Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Supreme Court Hears Appealability Appeal

by Dennis Crouch

The U.S. Supreme Court is set to hear oral arguments on Monday, December 9 in the pending IPR Appeal that is now captioned Thryv, Inc. v. Click-to-Call Technologies, LP (SCT Docket No. 18-916).   The focus of the case is statutory declaration that the PTO Director’s decision of whether to institute an IPR is “final and nonappealable.”  35 U.S.C. § 314(d).  This same issue – albeit slightly different context – was already addressed in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) and SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).

Question Presented in Thryv: Whether 35 U.8.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that§ 315(b)’s time bar did not apply.

The section 315(b) time bar prohibits institution of a petition “filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.”  Years ago (well before the 1-year date) the patentee Click-to-Call sued Thryv’s predecessor-in-interest for infringement and served the complaint as required under § 315(b).  That lawsuit, however, was voluntarily dismissed without prejudice.  When the defendant later filed its IPR petition, the PTAB found that the dismissal without prejudice effectively nullified the original lawsuit and, as such, did not raise the time-bar. The PTAB then invalidated the claims.  On appeal, the Federal Circuit rejected PTAB’s approach  — holding that the statute does not allow for any exception to the time-bar for cases dismissed without prejudice.  In its petition to the Supreme Court, Thryv asked the court to review both whether (1) the issue is appealable; and (2) the time-bar still applies after a dismissal without prejudice. The Supreme Court granted certiorari, but only as to question 1 – whether the issue is appealable.

The U.S. Gov’t also support’s Thryv’s position — arguing that its institution decisions should not be subject to appeal. Expected at oral arguments:

  • Adam Charnes (Kilpatrick Townsend) is representing the petitioner patent-challenger Thryv.
  • Jonathan Ellis from the Solicitor General’s office is representing the U.S. Gov’t. and splitting time with Charnes.
  • Daniel Geyser (Geyser PC) is representing the patentee Click-to-Call.

Merits Briefing:

For me, the most on-point text comes from the Supreme Court’s 2018 decision in SAS that discusses and applies the court’s prior decision in Cuozzo (2016):

At this point, only one final question remains to resolve. Even if the statute forbids his partial institution practice, the Director suggests we lack the power to say so. By way of support, he points to § 314(d) and our decision in Cuozzo. Section 314(d) says that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In Cuozzo, we held that this provision prevented courts from entertaining an argument that the Director erred in instituting an inter partes review of certain patent claims. The Director reads these authorities as foreclosing judicial review of any legal question bearing on the institution of inter partes review—including whether the statute permits his “partial institution” practice.

But this reading overreads both the statute and our precedent. As Cuozzo recognized, we begin with “the ‘strong presumption’ in favor of judicial review.” Id. To overcome that presumption, Cuozzo explained, this Court’s precedents require “clear and convincing indications” that Congress meant to foreclose review. Given the strength of this presumption and the statute’s text, Cuozzo concluded that § 314(d) precludes judicial review only of the Director’s “initial determination” under § 314(a) that “there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted” and review is therefore justified. . . . In fact, Cuozzo proceeded to emphasize that § 314(d) does not “enable the agency to act outside its statutory limits.” If a party believes the Patent Office has engaged in “ ‘shenanigans’ ” by exceeding its statutory bounds, judicial review remains available consistent with the Administrative Procedure Act, which directs courts to set aside agency action “not in accordance with law” or “in excess of statutory jurisdiction, authority, or limitations.”

And that, of course, is exactly the sort of question we are called upon to decide today. SAS does not seek to challenge the Director’s conclusion that it showed a “reasonable likelihood” of success sufficient to warrant “institut [ing] an inter partes review.” 35 U.S.C. §§ 314(a), (d). No doubt SAS remains very pleased with the Director’s judgment on that score. Instead, SAS contends that the Director exceeded his statutory authority by limiting the review to fewer than all of the claims SAS challenged. And nothing in § 314(d) or Cuozzo withdraws our power to ensure that an inter partes review proceeds in accordance with the law’s demands.

SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). The difficulty here with directly applying SAS is (1) Gorsuch overstated the holding in Cuozzo regarding the “only” thing appealable; (2) SAS was decided in a 5-4 vote with dissenters characterizing Cuozzo has holding “that the Director’s decision whether to institute review is normally not reviewable.”

Counterfeit Goods Seizure Act of 2019

Senators Tillis (R-NC), Coons (D-DE), Cassidy (R-LA) & Hirono (D-HI) have introduced the “Counterfeit Goods Seizure Act of 2019.”

Short and sweet — the two-page bill adds design patent infringement as justification for US Customs and Border Patrol to seize goods at the border.

The amended statute would read as follows.

Merchandise which is introduced or attempted to be introduced into the United States contrary to law shall be treated as follows:

(2)The merchandise may be seized and forfeited if— … (C) it is merchandise or packaging in which copyright, design patent, trademark, or trade name protection violations are involved (including, but not limited to, violations of section 1124, 1125, or 1127 of title 15, section 506 of title 17, section 271 or 289 of title 35,
or section 2318 or 2320 of title 18). . .

Copyright, trademark, and “trade name” violations are already listed in the statute; patents and trade secrets are not listed.  The basic idea here is that it is pretty easy for CPB to stack design patents atop their current system that looks at copyright and trademark.  The hope here is that a layman (e.g., CPB official) can quickly and easily determine design patent infringement at a relatively high level of accuracy.  This would be much more difficult for utility patents, and wouldn’t work for trade secrets without disclosing the secret to CPB.

