To create the chart below, I merged the my database of all utility patents issued since January 2005 with my database of all patent applications published since January 2005. I then looked to see how many of the published applications have issued as patents and grouped those according to the application filing date. This chart necessarily excludes information related to unpublished applications.
From the chart, about 10% of the applications filed 18-months ago have already issued as patents, and about 50% of the applications filed four years ago (January 2009) have issued. The chart is intended to provide some sense of how long it might take to obtain patent protection. With the advent of fee-based accelerated examination, an applicant can largely direct its patent timing. The question for quickly issued patents is whether that speed came at the sacrifice of adequate scope.
The second chart shows two different series: One for "original" non-provisional applications and another for applications that claim priority to a prior US non-provisional application (i.e., continuation applications). As is apparent from that chart, the continuation applications tend to issue much more quickly.
The seeming artificat in the continuation series (red) stems from a rush of continuation-application filing in the run-up to USPTO's (failed) implementation of continuation rules. Because the rules were never implemented, many applicants abandoned those hastily filed continuations.
InterDigital v. USITC and Nokia (Fed. Cir. 2013) (en banc)
An en banc request for rehearing in the Interdigital case has been denied, but the panel majority has released a new opinion particularly addressing the patent-troll-domestic-industry question. Judge Newman has also released a new dissenting opinion.
The question in the appeal raised by Nokia is whether InterDigital's patent licensing activities satisfied the "domestic industry" requirement of section 337 of the Tariff Act of 1930, 19 U.S.C. §§ 1337(a)(2) and 1337(a)(3). Here, the court again sided with InterDigital and held that the "most natural reading" of the statute indicates that section 337 relief is "available to a party that has a substantial investment in exploitation of a patent through either engineering, research and development, or licensing." There is no requirement for manufacture by the patentee or any other domestic party. Rather, "[a]s long as the patent covers the article that is the subject of the exclusion proceeding, and as long as the party seeking relief can show that it has a sufficiently substantial investment in the exploitation of the intellectual property to satisfy the domestic industry requirement of the statute, that party is entitled to seek relief under section 337." The majority opinion was written by Judge Bryson and joined by Judge Mayer.
In dissent, Judge Newman argued that a domestic industry requires domestic manufacture. No other judge joined Judge Newman in dissent – suggesting that the majority opinion is on solid footing with the court. And the result is that NPE lawsuits in the ITC are also on solid footing. The benefit of ITC litigation is the stronger likelihood of injunctive relief and the potential of industry-wide enforcement. To collect monetary damages, that injunction would need to be translated into a license agreement.
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19 U.S.C. §1337(a)(2) creates a prerequisite to IP enforcement in the USITC that "an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work, or design concerned, exists or is in the process of being established."
19 U.S.C. §1337(a)(3), as amended in 1988 describes the "industry in the United States" as follows:
[A]n industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned—
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering, research and development, or licensing.
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Apart from jurisdiction, there has been a recent push for the USITC to consider delaying, reducing, and rejecting injunctive relief in situations where the patentee's motivation for an injunction is to force a monetary settlement. See Colleen V. Chien and Mark A. Lemley, Patent Holdup, the ITC, and the Public Interest, 98 Cornell Law Review 1 (2012). The statute provides that:
If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States, unless, after considering the effect of such exclusion upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such articles should not be excluded from entry.
19 U.S.C. § 1337(d)(1).
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Nokia is expected to file a petition on this issue to the Supreme Court.
I don’t want to patent my idea, but I want to share it with the world and prevent others from patenting it. What is the best approach? [Link]
Who decides whether a patent is offered under FRAND terms? [Link]
I lied on my inventor oath regarding inventorship, what does this do to my employer’s patent? [Link]
What is differences between US8216392 and US7445677 (both directed to cleaning of a jet engine core)? [Link]
Save Google: Prior Art on BT’s US6628314 – a Computer interface method and apparatus with targeted advertising. [Link]
Prior Art for this claim: Chicken sternal cartilage-derived material comprising hydrolyzed collagen type II, said hydrolyzed collagen type II having an average molecular weight of between about 1,500 and 2,500 daltons. [Link]
The chart above shows a histogram of the number of references cited on the face of utility patents issued in the calendar year 2012. As is apparent, this is a highly skewed dataset with a long tail. Over the past five years, the percentage of patents citing more than 100 references has risen from 3% in 2005 to more than 8% today. Obviously, an examiner is unlikely to thoroughly review more than 100 references during the ordinary patent prosecution process. Once we all agree on that fact, the 100+ references do not create real problem so long as the USPTO examiner has data processing tools to help discover important elements within that focused set of references.
