A Small Step on Choice of Forum Issues with PTAB

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Bally Gaming) (Fed. Cir. 2021)

In a pair of CBM decisions, the PTAB found New Vision’s patent claims ineligible under Section 101.  New Vision had proposed alternative claims, but those were also found to be invalid. On appeal, the Federal Circuit did not review the merits, but instead vacated and remanded on Arthrex grounds.

New Vision requests that we vacate and remand the Board’s decisions in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court. Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.

Slip. Op.

Judge Newman authored an opinion that dissents in-part.  In particular, Judge Newman argued that the choice-of-forum clause in a contract between the parties required any dispute over the patent to be resolved in a Nevada-based court, not in the USPTO.  “The Board refused to respect the forum selection agreement, and proceeded to final decision of the petitions.”  Judge Newman argued that the appellate panel should consider the issue before remanding.

Judge Newman particularly wanted to decide this issue here with her colleague Judges Moore on the panel (along with Judge Taranto).   A parallel question is question under consideration in Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021).  Oral arguments are expected in that case in July 2021 before a yet-to-be-disclosed panel.

The Public Private Nature of Patents

U.S. Patent Nos. 7,451,987 and 7,325,806.  The parallel litigation (filed in Nevada) is stayed pending outcome of the CBM review. New Vision Gaming &
Development, Inc. v. Bally Gaming Inc., No. 2:17-cv-01559-APG-BNW (D.
Nev.).

Obfuscation and Patenting of @#$%

by Dennis Crouch

Profs. Sarah R. Wasserman Rajec and Andrew Gilden recently posted a draft of their new article “Patenting Pleasure.”  If you cannot discern the topic from their title, Prof Nicholson Price has also just published a review essay titled Illegal Sex Toy Patents. Price describes the “central tension” from the article:

Because of the utility doctrine, patentees must say what their inventions are for—but because US law has been generally quite hostile to sex and sex tech, pleasure patents have to say they are for something other than, well, pleasure. In the heart of the piece, Rajec and Gilden carefully catalog these descriptions over time, revealing a changing picture about what sorts of purposes were considered acceptable sex tech—at least, in the eyes of the USPTO.

Price.  Some amount of obfuscation will be familiar to patent attorneys today across various fields.  Although not illegal, most patents avoid detailing the core invention — what really is the improvement over the prior art.  Likewise, some patent attorneys will have walked the tight-line between the patentability disclosure requirement and client-interest in keeping certain trade secrets.  Some patent attorneys are hard at work attempting to beat the PTO’s AI system that routes patent applications to the various art units (some of which are seen as more favorable than others).  Many are also trying to figure out ways to patent inventions that are close to the abstract-idea line without sending the case back to the inventors for more inventing.  Perhaps all of this goes along with traditional core roles of attorneys — advocating and keeping secrets.

In any event, Rajec-Gilden do not include any of the patent drawings and should be safe for reading on the train.

 

US Patent Number 11,000,000

by Dennis Crouch

On May 11, 2021, the USPTO issued US Patent Number 11,000,000.  Eleven million. Don’t forget that the office has issued another 1,000,000 design+plant patents and an additional 10,000 patents from 1791 to 1836 before the current numbering system was established.  I was a junior in college at Princeton when Patent No. 5,500,000 issued to John Feagin covering a zip-tie method for suturing. Over the past 25 years, the number of U.S. patents has effectively doubled.

U.S. Patent No. 11,000,000 is one of a family of inventions owned by 4C Medical Tech. of Minneapolis directed to heart surgery tools. The inventors are Saravana Kumar and Jason Diedering.  The patent claims a method of delivering and also repositioning a prosthetic heart-valve (AltaValve) that is used to repair a leaky-valve issue experienced by several million Americans (typically over age 75).

The invention itself is quite simple — basically, there is a catheter tube with a set of wire pairs.  Each pair includes one wire with a looped end and a second with a straight end.  The pairs work together to deliver, release, and position the prosthetic valve within the heart.  The claims were rejected as obvious and then allowed after a fairly minor amendment.

The patent and its family have been prosecuted by Jeff Stone and his team at Barnes & Thornburg (Minneapolis).  Check back here in Spring 2024 when I’m expecting an announcement for Number 12,000,000.

From the USPTO: https://www.uspto.gov/about-us/news-updates/united-states-issues-patent-number-11000000

 

Clash of Clans: $92 million and Eligibility Issues

GREE, Inc. v. SuperCell Oy (Fed. Cir. 2021) (nonprecedential)

SuperCell is a Finnish company that makes and distributes the mobile game “Clash of Clans.”  SuperCell is owned primarily by the Chinese multinational Tencent, the “world’s largest video game vender.”  The patentee GREE is a Japanese mobile game developer and holds a number of mobile-device game related patents.

On May 7, 2021 a jury sided with Gree in a patent infringment lawsuit, holding SuperCell liable and awarding $92 million in infringement damages.

GreeSuperCellVerdictForm.  The jury also found the infringement willful and that the patent claims were not invalid.  In the coming months, Judge Gilstrap will rule on the soon-to-be-filed JMOL motions and also rule on the question of enhanced damages associated with the adjudged willful infringement. GREE also asked for injunctive relief in its final pre-trial contention and so that will come up as well.