IPO and INTA both released letters in support of the action.

Sen. Tillis is Chair of the Judiciary Committee’s Subcommittee on Intellectual Property and Sen. Coons is Ranking Member. Both have been active at pushing forward a pro-strong-IP-rights agenda. Sen. Hirono is also on the Subcommittee.

Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses

Congress is moving on Trademark Legislation with a number of different potential proposals circling. Today, the Senate IP Subcommittee (Judiciary) held hearings on trademark law:

Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses

Testimony came from:

  • Prof. Professor Barton Beebe (NYU) (trademark depletion; 2/3 of recent registrations from China on apparel include fraudulent specimens; supporting ex parte reexamination of registered marks and expungement);
  • Douglas Rettew (Finnegan Henderson) (arguing that eBay should not apply in trademark cases, but rather that mark holders should have a presumption of injunction)
  • Megan Bannigan (Debevoise & Plimpton) (clutter due to fraudulent registration and renewal
  • Prof. Thomas Williams (Duke) (the system should be one that is fair and reasonable and support small business activity)
  • Stephen Lee (Target) (it was Lee’s team at Target’s team that may have first identified the problem of fraudulent registrations)

The USPTO and Congress are working with various interest groups to develop legislation in this area.  However, the legislation is not yet out for primetime.

Copyright: When the Case Summaries are “Official” Works Authored by the State

by Dennis Crouch

Georgia v. Public.Resource.Org, Inc. (Supreme Court 2019) [Oral Argument Transcript]

Georgia’s counsel Joshua Johnson began his oral arguments by drawing the Supreme Court’s attention to its 19th Century case-law regarding the judicially-created government edicts doctrine:

MR. JOHNSON: The crux of the parties’ dispute is whether this Court’s 19th-century precedents support a decision different from the one that would be reached by applying standard interpretive principles to the Copyright Act’s plain text. They do not. . . . [W]hile
judicial opinions are not copyrightable, annotations added to opinions by a court’s official reporter are copyrightable works of authorship.

Here, we have “official” annotated code created by Lexis but guided by a mandated state committee. And, as a work-made-for-hire, the State is legally seen as the author for copyright purposes.  The crux of the copyright claim here is in the summaries of judicial decisions citing to the Georgia code.  Although those summaries do not have the force of law, they are the “official” annotations legally authored by the state.

JUSTICE SOTOMAYOR: Wheaton says anything prepared by the judge can’t be copyrighted.That includes headnotes, which are comparable, I think, to summaries that might be included in these annotations because it’s prepared by the judge.

Citing Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834).  Justice Breyer seemed to think that the answer is simple, but provided a somewhat complex statement of the simplicity:

JUSTICE BREYER:  I thought this isn’t that difficult. If a judge does something in his judicial capacity, it is not copyrightable. If a legislator does something or a group of legislators in their legislative capacity, it is not copyrightable. I mean, who cares who the author is? There are public policy reasons that have existed forever in the law that you make those two things not copyrightable. The executive is harder to separate out, but you could do it. . . . If it’s not in their official capacity, if it’s simply a summary or is a comment upon something done in an official capacity, it is copyrightable, even though it be done by a sworn public servant, all right? There we are. . . .

I do, says the bride, you can’t copyright that. It’s being used as a performative. It’s not an expression.

Now take that idea and bring it down to the legislature and making laws. Where you have some words on pieces of paper and they are performing a function that is a legislative function or a judicial function, no, it’s not solely an expression; it’s performing a function, and we don’t allow it because to let a monopolist get ahold of that is dangerous.

All this is easy for activities of U.S. judges and legislators because U.S. Gov’t works are not copyrightable under the Statute.  In the state law perspective, we get into a difficult line drawing problem with Justice Breyer’s approach understanding when a judge or legislator is acting in “some other abstract capacity” (using the words of Justice Gorsuch).

In the end, Georgia’s attorney warned the judges not to “blow up” the current system that allows for copyright protection of the official code.  Reminds me of an attack on casebooks from a few years ago. WSJ Blog.

Copyright in State Government Works in the Information Age

by Dennis Crouch

On December 2, 2019, the Supreme Court is set to hear oral arguments in Georgia v. Public.Resource.org, Inc. 18-1150 on the question of whether the state of Georgia can obtain and protect a copyright on the “Official Code of Georgia Annotated.”  Or, is copyright protection prohibited by the government edicts doctrine as the 11th Circuit held.

Federal Statute provides that works by the U.S. Gov’t are not copyrightable. 17 U.S.C. 105.  However, that provision does not apply to state governments. Here, Georgia hired LexisNexis to annotate and then publish its code.  The contract included a work-made-for-hire agreement and so the state is legally the author and copyright holder (if copyright persists). 17 U.S.C. § 201(b).  Note here that Georgia is (no longer) claiming copyright in the statutes themselves, but is claiming that the annotations are protectable.

A leading case is Callaghan v. Myers, 128 U.S. 617 (1888) that allowed the official reporter to enforce copyright based upon materials added to state court decisions (head-notes, indices, arrangement of cases, and errors).

