by Dennis Crouch
Laches: The Supreme Court granted SCA’s writ of certiorari on the question of whether laches defense applies to block back-damages in patent cases. The Federal Circuit says “yes” while the Supreme Court recently said “no” in a parallel copyright case (Patrella). The Supreme Court decided Patrella 6-3 with Justice Scalia in the majority offering the potential of a tight-split in this case. The court looks to be sitting-on the parallel case of Medinol v. Cordis until SCA is decided.
Copyright on Useful Articles: Although not a patent case, the court also decided to hear a “useful article” copyright case. Star Athletica v. Varsity Brands. The case asks whether the stripes and chevrons found in a cheerleader uniform are sufficiently “separable” from the uniform in order to be copyrightable. The useful article doctrine is generally considered to be setting up a boundary line between the domains of copyright and patent.
More Challenges to USPTO Authority: MCM filed its petition for writ of certiorari directly challenging USPTO authority to conduct inter partes review proceedings with two easy questions:
- Does IPR violate Article III of the Constitution?
- Does IPR violate the Seventh Amendment to the Constitution?
[MCM Petition and Appendix] MCM’s brief was filed Tom Goldstein along with Ned Heller. The question for the Supreme Court is whether to extend or contract from its position in Stern v. Marshall, 131 S. Ct. 2594 (2011) where the court held that Article III of the U.S. Constitution prohibits Congress from withdrawing “from judicial
cognizance any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty.” Quoting Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. 272 (1856)).
The brief raises a set of interesting old cases focusing both on the separation of powers and the tradition that patent-revocation for invalidity requires a jury to decide disputed facts.
- Ex Parte Wood & Brundage, 22 U.S. 603 (1824)
- McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606 (1898)
- Mowry v. Whitney, 81 U.S. 434 (1871)
- Murray’s Lessee v. Hoboken Land & Improvement Co., 59 U.S. 272 (1856)
- Neilson v. Harford, Webster’s Patent Cases 295 (1841)
- Pennock v. Dialogue, 27 U.S. 1 (1829)
- United States v. Am. Bell Tel. Co., 128 U.S. 315 (1888)
Cooper v. Lee raises some parallel issues. Its petition will be considered by the Court in its May 12. [Update: The court has “rescheduled” consideration of Cooper’s brief – perhaps awaiting its own determination in Cuozzo.]
Hereby Assign Future Inventions: In Shukh v. Seagate, the petitioner raises the long-brewing question involving the Federal Circuit’s interpretation of patent assignments. In particular, the Federal Circuit has ruled – as a matter of federal patent law – that patent rights are assignable before their invention is even contemplated. The petition asks:
[W]hether FilmTec’s “automatic assignment” rule should be overruled because it extinguishes inventors’ constitutional and statutory rights to inventorship and ownership.
In Stanford v. Roche, Justices Breyer, Ginsburg and Sotomayor criticized the Federal Circuit’s rule and suggested that the issue should be presented in a future case. The majority expressly noted that its opinion did not decide the issue. [Shukh v. Seagate – Redacted Public Petition]
Disparaging Trademarks: A pair of disparaging trademark cases have also been petitioned: Lee v. Tam (“Slants”) and Pro-Football v. Blackhorse (“Redskins”). The Federal Circuit previously held the limit on registering disparaging marks to be an unconstitutional abrogation of the freedom of speech.
The big list:
1. Petitions Granted:
- SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (laches in patent cases).
- Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 (BRI construction in IPRs; institution decisions unreviewable)
- Samsung Electronics Co. v. Apple Inc., No 15-777 (design patent damages calculation)
- Stryker Corporation, et al. v. Zimmer, Inc., 14-1520 (enhanced damages) (linked with Halo)
- Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 (enhanced damages) (linked with Stryker)
2. Petitions Granted with immediate Vacatur and Remand (GVR)
- Medtronic Sofamor Danek USA, Inc., et al. v. NuVasive, Inc., No. 15-85 (Commil re-hash – mens rea requirement for inducement)
3. Petitions for Writ of Certiorari Pending:
- Laches: Medinol Ltd. v. Cordis Corporation, et al., No. 15-998
- Indefiniteness: The Dow Chemical Company v. Nova Chemicals Corporation (Canada), et al., No. 15-1160 (standard for appellate review of jury verdict of definiteness that is inherently based upon the jury’s factual findings) [DowPetition]
- Exhaustion: Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (unreasonable restraints on downstream uses)
- Obviousness: Cubist Pharmaceuticals, Inc. v. Hospira, Inc., No. 15-1210 (bright line limits on secondary indicia of nonobviousness) [CubistPetition]
- Post Grant Admin: MCM v. HP, No 15-1330 (separation of powers and right to jury trial).
