifying ownership of property, and

g. means for determining a numerical value.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Then and Now: 1800’s Supreme Court Patent Cases

by Dennis Crouch

In this new series, I’m looking back to 19th Century Supreme Court patent cases; looking for their wisdom; and considering their ongoing importance.

Winans v. Denmead, 56 U.S. 330 (1853) is cited as an early doctrine of equivalents (DOE) case, although I see it also as an early claim construction decision. According to Westlaw, is the 10th most cited patent case of the 19th Century.  At the time of the case, Winans was on his way to becoming one of the wealthiest Americans by making and selling railroad equipment.

As shown in the diagram below, the Winans patent covers a railroad car for transporting coal, etc. The car has a cone-shape particularly “the form of a frustum of a cone, substantially as herein described”  The shape allowed the car to carry “more coal in proportion to its own weight than any car previously in use.”  Further, excess load did not distort the shape because it “presses equally in all directions.” Id.

The accused infringer inspected a Winans-made car and then made its own — although using an octagonal shape rather than circular as in the patent (looking down as in fig 1).  The defendants argued this difference in should have resulted in a non-infringement verdict;  Winans argued that this difference was immaterial because the octagonal car was almost the same shape and obtained the same useful results.  Further, after being used for a while, the sheet metal used will shape itself into a circle.

The jury was asked Winans asked for jury instructions akin to the function-way-result test:

whether ‘the form adopted by the defendants accomplished the same result, substantially, with that in view of the plaintiff, and upon substantially the same principle and in the same mode of operation.’

However the lower court took a much narrow stance and effectively instructed the jury that they could only find infringement against conical bodies since the operation of the invention is “due alone to conical vehicles and not to rectilinear bodies.”  With that narrow instruction, the jury could not find infringement.

The Supreme Court reversed course — concluding that the court must not allow form to dictate substance.

[I]t is the duty of courts and juries to look through the form for the substance of the invention—for that which entitled the inventor to his patent, and which the patent was designed to secure; where that is found, there is an infringement; and it is not a defence, that it is embodied in a form not described, and in terms claimed by the patentee. . . .

The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.

In the end, however, I see this case largely about claim construction. The Supreme Court explained that a cone in Euclidean sense is impossible to construct except by imagination.

It may safely be assumed, that neither the patentee nor any other constructer has made, or will make, a car exactly circular. In practice, deviations from a true circle will always occur.

Thus, it is clear to the court that the “cone” limitation in the claim does not require an exact cone.  The court went on to interpret the meaning of the patent as covering a design

“so near to a true circle as substantially to embody the patentee’s mode of operation, and thereby attain the same kind of result as was reached by his invention. . . . It must be the same in kind, and effected by the employment of his mode of operation in substance.”

The court ordered that on remand the jury can consider infringement under this broader view of the patent.

Justice Curtis wrote the 5-4 majority opinion.

The dissent by Justice Campbell began with a suggestion that the substance of the invention is likely obvious (lack of invention).

The merit of the plaintiff seems to consist in the perfection of his design, and his clear statement of the scientific principle it contains. . . . There arises in my mind a strong if not insuperable objection to the admission of the claim, in the patent for ‘the conical form,’ or the form of the frustum of a cone,’ as an invention.

The dissent went on – assuming that the patent is valid — noted that it should be assumed that a patentee will draft claims in a way that reach “exactly the limits of his invention” and that it is improper for the court to “extend, by construction, the scope and operation of his patent, to embrace every form which in practice will yield a result substantially equal or approximate to his own.”

The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only?

The dissent went on to complain that the majority’s approach has little bound —

The claim of today is, that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints does this patent impose in this branch of mechanic art?

The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. Its principle and modes of operation must be explained; and the invention shall particularly ‘specify and point’ out what he claims as his invention. … Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexations demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress. In my judgment, the principles of legal interpretation, as well as the public interest, require, that this language of this statute shall have its full significance and import.


In Graver Tank, the Supreme Court identified Winans as the origin of the doctrine of equivalents.