In what appears to be the first Inter Partes Revew petition decided on the merits, the USPTO Patent Trials and Appeal Board (PTAB) has granted Garmin's petition for inter partes review of only claims 10, 14, and 17 of US Patent 6,778,074 owned by Cuozzo Speed Technologies LLC. [See UPDATE BELOW] This is a mixed opinion because Garmin had requested IPR of claims 1–20. Inter Partes Review is a spawn of the America Invents Act (AIA) and serves as a more robust and rapid version of inter partes reexamination. In order to grant an IPR petition, the USPTO must determine that the petition shows "a reasonable likelihood that the petitioner would prevail." Now that the petition has been granted, the PTAB will move forward with the trial to determine whether those three claims are valid. Under the statute, the PTAB's determination as to whether to institute a PGR cannot be appealed. 35 U.S.C. § 314.
Cuozo originally sued Garmin, Tom Tom and several automakers for patent infringement in a New Jersey federal court. That lawsuit is still in the early stages of discovery, but the basic allegation is that Garmin's navigation systems infringe the '074 claims that are directed toward the use of encoded speed limit indicators.
For Garmin, this may be a case of winning-by-losing. In its IPR petition, Garmin suggested that the PTO use the broad claim construction suggested by Couzo's infringement allegations for the claim requirement that a "speedometer" and a "colored display" be "integrally attached".
The Patent Owner has taken a very broad view of the meaning of the claims based upon the allegations set forth in its complaint against the products of the real parties in interest here. The "broadest reasonable construction" of the challenged claims must be consistent with the allegations set forth in Patent Owner's civil complaint. Petitioner submits, for the purposes of the IPR only, that the claim terms are presumed to take on their ordinary and customary meaning that the term would have to one of ordinary skill in the art in view of Patent Owner's civil complaint and the Specification of the '074 Patent.
The PTO rejected the notion that the patent owner's post-patent-issuance civil complaint has any bearing on the claim construction and also found that the claim scope suggested unduly broad.
Petitioner does not make known its construction of "integrally attached." Instead, Petitioner states that the term has to mean, in this proceeding, what the Patent Owner asserts it means in the infringement suits the Patent owner has filed against various parties including Petitioner. That argument is without merit. The meaning of claim terms is not governed by what the Patent Owner says they mean in filing an infringement suit based on the '074 Patent. There is no reason to assume that the Patent Owner's litigation position is correct. Litigation positions taken subsequent to issuance of the patent are unreliable. . . .
On this record, we construe "integrally attached" as applied to the colored display and the speedometer in the context of the disclosure … as meaning that the two elements are discrete parts physically joined together as a unit without each part losing its own separate identity. In the combined unit, the colored display is still the colored display and the speedometer is still the speedometer; each retains its own separate identity.
The PTAB went on to particularly find that a single display screen showing both the speedometer and colored display would not satisfy the integrally attached limitation as construed above.
The single electronic display screen of Aumayer showing both the image of a speedometer and a colored scale mark indicating the current speed limit does not meet the claim recitation "integrally attached" as applied to a speedometer and a colored display. There, the speedometer and the colored display are not discrete and separately recognizable parts that are "integrally attached" to each other. Rather, the liquid crystal display screen is itself a single component which performs the function of both the speedometer and colored display.
In the context of the inter partes review, the result is that the suggested references do not show the claims unpatentable. Garmin's gambit, however, is that the same narrow claim construction will carry-over to the litigation and result in a finding of non-infringement. Although the district court will not be bound by this construction, it is likely to be instructive and at least cognitively limiting to the New Jersey judge – especially since the PTO's interpretation is the 'broadest reasonable construction.'
UPDATE: It turns out that the PTAB has released at least one earlier petition decision – in IPR2012–00026 involving Microsoft’s challenge of ProxyConn’s Patent No. 6,757,717. In that decision, the PTAB granted the IPR for claims 1, 3, 10, and 22–24, but denied the petition to review claims 11, 12, and 14.
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Under 35 U.S.C. § 316, the USPTO has one year from now to make a final determination in the case. The USPTO has scheduled for the trial to be complete in August 2013.
Since 2005, the average number of claims in issued patents has fallen rather steadily. The drop is most particularly apparent in patents that include more than 20 claims. The chart below shows the percent of issued patents with more than 20-claims charted as a 20-week moving average by issue date. One trigger for this change was a December 2004 change in the application fee structure that roughly tripled the cost for filing each claim more than the original 20. With that cost-structure, it became cheaper to file a second patent application rather than one application with 40 claims. There are other hypotheses for the shift, such as the commodification of the 20-claim application, downturn in the economy that limited both cash-on-hand (for some companies) and the expected value of issued patents, changes in the value of patent claims, etc. Foreign applicants generally file fewer claims on average than those contained in US originated applications. However, both groups have experienced a relatively similar drop.
