Peter Menell’s Patent Litigation Guide

Professor Peter Menell is very much a practical consensus builder and his collaborative Patent Case Management Judicial Guide has gone a long way in seting a gold standard in how a Judge should manage patent cases (and thus how parties should litigate patent cases).

The 1,300 page third edition has just been released and is available for free on SSRN with the following abstract:

This treatise updates and expands upon the second edition of the Patent Case Management Judicial Guide (2012). Since that time, patent litigation has continued to increase in complexity. This edition encompasses implementation of the America Invents Act (“AIA”), the emergence of review proceedings at the Patent Trial and Appeal Board (“PTAB”), the Supreme Court’s many recent patent decisions (patent eligibility, claim construction, claim indefiniteness, infringement analysis (rejecting “joint infringement”), the intent requirement for induced infringement liability (rejecting a defense of good faith belief of a patent’s invalidity), and attorney fees), and the Federal Circuit’s damages jurisprudence (including damage awards for standard essential patents (SEP) licensed pursuant to fair, reasonable, and nondiscriminatory (FRAND) terms. It also includes case management checklists, model case management orders, and other materials developed by district judges and advisory bodies for streamlining patent case management. Finally, this volume adds a chapter on patent litigation at the Court of Federal Claims.

http://ssrn.com/abstract=2637605. Menell’s team of co-authors includes Lynn Pasahow (Fenwick); Jim Pooley (Pooley); Matthew Powers (Tensegrity); Steven Carlson (Kasowitz Benson); Jeffrey Homrig (Latham); George Pappas (Covington); Carolyn Chang (Fenwick); Colette Mayer (Morrison Foerster); and Marc Peters (Morrison Foerster).

30 thoughts on “Peter Menell’s Patent Litigation Guide

  1. 5

    […] Peter Menell’s Patent Litigation Guide – Since that time, patent litigation has continued to increase in complexity … liability (rejecting a defense of good faith belief of a patent’s invalidity), and attorney fees), and the Federal Circuit’s damages jurisprudence (including damage awards … […]

  2. 4

    POWER INTEGRATIONS, INC. v. LEE
    link to cafc.uscourts.gov

    The issue involved whether a counter had to be “coupled” to a DAC for the purpose of varying the frequency of the DAC in a switching power supply circuit. The prior art showed an intervening ROM. The Board, in a re-examination, found anticipation despite the patent owner’s argument that the only reasonable construction required that the counter be connected to control the DAC – exactly as a district court had earlier construed the claim. However, the PTAB declined to even look at the District Court construction and had ignored the patent owner’s principle argument that the counter control the DAC. Instead the Board determined that “coupled” did not require a direct connection, something in the patent owner never denied and specifically agreed with, and which the district court also agreed with in its claim construction. Based upon this lack of requirement for direct connection, the board determined that the use of an intervening ROM was within the scope of the claim. The Board never addressed the patent owner’s principle argument.

    The Federal Circuit reversed holding that the board erred by never addressing the principle argument of the patent owner, thus not complying with the administrative procedures act. In re Sang-Su Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002).

    “Here, however, the board fundamentally misconstrued Power Integrations’ principal claim construction argument and failed to provide a full and reasoned explanation of its decision to reject claim 1 of the ’876 patent as anticipated. Before this court, the district court, and the board, Power Integrations has consistently argued that claim 1, when read in light of the specification and surrounding claim language, requires that the counter itself—not a pre-programmed memory—controls the digital to analog converter’s output to vary the switching frequency. … In its view, the “coupled” limitation in claim 1 requires that the counter be connected to the digital to analog converter in a manner that allows it to pass voltage, current, or control signals to instruct the digital to analog converter.

    The district court adopted Power Integrations’ proposed construction of the term “coupled,” concluding that it was “consistent with the claim language and the context of the specification which describes the purpose for which various parts of the claimed invention are coupled. … During reexamination, however, the board failed to acknowledge the district court’s claim construction or to assess whether its interpretation of the term “coupled” was consistent with the broadest reasonable construction of the term. Instead, the board devoted a substantial portion of its analysis to resolving the question of whether the term “coupled” requires a direct connection between the counter and the digital to analog converter.