The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of Winans v. Denmead, 15 How. 330, 14 L.Ed. 717, it has been consistently applied by this Court and the lower federal courts, and continues today ready and available for utilization when the proper circumstances for its application arise.

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950).

Still, when I read the case, I see claim construction. Notably, the question presented by the court is whether the word ‘cone’ is properly construed and the court answered that it is nearly a circle, and the purpose of the invention helps to understand the limit of that subjective limitation.

In our judgment, the only answer that can be given to these questions is, that it must be so near to a true circle as substantially to embody the patentee’s mode of operation, and thereby attain the same kind of result as was reached by his invention.

Id. The reason the court felt obliged to consider this construction is its conclusion that “construing the letters-patent” “is a question of law, to be determined by the court.”  The dissent seemed to similarly agree that the focus is about claim construction — arguing that the majority’s “construction” is too broad.

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Executive Orders on Agency Practice

By Jason Rantanen

Yesterday, the President issued two significant executive orders relating to agency practice: the “Executive Order on Promoting the Rule of Law Through Improved Agency Guidance Documents” and the “Executive Order on Promoting the Rule of Law Through Transparency and Fairness in Civil Administrative Enforcement and Adjudication.”

The order on guidance documents requires agencies to provide their guidance documents on easily searchable websites along with disclaimers about their legal effect.  In addition, for new guidance documents that are “significant,”  the order requires public notice and comment of at least 30 days and approval by “the agency head or by an agency component head appointed by the President, before issuance.”   “Significant guidance document” is defined as including the usual >$100 million effect on the economy, but also encompasses guidance documents that raise novel legal or policy issues arising out of legal mandates, the President’s priorities, or the principles of [EO] 12866.”

The order on adjudications seeks to require greater public notice of both agency jurisdiction and the relevant legals standards applied by agencies in enforcement actions and adjudications.  Provisions include the requirement that “When an agency takes an administrative enforcement action, engages in adjudication, or otherwise makes a determination that has legal consequence for a person, it may apply only standards of conduct that have been publicly stated in a manner that would not cause unfair surprise.”  The order also limits the use of guidance documents by the agency:

Sec. 3Proper Reliance on Guidance Documents.  Guidance documents may not be used to impose new standards of conduct on persons outside the executive branch except as expressly authorized by law or as expressly incorporated into a contract.  When an agency takes an administrative enforcement action, engages in adjudication, or otherwise makes a determination that has legal consequence for a person, it must establish a violation of law by applying statutes or regulations.  The agency may not treat noncompliance with a standard of conduct announced solely in a guidance document as itself a violation of applicable statutes or regulations.  When an agency uses a guidance document to state the legal applicability of a statute or regulation, that document can do no more, with respect to prohibition of conduct, than articulate the agency’s understanding of how a statute or regulation applies to particular circumstances.  An agency may cite a guidance document to convey that understanding in an administrative enforcement action or adjudication only if it has notified the public of such document in advance through publication, either in full or by citation if publicly available, in the Federal Register (or on the portion of the agency’s website that contains a single, searchable, indexed database of all guidance documents in effect).

The orders include several limitations on their scope and effect, but overall they’re very wide-reaching.  I’m especially interested in the ways in which they might affect the USPTO, but really need to spend some time thinking through the implications.  For example, on the one hand, the MPEP is specifically directed to examiners, not patent applicants.  On the other hand, it’s often quoted directly by examiners in office action responses and relied on fairly heavily by applicants.   Lots to unpack here.

There are some great posts over at the Notice and Comment blog about the two orders.  Thanks to Chris Walker for pointing these out.

Facebook is Prevailing Party Even Though Case Dismissed as Moot

by Dennis Crouch

B.E. Tech, LLC v. Facebook, Inc. (Fed. Cir. 2019)

In 2012 B.E. Sued Facebook for infringing the claims of its U.S. Patent 6,628,314. In 2013, the district court stayed the litigation pending inter partes review.  The IPR proceedings ended in 2015 with a finding that the claims were unpatentable and the Federal Circuit affirmed that decision on appeal in 2016.