Today, the Federal Circuit decided a parallel case involving a separate GREE patent — not one subject to the recent jury verdict. U.S. Patent Number 9,897,799.  For this patent, SuperCell filed a petition for Post Grant Review. The PTO granted the petition and eventually found the claims invalid under Section 101. On appeal here, the Federal Circuit has affirmed that judgment. In particular, the appellate panel agreed that the claims are directed to “the abstract idea of associating game objects and moving one or more of the objects.”  Further, the claims did not include any inventive step going beyond the routine and conventional.

The most important part of this decision is where the court (effectively) says “Claim It.”  There is some suggestion in the caselaw that a patentee might describe specific improvements within the detailed description and then include broader claims that encompass those improvements, but at a more general level.  Here, GREE described particular syntax of touches and swipes within the specification. ON appeal, the Federal Circuit found that those elements didn’t count for the Alice analysis because they were not claimed.

The Board also correctly explained that none of the syntax of touches and swipes that GREE cites as its inventive step are captured in any of the elements of the claims.

Slip Op.

= = = = =

1. A computer-implemented method for operating a computer game, the method comprising:

storing, in a storage module, a plurality of virtual objects and the arrangements of those virtual objects on a game field;

accepting, via an input face configured to detect a touch operation, operation information regarding a touch operation performed by a user;

associating, using a processor, a plurality of virtual objects as a group; determining, using a processor, whether the operation information comprises a direction operation;

upon determining that the operation information comprises a direction operation, moving, using a moving processor, one or more of the plurality of associated objects as a group in the direction indicated by the direction operation;

storing, in a storage module, the new arrangements on the game field of the one or more of the plurality of associated objects moved with the moving processor;

displaying, on a computer screen, the game field and the plurality of virtual objects arranged on the game field; and

displaying, on a computer screen, the new arrangement on the game field of the one or more of the plurality of associated objects moved with the moving processor.

= = = = =

Going back to the $92 million case, The following patents are at issue.

  • Claim 3 of U.S. 10,328,346
  • Claim 8 of U.S. 10,335,689
  • Claim 1 of U.S. 10,076,708
  • Claims 2 and 3 of U.S. 10,413,832
  • Claims 1 and 6 of U.S. 9,079,107
  • Claims 1 and 5 of U.S. 9,561,439

On appeal, SuperCell will likely argue that these are all invalid as ineligible (along with other issues)

(Non)Precedent on Venue Transfer?

by Dennis Crouch

In TracFone, the Federal Circuit issued two strongly worded strongly worded mandamus opinion relating to venue.

  • In re TracFone Wireless, Inc., 2021-118, 2021 WL 865353 (Fed. Cir. Mar. 8, 2021) (remanding for a ruling on venue); and
  • In re TracFone Wireless, Inc., 2021-136, 2021 WL 1546036 (Fed. Cir. Apr. 20, 2021) (ordering transfer under 1404(a)).

The March 2021 decision orders W.D.Tex. Judge Albright to immediately decide TracFone’s venue motions (and write a reviewable opinion).  Judge Albright immediately complied by denying TracFone’s motion to dismiss or transfer the case. The Federal Circuit’s April 2021 decision concluded that Judge Albright had “abused [his] discretion.”  The appellate panel then ordered the case to be transferred to Florida.

Although the April 2021 decision provides finality, it is actually the March 2021 decision that is perhaps more interesting. The appellate panel ordered immediate action on the venue question and generally suggested that a district court should drop-everything to decide venue motions.  The judge’s familiarity with the facts/law of a particular case is typically seen as relevant the outcome of an inconvenient venue motion under 1404(a).  In its decision though, the court held that the district court should not consider any familiarity it has gained after the filing of the complaint:

[W]e remind the lower court that any familiarity that it has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.

Slip Op.

One problem with this decision is that it is non-precedential.  Thus, the clear language has limited value going forward. Now, a group of law professors have petitioned to reissue the decision as precedential.

This Court should reissue its TracFone order as precedential to definitively establish the law regarding improper delays in ruling on transfer motions and requests for stay pending the resolution of such motions. Absent clear precedential guidance, courts may continue to disregard this court’s nonprecedential instructions and make procedural errors that force parties to settle or to litigate in an inappropriate, inconvenient, and costly forum.

Motion to Reissue as Precedential. Federal Circuit Local Rule 32.1 provides the following procedure for this type of motion:

Within sixty (60) days after the court issues a nonprecedential opinion or order, any person may request through motion filed in the case that the opinion or order be reissued as precedential. The request will be considered by the panel that rendered the disposition. The motion must identify any case that person knows to be pending that would be determined or affected by reissuance as precedential. Parties to pending cases having a stake in the outcome of a decision on the motion must be given an opportunity to respond. If the request is granted, the opinion or order may be revised as appropriate.

Rules.  The motion was filed by Stanford’s IP Clinic (Philip Malone) on behalf of a group of law professors led by Mark Lemley.

I’ll note here as an aside that some of the language here could also be applied in the context of stays of litigation pending outcome of an AIA trial. Judge Albright has generally taken an approach of refusing stays in most cases.

