By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law
Over the past few years, I’ve had various people ask me if 35 U.S.C. § 101 applies to design patents. Now, I hear that the same question was raised at one of Senator Coons & Tillis’ recent § 101 roundtables.
This is one of those rare design patent questions that actually has a clear answer:
No, § 101 does not apply to design patents. See In re Finch, 535 F.2d 70, 71–72 (C.C.P.A. 1976).
Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” On its face, this language may seem to apply to all patents. But when this language was written, there was only one type of patent—the type we now refer to as utility patents.
When Congress enacted the first design patent statute in 1842, it wrote a separate subject matter provision for designs. But it left the language of the utility patent subject matter provision unchanged. That language is now codified —with one small change, from “art” to “process”—in § 101. The design patent subject matter provision changed (quite a bit) over time and is now codified in § 171. (For more on the history of these statutes, see The “Article of Manufacture” in 1887, 32 Berkeley Tech L.J. 1, 27, 32 (2017), available for download at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2850604.)
So Section 101 is the statutory subject matter provision for utility patents. Section 171 is the statutory subject matter provision for design patents. Or, as the CCPA (sort of) put it in Finch, § 171 is the § 101 of design patents.
Because these are independent subject-matter provisions, any change to § 101 should not affect design patents. But if § 101 does get revised, I would suggest changing any reference to “a patent” to “a utility patent”—just to make things perfectly clear.
I wrote the first post for Patently-O 15-years ago — moonlighting online with the blog and a young associate by day at the MBHB firm in Chicago. 7,000 posts later, we’re still going strong. – DC
Back in 2017 iRobot (maker of the Roomba) complained to the USITC about infringing autonomous vacuums being imported into the US. The patentee won on some grounds, but lost on others.
This appeal focuses on iRobot’s U.S. Patent 9,486,924 which allows for scheduling of the cleaning via mobile phone. After conducting its investigation, the ITC found no infringement. A divided appellate panel has affirmed.
The issue on appeal is claim-construction. The claims include a requirement that a phone user transmit certain “instructions” to the cleaning robot.
1. A method of cleaning a room, the method comprising:
transmitting from a cleaning robot to a mobile phone a status of the cleaning robot; and
receiving at the cleaning robot from the mobile phone, in response to an operator command input at the mobile phone and at least in part indicative of a schedule, information including instructions configured to cause a processor of the cleaning robot to execute a cleaning operation in the room according to the schedule,
wherein executing the cleaning operation in the room according to the schedule comprises:
leaving a stationary charging device at which
the cleaning robot is docked according to the
schedule, and
navigating about a floor surface of a room.
The question in the case is whether those “instructions” can simply be schedule information, or must they be machine executable code.
iRobot argues that its proposed construction could include, for example, a simple instruction to begin the cleaning cycle.
On appeal, the Federal Circuit rejected that approach and instead held that “instructions” must be computer executable code. The patent here does not define “instructions” one way or the other and so perhaps this is an OK conclusion albeit somewhat narrow. The court notes that the claims at issue here are considerably narrower than those found in a parent application — those original claims did not include the “instruction” limitation. One problem not addressed here
The majority opinion was penned by Judge Dyk and joined by Judge Mayer. Judge Bryson wrote in dissent:
The problem resides principally in a single claim term, the word “instructions.” Unfortunately, that term appears for the first time in the claims (except for two usages in an entirely different context in the specification), and the meaning of the term is therefore not immediately apparent. . . . I would read the term as having a non-technical meaning such as “directions,” “commands,” or “orders.”
Judge Bryson’s approach here fits better with my reading of the patent document itself since there is no enablement or description in the patent itself of how the phone would be sending computer code to the iRobot. Still, I don’t have much sympathy to a patentee in this case who added new and not-defined limitations into a continuation application.
= = = =
At its core, the dispute between the majority and dissent is about the intelligence of the “cleaning robot.” If the device is an AI-enabled robot then Bryson’s opinion makes lots of sense because the device will be able to understand lots of commands. On the other hand, a lower-level electronic device may need more technical instructions in order to guide its progress.