- Post Grant Admin: Versata v. SAP, No. 15-1145 (scope of CBM review)
- Post Grant Admin: Cooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers; two amici now filed in support)
- Post Grant Admin: Click-to-Call Tech, LP v. Oracale Corp., No. 15-1014 (Same questions as Cuozzo and now-dismissed Achates v. Apple)
- Post Grant Admin: GEA Process Engineering, Inc. v. Steuben Foods, Inc., No. 15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)
- 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?)
- Post Grant Admin: Stephenson v. Game Show Network, LLC, et al., No. 15-1187 (is BRI proper for IPR validity challenges?; Same as Cuozzo) [GameShowNetworkPetition]
- Assignment: Shukh v. Seagate, No. 15-1285 (pre-invention assignment of future patent rights)
- Biologics Notice of Commercial Marketing: Sandoz Inc. v. Amgen Inc., et al., No. 15-1039 (Does the notice requirement of the BPCIA create an effective six-month exclusivity post-FDA approval?) (cross-petition asks for recourse on failure to dance).
- Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple)
- Inducement: Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (whether an entity can “induce itself” under 271(f)(1))(CVSG, awaiting government brief)
- Preclusion or Jurisdiction: Globus Medical, Inc. v. Sabatino Bianco, No. 15-1203 (Appellate jurisdiction of the Federal Circuit) [GlobusMedicalPetition]
- Eligibility Challenges: Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 15-1182 (scope of the natural phenomenon eligibility exclusion)
- Eligibility Challenges: Cloud Satchel, LLC v. Barnes & Noble, Inc., et al., No. 15-1161 (abstract idea eligibility) [CloudSatchelPetition]
- Eligibility Challenges: Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, et al., No. 15-1201 (abstract idea eligibility) [VehicleIntelligencePetition]
- Damages: Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on – potential wait-and-see)
- Damages: WesternGeco LLC v. ION Geophysical Corporation, No. 15-1085 (consequential lost-profit damages for infringement under Section 271(f))
4. Petitions for Writ of Certiorari Denied or Dismissed:
- Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 15-993 (can a defendant be held liable for the collective performance of method steps by multiple independent parties?)
- Hemopet v. Hill’s Pet Nutrition, Inc., No. 15-1062 (natural phenom case of tailoring a diet to a pet’s genomic characteristics)
- Tas v. Beach, No. 15-1089 (written description requirement for new drug treatments)
- 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))
- Vermont v. MPHJ Technology Investments, LLC, No. 15-838 (Federal court jurisdiction in anti-troll consumer protection case)
- 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)
- Parkervision, Inc. v. Qualcomm Incorporated, No. 15-1092 (“Whether and under what circumstances an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law.”)
- Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., No. 15-974 (defining an abstract idea)
- 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.)
- BriarTek IP, Inc. v. DeLorme Publishing Company, Inc., et al., No. 15-1025 (Preclusive impact of ITC consent judgment).
- Morales v. Square, No. 15-896 (eligibility under Alice)
- ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
- Media Rights Technologies, Inc. v. Capital 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.”)
- Alexsam, Inc. v. The Gap, Inc., No. 15-736 (appellate jurisdiction over patents that were dropped from case pre-trial)
- Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC, No. 15-893 (intrinsic vs extrinsic evidence for claim construction).
- 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.)