Only two weeks into 2013, the USPTO continues to issue patents at a record pace. New patents are issued each Tuesday morning. On January 8, 2013 the PTO issued 5,633 utility patents – the most ever issued on a single day. The prior two weeks rank second and third on the all-time list. Thus, although we are only two-weeks into the new year, if current projections hold the PTO will issue more than 290,000 patents in 2013. That represents a major jump from 2012’s record of 253,000 issued patents.
Two things are happening to cause this change: (1) the PTO now grants a greater percentage of patents than it did a few years ago – that percentage has continued to rise throughout the past two years; and (2) the PTO has a greater number of disposals – primarily because of the agency’s hiring binge. In 2012, the first of these contributed more to the increased number of grants. I expect that in 2013 the increased throughput will have the greater impact as new examiners get up-to-speed.
The strength of this forecast will largely depend upon whether the Agency continues on the same path after Director Kappos steps-down later this month. Deputy Director Rea is unlikely to move away from this course and may well push for more efficiency during her expected tenure as Acting Director. However, the new appointee (yet unnamed) may be a different story. A second major factor that could negatively impact the grant rate is another budget crisis that would limit the ability of the USPTO to pay examiners for overtime work.
In re Chevalier (Fed. Cir. 2013) (nonprecedential) (Patent Application Ser. No. 11/407,778)
In a non-precedential but instructive opinion, the Federal Circuit has affirmed the USPTO's obviousness rejection of L'Air Liquide's application covering devices used to form gas-liquid dispersions. The Board rejected claim 1 as obvious, over a combination two prior art references – finding that it "would have been obvious to one skilled in the art to modify the Kwak device in view of the teachings of Howk."
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The difficulty with appealing PTAB decisions is that conclusions of fact made by the USPTO's appellate board are reviewed for substantial evidence. In order to win an appeal on a factual question, the patent applicant must go quite a bit further than simply proving that the PTAB's decision was wrong. Rather, the PTAB decision will only be overturned if not based on "more than a mere scintilla" of evidence. Restated, the question is whether the factual conclusion is based upon "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." "[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency's finding from being supported by substantial evidence." Consolo v. Fed. Mar. Comm'n, 383 U.S. 607 (1966).
This case represent the most frequent form of PTAB decision – that the applied-for patent claim is unpatentable as obvious over a combination of references. The ultimate question of obviousness is a question of law (reviewed de novo on appeal). However, that ultimate conclusion is based upon a set of factual underpinnings as explained by Graham v. Deere. The Federal Circuit has also held that "[t]he presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000).
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Chevalier challenged the combination of references – arguing that the combination of Kwak and Howk would be inoperable. Apparently Chevalier took the drawings from Kwak and Howk and unsuccessfully tried to jam them together. The Federal Circuit saw that process as "misapprehend[ing] the nature of the obviousness inquiry."
The obviousness inquiry does not ask "whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d 852 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413 (CCPA 1981) (stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"). Rather, in a case such as this where each of the elements of the claim are known to the art, the obviousness inquiry requires a finding that the combination of known elements was obvious to a person with ordinary skill in the art.
Here, each of the elements of the claim is taught by Kwak with the exception that the Kwak deflector is not attached to the drive shaft. This deficiency in Kwak is supplemented by Howk, which teaches a deflector attached to the drive shaft. The examiner found, and the Board affirmed, that one of ordinary skill would be motivated to modify Kwak in view of Howk because the modification "would facilitate a more rapid and more complete conversion from axial flow to radial flow of the liquid exiting from the bottom of the device." Ex Parte Gilbert Chevalier, 2011 WL 6747404 (B.P.A.I. Dec. 21, 2011). Chevalier does not challenge this finding. Accordingly, we find no error in the Board's determination that Kwak and Howk could be combined to achieve the claimed invention, nor do we find any error in the Board's determination that one of ordinary skill would be motivated to combine these references to achieve an aeration device that more rapidly and more completely converts axial flow to radial flow in the gas-liquid mixture.
The appellate panel then moved to KSR v. Teleflex to bolster its decision:
Our conclusion is strengthened by Chevalier's admission that the deflectors of Kwak and Howk are "recognized equivalents performing the same function of converting axial flow to radial flow." Appellant's Br. 9. The Supreme Court stated in KSR that "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR. Here, the claimed invention merely substitutes the deflector of Howk, which is attached to the drive shaft, for the deflector of Kwak, which is attached to the floor of the basin. This substitution achieved only the predictable result of converting the axial flow of the gas-liquid mixture to radial flow.
Rejection affirmed
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The problem with the appeal here is that the appellate arguments are essentially a repeat of the lawyerly discussion of facts made to the examiner and PTAB. When those do not work at the PTO, they are highly unlikely to work on appeal to the Federal Circuit. (No factual affidavits were submitted in the case at the PTO). If Air Liquide had wanted to win the case, they would have been better served to hire expert witnesses to provide testimony either as affidavits to the PTAB or else bring forth that evidence in a civil action. Of course, that approach is likely more expensive and raises a greater potential of inequitable conduct charges down the line – especially in cases like these where other members of the patent family have already issued.
