As one of us has recently observed (here and here), courts in the U.S. and UK adjudicating cases involving standards-essential patents and FRAND licensing commitments have increasingly issued injunctions preventing one party from pursuing parallel litigation in another jurisdiction (anti-suit injunctions or ASIs). In response, courts in other countries – namely Germany and France – have begun to issue anti-anti-suit injunctions (AASIs) to prevent parties from seeking ASIs that would hinder their own proceedings. And even anti-anti-anti suit injunctions (AAASIs) have emerged as more than theoretical possibilities. Amidst this international jockeying for jurisdiction, commentators have wondered where it will end, and whether every country involved in complex, multi-jurisdictional disputes will get into the ASI game. In two recent cases, China has now stepped forward as another major jurisdiction in which ASIs are available to litigants.
The first case involves Chinese smartphone manufacturer Huawei and Texas-based patent assertion entity Conversant Wireless Licensing (formerly Core Wireless). Conversant holds a globe-spanning portfolio of patents that it acquired from Nokia and which it claims are essential to the 2G, 3G and 4G wireless telecommunications standards developed under the auspices of the European Telecommunications Standards Institute (ETSI). Conversant sought to license these patents to Huawei, but negotiations broke down and in 2017 and 2018 Conversant asserted the patents against Huawei in multiple jurisdictions. The UK suit was recently decided by the UK Supreme Court,  UKSC 37, which held that a UK court has the authority to set a global FRAND royalty rate between the parties, notwithstanding its lack of jurisdiction over patents outside the UK (see discussion here). (This case also involved an unsuccessful 2018 bid by Conversant to obtain an ASI from the UK Court of Chancery,  EWHC (Ch) 2549, against the prosecution of a related suit by ZTE, Huawei’s co-defendant, in the Shenzhen Intermediate People’s Court in China – discussed here).
In response to Conversant’s initial patent assertions, in January 2018 Huawei sought declarations from the Nanjing Intermediate People’s Court of Jiangsu Province, China, that it did not infringe three of Conversant’s Chinese patents and, if it did, that it was entitled to a license on FRAND terms. On September 16, 2019, the Nanjing court declined to issue a declaration regarding infringement, but established a “top down” FRAND royalty for the three Conversant patents (discussed at length in IAM, 23 Sept. 2019 and IAM, 5 Aug. 2020). The decision is currently on appeal at the Supreme People’s Court (SPC) of China.
Meanwhile, in April 2018, Conversant sued Huawei in the District Court in Düsseldorf, Germany, alleging infringement of several European patents. On August 27, 2020, the Düsseldorf court granted Conversant an injunction against Huawei’s sale, use or importation in Germany of devices infringing patent EP1797659 (the German Patent).
On the same day, Huawei applied to the SPC seeking an “act preservation” ruling (a judicial action roughly equivalent to an ASI) to prevent Conversant from enforcing the Düsseldorf injunction until the conclusion of the Chinese proceedings. The SPC granted the ASI after an ex parte hearing in which Conversant did not participate. In its decision, the SPC cited a number of factors weighing in favor of granting the ASI, many of which resemble the factors considered by U.S. courts when considering ASIs (see Contreras, The New Extraterritoriality, pp. 265-67):
the parties to the Chinese and German actions are the same;
there is partial overlap between the subject matter of the cases;
Conversant’s enforcement of the German injunction would interfere with the Chinese action;
in order to avoid the effects of the German injunction, Huawei must either withdraw from the German market or accept the license offered by Conversant in Germany, which sets a global FRAND royalty rate that is 18.3 times higher than the rate set by the Nanjing court;
imposition of the ASI will not materially prejudice Conversant’s rights in Germany with respect to the merits decisions (as opposed to the injunction decisions) of the German courts;
imposition of the ASI will not harm the public interest;
imposition of the ASI will not affect international comity, as the Chinese actions were brought before the German action and the ASI will not affect the subsequent trial in the German case or detract from the legal validity of the German judgment.
Also relevant to the SPC’s decision, though not specifically included in its consideration of the ASI, was the fact that in August, 2018, the Chinese State Intellectual Property Office (SIPO) ruled that the Chinese counterpart to the German Patent was invalid. Conversant brought an administrative lawsuit challenging that ruling in the Beijing Intellectual Property Court. That matter is still pending.
Upon entry of the ASI, the SPC established a penalty of RMB 1 million per day (approximately US$150,000) if Conversant violates the ASI. Because the ASI was issued ex parte, Conversant was entitled to apply for reconsideration within five days. It did so, and its request was denied on September 11, leaving the ASI in force.
The dispute between InterDigital, a U.S.-based patent assertion entity, and Xiaomi, a Beijing-based electronics firm, relates to five InterDigital patents covering the 3G and 4G standards. When negotiations for a license failed, on June 9, 2020 Xiaomi sought a declaration by the Wuhan Intermediate People’s Court of the appropriate FRAND royalty rate for the patents. On July 29, InterDigital sued Xiaomi for infringement in the Delhi High Court in India, seeking monetary damages and an injunction. In response, on August 4, Xiaomi asked the Wuhan court for an “act preservation” ruling (ASI) preventing InterDigital from enforcing the injunction while the Wuhan proceeding was in progress.
The Wuhan court granted Xiaomi’s request, reasoning that:
InterDigital’s filing of parallel litigation in India during the pendency of the Wuhan case showed a lack of respect for the Wuhan court and the case before it;
The Indian action was intended to interfere with and obstruct the Wuhan case;
The Indian action is likely to lead to a ruling in conflict with that of the Wuhan court;
The entry of an injunction in India will likely cause significant harm to Xiaomi;
Because InterDigital is a non-practicing entity that does not make products, but relies solely on licensing income, it would not be harmed substantially by the inability to seek an injunction against Xiaomi
Accordingly, on September 23, the Wuhan court (a) ordered InterDigital to withdraw its requests for injunctive relief in India, (b) prohibited InterDigital from seeking injunctive relief in China or any other country with respect to the 3G/4G patents currently at issue in the Wuhan case, and (c) prohibited InterDigital from asking another court in China or any other country to determine a FRAND royalty rate or resolve a FRAND dispute relating to the 3G/4G patents at issue.
As in Conversant v. Huawei, the Wuhan court established a penalty of RMB 1 million per day (approximately US$150,000) if InterDigital violates the ASI. Because the ASI was issued ex parte, InterDigital was entitled to apply for reconsideration within five days. It did so, and its request appears to have been denied, leaving the ASI in force.
The ASIs issued by Chinese courts in Conversant v. Huawei and InterDigital v. Xiaomi signal a new willingness of Chinese courts to vie for jurisdictional authority in global battles over standard-essential patents. To some degree, this development was entirely predictable. Courts in the U.S. and UK have, for several years, sought to resolve global FRAND disputes being litigated on the international stage. But there is no reason that U.S. and UK courts should be the exclusive venues for such proceedings. The courts of every country in which the parties have sufficient assets to care about adverse rulings can exert similar authority. As one of us has previously observed, this inter-jurisdictional competition is rapidly leading to a “race to the bottom” and a “race to the courthouse” in international FRAND disputes.