Even though a reporter may be a sworn public officer, appointed by the authority of the government which creates the court of which he is made the reporter, and even though he may be paid a fixed salary for his labors, yet, in the absence of any inhibition forbidding him to take a copyright for that which is the lawful subject of copyright in him, or reserving a copyright to the government as the assignee of his work, he is not deprived of the privilege of taking out a copyright which would otherwise exist.

Id.  The alleged infringer here argues, inter alia, that the “Official” gov’t sanctioned nature of the annotations distinguish this case from Callaghan.

Callaghan is the U.S. Supreme Court’s last entry into the government edicts doctrine until now. Since that case the copyright statute has been overhauled in several major ways, including creation of the work-made-for-hire doctrine (prior to that an employer was not seen as an “author”) as well as the aforementioned statutory prohibition on copyright where the U.S. Gov’t is the author.

Oral arguments are divided with Georgia splitting time with the U.S. Gov’t who also argues that copyright protects the annotated code.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Added DoE Flexibility Sticks: Federal Circuit Denies Rehearing in Ajinomoto

In Ajinomoto Co., Inc. v. Intl. Trade Commn., 932 F.3d 1342 (Fed. Cir. 2019), the Federal Circuit affirmed an equivalents determination by the USITC. When I wrote about the case back in August, I coined the catchy acronym: DoEPHETAN.

DoEPHETAN: the Doctrine of Equivalents limited by Prosecution History Estoppel unless the narrowing amendment is “merely tangential” to the equivalent in question.

Yes – this is awful.  Its not me; Lets blame the courts who wanted to empower patentees with the doctrine of equivalents but then became afraid that they had gone too far.

In Ajinomoto, the Federal Circuit found that the patentee had found its way through the DoEPHETAN maze.  As originally filed, the patent claims covered the accused genetically engineered E. coli.  During prosecution the claims were narrowed to avoid a particular prior art references.  However, the accused bacteria is also different from the amended-around prior art and so the Federal Circuit found the amendment merely tangential to the equivalent and therefore did not bar the patentee from relying upon the Doctrine of Equivalents. In the original decision, the majority (Judges MOORE and TARANTO) sided with the patentee while Judge DYK dissented in part.

In recent filings, the adjudged infringer (CheilJedang) asked for rehearing — arguing that the majority “applied an expansive approach” the “merely tangential” exception rather than the proscribed “very narrow” application.

The new approach, moreover, accepts post hoc “prosecution-remorse” arguments and threatens to vitiate PHE by expanding the exception well beyond its historical application.

Despite a well written brief, the Federal Circuit has now denied the en banc petition without opinion — leaving this discussion for another day.

I do think that the petition is correct — the majority opinion here appears to be a signal of a slight expansion of DoE. Time will tell whether patentees take advantage.

[Read the Petition Here]

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I though this list (below) was interesting from the brief. In the litigation, 15 Ropes & Gray attorneys have represented the accused infringer (CJ). Of those, 9 are no longer at the firm.

The petition was filed by Steven Pepe & Matthew J. Rizzolo at Ropes & Gray along with  James Haley from Haley Guiliano. The list below are attorneys not on this brief, but who have represented CJ in the case that was filed in 2016.

 

Athena v. Mayo: Using Standard Techniques to Detect an Antibody that Correlates with a Disease

Athena Diagnostics, Inc. v. Mayo Collaborative Services LLC (Supreme Court 2019)

I enjoy comparing the Question Presented in a petition for writ of certiorari with the brief in opposition.   Perhaps the eligibility answer depends on how you frame the question.

In Athena, the patentee whose claims were invalidated by the Federal Circuit asked the following question:

Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

In its newly filed response, the accused infringer Mayo reframes the question as follows:

Whether patent claims to a method of diagnosis are ineligible under 35 U.S.C. § 101 where the claims employ admittedly “standard” and “known” laboratory techniques to detect the presence of an autoantibody that, when present, correlates to a particular disease.

The opposition brief provides its explanation of the briefing thus far:  Policy arguments best left for Congress.

Athena, amici, and various Federal Circuit judges disapprove of this outcome [that the claims are ineligible]. They plead that all medical diagnostics should be patent eligible. They posit that patent claims making use of man-made materials; or that require multiple laboratory-based steps, however conventional; or that detect something no one had previously looked for should be patent eligible. And they speculate, without any record support, that scientific research and the public health will suffer if all medical diagnostic methods are not patent eligible, even in the face of dramatically increased investment in diagnostics since Mayo.

But these are all policy concerns for Congress to examine and address; this Court’s precedent, including Mayo, has already considered each one.

There is thus no work for this Court to do here. This Court has already interpreted § 101 of the Patent Act and laid down a clear boundary around what is and is not patent eligible. Athena’s patent claims fall squarely on the ineligible side of that boundary. Any further action regarding the patentability of medical diagnostic claims such as Athena’s that employ conventional, known techniques should and does rest with Congress.

[Mayo Brief in Opposition].

I like the general idea of getting Congress involved when we need a change in the statute. Eligibility though is somewhat unique since we have had the same statute almost without amendment since 1793 (“useful art, machine, manufacture or composition of matter”). The original U.S. patent Act (1790) was slightly narrower (“useful art, manufacture, engine, machine, or device”).  For the past 230 years, the U.S. Courts have been doing their work on the statute — adding atextual gloss and meaning. And, while Congress has repeatedly altered many of the patent law provisions, it has left this language virtually untouched (“useful process, machine, manufacture, or composition of matter”).  Point being here, a substantive amendment on eligibility would be unprecedented in American law and thus should be done with deliberative caution.

