What is this Appeal About? Secrecy at the Federal Circuit

UCP International Company Ltd. v. Balsam Brands Inc., Appeal No. 18-2231 (Fed. Cir. 2019)

In a separate post, I’ll write about the underlying decision here. This post is about the opening paragraph that begins with a reference to companion case (18-1256) involving the same case:

The instant appeal is the companion to concurrently issuing Appeal No. 18-1256 (“the Merits Appeal”), where we determined that the U.S. District Court for the Northern District of California misconstrued the “pivot joint” claim term of U.S. Patent Nos. 8,062,718 (“the ’718 patent) and 8,993,077 (“the ’077 patent”) (collectively, “the Patents-inSuit”). See UCP Int’l Co. v. Balsam Brands, Inc., No. 2018-1256, slip op. at 27 (Fed. Cir. Sept. 19, 2019). We presume familiarity with our opinion in the Merits Appeal which recites the same technology and patents as the instant appeal. We, therefore, only recite the facts necessary to understand the issues on appeal here.

Unfortunately, the referenced merits decision was issued under seal and so cannot be referenced as suggested by the appellate panel.

In the lawsuit, Balsam sued Frontgate for infringing its patents covering an artificial Christmas tree. Frontgate brought-in the manufacturer UCP for indemnification. Balsam then settled with Frontgate (without notifying UCP) and in a manner that left UCP liable for infringement. The confidential information is apparently related to the settlement between Balsam and Frontgate whose contents were designated as “Highly Confidential – Outside Attorneys’ Eyes Only” in the district court litigation.  In its briefing, Balsam identified the settlement terms as “highly confidential, sensitive information.”

The Federal Circuit has asked the parties to “show cause” as to why the under seal opinion should remain under seal with briefing due by October 3. The Federal Circuit has a particular rule limiting confidential marking to 15-words.  Fed. Cir. R. 28(d)(1). “A party seeking to mark confidential more than fifteen words in any brief must file a motion with this court establishing that the additional confidentiality markings are appropriate and necessary pursuant to a statute, administrative regulation, or court rule.”  Id.

I have included the redacted sections from UCP’s brief (BELOW) and I really can’t see how it can only be 15 words that are redacted. Note that the rule does allow for “repeating the marked words” without recounting. But, there are more than 15 lines of text marked confidential with usual average of 10+ words per line.


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Jury Verdict on Patent Eligibility (or its Underlying Factual Foundations)

by Dennis Crouch

Earlier this week, the jury returned with an interesting verdict in PPS DATA, LLC v. Jack Henry & Associates, Inc. (E.D. Tex. Sept 2019).  In the case, PPS sued Jack Henry for infringing its patented method of centrally processing remotely deposited checks.  The defendant argued that the claims improperly encompassed an abstract idea.  However, following Berkheimer, refused invalidate the claims on summary judgment — finding genuine disputes of material fact:

Having considered the § 101 Motion, the Court finds it should be and hereby is DENIED. The Court finds that there are genuine disputes of material fact with respect to whether “the claim limitations involve more than performance of ‘well-understood, routine, and conventional activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014)).

Those disputed facts were then put on trial and given to the jury to decide. The verdict particularly asked whether the asserted claims “ONLY involve activities that were well-understood, routine, and conventional” as of the application’s priority date.  The verdict – reproduced below – sided with the defendant in finding that the claims were only directed to such non-inventive elements.

The jury also sided with the defendant on infringement — finding none.

With that verdict in hand, Judge Gilstrap has already issued a final judgment in the case — finding (1) no infringement; and (2) that the asserted claims are “invalid for being directed to patent-ineligible subject matter.”



Whether the Court should overrule its precedents recognizing the “abstract idea” exception to patent eligibility under the Patent Act of 1952.

Trading Technologies International, Inc. v. IBG LLC, SCT Docket No. 19-353 (Supreme Court 2019)

Before writing this post, I note that while in practice (2003-2007) I represented Trading Technologies and filed a number of infringement lawsuits asserting infringement of patents related to those at issue here. Although I no longer represent Trading Technologies, I continue to be bound by duties owed to a former client.  – Dennis Crouch 

The patented inventions at issue are used by professional stock-market traders buying and selling in a dynamic electronic marketplace.  The patents generally relate to user interfaces (UIs) designed to improve accuracy and speed of offers and bids while also dynamically displaying market-depth (pending offers/bids at higher/lower prices).  U.S. Patents 7,904,374, 7,212,999, and 7,533,056.  These inventions do not make the computer itself run faster or improve the computer’s internal processing or signalling. Rather, the improvement is seated in user interaction.  In its decision, the Federal Circuit characterized the improvement as “focused on improving the trader, not the functioning of the computer.”  And, according to the court, such improvements were effectively non-technological abstract ideas.  “We conclude that the claims are directed to the abstract idea of graphing bids and offers to assist a trader to make an order.”

In its petition for writ of certiorari, Trading Technologies challenges the Federal Circuit’s conclusion that an inventive concept cannot lie in the improved user-functionality and also directly challenges the Supreme Court’s Alice Corp. decision and its progeny. (Note that on the first-point, the Federal Circuit has an inconsistent set of opinions).

Question presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), the Court declined once again to define the scope of the “abstract idea” exception to patent eligibility created by this Court. It did, however, assume that claims that “purport to improve the functioning of the computer itself” would be patent eligible. Here, a panel of the Federal Circuit held, in conflict with other panel decisions, that computer-implemented inventions providing useful functionality to users, but without improving the basic functions of the computer itself in a manner akin to improved hardware, are directed to abstract ideas and therefore patent ineligible.