Yet even more seems to be at play in these two cases than China’s adoption of jurisdictional measures already deployed in the U.S. and UK. The ruling of the Wuhan court is far broader than the Supreme People’s Court’s ruling in Conversant v. Huawei in two major respects that are worth considering. First, its geographic scope is not limited to the country in which InterDigital sought injunctive relief (India), but extends to all jurisdictions in the world. As an anti-suit measure, this is more sweeping than any ASI issued in U.S. or other courts in FRAND cases. Under U.S. and UK law, a court considering a request for an ASI must compare the action in the domestic court with the parallel action in the foreign court and determine whether they address the same matter and whether the resolution of the domestic action would dispose of the foreign action. This type of analysis is not possible with an ASI that is not directed to a particular foreign action, but prospectively prohibits any attempt to seek an injunction anywhere in the world.
The second major addition by the Wuhan court is the prohibition on InterDigital’s ability to ask any other court in the world to determine a global FRAND rate for its 3G/4G patents. As such, China has clearly joined the international race to be the jurisdiction of choice for determining FRAND royalty rates in global disputes involving standard-essential patents.
 A FRAND commitment is an obligation undertaken by a participant in a standards development organization (SDO) to grant licenses of its patents that are essential to implementation of one of the SDO’s standards on terms that are fair, reasonable and nondiscriminatory. For a primer on standards development and FRAND commitments, see this chapter.
The following is simply the text of the Supreme Court’s 1895 decision:
Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895) [16_S.Ct._75]
Consol. Electric Light Co v. McKeesport Light Co, 159 U.S. 465 (1895)
This was a bill in equity, filed by the Consolidated Electric Light Company against the McKeesport Light Company, to recover damages for the infringement of letters patent No. 317,76, issued May 12, 1885, to the Electro-Dynamic Light Company, assignee of Sawyer and Man, for an electric light. The defendants justified under certain patents to Thomas A. Edison, particularly No. 223,898, issued January 27, 1880; denied the novelty and utility of the complainant’s patent; and averred that the same had been fraudulently and illegally procured. The real defendant was the Edison Electric Light Company, and the case involved a contest between what are known as the Sawyer and Man and the Edison systems of electric lighting.
In their application, Sawyer and Man stated that their invention related to ‘that class of electric lamps employing an incandescent conductor [e]nclosed in a transparent, hermetically sealed vessel or chamber, from which oxygen is excluded, and … more especially to the incandescing conductor, its substance, its form, and its combination with the other elements composing the lamp. Its object is to secure a cheap and effective apparatus; and our improvement consists, first, of the combination, in a lamp chamber, composed wholly of glass, as described in patent No. 205,144,’ upon which this patent was declared to be an improvement, ‘of an incandescing conductor of carbon made from a vegetable fibrous material, in contradistinction to a similar conductor made from mineral or gas carbon, and also in the form of such conductor so made from such vegetable carbon, and combined in the lighting circuit with the exhausted chamber of the lamp.’
The following drawings exhibit the substance of the invention:
The specification further stated that:
‘In the practice of our invention, we have made use of carbonized paper, and also wood carbon. We have also used such conductors or burners of various shapes, such as pieces with their lower ends secured to their respective supports, and having their upper ends united so as to form an inverted V-shaped burner. We have also used conductors of varying contours,—that is, with rectangular bends instead of curvilinear ones; but we prefer the arch shape.’
‘No especial description of making the illuminating carbon conductors, described in this specification, and making the subject-matter of this improvement, is thought necessary, as any of the ordinary methods of forming the material to be carbonized to the desired shape and size, and carbonizing it while confined in retorts in powdered carbon, substantially according to the methods in practice before the date of this improvement, may be adopted in the practice thereof by any one skilled in the arts appertaining to the making of carbons for electric lighting or for other use in the arts.’
‘An important practical advantage which is secured by the arch form of incandescing carbon is that it permits the carbon to expand and contract under the varying temperatures to which it is subjected when the electric current is turned on or off without altering the position of its fixed terminals. Thus, the necessity for a special mechanical device to compensate for the expansion and contraction which has heretofore been necessary is entirely dispensed with, and thus the lamp is materially simplified in its construction. Another advantage of the arch form is that the shadow cast by such burners is less than that produced by other forms of burners when fitted with the necessary devices to support them.’
‘Another important advantage resulting from our construction of the lamp results from the fact that the wall forming the chamber of the lamp through which the electrodes pass to the interior of the lamp is made wholly of glass, by which all danger of oxidation, leakage, or short-circuiting is avoided.’
‘The advantages resulting from the manufacture of the carbon from vegetable fibrous or textile material instead of mineral or gas carbon are many. Among them may be mentioned the convenience afforded for cutting and making the conductor in the desired form and size, the purity and equality of the carbon obtained, its susceptibility to tempering, both as to hardness and resistance, and its toughness and durability. We have used such burners in closed or hermetically sealed transparent chambers, in a vacuum, in nitrogen gas, and in hydrogen gas; but we have obtained the best results in a vacuum, or an attenuated atmosphere of nitrogen gas, the great desideratum being to exclude oxygen or other gases capable of combining with carbon at high temperatures from the incandescing chamber, as is well understood.’
The claims were as follows:
‘(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material, and of an arch or horseshoe shape, substantially as hereinbefore set forth.’
‘(2) The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and a transparent, hermetically sealed chamber, in which the conductor is inclosed.’
‘(3) The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.’
‘(4) An incandescing electric lamp consists of the following elements in combination: First, an illuminating chamber made wholly of glass hermetically sealed, and out of which all carbon-consuming gas has been exhausted or driven; second, an electric-circuit conductor passing through the glass wall of said chamber, and hermetically sealed therein, as described; third, an illuminating conductor in said circuit, and forming part thereof within said chamber, consisting of carbon made from a fibrous or textile material, having the form of an arch or loop, substantially as described, for the purpose specified.’
The commercial Edison lamp used by the appellee, and which is illustrated below, is composed of a burner, A, made of carbonized bamboo of a peculiar quality, discovered by Mr. Edison to be highly useful for the purpose, and having a length of about 6 inches, a diameter of about 5/1000 of an inch, and an electrical resistance of upward of 100 ohms. This filament of carbon is bent into the form of a loop, and its ends are secured by good electrical and mechanical connections to two fine platinum wires, B, B. These wires pass through a glass stem, C, the glass being melted and fused upon the platinum wires. A glass globe, D, is fused to the glass stem, C. This glass globe has originally attached to it, at the point d, a glass tube, by means of which a connection is made with highly organized and refined exhausting apparatus, which produces in the globe a high vacuum, whereupon the glass tube is melted off by a flame, and the globe is closed by the fusion of the glass at the point d.
Upon a hearing in the circuit court before Mr. Justice Bradley, upon pleadings and proofs, the court held the patent to be invalid, and dismissed the bill. 40 Fed. 21. Thereupon complainant appealed to this court.
Attorneys: Leonard E. Curtis and Edmund Wetmore, for appellant; F. P. Fish, for appellee.
Opinion: Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.
