by Dennis Crouch

Texas HB20 treats social media platforms as common carriers, especially those with very large number of users and market dominance.  For its purposes, the law focuses on platforms with more than 50 million US monthly users and has a number of disclosure requirements. But, the heart of the new law is its prohibition on “censorship.”

CENSORSHIP PROHIBITED. (a) A social media platform may not censor a user, a user’s expression, or a user’s ability to receive the expression of another person based on: (1) the viewpoint of the user or another person; (2) the viewpoint represented in the user’s expression or another person’s expression; or (3) a user’s geographic location in this state or any part of this state.

“Censor” means to block, ban, remove, deplatform, demonetize, de-boost, restrict, deny equal access or visibility to, or otherwise discriminate against expression.

HB 20.  The rule has a few exceptions. Censorship appears OK if done to protect intellectual property rights; based upon a request from “an organization with the purpose of preventing the sexual exploitation of children and protecting survivors of sexual abuse from ongoing harassment” or if user expression “directly incites criminal activity or “consists of specific threats of violence targeted against a person or group because of their race, color, disability, religion, national origin or ancestry, age, sex, or status as a peace officer or judge.”  The law creates a private right of action for a censored user and also authorizes the state Attorney General to bring action.

The new law was passed by the Republican dominated Texas House and Senate and signed by Gov. Abbott back in 2021.  But, before the law became effective a Federal District Court entered a preliminary injunction against its enforcement.  Ordinarily, appeals are only proper after final judgment. One exception though is that a district court’s decision regarding a preliminary injunction is ordinarily immediately appealable.  And so the state of Texas has appealed the Preliminary Injunction to the 5th Circuit.

The news over the past two weeks: On May 9, the 5th Circuit heard oral arguments and two days later issued a 1-sentence decision staying the preliminary injunction pending appeal (as the State requested).  Here, the judges have not issued their final decision on whether the preliminary injunction was proper, but the stay suggests that their final decision will also favor Texas since a key element of relief here is likelihood of success on the merits.  Those opposing the law have filed an emergency request with the US Supreme Court to reinstate the preliminary injunction during the appeal.  Justice Alito is assigned to the Fifth Circuit region and so is set to decide the emergency petition–however, the full court could choose to weigh-in.  Briefing in the SCOTUS case from Texas is due on May 18.

• District Court Preliminary Injunction Order
• Fifth Circuit Stay of Injunction
• SCOTUS Petition for Emergency Reinstatement of the Preliminary Injunction
• Amicus brief from former Sen. Cox supporting the Emergency Petition

So to be clear, the decisions thus far have all focused on preliminary relief — whether the law can be enforced while the trial & appeal is ongoing.

In prior cases, the Court has treated social media has an important avenue for speech. In Packingham v. North Carolina, 137 S. Ct. 1730 (2017), for instance, the court found that prohibiting prior sex offenders from all social media violated those individuals speech rights since social media is the “modern public square.” Id.  Here though, it is the social media platforms seeking the right to discriminate freely against viewpoints.”  Texas presents the argument that social media platforms are  not speaking through their editorial role, but rather are taking technological actions to present the speech of others.  Of course, publishing and dissemination of speech are also protected by the First Amendment, and those opposed to the law present this as an open-and-shut case.

From the moment users access a social media platform, everything they see is subject to editorial discretion by the platform in  accordance with the platforms’ unique policies. Platforms dynamically create curated combinations of user-submitted expression, the platforms’ own expression, and advertisements. This editorial process involves prioritizing, arranging, and recommending content according to what users would like to see, how users would like to see it, and what content reflects (what the platform believes to be) accurate or interesting information.