The C.W. Zumbiel Company, Inc. v. Kappos (Fed. Cir. 2012) Download 11-1332 Panel: Prost (dissenting-in-part), Moore, Wallach (author)
Prior to KSR v. Teleflex, the Federal Circuit granted significant deference to the PTO on obviousness determinations; following KSR, that deference has only increased. Zumbiel v. Kappos represents possibly one of the more extreme examples of that deference. This appeal is unusual, however, in that it involves substantial deference to the BPAI/PTAB's finding that a claim is nonobvious, deference that is (in the dissent's view) contrary to other aspects of the Court's holding in KSR.
Graphic Packaging International is the assignee of Patent No. 6,715,639, which is directed to a carton or box that holds containers such as cans and bottles. Zumbiel filed for an inter partes reexamination of the '639 patent, arguing that the claims were obvious in light of various prior art references. The BPAI (now the PTAB) determined that some of the claims were obvious (including claim 1) and some were nonobvious (including claim 2). Both parties appealed the adverse determinations.
Representative Claim 1:
1. An enclosed carton for carrying a plurality of containers in two rows, with a top row and a bottom row, said containers each having a diameter, the carton comprising:
a. a top panel, side panels, a bottom panel, and closed ends, at least one of which is an exiting end; b. a dispenser which is detachable from the carton to form an opening at an exiting end through which the containers may be removed; c. the dispenser being a unitary structure comprising a portion of the top panel, portions of the side panels, and a portion of the exiting end, said portions being defined by a tear line extending across the top panel, side panels, and exiting end; d. means for preventing the end container in the bottom row from accidentally rolling out of the carton after the dispenser has been opened, the height of the means above the bottom panel being less than the diameter of said end container; and e. a finger flap located along the portion of the tear line extending across the top panel for pulling the dispenser open along the tear line, f. whereby when the dispenser is opened it may optionally remain attached to the carton at the exiting end to form a basket at the exiting end of the carton.
Representative Dependent Claim 2:
2. The carton of claim 1, in which the finger flap is located between the first and second containers in the top row.
Prior Art Reference 1 (Ellis):
Prior Art Reference 2 (German '718) (note that there were two additional prior art references):
The Federal Circuit began by affirming the PTAB's determination that representative claims 1 and 13 were obvious. Among other issues, the court employed a "predictable variations" approach to conclude that a claimed limitation would be met. German argued that the prior art did not teach the claimed location of the finger flap; the court, however, agreed with the Board that "providing the finger opening on the top wall of the carton would be a predictable variation that enhances user convenience…and is within the skill of a person of ordinary skill in the art." Slip Op. at 15.
The court next turned to Zumbiel's appeal of the PTAB determination that representative claim 2 was nonobvious. The sole additional limitation added by claim 2 is that "the finger flap is located between the first and second containers in the top row." Thus, "the dispute lies in whether the location of the finger flap between the first and second cans is obvious in light of the prior art." Slip Op. at 20. Applying a substantial evidence standard, the majority affirmed the Board's determination that (1) a third prior art reference did not provide the necessary teaching for moving the tear line and (2) "there was little incentive to relocate Ellis's finger flap to a position between cans in order to provide space for the fingers." Slip Op. at 22. Based on these findings, the majority held that claim 2 was nonobvious.
Judge Prost's Dissent: In a plain language dissent, Judge Prost strongly disagreed with the majority's determination of nonobvious:
"Failing to apply KSR to the facts of this case, the Board has concluded that the invention recited in claim 2 is non-obvious. Because I believe that a common sense application of the obviousness doctrine should filter out low quality patents such as this one, I cannot join the majority in endorsing the Board’s incorrect approach on this question. Thus, with respect, I dissent."
…
[L]et’s be clear what claim 2 is about. The claimed invention takes the opening from Ellis, takes the stacked can configuration from another box, and puts them together. The result is—as one would expect—a box that has the known benefits of Ellis’s opening and the known benefits of a stacked can configuration.
Why is this assembly non-obvious? Because, the Board explains, the patentee has solved a difficult implementation problem, the solution to which was supposedly not obvious to box makers who lacked extraordinary skill. The secret lies in the proper positioning of the tear line. That is, according to the Board, ordinary box makers would not have put the tear line between the first two cans in the top row.
Where else could have they put it? There are just four other options: (1) above the first can, (2) above the second can, (3) in front of the first can, (4) behind the second can. The first two alternatives are just offensive to common sense: With the cans right below, there would be no room to push the flap through (the flap is positioned at the center of the tear line). The third and fourth options are not quite as illogical, but even without expertise in box making, one may intuit that they make awkward designs (the third opens too little, the fourth too much).
