April 2017

Federal Circuit: eBay creates a four-element test (not “four-factors”)

Nichia Corp v. Everlight Americas (Fed. Cir. 2017)

Nichia is the world’s largest supplier of LEDs.   The defendant here also sells LEDs and was accused of infringing three Nichia patents. U.S. Patent Nos. 8,530,250, 7,432,589, and 7,462,870.

In a bench trial, the district court judge sided with the patentee – finding that it had proven infringement and the defendant had not proven the asserted claims invalid.  However, the district court refused to issue a permanent injunction – finding that the patentee had failed to show that it suffered irreparable harm due to the infringement or that the remedies available “at law” were inadequate.   On appeal, the Federal Circuit has affirmed — holding that the proof of irreparable harm is a necessary threshold test for permanent injunctive relief, regardless of whether the patentee is left with an adequate remedy at law.  The decision is important (and quite problematic) because it allows for the possibility of no remedy for the patentee.

The baseline comes from the Supreme Court’s decision in eBay v. Mercexchange that established a four-factor test for determining whether to grant permanant injunctive relief.  The patentee must prove: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

Prior to this decision, my conception of the four-factors were that the balance of the four must weigh in favor of injunctive relief and that the patentee must prove either (1) irreparable harm or (2) lack of remedy at law.  The decision here rejects both of my prior-conceptions.  Taking them in reverse order, the court holds that irreparable harm must be proven before relief can be granted.  In addition, the court wrote (likely dicta) that each factor must be individually proven for injunctive relief to issue.

The movant must prove that it meets all four equitable factors. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 861 (Fed. Cir. 2010). And it must do so on the merits of its particular case. eBay. . . . Because Nichia failed to establish one of the four equitable factors, the court did not abuse its discretion in denying Nichia’s request for an injunction.

The court here appears to shift this from a four-factor test to a four-element test.  The result of this decision is that it becomes incrementally even more difficult for a patentee to obtain injunctive relief even after winning its infringement lawsuit and defending against validity challenges.   I also expect that any analysis of the historical equitable factors (the approach suggested by eBay) will recognize that this holding is incorrect.

Register of Copyrights Selection and Accountability Act of 2017

In a largely bi-partisan vote, the US House of Representatives has passed H.R. 1695, the “Register of Copyrights Selection and Accountability Act of 2017.”  The Bill was introduced by Judiciary Committee Chair Bob Goodlatte (R-Va), and co-sponsored by Ranking Member John Conyers (D-Mich), among others.  The 378-48 vote included 46 Democratic Nays.  It is unclear whether the Bill will move forward in the Senate.

The proposal simply makes a structural change to the United States Copyright Office appointment process. Since 1897, the Register of Copyrights has been hired by the Librarian of Congress.  The proposal provides for Presidential appointment of the Reigster of Copyright, with advice and consent of the Senate. The position would be largely independent: having a ten-year renewable term with removal only for cause.

According to the Judiciary Committee Report: “The legislation ensures that all future Registers are chosen through this public process and also resolves constitutional concerns regarding the authority of regulations promulgated by the U.S. Copyright Office.”

Read the Bill



What is IP For? Experiments in Lay and Expert Perceptions

I just read an interesting short article from Prof Gregory Mandel (Temple) titled What is IP For? Experiments in Lay and Expert Perceptions [available here].  Part of the papers includes survey results from both lay individuals and IP professionals who answered the question: What is the Purpose of Intellectual Property Rights?  The vast majority of IP Professionals indicated the incentive justification for IP rights: The potential for strong rights sets out a carrot that encourages innovation.  Law individuals, on the other hand, more often indicated that IP rights are designed to prevent or sanction plagiarism. Mandel also noted a severe lack-of-knowledge of US adults regarding intellectual property rights — with their study participants only barely outperforming random answers on a basic ten question IP law quiz.


PTAB Must Justify Each of its Obviousness Conclusions

Securus Tech v. Global Tel*Link (Fed. Cir. 2017) (IPR2014-01278) (Pat. No. 7,860,222)

In this nonprecedential decision by Judge Chen, the Federal Circuit has partially-vacated and remanded – finding that the Board (PTAB) had failed to explain its obviousness decision.

Although obviousness is a question of law, essentially all of the building blocks to that conclusion are factual queries.  The result then is that obviousness decisions by the PTAB are difficult to overturn on appeal – since an agency’s factual findings are given substantial deference on appeal.  Unlike a jury, the PTAB has to actually make the necessary factual findings that lead to its obviousness findings.  In addition, the PTAB must explain how the evidence-presented led to its particular conclusion:

First, the Board must “make the necessary findings and have an adequate ‘evidentiary basis for its findings.'” [Quoting In re Nuvasive (Fed. Cir. 2016), internally quoting In re Lee (Fed. Cir. 2002)].  Second, the Board “must examine the relevant data and articulate a satisfactory explanation for its actions including a rational connection between the facts found and the choice made.” Id.

Thus, although a low standard, the PTAB must have at least a rational basis for connecting the evidence to its factual findings.  In its analysis, the Board must also consider counter-arguments.

In this case, the Board “failed to articulate any reasoning for reaching its decision” as to claims 3, 8, 14-15, 17, 19 22-32, and 34-36.  (emphasis in original). Considering the PTAB Decision [IPR2014-01278-FWD-20160121], the Court looks to be absolutely correct that it fails to particularly explain the invalidity of these claims.