SCT Brief.

by Dennis Crouch

1. The Supreme Court has denied certiorari in the pending case of PersonalWeb Techs. v. Patreon.  The case questioned the unique patent-law preclusion doctrine known as the “Kessler doctrine.”  I previously argued that the court should hear the case and clarify the law. On the same day, the court also denied petitions in Universal Secure Registry LLC v. Apple Inc. (eligibility) and Cisco Systems, Inc. v. SRI International, Inc. (willfulness).
2. In Olaf Sööt Design v. Daktronics, the patentee argues that unduly aggressive claim construction undermined its 7th Amendment jury trial right.  This case argues against 02Micro‘s requirement that any disputed term be construed by the court.  In a new filing, the US Solicitor General has recommended against certiorari — concluding that it is the Judge’s role to construe the claims.
3. We are still waiting for a Gov’t brief in the pending eligibility case of American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.  The court requested the CVSG brief on May 3, 2021–more than a year ago.  Pending follow-on cases include Ameranth, Inc. v. Olo, Inc., Spireon, Inc. v. Procon Analytics, LLC and Interactive Wearables, LLC v. Polar Electro Oy. 
4. The parties are also awaiting the Gov’t CVSG brief in Apple Inc. v. Qualcomm Incorporated (licensee appellate standing) and Amgen Inc. v. Sanofi (written description requirement).
5. Hyatt v. USPTO challenges the district court’s APA trial procedures as part of his effort to force the Patent Office to issue patents for applications that have been pending for decades.

Top six pending cases:

1. Eligibility: American Axle & Manufacturing v. Neapco Holdings – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
2. Written Description: Amgen v. Sanofi – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
3. Appellate Standing: Apple . Qualcomm – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
4. Nexus Requirement for Secondary Considerations: Zaxcom, Inc. v. Lectrosonics – pending en banc petition before the Federal Circuit.
5. Deference to Examiner on Definiteness: Nature Simulation Systems Inc. v. Autodesk, Inc. – pending en banc petition before the Federal Circuit.
6. Level of Possession for WD negative claim limitations: Novartis Pharmaceuticals v. Accord Healthcare Inc. – pending en banc petition before the Federal Circuit.

by Dennis Crouch

The Federal Circuit’s new decision in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. (Fed. Cir. 2022) denies appellate jurisdiction over a case where the PTAB decision involves a wholistic judgment involving non-appealable issues (time-bar vacatur of institution) and appealable issues (sanctions award).  Judge Newman dissented.  In my mind, the could could have logically separated its decision to focus on the sanctions issue and decide whether sanctions decision to decide whether the dismissal was appropriate and sufficient.

This case has been up and down several times.  The docket includes a final written decision cancelling Bennett’s claims while also awarding monetary sanctions against Atlanta Gas for failed to update its filing regarding Real Parties of Interest (RPI). But, those decisions were later vacated by the Board itself and the proceeding terminated based upon a new interpretation of the time-bar under 35 U.S.C. § 315(b).  The Board eventually concluded that termination would “most effectively resolve the issues on remand by operating as a sufficient sanction while also conforming this Decision to current Office policy.”

The problem here is that time-bar issues are not appealable institution decisions. Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020). On the other hand, award or denial of sanctions are properly appealable.

On appeal, the Federal Circuit recognized that sanctions were relevant to the “multifaceted” termination decision, but ultimately concluded that the time-bar issues were “central” and “the core of the Board’s decision.”  As such the court found that it lacked jurisdiction over the appeal.  The majority distinguishes this case from a potential appeal over “purely a sanctions decision over which we ordinarily would have jurisdiction.” Dismissed for lack of appellate jurisdiction.

The majority opinion was written by Judge Stoll and joined by Judge Lourie.

Judge Newman wrote in dissent and explained that the appellate filings here had been careful to focus on the sanctions aspect of the order. “The Sanctions Order is the only issue on appeal.”

Here the agency imposed the sanction of cancellation of extensive administrative  proceedings and their final decisions of patent invalidity, which final decisions had been appealed to the Federal Circuit and affirmed with issuance of the mandate on patent invalidity. We surely have jurisdiction to receive appeal of the agency action vacating all these proceedings and decisions, and purportedly including vacatur of decisions of the Federal Circuit. Our appellate jurisdiction is surely within our statutory assignment of judicial review of decisions of the PTAB.

Newman in dissent.