More importantly, however, whether some of the alternatives would work just as well or not, the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite—indeed very small—number of options. And there are no unexpected results[.]
The point here is not that the Board got the facts wrong. The point is that contrary to the Supreme Court’s instructions, an “overemphasis on the importance of [teachings of prior art]” has insulated the Board’s analysis from pragmatic and common sense considerations that are so essential to the obviousness inquiry. KSR, 550 U.S. at 419. The Board’s approach relegates one of ordinary skill to an automaton. Should this approach become commonplace, it would lower the obviousness bar and hence hinder competition and innovation. That is why, unlike the majority, I do not see any room for deference to the Board’s determination in this case.
In yet another patent contract dispute, the Federal Circuit has transferred appellate jurisdiction back to the regional circuit. Here, it appears that the mistake was due to an error by the district court clerk who thought of the case as a patent case.
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National Pasteurized Eggs (NPE) filed the case in 2007 asking the New Hampshire district court to quiet title in several US and foreign patents. From the complaint:
By this action, NPE seeks a declaratory judgment of rightful ownership of three United States patents and two international patent applications and resulting foreign patents, as specified below.
Davidson founded the Pasteurized Egg Corporation (PEC). When he left the company in 2000, he signed an assignment and further cooperation agreement. [Appendix to Complaint] PEC went bankrupt in 2003 and its intellectual property assets were purchased by National Pasteurized Eggs (NPE) who is looking to ensure all of the Davidson patents are assigned to the company. (Note – the Davidson's brand shown to the right is also owned by PEC).
In considering what rights Mr. Davidson retains, the agreement uses the term "inventiveness." The agreement states:
New processes or intellectual property ("inventiveness") developed prior to January 1, 2001 ("Old Inventiveness"), including a method for extending the shelf life of pasteurized eggs by treatment with antibacterial agents, shall be the property of PEC and LJD shall take such actions as may be reasonably required by PEC to assist PEC to complete the development, improvement, documentation, protection and patenting of such Old Inventiveness.
Inventiveness developed by LJD, whether in combination with "Old Inventiveness" or prior inventiveness, which results in protection from new patents or patent applications providing broader or improved protection, on or subsequent to January 1, 2001 ("New Inventiveness") shall be considered the property of LJD.
It is this poorly written agreement that has led to the legal conflict.
Davidson filed a number of patent applications following the 2001 agreement and argued that those applications involved new inventiveness. In its ruling, the district court sided with NPE – holding that the inventiveness associated with the primary disputed patent occurred prior to the 2001 date since testing had already begun on the new process. Download Davidsonfinaljudgment. It is this decision being appealed.
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After losing at the district court, Davidson filed a Notice of Appeal to the First Circuit. However, the district court clerk sent the docket and certificate to the Federal Circuit. On unopposed motion, the Federal Circuit has now transferred the case to the First Circuit.
In its order, the Federal Circuit suggested, but did not decide, that the First Circuit is the proper site of appellate jurisdiction. In this case, however, the transfer was required because the Fed. R. App. P. 3(d)(1) does not allow a district court clerk to unilaterally change the appellate court.
Fed. R. App. P. 3(d)(1) states that the clerk of the district court "must promptly send a copy of the notice of appeal and of the docket entries .,. to the clerk of the court of appeals named in the notice."
Because of the mandatory language of Rule 3(d)(1), we believe we must transfer this appeal to the First Circuit, i.e., the clerk of the district court was required to send the notice of appeal to that court. Although we do not address jurisdiction, the case appears to involve ownership of patents rights and contract interpretation. See Luckett v. Delpark, Inc., 270 U.S. 496 (1926).
There is some chance that the Federal Circuit will see the case again – depending upon whether the First Circuit sees a substantial question of patent law buried in whether Davidson's new patents include some "inventiveness developed by LJD . . . subsequent to January 1, 2001."
Today, Judge William C. Bryson of the United States Court of Appeals for the Federal Circuit assumed senior status. Judge Bryson joined the court in 1994. A true career civil servant, his experience prior to joining the bench was extraordinary: he served as a law clerk to both Judge Friendly of the Second Circuit and Justice Thurgood Marshall, and spent seventeen years at the Department of Justice (including two stints as Acting Solicitor General) prior to his appointment to the Federal Circuit. His work ethic, keen intelligence, and sense of fairness are legendary on the court.
One short story of my own: A few hours after interviewing with Judge Bryson, I was ecstatic to receive a phone call from the judge offering me a position in his chambers. But Judge Bryson made the offer with a condition: he required me to wait at least a week before I could accept the offer, so that I could really think about the offer and weigh any offers from other judges. In today's day of hour-long exploding clerkship offers, Judge Bryson's practice really stands out in sharp contrast (admittedly, I don't know whether he still follows this rule). Of course, I accepted the offer as soon as I was permitted to!