= = = =

In re Western Digital (Fed. Cir. 2021). In a separate decision today, the Federal Circuit denied Western Digital’s petition for writ of mandamus to escape from W.D. Tex.  The appellate panel did find that Judge Albright had applied the wrong legal standard by stating Western-Digital faced a “heavy” and “significant” burden before a case would be moved for convenience.

To be sure, the district court incorrectly overstated the burden on WDT as “heavy” and “significant.” but see Volkswagen, 545 F.3d at 314–15 (explaining that Congress intended to grant transfer under section 1404(a) upon a lesser showing of inconvenience than the “heavy burden” traditionally required under the forum non conveniens doctrine).

Slip Op. Still, the court found no abuse of discretion in denying transfer:

Although we may have evaluated some of the factors differently, we are not prepared to say that the district court’s ultimate conclusion that the transferee venue was not clearly more convenient amounted to a clear abuse of discretion.

Id.

= = = = =

One issue with this exercise has to do with the Federal Circuit’s approach to non-patent issues that come before the court. Motions to transfer under 1404(a) (inconvenient forum) are not patent-specific and so the Federal Circuit applies the law of the regional circuit court of appeals rather than its own precedent. For these cases out of W.D.Tex., the court applies 5th Circuit law regarding transfer of venue rather than its own precedent.  Likewise, lower courts follow 5th circuit law rather than Federal Circuit law. Thus, we have a question of what role a precedential opinion on this point would actually serve.

WTO Global Health: Shifting away from a Punishment Mindset

By Sapna Kumar, Law Foundation Professor of Law at the University of Houston Law Center

While COVID-19 cases continue to drop in the United States, many countries are fighting resurgences of the virus and struggling to obtain vaccines and medical supplies. Back in October, India and South Africa petitioned the World Trade Organization (WTO) to waive all IP protection surrounding drugs and medical products needed to combat the pandemic. The petition also called for “the unhindered global sharing of technology and know-how.”

Existing safeguards regarding IP rights during public health emergencies have some issues. TRIPS Article 31 permits countries to issue compulsory licenses of patented technology, but the process for importing patented drugs is cumbersome under Article 31bis. Countries must also pay “adequate remuneration in the circumstances of each case” to the patent holder. Moreover, the U.S. government has a lengthy history of punishing countries that utilize compulsory licensing with trade-related sanctions.

It was therefore significant that President Biden announced on Wednesday that he will support waving IP protections for COVID-19 vaccines. U.S. Trade Representative Katherine Tai released a statement noting that “the extraordinary circumstances of the COVID-19 pandemic call for extraordinary measures,” and pledging to help expand vaccine manufacturing and distribution. This reversal in the Biden Administration’s position may be in response to increasing pressure from various groups and the unfolding crisis in India.

However, many questions still remain. First, will a waiver pass in the WTO? Although the European Union has stated that it is willing to reconsider the proposal, Germany remains staunchly opposed. Germany helped fund the Pfizer/Bio-N-Tech vaccine and has expressed concern that a broad waiver could undermine innovation. Chancellor Angela Merkel’s government has also noted that the real obstacle to widespread vaccination is production capacities.

Another issue relates to the know-how surrounding the COVID-19 vaccines. As I and others have written, vaccines are notoriously difficult to reverse-engineer because they are derived from living organisms and are structurally complex. One of the keys to rapid production is for the manufacturers to share proprietary knowledge regarding manufacturing processes that are typically protected as trade secrets. However, neither TRIPS nor U.S. law appear to provide mechanisms for compelling unwilling companies to do so. Nor are there any contractual provisions in the funding agreements under Operation Warp Speed that require such a disclosure.

It is also unclear whether a waiver of IP rights will make a difference. Take, for example, India, which has underinvested in health care for decades. Just a few months ago, India was giving away millions of vaccine doses in an attempt to compete with China in vaccine diplomacy, falsely believing that India had achieved herd immunity. In April, Prime Minister Narendra Modi was speaking unmasked before packed crowds at political rallies. An argument can be made that complacency is playing a far greater role than IP rights in India’s second wave.

Furthermore, as others have pointed out, IP rights are only a piece of what is needed to produce vaccines. There is currently a global shortage of raw materials and proper manufacturing facilities. The spoiled vaccines from Emergent BioSolutions’ plant in Baltimore furthermore illustrate the difficulties of bringing new manufacturing facilities online. Because the Moderna and Pfizer vaccines both require storage at low temperatures and utilize novel mRNA technology, they pose further challenges in countries that lack necessary infrastructure for manufacturing and for distribution of vaccine doses.

Ultimately, any waiver of TRIPS obligations that passes is likely to be modest in reach, perhaps reducing the procedural burdens currently surrounding the use of compulsory licensing. It is unlikely that Biden will somehow force U.S.-based vaccine manufacturers to turn over know-how. Overall, the greatest benefit of the Biden Administration’s support for the waiver is that it signals a departure from the prior approach of punishing countries facing health crises and that it might spur pharmaceutical companies to voluntarily increase out-licensing and donations of vaccines.