Post Thrive: PTAB Decision Affirmed rather than Vacated

Missouri Senator (and my former Mizzou Law Colleague) Josh Hawley has introduced S.4171 a modest copyright proposal that would substantially reduce copyright term to 56 years (28 years if holder fails to timely file for renewal).  Current Copyright term is significantly longer and does not require renewal to stay in force.

• Life of the author + 70 years.
• For works-made-for-hire or anonymous works 95 years from first publication or 120 years from creation (whichever expires first).

The proposal is retroactive, but only if the owner fits has a market capitalization of $150 billion and operates in the industries of “Arts, Entertainment, and Recreation” or “Motion Pictures and Videos.”

Hawley Proposed Bill.  In the U.S., about 70 companies fit the market cap requirement, including Sen. Hawley’s stated target Disney.

By Dennis Crouch

Claim preclusion and issue preclusion are conceptually difficult, but the Federal Circuit has further confused preclusion doctrines in its patent law jurisprudence. In a series of recent decisions, the appellate court improperly created and then expanded upon a separate-and-distinct form of res judicata that it labels the Kessler Doctrine. We argued recently that this expansion is in error and should be eliminated as an improper destabilization of settled res judicata principles.[1] In a recent amicus filing, the United States Solicitor General agreed that the Federal Circuit’s precedent is in error.[2]  Despite that core agreement, the SG brief is rife with misleading guidance. The SG asserted the non-legal maxim “two wrongs make a right” to effectively conclude that the Kessler expansion error was rendered harmless by compounding errors in the court’s claim preclusion doctrine.  The SG’s brief implicitly calls for a wholesale reevaluation of preclusion doctrine rather than addressing the issues at hand. The brief includes other doublespeak. At one point, for example, the SG argues that Kessler remains “practically significant” and “relevant as a practical matter.” Later, the same document concludes that the question presented—i.e., the viability of Kessler—“does not have practical importance.”  Of course, the law of judgments remains critically important to both ensure justice and stability.

On May 12, 2022, the Supreme Court is set to decide whether to move forward with the pending case of PersonalWeb Technologies, LLC v. Patreon, Inc., No. 20-1394 which focuses on the Federal Circuit’s aforementioned doctrinal expansions.

Kessler and its Progeny: Kessler v. Eldred is an old and largely dormant 1907 Supreme Court case permitting a manufacturer to bring an equity action to stop an infringement lawsuit against its customers.[3]  The manufacturer (Kessler) had already won on non-infringement grounds against the patentee (Eldred), thus freeing Kessler to continue freely commercialize his product. The Supreme Court saw the subsequent lawsuit against Kessler’s customers as an affront to Kessler’s right to manufacture and sell as guaranteed by the non-infringement judgment.[4]  A lot has happened in procedural law 1907. Some of the relevant changes here include the merger of law and equity; adoption of the Federal Rules of Civil Procedure and its expansion of claim preclusion under the broader “transaction or occurrence” test; adoption of the Declaratory Judgment Act and its expanded use in counterclaims; and allowance of non-mutual issue preclusion, especially in the defensive setting.  These changes are major, but they had had all been recognized as the Restatement (Second) of Judgments was being adopted in the early 1980s. In the 40 years since, the law of judgments has remained remarkably stable, with the courts adopting the stated principles of the Restatement embodied in the two preclusion principles of claim and issue preclusion.

But, the Federal Circuit has taken the law of judgments on a major tangent: Particularly, the court has identified a third form of preclusion, the Kessler doctrine, that it offers as separate and distinct from standard principles of preclusion.  The court’s Kessler doctrine operates applies to bar litigation in situations where these traditional forms of preclusion do not.  Despite its references to the 1907 decision, the appellate court’s Kessler decisions are also unmoored from that original precedent.  In particular, the court has applied Kessler to situations where the issue of infringement was not actually litigated or even decided; as well as apply non-mutually.  The effective approach is an odd blend of issue preclusion and claim preclusion where the due process safeguards of each are relaxed or removed.

The effect of judgment is inherent to every litigation, and the confusion created by the Federal Circuit in these cases is ripe for resolution.