Doctrine of Equivalents at the Federal Circuit

by Dennis Crouch

The chart below  provides a small bit of information – the annual number of Federal Circuit decisions discussing the Doctrine of Equivalents.

Recent decisions:

  • Pharma Tech v. Lifescan, Inc. 2019 WL 6222860 (Fed. Cir. Nov. 22, 2019) (prosecution history estoppel bars the claims for infringement under the doctrine of equivalents)
  • Metricolor LLC v. L’Oreal S.A., 2019 WL 5588874 (Fed. Cir. Oct. 30, 2019) (granting plaintiff leave to amend complaint to add DOE allegation).
  • UCP Intl. Co. Ltd. v. Balsam Brands Inc.,2019 WL 4955052 (Fed. Cir. Oct. 7, 2019) (vacating summary judgment of literal infringement and DOE based upon faulty claim construction).
  • Eli Lilly and Co. v. Hospira, Inc., 933 F.3d 1320 (Fed. Cir. 2019) (narrowing amendment did not create prosecution history estoppel; no disclosure-dedication; district court did not err in finding insubstantial differences)
  • Ajinomoto Co., Inc. v. Intl. Trade Commn., 932 F.3d 1342 (Fed. Cir. 2019) (affirming equivalents determination)
  • VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019) (discussing the court’s prior reversal of a jury DOE verdict)
  • Amgen Inc. v. Coherus BioSciences Inc., 931 F.3d 1154 (Fed. Cir. 2019) (prosecution history estoppel barred patentees claiming doctrine of equivalents infringement)

See John R. Allison & Mark A. Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59 Stan. L. Rev. 955 (2007) (DOE used to be important, but not anymore); Lee Petherbridge, On the Decline of the Doctrine of Equivalents, 31 Cardozo L. Rev. 1371 (2010) (confirming the demise and remarking that the result “is the culmination of a concerted and prolonged court-driven effort to make [DOE’s] favorable application the exception, not the rule.”); and David L. Schwartz, Explaining the Demise of the Doctrine of Equivalents, 26 Berkeley Tech. L.J. 1157, 1159 (2011).

IPR: Evidence Relied Upon Must be Derived from the IPR Petition

In re IPR Licensing, Inc. (Fed. Cir. 2019) (Note – IPRL is a subsidiary of InterDigital).

After IPRL sued ZTE for infringement (D.Del), that ZTE (et al.) turned around and petitioned for inter partes review of IPRL’s U.S. Patent No. 8,380,244 (dual mode communications using cellular and WiFi networks).  The PTAB originally sided with the patent challenger — finding all of the challenged claims obvious.  On appeal, however, the Federal Circuit vacated that decision as to Dependent Claim 8 that particularly required CDMA compatibility. In particular, the Federal Circuit found insufficient evidence to “support the Board’s articulated motivation to combine the asserted references to arrive at the invention defined in claim 8.”  In particular, although the cited prior art states that data connections could be provided via CDMA, the reference did not teach using CDMA to “maintain a communication session”  as required by the claim.  IPRL I Decision.

On remand, the Board rewrote its decision but again concluded that Claim 8 was unpatentable as obvious based upon the same prior art record.  And, on appeal (before a new panel), the Federal Circuit has again faulted the Board’s analysis — this time on procedural grounds:

[IPRL] argues that the only additional evidence the Board cited in support of its conclusion on remand was not part of the record before the Board. We agree.

What happened here in particular is that the Board relied upon the Universal Mobile Telecommunications System Standards (“UMTS”) as prior art for showing the ability to maintain a communication session using CDMA.  The problem: UMTS had been introduced as prior art in the original petition, but only to Count 3; while in its pre-SAS institution decision the Board only instituted as to Count 1 (that did not rely on UMTS).

On appeal here, the Federal Circuit explained that:

The Board … cannot rely on evidence relating solely to grounds on which it never instituted. To hold otherwise would allow the Board’s final written decision to rest on arguments that a patent owner has no ability to rebut or anticipate. . . .

ZTE’s petition does not mention UMTS in discussing ground one—the only ground on which the Board instituted review. IPRL’s response therefore never referenced it either. Nor did ZTE’s reply. Dr. Bims, ZTE’s expert, also confirmed that the Board’s review was not based on UMTS. . . .

The Board’s decision to rely on the Draft UMTS Standards to fill the gap in its evidentiary finding was, thus, erroneous.

Slip Op.  The Federal Circuit then considered whether to remand for the PTAB to consider all of the grounds as required by SAS.  However, the Board found that ZTE had waived its right to request such a remand. (Although ZTE had briefed the case and presented oral arguments, it subsequently withdrew from the appeal based upon a settlement agreement between the parties).

Reversed and Vacated.

I’ll note here that it is unlikely that the PTO will touch this case again with ZTE’s withdrawal and the lack of remand.  However, it would be interesting if the agency did pick it up and reopen the IPR as to all of the grounds.

Note also that the patentee appealed the substance of the obviousness argument — arguing that the claim wasn’t obvious even considering UMTS. On appeal, the Federal Circuit “express[ed] no opinion on the merits of the Board’s reliance on the Draft Standards or its conclusions about what those standards might have taught one of skill in the art.”