= = = =
Impact of the provisional: In this case, the patent at issue is a continuation from a prior utility application and also claims priority to a prior provisional application. Neither of the non-provisional applications talk through the process of sending machine-code from a phone to the Roomba. However, the provisional does go into depth on an approach to transfer new code and algorithms to the vacuum from a separate device or drive. Those elements of the invention were seemingly stripped-out of the non-provisional before it was filed. The opinion does not mention the provisional application, but the situation begs to be addressed. At first glance, the provisional provides a strong indication that the inventors contemplated the idea of transferring machine code instructions from a remote device to the vacuum — supporting the majority opinion. On the other hand, the fact that those disclosures were removed from the non-provisional application indicates that the ‘924 patent was moving in a different direction.
Guest post by Professor Joshua D. Sarnoff of DePaul College of Law. Below, he responds to Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
In Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas, Mr. Doerre states that “[n]otably, however, there is no similar need to resort to use of an implicit exception to prevent undue preemption of known prior art abstract ideas, as 35 U.S.C. § 102 and 35 U.S.C. § 103 already ensure that claims do not disproportionately ‘“t[ie] up the use of [] underlying” [prior art] ideas.’ This can be seen in that, under 35 U.S.C. § 103, a claim must be inventive over all known prior art ideas, and cannot simply be an obvious application of a prior art abstract idea, or an obvious combination of several prior art abstract ideas.” Of course, since Section 103 often requires detailed factual evaluations not readily resolved early in litigation, the pressure to use Section 101 remains even for ineligible subject matter that is in fact prior art against the applicant. And unlike for Section 103, the nature of the creative advance over that discovery may be readily apparent on the face of the patent’s disclosure (particularly where it lies in the discovery itself and thus there is no meaningful additional creativity to render the practical application non-obvious). But courts are unlikely to grant motions to dismiss under Section 103, and for some bizarre reason we keep giving this ultimate question of law to juries. Further, Section 103’s obviousness standard in fact is not much clearer than Section 101 standards.
But the important point is that Section 101 is needed for precisely the case Mr. Doerre avoids, when the ineligible discovery is not prior art against the applicant. Mr. Doerre would be absolutely correct that we do not need to use Section 101 if Section 103 could do the job (of excluding uncreative applications of ineligible discoveries in the three categories of excluded subject matter – which are judicial interpretations of the meaning of “invention or discovery” and are not “judicial exceptions” to Section 101 subject matter). But Section 103 cannot do that job as current written, even though both provisions derived from the same statutory section under the pre-1952 Act. And that is because such ineligible discoveries are not normally among the categories of Section 102 prior art as applied to an applicant who is also the discoverer of that ineligible subject matter.
As I have written before (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1757272 and the briefs for amici law professors that I filed in Bilski, Mayo, and Myriad), the ineligible subject matter is often discovered by the applicant himself or herself, and thus does not qualify as Section 102 prior art for Section 103 obviousness analysis. If it did, then 103 in fact would be able to do the job, although given the tremendous uncertainty over what qualifies as a non-obvious advance under Section 103 we would still have roughly the same amount of uncertainty in the law. Further, no person who objects to using Section 101 to exclude categorically ineligible discoveries claimed as practical applications thereof would be the happier if we were to amend Section 102 to permit Section 103 to do the job now being performed (and only capable of being performed) by Section 101. This is because then we would just use obviousness law to have to make the difficult decisions as to whether the claim as a whole represents a non-obvious advance over the ineligible discovery while treating the discovery as prior art against the applicant. And as just noted, we don’t have a clear theory of how much creativity constitutes a non-obvious advance. Although the amicus brief I filed for law and economics professors in KSR sought to have the Court explicitly adopt a time and money threshold of ordinary creativity so as to create that clear theory, predictably the Supreme Court declined the invitation to make the law clearer (while still correcting the errors of analysis of the Federal Circuit in assessing what constitutes an “obvious” advance over the prior art of record).