There continues to be an internal debate within the Federal Circuit on how the PTAB should handle IPR Failures by the PTAB.  Here, the court vacated and remanded for further consideration.  Other panels have simply reversed without providing the PTAB opportunity to correct its errors (if possible).


Focus on Procedure: Judge Chen’s decision here was careful to focus on procedure since the substance is almost totally lacking.  The ‘222 Patent’s Claim 1 is directed to a communications system whose invalidity was easily affirmed by the Federal Circuit.  Disputed Claim 3 depends from Claim 1 and adds the requirement that “communications between individuals comprise telephone calls.”  Without any prior art, one skill in the art of communications systems would find it obvious to use a telephone to communicate.  Further, the actual prior art relied upon by the Board (U.S. App. Pub No. 2004/0081296) discloses telephones for this purpose.  All this also helps to explain the remand.

CBM Review: Must the Claims Be Expressly Limited to Financial Services?

Secure Axcess v. PNC (Fed. Cir. 2017) (en banc petition)

In an important February 2017 decision, the Federal Circuit limited the scope of Covered Business Method Review (CBM) — requiring that the claimed invention be focused on financial transactions.  In my original review, I wrote:

This case represents an important decision limiting the scope of Covered Business Method reviews.  However, its short consideration of agency-deference leaves it open to further challenge. 

Crouch, For CBM Review: _Claims_ Must be Directed to Financial Service, Patently-O (Feb. 2017).  The case focuses on U.S. Patent No. 7,631,191.

U.S. Bank has now challenged the decision with an en banc request – raising the following question:

Whether a method patent whose claims are worded to avoid reference to financial activity, but whose specification makes plain that it is a patent “used in the practice, administration, or management of a financial product or service,” qualifies for post-grant review as a covered business method (CBM) patent under Section 18 of the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 18, 125 Stat. 284, 329-31 (2011).

The petition directly challenges the Federal Circuit’s anti-CBM Jurisprudence, writing:

This is not the first questionable decision by a panel of this Court concerning to scope of the CBM program. In Versata Dev. Grp. v. SAP Amer., Inc., 793 F.3d 1306 (Fed. Cir. 2015), another divided panel disagreed over whether this Court even has jurisdiction to review the Board’s CBM determinations. And a petition for rehearing en banc, with robust amici support, is currently pending in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), which asks this Court to address the level of deference owed to Board determinations that a patent qualifies for CBM status and to reconsider the holding in Versata.

Two additional amicus briefs have also been filed supporting the petition.  EFF argues (1) that the panel decision contorts the statutory text; and (2) ignored the consideration of deference to an agency’s interpretation of its governing statute.  Clearing House Payments Company and Financial Services Roundtable joined together and argue (1) CBM institution rates are alredy down; and (2) the case allows artful claim drafting to effectively avoid CBM.  (The artful drafting issue is largely moot since CBM will sunset in September 2020).

The key here is interpretation of Section 18(d)(1) of the America Invents Act that limits the scope of Covered Business Method Reviews to patents “that claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Does the statute require that the claim include the financial product or service use?  Note here that the argument is not based upon a statute codified in the United States Code since it is only a temporary provision that will sunset after three more years.




Wrongly Affirmed Without Opinion: At the Supreme Court

Shore v. Lee (Supreme Court 2017)

In a new petition for writ of certiorari, patent attorney and inventor Michael Shore has challenged the propriety of the Federal Circuit’s continued approach of affirming patent office decisions without opinion. In a forthcoming article titled “Wrongly Affirmed Without Opinion” (Wake Forest Law Review), I raise the previously unnoticed requirement of 35 U.S.C. § 144 that the Federal Circuit issue an opinion in appeals from the Patent Office (PTO).  Although the Supreme Court generally permits its lower appellate courts to issue summary affirmances, I argue that the Patent and Trademark statutes take precedence in this particular situation.  The issue has come to a head with the large number of no-opinion judgments being issued by the court since the creation of the system of administrative patent trials (IPR/PGR/CBM).

Running with that argument, Shore raises the following three questions:

  1. Does the Federal Circuit’s affirmance without opinion of the PTO’s rejection of Petitioner’s patent application violate 35 U.S.C. § 144?
  2. Does the statute’s requirement that the Federal Circuit issue a “mandate and opinion” govern over Federal Rule of Appellate Procedure 36’s general permission for appellate courts to render judgment without opinion?
  3. Assuming that the Federal Circuit can issue an affirmance without opinion despite the language of § 144, does the Federal Circuit act within its discretion by issuing an affirmance without opinion that does not meet any of the criteria listed in Fed. Cir. R. 36(a)-(e)?

[Read the petition: 2017_WL_1406097]

Certainly, if the PTAB had issued its judgment without opinion, the Federal Circuit would have immediately vacated that decision. However, the appellate court suggests that the rules of opinion writing should not be self applied.

In the underlying case, Shore’s patent application (with co-inventor Charles Attal – founder of Austin City Limits Festival) covers a method for creating a custom video track of a live musical performance.  The claims were rejected as obvious – affirmed by the PTAB.  On appeal, Shore raised several challenges regarding both interpretation of the prior art and claim construction.  Rather than working through those arguments, the Federal Circuit simply affirmed without opinion.