In order to obtain a complete understanding of the scope of the Sawyer and Man patent, it is desirable to consider briefly the state of the art at the time the application was originally made, which was in January, 1880.
Two general forms of electric illumination had for many years been the subject of experiments more or less successful, one of which was known as the ‘arc light,’ produced by the passage of a current of electricity between the points of two carbon pencils placed end to end, and slightly separated from each other. In its passage from one point to the other through the air, the electric current took the form of an arc, and gave the name to the light. This form of light had been produced by Sir Humphry Davy as early as 1810, and, by successive improvements in the carbon pencils and in their relative adjustment to each other, had come into general use as a means of lighting streets, halls, and other large spaces; but by reason of its intensity, the uncertain and flickering character of the light, and the rapid consumption of the carbon pencils, it was wholly unfitted for domestic use. The second form of illumination is what is known as the ‘incandescent system,’ and consists generally in the passage of a current of electricity through a continuous strip or piece of refractory material, which is a conductor of electricity, but a poor conductor; in other words, a conductor offering a considerable resistance to the flow of the current through it. It was discovered early in this century that various substances might be heated to a white heat by passing a sufficiently strong current of electricity through them. The production of a light in this way does not in any manner depend upon the consumption or wearing away of the conductor, as it does in the arc light. The third system was a combination of the two others, but it never seems to have come into general use, and is unimportant in giving a history of the art.
For many years prior to 1880, experiments had been made by a large number of persons, in various countries, with a view to the production of an incandescent light which could be made available for domestic purposes, and could compete with gas in the matter of expense. Owing party to a failure to find a proper material, which should burn but not consume, partly to the difficulty of obtaining a perfect vacuum in the globe in which the light was suspended, and partly to a misapprehension of the true principle of incandescent lighting, these experiments had not been attended with success; although it had been demonstrated as early as 1845 that, whatever material was used, the conductor must be inclosed in an art-tight bulb, to prevent it from being consumed by the oxygen in the atmosphere. The chief difficulty was that the carbon burners were subject to a rapid disintegration or evaporation, which electricians assumed was due to the disrupting action of the electric current, and hence the conclusion was reached that carbon contained in itself the elements of its own destruction, and was not a suitable material for the burner of an incandescent lamp.
It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success; that it does not embody the principle of high resistance with a small illuminating surface; that it does not have the filament burner of the modern incandescent lamp; that the lamp chamber is defective; and that the lamp manufactured by the complainant, and put upon the market, is substantially the Edison lamp; but it is said that, in the conductor used by Edison (a particular part of the stem of the bamboo, lying directly beneaty the siliceous cuticle, the peculiar fitness for which purpose was undoubtedly discovered by him), he made use of a fibrous or textile material covered by the patent to Sawyer and Man, and is therefore an infringer. It was admitted, however, that the third claim—for a conductor of carbonized paper—was not infringed.
The two main defenses to this patent are (1) that it is defective upon its face, in attempting to monopolize the use of all fibrous and textile materials for the purpose of electric illuminations; and (2) that Sawyer and Man were not in fact the first to discover that these were better adapted than mineral carbons to such purposes.
Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors? If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad. If, for instance, minerals or porcelains had always been used for a particular purpose, and a person should take out a patent for a similar article of wood, and woods generally were adapted to that purpose, the claim might not be too broad, though defendant used wood of a different kind from that of the patentee. But if woods generally were not adapted to the purpose, and yet the patentee had discovered a wood possessing certain qualities, which gave it a peculiar fitness for such purpose, it would not constitute an infringement for another to discover and use a different kind of wood, which was found to contain similar or superior qualities. The present case is an apt illustration of this principle. Sawyer and Man supposed they had discovered in carbonized paper the best material for an incandescent conductor. Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over 6,000 vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everybody, then, precluded by this broad claim from making further investigation? We think not.
The injustice of so holding is manifest in view of the experiments made, and continued for several months, by Mr. Edison and his assistants, among the different species of vegetable growth, for the purpose of ascertaining the one best adapted to an incandescent conductor. Of these he found suitable for his purpose only about three species of bamboo, one species of cane from the valley of the Amazon (impossible to be procured in quantities on account of the climate), and one or two species of fibers from the agave family. Of the special bamboo, the walls of which have a thickness of about 3/8 of an inch, he used only about 20/1000 of an inch in thickness. In this portion of the bamboo the fibers are more nearly parallel, the cell walls are apparently smallest, and the pithy matter between the fibers is at its minimum. It seems that carbon filaments cannot be made of wood,—that is, exogenous vegetable growth,—because the fibers are not parallel, and the longitudinal fibers are intercepted by radial fibers. The cells composing the fibers are all so large that the resulting carbon is very porous and friable. Lamps made of this material proved of no commercial value. After trying as many as 30 or 40 different woods of exogenous growth, he gave them up as hopeless. But finally, while experimenting with a bamboo strip which formed the edge of a palm-leaf fan, cut into filaments, he obtained surprising results. After microscopic examination of the material, he dispatched a man to Japan to make arrangements for securing the bamboo in quantities. It seems that the characteristic of the bamboo which makes it particularly suitable is that the fibers run more nearly parallel than in other species of wood. Owing to this, it can be cut up into filaments having parallel fibers, running throughout their length, and producing a homogeneous carbon. There is no generic quality, however, in vegetable fibers, because they are fibrous, which adapts them to the purpose. Indeed, the fibers are rather a disadvantage. If the bamboo grew solid, without fibers, but had its peculiar cellular formation, it would be a perfect material, and incandescent lamps would last at least six times as long as at present. All vegetable fibrous growths do not have a suitable cellular structure. In some the cells are so large that they are valueless for that purpose. No exogenous, and very few endogenous, growths are suitable. The messenger whom he dispatched to different parts of Japan and China sent him about 40 different kinds of bamboo, in such quantities as to enable him to make a number of lamps, and from a test of these different species he ascertained which was best for the purpose. From this it appears very clearly that there is no such quality common to fibrous and textile substances generally as makes them suitable for an incandescent conductor, and that the bamboo which was finally pitched upon, and is now generally used, was not selected because it was of vegetable growth, but because it contained certain peculiarities in its fibrous structure which distinguished it from every other fibrous substance. The question really is whether the imperfectly successful experiments of Sawyer and Man, with carbonized paper and wood carbon, conceding all that is claimed for them, authorize them to put under tribute the results of the brilliant discoveries made by others.
It is required by Rev. St. § 4888, that the application shall contain ‘a written description of the device, and of the manner and process of making constructing, compounding, and using it in such full, clear, concise, and exact terms as to enable any person, skilled in the art or science to which it appertains or with which it is most nearly connected, to make, construct, compound, and use the same.’ The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. Grant v. Raymond, 6 Pet. 218, 247. If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.
It was said by Mr. Chief Justice Taney in Wood v. Underhill, 5 How. 1, 5, with respect to a patented compound for the purpose of making brick or tile, which did not give the relative proportions of the different ingredients: ‘But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely; for in such cases it would be evident, on the face of the specification, that no one could use the invention without first ascertaining, by experiment, the exact proportion of the different ingredients required to produce the result intended to be obtained. . . . And if, from the nature and character of the ingredients to be used, they are not susceptible of such exact description, the inventor is not entitled to a patent.’
