by Dennis Crouch
As of December 14, two petitions for certiorari have been granted — both covering the same topic of enhanced damages, a.k.a. willfulness. Another 17 petitions remain pending, a few of which have potential.
- Petition Granted:
- Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., No. 14-1513 (enhanced damages) (linked to Stryker)
- Stryker Corporation, et al. v. Zimmer, Inc., et al., No. 14-1520 (enhanced damages) (linked to Halo)
- Petition for Writ of Certiorari Pending:
- Design Patents: Samsung Electronics Co. v. Apple Inc., No 15-___ (design patent scope and damages calculation)(New Petition)
- Inducement: Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (whether an entity can “induce itself” under 271(f)(1))(CVSG)
- Inducement: Medtronic Sofamor Danek USA, Inc., et al. v. NuVasive, Inc., No. 15-85 (Commilre-hash – mens rea requirement for inducement)
- Inducement: Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commilre-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
- Post Grant Admin: Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 (BRI construction in IPRs; institution decisions unreviewable)
- Post Grant Admin: Interval Licensing LLC v. Michelle K. Lee, No. 15-716 (Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?)
- Preclusion or Jurisdiction: Alexsam, Inc. v. The Gap, Inc., No. 15-736 (appellate jurisdiction over patents that were dropped from case pre-trial) (New Petition)
- Preclusion or Jurisdiction: SpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kesslerdoctrine – enhanced preclusion)
- Preclusion or Jurisdiction: ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
- Preclusion or Jurisdiction: Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567 (If patent ownership is fixed after the filing of a complaint, can jurisdiction be cured by a supplemental complaint)
- Preclusion or Jurisdiction: Biogen MA, Inc. v. Japanese Foundation for Cancer Research, et al., No. 15-607 (Whether AIA eliminated federal district courts’ jurisdiction over patent interference actions under 35 U.S.C. § 146.)
- Eligibility Challenges: Retirement Capital Access Management Company, LLC v. U.S. Bancorp, et al., No. 15-591 (Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2))
- Claim Construction: Media Rights Technologies, Inc. v. Capitol One Financial Corporation, et al., No. 15-725 (Claim Construction: whether there a strong presumption against construing terms as subject to 35 U.S.C. § 112p6 that do not recite the term “means.”)
- Patent Term Adjustment Dispute: Daiichi Sankyo Company, Ltd. v. Michelle K. Lee, No. 15-652 (Patent Term Adjustment – whether the 180 day deadline applies; could bleed into admin law issues)
- Damages: STC, Inc. v. Global Traffic Technologies, No. 15-592 (Whether marking the packaging of a patented article with patent notification satisfies the marking provision of 35 U.S.C. § 287(a) where the patented article itself is undisputedly capable of being marked.)
- Damages: Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on)
- Soon to be Denied: Arunachalam v. JPMorgan Chase & Co., No. 15-691 (unclear)
- Soon to be Denied: Morgan, et al. v. Global Traffic Technologies LLC, No. 15-602 (unclear)
This is true even though where the Supreme Court, in its collective 101 jurisprudence, has laid out the obvious answer right in front of them: novel structure, described in objective structural terms that distinguish the claimed invention from the prior art.
At the considerable risk of sounding like an idiot… I’ll say that this sounds sort like Alice’s description of the “inventive concept,” but your formulation seems a bit narrower and not clearly applicable to method claims.
For product claims, patentees will say that the overall structure is novel, and that whether the terms are sufficiently objective, structural, or distinct from the prior art are questions of definiteness and obviousness. Alice says that there’s some overlap between 101 and those inquiries, but that doesn’t entirely answer the objection.
For process claims, patentees will say that the result of the process is novel (and is sometimes a tangible thing).
DCL, do not conflate a claim that includes both eligible and ineligible subject matter was claiming ideas.
With the former, no amount of detail of the prior art structure is enough when the novels of the is the ineligible and it provides no modification and improvement in the eligible subject matter.
With the latter, the claim may include loads of prior art structure but not actually include any of the novel structure.
Certainly Malcolm’s point here is that when there is invention in novel structure that it should be in the claim.
That is certainly NOT Malcolm’s “point.”
Much like your desired Jepson claim format, Malcolm’s “point” is a deliberate misstatement of law in that he wants to elevate a mere optional claim format into a de facto legal requirement.
Sorry, but that is just not how Congress wrote the law.
“do not conflate a claim that includes both eligible and ineligible subject matter”
ned, you yourself are doing the conflating.
Eligibility is not based on portions of a claim in a vacuum as you attempt to do.
It just is not – nor has ever been (under proper view of the words of Congress under controlling law of the Act of 1952, from whence 101 was established as a separate portion of law from the pre-1952 single paragraph).