“Exemplary Embodiments” as Boiler Plate

US08342852-20130101-D00009Skedco v. Strategic Operations (StOps) (Fed. Cir. 2017)

The district court sided with the accused-infringer StOps – finding (on summary judgment) no-infringement of Skedco’s exclusively licensed U.S. Patent No. 8,342,852 covering a “trauma training system.”

The system is designed to replicate trauma, and includes a pump in fluid connection with a valve that is in connection with a wound site “to simulate a hemorrhage.”

18. A trauma training system … comprising: a collapsible reservoir …, a pump in fluid communication with … said reservoir, at least one valve in fluid communication with said pump, a controller connected to said pump and said at least one valve, and at least one wound site detachably in fluid communication with said valve, wherein fluid is provided to said wound site to simulate a hemorrhage.

The problem for the patentee is that, while the claim appears to separately claim the pump and the valve, the accused device physically links them together – “these valves reside within the pump housing.”  In addition, although the claim requires a controller connected to both the pump and the valve, the accused device’s controller is only connected to the pump.

On appeal, the Federal Circuit has vacated the judgment – finding that the district court erred in its claim construction.

First, although the patent requires a pump in fluid connection with a valve, the federal circuit found that “nothing in the claims requires the pump and valve to be physically separated.”

We see no reason why a device that moves fluid cannot contain another device that regulates flow within it. A pump does not cease moving fluid—i.e., being a “pump”—just because an internal valve adjusts fluid flow. … In short, we agree with the district court that a “pump” is not a “valve,” id. at 1108, but nothing in the claims or specification prohibits a valve from residing within a pump.

Of course, none of the embodiments teach a pump with internal valve.  Responding to that argument, the court appeared to look back primarily to pre-Phillips cases:

“[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp v. NEC Corp., 163 F.3d 1342 (Fed. Cir. 1998). Patents do not need to include drawings of particular embodiments in order to claim them. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). For this reason, a claim is not limited to inventions looking like those in the drawings. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). This guidance is especially apt here because the patent refers to the drawings to which StOps points as “exemplary embodiment[s].”

Looking at the second non-infringement justification, the district court had construed the claim to require a controller be actually connected to both a pump and a valve – based upon the requirement of “a controller connected to said pump and said at least one valve.” ON appeal, the Federal Circuit found it was improper to require an actual physical connection between the controller and the the valve:

[W]e think that the correct construction of “a controller connected to said pump and said at least one valve” is “an activation mechanism configured to control a pump and a valve to which it is directly or indirectly joined, united, or linked.”  . . . It [] incorporates the specification’s envisaged indirect connections. . . .

As far as the district court’s “physical” limitation is concerned, we see no reason to import such a requirement into claim 18. The claimed “controller” is merely “an activation mechanism,” and nothing limits this activation to physical channels. Indeed, the ’852 patent includes several embodiments where a remote controller 160 activates a valve. This activation must occur at least in part through a nonphysical connection. See id., figs.3, 9A, 9C. We therefore hold that it was error to limit the claimed connection to physical connections.

Thus, reasoned the district court, the BPS does not have “direct,” “independent,” and “physical” connections between the controller and the valve such that the valve is “controlled by the controller.” Id. at 1105–06, 1108. The court also ruled as a matter of law that claims 18, 19, and 20 were not infringed under the doctrine of equivalents. Having granted summary judgment of noninfringement, the court dismissed Skedco’s complaint. This appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). controller.” Id. at 1105–06, 1108. We hold that it was error for the district court to have included some of these additional limitations into claim 18.

On remand, the district court will be asked to consider infringement under this now broader construction.


Answering the Call — Pro Se Assistance at the USPTO

Guest post by Kathy Matecki, Director of USPTO’s Technical Center 3600

Independent inventors and small business owners have a long tradition of creating innovative products and opening up new sectors of the American marketplace. Some of today’s most well-known companies and innovators started small in someone’s garage or basement. Many patent applicants enlist the help of a registered patent attorney or agent. Some inventors, however, choose to file an application for a patent on their own, a process known as “pro se” filing.

The United States Patent and Trademark Office’s (USPTO) Pro Se Assistance Program provides dedicated educational and practical resources to pro se applicants, including walk-in assistance at USPTO’s headquarters in Alexandria, Virginia, pro se-specific educational resources on patents and electronic filing, dedicated customer service and assistance, and increased examiner-applicant interaction.

Established in October 2014, the USPTO’s Pro Se Art Unit is a group of experienced patent examiners from all engineering disciplines. The examiners in the art unit communicate frequently with their inventors, get to know them, and are dedicated to simplifying the patenting process and providing the best possible experience for each one, even when the inventor is unsuccessful in obtaining a patent. The program has helped identify the most common problems encountered by these applicants, so that the USPTO can simplify the process if possible, or establish best practices to assist pro se applicants.

The Pro Se Assistance Program has received positive reviews since its inception. One pro se applicant stated, “Had my examiner not been so understanding and helpful in every regard, I would have given up.  She was patient, and I feel incredibly lucky to have worked with her…  I would not be able to afford the legal fees associated with a patent, so that would have been the end for me.”  The examiners have also felt the impact of the program; one stating:  “We provide an important service (with a smile) to a not previously addressed cross section of applicants at the office, while still producing a quality examination. The impact of this service may or may not be captured by data crunching, but it is without a doubt felt by the community of pro se applicants that we have encountered in our year and a half of operation.”