So in Tyler v. Boston, 7 Wall. 327, wherein the plaintiff professed to have discovered a combination of fusel oil with the mineral and earthy oils, constituting a burning fluid, the patentee stated that the exact quantity of fusel oil which is necessary to produce the most desirable compound must be determined by experiment. And the court observed: ‘Where a patent is claimed for such a discovery, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave a person attempting to use the discovery to find it out ‘by experiment.” See, also, Béné v. Jeantet, 129 U. S. 683, 9 Sup. Ct. 428; Howard v. Stove Works, 150 U. S. 164, 167, 14 Sup. Ct. 68; Schneider v. Lovell, 10 Fed. 666; Welling v. Crane, 14 Fed. 571.
Applying this principle to the patent under consideration, how would it be possible for a person to know what fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation? If, as before observed, there were some general quality, running through the whole fibrous and textile kingdom, which distinguished it from every other, and gave it a peculiar fitness for the particular purpose, the man who discovered such quality might justly be entitled to a patent; but that is not the case here. An examination of materials of this class carried on for months revealed nothing that seemed to be adapted to the purpose; and even the carbonized paper and wood carbons specified in the patent, experiments with which first suggested their incorporation therein, were found to be so inferior to the bamboo, afterwards discovered by Edison, that the complainant was forced to abandon its patent in that particular, and take up with the material discovered by its rival. Under these circumstances, to hold that one who had discovered that a certain fibrous or textile material answered the required purpose should obtain the right to exclude everybody from the whole domain of fibrous and textile materials, and thereby shut out any further efforts to discover a better specimen of that class than the patentee had employed, would be an unwarranted extension of his monopoly, and operate rather to discourage than to promote invention. If Sawyer and Man had discovered that a certain carbonized paper would answer the purpose, their claim to all carbonized paper would, perhaps, not be extravagant; but the fact that paper happens to belong to the fibrous kingdom did not invest them with sovereignty over this entire kingdom, and thereby practically limit other experimenters to the domain of minerals.
In fact, such a construction of this patent as would exclude competitors from making use of any fibrous or textile material would probably defeat itself, since, if the patent were infringed by the use of any such material, it would be anticipated by proof of the prior use of any such material. In this connection it would appear, not only that wood charcoal had been constantly used since the days of Sir Humphry Davy for arc lighting, but that in the English patent to Greener and Staite, of 1846, for an incandescent light, ‘charcoal, reduced to a state of powder,’ was one of the materials employed. So also, in the English patent of 1841 to De Moleyns, ‘a finely pulverized boxwood charcoal or plumbago’ was used for an incandescent electric lamp. Indeed, in the experiments of Sir Humphry Davy, early in the century, pieces of well-burned charcoal were heated to a vivid whiteness by the electric current, and other experiments were made which evidently contemplated the use of charcoal heated to the point of incandescence. Mr. Broadnax, the attorney who prepared the application, it seems, was also of opinion that a broad claim for vegetable carbons could not be sustained, because charcoal had been used before in incandescent lighting. There is undoubtedly a good deal of testimony tending to show that, for the past 50 or 60 years, the word ‘charcoal’ has been used in the art, not only to designate carbonized wood, but mineral or hard carbons, such as were commonly employed for the carbon pencils of arc lamps. But we think it quite evident that, in the patents and experiments above referred to, it was used in its ordinary sense of charcoal obtained from wood. The very fact of the use of such word to designate mineral carbons indicates that such carbons were believed to possess peculiar properties required for illumination, that before that had been supposed to belong to wood charcoal.
We have not found it necessary in this connection to consider the amendments that were made to the original specification, upon which so much stress was laid in the opinion of the court below, since we are all agreed that the claims of this patent, with the exception of the third, are too indefinite to be the subject of a valid monopoly.
As these suggestions are of themselves sufficient to dispose of the case adversely to the complainant, a consideration of the question of priority of invention, or rather of the extent and results of the Sawyer and Man experiments, which was so fully argued upon both sides, and passed upon by the court below, becomes unnecessary.
For the reasons above stated, the decree of the circuit court is affirmed.
Gensetix v. Univ. Texas v. Baylor College of Med. (Fed. Cir. 2020)
Here is the three-party setup in this case involving the patentee, licensee, and accused infringers:
Invent & Patent: Dr. Decker, a UTexas researcher invented a method for generating anti-tumor immune response and UTexas obtained the patents (US8728806; US9333248);
License: UTexas provided an exclusive license to Mr. Mirrow who later transferred the license to Gensetix;
Infringe: Dr. Decker later moved his lab to BCM and continued research without license;
Sue: Gensetix sued BCM & Decker for infringement, but the patent owner UTexas refused to participate in the case.
The usual rule is that a patent infringement lawsuit cannot proceed unless the patentee — i.e., the patent owner — is a plaintiff. And, in a normal lawsuit being a plaintiff is voluntary business. However, our rules of civil procedure do also call for “involuntary plaintiffs.”
(2) Joinder by Court Order. [A required party] who refuses to join as a plaintiff may be made either a defendant or, in a proper case, an involuntary plaintiff.
Fed. R. Civ. Pro. R. 19(a)(2). This happens occasionally in patent cases such as this where the patentee has promised to enforce the patent, but then later refuses. In that situation, the licensee files the lawsuit as plaintiff and joins the patent owner as an involuntary plaintiff. The problem here — UTexas is part of the State of Texas and claims sovereign immunity in this case.
The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State.
U.S. Const., Amendment XI (1795). Although the 11th Amendment offers only a limited amount of State Sovereign immunity, the Supreme Court has repeatedly written that the structure and nature of Federal system includes additional State immunities.
In its appellate decision in the case, the Federal Circuit answered two questions (1) Does sovereign immunity protect TX from being joined as an involuntary plaintiff; (2) If TX cannot be joined as a party, may the case proceed without the patentee? The court then issued three separate opinions with Judge O’Malley’s approach garnering a majority on each issue:
Thus, in the end, the court found that TX is immune from being joined, but that the case should proceed with the licensee suing BCM for infringement.
BCM subsequently petitioned for en banc review on the following question:
Can a party who is not a patentee “have remedy by civil action for infringement”?
BCM En Banc Petition. That petition has now been denied — setting up potential Supreme Court review.
The basic framing of the appeal is that there is some tension between the language of R.19 and the Supreme Court decision in Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).
First, R. 19: The text of the rule expressly allows a court to continue with a lawsuit even though a “required party” cannot be joined. The basic approach is that the court must apply “equity and good conscious” to determine whether to dismiss the case or to proceed.
19(b) When Joinder Is Not Feasible. If a person who is required to be joined if feasible cannot be joined, the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed.
Id. (listing factors to consider).
On the other hand, in Pimentel, the court appeared to endorse a stark limit on continuing suits such as this where the sovereign is absent but will be potentially injured by an adverse decision:
A case may not proceed when a required entity sovereign is not amenable to suit. [Our prior] cases instruct us that where sovereign immunity is asserted, and the claims of the sovereign are not frivolous, dismissal of the action must be ordered where there is a potential for injury to the interests of the absent sovereign.
Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).
The patent act creates a cause-of-action for patent infringement, and the en banc question presented quotes from from the statute:
A patentee shall have remedy by civil action for infringement of his patent.
35 U.S.C. 281. The petition mentions that on remand it will be able to raise this issue and dismiss the case since Gensetix is not a “patentee.” The FedCir has held that exclusive assignees can be considered a patentee if they have “all substantial rights” to the patent. In this case, Gensetix originally argued that it had all substantial rights, but now admits that it does not. Thus on remand this may become a standing issue.
In a terse opinion, Judge Hughes has affirmed the demurrer (12(b)(6) decision by Judge Sweeney (S.D. Ind) holding Tenstreet’s U.S. Patent No. 8,145,575 invalid as directed toward an abstract idea.
The holding: even if the invention provides “advantages over the previous method,” it is not patent eligible without a “technological improvement beyond the use of a generic computer.” In essence, “do it on a computer” is not enough for patent eligibility. Judge Hughes writes:
[The patent claims arguably] provide three advantages over conventional processes for employment verification: (1) a single channel for routing transmissions; (2) the ability for job applicants to monitor the verification process; and (3) database storage of employment history.
The test for patent-eligible subject matter is not
whether the claims are advantageous over the previous method. Even if the ’575 patent provides advantages over manual collection of data, the patent claims no technological improvement beyond the use of a generic computer network. Accordingly, the district court correctly determined that the ’575 patent claims are directed to the abstract idea of collecting, organizing, and storing data on a conventional computer network, and that the ’575 patent claims recite no elements that transform them to patent-eligible applications.
Claim 1. A method for peer-to-peer sharing of job applicant verification data over a network, the network comprising; a computerized exchange being in communication with one or more requesters, providers, and job applicants; the exchange managing one or more interactions of each requester, provider, and job applicant with the exchange; each requester being an entity seeking verification data about one or more job applicants, each provider being an entity in possession of the verification data of one or more job applicants and providing the verification data in response to a request for the verification data, the verification data disclosing a status of the job applicant during a period of time; said method comprising the steps of:
allowing one or more communication channels to interface with the exchange;
assigning an attribute to each requester, provider, and job applicant, the attribute defining the communication channel accessible to each requester, provider, and job applicant in transmitting data to the exchange and receiving data from the exchange;
receiving a verification request from a requester through the communication channel of the requester;
comparing, by the computerized exchange, the verification request with requirements;
routing the verification request to a provider through the communication channel of the provider;
receiving verification data provided by the provider in response to the verification request through the communication channel of the provider; and
routing the received verification data through the communication channel of the requester;
wherein at least one requester is also a provider for a second requester and at least one provider is also a requester for a second provider, the at least one requester providing verification data to the exchange for a period of time in which a respective job applicant was employed by the at least one requester and the second provider providing verification data to the exchange for a period a time in which the same or a different respective job applicant was employed by the second provider.
The following comes from the Amy Coney Barrett Senate Confirmation Hearing Day 3 Transcript
Senator Tillis: (54:08)
I was talking with Senator Coons, who is the ranking member on a committee that I chair, a sub-committee here on intellectual property. We’ve done a lot of work and we’re working on a bipartisan bicameral basis. And I have to thank Senator Blumenthal for probably being one of the more active members in this committee. I think it’s an area where we really are working on a bipartisan basis.
Moving to [an] area that’s been addressed on the committee on intellectual property and patent law eligibility. As chairman of the subcommittee, I’m really interested in protecting the intellectual property of the American innovation economy. There’s no question that we’re the leader in the world. But in recent years we’ve seen a lot of Supreme Court cases that have waded into patent eligibility, producing a series of opinions that have really muddled the waters. And in some cases, I agree with the decision but I worry about the methodology that they used to get there. So, I’m curious about your thoughts. In my committee, we’ve talked about specific cases that we could potentially abrogate if we could get bipartisan support and we’re in those discussions. But what are your thoughts on the Supreme Court’s rulings on patent eligibility? And do you think that the court should go back and clarify at least the method that they use to reach their opinion?
Amy Coney Barrett: (57:01)
So, without commenting on any particular cases, which actually I have to be completely honest and confess to, I can’t think of what particular cases you might be thinking of in the patent eligibility. But without commenting on those cases in any event, I think I would say that clarity in decision-making is always something that courts should strive for. And I know on the seventh circuit, we try and I’m trying to be attuned to in writing opinions, whether it gives good guidance to lower courts and then to also those who are trying to order their conduct in compliance with the law. So, I think clarity is certainly a virtue in this context.
Senator Tillis: (57:38)
And I think that we’re working, like I said, on a bipartisan bicameral basis to help or do it on our part. Copyright law and technology is other area that we’ve focused quite a bit on. I think I had one witness say that our current laws are MySpace laws in a TikTok world. There’s a lot of changes that have occurred. And we feel like there’s a need for us to maybe move forward with some clarity and some protections. The Supreme Court has spent more than a century answering questions about whether copyright law covers new technologies like cameras, player pianos, moving pictures, the list goes on, several internet enabled technologies. Do you think that the Supreme Court is the best institution to answer these questions or is that a role Congress should play?
Amy Coney Barrett: (58:29)
Most of the things you’re identifying sound to me like matters of policy. And so, those seem like matters that are best addressed by the legislature, a democratically elected body, not policy made by courts.
Although this case comes from an inter partes review, it is one that could be used by patent prosecutors when discussing claim meaning with examiners. The basic principle here is that the “broadest reasonable interpretation” of a claim must be considered “in light of the specification.” Here, the claims did not spell-out a sizing limitation for an artificial heart valve, but the size was apparent from the specification.
I feel really bad about this, but whenever I see a Snyders lawsuit, I cant stop thinking back to the late 1990’s when I used to eat Snyder’s mustard flavored pretzels.
This case is not about pretzels, but rather focuses on Snyders artificial heart valve patent US6540782. Eat your heart out?
Snyders sued St. Jude for infringement in D.Minn and St. Jude responded with a pair of inter partes review (IPR) petitions. The PTAB initiated the IPRs and eventually ruled that some of the claims were anticipated by a prior patent.
IPR2018-00105: PTAB sided fully with the patentee on obviousness and anticipation challenges based upon Leonhardt
IPR2018-00106: PTAB sided partially with the challenger — finding claims 1, 2, 6, and 8 anticipated by the Bessler patent, but finding the remaining claims patentable.
Both parties appealed, and the Federal Circuit has fully sided with the patentee Snyders.
The focus of the appeal was on construction of the following claim term
… a flexibly resilient frame sized and shaped for insertion in a position between the upstream region and the downstream region…
Basically, the artificial valve includes a bendable frame that will fit in the natural valve position. It also includes attachment hooks to hold it in place.
An important aspect of Snyders valve is that it can be inserted into place without removing the native damaged valve. The key prior art (Bessler) also disclosed a valve insert, but it was sized to fit the valve location after removal of the damaged valve. The problem for Snyders is that the claim language does not make this distinction explicit. Rather, the claim only requires that the frame fit in the position between the upstream and downstream regions (i.e., the original valve location). Thus, the PTAB broadly interpreted the claim language to also cover a frame “sized and shaped” to fit in the location after removal of damaged heart material.