Avoiding Judge Hughes

by Dennis Crouch

In re Extreme Technologies, LLC (Fed. Cir. 2019)

In a short opinion, the Federal Circuit has denied Extreme Tech’s petition for writ of mandamus directing transfer of its case before S.D.Tex Judge Hughes to S.D.Tex Judge Bennett. (Note, this case is about District Court Judge Lynn Hughes, not Federal Circuit Judge Todd Hughes).

Extreme first sued Stabil Drill for patent infringement in S.D. Tex. accusing Stabil’s eccentric reamer of infringing three of Extreme’s patents. Within a week, Extreme filed a notice of dismissal and refiled the same complaint in W.D. Louisiana.  The S.D. Tex. had been assigned to Judge Hughes who terminated the case.  Judge Hughes order included the statement that “If refiled in or removed to this district, the case will be assigned to Judge Lynn N. Hughes.”

I’ll note here that the Fed. Rules of Civil Procedure provide for dismissal by a plaintiff “without a court order” if filed prior to the defendant’s answer (or summary judgment motion).  Rule 41(a)(1)(A)(i).  Thus, under the rules the plaintiff’s notice of dismissal ended the case and there was no need for Judge Hughes to file the termination papers ex post. 

Now in Louisiana: Stabil filed a motion for venue transfer and the Louisiana agreed to send the case back to Texas.  Although venue was “proper” in Louisiana, the court concluded that Extreme Tech was engaged in “Judge Shopping” and that factor weighed in favor of shifting venue.

When the case arrived back in S.D.Tex., it was randomly assigned to Judge Bennett who, noting the prior statement in the case file, transferred the case back over to Judge Hughes. Judge Hughes accepted the case and refused to send it back to Judge Bennett.

Extreme Tech then filed a petition for writ of mandamus to keep the case before Judge Bennett. The basic argument is that Judge Hughes post-dismissal order to return the case to him was improper. 

One obvious quirk is that the petition was filed with the 5th Circuit Court of Appeals and not the Federal Circuit.  The 5th Circuit has some good law for the patentee — having previously told Judge Hughes that “he cannot enter an order after a Rule 41(a)(1)(A)(i) dismissal.” (quoting from patentee’s brief). In Bechuck v. Home Depot U.S.A., Inc., 814 F.3d 287, 291 (5th Cir. 2016), Judge Hughes had similarly issued a post-dismissal order that “If Bechuck sues Advantage (ASM) for the same cause of action, he must do so before this court.”  The 5th Circuit ruled that statement ineffective — rather the plaintiff’s dismissal under “Rule 41(a)(1)(A)(i) necessarily allows him to choose his forum anew.”

By Statute, the Federal Circuit has jurisdiction over patent cases appealed from district courts. 28 U.S.C § 1295. However, the statute specifically is directed toward an “appeal from a final decision.”  The statute does not indicate the proper course of appeal of mandamus actions.  However, the Federal Circuit has also ruled that extraordinary writs associated with district court patent cases are also “plainly” within the court’s jurisdiction. In re Princo Corp., 478 F.3d 1345, 1351 (Fed. Cir. 2007);  In re Regents of the Univ. of Cal., 964 F.2d 1128, 1130 (Fed. Cir. 1992).  Although the Federal Circuit has grabbed-power, the 5th Circuit has not clearly relinquished power — in that I’m not aware of a 5th Circuit decision affirming Princo. (I have not done an exhaustive search).

Back to the case: The 5th Circuit apparently (without opinion) sent the whole file to the Federal Circuit who has now ruled on the case — denying mandamus:

Judge Bennett did not violate any clear and indisputable authority in transferring this case to Judge Hughes. To the extent that Extreme believed Judge Hughes exceeded his authority in issuing his initial order, it could have timely appealed from that decision but elected not to do so. Under the circumstances, granting this extraordinary relief would not be appropriate.

Extreme Tech Fed Cir Decision.

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In briefing, the patentee explained its problem with Judge Hughes:

Judge Hughes has been found many times by the Fifth Circuit to have abused his discretion. This particular finding was for exactly the same conduct as in the case at bar. Judge Hughes is, plainly, unconcerned about the Fifth Circuit’s interpretation of the law as it applies to him personally. That is a significant problem. Judge Hughes deprives civil plaintiffs of a fair forum, forcing them to waste money on appeals that should be unnecessary, settle on unfavorable terms, or simply quit. Stabil Drill knows this. That is why it is trying so hard to get the case before Judge Hughes. . . .

Judge Hughes has a History Record of Ignoring the Rules and the Law

Extreme’s counsel has significant experience with Judge Hughes’s approach in handling patent infringement cases. . . . There are over two dozen United States District Court Judges in the Southern District, twelve of which are located in the Houston Division. Somehow, sixty percent of the patent infringement cases filed by Extreme’s counsel have been “randomly” assigned to Judge Hughes. Every lawsuit filed in the Houston Division has a one in twelve chance of being assigned to Judge Hughes, or 8.3%. The odds of being assigned to Judge Hughes for six out of ten cases must be incredibly small. Judge Hughes seems to be requesting patent case assignments. The reason is known only to him. He certainly does not think much of patent plaintiffs, as demonstrated by his
record.

In handling patent cases, Judge Hughes routinely denies plaintiffs Constitutional due process under the 14th Amendment and the right to a civil jury trial under the 7th Amendment, refuses to follow the Federal Rules (by denying basic discovery under Rules 26, 30-31, 33-34, and 36, Fed. R. Civ. P.), and rejects the Southern District’s Local Patent Rules.