Accordingly, the questions presented are:

1. Whether computer-implemented inventions that provide useful user functionality but do not improve the basic functions of the computer itself are categorically ineligible for patent protection.

2. Whether the Court should overrule its precedents recognizing the “abstract idea” exception to patent eligibility under the Patent Act of 1952.

Trading Technologies Petition.  On question two – it is important to note that the Supreme Court has identified eligibility as a question of statutory interpretation — but has not directly confronted whether the Patent Act of 1952 rejected or modified the abstract idea test.

Does the PTAB Precedential Opinion Panel (POP) get Chevron Deference?

Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2019)

In a sua sponte order, the Federal Circuit asked the parties to and the U.S. Gov’t to answer the following question:

[W]hat, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (‘POP’), and specifically to the POP opinion in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).

The Federal Circuit requested briefing from the U.S. Gov’t (filed on Sept 17, 2019) followed by party briefs within 14 days (October 1, 2019).  David Boundy has also already submitted an amicus brief on the topic.

In its brief, the Gov’t argues that the PTAB-POP decisions should be given deference–Chevron Deference–when interpreting AIA Trial provisions of the Patent Act. “The POP’s interpretations of the Leahy-Smith America Invents Act (AIA) qualify for deference under Chevron U.S.A. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).”

The POP’s precedential opinions readily qualify for Chevron deference. . . . Congress has expressly delegated authority to adjudicate IPRs, see 35 U.S.C. §§ 311-319, as well as authority to enact regulations “establishing and governing inter partes review under this chapter,” id. § 316(a)(4). Thus, both of the quintessential forms of lawmaking authority discussed in Mead, “adjudication [and] notice-and-comment rulemaking,” are present here. Moreover, the AIA is a complex, specialized statutory regime implicating a “vast number of claims” with a “consequent need for agency expertise and administrative experience.” Barnhart.

In his brief, Boundy focuses on the grant of rulemaking authority found in the AIA — that the PTO Director “shall prescribe regulations.”  35 U.S.C. 316(a) & 326(a).  Those provisions indicate ordinary notice-and-comment rulemaking procedures.  He explains:

Many agencies have a propensity to avoid rulemaking, because of the workload and oversight that comes with it. . . . The POP process takes that avoidance to a new level. Over the last seven months, instead of “prescribing regulations,” the POP has issued eighteen precedential decisions, mostly on issues that are recurring and predictable. This avoidance of rulemaking process denies all parties the benefits and predictability of careful, informed “regulation,” evades oversight by OIRA and the Small Business Administration, and as this case demonstrates, poses entirely novel legal questions. The PTAB’s shortcutting creates uncertainty for the public, and will burden this Court as procedural breaches get litigated.

Boundy Brief.

This particular case involves a quirky question of joinder under 35 U.S.C. 315(c) that allows the director to join someone “as a party.” In Proppant, the PTAB POP concluded that “§ 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party.”  Absent deference, I’m betting that the Federal Circuit will reject that rule.

= = = =

The consolidated case on appeal involves seven inter partes review proceedings filed by Facebook against four different patents owned by Windy City.  Facebook filed successive petitions against several of the patents and then requested joinder under § 315(c). The PTAB granted those requests. The final written decision cancelled some claims three of the patents, but upheld claims in all four.


You either die a hero, or live long enough to see yourself become a villain

by Dennis Crouch

Inspired Development Group and Mitchell Prine v. Inspired Products Group (dba KidsEmbrace) (Fed. Cir. 2019)

Mr. Prine is the listed inventor of U.S. Design Patent No. D524,559 and several other super-hero related car seats. Prine formed Inspired Development and assigned patent ownership to that company. Prine then formed another company, KidsEmbrace, to sell the car seats with an exclusive license from Inspired Development.  KidsEmbrace was then bought-out by Boliari who later terminated the license agreement. Prine sued for the money — suing for breach and unjust enrichment under Florida law.


New PatentlyO Law Journal Essay: Implementing Apportionment

New PatentlyO Law Journal Essay by Professor Bernard Chao of the University of Denver Sturm College of Law. 

On August 15, 2019, Time Warner filed a petition with the United States Supreme Court seeking to vacate a $139.8 million damages verdict.  That amount represents approximately 5% of Time Warner’s monthly subscriber revenue ($1.37 per subscriber per month). Time Warner argues that this award is too much given the contribution the patented feature made to its infringing service.  At its core, the damages portion of the petition is asking the Supreme Court to provide guidance that will ensure that damages verdicts rely on apportionment principles and provide clarity in how they achieve this.

For years, the Federal Circuit has required apportionment in calculating royalties for complex products because modern technology products (e.g. smart phones and semiconductors) have countless features, most of them unrelated to any given patent at issue. The patentee is entitled to capture value added by the infringing feature, but cannot recover value attributable to everything else.

As with many issues in patent law, this is easier said than done.  How do courts ensure that a patentee’s expert opinion on the ultimate damages figure is based on apportionment principles?  How do we know if the jury verdict reflects those same principles?

These issues are at the heart of Time Warner’s petition.

