In Blonder-Tongue Labs., Inc. v. Univ. of Ill., 402 U.S. 313 (1971), the Supreme Court precluded a patentee from re-asserting a patent that had been found invalid in a separate suit. Prior to that case, a patentee who lost on validity against one party was not generally precluded from asserting the same patent against another party. The doctrinal hook in Blonder-Tongue is known as non-mutual collateral estoppel and it allows a new-challenger to take advantage of the success of a prior-challenger. In a new decision, Judge Bryson has applied the doctrine mid-stream to quickly conclude a pending lawsuit by simply precluding the patentee from continuing to assert the patent after another court has ruled it invalid. DietGoal v. Chipotle, 12-cv-764 (E.D.Tex. 2014).
Risk of Multiple Jeopardy: The case here highlights the difficulty faced by patent assertion entities seeking to enforce their patents against multiple parties. Each accused infringer has the right to independently challenge a patent’s validity. But, if the patentee loses even one of those challenges, then the patentee will be estopped from further asserting the patent. Importantly, an invalidity finding in one case operates to shut down both pending and future assertions of the patent. Prior to the America Invents Act of 2011 (AIA), many patent enforcers had begun joining multiple defendants into single lawsuits and that setup-at least procedurally-helped patentees avoid the multiple-jeopardy risk. However, the AIA has forced a separation of these lawsuits in a way that again highlights the one-way risk. Under this new system, parallel infringement actions (same patent, different defendants) are now more likely to be heard in different venues and before different judges in a way that makes alternative outcomes more likely. And, the rise in post-issuance challenges further removes the risk-decision from the patent holder’s discretion.
Here: Federal Circuit Judge Bryson is sitting by designation in DietGoal v. Chipotle. The infringement litigation was filed in back in 2012 and involves U.S. Patent No. 6,585,516 that covers a computerized meal planning tool. Claim 2 of the patent is listed below:
2. A system of computerized meal planning, comprising:a User Interface;a Database of food objects; anda Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.
The same patent has been asserted in 60 other recent infringement lawsuits. Importantly, in one-such-case – DietGoal v. Bravo Media – the district court judge found all claims of the patent invalid as impermissibly claiming an abstract idea. In that decision, Judge Engelmayer (S.D.N.Y.) wrote:
[T]he claims of the ’516 Patent recite nothing more than the abstract concept of selecting meals for the day, according to one’s particular dietary goals and food preferences.
Following that decision in favor of Bravo, the defendants here (Chipotle) asked Judge Bryson to apply issue preclusion to end its case as well.
Collateral estoppel – also known as issue preclusion – applies to bar a party from re-litigating certain issues. There are typically four elements that must be met before estoppel will attach:
- The issue sought to be precluded from relitigation is identical to the issue decided in the earlier proceeding;
- The issue was actually litigated in the former proceeding;
- The determination on the issue in the prior action was necessary to the resulting judgment in that case; and
- The person against whom collateral estoppel is asserted had a full and fair opportunity to litigate the issue in the prior action.
Here, Judge Bryson found that all four of those elements had been met with regard to patent-ineligibility as decided in the prior Bravo case.
In Blonder-Tongue, the Supreme Court noted that estoppel might not apply in “those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit.” DietGoal here argued, that this was one of those relatively rare instances — especially since the district court in Bravo failed to conduct a claim construction before making its determination. However, according to Judge Bryson, DietGoal failed to indicate how claim construction would have been important to the 101 analysis. Judge Bryson also cited the several Federal Circuit decisions that
On Appeal: The Bravo decision is on appeal. That said, an important element of collateral estoppel is that it applies after the original district court final judgment – even if an appeal is pending and even if the “later” case was well underway at the time of the prior decision. Now, assuming that DietGoal can keep this case alive (likely via appeal) until the Bravo appeal is decided, and assuming that DietGoal wins on appeal (which I suspect is unlikely), then Judge Bryson would be forced to reconsider the case on its merits.
Here follows a brief summary of the sad, sorry life of this infamous pile of rot.
Inventor: Oliver Alabaster (of Alexandria, VA — go figure!). As far as I can tell from the Internets, this person knows as much or less about programming computers as your typical 8th grader. No other “innovations” from this towering figure in the history of nutrition appear to have made it to the patent office … but he’s still alive so don’t count him out! Let us hope and pray for more job creation from this deep fountain of innovation.