The USPTO’s Pro Se Assistance Program is just one of many programs the USPTO offers that benefit independent and under resourced inventors. Another popular program is the Patent Pro Bono program, which provides legal assistance to under-resourced inventors. For more information on the Pro Se Assistance Program, visit the website, call 1-866-767-3848, or email independentinventor@uspto.gov.

Prof Patterson: Teasing Through a Single FRAND Rate

Guest Post by Prof. Mark R. Patterson, Fordham Law

Last week Professor Jorge Contreras provided here an excellent summary of the April 5 decision of Mr. Justice Birss of the UK’s High Court of Justice in Unwired Planet International Ltd. v Huawei Technologies Co. Ltd., [2017] EWHC 711. The case addresses the problems that arise in determining FRAND (fair, reasonable, and non-discriminatory) licensing terms. Professor Contreras highlighted several novel aspects of the decision.  In the paragraphs below I focus on two of them.

A Single FRAND Rate

Mr. Justice Birss determined that there is only a single set of FRAND terms “in a given set of circumstances” (¶ 164). This approach stands in contrast to the approach of, for example, U.S. District Judge James Robart in Microsoft Corp. v. Motorola, Inc., 963 F. Supp. 2d 1176 (W.D. Wash. 2013), who concluded there would a range of possible FRAND royalties. As Professor Contreras wrote, Justice Birss’s approach poses a number of “logical hurdles . . . with respect to the SEP holder’s initial offer to the implementer and how to assess the SEP holder’s compliance with competition law.”

For one thing, Justice Birss does not seem to contemplate that after the first decision regarding FRAND terms for a particular portfolio, other courts or arbitration tribunals will follow along by applying the same rate. Instead, he appears to anticipate that each judge or arbitrator will make his or her own decision about the “single” FRAND rate, independently assessing the reasoning of prior courts or tribunals: “Decisions of other courts may have persuasive value but that will largely depend on the reasoning that court has given to reach its conclusion” (¶ 411).

Justice Birss makes this comment with reference to an Ericsson license to Huawei, not a license of Unwired Planet’s portfolio to a different licensee. Perhaps he contemplates more deference by subsequent courts to earlier determinations regarding the same portfolio, but that is not clear. Perhaps also, as Dennis Crouch has pointed out to me, there might be preclusive effects, even internationally, as a result of a prior decision, though that would presumably only put a ceiling on a rate, not a floor. In the absence of such effects, one can anticipate a multitude of “single” FRAND rates for a given portfolio.

Another factor that might lead to inconsistency among different rate determinations is what appears to be some reluctance to rely on arbitral decisions:

The decisions of other courts, assuming they are not binding authorities, may be useful as persuasive precedents. A point arises in this case about a licence which was the product of an arbitration. A licence agreement settled in an arbitration is more like terms set by a court than it is like a licence produced by negotiation and agreement. Huawei submitted that such a licence would be evidence of what a party was actually paying and as such was relevant. Aside from certain aspects of nondiscrimination which I will address separately, I do not accept that evidence of what a party is paying as a result of a binding arbitration will carry much weight. (¶ 171).

This skepticism regarding arbitrations is important because international arbitrations are used in the FRAND context to avoid country-by-country litigation. The passage suggests that Justice Birss would not treat rates set in an arbitration involving one licensee as very persuasive in a proceeding involving another licensee. On the other hand, the arbitration to which he was referring was one for which Huawei had introduced only the rates determined in the arbitration, not the award itself (id.). Later in the decision, he writes that “[a]n arbitral award is at least capable of having a similar persuasive value” as a court decision if the reasoning is available (¶ 411). In the end, it is not clear whether Justice Birss’s concern is with arbitration per se—he says that “[t]erms which were settled by an arbitrator are not evidence of what willing, reasonable business people would agree in a negotiation” (id.)—or simply that Huawei did not provide a complete picture of the arbitration at issue.

In any event, the overall picture appears to be that every court and tribunal can determine its own “single” FRAND rate and other terms (even when each is interpreting the same FRAND commitment for the same SEP portfolio). As Justice Birss indicates, there will be some limitations based on the non-discrimination element of FRAND, but he also limits that non-discrimination principle, as described below.

Another problem with the single-rate approach arises in connection with the CJEU’s 2015 decision in Huawei v. ZTE. Under the rules for FRAND negotiations established in that case, which the CJEU established as a template for the avoidance of abuse under Article 102 TFEU, the patentee and potential licensees are required to make FRAND offers. If there is only one single FRAND rate, as Justice Birss says, then of course the chances that either party’s offer, let alone both, will match that FRAND rate are very slim.

Justice Birss acknowledges this problem, and purports to resolve it by saying that “[t]he fact that concrete proposals [i.e., the required FRAND offers] are also required does not mean it is relevant to ask if those proposals are actually FRAND or not” (¶ 744(ii)). But the CJEU is clear that the parties’ proposals must be a “written offer for a licence on FRAND terms” (Huawei v. ZTE, ¶ 63) and “a specific counter-offer that corresponds to FRAND terms” (Huawei v. ZTE, ¶ 66). Justice Birss argues that this means only “that each side must make clear they are willing to conclude a licence on FRAND terms, since that is what matters,” (¶ 738), not that the offers themselves must be on FRAND terms. This claim, though, that “[w]hether a particular concrete proposal is actually FRAND is not what the CJEU is focussing on” (id.) is not the most natural reading of the CJEU’s decision.