Although Judge Hughes has a copy of the U.S. Constitution on his office desk, he does not believe in the Seventh Amendment. He believes, as he once told the undersigned during a hearing, that patent plaintiffs are wrongly “throwing sand in the gears of competition.” None of the six patent cases filed by the undersigned that ended up in Judge Hughes’s court were granted a jury trial. Some cases were dismissed, and others settled after years of Judge Hughes’s one sided rulings on behalf of accused patent infringers. Sadly, this experience is not unique. Attached as Exhibit A is a list of all the patent infringement cases, according to our research, before Judge Hughes during his career on the federal bench. There are a total of 104 cases. Not a single case made it to trial. . . .

ExtremeTech Brief Opposing Transfer

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The defendant’s ads include a statement regarding its “patented spiral cutting design.”  Does that advertising work the “patent” belongs to your competitor? [I’m joking here, the product is just “accused” of infringement.]

 

 

 

Divided Arguments Set for Click-To-Call

Thryv v. Click-To-Call is set for oral arguments before the Supreme Court on December 9, 2019 on the question of:

Whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an IPR upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

Petition.  Section 315(b) sets out a one-year time-bar for filing an IPR petition:

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

35 U.S.C. § 315(b).  The time-bar limits PTO discretion in instituting IPR proceedings.  However, Section 314(d) places a big caveat — making the decision of whether to institute “final and nonappealable.”

(d) No Appeal.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

35 U.S.C. § 314(d).  Thus, the question before the Supreme Court is the extent of the no-appeal rule.   The Federal Circuit has allowed appeals in this (and parallel cases) and has also given an expansive interpretation to 1-year time bar.

At oral arguments Petitioner Thryv  (who is looking to invalidate the patent) will get 15 minutes as will the Federal Government who also argues that nonappealable means no appeal.  “[T]he Board’s institution decision, including its application of Section 315(b), [is] unreviewable.” Gov’t brief.  The patentee Click-To-Call will have 30 minutes in response.

In its request for divided argument, the Government lays out a distinction of interests between itself and of Thryv:

Although petitioner and the federal respondent have both filed briefs urging reversal of the Federal Circuit’s judgment, the two parties have distinct perspectives on the question presented in this case. Click-to-Call has alleged that petitioner’s predecessor in interest Ingenio, Inc. infringed the patent subject to the inter partes review in this case. Petitioner thus has a direct financial interest in the Board’s decision finding certain claims in that patent to be unpatentable. The federal respondent has a broader institutional interest in the scope of judicial review of the Board’s institution decisions and the proper operation of the inter partes review scheme. The USPTO’s distinct institutional interest is reflected in Congress’s affording the USPTO the right to intervene in any appeal from a decision by the Board in an inter partes review, 35 U.S.C. 143 — a right that the USPTO exercised in this case. The government thus believes that participation by both petitioner and the federal respondent in the oral argument in this case would be of material assistance to the Court.

[Motion for Divided Argument]

= = = =

Claim 1 of U.S. Patent 5,818,836:

1. A method for creating a voice connection over a circuit switched network between a first party and a second party using an on-line data service to initiate the connection, comprising the steps of:

a) establishing an electronic communication between the first party and the second party through the on-line data service between a first party and a second party;

b) requesting a voice communication through the on-line service;

c) transmitting a message from the online data service to a voice system requesting the voice connection between said first party and said second party;

c) establishing a first telephone call for the first party;

d) establishing a second telephone call for the second party; and,

e) connecting said first telephone call with said second telephone call.

Serving, Waiving Service, and the IPR Time Bar

by Dennis Crouch

Game and Tech. Co. v. Wargaming Group Ltd. and Activision Blizzard Inc. (Fed. Cir. 2019)

The PTAB found problems with Game & Tech’s U.S. Patent 7,682,243 — cancelling claims 1-7 obvious. On appeal, the Federal Circuit has affirmed — holding (1) that IPR was not barred under 35 U.S.C. § 315(b) and (2) that the obviousness decision was supported by substantial evidence.

Service of a Complaint: Section 315(b) creates a time-bar for Inter Partes Review challenges — a challenger only has one-year to file an IPR after being sued for infringement.  Note here though that the statute is quite specific and requires being “served with a complaint.”:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.

Being “Served” has a somewhat technical definition in US Civil Procedure under R.4 identifies the requirements for officially notifying the defendant that they have been sued.  And, the Federal Circuit generally relies upon that rule in determining whether (and when) service has occurred. One trick here is that the rules encourage waiver of service — placing on defendants a “a duty to avoid unnecessary expenses of serving the summons.”  There are also many lawsuits where cases where the defendant neither formally receives served nor formally waives service.  In those cases the defendant can challenge service under R. 12(b)(5) — however that defense is deemed waived if not brought by pre-answer motion or at least in the answer itself.  That said, the courts have not stated directly that waiver of a 12(b)(5) motion counts as service under 315(b).

In this case, Wargaming filed its IPR petition on March 13, 2017. So, the 1-year time-bar sets the critical date at March 13, 2016.  GAT sued Wargaming for patent infringement back in 2015 and hired a professional process server to deliver the summons & complaint to Wargaming’s registered agent in the UK and also mailed a copy to Wargaming.net’s office in Cyprus.

Although the complaint was in order, apparently the summons was lacking because it was not signed by the court clerk nor sealed by the court.