Further, as Professor Katherine Strandburg has persuasively explained (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2196844) and as the recent and less recent history clearly reflects, the current concern (since Benson) with preemption is not in fact either the source of the current eligibility doctrine nor the grounds for finding any practical applications to be ineligible. As I explained in both the cited paper and briefs noted above, non-preemption is a consequence of having an inventive application of ineligible subject matter; lack of preemption says nothing about whether the application is in fact inventive in light of the discovery of such ineligible subject matter. Consequently, were preemption of the entire set of applications of ineligible discoveries actually the concern driving application of the doctrine, none of the claims held invalid by the Supreme Court or the Federal Circuit should have been held invalid, as all those claimed specific applications did not preempt many other things that might have been claimed when employing the ineligible discoveries. (Of course, some of those held-to-be invalid claims may have covered all of the valuable, then-known applications. But the Supreme Court had held in the Telephone Cases that claiming all valuable applications was perfectly fine, so long as the claims reflected the actual “invention” – meaning, at the time, a creative advance over ineligible subject matter). Parker v. Flook’s terminology made this quite clear, requiring “some other inventive concept in its application” than mere (i.e., uncreative) application of the categorically ineligible discovery. Flook’s language (and approach) was explicitly reaffirmed by Mayo’s recitation of a requirement for an “inventive concept” (notwithstanding the failure of the Supreme Court to explicitly acknowledged that Diamond v. Diehr had impliedly overruled Flook on this point, and that Mayo has now impliedly overruled Diehr on this point by reinstating Flook. That Mayo also improvidently reiterated Benson’s preemption rationale without applying it in any way in the analysis is simply another example of uncareful opinions of the Supreme Court that engender further confusion rather than clarifying the law. As Professor Strandburg has suggested, we would do well to simply ignore the “preemption” language and focus on the real question, which Professor Jeffrey Lefstin has correctly described (see https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2398696) of whether we want a standard of inventive application or only of practical application. (Although I disagree with Professor Lefstin in regard to whether Funk Brothers was in fact the first instance of inventive application, we agree that the 1952 Act did not clearly overrule Funk Brothers. This is important so that people will not continue to argue that Giles Rich was correct in his later revisionist history (see https://books.google.com/books/about/Laying_the_Ghost_of_the_invention_Requir.html?id=xH1etwAACAAJ) that all questions of inventive creativity were placed in Section 103 by the 1952 Act, notwithstanding that P.J. Federico, who was the other principal co-author of the 1952 Act, argued the opposite – successfully – in the Application of Ducci case, 225 F.2d 683 (C.C.P.A. 1955) that Section 101’s “process” category (incorporating Section 100(b)’s definition of “process”) continued the “analogous use” test of inventive creativity requirement for claimed processes that the Supreme Court had articulated in Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U.S. 11 (1892)).
In summary, Mr. Doerre is simply wrong that Section 103 can do the job as currently written. But if it could, he would be no happier with the state of the law, so long as inventive application remained the law for what constitutes an eligible (or a patentable) “invention,” and all without regard to “preemption.” Should legislation move forward to eliminate the requirement for inventive application, we will have to learn if it in fact is a requirement of constitutional stature in granting authority to “inventors for their discoveries” (or is simply like the dicta in Graham v. John Deere, 386 U.S. 1, 6 (1966), that Congress may not remove inventions that have entered the public domain by granting patents on them – which the Supreme Court subsequently rejected in the copyright context as a constitutional limitation on legislative power in Golan v. Holder, 565 U.S. 302, 323-24 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 202 n.7 (2003)). But first, Congress would have to enact such legislation, and there are good reasons not to eliminate the inventive application requirement wholly without regard to the politics of which industries’ oxen will be gored thereby. And let’s hope that if Congress does go there, that Congress is careful not to thereby permit aesthetic creativity to provide the “practical application” that thereby authorizes the grant of a utility patent as novel and nonobvious subject matter (whenever the aesthetic contribution to the claimed invention functionally interacts with the substrate that forms the remainder of the “claim as a whole,” so that the printed matter doctrine will not apply and thus the aesthetic creativity will thereby prevent a finding of non-obviousness, so we will end up with a design patent on steroids issued as a utility patent).
Disclosure statement: I have no current financial interest in the issues addressed.
New PatentlyO Law Journal Essay by Jeremy C. Doerre. Mr. Doerre is a patent attorney with the law firm of Tillman Wright, PLLC.
In the wake of Alice, many observers have suggested that the implicit judicial exception to 35 U.S.C. § 101 for abstract ideas is now sometimes being used as a judicial or administrative shortcut to invalidate or reject claims that should properly be addressed under 35 U.S.C. § 103. This article notes that “the concern that drives this exclusionary principle [is] one of pre-emption,” and queries whether, given the Supreme Court’s “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas should be narrowly construed to not apply for prior art ideas because 35 U.S.C. § 103 already ensures that claims do not “’disproportionately t[ie] up the use of [] underlying’ [prior art] ideas.”