The application in question was filed in January of 2002 (only one or two years after the first computer was built and tested by the Russians and only two weeks after the first ever meal planning guide was written on a cave wall by Sarah Winkler in Columbus, Idaho)
First Action Allowance without comment by John Edmund Rovnak, a true hero doing his best to create jobs, one rubber stamp at a time (claim 1 is indistinguishable from claim 1 asserted in litigation)
Request for Inter Partes reexam filed April 9, 2012 and handled by Ovidio Escalante
April 19, 2012: all claims rejected as anticipated or obvious in view of prior art (including art that was presented in original prosecution).
May 16, 2012: petition for an “unintentionally delayed claim for domestic benefit” filed, seeking priority back to an application filed on Dec 14, 1998 via a chain of 2 abandoned continuation-in-part applications and one CIP that issued as a patent.
The image files aren’t available on PAIR for these abandoned applications. The first case in the chain (filed Dec 14, 1998) was assigned to examiner Ella Colbert and all claims were rejected. Pending claim 1 of that case is even more ridiculous and junky than the claims that issued and it looks like something that Alabaster’s sooper dooper skilled patent attorney probably wrote for him after blowing a bunch of sunshine up his behind:
link to google.com
. A method of computerized behavior analysis comprising the steps of:
providing a computer database including presentations of a plurality of objects, said presentations being displayable in successive groups, each group including a plurality of said presentations;
causing a computer to display successive said groups, together with display of graphics associated with each said group, said graphics enabling a first user selection of one of the presentations of each said group, and a second user selection related to the presentation selected;
causing said computer to cause recordation of each of said first and second selections in a storage medium so as to generate a database of user choice information; and
causing said computer to produce behavior analysis data based on the database of user choice information.
The second application in the chain (filed Dec 14, 1999, one year after the filing of the first application) added 6 substantial paragraphs directed to “a first approach to dietary training.” I didn’t bother checking to see what was added to the subsequent CIPs.
June 18, 2012: petition for new priority claim granted by USPTO.
July 19, 2012: response filed by applicant and 30+ new claims added. Much of the response is repetitive argument that the rejections are mooted by the new priority date. Of course, for those rejections that weren’t mooted, the applicant falls flat on his face and blubbers like a baby born yesterday.
Try to believe this response to an obviousness rejection based on a 5,338,202 which describes a meal planning system using cards depicting food options:
…Saari never uses the word “computer” or ever suggests that the “foldable carrying case” could be replaced by a “computerized” system. In fact, Saari discussess in detail the materials necessary to manufacture the foldable carrying case …. Such a description teaches away from the use of a computerized system …
Um, as a matter of law, no it doesn’t.
Another choice quote: For example, every patent obtained by the automobile industry could arguably be obvious, because a car simply automates the process of walking.
Golly, that incredibly lame “EVERYTHING IS OBVIOUS IF I DONT GET MY PATENT” argument sounds familiar, doesn’t it?
Here’s another “winner” in the “see what I just did there” category: The Office Action asserts that either the food cards in Saari are the claimed Database or that it would have been obvious to modify the food cards to achieve the claimed database. To the first point, it is unclear how a single food card (emphasis added) is a “database of food objects … To the second point … Saari never uses the word “computer” or “database.”
At this point I lost the will to continue.
One might also add that privies are bound by final judgment as well – see Taylor v. Sturgell. I raise this point because of the recent case involving FRCP 19(a) where the Federal Circuit refused to join a joint patent owner who had refused to be joined.
Clearly, the accused infringer is not at risk of double jeopardy because the principle of collateral estoppel applies equally as well to privies. Therefore, the reason that the joint owner must be joined is to protect the interest of the joint owner.
So what is that interest? That his co-owner not proceed without his consent? But the failure to join effectively grants a license to the infringer. But this “rule” of the Federal Circuit that a joint owner might license an infringer without the consent of his joint owner is inconsistent with controlling Supreme Court authority to the contrary that a joint owner may not license a patent without the consent of one’s joint owners.
It seems to me that a joint owner who refuses to join must be involuntarily joined and that the holding of the court in STC.UMN v. Intel must be wrong.
I just feel bad for the poor associate forced to respond…it wasn’t their fault!