- Achates Reference Publishing, Inc. v. Apple Inc., et al., No. 15-842 (IPR institution decisions unreviewable, even when addressed in a final written decision by PTAB) [Note – This case was dismissed after being settled by the parties]
- Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567
- Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538
- OIP Technologies, Inc. v. Amazon.com, Inc., No. 15-642
- Fivetech Technology Inc. v. Southco, Inc., No. 15-381
- Tyco Healthcare Group LP, et al. v. Ethicon Endo-Surgery, Inc., No. 15-115
- Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561
- Chunghwa Picture Tubes, Ltd., et al. v. Eidos Display, LLC, et al., No. 15-288
- Kenneth Butler, Sr. v. Balkamp Inc., et al., No. 15-273
- Arthrex, Inc. v. KFx Medical Corporation, No. 15-291
- Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commil re-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
- Daiichi Sankyo, Inc., et al. v. Apotex Inc., No. 15-281
- Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307
- Luv N’ Care, Ltd. v. Munchkin, Inc., No. 15-242
- Automated Merchandising Systems, Inc. v. Michelle K. Lee, Director, United States Patent and Trademark Office, No. 15-326
- I/P Engine, Inc. v. AOL Inc., et al., No. 14-1358
- Interval Licensing LLC v. AOL Inc., et al., No. 14-1362
- Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, et al., No. 14-1473
- L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., et al., No. 15-41
- NetAirus Technologies, LLC v. Apple Inc., No. 14-1353
- Muffin Faye Anderson v. Kimberly-Clark Corporation, No. 14-10337
- MobileMedia Ideas LLC v. Apple Inc., No. 15-206
- SpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kessler doctrine)
- Rodney K. Morgan, et al. v. Global Traffic Technologies LLC, No. 15-602
- Lakshmi Arunachalam v. JPMorgan Chase & Co., No. 15-691
5. Prior versions of this report:
PatentBob,
I suggested a workable answer for the good professor at: link to patentlyo.com
While this reflects a proposition elsewhere in that thread of comments, the linked suggestion is repeated here:
How about it, Prof Crouch?
4.4.1: move all of the hi jack thread comments to another page, catalogued by topic.
…or would the preponderance of the same things repeated ad nauseum in a single place overwhelm the servers (or is there some other “arrangement” that precludes actually making the “ecosystem” into less of a drive-by monologuing internet style “shout-down”…?)
Justice Breyer may even spring for pizzas over the weekend to get it done.
You tell me what perception is created by the ignoring of the Malcolm h1jacks….
Yesterday a desperate (former) patentee floated a couple “IPRs are unconstitutional” arguments before the Federal Circuit.
You can hear the arguments right at the beginning (they’re not worth repeating). I guess I shouldn’t call them “arguments” because the judges (Prost, Dyk, & Reyna) just sat there and listened, probably bored out of their minds.
Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd.
link to cafc.uscourts.gov
The rest of the argument is a real hoot. The patentee wishes to remove a 103 reference (“Bork”) on the basis that it “only made a suggestion” (to use a USB cable for recharging a device) without enabling it (an argument that was never made before the Board). After that reference is removed, according to the patentee, then everybody can see that the idea of using a UCB cable for recharging is just hindsight. Now that’s some serious spinning!
This will be a Rule 36 affirmance of the Board’s correct decision. Buh-bye patent.
Again, how is this relevant to the topic here, which is Supreme Court cases?
PB: How is this relevant to the topic here, which is Supreme Court cases?
Competent patent attorneys are aware of pending cert petitions relating to the constitutionality of IPRs (the issue argued in the oral argument I summarized for you). Oh lookie! One such petition is discussed right up there in the post! And it’s the same case that was discussed in oral argument.
I hope this answer addresses your super serious concern, PB. Keep hacking away! You’re very serious.
Ryan Schultz of Minneapolis argued on behalf of Affinity Labs that the Federal Circuit got MCM Portfolios LLL v. Hewlett Packard wrong on Article III and the Seventh amended.
What is pitiable is that they simply repeated the arguments we made already and to the same panel, Dyk and Prost.
merely repeating arguments….
Sort of what you do here (but without taking into consideration the counterpoints presented…)
Did you have a sense of déjà vu, Ned?
Because you came up with them first, right Ned?
anony, I am not sure they were not presented to the court back at the time of Patlex. But we sure presented these same arguments to the court and the court ignored them. Anybody who knows anything on this topic knows why they ignored them. Which is why we need the Supreme Court to weigh in against a rogue court. There is no other way to describe what goes on there.
Oh, you didn’t read them somewhere?
Most of the seventh amendment argument is right out of Lockwood. I read a law review article on the Stern case and Article III. The tie in to Marbury and property is my own.
“The tie in to Marbury and property is my own.”
Come now Ned, who is the person that presented that argument to you?
(hint: it was me)
anon, well, if it was you, thanks.