* Image above comes from the plague of Ashdod, 1630, Artist Nicolas Poussin

 

 

Guest Post: Pandemic drug shortages: Is compulsory licensing the answer?

 

Vexatious Litigants

Mankaruse v. Raytheon Company, 20-2309 (Fed. Cir. 2021) (nonprecedential) [Raytheon Vexatious Litigant]

Nagui Mankaruse is a former Raytheon engineer and also a patentee. U.S.
Patent No. 6,411,512. While an employee, he sued Raytheon for employment discrimination and was later fired.  (“Laid off due to a workforce reduction”).  He later sued Raytheon in California state for various claims, including trade-secret misappropriation, breach of contract, discrimination, etc.  California Code allows for a litigant to be defined as a “vexatious litigant” and Mankaruse was so-named.  In one case he posted a $10,000 bond as required by the court (and lost the money after losing the case).

In the present case before the Federal Circuit. Nagui Mankaruse filed a pro se lawsuit against Raytheon alleging patent infringement and trade-secret misappropriation.  Raytheon asked the US District Court (C.D.Cal.) to deem Mankaruse a “vexatious litigant” under Federal Law and require a bond before he proceeds with the case.  The district court agreed and ordered Mankaruse to pay $25k bond and also seek pre-filing approval from the court of any future lawsuit.  He did not pay the money and the case was dismissed.   On appeal, the Federal Circuit has affirmed.

The Federal Rules of Civil Procedure do not speak to the “vexatious litigant” designation, but the courts have self-identified an inherent power to protect the judicial process that is also supported by the all writs act.  Further, courts have power to order litigants to pay a security-deposit associated with potential future costs or sanctions.

[T]he court properly declared Mr. Mankaruse a vexatious litigant. And the bond amount of $25,000 was not excessive. The purpose of the bond is to provide a defendant security that, if it were to prevail in defending against a suit, would enable it to recoup its costs from a plaintiff, and the parties here do not  meaningfully dispute that, at the time the bond was required, predicted costs of further litigation would have exceeded $25,000.

Slip Op.   Mankaruse argued that he does not have $25k and so the requirement of the bond effectively excludes him from the court.  On appeal, the Federal Circuit  found no abuse-of-discretion even if it priced Mankaruse out of the market.

Fast 101 has Lived Up to its Name

Fast 101 v. CitiGroup (Supreme Court 2021)

Fast 101 lived up to its name.  Soon after the case was filed, Judge Andrews (D.Del.) dismissed the complaint for failure to state a claim. You guessed it, the claimed invention is directed to an abstract idea and therefor invalid under 35 U.S.C. 101.  Fast 101.

Fast 101’s five asserted patents are all part of a single family and  claim “an invoiceless trading system that creates incentives for customers to pay suppliers within a predetermined period of time, such as a settlement period.”  Basically, you get some discount or coupon (10% off at Saks) if you pay immediately or on-time. U.S. Patent Nos. 8,515,867, 8,660,947, 8,762,273, 9,811,817, and 10,115,098.

On appeal, the Federal Circuit affirmed finding (1) the “claims are directed to the  abstract idea of an intermediated settlement system that employs a discount for early payment”; and (2) “the claims do not recite any inventive concept to render them patent eligible.”

In the briefing, Fast 101 argued that a number of factual issues preclude judgment as a matter of law.  On appeal, however, the Federal Circuit only wrote that Fast 101’s arguments regarding factual allegations were not “identified with specificity.”

Now, Fast 101 has petitioned to the Supreme Court with two questions:

1. When analyzing patent claims for subject matter eligibility “as a whole,” does a court need to evaluate the differences between prior art allegations and the alleged inventive concept in order to fully appreciate the claim language selected by the patent drafter?

2. When the plaintiff alleges either that the claims are “directed to” an “improvement” or that the “inventive concept” is found in an “ordered combination” of claim elements, do the relevant steps of the Alice/Mayo Test become questions of fact because a technical analysis of prior art is required, thus precluding a 12(b)(6) dismissal?

3. Whether it is appropriate for a court to dismiss a complaint (and thus invalidate all asserted patents) using Rule 12(b)(6) without amendment to the complaint or oral  argument by making factual findings and rejecting the plaintiff ’s detailed factual assertions inconsistent with Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

[Petition]

Truthfully, I don’t see the petition as having any shot at Supreme Court review, and am primarily writing about the case because of the cute name.  I’ll note here that the company Fast 101 is an Australian that has been using the name for more than 20 years.

 

Corporate Lies Lose Patentee Million Dollar Verdict.

by Dennis Crouch

Cap Export LLC v. Zinus Inc. (Fed. Cir. 2021)

Zinus is the owner of U.S. Patent No. 8,931,123, which covers a particular bed frame that can assembled at home. A key feature of the invention is that back-side of the headboard includes a zippered compartment that can hold all of the pieces.  Rather than simply a bed-in-a-box, it is a bed-in-a-headboard.