On appeal, the Federal Circuit reversed the claim construction — holding that sized to the native-valve-space should be read into the claim, even when applying the broadest reasonable interpretation:
The claim’s reference to “repairing a damaged heart valve,” without any reference to removal, suggests that the native valve remains. So too does the claim’s reference to the damaged heart valve “having a plurality of cusps,” which appears superfluous if claim 1 is interpreted to include embodiments where the damaged valve and its cusps are removed. . . .
The specification states that “the frame is sized and shaped for insertion between the plurality of cusps C of the damaged heart valve in a position between an upstream region and a downstream region.” . . . Moreover, the specification stresses that the artificial heart valve it discloses can be inserted without removing the native valve and that this is an improvement on the prior art.
Slip Op. The specification actually particularly references Bessler as problematic prior art that requires “removal of the native valve, cardiopulmonary bypass and
backflushing of the coronary arterial tree.” Snyders explains that its approach avoids those major procedures.
Finding of anticipation reversed. Now the case will go back to Minnesota to consider infringement and perhaps other invalidity arguments.
The Supreme Court has granted Certiorari in Arthrex on the questions of whether Administrative Patent Judges (APJs) were properly appointed under the U.S. Constitution and, if not, what is the proper remedy.
None of the appellants were satisfied with the Federal Circuit’s decision in the case and each petitioned for Supreme Court review. Subsequently, the U.S. Gov’t filed a memorandum walking through what it saw as the three unifying questions presented in the case. The court has granted hearing on only the first two questions.
1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.
2. Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.
3. Whether the court of appeals in Arthrex erred by adjudicating an Appointments Clause challenge that had not been presented to the agency.
The case stems from an inter partes review (IPR) conducted by Administrative Patent Judges (APJs) at the Patent Trial & Appeal Board (PTAB). Arthrex is the owner of U.S. Patent No. 9,179,907 — a patent claiming an assembly for securing soft tissue (such as a tendon) to a bone without requiring the surgeon to tie any knots. Smith & Nephew successfully challenged the patent via IPR, with the PTAB APJs concluding that the challenged claims were unpatentable as anticipated. On appeal, Arthrex challenged the decision on constitutional (appointments clause) grounds; Smith & Nephew defended the decision, and the USPTO (U.S. Gov’t) also intervened to support the decision of its PTAB judges.
At the Federal Circuit, the original decision was authored by Judge Moore and joined by Judge Reyna and Chen. The court subsequently denied en banc rehearing. The denial include five separate opinions, including an additional opinion by Judge Moore defending her original opinion and a concurring opinion by Judge O’Malley. Judge Dyk wrote in dissent as did Judge Hughes and Judge Wallach. Four of the Judges did not indicate their vote (Chief Judge Prost and Judges Lourie, Taranto, and Stoll). Based upon the result (en banc denial), at least two of them voted to deny rehearing.
The newest Supreme Court patent eligibility case was recently filed by Rudy Telscher in Consumer 2.0, Inc., D/B/A Rently v. Tenant Turner, Inc. (Supreme Court 2020). Rather than directly challenging Alice Corp., Rently argues that the Federal Circuit has done a poor job of implementing the Supreme Court’s guidance. The Supreme Court decisions on eligibility are focused on avoiding improper preemption. While mouthing the word preemption as a goal, the Federal Circuit has repeatedly ruled that preemption forms no part of its eligibility test.
In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), this Court laid out the standards for analyzing patent eligibility under 35 U.S.C. § 101, and explained the main concern undergirding the analysis was one of preemption. This Court did not lay out the exact boundaries of the test, but rather had previously instructed the Federal Circuit may expand on the test so long as it was consistent with the statute. The Federal Circuit however routinely skips the preemption analysis, and has imported a quasi-section 103 analysis into Step Two of the test for determining whether the claims recite only “conventional” features or amount to “something more” than a claim on the abstract idea itself.
The questions presented here are:
1) Whether preemption is a threshold and defining consideration that the lower courts must consider in determining whether a claimed invention is directed to patent eligible subject matter under Section 101, and
2) Whether the courts below have erred in conflating the Step Two conventionality analysis of Alice with the factual prior art patentability analysis of Section 103, without the evidentiary opportunities and protections against hindsight bias afforded by Section 103 and in conflict with this Court’s precedent in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
An interesting aspect of this case is the newness of the patent at issue. U.S. Patent No. 9,875,590. During prosecution, the examiner cited to Alice and rejected the claims as ineligible. The patent applicant then amended the claims to overcome the rejection. Then, during litigation the district court found the claims ineligible as a question of law and that determination was affirmed on appeal.
Claim at issue:
7. A method for providing automated entry to properties, comprising:
making properties available for viewing to invited visitors;
providing an application interface of an application running on a computing system to a property manager, the property manager being a manager, a listing agent or an owner of the property, the application interface prompting the property manager to enter a visitor name and contact information for a visitor, wherein upon receipt of the visitor name and contact information, the application provides the visitor with an invitation to receive automated entry information including code information that is valid during a specified period of time so that the visitor can enter a property by themselves, the invitation being delivered to the visitor electronically, the invitation being applicable only to the property and the invitation requesting identification from the visitor;
placing a lock box or an automated door lock at or near each property;
upon the application receiving and confirming identification information for the visitor, providing, by the application, automated entry information to the visitor that allows the visitor to enter the property, the automated entry information including code information that is valid during the specified period of time;
upon the visitor providing the code information to the lock box or the automated door lock at the property within the specified period of time, the lock box or automated door lock opening to facilitate automated entry to the property;
tracking visitor activities at the properties; and
making information about the properties available within a user interface.
New PatentlyO Law Journal article by retired Chief Judge of the Federal Circuit Court of Appeals Paul R. Michel and John T. Battaglia, Esq.
The entire point of a healthy patent system is on spurring invention and investment, by rewarding inventor and investor alike, big or small, with exclusive rights of limited duration, for their inventive risks and contributions. Otherwise, without such patent rights—or with fewer such rights—the incentives to invent diminish, or such inventive resources will re-locate.
Two Different Patent Laws: One for Manufacturers, Another for NPEs
With that backdrop, we address the disparate-treatment problem that currently defines the U.S. patent system. Those entities that manufacture a product claimed by a patent, and successfully enforce that patent in court, often still obtain an injunction, consistent with the “right to exclude others” that Congress granted to “[e]very patent. But for nearly 15 years, those entitles that invest in invention rights and buy and license patents—be they university research arms or non-practicing licensing entities (NPEs or so-called “trolls”)—often haven’t bothered even seeking injunctive relief in litigation. Why?
The answer is that the federal courts over time have misunderstood and misapplied the Supreme Court’s landmark 2006 decision in eBay Inc. v. MercExchange, L.L.C.
Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29. (Morgan.2011.AIAAmbiguities)
Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC): Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
In my patent class, I just had my students act like patent-examiners and write rejections for pending patent claims. These are all real-cases that recently published and have not yet been examined. My question what should I do with their results:
Have the students submit their prior art to the PTO under 37 CFR § 1.290 and 35 U.S.C. § 122(e)?