Back at the district court, Facebook requested judgment on the pleadings in its favor and with prejudice while B.E. argued that the case should be dismissed for as moot rather than decided on the merits. The district court agreed with the patentee — once the claims were cancelled the lawsuit was moot and had to be dismissed for lack of jurisdiction.

Costs to Prevailing Party: Under the Rules of Civil Procedure, “costs” are generally awarded to the prevailing party.

 Unless a federal statute, these rules, or a court order provides otherwise, costs—other than attorney’s fees—should be allowed to the prevailing party.

Fed. R. Civ. P. 54(d)(1).  The district court awarded $4,424 in costs to Facebook as the prevailing party.

On appeal B.E. argued that there is no prevailing party when a case is dismissed as moot. The Federal Circuit has rejected that argument:

We agree with Facebook that it is the prevailing party.

Here, it is clear that FB “rebuffed” the patentee’s claims and effectively prevailed in the lawsuit.  However, the patentee has an important Supreme Court case on its side:  Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598 (2001).   In Buckhannon, the Supreme Court explained:

Numerous federal statutes allow courts to award attorney’s fees and costs to the “prevailing party.” The question presented here is whether this term includes a party that has failed to secure a judgment on the merits or a court-ordered consent decree, but has nonetheless achieved the desired result because the lawsuit brought about a voluntary change in the defendant’s conduct. We hold that it does not. . . . [Rather, a] “prevailing party” is one who has been awarded some relief by a court.

Although Buckhannon strongly favor’s the patentee in this case, it is not the only Supreme Court case on the topic — and conflicts fairly directly with the Supreme Court’s later decision in CRST Van Expedited, Inc. v. E.E.O.C., 136 S. Ct. 1642 (2016).  In CRST, the plaintiff’s employment discrimination case was dismissed because the plaintiff (EEOC) had failed to meet presuit obligations of fully investigating claims and attempting to resolve the claims.  In its decision, the Supreme Court held that the defendant could be deemed a “prevailing party” since the defendant “fulfilled its primary objective” of rebuffing the plaintiff’s case. A “defendant may prevail even if the court’s final judgment rejects the plaintiff’s claim for a nonmerits reason.”

Here, the Federal Circuit extended CRST — holding that Facebook is clearly the prevailing party here even though the case was dismissal for mootness:

As the district court held, Facebook obtained the outcome it sought via the mootness dismissal; it rebuffed B.E.’s attempt to alter the parties’ legal relationship in an infringement suit. This is true even though the mootness decision was made possible by a winning a battle on the merits before the PTO.

Here, the Federal Circuit does not appear to be holding that there will always be a prevailing party when a case is dismissed as moot.  Rather, B.E. v. Facebook is a special case involving the parallel inter partes review proceedings.  What the court recognized effectively is that IPR proceedings are now part and parcel of the infringement litigation process and should be treated as such.  This is one further step toward attuning the system so that the various tribunals are all playing by the same rules.

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

by Dennis Crouch

The Supreme Court heard oral arguments this week in NantKwest (attorney fees for PTO in §145 actions) – and I provided my expectation that the Court will affirm the Federal Circuit’s no-attorney-fees holding. The Court has one other patent case on the merits calendar Thryv, Inc., fka Dex Media, Inc. v. Click-To-Call Technologies, LP,  No. 18-916 (appellate jurisdiction over challenge to PTO’s finding of no time-bar under §315(b)).  Click-to-Call is set for oral arguments December 9, 2019.