Read Jeremy C. Doerre, Is There Any Need to Resort to a § 101 Exception for Prior Art Ideas?, 2019 PatentlyO L.J. 10. (2019.Doerre.AnyNeed)
Prior Patently-O Patent L.J. Articles:
Colleen V. Chien, Piloting Applicant-Initiated 101 Deferral Through A Randomized Controlled Trial, 2019 Patently-O Patent Law Journal 1. (2019.Chien.DeferringPSM)
David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Paul M. Janicke, Patent Venue: Half Christmas Pie, And Half Crow, 2017 Patently-O Patent Law Journal 13. (Janicke.2017.ChristmasPie.pdf)
Paul M. Janicke, The Imminent Outpouring from the Eastern District of Texas, 2017 Patently-O Patent Law Journal 1 (2017) (Janicke.2017.Venue)
Mark A. Lemley, Erik Oliver, Kent Richardson, James Yoon, & Michael Costa, Patent Purchases and Litigation Outcomes, 2016 Patently-O Patent Law Journal 15 (Lemley.2016.PatentMarket)
Bernard Chao and Amy Mapes, An Early Look at Mayo’s Impact on Personalized Medicine, 2016 Patently-O Patent Law Journal 10 (Chao.2016.PersonalizedMedicine)
James E. Daily, An Empirical Analysis of Some Proponents and Opponents of Patent Reform, 2016 Patently-O Patent Law Journal 1. (Daily.2016.Professors)
Tristan Gray–Le Coz and Charles Duan, Apply It to the USPTO: Review of the Implementation of Alice v. CLS Bank in Patent Examination, 2014 Patently-O Patent Law Journal 1. (GrayLeCozDuan)
Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Journal 1 (Stoll.2012.estoppel.pdf)
Paul Morgan, The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Journal 29. (Morgan.2011.AIAAmbiguities)
Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12 (sarnoff.2011.derivation.pdf)
Bernard Chao, Not So Confidential: A Call for Restraint in Sealing Court Records, 2011 Patently-O Patent Patent Law Journal 6 (chao.sealedrecords.pdf)
Benjamin Levi and Rodney R. Sweetland, The Federal Trade Commission’s (FTC) Recommendations to the International Trade Commission (ITC): Unsound, Unmeasured, and Unauthoritative, 2011 Patently-O Patent Law Journal 1 (levi.ftcunsound.pdf)
Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent Law Journal 111 (Collins.KingPharma.pdf)
Robert A. Matthews, Jr., When Multiple Plaintiffs/Relators Sue for the Same Act of Patent False Marking, 2010 Patently-O Patent Law Journal 95 (matthews.falsemarking.pdf)
Kristen Osenga, The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89 (Osenga.pdf)
Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24 (Kasdan.Casino.Damages)
Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently‐O Patent L.J. 7 (2010) (Reines.2010)
Gregory P. Landis & Loria B. Yeadon, Selecting the Next Nominee for the Federal Circuit: Patently Obvious to Consider Diversity, 2010 Patently-O Patent L.J. 1 (2010) (Nominee Diversity)
Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. (Cole.pdf)
John F. Duffy, The Death of Google’s Patents, 2008 Patently O-Pat. L.J. ___ (googlepatents101.pdf)
Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38
Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36
Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30 (Download Sarnoff.BIO.pdf)
John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. (Duffy.BPAI.pdf)
Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1 (Casino-Seagate)
A group of pro-patent senators and members of Congress have published what they are calling “a bipartisan, bicameral framework on Section 101 patent reform.”
Basics of the framework are to create a defined, closed list of subject matter category exclusions: Fundamental scientific principles; Products that exist solely and exclusively in nature; Pure mathematical formulas; Economic or commercial principles; Mental activities. Under the framework, a patent would not be eligible based upon “simply reciting generic technical language or generic functional language.” At the same time, the framework suggests that “practical applications” should be patent eligible. Finally, the framework calls for a divide-and-conquer approach — making clear “that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 102, 103 and 112.”
E.I. DuPont de Nemours & Co. v. Unifrax I LLC (Fed. Cir. 2019)
In 2014, DuPont sued Unifrax for infringing its patented flame-barrier that is both lightweight and thin. U.S. Patent 8,607,926 (“Composite Flame Barrier Laminate for a Thermal and Acoustic Insulation Blanket”). The jury sided with DuPont — finding the asserted claims infringed and not proven invalid. Over a dissent from Judge O’Malley, the Federal Circuit has affirmed — finding that substantial evidence supports the verdict. (Majority authored by Judge Reyna and joined by Judge Hughes).