Have the students send their prior art to the patent attorney who filed the cases? or
Just sit on it and see whether the Examiner finds the same or better prior art?
Third party 122(e) Submissions:
My patent law students just did a patent-examination exercise (searching for prior art + writing rejections). These are real cases that have not yet been examined.
My question for the group — What should I do with their results.
This 30 second clip comes from a recent Federal Circuit oral arguments in a case captioned In Re Google Technology Holdings LLC (2019-1828). The voices you hear are Judge Chen asking a question and Kathryn Kayali representing Google.
Until recently, patent applicants have always been the human inventors. Now the law allows the patent owner to serve as the applicant. Thus, rather than identifying Bogdan Carbunar as the inventor, the caption as well as the briefing identify Google as the innovative entity. The following quote is just one from Google’s briefing:
Google explains here that it (not the inventor) recognized the networking congestion problem and that it was the company (rather than the inventor) who developed a solution.
Centripetal Networks, Inc. v. Cisco Systems, Inc. (E.D. Va. 2020)
Here is the punchline of this recent decision:
The Court FINDS the actual damages suffered by Centripetal as a result of infringement total $755,808,545; that the infringement was willful and egregious and shall be enhanced by a factor of 2.5x to equal $1,889,521,362.50. … The Court, additionally, imposes a running royalty of 10% on the apportioned sales of the accused products and their successors for a period of three years followed by a second three year term with a running royalty of 5% on said sales upon the terms described supra. It DENIES any further relief to Centripetal at the termination of the second three year term.
Apart from the $1.8 billion judgment, the case is interesting because it involved a 22 day bench trial (no jury) via video. Ironically, Cisco had objected to video conferencing — especially because the court was not using Cisco tech. The patents here relate to secure network communications.
GSK’s patent at issue here covers a method of treating congestive heart failure with the drug carvedilol (Coreg) along with an ACE inhibitor, a diuretic and digoxin. RE40,000. Claim 1 below is representative and shows the limitation added during the reissue process:
1. A method of decreasing mortality caused by congestive heart failure in a patient in need thereof which comprises administering a therapeutically acceptable amount of carvedilol in conjunction with one or more other therapeutic agents, said agents being selected from the group consisting of an angiotensin converting enzyme inhibitor (ACE), a diuretic, and digoxin,
wherein the administering comprises administering to said patient daily maintenance dosages for a maintenance period to decrease a risk of mortality caused by congestive heart failure, and said maintenance period is greater than six months.
RE40,000 (original US Pat 5,760,069). Each of these drugs were already known for treating heart disease, and the narrowing reissue was filed after Teva first challenged the patent.
Teva did a couple of things to avoid infringement. First, Teva waited until 2007 to launch its product — that was when the underlying patent on the drug carvedilol expired. Second, Teva attempted to avoid directly market its drug for the purposes of treating congestive heart failure. In particular, its product labelling focused instead on hypertension and Ventricular Dysfunction following MI (two non-patented approved uses of the drug). However, in 2011 the FDA required Teva to alter its labelling to be identical-in-content to the approved GSK product. Thus, in 2011 Teva added treatment for heart failure as an indication for treatment.
Once the labeling was changed, GSK then sued for inducing doctors to infringe.
271(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
At trial the jury sided with the patentee — finding the patent valid and willfully infringed and then awarding $234 million in lost profit damages.
Post-trial, the district court flipped the award — finding insufficient evidence that Teva “actually caused” any particular physician to infringe. “Without proof of causation, which is an essential element of GSK’s action, a finding of inducement cannot stand.” District Ct. Awarding JMOL. The district court noted lots of publications and promotions informing physicians about how to use the product to treat heart failure — none of which came from Teva. Practicing doctors don’t read the fine-print on the side of the bottle. In fact, GSK’s MD expert admitted that he did not read the Teva label before prescribing.
On appeal here, the Federal Circuit has reversed — holding that the circumstantial evidence of inducement was sufficient. In particular, in this situation Doctors relied upon Teva’s statements that its drug was interchangeable with GSK’s — a “complete replacement.” My Mizzou colleague, Professor Erika Lietzan testified as a FDA-expert for GSK at trial. Her testimony includes the conclusion that (1) the “AB-rating” of the generic indicates that the products are interchangeable; and (2) comparing GSK’s product by-name creates an implication of interchangeability.
The majority opinion here was written by Judge Newman and joined by Judge Moore. Chief Judge Prost wrote in dissent — arguing that the decision here undermines the balance between innovator incentives and the introduction of lower-cost generics.
Teva waited until GSK’s patent covering the carvedilol compound expired to launch its product covering two unpatented indications hypertension and post-MI LVD. So, when GSK’s ’000 reissue patent later issued—reciting a narrow method of treating a third indication, CHF—Teva’s skinny label did not even suggest using its product according to the patented method.
At the FDA’s direction, Teva amended its label years later to include the patented method, but there was still no inducement via the full label. Nothing changed in the market, and doctors’ prescribing decisions were not affected. By that time, GSK could not rely on Teva’s ANDA as an artificial act of infringement. Thus, to prove induced infringement, GSK had to show that Teva actually caused doctors to directly infringe the ’000 patent. It failed to do so.
Dissent. With regard to Prof. Lietzan’s testimony, the dissent quoted to her same statement regarding AB-rating — noting that “AB rating reports therapeutic equivalence only ‘if the generic drug is used in accordance with the label.'” The AB-rating does not apply to “off-label uses.”
= = = =
The majority also sustained the jury’s damages verdict. Teva argued that the lost-profit award was improper because there were other generic versions on the market. If Teva hadn’t been on the market then the sales would have gone to the other generic producer — not back to the higher-priced GSK. In its decision, the district court identified the other generic versions as “infringing alternatives” (GSK is in a separate lawsuit against them) and thus should not count in the economic picture of lost profits. On appeal, the Federal Circuit affirmed — holding that “The district court correctly instructed the jury that the availability of carvedilol from other generic producers is not a ‘noninfringing substitute.'”
Thus, in the end, the jury verdict is reinstated and Teva will have to pay the money. Note — the ‘000 patent is also expired and so generics continue to be available.
= = = =
Presumably, Teva could have avoided infringement by sending notices to pharmacies and doctors to avoid proscribing its product for congestive heart failure.
Oral Argument set for October 7, 2020 in Google v. Oracle.
(1) Whether copyright protection extends to software code and the organizational structure of a programming language; and
(2) Whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.
What is the role of the Jury in deciding fair use? (Raised by the Court)
What is the role of patents in the protection of a software code? (Raised by Crouch)
Following its first conference, the Supreme Court has denied certiorari in a number of patent cases. In particular, the court has denied certiorari in all the patent cases ready-for-conference with the notable exception of the Arthrex cases focusing on appointments clause issues are still pending.
Constitutional challenge to Admin Patent Judges: United States v. Arthrex, Inc., No. 19-1434; Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-1452; Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458; Polaris Innovations Limited v. Kingston Technology Company, Inc., No. 19-1459. These cases remain the most likely for certiorari.