    As noted above, however, when Power Integrations was before the board it repeatedly acknowledged that the term “coupled” does not preclude the presence of intervening components between the counter and the digital to analog converter. Thus, a significant portion of the board’s opinion is devoted to rejecting an argument that Power Integrations not only never made, but instead expressly disavowed. Because so much of the board’s analysis is focused on a red herring—the issue of whether there can be intervening components between the counter and the digital to analog converter—it failed to adequately evaluate Power Integrations’ primary argument, which is that the “coupled” limitation requires that the counter pass control signals, voltage, or current to the digital to analog converter to control it, and that the presence of a memory programmed with data specifying how to vary the switching frequency “uncouples” the counter and the digital to analog converter and severs the requisite control relationship between them.”

    Vacated.

    The Feds also said that the Board must consider, when asked, a district court’s claim construction.

    “We conclude, moreover, that under the circumstances presented here, the board erred in failing to address the district court’s previous interpretation of the term “coupled.” … The board, however, declined to address—or even acknowledge—the district court’s claim construction. Given that Power Integrations’ principal argument to the board about the proper interpretation of the term “coupled” was expressly tied to the district court’s claim construction, we think that the board had an obligation, in these circumstances, to evaluate that construction and to determine whether it was consistent with the broadest reasonable construction of the term.”

    1. 4.1

      While I am glad to see people using the APA to bring the PTO to its senses, this particular case doesn’t seem to me to be the best application of the APA to office proceedings. I’m literally not even sure that they’re right that court constructions should have to be given consideration (other than just routine consideration as if they were just another “argued for” interpretation by the patentee so to speak). Yes the board probably screwed up here, but I’m not sure it takes the APA to reach that result, they could have just left it out of this one.

      Frankly there should probably be a whole MPEP section on the APA and its general applicability to decision making in the PTO. Without it arbitrary and capricious is the routine in all too many AU’s, and especially for newbie examiners being made to reject everything. It is literally so routine that many people think it is actually required of them, especially on first action.

      1. 4.1.1

        Well, at least the Board has to address the principle argument of the patent owner, and consider the district court claim construction when that is part of the argument.

        What seems clear to me is that Board here was playing games with the patent owner by mischaracterizing his arguments. That simply is not fair, and it is clear the Feds were not impressed.

        In re Sang-Su Lee is an important case that the Feds like to cite. Know whose cast that was? None other than,

        Richard H. Stern

        1. 4.1.1.1

          “What seems clear to me is that Board here was playing games with the patent owner by mischaracterizing his arguments.”

          Could be, but seems more likely to just be incompetence. Not even the board is immune.

          “Well, at least the Board has to address the principle argument of the patent owner, and consider the district court claim construction when that is part of the argument.”

          Yes, must consider the argument, but there’s no need to give the DC CC special consideration, it’s just another argument. I think they likely did consider it, they just didn’t write anything down about it which was their bad. Their consideration went: “nah”.

          1. 4.1.1.1.1

            Thanks Ned. Interesting point.

            At the EPO, great importance is given to the Principle of Fairness, that one enjoys a “Right to be Heard”. The least the Tribunal should do, then, is to write something in its judgement about the “Principal Argument” it has just heard, simply to demonstrate that the petitioner has indeed been heard.

            Surely you must have something like this in the USA. Or is it all these days more a case of “Talk to the Hand” ?

            PS. I know I speak a language different from American English. Nevertheless, it distresses me, when an eminent lawyer writes “principle” when he means “principal”. Surely by now he (if not his spell-checker) must know the difference? For the best part of 40 years I have been dictating (as the case may be) “principlea” or “princi-pal” to ensure that the typist can get it right first time, without thinking about it.

            1. 4.1.1.1.1.1

              Max, on the distinction between the two princes, it is easy for me to miss for some reason. Also, I use Dragon, and it too does not seem to know the difference.

              Regarding ignoring the argument made by a party, I think it a matter of due process here in the States where one has a right to be heard. If the Board did not even state what the argument was, that is not consistent with a right to be heard.

          2. 4.1.1.1.2

            “Could be, but seems more likely to just be incompetence. Not even the board is immune.”

            While I generally agree that one should never assume nefarious motives when incompetence will provide a satisfactory explanation, in this case, and many others, the APJ’s have proven to be a group of smug jerk 0ffs time after time.

          3. 4.1.1.1.3

            Could be, but seems more likely to just be incompetence. Not even the board is immune.

            Because of SAWS there is no reason to assume incompetence. I am fairly certain that SAWS continues but is no longer a named program of the PTO.

            1. 4.1.1.1.3.1

              It was abundantly clear in the admissions made by the Office as they scrambled to react to the SAWs embarassment that SAWs was only one of several (quantity unknown) shadow programs.