The district court first sided with the patent challenger and awarded sua sponte summary judgment of obviousness based upon a bed-in-a-box reference. That decision was vacated by the Federal Circuit in a 2018 non-precedential decision since Zinus lacked notice and an opportunity to present evidence prior to the summary judgment determination.  On remand, the district court reversed itself — awarding summary judgment the other way — that the bed-in-a-box reference did not invalidate.  The court entered final judgment, awarding $1.1 million in damages and issued a permanent injunction.

One problem: The president of Zinus (Colin Lawrie) had given false testimony regarding the prior art (Lawrie was testifying both as a fact witness and a testifying technical expert). In particular, Lawrie testified that he had never “seen a bed that was shipped disassembled in one box.”  Later, Lawrie testified again and explained that his original testimony was “incorrect” but that at the time he was not intending to answer falsely.  In particular, it turned out that a Zinnus-related company had purchased/sold hundreds of beds in boxes that had not been found by Cap’s prior art searchers.  Lowrie’s later explanation was that he was focusing on the novel features of his company’s patent — a bed shipped disassembled with all of the components in the headboard.  The district court found Lourie’s explanation “wholly implausible.”

After learning of the falsity, Cap filed a R. 60(b) motion — asking the court to reconsider the case based upon the patentee’s fraud on the court.

On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the following reasons: . . . (3) fraud, misrepresentation, or misconduct by an opposing party;

FRCP 60(b).   The district court complied and set-aside the judgment.  The court found that Lawrie’s statements – as president of the company – counted as fraud by the party itself.  On appeal, the Federal Circuit has affirmed.

Fraud on the court does not require that the party show that the outcome would change but-for the fraud.  In this case, there is some dispute about whether the prior sales would invalidate the patent.  Here, it was enough to show that the fraud was material to central issues in the case.

In its conclusion, the Federal Circuit reached back to the hey-day of patent invalidation/unenforceability decisions from the Supreme Court in holding that the rules regarding fraud-on-the-court are particularly important in the patent infringement context:

“It is the public interest which is dominant in the patent system.” Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661 (1944). “The far-reaching social and economic consequences of a patent . . . give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope.” Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945). The functioning of the patent system requires that “everything that tends to a full and fair determination of the matters in controversy should be placed before the court.” Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240, 244 (1933) (quoting 1 Joseph Story, Commentaries on Equity Jurisprudence § 98 (W.H. Lyon, Jr. ed., 14th ed. 1918)). Here, Lawrie, Zinus’s president and expert witness, misrepresented his knowledge of highly material prior art. The district court properly declined to condone such conduct. The district court did not abuse its discretion in granting the motion to vacate the judgment under Rule 60(b)(3), and we affirm.

Slip Op.

Big Move: US Supports IP Waiver for COVID Vaccine

by Dennis Crouch

In the USA, COVID vaccines have been widely distributed and are now available at no cost almost on-demand for anyone seeking vaccination.  Vaccines are not widely available in most other countries and global COVID cases are again at an all-time high.

And, people around the world don’t really trust that Pfizer, Moderna, and J&J are going to be serving them anytime soon.  That is where the TRIPS waiver comes into play.

TRIPS:  Countries around the world are asking for a waiver of some aspects of the international intellectual property (IP) agreement known as TRIPS as part of their response to the global COVID pandemic.  This IP Waiver would be a first step toward countries and companies around the world manufacturing, distributing, and importing already developed vaccines, such as those now being distributed in the USA by J&J, Pfizer, and Moderna. Without the IP waiver, a country could suffer trade penalties if they permitted production or importation in violation of rights.  The penalties are setup in a country-versus-country bases and do not allow for any private action by the individual rights holders. Thus,  the TRIPS dispute resolution process does not provide Pfizer standing to sue India for violating IP rights guaranteed under TRIPS; Rather Pfizer could only lobby to the U.S. Government to bring a case, which traditionally might have done.

The U.S. Government is reportedly going to support the waiver proposal, although there are current ongoing negotiations over its actual text and content.  Even without a WTO waiver, the US can also act unilaterally to announce that it would not bring any TRIPS cases associated with violations.  This is a major change of policy under President Biden and his new U.S. Trade Representative Katherine Tai.  In the past, the US has always been on the side of stronger IP rights and more enforcement.

Trade Secrets + Patents: In the short-run, the big difference is more about trade-secrets than patents.  In the longer run, patents may become equally important.

If we take India as an example, right now there are no patents that have been granted in India tied directly to the COVID response.   So, allowing India to waive its promise to enforce patents does not generate any short-term gains. Here, by short-term, I’m really talking about the next two years or so.  Hopefully by that time the pandemic will be gone.

Trade secrets are different, most of the “intellectual property” wrapped up in COVID vaccine manufacture is currently being held as trade secrets.  Obviously the companies manufacturing the product have the information. Many countries also have information that they received in the process of (1) funding the research and (2) determining whether to allow the vaccines to be distributed.  International espionage is also a major element here that will put the information in the hands of various  governmental agencies.

TRIPS require that countries protect trade secrets, and also keep secret the information provided as part of regulatory approval.

Article 39

1. In the course of ensuring effective protection against unfair competition … Members shall protect undisclosed information in accordance with paragraph 2 and data submitted to governments or governmental agencies in accordance with paragraph 3.

2. Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices (10) so long as such information: (a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

3. Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercial use. In addition, Members shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair commercial use.