You really need to accept this historical context and just stop trying to pretend that Congress did not react to an over-aggressive Court.
Slightly OT but of interest re the perpetually hot topic of 101. Does anyone else find a puzzling statement in this new AIPLA CLE add?:
“January 7 – 12:30 – 2:00 pm Eastern
STRANGLEHOLD! Written Description and Functional Claiming in the Chemical and Biotech Arts
Functional claiming might provide broad claim coverage in the chemical and biotech arts and help overcome 101 ineligibility rejections,* but functional claims are inherently vulnerable to invalidity challenges for lack of written description support. In this webinar we will evaluate recent case law on written description and whether functional claiming is worth the risk for various chemical and biotech patent claims.”
——————-
* “Functional claiming .. [to] HELP overcome 101 ineligibility rejections,” ?
Functional claiming .. [to] HELP overcome 101 ineligibility rejections,” ?
It can “help” in the same way that “reciting the prior art” can “help” overcome a 103 rejection: it adds verbiage to the claim and makes the claimed “invention” seem more complex and limited, and thereby increases the amount of work required of the PTO and others who might challenge the claim.
Paul, if the Feds continue to its trend to construe all functionally defined claim element under 112(f), then such claims cover the corresponding structure, materials, acts, etc. They have no written description problem unless there is no corresponding structure, etc.
But this does suggest that the claims are inherently indefinite as they fail to inform one of the scope of the invention. The construction confines the scope to that which is disclosed and equivalents. The notice function of claims? Not there.
This is why the Supreme Court in Halliburton declared claiming the invention functionally to be a vice, even though the lower court had construed the claims to cover the mechanical tuner, which the Supreme Court accepted for the purpose of its opinion. The apparent claim scope was the problem.
Halliburton was abrogated.
See Federico (at least).
But then again, you already knew that, didn’t you?
Oral arguments on Friday in McRo, Inc. v. Bandai Namco Games America
Judges Reyna, Taranto, Stoll
This is the “use a computer to animate lip synching” case. The patentee/petitioner here plays the popular game of forgetting that the claims at issue are incredibly broad. The claims aren’t limited to rendering a five hour 3-D animated version of Tristan and Isolde. They cover “using rules” to animate an eyeless sphere that closes its lips and hums one note for half a second.
In a nutshell, this panel seemed desperate to find a way to reverse the district court and find the claims eligible. Why do they feel that way? They don’t say. They just “know” that it has to be patentable because … it’s “cool” or something. The defendant here did a pretty good of holding her own but made the fundamental mistake of conceding too much too readily.
This one might well go en banc and on to the Supremes unless one or more of the judges’ clerks can do their job and slap some sense into the judges.
Patentee right off the bat: “Previously humans used their own judgment. This technology replaces that.”
Judge: “Where’s the best spot in the spec that shows that previously this was done by humans?”
Patentee: “I do know that people were not doing calculations in their head … The computerized process is entirely different.” [<–this is utterly and absolutely false]
Judge Taranto? (to defendant): "I have no idea what’s going on inside my brain when I recognize your face.” [holy cripes — try to believe it, folks!]
At this point the defendant’s attorney should simply have laughed and said “You’re joking, right? You have “no idea”? Do you also have “no idea” what you’re doing when you ask somebody a question in oral argument? Or is it just recognizing a face that seems so mysterious to you? Here’s what I think is happening: your brain stores information about faces that you’ve seen. When you see a face, your brain processes the incoming information and compares it to the stored information. You can then decide how to react to the result of that comparison. What part do you not understand?”
Judges need to stop playing dumb and pretending they were born yesterday because “computer.” Here Judge Taranto struggles mightily to pull his head out of his behind and understand the difference between the prior art and the claimed “technology.”
Judges: “On the assumption that the claim construction includes production of an image and the specification enables the production and your specification includes a lot of rules that work, what then?”
Defendant: “The problem here is that the claims cover the idea of using rules and they aren’t limited to any specific rules.”
Judges: “Oh, there were claim constructions?”
Defendant: “Yes. And the judge looked at the difference between what was in the prior art and the concept contributed by the patentee.”
Patentee: “If we had invented an industrial process for catalyzing certain chemical reactions we wouldn’t claim every chemical compound and list them in page after page in the appendix. If we had to to do that it would be completely unworkable. People would have to go through the appendixes to figure out if they were infringing.” [guess what? in the the grown-up arts applicants do this regularly and have done so for many years — but go ahead and pretend otherwise!]