Retroactive application of IPR to already applied-for patents: Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204.
AIA Challenge: Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 19-1451;
Divided Infringement and 271(g): Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147.
Federal vs State Law for Patent Licensing: Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68.
Right to a Jury Trial on Specific Performance of FRAND license: TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269.
Patent Eligibility: The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32.
Due Process Issues Regarding Sua Sponte Judicial Order: Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351.
Appealing IPR Termination:BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381.
Power of PTO To Exclude Patent Attorney: Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844.
Obviousness – Nexus for Secondary Indicia: SRAM, LLC v. FOX Factory, Inc., No. 20-158.
This Week’s Conference:
Voiding a patent after a damage award: Phazzer Electronics, Inc. v. Taser International, Inc., No. 19-1378
Arthrex Appointments Issue: Essity Hygiene and Health AB v. Cascades Canada ULC, et al., No. 20-131; ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228; Customedia Technologies, LLC v. Dish Network Corporation, et al., No. 20-135 (also eligibility question)
The “Respondent” has a right to file a response to a petition for writ of certiorari. However, as a strategy (and money saving device), many repondents waive their right. In cases of interest, the Supreme Court will often request a response. However, the request for response need only be requested by a single Justice. And, some of the justices have reportedly given authority to their law clerks to file the request.
Are the Fed. Reserve Banks “People” or “the Government”: Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al., No. 20-333
Reasonable Royalty and Apportionment: Cochlear Corporation, et al. v. Alfred E. Mann Foundation for Scientific Research, et al., No. 20-362
Notice and Damages: Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al., No. 20-355
Sowinski v. California Air Resources Board (CARB), Docket No. 19-01558 (Fed. Cir. 2020) (en banc petition)
When I first wrote about this case, I explained my view that the Federal Circuit issued “a really poor decision” in the way that it recklessly expanded-out the scope of claim preclusion without consideration of the impact. The case was decided just after Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 140 S. Ct. 1589 (2020). In that case, the court clamped-down on expansion of issue or claim preclusion beyond their traditional bounds.
The setup is explained in Sowinski’s petition for en banc rehearing:
Petitioner brought an earlier infringement action against the defendant that was dismissed [with prejudice] under the district court’s local rules for failure to prosecute [without addressing] the underlying merits of the infringement allegations.
After that earlier litigation was final, petitioner brought a second suit against the same defendant, asserting the same patent against the same infringing activity—but limited to “damages only for infringement after the decision in Sowinski I.”
In this setup, there is no issue preclusion because no issues were actually decided in the first lawsuit — rather the case was dismissed for procedural grounds. Claim preclusion does apply, but is limited to claims that were brought (or should have been been brought under the same-transaction test) in the first action.
This is where we get into some patent law doctrine regarding post-judgment acts of infringement:
[T]raditional notions of claim preclusion do not apply when a patentee accuses new acts of infringement, i.e., post-final judgment, in a second suit—even where the products are the same in both suits.
This is where the Kessler doctrine comes into play (although not actually cited or addressed in the opinion).
Under the panel’s disposition, petitioner’s infringement suit is barred despite presenting new issues and new claims that no court has ever resolved. In past cases, this Court readily acknowledged that this result is squarely at odds with ordinary principles of issue and claim preclusion. But this Court has nevertheless barred such actions entirely, applying its own unique understanding of the so-called Kessler doctrine: under this Court’s decisions, once a defendant obtains any prior judgment of non-infringement, all future litigation over the same product is forever barred, even if it involves issues unadjudicated by any court and claims arising after the initial judgment (i.e., post-judgment acts of infringement)—a fact-pattern that would permit litigation to proceed in every other circuit in all non-patent cases.
Petition. Note here that the Federal Circuit decision does not cite to the Kessler Decision, but instead appears to shift its approach to capturing the post-judgment actions as captured by claim preclusion. That shift makes sense when considering the Lucky Brand warning against non-uniform preclusion principles.
As the Supreme Court just reiterated, the world of preclusion “comprises two distinct doctrines”—issue preclusion and claim preclusion. There is no third doctrine “unmoored from th[ose] two guideposts.” Lucky Brand(“our case law indicates that any such preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion”).
The following question is one I taught in Civil Procedure earlier this semester:
May a motion for Rule 11 sanctions be granted when the moving party fails to serve the motion on the nonmoving party prior to filing?
In my class, I taught that R.11(c)(2) prohibits a party from filing a R.11 motion for sanctions without first serving “the motion” on the non-moving party (and waiting 21 days).
My students: What if we the moving party provides notice by sending an email to say that they are planning to file a motion and explaining the reasons?
Crouch: No, the rule says that you have to serve “the motion;” not just provide notice of your concern.
In Khan v. Hemosphere, Inc., the Federal Circuit disagreed with my analysis of the rule. In particular, the court held that the Khans were sufficiently “on notice of [defendants’] intent to seek sanctions” based upon a series of letters sent to the Khans indicating that a sanctions-motion was coming. Thus, although the Khans were not served with “the motion” they were sufficiently on notice.
Khan Petition for Rehearing: In their petition, the Khans argue that the Federal Circuit’s “conclusion that warning letters of the type at issue here can take the place of the ‘motion’ required by Rule 11(c)(2) breaks sharply with the text of the Rule, and with every other Court of Appeals to consider the issue—including the Seventh Circuit.” Here, the 7th Circuit is important because this case arose in Illinois and the regional circuit’s law should apply to this non-patent related issue. The 7th Circuit is also important because it is an outliner in allowing “substantial compliance” with the R. 11 rather than sticking to “the motion” rule. The 7th Circuit’s approach appears to have begin with a flippant ruling by Judge Easterbrook in Nisenbaum v. Milwaukee County, 333 F.3d 804, 808 (7th Cir. 2003). In that case the court decided without any analysis that “substantial compliance” with the notice requirement is sufficient.
In its decision, the Federal Circuit cited to Matrix IV, Inc. v. Am. Nat’l Bank & Tr. Co., 649 F.3d 539, 552–53 (7th Cir. 2011), which stated that “a letter informing the opposing party of the intent to seek sanctions and the basis for the imposition of sanctions” was sufficient. In its petition for rehearing, Khan explains that the Matrix IV statement was dicta and insufficient to overcome other 7th Circuit decisions which require the to-be-sanctioned-party an “opportunity to withdraw or correct the challenged pleading within 21 days without imposition of sanctions.” Khan argues that the 21-day opportunity was not given here.
Wright & Miller suggest that informal notice as provided here is insufficient:
Note that informal notice—rather than formal service—of a potential violation is insufficient to trigger the beginning of the twenty-one day safe harbor period. The Advisory Committee Note explains that although informal notice does not trigger the safe harbor period, it usually is expected that informal notice will be given before a party prepares and serves a formal motion under Rule 11 for sanctions.
§ 1337.2Procedural Aspects of Rule 11 Motions—The Safe Harbor Provision, 5A Fed. Prac. & Proc. Civ. § 1337.2 (4th ed.).
I hope the Khans win here, otherwise I’ll be forced to change my syllabus.