[TRIPS Text]

The original proposed WTO waiver would have waived this trade secret protection requirement — a really big deal.

Waiver of the requirement does not force the companies to actually conduct any technology transfer — to provide the information to others who want to manufacture.  BUT, it does open the door to governments sharing the information and also to a major WIKILEAKS style sharing of data and information.  I believe that a whistle-blowing is actually quite likely because so many scientists and business insiders are wanting to do everything they can to spread the vaccine, but don’t believe that it will be permitted by the CEOs and Shareholders.

The other thing that this does is substantially shift the negotiation positions.  This waiver signals to the current vaccine-makers to speed-up global access.

We’ll be looking for President Biden’s action on this as we move forward.  As I mentioned above, negotiations are ongoing and I expect a focus on timelines (when does the waiver end) and scope (exactly what is being waived).

Prisoners Enforcing their Rights

Here is the outcome of a twitter poll on prisoner lawsuits. The poll was prompted by the pending lawsuit of Tormasi v. Western Digital. Tormasi is a patentee and has sued Western Digital for patent infringement.  The district court dismissed his case and that finding was affirmed by the Federal Circuit.  Both courts held that as a prisoner in N.J. state prison, Tormasi has lost his right to conduct any business, including enforce his patent rights.   The case is pending on a petition for writ of certiorari before the U.S. Supreme Court.

Discovery of Prior Settlement Agreements and Common Interest Privilege

by Dennis Crouch

In re Modern Font Applications LLC (Fed. Cir. 2021)

The Federal Circuit denied MFA’s petition for mandamus on a discovery dispute, and Chief Judge Prost but wrote an interesting short opinion explaining the panel’s reasoning.  In the case, MFA has asserted its U.S. Patent No. 9,886,421 that covers  a method of displaying “non-standard fonts” on your handheld device when accessing a network-document.

Alaska Airlines is the defendant in this case and submitted a discovery request of MFA’s prior settlement agreements. In civil litigation discovery  requests are generally guided by three pillars: privilege, relevance, and proportionality.

FRCP 26(b)(1) Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case.

Prior settlement agreements tend to be quite relevant to for any damages calculations, but MFA refused to comply with the request based upon privilege.  Although the prior agreements had been shared between litigating parties, with the settlement agreement the parties became unified (at least with regard to the agreement) and the result is “common interest privilege.”

The magistrate judge ordered disclosure, confirmed by the district court, and now the Federal Circuit has refused to act on the mandamus petition (other than denying it).  Most appeals are taken after final judgment in a case. Mandamus is a shortcut to get an immediate decision from an appellate court on an interlocutory issue (such as discovery disclosure), but is only rarely granted.  The court notes that it will only grant mandamus in cases involving a “clear and indisputable right to relief [where there are] no other adequate means to attain the relief.” Slip op., quoting Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004).  Even where those elements are met, the district court also has discretion to decide whether granting the writ is “appropriate under the circumstances.” Id.

In its opinion, the court did not fully decide the issue of common interest privilege in the settlement context, but noted that the Federal Circuit has previously declined to recognize the form of privilege. See In re MSTG, Inc., 675 F.3d 1337 (Fed. Cir. 2012) (holding that pre-settlement communications were not privileged). The court went on to note that even if common interest privilege were adopted in this context, the parties must still show that the withheld documents are “communications by a client to an attorney made in order to obtain legal assistance from the attorney in his capacity as a legal advisor.”

The outcome here makes sense and also begs the question — why is MFA trying to hide its prior settlement agreements?

Law School Canons: The Spoils of Discovery

Editor’s Note: Avery Welker is a 1L at Mizzou and likely a future patent attorney. He is starting a new series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com.  – Dennis Crouch

By Avery Welker

The first line of class notes I took in Civil Procedure during our discovery module says, “Spoliation – OLD LEGAL DOCTRINE.” I’m not sure why I felt the need to emphasize that spoliation is an old doctrine at the time, but it makes sense now. Oddly, my note reflects the importance of the doctrine and how it has stood the test of time. Zubulake V, the first case in my Civil Procedure discovery module, is a perfect example of the dangers facing a party if they are not diligent about evidence preservation. Zubulake v. UBS Warburg LLC, 229 F.R.D. 422 (S.D.N.Y. 2004) (“Zubulake V”). Sanctions were the “spoils” that Skyline Steel, LLC (Skyline / Plaintiff) sought over PilePro, LLC (PilePro / Defendant) during a “bitter” patent suit between the two companies. Skyline Steel, LLC v. PilePro, LLC, 101 F.Supp 3d 394, 397 (S.D.N.Y. 2015).