Read Bernard Chao, Implementing Apportionment, 2019 PatentlyO L.J. 20 (Chao.2019.ImplementingApportionment)

Prior Patently-O Patent L.J. Articles:
  • Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
  • Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
  • Colleen Chien and Jiun-Ying Wu, Decoding Patentable Subject Matter, 2018 PatentlyO Patent Law Journal 1.
  • Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
  • 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)
  • Peter S. Menell,  The International Trade Commission’s Section 337 Authority, 2010 Patently-O Patent L.J. 79
  • Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72
  • Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24
  • Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37
  • Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
  • Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 Patently-O Patent L.J. 19 (2010)
  • Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7  (2010) (Reines.2010)
  • Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
  • Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
  • John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
  • Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
  • Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
  • Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
  • John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
  • Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)

Thryv v. Click-to-Call: Accuracy vs Efficiency; Merits vs Technicality

Thryv, Inc., fka Dex Media, Inc., v. Click-To-Call Technologies, LP (Supreme Court 2019)

Oral arguments are set for December 9, 2019 in this case that again questions the meaning of “nonappealable” in the AIA trial context.

The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

35 U.S.C. 314(d).

The inter partes review (IPR) petition challenging Click-to-Call’s U.S. Patent 5,818,836 was filed by Ingenio who later became Dex Media and who is now known as Thryv.  The PTAB instituted the petition and later found the claims unpatentable.  On appeal, Federal Circuit sided with the patentee — holding (on rehearing) that the IPR should not have been instituted in the first place and thus vacating the final written decision.  In particular, the court held that prior litigation on the patent triggered the 1-year time-bar of Section 315(b). The en banc majority also held that the “nonappealable” statutory language was not strong enough to bar appeals of situations like this – where Director’s decision to institute went outside of her statutory authority. In Cuozzo v. Lee (2015), the Supreme Court arguably authorized such review (UPDATE BELOW):

While the decision to institute inter partes review is “final and nonappealable” in the sense that a court cannot stop the proceeding from going forward, the question whether it was lawful to institute review will not escape judicial scrutiny. This approach is consistent with the normal rule that a party may challenge earlier agency rulings that are themselves “not directly reviewable” when seeking review of a final, appealable decision. 5 U. S. C. §704. And it strikes a sensible balance: The Patent Office may proceed unimpeded with the inter partes review process … but it will be held to account for its compliance with the law at the end of the day.

Cuozzo. UPDATE – NOTE that the quote above comes from Alito’s concurrence/dissent, not the majority opinion.

The Supreme Court granted certiorari in Thryv on the following single question:

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

[Thryv Petition].  In its briefing, the Gov’t has provided a more neutral question:

Whether, in an appeal from the final written decision of the [PTAB] in an [IPR], the Federal Circuit is authorized to vacate the Board’s decision as to patentability on the ground that the review was improperly instituted because the petition was time-barred by 35 U.S.C. 315(b).

Merits Briefing is now ongoing with petitioner’s opening brief filed along with a Gov’t brief and amici supporting either (1) reversal or (2) neither party.

Although expected, the Gov’t brief is important. The Gov’t originally opposed certiorari and has now switched sides to support petitioner.  That change was foreshadowed at the petition stage in the Gov’t brief:

Although the government agrees that the court of appeals lacked jurisdiction to consider Click-to-Call’s challenge to the institution determination in this case, the court’s contrary jurisdictional holding does not warrant further review.

[Gov’t Brief Opposing Certiorari].  The Gov’t explains its conclusion of no-appellate-authority as consistent with Cuozzo.  In particular, Cuozzo explains that the no-appeal provision applies to questions “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”  The Gov’t key authority on this front is the dissent filed by Justice Alito in Cuozzo itself.  Alito particularly argued that limitations in the Cuozzo majority opinion would leave the courts “powerless” to curb abuses by the PTO, including improper policing of the 315(b) time bar.  [Gov’t Brief on the Merits].

Petitioner Merits Brief substantially parallels the brief of the Gov’t, although going a bit further by arguing that the no-appeal provision was designed to ensure that a patentee could not save its patent on a technicality not related to patentability.

This is critical, because overturning an IPR decision based on tangential, non-merits grounds decided at the institution stage would permit the patent owner to continue to enforce an invalid patent, thereby substantially harming the public interest.

Petitioner Brief.

So far, eight amici briefs have been filed:

  1. Supporting neither party: Federal Circuit Bar Association. (arguing that initiating a petition in violation of the time-bar is an “ultra vires” agency action appealable even when appeals are barred by statute).
  2. Supporting neither party: PTAB Bar Association. (this brief essentially requests that the Supreme Court write a careful opinion that considers its impact beyond the facts of this particular case).
  3. Supporting neither party: American Intellectual Property Law Association. (section 314(d) should not shield Board action that contravenes its statutory authority).
  4. Supporting petitioner: AARP. (quick and efficient IPR proceedings are saving lives by making drugs and biosimilars available at a lower cost).
  5. Supporting petitioner: Atlanta Gas Light Company. (“Providing greater opportunities for appellate review may increase accuracy, but at a cost to efficiency.”)
  6. Supporting petitioner: Intel Corporation. (decrease efficiency).
  7. Supporting petitioner: ON Semiconductor Corporation, et al. (the result here is to allow patentee to enforce invalid patents).
  8. Supporting petitioner: Superior Communications, Inc. (the only way this situation comes-up is where the patent has been found unpatentable on the merits but is seeking to escape judgment on a technicality).

Respondent’s brief and briefs in support will be filed over the next few weeks.

Guest Post: Design Patents After Curver Luxembourg: Design FOR an Article of Manufacture.