Oral arguments today in FairWarning IP, LLC v. Iatric Systems, Inc., arising from the PTAB’s tanking of the patentee’s “fraud detection method” using “rules.” Oops — almost forget! — these rules are applied “automatically”, on a computer. That changes everything … back in 2002.
I’m not sure which judge is which, other than Stoll. But this was one of the most dismaying oral arguments that I’ve ever heard. The CAFC and both attorneys should be ashamed of themselves.
Judges: Lourie, Plager, & Stoll
link to cafc.uscourts.gov
1. A method of detecting improper access of a patient’s protected health information (PHI) in a computer environment, the method comprising:
generating a rule for monitoring audit log data representing at least one of transactions or activities that are executed in the computer environment, which are associated with the patient’s PHI, the rule comprising at least one criterion related to accesses in excess of a specific volume, accesses during a pre-determined time interval, accesses by a specific user, that is indicative of improper access of the patient’s PHI by an authorized user wherein the improper access is an indication of potential snooping or identity theft of the patient’s PHI, the authorized user having a pre-defined role comprising authorized computer access to the patient’s PHI;
applying the rule to the audit log data to determine if an event has occurred, the event occurring if the at least one criterion has been met;
storing, in a memory, a hit if the event has occurred; and providing notification if the event has occurred.
The “problem” allegedly being addressed by this claim is that “there were no means of providing protection across ‘multiple’ ‘applications’.” The “solution”, apparently, is “use a set of rules defined in a ridiculously broad manner”.
The applicant hems and haws about “sweeping statements” made by the district court but seems oblivious to the absurd breadth and abstract nature of the recited “rules.”
I predict this claim will correctly remain tanked and the CAFC will likely issue a Rule 36 judgment. Absolutely no credit should be given to the petitioner’s attorney. She did an awful job of preparing herself for the obvious questions and dropped numerous softballs. The judges had to come to rescue a couple times, and I’m sure they didn’t enjoy doing that.
Interesting exchanges:
Judge: “What is the best case that you can cite, that you are the closest to, that has upheld a patent like this?”
Patentee’s attorney: “My understanding …. is that there is only one case, that’s DDR, and before that there was Diehr …”
Judge II: “Diehr, of course, was pre-Alice, if we can say that. It’s kind of hard to evaluate the significance of Diehr.”
Also this:
Judge (to petitioner): “Why doesn’t this meet the DDR test?”
[Note: the best answer to this question is “Your honor, I don’t understand how DDR can be squared with the holding in Alice, quite frankly, as we stated in our brief. The ‘test’ doesn’t make much sense to me and I’d be happy to hear you state what you believe the ‘test’ is and why it would survive Supreme Court review. Of course, if I need to distinguish the claims from the claims in DDR, this is how I would do it.”]
And then, of course, there’s the descent into the surreal:
Judge: “I understand what they’re trying to do. They’re trying to set up a system … In their system they’re trying to say ‘Let’s look at it in terms of time, let’s look at in terms of number of entries, etc, etc and let’s see if we can figure out whether there’s an abuse indicated in the way that that log is being reviewed by someone using a computer’. I … I … isn’t that what the invention is? … Seems to me that’s a very practical set of ideas … well, I shouldn’t say set of ideas … that’s a very practical thing they’re trying to do. They’re trying to create a program, a method, … it’s pretty specific about what you’re supposed to … They’re using off-the-shelf hardware admittedly, apparently, maybe a specially programmed computer … I don’t know the difference, frankly, between a general computer that’s given instructions and special programmed computer that’s given instructions to have a special program, I’ve never figured that out … but either way it seems what they’re trying to do is a practical activitity of evaluating how often there’s a record in the log … that that particular individuals record has been accessed … unusually … a number of times. What is abstract about that?”
[Other than everything? Looking at pre-existing data and assessing “what it means” using logic — oh, excuse me, “rules” — is quintessentially abstract]
If that’s not surreal enough, get a load of this mind-melting lecture:
Judge: “Let’s assume I want to patent an improvement on teaching swimming. And what I have come up with is an improved way to teach swimming. You get a pool that has to be at least 4 feet deep so people don’t hurt themselves. You have a student. You have a teacher. And the teacher says to the student ‘Jump in the water and move your legs’. And I write a series of claims explaining how that’s to be done … you have students that understand the language, etc. etc. Would you say that’s a patent to an abstract idea? It’s a bad patent for a number of reasons but it’s hardly abstract, do you think? The student is at least two feet tall and has two arms and two legs and the method ultimately is [provide the instruction] to the student “Jump in and move your arms and legs”.