Petitions Denied: A number of petitions that were pending last week have now been denied by the court:

  1. Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., No. 18-1280 (obviousness and secondary indicia)
  2. Hyatt  v. Iancu, No. 18-1285 (“Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.”)
  3. Glasswall Solutions Ltd. v. Clearswift Ltd., No. 18-1448 (eligibility on the pleadings; Berkheimer question)
  4. StrikeForce Tech., Inc. v. SecureAuth Corp., No. 19-103 (Berkheimer question)
  5. IBG LLC  v. Trading Technologies Int’l., Inc., No. 19-120 (definition of  “technological invention” for CBM)
  6. Zimmer, Inc. v. Stryker Corp., No. 18-1549 (is negligence enough for treble damages?)
  7. Xitronix Corp. v. KLA-Tencor Corp., No. 19-58 (Federal Circuit jurisdiction over Walker Process antitrust claims)
  8. Senju Pharma. Co., Ltd. v. Akorn, Inc., No. 18-1418 (propriety of R.36 judgments; obviousness)
  9. Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd., No. 19-101 (reviewing jury verdict and 7th Amendment)
  10. Arunachalam v. International Business Machines Corp., No. 19-5033  (low quality)
  11. Huang v. Huawei Tech. Co., Ltd., No. 18-1275 (low quality)

Note here that a couple of cases asking Berkheimer style questions were denied — suggesting the likely outcome in Berkheimer.

Speaking of Section 101 — there are a number of pending petitions on the subject. We are particularly waiting for the Solicitor General to provide the Supreme Court with its input in Berkheimer and Vanda.  I had expected those to be filed by this week — they are not yet filed.

  1. HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer, No. 18-415 (fact-law divide in eligibility) (waiting for views of Solicitor General)
  2. Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (threshold of a natural phenomenon)  (waiting for views of Solicitor General)
  3. Trading Technologies International, Inc. v. IBG LLC, No. 19-353 (patentability of an improved user interface)
  4. Garmin USA, Inc., et al. v. Cellspin Soft, Inc., No. 19-400 (Berkheimer questions)
  5. Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430 (did the Supreme Court mean to invalidate all diagnostic methods on eligibility grounds?)
  6. Power Analytics Corporation v. Operation Technology, Inc., No. 19-43 (Has the Federal Circuit correctly implemented the standards for patent eligibility)

Other pending petitions:

  1. Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same question as Click-to-Call); Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same question as Click-to-Call); Arris International Limited v. ChanBond, LLC, et al., No. 19-455 (same question as Click-to-Call)
  2. Enplas Display Device Corporation v. Seoul Semiconductor Company, Ltd., No. 18-1530 (can foreign sales qualify as induced infringement of a U.S. patent — if defendant knew that “the components might be incorporated by third parties into infringing products that might be sold by other third parties in the United States.”)
  3. Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR, No. 18-1515 (functional single step claim and Halliburton (1946))
  4. Technology Properties Limited LLC v. Huawei Techs. Co., Ltd., No. 19-324 (“prosecution history disclaimer” and separation of powers)
  5. Regents of the University of Minnesota v. LSI Corporation, No. 19-337 (state sovereign immunity against IPR challenge)
  6. Medtronic, Inc. v. Mark A. Barry, No. 19-414 (when is a process-invention “ready for patenting” so that a public use or offer to sell would create a bar to patentability)
  7. Time Warner Cable, Inc., et al. v. Sprint Communications Company, L.P., No. 19-211 (damage apportionment; scope of written description)
  8. Brigham and Women’s Hospital, Inc v. Perrigo Company, No. 19-450 (setting aside jury verdicts)
  9. Neology, Inc. v. International Trade Commission, et al., No. 19-445 (due process — is it proper to invalidate a patent without first notifying the patentee of the “specific invalidity challenge posed” and allow for an opportunity to be heard)
  10. Straight Path IP Group, LLC v. Apple Inc., No. 19-253 (R.36 judgments on pure issues of law is a due process violation).
  11. Princeton Digital Image Corporation v. Adobe Inc., No. 18-1343 (impact of a consent judgment on appellate power)

A few petitions likely to be filed soon:

  • Intel Corporation v. Continental Circuits LLC (claim construction)
  • Cisco Systems, Inc. v. SRI International, Inc. (eligibility)
  • Kaneka Corporation v. Xiamen Kingdomway Group Company (Did this R.36 affirmance violate the patentee’s Constitutional right — 5th & 7th Amendments; and Article I, Section 8, Clause 8)