Ed. Note: I summarized the Federal Circuit’s design patent decision in Curver Luxembourg v. Home Expressions in a recent post titled Federal Circuit Rejects Patenting Designs “in the Abstract.” Prof. Burstein has previously written about the case and the topic and I invited her to provide some remarks on the case. – D.Crouch


By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law (@designlaw)

Two quick observations at the outset:

  1. This decision is consistent with previously-decided case law on infringement.* (For a full run-down, see my law review article: The Patented Design.)
  2. This decision not consistent with the USPTO’s current novelty rule. According to the MPEP, “[a]nticipation does not require that the claimed design and the prior art be from analogous arts,” relying on an out-of-context quote (which, as the Federal Circuit pointed out, was also dicta) from In re Glavas. See MPEP § 1504.02. The court’s ruling on this point is a welcome correction and should spur the USPTO to revise its examination procedures.

This case also raises a deeper and more important question—namely, what does it mean for something to be a “design for an article of manufacture”?

Design patents are available for “any new, original and ornamental design for an article of manufacture,” subject to the other requirements of Title 35. See 35 U.S.C. § 171(a). Prior to this case, some suggested that a “design for an article” refers to merely a design that is capable of being applied to one or more articles, not a design that is in any sense “for” any particular article. Under this view, the longstanding USPTO requirement that an applicant identify an article could be viewed as a type of reduction-to-practice requirement or mere formality that should not (or even must not) limit the scope of the claim.

The Federal Circuit’s decision in Curver seems to reject that conception of the patentable “design.” Although it doesn’t fully answer the question of what it means to be a “design for an article of manufacture,” this decision is a step in the right direction.

So what happens now? The USPTO requires a design patent applicant to identify an article in the verbal portion of the claim and (the same article) in the title. See 37 CFR § 1.153. But it also instructs examiners to “afford the applicant substantial latitude in the language of the title/claim” because, under 35 U.S.C. § 112, “the claim defines ‘the subject matter which the inventor or joint inventor regards as the invention.’” MPEP § 1503.01(I).

The Federal Circuit’s decision in Curver creates incentives for applicants to seek broader titles in order to obtain broader scope. In theory, that incentive would be counter-balanced by the fact that a broader title would create a broader universe of § 102 prior art. But given how difficult it is for patent examiners and accused infringers to find relevant prior art (an issue I discuss here), that seems unlikely to be a significant deterrent to over-claiming.

The risk of prosecution history estoppel might be a more significant practical deterrent. Curver initially claimed a “design for a furniture part.” When the examiner deemed that “too vague,” Curver amended the claim to refer to a “chair.” The Federal Circuit ruled that this amendment did limit the claim. Future applicants will have every incentive to push back on these types of rejections, putting pressure on the USPTO to enunciate clearer rules about how specific article identifications need to be.

In that respect, the USPTO (and anyone who’s interested in this topic) may want to revisit the CCPA’s 1931 decision in In re Schnell. In that case, the applicant attempted to frame its claim very broadly and the CCPA rejected that attempt. In doing so, the CCPA engaged in a thoughtful and nuanced discussion about how different types of designs might lend themselves to different types of claiming and how those claims might affect a design patent’s scope. The approach taken in Schnell is not the only possible (or necessarily the best) approach, but it’s worth considering.

I’ve also been asked how Curver might affect arguments about what constitutes the “relevant article” for the purposes of § 289. (For more on that issue, see this previous post.) At this point, it’s hard to answer that question with any certainty because the Federal Circuit has still not picked a test for Samsung step one. If it adopts the test proposed by the U.S. Government in its Samsung v. Apple amicus brief, the article identification in the patent would be relevant to the damages inquiry. This approach gives applicants incentives to direct the verbal portions of their claims to he largest salable unit. See, e.g., U.S. Patent No. D852,236 (stating that the design is “for a refrigerator” but only actually claiming a small part of the shape of the interior of a refrigerator). In some circumstances, these incentives might conflict with the ones provided by Curver; it will be interesting to see how applicants balance them in future applications.

And while Curver is only directly relevant to the scope of § 102 prior art, I suspect applicants will also argue that it should also narrow the universe of § 103 prior art. But when it comes to designs, it actually makes sense for the universe of § 103 prior art to be broader than the universe of § 102 prior art. (For more on these points, see here and here).

One final note: In Curver, the panel described the asserted patent as “atypical” because “all of the drawings fail to depict an article of manufacture for the ornamental design.” But it’s actually quite common for surface-ornamentation designs to be illustrated in this way. Whether or not that is a good policy (and whether it is consistent with § 112) is another question. The answer probably depends on what it means for a surface design to be “for an article of manufacture”? Even for repeating patterns like the one claimed in Curver, it could be argued that placement and proportion are still essential elements of a design for a particular article. If that’s true, then the disembodied-fragment drawing convention also needs to be reconsidered.

* Other commentators have asserted that, in the past, courts treated surface-ornamentation as designs per se. But they cited no cases in support of that assertion and I have not been able to find any. For more details, see FN 480 here.

Patent Term Adjustment: When does the RCE End?

Mayo Foundation v. Iancu (Fed. Cir. 2019)

This case involves a patent term adjustment (PTA) challenge by Mayo, the owner of of U.S. Patent 8,981,063.  On appeal, the Federal Circuit has affirmed the PTO’s statutory interpretation — holding that the RCE period (pausing PTA Calculation) is not ended by an interference proceeding.

Utility patents have a term of 20-years from the effective filing date of the patent application (not counting national-stage priority or provisional applications).  Since patent rights are not complete until the patent issues, a long period of prosecution can eat-into the effective length of the patent term.  However, Congress has provided for a generous Patent Term Adjustment (PTA) designed to add extra days to the patent term in order to compensate for lengthy prosecution periods.