When 90% counts as 100%: A key issue on appeal was the meaning of the claim term “100%.” DuPont’s claims required an “inorganic refractory layer” made of “platelets in an amount of 100% by weight.” That particular limitation was added during prosecution to get around a prior art reference that taught a platelet concentration of less than 100%.
The accused product layer approximates 100% platelets, but has some small amount of residual dispersant that didn’t fully evaporate. Prior to trial, the district court sided with DuPont on claim construction and ruled that “100%” be interpreted as allowing for “some residual dispersant.” This substantially foreclosed Unifrax’s non-infringement argument that it had hoped to take to the jury.
On appeal, the Federal Circuit affirmed — finding a more-relaxed construction of 100% was correct because of how the mathematical construct was used in the patent document itself. The key phrase from the specification is as follows:
The refractory layer comprises platelets. Preferably at least 85% of the layer comprises platelets, more preferably at least 90% and most preferably at least 95%. In some embodiments, platelets comprise 100% of the layer. The refractory layer may comprise some residual dispersant arising from incomplete drying of the platelet dispersion during manufacture.
According to the court, the final sentence of this paragraph — allowing for residual dispersant in the layer — applies to all of the embodiments, including the 100% layer. Thus, when the patent says “100%” platelets, it really meant almost-all platelets with potentially a bit of dispersant. According to the majority the defendant is wrong that “‘100%’ means one hundred percent.”
Writing in dissent, Judge O’Malley argued that the majority’s construction “ignores the plain meaning of ‘100%’ and introduces more ambiguity than it resolves.”
There is no ambiguity in this language. The “platelets” must be present in the refractory layer “in an amount of 100% by weight.” The “100% by weight” language, coupled with the requirement that the platelets exist in an “inorganic refractory layer,” clearly contemplates that the platelets—i.e., inorganic material—constitute the entirety of the refractory layer. That leaves no room for other organic additives. There is perhaps no clearer or simpler way the patentee could have conveyed such a requirement.
Dissent.
The claim language is actually quite mess in the same clause it indicates that the refractory layer comprises “platelets in an amount of 100% by weight” but may also have a moisture content of up to 10% by weight. 110% by weight concentration is not ordinarily allowed in physics. However, we do sometimes talk about “110% effort” and Cecil Quillin has reported a USPTO’s patent grant rate as greater than 100% (by comparing original filings to all patents issued in the resulting family).
I pulled up the prosecution history and found that the 100% and 10% elements were added at the same time in the same amendment with the statement that the claim now “requires a refractory layer containing 100% platelets (and also requires . . . a defined residual moisture content).” In my mind, this works strongly in the patentee’s favor — that the 100% allows for residual moisture. Still, it is unfortunate that the ultimate holding is a rejection of the defendant’s argument that “‘100%’ means one hundred percent.”
= = = = = =
Product on sale before the patent filing. A unique aspect of this lawsuit is that the accused products were already on sale before DuPont filed its patent application.
Unifrax’s product was on-sale by May 2011; DuPont filed its application in December 2011. To be clear, DuPont’s patent does claim priority to prior applications, but only as a continuation-in-part. The prior applications apparently do not sufficiently disclose the invention at-issue here.
For DuPont, the fact that its patent was filed prior to the AIA saved its bacon. On appeal, the Federal Circuit agreed that DuPont had presented substantial evidence to antedate Unifrax’s prior use/sale.
The critical point of law focused on proof of the prior invention. The courts have long been suspicious of inventor’s self-serving testimony regarding prior inventorship. Here, the duPont provided inventor testimony along with substantial documentation of the prior invention timing. However, the company did not provide o corroborating evidence as to one particular limitation in the claims — a requirement that the refractive layer have a “dry areal weight of 15 to 50 gsm.”
On appeal, the Federal Circuit sided with duPont — reflecting on the requirement for corroboration.
[O]ur case law does not require that evidence have a source independent of the inventors on every aspect of conception and reduction to practice. . . Here, the law requires only that the corroborative evidence, including circumstantial evidence, support the credibility of the inventors’ story.
The reason for corroboration is a concern that inventors will commit perjury. Thus, the role of corroboration is help ensure inventor credibility.