Justice Birss does allow that “[n]o doubt a prejudicial demand or a sham proposal may itself be abusive (that issue arises below) but that is another matter” (id.). He says further that “only an offer which is so far above FRAND as to act to disrupt or prejudice the negotiations themselves . . . will fall foul of Art 102(a)” (¶ 738). He then concludes that the Unwired Planet offers and Huawei counteroffers in their negotiations, which were in the range of around three to ten times higher or lower than the actual FRAND rate that he determines, were not abusive given the circumstances of the negotiation (¶¶ 756-784).

In the end it is not clear just what are the implications of Justice Birss’s single FRAND rate. The determined rate does not necessarily constrain other courts or arbitral tribunals to impose the same rate, nor with Justice Birss’s interpretation do offers that deviate from the FRAND rate constitute abuse under Huawei v. ZTE. His approach can be contrasted, as Professor Contreras points out, with that of other courts that have interpreted FRAND as describing a range of rates, and although Justice Birss rejects that approach, his own approach seems likely to produce similar results. (It is possible that he chose the single-rate approach because he seems to have had some misgivings about the task of choosing between the parties’ two rate proposals if they were both FRAND, though in the end he concluded that “the court’s jurisdiction is not restricted to the binary question of assessing a given set of terms but extends to deciding between rival proposals and coming to a conclusion different from either side’s case on such a proposal” (¶ 169).)

The Non-Discrimination Principle

Mr. Justice Birss also addresses the non-discrimination element of FRAND. Here he distinguishes what he calls “general non-discrimination” and “hard-edged non-discrimination” obligations. The former requires that rates do not differ based on the licensee but only based “primarily” on the value of the portfolio licensed (¶ 175). Hard-edged discrimination, on the other hand, “to the extent it exists, is a distinct factor capable of applying to reduce a royalty rate (or adjust any licence term in any way) which would otherwise have been regarded as FRAND” (¶ 177).

Justice Birss rejects any hard-edged non-discrimination requirement beyond that which would be required by competition law. Although one might think that the ETSI FRAND policy imposes obligations independent of competition law, especially given Justice Birss’s conclusion that it creates contracts under French law, Justice Birss takes a different view regarding agreed-to licenses: “If parties agree licence terms then their rights and obligations under the ETSI FRAND undertaking will be discharged and replaced by their contractual rights under the licence” (¶ 155).

Justice Birss does not really explain the basis for this statement, though in other respects he is quite careful in his discussion of French law. First, ETSI is not a party to a license between a patentee and technology implementer/licensee. Hence, it is not clear how the agreement between patentee and licensee on the license could discharge ETSI’s rights under the FRAND contract. Furthermore, even if entry into a license could in principle discharge ETSI’s rights, it is not clear why discharge would result from entry into a license that turns out not to be FRAND when ETSI’s own right is to ensure the patentee’s obligation to license on FRAND terms. Moreover, as Professor Contreras says, it seems unlikely that the ETSI participants (or, I would add, the parties to the license) intend this result. It is likely that we will now see licensees seeking to include license provisions that preserve their rights to seek a remedy for hard-edged discrimination.

Beyond the contract question, Justice Birss turns to competition law: “If . . . the FRAND undertaking also includes a specific non-discrimination obligation whereby a licensee has the right to demand the very same rate as has been granted to another licensee which is lower than the benchmark rate, then that obligation only applies if the difference would distort competition between the two licensees” (¶ 503). That is, ETSI’s FRAND policy does no more than serve to restate competition law.

This surprising conclusion is made more surprising by the way in which Justice Birss applied competition law. Huawei argued that under EU competition law it did not have to show actual harm to competition so long as it provided evidence from which such harm could be inferred, and the court agreed (¶¶ 504-510). But Justice Birss then addressed Huawei’s discrimination claim, which was based on lower rates in an earlier Unwired Planet license to Samsung, by pointing out that the difference in royalty payments would be much smaller than Huawei’s profit margin (¶ 517).

A problem here is that Unwired Planet’s proportion of the total number of relevant SEPs was argued by Huawei to be 0.04% and by Unwired Planet to be 1.25% (¶ 261). Therefore, the aggregate effect over all SEPs of the difference between the Samsung and Huawei rates would be about 100 times greater than the effect the court considers. The judge does not provide the actual Samsung-Huawei royalty difference in the public decision, but the aggregate royalty burden for all SEPs, he wrote, would be about 10% given the FRAND rate he determines (id.). He also noted that Huawei’s profit margin was between $6 and $19 per device on prices between $164 to $185 (¶ 517), which produces profit percentages between 3.2% and 11.6%. Thus, it appears that if Samsung’s rate were half of Huawei’s, the difference would be about one-half or more of Huawei’s profits. Surely one could infer competitive harm from that difference.