In celebration of Judge Bryson's service on the Federal Circuit, I reached out to several of his other former clerks for their thoughts on the judge. There were far more than I could possible include here, but the comments below are representative:
"The best thing I learned working for Judge Bryson is not to be so enamored of the easy parts of your case that you lose sight of the hard parts. Work to find the hardest question that a judge or an opponent might put to your case. If you can’t figure that out, you don’t know your case well enough. Then work to find the best answer to that hard question. If you don’t have a good answer, you are not doing everything that you can to win. Surprisingly, many attorneys arguing at the Court seemed shocked to be challenged or have their arguments tested."
"I have had many senior partners, clients, superiors, etc. tell me over the years that they want my unvarnished views and don’t want “yes men” to just nod along. Judge Bryson embodied the rare person who really meant that when he said it."
"Judge Bryson was assigned the standard floor space in the Markey courthouse — three bay windows' worth — and was allowed to configure his chambers as he saw fit. He took none of the windows for his own office. Instead, he sat in a windowless room and used the bay windows for a library and conference room open for use by (and frequently used by) all of chambers staff. This unusual and perhaps unique arrangement speaks volumes to Judge Bryson's humility, collegiality, and work ethic." (This specific recollection was shared by many of Judge Bryson's former clerks).
"Probably every person that argues in front of Judge Bryson lives in respect of his hypotheticals. He has a good knack for boiling down the essential point of a case into a hypothetical question or statement. As a clerk, the amusing aspect of the hypotheticals was that many attorneys could not decide whether they should agree, or disagree, with his hypothetical. The deer-in-the-headlights look from these attorneys was priceless."
"If you have a good substantive case, you want Judge Bryson on your panel. If you don’t have a good substantive case, you don’t want to see him show up on your panel."
"At the end of our clerkship during a recruiting dinner, I had a very senior figure at one of the top patent firms (you’d know his name immediately) say to me “You know… some people would say that Judge Bryson is the smartest judge on the bench.” I’ve had this statement repeated to me many times by members of the Fed Cir bar over the last 11 years."
"When I brought my kids into chambers, I was worried about them overstaying their welcome and bothering Judge Bryson. To the contrary, I think that if Judge Bryson had had his way, he would have spent the whole afternoon looking up countries on the globe and drawing on the white board with them."
"I think of Judge Bryson as extraordinarily dedicated to reaching the correct decision in any appeal. For patent cases, I remember that he would always spend a great deal of time attempting to understand the underlying technologies. One time, I saw him studying briefs while he was waiting for the Metro at McPherson Square."
"During the clerkship, I was endlessly impressed by how Judge Bryson was always able easily to pierce through a complicated record to identify what was central to the disposition of a case — and how he worked through all issues with such integrity. Various former clerks of Judge Friendly (the Second Circuit titan for whom Judge Bryson had also clerked) have often spoken about how their judge didn't really need any law clerks, because his knowledge of the law was just so encyclopedic, and because he was so efficient and self-sufficient; I feel the same way about Judge Bryson. And on top of it all, he is a true and kind mentor. Those of us who have had the privilege of clerking for Judge are truly lucky."
"Judge Bryson's questions at argument could be difficult to deal with, even for seasoned attorneys. In one example, an attorney attempted to sidestep one of Judge Bryson's questions (or at least buy himself time), arguing that "I'm from Texas, I think slow and I talk slow." Judge Bryson was not so easily brushed aside, responding something like, "I'm from Texas too, but I would like you to answer my question.""
"Judge Bryson is easily the smartest lawyer I've ever known, and yet also one of the most unassuming people I've ever known. I recently read a biography of Judge Bryson's former boss Judge Friendly. I frequently recalled my year as a clerk for Judge Bryson as I read about Judge Friendly's intellect, work habits, non-ideological approach to judging, and how his clerks apparently had to work hard to come up with things that the judge hadn't already figured out on his own. Much like Judge Friendly was, though, Judge Bryson is not the least bit pretentious or taken with his own intellect — despite having infinitely more skill and experience than his clerks, Judge Bryson treated his clerks as colleagues and was always open to hearing their ideas. I can think of no better way to have started my legal career than the year I spent as a clerk for Judge Bryson."
As a senior judge, Judge Bryson will continue to sit regularly on the court, although with a reduced docket. We can hope that he will do so for many years!
Christopher Carani is one of the leading design patent practitioners in the US. His recent ManagingIP article highlights the design patent elements of Apple v. Samsung and other famous design patent cases in order to tease out some methodology for knowing which design patents are likely to be infringed. The four-page article offers a concise design patent infringement primer.
Carani writes:
Indeed, even if well-versed in design patent jurisprudence, one of the most difficult questions an intellectual property practitioner can be asked is whether a given product infringes a design patent. Like it or not, there is an inherent subjective component to the design patent infringement analysis that is often unnerving to seasoned pros and novices alike.