= = =

[1] See, Dennis Crouch and Homayoon Rafatijo, Resorbing Patent Law’s Kessler Cat into the General Law of Preclusion, 55 Akron L. Rev. 51 (2022). We argue that the newly expanded doctrine is improper for several reasons.  Most pointedly, the Supreme Court has chastised lower courts from fashioning new rules of preclusion “unmoored from the two guideposts of issue preclusion and claim preclusion.” Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589, 1595 (2020).

[2] SG Brief in PersonalWeb Techs. [20220408144608169_20-1394PersonalWeb-CVSG-final].

[3] Kessler v. Eldred, 206 U.S. 285 (1907).

= = =

by Dennis Crouch

Oral arguments in the AI-inventorship case of Thaler v. Vidal are set for June 6, 2022.  Prof. Ryan Abbott is set to argue on behalf of the patent owner (and AI creator) Stephen Thaler. Assistant US Attorney Dennis Barghaan will argue on the USPTO’s behalf.

Thaler developed an AI that he calls DABUS. DABUS apparently created two inventions–a “neural flame” and a “fractal container.”  But, Thaler refused to name himself as inventor. Rather, he says that it was DABUS who did the inventing.  But, the PTO refused to issue the patent without a human listed inventor.  After being rejected by the PTO, Thaler filed a civil action in the E.D. Va.  That court dismissed the case–holding that a non-human device cannot quality as an “inventor.”  Abbott and Barghaan litigated the case below as well.

The question on appeal:

As stated by Thaler: “whether an AI-Generated Invention is patentable.”

As stated by the Gov’t: Whether “an artificial intelligence device comprised solely of source code can[] qualify as an ‘inventor’ under the Patent Act.”

Lots of folks might resist Thaler’s suggestion that the AI is the one who invented, but at this dismissal stage of the litigation that fact is procedurally assumed to be true.  Both sides in this case have good arguments, but we should probably be troubled if the result is that “two otherwise patentable inventions cannot receive patent protection” despite the statutory statement that “[p]atentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. 103.

Federal Circuit asked to Decide whether US Patent Law Excludes Non-Human Inventors

by Dennis Crouch

Most of the Orange Book patents do not cover a novel active ingredient or new drug. Rather, most are new methods of treatment or formulations.  When a drug is covered only by method-of-treatment claims, that means that generic sales of the active ingredients does constitute patent infringement, unless the sales are somehow inducing folks to perform the method.  This gets a bit complicated when a drug has  multiple therapeutic uses, only some of which are patented.  Obviously, generic versions should be permitted for the non-patented uses.  But, we know that there is going to be a lot of substitution at the retail level because of the price differential between the brand & generic.

Skinny Label: Congress thought through this problem (a little bit).  The basic approach is that the Brand (Patent Owner) must tell the FDA (under penalty of perjury) which of its labelled & approved uses are protected by patent.  When approving a generic version, the FDA will respect the patent by carving-out the patented uses for the generic’s “skinny label.”  Of course, doctors, pharmacists, and patients all know that the generic version is the same drug at a lower price and so go ahead and substitute the generic version even for the patented uses.  In these cases we’re talking about many millions of dollars in sales. That means we have very sophisticated parties on all sides–everyone knows what is happening.

The statute does not create any express ‘safe harbor’ for the generic manufacturer against liability for patent infringement.  Certainly, the manufacturer would be liable for inducement if it encouraged off-label infringing use of its product.  But, does the manufacturer need to take a more active role in discouraging infringing use?

This situation was litigated most recently in GlaxoSmithKline LLC v. Teva Pharm. USA, Inc., 7 F.4th 1320 (Fed. Cir. 2021), en banc denied at GlaxoSmithKline LLC v. Teva Pharm. USA, Inc., 25 F.4th 949 (Fed. Cir. 2022).  GSK sells the beta blocker carvedilol labelled for three uses:

1. treatment of congestive heart failure
2. treatment of hypertension
3. treatment of left ventricular dysfunction following myocardial infarction

All three uses were patented, but by 2007, patents covering the second and third uses had expired.  At that point, Teva received approval for its generic version, but with a skinny label that carved-out the congestive heart failure usage.  The procedural posture of the case is somewhat confusing, but the Federal Circuit eventually sided with the patentee–holding that Teva’s skinny-label along with other practices induced infringement (i.e., encouraged folks to use it for congestive heart failure).