“But this “rule” of the Federal Circuit that a joint owner might license an infringer without the consent of his joint owner is inconsistent with controlling Supreme Court authority to the contrary that a joint owner may not license a patent without the consent of one’s joint owners.”
Which contolling Supreme Court authority is that?
From the District Court’s decision:
DietGoal argues that the ’516 Patent claims a patentable “machine” within the meaning of § 101 because its invention is “computer-implemented” and “a computer is, without question, a machine.”
How can this absurd “argument” not be sanctionable after the Supreme Court’s decision in Alice (and, yes, the parties were aware of the decision and “submitted letters” outlining their views of the impact of the case after their briefs were filed), not to mention CyberSource?
Your comment indicates that you do not understand the sanction doctrines.
In the case, Judge Bryson has denied a request for attorney fees.
That reluctance must change.
It will change.
Malcolm, I’m pretty sure the quote you made is from the “Bravo” decision because I could not find it in the Bryson decision. Is this correct?
Correct.
Does this “DietGoal, LLC” actually have an operating website that falls within the scope of its claims, or does it sell software for multiple platforms that does what their claims suggest?
Or is it just another Texas troll, trolling for dollars because “freedom”?
You do realize that a patent is only a negative right and that no actual making of products is involved or required, right?
I AM defending the rule of law.
Good for you.
What does that have to do with my comment about these patent trolls?
Malcolm,
Answer my question at 12.1 and compare that answer (as properly understood under the law) to your innuendo-laced first paragraph at 12.
Once you do that – and understand the law – you will have your answer.
And once again, I am not defending any tr011. Why must you attempt to imply that I am doing so?
Please drop the spin.
I don’t have a lot of reexam experience. Can someone say why it is appropriate from a public policy standpoint for a patentee, 12 years after the fact, to be permitted to make for the first time during reexamination proceedings a much earlier priority claim, thereby to avoid prior art?
Isn’t that like having your cake (of longer patent term) until it is threatened, then eating it quickly (taking the earlier priority to help obviate the threat)?
Face Palmer, I suspect the priority claim change would have been okay if it was first made at the time of filing of the original application or during its original prosecution but somehow it was not acknowledged by the patent office or was inadvertently not printed on the face of the issued patent. Thus this correction would have been in the nature of a certificate of correction.
But if the claim for priority were first made during the re-examination, I don’t understand how that comports with the law. Did you inspect the file wrapper of the re-examination to determine what happened?
I just glanced over it this morning prior to my comment above, but my recollection is that the new priority claim was brought forth to attempt to remove art cited in an OA during the reex.
So no, it did not appear to be a case of an earlier properly claimed (but unacknowledged) priority.
“However, according to Judge Bryson, DietGoal failed to indicate how claim construction would have been important to the 101 analysis”
That is a missed opportunity.
But isn’t it obvious that to know what a claim is directed to, whether it is directed to “an abstraction”, and whether the claim is also directed to “substantially more”, one would *presumably* have to determine what it means, element by element, step by step, and as a whole; So how could claim construction NOT be “important to the 101 analysis?”
DietGoal could have explained to Bryson what difference a full-blown Markman could possibly have made but somehow they were unable to accomplish that.
It must be hard to be a genius meal planner and be so misunderstood.
Somehow DietGoal believed it’s claims were broad enough to cover the acts of companies who maintained a database of recipes on their websites.
link to thehill.com
If anything, DietGoal’s claims are even broader than they appear on their face — at least from this “litigation-is-like-crack-so-watch-me-smoke-a-giant-bowl” patentee’s point of view.
If it were up to me, DietGoal would be given the corporate death penalty and its attorney would be disbarred for life from practicing patent law. Thanks to Alice, we’ll be seeing a lot less of these guys.
And there’s more to come! Embrace the change because there’s no going back.
“…and wherein a user can change content of said meals and…”
I’ve never understood why intended-use clauses in software claims are interpreted differently from those of other types of inventions. If an applicant claims a chemical reactor “wherein a user can change the temperature of the reactor” I would pay this clause (nearly) no heed as virtually every reactor is -capable- of having its temperature changed. What type of user interface is -incapable- of being changed?
What type of user interface is -incapable- of being changed?
Before 1998, user interfaces were carved out of stone.
Dennis, let is not omit that the prior final judgment must be from a COURT of competent jurisdiction.