Obviously Justice Birss’s decision applies only to Unwired Planet and Huawei, but it seems to be putting on blinders not to consider the overall effect that would result from similar decisions across all holders of SEPs. Would only holders of larger portfolios than Unwired Planet’s be subject to non-discrimination claims, or could such claims only be brought by licensees that have entered into licenses for significant proportions of all SEPs? If the latter, could the non-discrimination claims only be brought against the later-licensing patentees, when the competitive effect became more significant? As long as there is any role for hard-edged discrimination, and Justice Birss does allow it such a role, if only one coincident with competition law, these questions will have to be answered by subsequent decisions.

Broad Estoppel After Failed IPR: What Prior Art “could have been found by a skilled searcher’s diligent search?”

by Dennis Crouch

Douglas Dynamics v. Meyer Prods (W.D. Wisc 2017) [2017-04-18 (68) Order re post IPR invalidity defenses].US06928757-20050816-D00003After Douglas sued Meyer for infringing its U.S. Patent No. 6,928,757 (Snowplow mounting assembly), Meyer petition for inter partes review — alleging that several of the claims were invalid.  Although the “director” iniated the review, the PTAB eventually sided with the patentee – reaffirming the validity of the claims.

Back at the district court, Douglass asked the court to apply the estoppel provisions that of Section 315(e)(e):

The petitioner in an inter partes review … that results in a final written decision under section 318(a) . . . may not assert . . . in a civil action arising [under the patent laws] . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

35 U.S.C. § 315(e)(2).  The question for the district court here, was the scope of estoppel – what constitutes grounds that were “raised or reasonably could have [been] raised” during the IPR.  Here, the court took a position for fairly strong estoppel:

If the defendant pursues the IPR option, it cannot expect to hold a second-string invalidity case in reserve in case the IPR does not go defendant’s way. In many patent cases, particularly those involving well-developed arts, there is an abundance of prior art with which to make out an arguable invalidity case, so it would be easy to have a secondary set of invalidity contentions ready to go. The court will interpret the estoppel provision in § 315(e)(2) to preclude this defense strategy. Accordingly, the court will construe the statutory language “any ground that the petitioner . . . reasonably could have raised during that inter partes review” to include non-petitioned grounds that the defendant chose not to present in its petition to PTAB.

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.), the Federal Circuit wrote in dicta that no estoppel should apply to grounds that were petitioned, but not instituted.  The Wisconsin court here suggested some potential problems with that outcome, but decided to follow the CAFC’s lead, writing:

So until Shaw is limited or reconsidered, this court will not apply § 315(e)(2) estoppel to [petitioned but] non-instituted grounds, but it will apply § 315(e)(2) estoppel to grounds not asserted in the IPR petition, so long as they are based on prior art that could have been found by a skilled searcher’s diligent search.


What this means for the defendant here is that the only 102/103 arguments that it gets to raise are ones already deemed total failures by the PTAB – and thus are unlikely winners before a district court.

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Of some importance, the PTAB’s final written decision was released in November 2016.  For estoppel purposes, that final decision is all that is required for estoppel to kick-in. However, the case currently on appeal to the Federal Circuit — already giving the defendant its second bite at the apple.

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Supreme Court: Challenging Quick-Look Eligibility Denials

by Dennis Crouch

Broadband ITV v. Hawaiian Telecom (Supreme Court 2017)

A newly filed petition for writ of certiorari offers a substantial challenge to the quick-look eligibility decisions that have been so popular among district courts.  The challenge here is especially focused on no-evidence eligibility decisions that serve as a substitute for an obviousness determination.

In the case, the claims of BBiTV’s U.S. Patent No. 7,631,336 have been repeatedly upheld as non-obvious before a Hawaii district court ruled them ineligible on summary judgment.  In its 103 analysis, the Hawaii court also denied summary judgment of obviousness – finding questions of material fact regarding whether (1) elements of the claims were found in the prior art or (2) PHOSITA would have been motivated to combine those elements.  In its simultaneous 101 decision, however, the court determined as a matter of law that those same elements were “well-understood, routine, conventional activities previously known to the industry” that lack the “inventive concept” required by Alice.  The decision was (as is now common) affirmed without opinion by the Federal Circuit.

The petition challenges the decision and the newly-popular approach of using eligibility as a shortcut to more difficult and fact-intensive obviousness analysis. The three three questions:

1. Evidence for Underlying Factual Findings: Whether the statutory presumption of validity set forth in 35 U.S.C. § 282 applies to claims challenged under 35 U.S.C. § 101, as set forth by this Court in Microsoft Corp. v. i4i L.P., 564 U.S. 91 (2011), when the ultimate legal conclusion relies upon underlying findings of fact, such as whether the additional novel and non-obvious elements of the claims are merely well-understood, routine, and conventional or whether they add an inventive concept.

2. Standard for Summary Judgment: Whether, unlike every other area of law involving motions for summary judgment, as set forth by Fed. R. Civ. P. 56 and Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986), and its progeny, a district court may resolve material underlying fact disputes against the non-movant party on a summary judgment motion for lack of patent-eligibility under § 101.

3. Not All Abstraction Are Abstract: Whether the judicially-created exception for “abstract ideas” broadly includes any abstraction of a claim (including novel business practices or methods of organizing human activities) or only “fundamental” and “long-standing” (i.e., pre-existing) practices and methods, as recognized by this Court in Bilski v. Kappos, 561 U.S. 593, 611 (2010) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2356- 57 (2014).