One of the few guiding lights to aid practitioners through these murky waters is a firm grasp of the patented and accused designs implicated in, and the holdings of, past decisions. It is only through this type of empirical study and ocular inspection that one can get a feel for the central question of "how close is too close" for design patent infringement. To that end, set forth below is a visual comparison of exemplary cases where there were findings of infringement, and in others non-infringement.
In the face of Supreme Court scrutiny over its jurisdictional power, the Federal Circuit has taken a step back from its historic approach of expanding patent law jurisdictional reach.
DeRosa is the inventor of a cam-less chuck for use in a router. These have been available for some time with ordinary drills, but the large size and high rotation speed made the same type of assembly more difficult for a router. DeRosa’s provisional patent application was filed back in November 1998 and, at the same time, DeRosa assigned his rights in the invention and “further improvements” to Marmo in return for a promise that a promise that Marmo would manufacture and sell the device and that DeRosa would receive royalties on those sales.
In 2010, DeRosa sued Marmo in Virginia state court – alleging that the company had failed to live up to its continued contractual obligations to manufacture and sell the device. In the lawsuit, Marmo asked for both contract damages and a reversion of ownership rights in the patent. The case was first removed to Federal Court on diversity grounds and then removed to an arbitrator based upon the contract terms. The arbitrator found for DeRosa on breach of contract but held that Marmo was still the proper patent owner. That decision was confirmed by the E.D. Virginia District Court in an April 6, 2012 order.
On appeal, the Federal Circuit has refused to decide the case – holding that it lacks jurisdiction and that the proper venue is the Court of Appeals for the Fourth Circuit. The reason here is that the complaint did not raise any substantial questions of patent law but rather simply focused on the contract. Judge Bryson writes:
Causes of action based on contractual rights in a patent assignment or license agreement as a general rule do not arise under the patent laws. See Luckett v. Delpark, Inc., 270 U.S. 496, 502-03 (1926); New Marshall Engine Co. v. Marshall Engine Co., 223 U.S. 473 (1912). Marmo nonetheless argues that the appeal is properly before this court because the complaint specifically requests a restoration of ownership in patent rights.
That DeRosa’s complaint ultimately sought to restore ownership in the invention is of no great significance. The focus of the jurisdictional inquiry is whether the plaintiff “set up some right, title or interest under patent laws, or at least makes it appear that some right or privilege will be defeated by one construction, or sustained by the opposite construction of these laws.” Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 807-08 (1988).
The complaint in this case did not turn on such a claim. The alleged harm stated was Marmo’s failure to abide by its “contractual and financial obligations under the contract” resulting in DeRosa not having received the “bargained for benefit” of “a steady flow of manufacturing business and the timely payment for the product.” Although a restoration of patent ownership is sought in the complaint, such relief is entirely premised on the claim that Marmo’s failure to fulfill its obligations under the contract warrants a remedy of rescission. As such, this case does not arise under the patent laws, and we do not have jurisdiction.
In Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567 (Fed. Cir. 1997), a case very similar to this one, this court held that a plaintiff seeking rescission of a patent assignment agreement in order to restore ownership rights in a patent could not meet the jurisdictional test set forth in Christianson. As in the present case, the plaintiff in Jim Arnold had no rights in the patent without judicial intervention and was thus left only to argue that ownership of the patents should be restored based upon a breach of contract claim. Because a plaintiff under such circumstances could at best only present a frivolous allegation of ownership of the patents at issue sufficient to confer jurisdiction under section 1338, we transferred the case to the regional circuit. Since the same outcome is warranted here, pursuant to 28 U.S.C. § 1631, we transfer the case to the Fourth Circuit.
The court ignored Marmo’s most compelling argument – that the action was implicitly a move by DeRosa to quiet title in his further improvements that he later patented and now manufactures through another source. Marmo argued that mapping the contracted-for improvements to the various patents necessarily requires a substantial consideration of patent law issues. The case will now move to the Fourth Circuit to see whether the arbitration award was properly confirmed.
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Minton v. Gunn: This term, the Supreme Court is considering Minton v. Gunn, a patent litigation malpractice case. Legal malpractice is ordinarily a state law claim. Here, however, the court is considering whether the malpractice action arises under the U.S. patent laws in such a way that would confer both federal jurisdiction at the district court level and Federal Circuit jurisdiction on appeal.
America Invents Act: The Leahy–Smith America Invents Act (AIA) expanded the scope of federal jurisdiction to include cases whose only substantial patent claim is filed in a compulsory counterclaim. See 28 U.S.C. § 1295(a)(1) as amended. However, that change in the statute does not impact this case because it only applies to civil actions commenced on or after September 16, 2011.