In a prior case involving claiming at the level of an idea, one of the panelists did asking about the example of claiming a rubber eraser attached to a pencil. I thought he might have read Rubber-Tip Pencil and actually understood the point the Supreme Court was making. But that panelist was among those who joined in criticizing the Supreme Court by asking whether the “idea” of an abstract idea was “abstract.”
They clearly do not get it, still!
It’s also worth noting that, generally speaking, in 102 and 103 cases the judges at oral argument don’t spend substantial time quizzing the accused infringer about what could have been recited in the claim to make the claim patentable over the prior art.
But when it comes to 101 the judges obsess about it. This is true even though where the Supreme Court, in its collective 101 jurisprudence, has laid out the obvious answer right in front of them: novel structure, described in objective structural terms that distinguish the claimed invention from the prior art.
This is apparently not good enough for a few CAFC judges because they just know — using their brain, evidently — that some computer-implemented junk is eligible for patenting, even while they admit in open cour that they have no idea how they are able to recognize a face using that same brain.
What a farce.
Your “how does the brain recognize faces” point is a good way to illustrate a problem with the abstract idea cases. Anything can be conceptualized at high enough level of abstraction so that it appears like a simple, abstract idea.
E.g., ” your brain stores information about faces that you’ve seen. When you see a face, your brain processes the incoming information and compares it to the stored information.” That appears to be very simple and straightforward, but the actual neurological processes to do this are much more complex.
“Anything can be conceptualized at high enough level of abstraction so that it appears like a simple, abstract idea.”
And if you did that “conceptualization” up ins of the claim, for say a bicycle, then you may even end up with a 101 in your bicycle case. Though that’s very hard to do in a bicycle case, and thus will rarely if ever happen.
Abstract idea: Using human muscle rotational force to generate a longitudinal force. The specifics of the rotational force linking mechanism (e.g., the chain), the wheels, steering mechanism, etc., are conventional features that are insufficient to ensure that the patent in practice amounts to significantly more than just a patent on the abstract idea itself.
Pilgrim, there are two types of “abstractions” that are being addressed by the current 101 jurisprudence. The first type addresses abstraction in terms of meaning of something such as risk. Risk is simply a number that has meaning in the eyes of the beholder.
The second kind of abstraction is where the claim itself does not include any of the novel subject matter but simply claims a desired result. The claim may be surrounded by tons of prior art structure. But the novel structure or process is not actually in the claim.
You might want to actually read Rubber-Tip Pencil to get a better idea of what the Supreme Court means about claiming an idea.
While the courts are holding such claims to be invalid under 101, the Federal Circuit continues to construe such claims as means-plus-function under 112(f). If the corresponding structure is specific enough and not itself functionally defined, the claim might be saved for 101 purposes.
But they might not be saved for 112(b) purposes.
I was being somewhat hyperbolic.
Sorry if I missed this discussion, but would the Rubber-Tip-Pencil inventor have had a patentable invention if he had described his invention as “a pencil having a rubber erasive head mounted on one end”?
On the one hand, we have the Court stating:
“Blair’s patent was for ‘a new manufacture,’ being a new and useful rubber head for lead pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.”
This suggests that maybe Blair could have obtained a patent on his pencil-with-an-eraser, rather than describing his invention as a piece of rubber with a hole in it. But then the Court goes on to state:
“What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?”
That suggests that the pencil-eraser head combination itself is not patentable, at least where the eraser is mounted by taking advantage of the elastic properties of the eraser head.
And then we have the Court stating “The idea of this patentee was a good one, but his device to give it effect, though useful, was not new.”
Was this really an eligibility case? or just a novelty case?
Pre-1952, there was but a single paragraph for all of what became 101/102/103/112.
To ig nore this context is to court being asinine.
Pilgrim, if everything in a claim is old and well known and the only thing new is the idea of doing something without describing any particular means or methods for doing so, then there is nothing in the claim that is inventive other than the novel idea.
In Rubber-Tip Pencil, the claim could have been rejected either as lacking novelty giving no weight to the new intended use. But the Supreme Court apparently preferred to the clarity claim invalid under 101 as an attempt to claim an idea even while describing that which was known in great detail.
As to whether a claim to the combination of a pencil and a rubber tip would have been eligible without more, I am not sure that the Supreme Court was clear on this point. Certainly, there was bare novelty but not “invention” without describing something more than what was known because it was known that one could mount rubber pieces on the end of sticks and the like.
“Abstract idea: Using human muscle rotational force to generate a longitudinal force. ”
Sure, if you said just that in the claim, you’re getting a 101. But even that itself is old as of now. And if you just recite admittedly old elements (what you said there + and old bicycle) why should the office/judge even bother with the 101? They’ll just 102 ya and not even bother.
Comments are closed.