The questions begin with the implicit understanding that, although a question of law, eligibility decisions are based upon a set of factual determinations that should be treated like any other factual determination by the court.  This approach is directly contrary to the approach often taken these days that follows Judge Mayer’s concurring opinion in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).

An important legal question here is how close the link should be between obviousness and eligibility.  Post-KSR and Alice, there does appear to be substantial connection between the obviousness analysis associated with combining-old-elements and the eligibility analysis of elements that are “well-understood, routine, and conventional.”  The two should often correlate, the court here may have the opportunity to explain the differences both in doctrine and procedure.

Read the petition here: [LINK]

Amicus Briefs in support of the Petition are due by May 17, 2017.


Supreme Court Affirms Causal Requirement for Sanctions under Inherent Power

In patent litigation, as in all civil litigation, district courts have various means to impose sanctions for litigation misconduct.  Rule 11, Rule 37, Section 1927, and, of course, Section 285 are rule- or statutorily-based means to impose costs on those who litigate improperly.

Federal courts also have the “inherent power” to impose sanctions even if one of those rules or statutes is not violated.  But, because it is judicial in nature and cannot be used to swallow the rule, inherent power has long been somewhat cabined. Among other things, the Court has always held that any sanctions imposed must be causally related to the misconduct.

The Court affirmed that requirement in a non-patent case, Goodyear Tire & Rubber Co. v. Haeger (Apr. 18, 2017).  In that case, Goodyear engaged in a years-long effort to hide key documents from the plaintiffs, who, not knowing of them, settled the case.  When they sought sanctions, the district court awarded all of the litigation fees the plaintiff had incurred from the time when the scheme had begun:  $2.7 million.  It also held, conditionally, that $2 million was caused directly by the shenanigans.

The Ninth Circuit affirmed, but the Court reversed, unanimously.  It reiterated that in some cases — such as when the entire defense or entire claim are brought in bad faith — a shifting of all fees is proper, but found that was not the case here.  Instead, unable to discern if the $2 million conditional award was appropriate, it remanded for the courts below to decide what amount had actually been caused by Goodyear’s misconduct.

Section 285 is often the myopic focus of patent litigators.  While the Goodyear opinion confirms the causation requirement of inherent power, it also should remind litigators to think of all available means to seek compensation for improper litigation conduct.

Licensee Marking Requirement

PezPatentRembrandt Wireless v. Samsung (Fed. Cir. 2017)

A jury found for Rembrandt and awarded $15.7 million in damages. On appeal, the Federal Circuit has affirmed on infringement and validity – but rejected the lower court’s finding that the patent had been properly marked.

Back-damages for patent infringement is a bit interesting. The marking statute creates a constructive notice regime for sales of ‘patented articles’ and then cuts-off damages for failure to mark those articles: 

In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

35 U.S.C. § 287.  The marking requirement does not apply only to patentees, but also to “any persons” making or selling the invention “for or under” the patentee.  The courts have interpreted this requirement then as applying to a patent licensee — “thereby limiting the patentee’s damage recovery when the patented article is not marked” by the licensee.  Quoting Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994).

Here, Rembrandt had previously licensed the patent at-issue (U.S. Patent No. 8,023,580) to Zhone Tech who sold unmarked products allegedly embodying claim 40 of the patent.  (Zhone was not required to mark under the license agreement).

As soon as Samsung sought to limit its potential damages to the date of actual-notice, Rembrandt dropped its allegations that Samsung infringed claim 40 and also filed a statutory disclaimer with the USPTO disclaiming claim 40.  Samsung was later found to infringe other remaining claims of the patent – and the district court ruled that the disclaimer was sufficient to cure the marking problem.

On appeal, the Federal Circuit disagrees:

Rembrandt’s position, adopted by the district court, effectively provides an end-run around the marking statute and is irreconcilable with the statute’s purpose. Allowing Rembrandt to use disclaimer to avoid the consequence of its failure to mark undermines the marking statute’s public notice function. . . .

The marking statute protects the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides either constructive notice through marking or actual notice.


Disclaiming a patent claim does not later erase the fact that the claim was previously in effect and had not been properly marked.

The Court suggested a potential question of whether the focus should be claim-by-claim rather than patent-by-patent, but declined to rule on that issue because it had not been properly raised on appeal.   On remand, the district court will be asked to look into that question and – if needed – recalculated the damage award.

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The case here offers an important distinction – in my mind – between a patent license and a covenant-not-to-sue. Any reasonable license that covers an ‘article’ would include the marking requirement.   In my mind (although perhaps not the court’s) a mere covenant-not-to-sue should not fall under the marking requirement.

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Typical Marking License Language: Licensee mark all Licensed Products made or sold in the United States with an appropriate patent marking. All Licensed Products shipped to or sold in other countries must be marked in such a manner as to provide notice to potential infringers pursuant to the patent laws and practice of the country of manufacture or sale.  Licensor shall have the right to inspect Licensee’s Licensed Products to determine if Licensee is marking in accordance with this paragraph.