This appeal is focused on the PTA guarantee of “no more than 3-year application pendency.”  35 U.S.C. § 154(b)(1)(B).  If the application is pending for more than three years, then the patentee will receive day-for-day additional patent term.  One major exception to the 3-year timeline is that it does not include RCE time: “not including — (i) any time consumed by continued examination of the application requested by the applicant under § 132(b).”

In Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014), the Federal Circuit held that this RCE-time exception stops at the mailing of the notice-of-allowance.

Mayo’s here prosecution was complicated by an interference proceedings that was declared after Mayo initially filed its RCE. Timeline below comes from Mayo’s brief.

From the chart above: Mayo filed an RCE and then a few months later the PTO declared an interference (at Mayo’s suggestion).  Once the interference ended, the PTO sua sponte re-reopened prosecution before finally issuing a notice of allowance.

Mayo’s argued that the time “consumed by continued examination” was only Period-1 that ended with the interference declaration.  Its reasoning has to do with interference declarations that require examination to be “completed” and the invention otherwise “patentable” before declaring the interference.

On appeal here, the Federal Circuit sided with the PTO — holding that a declaration of an interference not is the equivalent of a Notice of Allowance.  Rather, here “examination clearly did not end until the date the Notice of Allowance was mailed.”  Bottom line was that the court counted the post-interference examination time as caused by the RCE filing — and thus not eligible for PTA.

Although interference proceedings are now rare (and on their way out), the reasoning here would apply equally to cases where an examiner reopens prosecution following a successful appeal by the patent applicant. 

The majority opinion was penned by Judge Lourie and joined by Judge Dyk.  Writing in dissent, Judge Newman sided with Mayo since all of the claims pending in the interference had been indicated to be allowable by the examiner.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

State Rights; Sovereign Immunity; and the Patent System

Regents of the University of Minnesota v. LSI Corporation (Supreme Court 2019) (petition stage)

Question presented in this new petition:

Whether the inter partes review proceedings brought by private respondents against the University of Minnesota in this case are barred by sovereign immunity.

UMN Petition.

UMN sued LSI and Ericsson for infringing several of its semiconductor related patents. U.S. Patents 5,859,601, 7,251,768, RE45,230, 8,588,317, 8,718,185, and 8,774,309. Those two companies then petitioned the USPTO for inter partes review (IPR) of the asserted claims.  The PTAB then dismissed the proceedings – holding that 11th Amendment sovereign immunity applied to IPR proceedings.  On appeal, however, the Federal Circuit reversed – holding that sovereign immunity does not protect state-owned patents from being cancelled by the PTAB.

A key Supreme Court precedent on-point is Fed. Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743  (2002) (FMC) (presumptive state immunity even in administrative adjudications).  Here a major difference is that we have property-rights at stake that create special in rem jurisdiction potential and that UMN has already attacked the IPR petitioners by suing them for infringement, creating potential waiver.

This case is parallel to the Indian Tribe immunity case of Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896 F.3d 1332 (Fed. Cir. 2018).  The Supreme Court denied certiorari in that case earlier this year.  A major difference here is that Indian Tribe immunity stems from common law and statutory law (and sometimes treaty) while State immunity is grounded in the U.S. Constitution.


Federal Circuit Rejects Patenting Designs “in the Abstract”

by Dennis Crouch

Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019)

The district court dismissed Curver’s design patent infringement lawsuit for failure-to-state-a-claim.  Asserted U.S. Design Patent D677,946 is titled “Pattern for a Chair”
and claims an “ornamental design for a pattern for a chair, as shown and described.”

Note from the figure above that the drawings (and thus the claims) are not dirercted to a whole chair, but only a pattern that apparently could be used on a chair.

The accused product is not a chair but instead a basket that (arguably) uses the same pattern.  The district court looked to the “for a chair” limitation in the claim and made the easy conclusion that a basket is not a chair. Before moving forward, I’ll note the famous Van Gogh chalk drawing titled “woman sitting on a basket with head in hands.”  I wonder if she just tried to reconcile a set of Federal Circuit precedents.

On appeal, the Federal Circuit has affirmed — holding that claim language specifying a particular article of manufacture (a chair) limits the scope of the design patent in cases where “the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”

In this case, the patentee essentially asked for the Federal Circuit to construe the patent as covering a disembodied design that could be applied to any article of manufacture.  In rejecting that argument, the court first noted that it “has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompasses every possible article of manufacture to which the surface ornamentation is applied.”

Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se, we hold that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

Slip opinion.  As the court notes, PTO design patent practice bars patentees from obtaining coverage for an abstract design.

The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.

37 C.F.R. § 1.153.  This provision has not been challenged at the Federal Circuit (and this litigation appeal does not allow for a direct challenge of the PTO regulation).  However, the court suggests that the limit is also good policy — citing Prof. Sarah Burstein’s work on-point:

If we adopted a design per se rule, “the title and claim language would provide no useful information at all.” Sarah Burstein, The Patented Design, 83 TENN. L. REV. 161 (2015). In contrast, tying the design pattern to a particular article provides more accurate and predictable notice about what is and is not protected by the design patent.


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The Samuelson Clinic at Berkeley Law filed an amicus brief on behalf of the Open Source Hardware Association. The brief argues that allowing patenting of designs in the abstract would deter innovation.

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Although the design patent here was ‘examined,’ the examiner did not issue a single office action rejection.  Both the examiner’s search and references cited by the applicant focus on material for the backing or seat of a chair.