Skyline and PilePro are merchants of sheet pile wall systems and components. Id. at 397-98. Sheet pile walls are structures deployed to retain soil or water and are built out of vertical interlocking sheet sections. E.g., Nucor Skyline. PilePro made accusations that Skyline was infringing PilePro’s patent, U.S. Patent No. 8,856,543, through letters and claims on their website. U.S. Patent No. 8,856,543 (filed Mar. 31, 2008) (issued Oct. 15, 2013) (‘543 Patent); Skyline, 101 F.Supp 3d at 397. In relevant part, the ‘543 Patent covers a two-step method for manufacturing a sheet pile section with an interlock connector. U.S. Patent 8,856,543. First, the preliminary wall is formed with a “material accumulation” at the side with the interlock connector, which is then shaved down by shape-cutting to produce a uniform cross-section throughout the interlock connector. Id. The method claims to be able to make different types of connectors, including a T-carrier, Hoesch claw, and a Larsson hook, through the processes shown in figures 1, 2, and 3, respectively, of the ‘543 Patent (shown below). Id. at figs. 1-3.

 

PilePro’s accusations of infringement on the ‘543 Patent have an interesting origin. To obtain the ‘543 Patent, PilePro had to differentiate their process from an earlier patent, named the “Hermes I.” Skyline, 101 F.Supp 3d at 398. The location of the material accumulation was at issue. Id. The ‘543 Patent differentiated itself (through the eyes of the USPTO) by noting that the material accumulation was only at the area to be made into the interlock, and not the entire flange, as in Hermes I. Id. Hermes I is owned by ArcelorMittal Commercial RPS, which manufactures a sheet pile system called the “HZM System,”  distributed by Skyline. Id. Soon after the ‘543 Patent was issued, PilePro sent letters to Skyline and current and potential customers of Skyline that PilePro would hold the customers liable for damages PilePro was entitled to for the use of the HZM System, which PilePro claimed may infringe on the ‘543 Patent. Id. In addition, PilePro posted a public warning on their website for about a month and a half that the HZM System was infringing on the ‘543 Patent. Id.

PilePro’s spoliation woes flowed from this website. Skyline contended that PilePro failed to produce two types of evidence related to who viewed the warning on PilePro’s website: (1) Google Analytics data and (2) sever log data collected by “PaperTrail” which are both used to track website traffic, among other analytics. Id. at 407.

Here, the court found some guidance in Zubulake V. This case, the fifth opinion in the Zubulake series, details the importance of an attorney’s duty to carefully and thoughtfully ensure everybody in a company is on the same page when it comes to file preservation in anticipation of litigation. You can feel the irritation written into the opinion about this dispute dragging out: “This is the fifth written opinion in this case, a relatively routine employment discrimination dispute in which discovery has now lasted over two years.” Id. at 424.

Laura Zubulake, an equities trader, filed a complaint against her employer, UBS Warburg, LLC (UBS), alleging gender discrimination, failure to promote, and retaliation. Id. at 425. UBS was on notice that Zubulake would file a complaint, and their counsel instructed employees to preserve any evidence that could be used through the claim. Id. However, as you may guess, the employees failed to preserve evidence on several occasions (hence Zubulake I – IV), and where they did preserve evidence, labored in presenting it timely. Id. at 436. The penalty of sanctions for UBS was sweeping, compensating Zubulake for the troubles of the missing and delayed evidence through charging UBS for costs of depositions, paying the cost of the sanctions motion, and giving the jury an adverse instruction for the irrecoverable data. Id. at 436-37.

The court in Zubulake V detailed several (non-exhaustive) steps that counsel should be taking in continually fulfilling the common law duty to preserve evidence: (1) issue and periodically reissue a “litigation hold” when litigation is anticipated; (2) communicate the importance of this hold to “key players,” who are people identified by the initial party disclosure; and (3) direct all employees to immediately turn over any active files for prompt backup and safeguarding. Id. at 433-34. Very convenient and concise for learning in Civil Procedure.

Luckily for PilePro, you don’t have to preserve evidence that never existed. PilePro’s third-party vendor deactivated Google Analytics before the warning went live on PilePro’s website, which was also before Skyline put PilePro on notice of litigation. Skyline, 101 F.Supp 3d at 408. Skyline did not produce evidence that PilePro knowingly directed their third-party vendor to shut down the analytics. Id. at 408-09. PilePro claimed to not know about the deactivation until April 2014. Id. The court concluded that PilePro was unaware of the deactivation had no duty to preserve this evidence. Id. at 409.

The failure to preserve server logs is a different story. This evidence existed but was overwritten weekly, apparently a part of their data policy. Id. The court concluded that when PilePro was put on notice, shortly after posting the message on their website, they had a duty to preserve those logs. Id. The court also found that PilePro acted with a culpable state of mind, defined as at least negligent conduct because counsel for PilePro did not continually ensure the preservation of evidence and communicate this to key players, which allows for a spoliation inference. Id. at 410-11.

The court then needed to determine appropriate sanctions. Because PilePro was merely negligent and did not willfully engage in spoliation, the court did not impose an adverse jury instruction on the missing logs but chose to prevent PilePro from using this lack of evidence against Skyline. Id. at 412. Additionally, PilePro was instructed to reimburse Skyline for the costs associated in moving for sanctions. Id. Skyline won the big prize as well: summary judgment on Skyline’s noninfringement claim was granted. Id. at 403.

The Zubulake V court expressed the duty and dangers of spoliation simply:

At the end of the day, however, the duty to preserve and produce documents rests on the party. Once that duty is made clear to a party, either by court order or by instructions from counsel, that party is on notice of its obligations and acts at its own peril.