In this case, the Federal Circuit held that the prohibition on registering “immoral” or “scandalous” marks is a facial violation of a registrant’s First Amendment free speech rights. Here, Brunetti is seeking to register the mark “FUCT,” which the solicitor identified as a close homonym of “the paradigmatic word of profanity in our language.” Oral arguments were held on April 15 before the nine Supreme Court justices.
In the case before the Supreme Court, the Government has conceded that the USPTO’s historic application of the test has been hit-or-miss, but that going forward the agency can be trusted to to draw the line against “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression,
independent of any views that they may express.” This would include words like FUCT, as well as certain sexually explicit images, for instance.
Although the prohibition is content based, the government argues that its approach would be viewpoint neutral – just like many of the other conditions for obtaining trademark rights. This should lead to a lower level of scrutiny than that faced in Tam v. Matal (2017). In addition, my view is that Tam itself was decided on thin grounds because trademark denial does not actually limit anyone’s speech. The difficulty with merging speech issues with trademark law is – as Chief Justice Roberts stated at oral arguements – The whole point of this program [i.e., trademark law] is to regulate content.”
Here, it is clear that some regulations would be allowable — such as prohibiting registration of “obscene” marks. However, the statute goes to far by broadly prohibiting registration of both “immoral” and “scandalous” marks. The question is whether the Supreme Court is willing to effectively rewrite the statute to fit within the constitutional limits. Justice Gorsuch got to the point: “We can fix your [overbroad statute] problem for you, I got that. . . [But] how is a person who wants to get a mark supposed to tell what the PTO is going to do? Is it a flip of the coin?” As an example, this case focuses on FUCT, but FCUK and FVCK are already registered marks.
Justice Alito sees the case as potentially reinvigorating manifest destiny – “There’s going to be a mad scramble by people to register these marks . . . whatever lists of really dirty words . . . and all their variations.”
Brunetti’s attorney John Sommer started off well with his two points:
There are two important points to be made. First, the government does not defend the plain language of the statute. Nor does it defend how it’s been consistently interpreted for the last 70 years. Rather, it asks this Court to validate a hypothetical statute not enacted.
The second point is that a substantial number of Americans think that gambling, drinking, eating some types of meat, eating meat at all is immoral. A substantial number of Americans, as to abortion, gun control, immigration, our two political parties, a substantial number think that those are — the con is immoral, and a substantial number think that the pro is immoral. There’s no — simply
no way to make a — a sensible determination between those that come in and those must stay out.
In a classic line, Sommer also discussed the Supreme Court’s 1971 decision in Cohen v. California:
Mr. SOMMER: Cohen could have said fooey on the draft, and that’s what the government says he should have done, and if he said something else, he should have been arrested and his conviction should have been affirmed, but we know his conviction was reversed. . . . You know, if the government had a list of seven dirty words [that cannot be registered], would that be constitutional?
JUSTICE ALITO: Oh, come on. You know, come on.
JUSTICE GORSUCH: Cohen can have his T-shirt, but we are not going to trademark them, and we’ve held just last year that a patent is a public benefit that can be withdrawn without a judge. Why isn’t this also similarly a public benefit rather than a private right?
JUSTICE SOTOMAYOR: Why can’t the government say, no, we’re not going to give you space on our public registry for words that we find are not acceptable?
MR. SOMMER: Would the government be allowed to refuse registration of ownership of property because it’s bought by a church with a name that’s considered offensive? Could the Coast Guard refuse to register a boat because they think the name of the boat is a little bit salacious?
JUSTICE SOTOMAYOR: Actually, you’re right.
. . .
MR. SOMMER: We have a facial challenge here, so the question is, is it overbroad? And it doesn’t matter if Mr. Brunetti’s mark should be granted or not. It’s the statute as written and as applied, without exception, covers a fair amount of clearly core speech, of high-value speech.
. . .
[the risk of regulation here is that it can] take our level of discussion in our diverse society . . . to, you know, the lowest common denominator, the most squeamish among us.
Sommer made his point here, but where he faltered was on his additional argument that many of the scandalous restrictions are viewpoint based — the justices did not appear to follow that line of thinking.
JUSTICE BREYER: No, I don’t agree with it’s viewpoint. I think that very often the word involved in your case and the racial slur is not viewpoint. It is used to insult somebody, rather like fighting words, or it’s used to call attention to yourself. That’s the purpose of the slur. That isn’t viewpoint. Fighting words isn’t viewpoint. Or, if it is, it’s overcome.