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Note here that the inventor has patented a number of baskets, and Curver sells baskets using this patented design.  But, Curver did not patent its basket with the design.

Prosecution History Disclaimer 1880 – 2019

Technology Properties Limited LLC v. Huawei Technologies Co., Ltd. (Supreme Court 2019)

In its new petition for writ of certiorari, Tech. Properties focuses on claim construction and the Federal Circuit’s application of prosecution history disclaimer.

Whether the United States Court of Appeals for the Federal Circuit’s development and application of the doctrine of “prosecution history disclaimer” is consistent with fundamental principles of separation of powers, the Patent Act, and long-established Supreme Court precedent.


The patent at issue here (5,809,336) stems from a 1989 application and a divisional filed just before the 1995 change-over to the 20-year-from-filing patent term. The microprocessor system claims require an “oscillator.”  In interpreting that limitation, the court added some additional negative limitations that (1) the oscillator “does not require a command input to change the clock frequency” and (2) the oscillator’s frequency “is not fixed by any external crystal.” The addition was based upon arguments that the patentee made during prosecution.  That narrowing, the patentee argues “runs afoul of the separation of powers among Congress, the USPTO, and the federal courts embodied in the Patent Act.”

The most interesting aspect of the petition here is reliance on so many 19th century decisions by the Supreme Court:

  • Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274 (1877) (The Patent Act of 1836 “relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture. . . . This duty is now cast upon the Patent Office. There his claim is, or is supposed to be, examined, scrutinized,
    limited, and made to conform to what he is entitled to.”)
  • Merrill v. Yeomans, 94 U.S. 568 (1876) (claims are of primary importance).
  • Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880) (prosecution history cannot “enlarge, diminish, or vary” the claim limitations).
  • White v. Dunbar, 119 U.S. 47 (1886) (“unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms”).
  • McCarty v. Lehigh Val. R. Co., 160 U.S. 110 (1895) (“[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim, . . . we should never know where to stop.”).

Of course, the petition also includes the mystery statement: “While the prosecution history can play some role in claim construction, it should not be used to diminish or enlarge the scope of the claims.” What is this mystery role?

STRONGER Patents Act of 2019

by Dennis Crouch

Patent reform legislation continues its slow pathway through Congress.  The leading bill is the STRONGER Patents Act of 2019 (“‘Support Technology and Research for Our Nation’s Growth and Economic Resilience”) with identical bills pending in both the House and Senate. H.R.3666; S. 2082.

Upcoming Hearing: September 11, 2019 held by the Intellectual Property Subcommittee of the Senate Judiciary Committee with testimony from: Bradley Ditty (InterDigital); Prof. Mossoff (Scalia Law); Prof. Cotter (Minnesota); Dan Lang (Cisco); Josh Landau (CCIA); and Eb Bright (ExploaMed). [Written testimony will be available on the Hearing website sometime on the 11th.]

The Bill is designed to strengthen the power of an individual patent — making it harder to invalidate and easier to enforce as follows:

  • AIA Trials: PTAB must require clear and convincing evidence before invalidating an issued patent;
  • AIA Trials: Petitioner must have standing (business or financial reason to challenge a patent’s validity);
  • AIA Trials: Bar multiple trials on the same claims; Bar multiple petitions on the same patent by a single petitioner.
  • AIA Trials: Allowing petitioner to appeal most insitution question; barring appeal of institution denials;
  • AIA Trials: Splitting institution judges from trial judges;
  • Enforcement: Presume that infringement causes irreparable harm and that the remedy at law is inadequate.
  • . . .

[Read the Bill]

A group of law professors have submitted a letter to Congress arguing against the STRONGER Patent Act.  The core argument of the letter is that the inter partes review (IPR) system “has proven to be a robust and efficient check on patent validity, and has had a positive impact across industries, including high-tech, Main Street, and pharmaceuticals, where invalid patents can keep drug prices high.”   [Read it here]  Prof. Cotter signed the letter; Prof. Mossoff did not.

Vacating the Entire Patent Office Proceedings on Equitable Grounds

by Dennis Crouch

Valspar Sourcing, Inc. (Sherwin Williams) v. PPG Indus. (Fed. Cir. 2019) (nonprecedential) (Valspar II)

This short decision reads like a study of my parenting style — “You should have understood my meaning based upon my facial expression!”  From a patent-law perspective, the Federal Circuit here has vacated an entire IPR proceeding because the challenger lacks standing to appeal.  Note here that the “R” is reexamination rather than review and the decision is nonprecedential.

This case involves two inter partes reexaminations filed by PPG back in 2012. U.S. Patents 7,592,047 and 8,092,876.  On reexamination, the examiner rejected all the claims; then the Board (PTAB) reversed all of those rejections (favoring the patentee).

On appeal, the Federal Circuit refused to hear the case on standing grounds — holding that Valspar had granted a covenant-not-to-sue that mooted the appeal.  PPG Industries, Inc. v. Valspar Sourcing, Inc., 679 Fed. Appx. 1002 (Fed. Cir. Feb. 9, 2017)(nonprecedential) (Valspar I).  Still, although it did not hear the merits of the case, the court still vacated the PTAB Final decisions in the interests of “justice.” In particular, the court appeared to be looking to punish Valspar for filing its covenant-not-to-sue late in the appeal — “tardily and unilaterally.”

“If a judgment has become moot, this Court may not consider its merits, but may make such disposition of the whole case as justice may require.” Walling v. James V. Reuter, Inc., 321 U.S. 671 (1944). . . .