              Funny though how Malcolm seems to want to defend such shadow works…

      2. 4.1.2

        In some instances, the PTAB has chosen to decide an appeal on grounds not used by the Examiner. see e.g., link to patentlyo.com

        Is the Fed Circuit (finally) keying in on this procedural unfairness as evidence from the below-excerpt?

        Perhaps recognizing the deficiencies in the board’s
        analysis, the solicitor on appeal advances a number of
        arguments as to why the disputed claims of the ’876
        patent should be rejected as anticipated. As a general
        proposition, however, our review of a patentability determination
        is confined to “the grounds upon which the
        Board actually relied.” In re Applied Materials, Inc., 692
        F.3d 1289, 1294 (Fed. Cir. 2012); see Camp v. Pitts, 411
        U.S. 138, 142 (1973) (per curiam) (emphasizing that
        under the APA, “the focal point for judicial review should
        be the administrative record already in existence, not
        some new record made initially in the reviewing court”).
        We have no warrant to “accept appellate counsel’s post
        hoc rationalizations for agency action,” Burlington Truck
        Lines, Inc. v. United States, 371 U.S. 156, 168 (1962), or to
        supply a reasoned justification for an agency decision that
        the agency itself has not given, Motor Vehicle Mfrs. Ass’n
        v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983);
        see In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 2000)
        (emphasizing that a board decision “must be justified
        within the four corners of [the] record”)

        1. 4.1.2.1

          Arguing stuff not on the record for the first time to the Fed. Cir. is SOP for the solicitor’s office. But they’re all very serious people, so they get a pass from the braying mules on this site.

            1. 4.1.2.1.1.1

              With the former actual solicitor, not just one of the office’s minions, sitting on the bench?

              And what does “getting tougher” entail, Ned?

              If a member of the Fed. Cir. bar, i.e. a private practice attorney, routinely came into the court and presented arguments for the first time ever during oral arguments, what do you think the court would do to that attorney? The attorneys from the office of the solicitor without fail get no punishment more severe than expressions of annoyance from the judge(s). Shouldn’t private practice attorneys get the same treatment?

              1. 4.1.2.1.1.1.1

                AAA JJ, but consider this from Comiskey, where Chen, then solicitor, argued 101 for the first time on appeal:

                Over sixty years ago in Securities & Exchange Commission v. Chenery Corp., 318 U.S. 80, 63 S.Ct. 454, 87 L.Ed. 626 (1943), the Supreme Court made clear that a reviewing court can (and should) affirm an agency decision on a legal ground not relied on by the agency if there is no issue of fact, policy, or agency expertise. The Court said:

                In confining our review to a judgment upon the validity of the grounds upon which the Commission itself based its action, we do not disturb the settled rule that, in reviewing the decision of a lower court, it must be affirmed if the result is correct although the lower court relied upon a wrong ground or gave a wrong reason. . . . It would be wasteful to send a case back to a lower court to reinstate a decision which it had already made but which the appellate court concluded should properly be based on another ground within the power of the appellate court to formulate. But it is also familiar appellate procedure that where the correctness of the lower court’s decision depends upon a determination of fact which only a jury could make but which has not been made, the appellate court cannot take the place of the jury. Like considerations govern review of administrative orders. If an order is valid only as a determination of policy or judgment which the agency alone is authorized to make and which it has not made, a judicial judgment cannot be made to do service for an administrative judgment.

                Id. at 88, 63 S.Ct. 454 (emphases added; internal citations and quotation marks omitted). We have repeatedly applied Chenery and have said that “[w]e may, however, where appropriate, affirm the [agency] on grounds other than those relied upon in rendering its decision, when upholding the [agency’s] decision does not depend upon making a determination of fact not previously made by the [agency].”

      3. 4.1.3

        “Frankly there should probably be a whole MPEP section on the APA and its general applicability to decision making in the PTO. Without it arbitrary and capricious is the routine in all too many AU’s, and especially for newbie examiners being made to reject everything. It is literally so routine that many people think it is actually required of them, especially on first action.”

        Funny that you can acknowledge that very simple fact without any response from the usual cackling m0nkeys on this site, but if an actual practitioner posted the same exact thing there would be a title wave of screaming denials and accusations that anybody who actually believes that is a patent fl#ffing, bottom feeding gr!fter who is stealing from clients.

        Heckuva job, Dennis.

        1. 4.1.3.1

          Do you remember that psychological experiment about training simians in a cage not to reach for the hanging bananas by using a firehose?