I raise this point because ITC rulings, Federal Court of Claim and PTO decisions are not subject to collateral estopped because they are not made by courts. I know of no case where the Supreme Court has upheld collateral estopped outside of final judgments by real courts.
This is basically the purpose of the Federal Circuit…
Alex, the Federal Circuit, as witnessed by the repeated reversals by the Supreme Court, has brought both uniformity and incompetence to patent law. We can cite chapter and verse on this and go on for hours, but the Federal Circuit really needs to clean up its act and do so in a hurry.
This decision by Bryson bodes well.
“The determination on the issue in the prior action was necessary to the resulting judgment in that case.”
The reason for this requirement is to allow the precluded party to appeal the underlying judgment. If an appeal there has already been filed, then it seems to me you could file an appeal in the second case, and ask it to be stayed pending determination in the first appeal. If the patent owner wins the first appeal, then the basis of collaterial estoppel has disappeared. OTOH, if the first appeal results in an affirmance, then there is hardly cause to complaint — the CAFC ruling of invalidity is then binding on all district courts.
Tal, what if congress denied appeal by statute?
…by the Supreme Court…?
You do know that such is permissible by the Constitution, right?
Hey u guys! I want to dedicate this one to the public!
2. A system of non-computerized meal planning, comprising:
a Menu;
a Database of food objects written on the Menu; and
a Meal Builder Crayon, which displays on the Menu meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.
Also, you could “do it on a compooter” using a database and UI if you wanted to.
6, can you fricken believe it, but you guys twice confirmed the patentability of this patent, once in 2003 and a second time in 2012 after an inter partes reexamination.
My God, but what State Street Bank wrought!
Fascinating decision.
DietGoal complaints to Bryson echo pretty much exactly the complaints we read hear in the comments from defenders of software patenting *every time* a software patent is invalidated.
And Bryson just knocks those arguments down without breaking a sweat.
Beautiful. The judges are learning.
DietGoal objects that the phrases used by the district court to describe the patent are not found in the claims and that the district court cites no evidence in support of its observation that meal planning of the sort recited in the patent is a “conventional and quotidian task[].”
Our courts’ time is being wasted with arguments that judges aren’t citing “evidence” to support the statement that meal planning is conventional? Or arguments that “evidence” isn’t being cited to support the assertion that databases are for storing data for future retrieval?
People who make such arguments don’t belong in the court system. They need to get outside and breathe some oxygen. Leave the courtrooms for grown-ups.
The only problem with this decision is that it likely means that the defendants won’t see their attorney’s fees paid for when the patentee gets sanctioned for asserting the invalid claim in the first place. Or maybe the patentees were truly unaware of the fact that people have planned their meals since pretty much forever because of the tiny cardboard box they lived in when they born ten seconds before they filed their patent application. I’d like to see the patentees prove that. I’d like to see the lawyers for the patentees prove that.
Bryson seem to get it.
Hopefully his vote in Ultramerical shows that he really does get it.
Has Bryson been appointed to Rader’s position on the Ultramercial panel somehow? Unless he has, even if the CAFC takes the case en banc, Bryson won’t have a vote since he’s on senior status.
MM, you do have to take into consideration that the PTO TWICE confirmed the patentability of the claims here, once after an inter partes reexamination for pities sake.
The problem with the claims may not be obviousness, but only 101.
MM, you do have to take into consideration that the PTO TWICE confirmed the patentability of the claims here, once after an inter partes reexamination for pities sake.
I can hardly to wait to see what sort of statements the patentee made.
But under Alice, if it doesn’t feel obvious, then it IS patentable under 101.
DietGoal here argued, that this was one of those relatively rare instances — especially since the district court in Bravo failed to conduct a claim construction before making its determination.
Because that ‘MealBuilder’ is more like the space shuttle than anyone might have imagined, except that there’s zero new technology involved and five year old kids routinely perform the same analysis every day at elementary schools around the country.
The same patent has been asserted in 60 other recent infringement lawsuits.
Please, please, please tell me that nobody was dumb enough to settle with these people. This is one of those cases that belongs on the front page of the New York Times.
Heckuva job.
2. A system of computerized meal planning, comprising:
a User Interface;
a Database of food objects; and
a Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.
Wow.
Just …. wow.
The not so happy meal.
I eat fresh vegetables!
Comments are closed.