“A party who seeks review of the merits of an adverse ruling, but is frustrated by the vagaries of circumstance, ought not in fairness be forced to acquiesce in the judgment. The same is true when mootness results from unilateral action of the party who prevailed below.” U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18 (1994). . . .


Valspar I.  Here, the vacatur is seen as an equitable remedy and, it turns out that the Federal Circuit was not interested in punishing the patentee for its late action, but only to ensure that the mootness holds.

Following Valspar I on “remand” and with its decision upholding the patent vacated, the Board went the other way and ordered the examiner to issue reexamination certificates cancelling all of the challenged claims.  In particular, the Board found that the vacatur of its prior decision terminated the appeal and thus the examiner was required by law to issue the reexamination certificate upholding the claims.

The Federal Circuit, now in Valspar II, found the Board’s approach inequitable — the very opposite of equitable.

The ordered vacatur was designed to protect the challenger from being forced to acquiesce to an unreviewable adverse ruling by the Board. But by effectively canceling all the challenged claims, the Board’s approach unfairly converted the vacatur shield into a sword for the challenger. That is an inequitable result—especially here, where the Board previously determined that the challenged claims are not invalid.

Had we intended such an incongruous result, we would have made that intent explicit in our opinion. The Board should have interpreted the scope of the vacatur based on the context provided by this court’s opinion. . . . With this context, it was clear that this court’s intent was to nullify the entire inter partes reexamination without any collateral effect on other litigation.

Valspar II.  On remand here, the Board is instructed to either (1) do nothing or (2) “To the extent the Patent Office interprets our mandate to require further action, such action should be limited to concluding the reexaminations by vacating the proceedings without any further adjudication, and without the issuance of any reexamination certificate.”

Issues Here: To my knowledge, the Federal Circuit has not begun vacating Inter Partes Review proceedings based upon lack of appellate jurisdiction, but this decision shows how it is within the court’s equitable power.

Query: Is anyone else a little bit creeped out by the Sherwin Williams logo?

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Andy Baluch (Smith Baluch) represented the patentee Valspar on appeal; Tony Figg (Rothwell Figg) represented PPG.

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Note that Valspar has an ongoing lawsuit against PPG that asserts continuations of the disclaimed patents here.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Eligibility: Commercial Success is Irrelevant to Inventive Concept Analysis

In re Greenstein (Fed. Cir. 2019) (nonprecedential decision)

Mark Greenstein is trying to patent an automated investment system to “automatically adjust the amount [a] person saves” in order to achieve a projected income amount. A key element of the claims, according to Greenstein, is to “utilize a projected amount of income at a future date for at least one person.”  The Examiner and PTAB found the claims unpatentable as both lacking eligibility and as either anticipated or obvious.

On appeal, the Federal Circuit has affirmed the eligibility rejection — finding:

  1. Alice Step 1: Representative claim 1 recites receiving investment data, adjusting an individual’s savings, and investing the adjusted savings to achieve a projected retirement income. This describes no more than the automation of the longstanding fundamental economic concept of personal financial planning. We have routinely held that such claims are directed to abstract ideas.
  2. Alice Step 2: The claims merely recite an abstract idea with instructions to implement it “using one or more computers with associated software.” And as the Board correctly stated, these are “generic, purely conventional elements.”

On appeal, Greenstein argued that the claimed utilization of projected income was an inventive concept and noted that it “was the basis for the successful commercial launch of a new product, demonstrating its material advantages to persons in the relevant market.” On appeal, the Federal Circuit found that argument failed to connect the dots.

Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a commercially successful product, this is insufficient to transform the claims into a patent-eligible application. It is well-settled that a claimed invention’s “use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”

Slip opinion, Quoting BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018).

Greenstein filed this application back in 2014 (provisional in 2013). He was represented by Bacon Thomas before the PTO, but took it on pro-se before the Federal Circuit.


Sovereign Indignity: Texas must Litigate its Infringement Case in Delaware

by Dennis Crouch

University of Texas v. Boston Scientific Corp. (Fed. Cir. 2019)

UT sued Boston Scientific for patent infringement in its home district of W.D. Texas (Austin).  BSC responded with a motion to transfer/dismiss on venue grounds — arguing that venue was improper under 28 U.S.C. 1400(b).  BSC is not a Texas corporation and has no regular-and-established place of business in W.D. Texas.  As such, the district court found venue improper and transferred the case to D.Delaware. (BSC does have a few dozen employees in W.D.Tex., all of whom work from home, but that did not create proper venue.)

UT appealed the transfer — arguing sovereign immunity, sovereignty, and “State Dignity”.  In particular, UT argued that an implicit exception to the venue statute allows for State of Texas has a right to sue for patent infringement in the state of Texas. The argument:

Venue is proper in the Western District of Texas because UT is an arm of the State of Texas, has the same sovereign immunity as the State of Texas, it would offend the dignity of the State to require it to pursue persons who have harmed the State outside the territory of Texas, and the State of Texas cannot be compelled to respond to any counterclaims, whether compulsory or not, outside its territory due to the Eleventh Amendment. . . .

[T]he federal patent venue statute cannot abrogate a State’s right to choose the forum when asserting infringement of its federal patent rights. UT also argues that the District
of Delaware lacks jurisdiction because UT never consented to suit in Delaware, never waived its sovereignty in Delaware, and never had its sovereignty abrogated by statute.

On appeal, the Federal Circuit “disagree[d] with UT on all grounds. . .  state sovereignty principles asserted by UT do not grant it the right to bring a patent infringement suit in an improper venue.”