MR. SOMMER: I don’t think the profanity always expresses viewpoint.
JUSTICE KAVANAUGH: When does it not?
MR. SOMMER: Well, fleeting expletives and I think when it’s used without any relevance to the subject matter, such as in high school speech, and, of course, there still can be – –
JUSTICE SOTOMAYOR: Some — some of us would say that a vulgar word with relationship to selling clothes is sort of irrelevant?
MR. SOMMER: Well, it’s not irrelevant because, as Justice Ginsburg pointed out, the audience that Mr. Brunetti is appealing to is young men who want to be rebels. And this is how they do it.
Some interesting points of the discussion: does the “scandalous” nature of the mark apply to the public as a whole or only potential consumers (gov says “public as a whole”); if the statute is struck down, can the PTO still reject obscene marks (ans: yes, if not used in commerce).
In the rebuttal, the Government offered what appeared to be something of a veiled threat of dire consequences if the statute is invalidated — noting that the PTO already views TAM as prohibiting denial of registration for racial slurs
But with respect to the single-most offensive racial slur, the PTO is currently holding in abeyance applications that incorporate that word, pending this Court’s decision on — leave open the possibility that that word might be viewed as scandalous.
Section 2 of the Lanham Act includes a host of reasons for refusing to register a trademark. The PTO may not register immoral or scandalous marks; marks that are deceptive; marks that disparage, falsely suggest a connection with, bring into contempt, or disrepute “persons, living or dead, institutions, beliefs, or national symbols;” governmental flags or coats of arms; “name, portrait, or signature” of a living person (without consent) or of a dead President “during the life of his widow;” marks likely to cause confusion or mistake because of their resemblance to other registered marks; marks that are merely descriptive or deceptively misdescriptive of the goods; etc. If the Federal Circuit is affirmed here, it will be interesting to see what comes next.
Gilbert P. Hyatt v. Andrei Iancu (Supreme Court 2019)
The following is a fairly typical pattern within the USPTO:
After final rejection, applicant files a PTAB appeal notice and brief;
Rather than pursue its side of the appeal, the Examiner withdraws the pending rejections — and then re-opens prosecution with a new set of rejections.
Although few cases go through this more than one cycle. Gilbert Hyatt has long been an exception — both in terms of how he treats the PTO and how he is treated by the PTO.
Going back to the my typical pattern above — note that the Manual of Patent Examination Policy (MPEP) expressly permits cycling by the examiner, although it requires SPE approval:
The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief.
MPEP § 1207.04.
Hyatt’s petition to the U.S. Supreme Court argues that a patent applicant has a right to appeal — and that this examination cycling violates his statutory rights. In particular, Hyatt points to 35 U.S.C. § 134 and § 6.
134(a). An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
6(b). Duties.—The Patent Trial and Appeal Board shall— (1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a).
In a remarkably parallel situation from the early 1900’s the U.S. Supreme Court held that mandamus was appropriate where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904).
Thus, Hyatt’s Question Presented:
Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.
If you’re in the Iowa region, we invite you to attend Patent Law’s New Directions: An Update from Director Porcari at the University of Iowa College of Law on Tuesday, May 14, from 2:45 PM to 5:00 PM. Damien Porcari, Director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Office, will talk about the new 101 guidelines, design patents and USPTO policies.
Two hours of CLE credit are pending. There is no cost for the seminar, but we ask that attendees register in advance. More information and a registration link can be found the Iowa Innovation, Business & Law Center website.
On appeal, the Federal Circuit has sided with the ATI — finding the patentee’s Unifed Shader claims patentable over the prior art. U.S. Patents 7,742,053, 6,897,871, and 7,327,369 (Graphics processing architecture employing a ‘unified shader’).
These patents are pre-AIA and the patentee is claiming that its invention pre-dates the prior art. The PTAB agreed that ATI’s conception was early enough, but concluded that the patentee lacked diligence.
One problem with the PTAB opinion was its statement requiring “continuous reasonable diligence” in reducing the invention to practice while the actual traditional standard is “reasonably continuous diligence.” The Federal Circuit has previously decided this exact point:
A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.
Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004 (Fed. Cir. 2016) (emphases original).