(a)(1) Contents. A summons must: … (F) be signed by the clerk; and (G) bear the court’s seal.

Fed. R. Civ. Pro. R. 4(a). Further, mailing a summons to a foreign defendant can be sufficient, but the mailing must come from the court clerk and require a signed receipt. R. 4(f)(2)(C)(ii).

Although the summons might not have been properly served, it was actually received.  In an email, Wargaming’s attorney complained about improper service, but stated that they would not challenge service if they were given until April 1, 2016 to respond to the complaint.  The parties then apparently held a status conference on March 15, 2016 and Wargaming filed a Motion to Dismiss for Improper Venue on April 1, 2016.

No Court Determination of Proper Service or Waiver: In its written decision, the PTAB sided with the patent challenger — finding no service of the complaint prior to the March 13, 2016 critical date.  In reaching that conclusion, the Board impliedly concluded that it cannot find proper service if “no district court has deemed service to have occurred.”   On appeal, the Federal Circuit rejected that conclusion — holding instead that the statute empowers and requires the Board (and PTO Director) to “determine whether service of a complaint alleging infringement was properly effectuated.”

The Board cannot strictly rely on a district court’s determination of proper service because district courts rarely make such determinations. Indeed, where the parties do not challenge service, a district court might never determine whether service was proper or whether the defendant waived its defense of improper service.

Slip. Op.

In considering whether the complaint was actually “served,” the appellate panel found “no error in the Board’s analysis” — noting that the opening brief devoted “only one paragraph to its substantive argument that the UK service occurred more than a year before Wargaming filed the petition. . . . Mere assertions that the UK service was proper without explanation or legal argument are usually insufficient.”  The appellate panel also found that GAT “failed to preserve its argument that Wargaming’s counsel waived service, thus triggering § 315(b)’s time bar at the time of the waiver.”  The court writes:

Like certain shapeshifting characters in Dungeons & Dragons, GAT’s evolving arguments are difficult to track. Indeed, at oral argument, counsel for GAT appeared to retract its reliance on Rule 4(d), explaining that GAT was merely contending that the UK service and Cyprus service complied with the Hague convention. As noted above, however, GAT did not develop these arguments in its opening brief. Because GAT did not preserve its specific arguments for why service was proper, we cannot conclude that the Board erred in its determination that Wargaming’s petition was not barred by § 315(b).

The bottom line rule here appears to be that “served with a complaint” means “served with a summons and complaint as required by R.4.”  The court left open the impact of technical failures of service (do those still count?) and informal waivers of service because of GAT’s failure to properly appeal those issues.

= = = =

The patent at issue in this case involves an online game that has both  player character (a “Pilot”) and a “unit” such as a robot character associated with the player.  The invention is to have the Unit increase in skill according to some formula tied to the skill level of the pilot (such as a 0.8 ratio).

The claims were found obvious when compared with a prior patent application publication (Levine U.S. Publication No. 2003/0177187) and the D&D Player Handbook (2003). The court explains:

The D&D Handbook is a rulebook for playing the tabletop fantasy roleplaying game Dungeons & Dragons. The D&D Handbook explains that a character may have a “familiar,” or a magical beast companion that enhances the abilities of its master. J.A. 1054. Both the character and its familiar have a certain number of “hit points,” or health. A character’s hit points, which represent the amount of damage that the character can withstand without dying or falling unconscious, increase with its level. At any given time, the familiar has “one-half the master’s total hit points,” rounded down.

The D&D Handbook provided the particulars, while the published application explained how it would all work in the online gaming environment.

= = = = =

Claim 1. An online game providing method for providing a pilot and a unit associated with the pilot at an online game, the method comprising the steps of:

controlling an online game such that a player can manipulate a pilot and a unit associated with said pilot, said pilot being a game character operated by a player, said pilot representing the player, said unit being a virtual object controlled by the player;

maintaining a unit information database, the unit information database recording unit information on said unit, in which the unit information includes ability of said unit and sync point information;

maintaining a pilot information database, the pilot information database recording pilot information on said pilot, in which the pilot information includes a unit identifier indicating said unit associated with said pilot, ability of said pilot and the ability of said unit associated with said pilot;

receiving a request for update on first pilot ability information of a first pilot;

searching for unit identifier information associated with the first pilot by referring to the pilot information database;

searching for sync point information associated with the searched unit identifier information by referring to the unit information database; and

updating and recording the first pilot ability information and unit ability information associated therewith in accordance with the searched sync point information such that said ability of unit is changed proportionally to changes in ability of the pilot by referring to said sync point,

wherein said sync point information is a ratio of which changes in said ability of pilot are applied to said ability of unit, and said steps of searching for unit identifier information and of searching for sync point information are performed by a processor.

Quick Action to Fix Appointments Problem?

My newest email from US Inventor begins with the headline: “Our Enemies are Trying to Pull a Fast One.”  No, we’re not talking about Russia or North Korea, we’re talking about the USPTO, PTAB Judges, Bob Armitage, etc. . They write:

The IP Subcommittee of the House Judiciary Committee is meeting [Tuesday] afternoon to look at this. One of the witnesses they will listen to was actually a key person behind the passage of the America Invents Act, the bill that Congress was so mislead on and that created the patent killing PTAB!

[T]he same players who created the massive problem will be trying to tell Congress that everything is fine. Well, it isn’t, and we have to tell them. . . .