In a recent filing, Teva’s attorney William Jay (Goodwin Proctor) indicated that Teva plans to petition the Supreme Court for writ of certiorari in the case.   (Request for Extension). If Teva’s request for extension is granted, the petition will be due July 11, 2022 with any amicus in support due in early August.  Teva’s failed en banc petition provides a guide for questions that it will likely ask in its petition:

(1) Can the generic manufacturer nonetheless be held liable for induced infringement based on evidence that would be available in every carve-out case—the skinny label itself and product materials that describe the generic drug product as the AB-rated generic equivalent of the brand product, but do not even mention the patented method?

(2) Even if the generic manufacturer were found to have encouraged infringement, can it be held liable for infringement that it did not cause—e.g., if the direct infringer undisputedly did not see the communication that supposedly encouraged infringement?

Teva En Banc Petition.

If you have time, I would recommend attending the USPTO’s Virtual Instructor Led Training (vILT).  The training is great background for patent prosecutors because it is typically identical to what is provided to patent examiners. The Office is working through a multi-part course on how it examines 35 U.S.C. § 103 and the next 2-hour course is called Obviousness Part 2: “Writing Rejections.”

• How to establish a prima facie case
• Rationale for combining prior art
• Communicating a rejection

Although it is online, the PTO is still limiting enrollment because it is an interactive course.  For questions email vILT@USPTO.GOV or go to this link.  Part 1 covered obviousness rejections and you can see the materials here.  Part III will focus on “examining evidence.”

Meanwhile, consider attending the PTO’s symposium on cross-border trade secrecy on May 11.

-Dennis

By Jason Rantanen

The Administrative Conference of the United States (ACUS) is an independent federal agency that’s charged with recommending improvements to administrative process and procedure.  The position of Chairman is currently vacant, so the Vice-Chairman, Matthew Lee Wiener, is serving as Acting Chair. A key aspect of ACUS is soliciting  input from the public.

ACUS is conducting a study on behalf of the USPTO to examine “issues associated with and options for designing a small claims patent court.”  It recently published a request for public comments on the idea of a small claims patent court.  From the notice in the Federal Register:

Since at least the late 1980s, concerns have been raised that the high cost of
patent litigation deters small- and medium-sized enterprises, including
those owned by traditionally underrepresented groups, from seeking
to enforce their patents. Policymakers, scholars, and organizations have studied
whether a small-claims procedure is needed for resolving patent disputes.

They have reached different conclusions and proposed different actions.
The Department of Commerce has also considered the possibility of a
small claims patent court. Most recently, in December 2012, the USPTO
issued a Federal Register notice requesting public comment on ‘‘whether
the United States should develop a small claims proceeding for patent
enforcement’’ (77 FR 74830 (Dec. 18, 2012)).

Given ongoing interest in the topic, USPTO has engaged ACUS to conduct
an independent survey and analysis of issues associated with and options to
consider in designing a small claims patent court. A report resulting from the
study will ultimately be submitted to Congress and will address, among other
topics, whether there is a need for a small claims patent court, the feasibility
and potential structure of such a court, and the relevant legal, policy, and
practical considerations in establishing a small claims patent court.

Although ACUS is seeking all comments on the topic, they’ve specifically pointed out these areas of interest:

1. Whether there is need for a small claims patent court;

2. The policy and practical considerations in establishing a small
claims patent court;

3. The institutional placement, structure, and internal organization of a
potential small claims patent court, including whether it should be
established within the Article III federal courts, as or within an Article I court,
or as an administrative tribunal;

4. The selection, appointment, management, and oversight of officials who preside over proceedings in a potential small claims patent court;

5. The subject-matter jurisdiction of a potential small claims patent court,
whether participation in such proceedings would be mandatory or
voluntary, and whether parties can remove cases to another administrative
tribunal or federal court;

6. The procedures and rules of practice for a potential small claims
patent court, including, as relevant, pleadings, discovery, and alternative
dispute resolution;

7. The remedies that a potential small claims patent court would be able to
provide;

8. The legal effect of decisions of a potential small claims patent court; and

9. Opportunities for administrative and/or judicial review of small claims
patent court decisions.

While I forsee lots of issues associated with a small claims patent court, I would imagine that the issue preclusion issues arising from an invalidity determination would be need especially carefully thought out, as well as whether patent owners could use this mechanism to bring large quantities of suits against consumers/end users who lack the resources to adequately defend themselves against a patent infringement claim.