Notice of Arbitration Awards: 35 U.S.C. § 294(d) requires that a notice of arbitration award be filed with the USPTO. Under the statute, “[w]hen an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.” The submission is required to include a number of details as well as “a copy of the award” itself. Under the law, that award becomes a public record and part of the patent file. As a kicker, law states that “[t]he award shall be unenforceable until the notice required by subsection (d) is received by the Director.”
In this case, the notice of award was probably not required because the statute further limits its focus to arbitration of validity or infringement issues. Here, the dispute was over contract terms and ownership.
The FTC has released Google from its antitrust investigation with a “wrist slap.” More from Wired; WashingtonPost; and WSJ. Regarding its industry-standard patents (largely inhereted from Motorola), Google promised again to license those patents in a manner that complies with its FRAND promise of “fair, reasonable and non-discrimantory” terms. Google also promised to commit to binding arbitration of license rates.
The FTC has released Google from its antitrust investigation with a “wrist slap.” More from Wired; WashingtonPost; and WSJ. Regarding its industry-standard patents (largely inhereted from Motorola), Google promised again to license those patents in a manner that complies with its FRAND promise of “fair, reasonable and non-discrimantory” terms. Google also promised to commit to binding arbitration of license rates.
The FTC has released Google from its antitrust investigation with a “wrist slap.” More from Wired; WashingtonPost; and WSJ. Regarding its industry-standard patents (largely inhereted from Motorola), Google promised again to license those patents in a manner that complies with its FRAND promise of “fair, reasonable and non-discrimantory” terms. Google also promised to commit to binding arbitration of license rates.
Failure to Confirm: We all still remember Paul Michel as Chief Judge of the Federal Circuit, but it wasn't yesterday that he stepped down. Rather, we are nearing the three anniversary of his 2010 retirement (as a Federal Judge). In 2010, President Obama nominated Edward DuMont to replace Judge Michel. However, DuMont's nomination floundered. In 2011, President Obama nominatedRichard Taranto for the post. However, the Senate has now failed to confirm Taranto's nomination. I expect that President Obama will re-nominate Taranto this month – giving the Senate another two years to consider filling the slot. No Senator has voiced any opposition to Taranto's nomination.
Two additional Openings: President Obama has not yet nominated a replacement for Judge Richard Linn who took Senior Status on November 1, 2012 after thirteen years in office. In addition, Judge William Bryson is scheduled to take Senior Status on January 7, 2013.
Future Openings?: Judges Newman, Lourie, and Dyk are all eligible for senior status.
Over the past two years, Judges Newman, Bryson, Linn, & Dyk have shown the highest propensity for participating in a panel opinion that includes a dissent. Judge Newman continues to be the most frequent dissenting author, followed by Judges Dyk and O'Malley. These results are shown in the chart below that includes results from all Federal Circuit opinions coded in Westlaw (CTAF) for 2011-2012.
The chart above is titled USPTO Patent Grant Rate. For this post, the "grant rate" refers to how many patents are being granted rather than the percentage of applications that are patented. The chart itself shows an annualized grant rate calculated on a 20-week moving average. In addition, I color-coded the chart to identify the name of the USPTO Director at the helm for each date. Because of the backward-looking 20-week average, calculations in the early months of any Director's term will include some patents issued during the term of a prior director.
The chart generally has an upward trend that corresponds with an increase in the number of patent applications being filed and patents being issued. That information can also be found in charts that only show annual information. This chart is intended to move to a deeper level of granularity to identify trends within a given year. The chart shows a number of peaks and valleys that each have an interesting story.
Each year the Federal Circuit provides caseload statistics. The court recently released the statistics for FY 2012 (October 2011-September 2012). In terms of overall caseload, the number appeals filed with the court continued to rise, although it remains well below the numbers of appeals filed from 2002-2007.
As with last year's increase, this increase largely appears to be due to an increase in the number of patent infringement appeals. The next charge shows that appeals from district courts rose while appeals from most other areas actually declined slightly. According to the court, 471 patent infringement appeals from the U.S. District Courts were filed in FY 2012, up from 426 in FY 2011.
One question that people invariably ask about a pending appeal is "How long will it take for the court to issue its opinion?" While there's no answer that can be offered with certainty other than "it varies," the below chart offers some guidance. It also suggests one of two things: either the court's median time to disposition in patent-related appeals is inching upward slightly, or the court is using less Rule 36 summary affirmances in those appeals. For similar reasons, the below data should be read with some caution, as it (presumably) includes two distinct cohorts: appeals disposed of through Rule 36 affirmances (which issue shortly after the scheduled date for oral argument) and appeals for which the court writes a substantive opinion (which generally issue much later). Consequently, the median time to disposition for the cohort of summarily affirmed appeals is probably much less than the indicated median while the median for the remaining appeals is probably greater.
DeRosa v. J.P. Walsh & J.L. Marmo Enterprises (Marmo) (