Judge II: Certainly not abstract!
Judge: There’s nothing abstract about that is there? It’s a crappy patent but there’s nothing abstract about it.
Petitioner: R-r-right .. probably not.
Judge: Thank you. That’s helpful. We know it when we see it don’t we?
Petitioner: (sheepishly) Yes, your honor.
[news flash: information content delievered by prior art means (e.g., a mouth), whether it’s “instructions for swimming” or “movie reviews, is ineligible subject matter; information content is coterminous with abstraction]
If I was the petitioner’s client for that exchange, I would have stood up and fired her on the spot, told her to sit down, and taken the podium myself.
“If I was the petitioner’s client for that exchange, I would have stood up and fired her on the spot, told her to sit down, and taken the podium myself.”
I’ve sometimes wondered why we don’t see that happen in these exchanges sometimes. Surely the patentee could make a better argument than some of these lawlyers.
What does this have to do with Supreme Court cases?
PB: What does this have to do with Supreme Court cases?
Ask one of your clients. Tell them that you tried really hard but you just cant find any link at all.
See what they say.
The judge speaking from 0:16 to 0:49 is Judge Lourie.
Judge Plager asks a question at about 2:08-2:23. That’s him again asking “What is the best case that you can cite, that you are the closest to, that has upheld a patent like this?”
MM, your post got me thinking, particularly the bit about teaching one to swim.
We know one can patent medicines. What about a diet?
ALL medicines (ALL pharma) would fall if the logic used is used consistently.
Correct. Indeed, we are already seeing the logic of Mayo/Alice being applied to pharma claims with predictable results. Mayo is the universal acid that dissolves all patents.
Nice chem play.
Though, I prefer the exception that swallows the rule.
We know one can patent medicines. What about a diet?
Depends on what you mean by “a diet” (and the specifics of the claim, of course).. I assume you’re talking about a method of eating food and not a set of instructions for eating food.
MM, not so much a method of eating food, but what food, when, etc. to achieve a specific result.
I cannot remember the names of all of the cases now, but there have been several recent cases (to the best of my recollection, all decided as Rule 36 affirmances of summary judgments of invalidity under § 101) where a particular pet food company tried to patent dog diets. I cannot imagine that the outcome would be much different if you claimed a human diet instead, so I suppose that the answer to your question is “no,” one cannot patent a diet.
Thanks. I assume that was a 101 type of rejection?
That’s right.
We’re those “instructions” or a “methods” that were Rule 36’d…?
😉
Methods
(I was being coy about Malcolm’s post and his attempt at “method” versus “set of instructions” innuendo)
The case asks whether the stripes and chevrons found in a cheerleader uniform are sufficiently “separable” from the uniform in order to be copyrightable.
Apparently the 3-D printing lobby has jumped in with amicus briefs “seeking clarity” and asking the Court to provide it. Unfortunately their brief doesn’t provide any suggestions to the Court for what that “clear test” looks like.
Here’s a suggestion for a clear test: utilitarian articles (like cheerleading uniforms and other clothing) should have zero copyright protection for their designs.
More here: link to arstechnica.com
Malcolm’s “clear test” is analogous to the saying: great news, the patient is not sick anymore. Sure, the patient is dead, but he is not sick!
Thanks but no thanks to that “cure” Malcolm.
Still no government brief in Life Tech v. Promega?
Maybe someone should offer to help them out.
Should be any day now. The SG’s normal practice is to have some self-imposed deadlines for these sorts of things, depending on when the CVSG order came down. For Life Tech, I’d expect the SG to file its brief so that the Supreme Court can decide before it leaves for the summer whether to grant or deny cert. It’s running out of time to do that, but hasn’t run out yet.
I’ll keep looking. 😉
Ned,
Are you related to the Seagate item…?
anon, I believe most of the events occurred after I left. But I can tell you that when I was there, inventorship disputes were not all that uncommon. Typically the patent department diligently looked into them and made the call based on evidence. Just reading the case summaries, it does not appear that that is what happened here. The inventor complained, then he got fired. That to me seems ridiculous.
Comments are closed.