Comments are due by July 5, 2022, and can be submitted at “info@acus.gov,” with “Small Claims Patent Court Comments” in the subject line of the message.  Remember that submitted comments may be made publicly available.

Credit to Jeremy Graboyes for bringing this to my attention.

by Dennis Crouch

From 1793-1952, the Patent Act included a requirement that the specification “fully explain the principle” of any machine being patented.  That provision was eliminated in 1952.  My question, did that change reduce the disclosure requirement in any way?

= = =

The Patent Act of 1836 included the language now found in 35 U.S.C. 112(a) and that we identify as the enablement and written description requirements.  In particular, the statute required the inventor to provide “a written description of [the] invention, in such full, clear, and exact terms, as to enable any person skilled in the art or science to which it appertains, to make and construct the same.” 5 Stat. 117 (1836).

But, the 1836 statute did not stop there, it also included a further requirement for machine inventions:

and, in case of any machine, [the inventor] shall fully explain the principle, and the several modes of the application of the machine, so that it may be distinguished from other inventions.

Id.  This addendum was originally part of the Patents Act of 1793 and remained in the statute until the Patent Act of 1952.  It is not clear to me how the elimination of this requirement shifts the level of disclosure.  What do you think?

by Dennis Crouch

Earlier this month, I posted a short essay about recent enablement cases at the PTAB.  Section 112(a) includes three disclosure requirements: written description; enablement; and best mode.  I would further divide written description into two categories: new matter and Ariad-style.  Thus we get:

1. New Matter Written Description: Any amendments made to the claims during prosecution must be supported by the originally filed specification.  In particular, the original specification must show ‘possession’ of the newly claimed invention.  During prosecution, this is also captured under 35 U.S.C. 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”)
2. Ariad-Style Written Description: Originally filed claims may also lack written description if the four-corners of the specification fail to show the inventor was in possession. The court in Ariad explained that a “a vague functional description” may be insufficient as it likely describes the unpatentable problem rather than a patentable solution.  Ariad Pharmaceuticals et al. v. Eli Lilly and Company, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).
3. Enablement: The original specification must enable a person of skill in the art to make and use the invention without undue experimentation.
4. Best-Mode: The original specification must disclose the best mode for carrying out the invention–if one is known by the inventors.  Best mode can only be raised during prosecution and is not available as a validity defense in litigation. 35 U.S.C. 282 (as amended by AIA 2011).

Of these for 112(a) rejection types. I suggest that patent examiners are primarily focusing on Number 1, New Matter Written Description. These new matter rejections are the most straightforward: (a) check to see if newly added language is supported by the specification; (b) if no, reject.  Although the US rules on new matter are looser than some other jurisdictions (such as EPO), a prima facie rejection is still an ‘internal research project’ that can largely be accomplished with a quick scan of the document and CTRL-F.

The other three types of 112(a) rejections are more difficult for patent examiners because they require expansive analysis facts–delving into what would be understood by someone of skill in the art and asking questions about ‘what is missing’ without the aide of a comparison guide. In the case of best-mode, the inquiry requires subjective information about what was known by the inventor at the time of filing–something that is generally impossible for the examiner to research absent a request for information from the inventor.

I would love to hear your thoughts on this topic.

By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

In December 2020, the USPTO put out a request for comments on “The Article of Manufacture Requirement.” (For prior PatentlyO coverage, see here.) Last week, at Design Day 2022, the USPTO announced that it had completed its summary of those comments. That summary is available here.