          Welcome to the echosystem.

    2. 4.2

      Ned,

      Power Integration’s’ patent provides a schematic with a direct connection, i.e., a wire, and the spec describes the counter as “connected” to the D/A. The claim however uses “coupled” and Power urges that this does not require a direct connection. I think they are afraid that someone would insert a low value resistor in series which would not affect operation but avoid the claim.

      The Martin reference inserts an EPROM between the counter and D/A. I saw no mention of it, but Martin programs the EPROM with a pseudo random code so that the switching power supply operating frequency jumps around in a random manner between a high and low frequency limit. Power’s circuit produces a frequency that varies linearly between limits. Frequency versus time looks like a saw-tooth. So, at least under the DOE, Martin does not anticipate but the PTO gets lost in the English language.

      The PTO should hire some electrical engineers.

      1. 4.2.1

        Troubled, isn’t the reason behind that programming to reduce emissions at particular frequencies? For instance, they now spread out the emissions between the upper and lower frequency limits. If they did not do this, the emissions at the single frequency they used would be quite high. Usually, there’s some standard of emissions they have to meet and without this modification in frequency, they might not meet the standard. I can’t remember why it has to be pseudo random, though (as opposed to linearly varying between the upper and lower limits). Maybe that helps to reduce emissions, too.

        The PTO doesn’t hire electrical engineers?

    3. 4.3

      Hint for patent attorneys: if you wish to avoid wasting your clients’ money and time, provide more than a broad statement of “purpose” for claimed elements and their relationship to another — particular when those elements have a functional character. For instance, it’s best to provide examples illustrating the sorts of structural variations that are or are not permitted within the scope of the functional terms that you choose to use. Competent attorneys will recognize that this feature of good writing isn’t just limited to drafting patent applications.

      1. 4.3.1

        What’s a good definition for “coupled” in this art area? When you talk about connecting two electronic items, “coupled” is about as good as it gets. Meanwhile, it’s quite challenging to define a term like coupled in a way that does not allow someone to design around the claim.

        To me, this case is a case of the PTO’s overreaching, similar to the case with “laminate”.

        1. 4.3.1.1

          PatentBob,

          I prepared a reply to 4.2.1, but maybe this will help with 4.3.1

          You are right. Both schemes spread out the RFI over different frequencies instead of using a fixed switching frequency. The Martin EPROM is programmed to select frequencies seemingly at random within some band, e.g., 750 kHz to 1.5 MHz (seems kind of high for a switching regulator). It is not completely random because the selection repeats every time the counter turns over, but one could use a 10 bit counter so it only repeats after 1024 cycles. This is a brute force approach in that one can program the EPROM any way one likes.

          Power’s scheme eliminates the EPROM (no opinion on whether this is obvious or not but the issue was anticipation). Now the switching frequency varies linearly with time between, as best I can make out, typically, 100 kHz to 107 kHz. Power’s problem was they were afraid someone would buffer the counter output with an inverter followed by another inverter, for example. Circuit operation would be identical but the counter output would not be directly “connected” to the D/A.

          Of course the PTO hires electrical engineers. My comment was based on my conviction that an EE would understand that the intervening EPROM would mean that the counter output was not “coupled” to the D/A, especially since the way the frequencies were modulated and the result were demonstrably different.

          1. 4.3.1.1.1

            PatentBob,

            A further thought: This is one case where a wherein clause might have helped, viz., “wherein the ON state of a D/A voltage or current source is determined directly by the respective counter outputs.”

    4. 4.4

      Ned, I cannot help noting that this is another example of what you had previously said was nearly impossible, namely a Fed. Cir. reversal of a PTO PTAB post-grant proceeding decision.

      Re the desirable requirement here that a prior D.C. claim interpretation of the same patent should be considered by the PTAB [although it is not required to follow it]. This occurred here because the two-step reexamination process is usually so much slower than the D.C.. It should happen far less often that there are D.C. claim interpretations prior to the conclusion of IPR trials.

      1. 4.4.1

        Paul, there is little doubt that I am somewhat encouraged by this case. At least the Feds are willing to act if the PTAB ignores the arguments of the patent owner as was the case here. That is hardly due process, but it also appears to violate the APA.

  3. 3

    (I realize that I’m complaining about something really useful given away for free but–)

    I wish the detailed table of contents had page numbers to where the sections start. Or hyperlinks.

  4. 2

    It is an impressive book. I’m interested to read their views on some recent Supreme Court cases such as Alice.

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