We acknowledge that States are sovereign entities that entered the Union with particular sovereign rights intact. We are not convinced, however, that the inherent powers of Texas as a sovereign allow UT to disregard the rules governing venue in patent infringement suits once it chose to file such a suit in federal court.

Here, the appellate panel is effectively making a waiver argument — since UT filed suit in Texas, it implicitly agreed that the suit might be transferred to another state if such a transfer fit under the rules of civil procedure.

When a State voluntarily appears in federal court . . . [i]t logically follows that the State must then abide by federal rules and procedures—including venue rules—like any other plaintiff. We see nothing in UT’s cited authorities that suggests  otherwise. Indeed, it would be “anomalous or inconsistent” for UT to both invoke federal question jurisdiction and then to assert sovereignty to defeat federal jurisdiction.

Slip opinion.

Of some interest — UT might be able to refile the case directly to the U.S. Supreme Court under the “original Jurisdiction” clause of Article III, Section 2 of the U.S. Constitution.

In all Cases affecting Ambassadors, other public Ministers and Consuls, and those in which a State shall be Party, the supreme Court shall have original Jurisdiction.

This jurisdiction is not ‘exclusive’ to the Supreme Court and so the normal route is to go through the district courts.

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Note that ordinarily parties do not have a right to directly appeal a transfer order. Here, however the court found appellate jurisdiction under the collateral order doctrine.

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The patents at issue here cover implantable drug-releasing biodegradable fibers used in stents. U.S. Patent Nos. 6,596,296 and 7,033,603.  The patents are exclusively licensed to TissueGen, another Delaware Corp.

Berkheimer: Coming Up this Fall

The Berkheimer case has been pending for a while.  Steven Berkheimer first filed his infringement lawsuit against HP back in 2012. (N.D. Ill.) In 2016, the district court dismissed the case on summary judgment — finding the claims ineligible. That decision included two key legal findings (1) eligibility is purely a question of law; and (2) the clear and convincing evidence standard does not apply to questions of eligibility.   The appeal then took two years and in 2018 the Federal Circuit vacated that holding — finding that underlying issues of fact may be relevant here to the question of patent eligibility. Judge Moore explained in her decision:

While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.

Berkheimer (Fed. Cir. 2018).  Following the Federal Circuit’s decision, HP then petitioned for writ of certiorari and that petition is still pending.  In particular, briefing on the petition was completed in December 2018, but the Supreme Court then requested that the Solicitor General provide an amicus brief with the views of the U.S. Gov’t.  That CVSG request was sent out in January 2019 and the Solicitor General’s office has not yet responded.  I expect that at this point, a draft brief has been completed and there is now some debate between various elements of the administration.  I would have expected the brief to be filed by now (7 months later), but now expect it in by about October 10.

HP’s question presented in the case is as follows:

whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

As I mentioned previously, the petition creates a false dichotomy.  As we know from claim construction, not all questions-of-fact are given to a jury to decide.  And, the Federal Circuit did not hold that eligibility is “a question of fact for the jury.”  Despite the intentional misdirection by HP’s Counsel Mark Perry (Gibson Dunn) and David Salmons (Morgan Lewis), the case is interesting and important and I look for the court to take the case.

“Exceptional Case” Rule does Not apply to Doctrine of Equivalents

by Dennis Crouch

Amgen v. Sandoz (Fed. Cir. 2019) (on rehearing) [RehearingOrder][AmgenBrief][SandozBrief]

When I wrote about this case back in May 2019, I headlined the post with the court’s statement that “The Doctrine of Equivalents Applies ONLY in Exceptional Cases.” I noted that the court’s statement was “a major step without precedential backing.” It is possible that the court was simply intending to state that DOE is rare.  The decision was so problematic though because “exceptional case” is a term of art used elsewhere in patent law and suggests creation of an additional test prior to allowing a patentee to rely upon DOE.  Citing my post, Amgen petitioned for rehearing on the issue.

The court has now responded by altering its opinion to remove the most offensive portion of its decision.  The new statement:

The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991); see
also Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” (citing Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 850 (Fed. Cir. 2006))).

In its decision, the court maintained the ultimate holding that DOE did not apply here — because of substantial differences between the claimed and accused processes.

The decision as it reads now recognizes that DOE winners will be rare — and that rarity stems from the nature of the DOE test. In particular, DOE only applies when the accused device or method is different from what is claimed but may not be “substantially different” on an element-by-element basis.

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Appellate Litigation Strategy. Deanne Maynard (MoFo) represented Sandoz in the case did a masterful job in her en banc brief suggesting that the court take the action that it did — simply strike out the offending words.  The opposition brief explains:

[T]he Court neither adopted nor applied an “exceptional case” standard. Its doctrine of equivalents ruling broke no new ground. Applying settled law to the undisputed facts of this case, it correctly held that Amgen’s equivalents argument fails because Sandoz’s accused “purification process works in a substantially different way” from the asserted claim. For that reason, Amgen can only speculate about what an “exceptional case” standard might require or how one might be applied in future cases. This Court said nothing about that because it adopted no such standard. Without the six words Amgen highlights, the reasoning and outcome of the Court’s decision would remain the same; the only change would be in this observation: “The doctrine of equivalents applies only in exceptional cases and is not ‘simply the second prong of every infringement charge, regularly available to
extend protection beyond the scope of the claims.”

Maynard did something here that is really hard for attorneys in battle — admit (albeit implicitly) that the court went too far with its language.  In doing so, she opened the pathway to easy victory.