PTO Director Lee

Politico reports today that PTO Director Michelle Lee is “in the running to head up the White House Office of Science and Technology Policy” known as OSTP. [LINK]  Lee’s Obama-Holdover status suggests to me that OSTP’s policy-making role will be substantially downgraded under President Trump as compared to that of the Obama Administration when the office was headed by John Holdren. However, the move would also confirm a comparative business forward position.  The OSTP Director also now holds an official seat of the new Office of American Innovation headed by Jared Kushner.

According to reports, Commerce Secretary Wilbur Ross has interviewed several replacement candidates for PTO Director.


Issue Preclusion: Claim Construction in Prior Lawsuit

US5428933-1by Dennis Crouch

Phil-Insul Corp. (IntegraSpec) v. Airlite Plastics (Fed. Cir. 2017) [IntegraSpec].

IntegraSpec’s U.S. Patent No. 5,428,933 covers an insulated concrete form (Styrofoam molds) used in building construction.

Back in 2011, IntegraSpec sued Reward Wall and Nudura Corp. for infringing the ‘933 patent. In that case, the district court sided with the defendants – finding no infringement. That decision was affirmed in 2014 by the CAFC without opinion.  During the interim, the USPTO also confirmed the patentability of several claims of the patent.

Meanwhile, IntegraSpec sued Airlite in May 2012 alleging infringement, but the district court dismissed the case in 2014 (after a two year stay) finding them precluded based upon the common law doctrine of collateral estoppel (these days usually called issue preclusion).  Here, we might term this non-mutual defensive collateral estoppel.

Basically, IntegraSpec was asking for a different claim construction in the second case than what was awarded in the first case.  The district court saw the problem with this since accused products were virtually identical and the narrow claim construction in the original case was critical to the non-infringement outcome.

Collateral estoppel kicks-in to prevent a party from re-litigating an already decided issue when:

(1) Same Party: the party being precluded was a party (or in privity with a party) in the prior action.

(2) Same Issue: the issue being precluded is the same as the issue in the prior action;

(3) Actually Litigated: the issue being precluded was actually litigated in the prior action;

(4) Final Judgment: the issue being precluded was determined by a valid final judgment; and

(5) Essential: the determination of the issue in the prior action must have been essential to the prior judgment.

The list above is 8th Circuit law, but is fairly standard.  The Federal Circuit has created some additional patent-specific rules regarding issue preclusion – For infringement, two infringement claims are “the same” if the accused products are “essentially the same,” i.e., differences are either “merely colorable” or else unrelated to the limitations of the asserted patent claims. Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372 (Fed. Cir. 2008)

On appeal, the Federal Circuit has affirmed – specifically holding that its prior R.36 Judgment may be used in support of an issue preclusion conclusion so long as only a single dispositive issue was appealed in that prior appeal.

The second issue – in the first case claim 1 was asserted. Meanwhile, claim 1 was cancelled in a reexam and formerly dependent claim 2 rewritten to include all of the prior limitations.  In this new action, claim 2 is asserted.  In the appeal, the Federal Circuit confirmed that collateral estoppel applies even though the original court interpreted claim 1.  The court based this upon its bare statement that “It is well-established, however, that claim terms are to be construed consistently throughout a patent.”


Objective Indicia of Non-Obviousness Must be Tied to Inventive Step

by Dennis Crouch

This post follows-up on my recent essay on Novartis v. Torrent Pharma.  If you recall, that decision by Judge Chen affirmed an IPR trial decision cancelling the claims of the Novartis patent as obvious.

Generics Successful at Invalidating Novartis Gilenya Patent

I did not previously discuss the portion of the case focusing on Novartis’ objective evidence of non-obviousness.  Novartis argued that its drug (1) met a long-felt but unsolved need, (2) received substantial industry praise, and (3) enjoyed commercial success.  The Supreme Court has accepted this type of evidence as relevant based upon the theory that an obvious invention (1) would have already been invented; (2) would not b praised by the industry as groundbreaking; and (3) would have its commercial success undermined by the similar prior art.

In recent years, however, the courts have also pushed a strong nexus doctrine — requiring a nexus or causal relationship between the objective evidence and the claimed invention. In other words, the patentee must show that it was the invention (as claimed) that led to the commercial success and not something else such as marketing. Because this evidence is used to rebut a prima facie case of obviousness, the burden shifts to the patentee to prove the nexus, although at times the court will presume a nexus.

Here, the court explains that the nexus requirement actually goes an important step further.  The secondary indicia of nonobviousness must be tied to the inventive step itself – i.e., what was claimed an not known in the art.

For objective indicia evidence to be accorded substantial weight, we require that a nexus must exist “between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” In re Kao, 639 F.3d 1057 (Fed. Cir. 2011). . . In evaluating whether the requisite nexus exists, the identified objective indicia must be directed to what was not known in the prior art—including patents and publications—which may well be the novel combination or arrangement of known individual elements.

FDA Approval: Moving back to the facts of Novartis, the patentee argued that its commercial success was based upon “Gilenya being the first commercially-available solid oral multiple sclerosis treatment.”  Although that statement is true, the court found the commercial-availability focus misplaced for a non-obviousness argument.  Rather than first-commercial-availability, the focus should be based upon first-invention or disclosure.

The fact that Gilenya was the first to receive FDA approval for commercial marketing does not overcome the fact that solid multiple sclerosis compositions were already known.

With that framework, the court held that the “proffered evidence is not probative of the nonobviousness inquiry.”

[The Decision]