In the request for comments, the USPTO floated the idea of issuing design patents for what they are now calling “designs for projections, holograms, and virtual and augmented reality (PHVAR).” Presumably, this acronym is meant to suggest that these are new types of designs, uncontemplated by Congress when it passed statutes that—according to some—are in need of “modernization.”

But projected designs aren’t new.

As we explained in our law professor comments, designs for “magic lantern” projections go back at least as far as the 17th century. So the concept of projected designs was well-established by the time Congress passed the first design patent act in 1842—not to mention when it codified the Patent Act in 1952. Projected designs are simply not some new, unforeseen concept.

There may be new types of projection machines today, but this type of design is not new.

The USPTO suggests that the scope of design patentable subject matter “should be reevaluated in order to incentivize and protect innovation in new and emerging technologies.”

But it is not—and should not—be the role of the design patent system to incentivize or protect new machines. We have utility patents for that.

Furthermore, projected designs are not as the USPTO seems to suggest, unprotected today. Projected images qualify as pictorial, graphic, or audiovisual works that are already protected—costlessly and immediately upon fixation—by copyright. It can’t be seriously suggested that Congress was unaware of projected designs when it passed the broad definitions of protectable subject matter in the Copyright Act of 1976. It’s clear from the definitions that one form of projected creativity, cinema, was very much on Congress’ mind. See, e.g., 17 U.S.C. § 102(a)(6) (providing protection for “motion pictures and other audiovisual works.”).

Again, the type of projector may be new, but the type of work is not.

So why push for design patents when copyright is already available? There may be some who just want to accrue as many belts and suspenders as their IP budgets will allow. But that alone is not a good enough reason to expand design patentable subject matter.

It may be that, for at least some potential applicants, the goal is to avoid the requirements of copyright law. In Feist v. Rural, the Supreme Court held that a work must have “minimal creativity” to be protected. Thus, to gain copyright protection, a work must “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.” This is, according to the Supreme Court, a requirement of the Progress Clause.

Minimal creativity is a low bar. Yet the USPTO has granted numerous design patents for designs that fall below it—especially in the context of computer-generated designs. In theory, novelty and nonobviousness could be a higher bar but, in practice, that is not the case.

So let’s all be clear:

1. These are not new types of designs.
2. They’re not unprotected—unless they fail to meet the low constitutional threshold set in Feist.

For more on why § 171 shouldn’t be “reinterpreted” to cover projected designs, see: https://www.regulations.gov/comment/PTO-C-2020-0068-0009

by Dennis Crouch

New USPTO Director Kathi Vidal is working through the details of how to run the AIA-Trial Director Review program.  For now, she has promised transparency as the interim process is developed and is seeking public input.

• Interim Director Review Process (To be updated as changes are made).
• Status of Director Review Requests
• Provide Suggestions Here: Director_Review_Suggestions@uspto.gov

Once an IPR is instituted, the statute calls for the PTAB to issue a written decision on whether to cancel the challenged claims.  That decision is then immediately appealable by the losing party, at least according to the statute.  In Arthrex, the Supreme Court held that PTAB judges are not proper principal Officers of the United States and therefore do not have authority to speak for the US on important matters such as cancelling private property rights.  The Supreme Court then offered a non-statutory solution of inserting a director-review process following the PTAB decision prior to appeal. The result then is that the decision will be given the imprimatur of the Director who is a Principal Officer since she was appointed by the President and Confirmed by the Senate.

As I mentioned, the new Director Review was created by the Supreme Court on the fly without setting any clear bounds for its procedure or Director reasoning.  Questions:

• To what extent can the Director take into account outside lobbying or outside evidence? Lets say, for instance, that the Director reads NYTimes editorials.
• To what extent can the Director base her decision on issues apart from those listed in the IPR statute (e.g,. novelty and obviousness). For instance, is it permissible for the Director to consider US global competitiveness and impact on the marketplace?
• To what extent must the Director personally conduct and decide the reviews rather than delegate that responsibility.

Dir. Vidal is committed to make this an open process and the PTO will likely issue a Request for Comments in the coming weeks.

More from the PTO here.