Zubulake at 436.

Discovery is one of the unique cornerstones of American legal practice, and spoliation helps protect the integrity of the discovery process.

Supreme Court offers Hope on Eligibility Case

by Dennis Crouch

American Axle & Manufacturing, Inc.,  v. Neapco Holdings LLC (Supreme Court 2021)

The Supreme Court today called for the views of the Solicitor General (CVSG) in this important patent eligibility case. “The Acting Solicitor General is invited to file a brief in this case expressing the views of the United States.”

In a pair of briefs filed in 2019, then Solicitor General Noel Francisco argued that the Court should hear a new eligibility case to clarify its precedent: “the Court’s recent decisions have fostered uncertainty concerning those substantive Section 101 standards.”

These briefs were filed during the Trump Administration and involved substantial cooperation between the SG’s office and the USPTO.  The burning question is whether the Biden Administration will see the issues in the same way.

Federal Circuit Narrows Application of Hooke’s Law, but Still Wields the Ineligibility Hammer

USPTO hiring hundreds of new patent examiners

From the USPTO: Qualified engineers, scientists, and graphic artists can apply now.

The United States Patent and Trademark Office (USPTO) is seeking soon-to-be graduates and professionals with backgrounds in graphic design/art, as well as engineers with backgrounds in biomedical, computer, electrical, and mechanical engineering to apply for hundreds of entry-level patent examiner positions in Alexandria, Virginia. (more…)

Invention of a Slave: 2021 Redux

by Dennis Crouch

Tormasi v. Western Digital, Docket No. 20-1396 (Supreme Court 2021)

Walter Tormasi is a prisoner in the New Jersey state prison system. He is serving a life sentence for murdering his mother when he was 16 years old after apparently receiving encouragement from his father, Attila.

Tormasi is also a patentee.  His U.S. Patent No. 7,324,301 covers a computer hard-drive that allows for “simultaneously and independently” reading and/or writing on different carrier surfaces within the drive.   The patent looks fairly sharp.  Although Tormasi began the prosecution pro se, he later worked with John Kane, a Trenton-based patent attorney, to push through to issuance.

In 2019 Tormasi sued Western Digital in the N.D. Cal — asserting that the defendant’s dual-actuator drives infringed Tormasi’s patents. Rather than reaching the merits, the district court dismissed the case on procedural grounds.  The district court ruled that Tormasi lacked the capacity to sue and the Federal Circuit then affirmed.  The majority opinion is per curiam from Judges Wallach and Chen.  Judge Stoll wrote in dissent.

Capacity to Sue: Under the Federal Rules of Civil Procedure, a plaintiff’s capacity to sue is determined “by the law of the individual’s domicile.”  For Tormasi, that is New Jersey.  New Jersey has a statute on point: “Every person who has reached the age of majority . . . and has the mental capacity may prosecute or defend any action in any court.” N.J. STAT. ANN. § 2A:15-1 (2013).  However, New Jersey’s Prison Administrative Code sets forth regulations that prohibit prisoners from “operating a business … without the approval of the Administrator” N.J. ADMIN. CODE § 10A:4-4.1.   Tormasi does not have the Adminstrator’s approval.  The courts found that this non-statutory administrative rule was sufficient to limit the state statute — superseding his right to file a lawsuit in his personal capacity.  It seems to me that rule eliminating a party’s right to file a civil lawsuit probably should have been a bit more direct.

Tormasi represented himself pro se at the district and appellate court levels. However, Thomas Lewry and his team at Brooks Kushman recently took-up the case and have petitioned for Supreme Court review.

Three questions presented:

1. Does imprisonment (1) forfeit a patent owner’s right not to be deprived of personal property without due process of law and (2) render a person wholly without equal protection of the law?

2. Does Lewis v. Casey, stating that the right of access to the courts “does not guarantee inmates the wherewithal to transform themselves into litigating engines,” enable state agencies to affirmatively eliminate an inmate’s access to court on general civil matters?

3. The patent statute authorizes patent owners to enforce their constitutionally recognized  exclusionary rights in federal court. Did the lower courts create a dangerous slippery slope that (1) establishes a mechanism by which states can, via an administrative rule, nullify federally granted statutory rights and (2) oppresses prisoners by depriving them of property without redress?

SupremeCourtCertiorariPetition (Appendix) (Fed. Cir. Decision)

I would add a fourth question focusing on the particular patent statute: 35 U.S.C. § 281, which expressly provides a remedy for patent infringement to the patentee: “A patentee shall have remedy by civil action for infringement of his patent.” As interpreted by the Federal Circuit, the rules of procedure are in conflict with this statute and one of the two must bend.

Still, perhaps the answer comes within the 13th Amendment’s pronouncement that slavery is still permitted within the United States “as a punishment for crime.”

At the Supreme Court, responsive briefing is due from Western Digital by May 28, 2021.  Joining Lewry on the brief are REZA ROGHANI ESFAHANIDUSTIN ZAK, and LEROY ASHLEY.

NJ Law Limiting Patentee’s Capacity to Sue Upheld on Appeal

Invention of a Slave and the Ongoing Movement For Equal Justice

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