The Federal Circuit Arthrex … said that the PTAB judges are not legitimate. These “judges” have invalidated over 2,000 patents and destroyed the lives of many inventors. Please meet with Josh Malone and Randy Landreneau (Lan-druh-no) of US Inventor to get informed on this critical issue for America and American innovation.”

Randy Landreneau, Randy@USInventor.org

Josh Malone, Josh@USInventor.org

The basic idea here is that Congress is considering a quick statutory fix for the PTAB Judge issue — but US Inventor argues that such an solution should be tied more generally to reform of the AIA Trial process.

Officers of the United States Shall be Appointed by the President

 

En Banc at the Federal Circuit

The Federal Circuit this week denied two interesting petitions for en banc rehearing:

Kingston Technology Company v. SPEX Technologies, Inc., Docket No. 19-1342 (Fed. Cir. 2019)

Does WiFi One apply only when the patentee is appealing and not when the IPR petitioner appeals an institution denial?

In this case, the PTAB held that § 315(e) estopped Kingston from petitioning for IPR. Had the Board decided in Kingston’s favor, the patent holder (SPEX) could have appealed under Wi-Fi One. However, the panel found that an orthogonal Board decision against the patent owner was not appealable.

Genzyme Corporation v. Zydus Pharmaceuticals (USA), Docket No. 18-02362 (Fed.
Cir. 2019)

Whether a patent-challenger asserting obviousness must prove that a POSA would have had a reasonable expectation of success as to achieving unclaimed features, such as achieving alleged unexpected results that are not recited in the asserted claims.

The patent challenger here argues that “[t]ying the reasonable expectation of success inquiry strictly to the claims as written ensures that courts do not decide obviousness on hypothetical claims that are fundamentally narrower than the actual claims at issue.”

Earlier this month, the Federal circuit also denied a well written petition in Board of Regents v. Boston Scientific Corporation, Docket No. 18-01700 (Fed. Cir 2019)

1. Whether the patent venue statute, 28 U.S.C. § 1400(b), dictates venue in state party patent infringement cases.

2. Whether state sovereignty includes the right to not litigate in a nonresident defendant’s home state (and hence the right to choose any forum with the requisite subject matter and personal jurisdiction).

3. Whether a federal transferee court can acquire jurisdiction over a state without its consent or waiver of any objection to such court’s jurisdiction

En banc petitions are still pending in several cases:

Both the Chamberlain Group and American Axle case have been mentioned to me by PTO/Congressional leaders as examples of how Alice has gone too far.

In American Axle, the patent is at issue, U.S. Patent 7,774,911, relates to “automotive driveshafts used in pickup trucks — claiming “novel and unconventional methods of manufacturing improved driveshafts that include ‘liners’—low cost, hollow tubes made of a fibrous material (such as cardboard).” Petition.  The courts found the claims ineligible as directed to “Hooke’s law, and possibly other natural laws.”

National Patent Application Drafting Competition

Law Students: the USPTO invites your school to participate in the 2020 National Patent Application Drafting Competition.

The objective of this competition is to introduce law students to issues arising in United States patent law and to develop their patent application drafting, amending, and prosecuting skills.

The program is an expansion of the International Patent Drafting Competition and is the brain child of Damian Porcari – Director of the Midwest Regional Patent Office in Detroit and longtime in-house IP counsel at Ford.

The competition:

Student teams will be given a hypothetical invention statement for which they will then search the prior art, prepare a specification, draft claims, and present their reasoning for patentability before a panel of judges comprised of patent examiners, practitioners, and high profile guest judges.

Students will draft various patent documents prior to the competition. Afterwards, the will head to their competition site for presentation and perhaps to respond to examiner input.

The initial phase of competition will consist of up to 15 teams in a regional round taking place in Detroit; Denver; San Jose; Dallas; and Washington, DC area. The winner from each region will be invited to compete in the National Final Competition at USPTO Headquarters in Alexandria, VA, on April 20, 2020 before a panel of senior USPTO officials and other esteemed judges.

Registration Closes December 15, 2019. Register here

2020 US Patent and Trademark Office National Patent Drafting Competition, Online Event # 77918334837.

See you there!

Officers of the United States Shall be Appointed by the President

Hearings tomorrow in the House of Representatives on PTAB Appointments Clause Issues arising from the Federal Circuit’s recent decision in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019).  We have a law professor heavy panel with Professors John Duffy, Arti Rai, and John Whealan along with Bob Armitage (who tends to speak like a professor).

The basic framework is that the Constitution requires all “Officers of the United States” to be nominated by the President with “Consent of the Senate.”  U.S. Const. Article II, Section 2. The so-called appointments clause has a caveat that “inferior Officers” may be appointed by Courts or Heads of Departments if Congress so allows.  Currently PTAB Judges (Administrative Patent Judges) are treated as inferior officers by statute — appointed by the Secretary of Commerce.  However, the increased responsibility of AIA Trials has pushed their role into the territory of Principal Officers that must be appointed by the President.


 

Now reading: Shephard’s Drone

Prof. Brett Frischmann (Villanova Law) perhaps best known for his 2018 book Re-Engineering Humanity and his law & econ work on infrastructure (broadly defined).  His new book though is a futuristic sci-fi novel — Shephard’s Drone.

They now say that using technology to design humans is normal. Parents order what they like. If you don’t like what you get . . . .

I’m listening to the Audible version — so far not much law, but we’ll see.