In the IPR, the inventor provided testimony and supporting document that showed that at least one person worked on the design of a working model embodying the invention every business day during the diligence period. The PTAB, however, dismissed this evidence because at least some of the time was spent working on alternative chip designs and optional features not particularly claimed.
On appeal, the Federal Circuit severely chastized the PTAB, Solicitor, and PTO Director for rejecting diligence while failing to identify any delays or gaps in activity.
“We are directed to no view of the evidence that could support a conclusion that ATI set aside the development of the Unified Shader. The PTAB cited no basis for finding that this technology was not being diligently pursued. The Director seeks to excuse the PTAB’s absence of support for its holding, by stating that ATI bears the burden of proof of diligence. However, the Director does not explain where the burden of proof was not met, upon the extensive evidence of daily activity. . . . [T]he purpose of the diligence requirement is to show that the invention was not abandoned or set aside. Here, the Director does not point to the remotest suggestion of abandonment or setting aside of the Unified Shader technology.”
In January 2019, the Federal Circuit issued a non-precedential opinion in this trademark case. Based upon a USPTO request, the court has now reissue the decision as precedential. See Fed. Cir. R. 32.1(e).
As part of the trademark registration process, an applicant must submit a specimen of the mark as used in commerce. Here, Siny is seeking to register the mark CASALANA for its knit wool fabric and submitted a printout from a webpage purporting to show the mark being used in commerce.
The page did not allow direct ordering but simply listed a phone number and email “for sales information.” In addition, the mark was not shown on images of the fabric itself or its packaging but rather simply in the website text. The examining attorney and TTAB found the specimen insufficient to prove use in commerce. Here, prior precedent indicates that a specimen using the mark on a “display associated with goods” is only sufficient if it is a “point of sale” display and not mere advertising.
On appeal, the Federal Circuit affirmed both on the law and the factual conclusions — holding that “the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods.”
Siny could have likely fixed its problem a few ways. (1) providing quantity/pricing information on the site; (2) providing e-commerce option; (3) providing evidence of its sales process — that consumers saw the website, called the number, and bought the goods; (4) putting the mark on the images of the goods for sale rather than the just the on the surrounding website; (5) it may have been enough to simply change the general “for sales information” statement to a more direct — “call to purchase, pricing available on request.”
Acorda Therapeutics, Inc., v. Roxane Laboratories, Inc. (Supreme Court 2019)
Obviousness is the core doctrine of patentability and primary focus of both patent examination and post issuances PTAB challenges. In this case, Acorda has asked the U.S. Supreme Court to spend some time on this important doctrine — and particularly consider the role of objective indicia of nonobviousness such as “commercial success, long felt but unsolved needs, [and] failure of others.” Quoting Deere.
The question presented is whether objective indicia of nonobviousness may be partially or entirely discounted where the development of the invention was allegedly “blocked” by the existence of a prior patent, and, if so, whether an “implicit finding” that an invention was “blocked,” without a finding of actual blocking, is sufficient to conclude that an infringer has met its burden of proof.
The infringement lawsuit was triggered when Roxane (and others) filed Abbreviated New Drug Applications (ANDAs) with the FDA to start making generic versions of Acorda’s drug treatment for multiple sclerosis (Ampyra). Roxane successfully defended the lawsuit by arguing that the asserted claims were obvious.
For the obviousness analysis, the patentee Acorda provided evidence of commercial success and long felt but unmet need that was tied to the invention at issue. However, the Federal Circuit found that those secondary factors did not apply because of a broader blocking-patent already exclusively licensed to Acorda.
The setup here begins with the fact that Acorda is the exclusive licensee of a broad patent for treating 4-AP to treat MS (Elan patent). The Elan patent has now expired, but it was firmly in place as Acorda conducted its research and obtained FDA approval. This petition here focuses primarily on four follow-on patents obtained by Acorda covering tweaks to the treatment plan. Despite the tweaks, it appears that Elan’s broad patent still covers the drug treatment at issue here. I.e., Elan’s patent is a “blocking patent.”
When it came to the secondary indicia of nonobviousness, the Federal Circuit majority determined that a key reason why Acorda was able to do research on its four follow-on patents is that it was protected by the blocking patent — no other company was ready to risk infringement liability to do the research. In other words, the commercial success, failure of others, and recognized but unmet need were all due to the Elan patent’s chilling effect on competition. From the majority:
“The risk of infringement liability for marketing in the US would have provided and independent incentive [for third parties] not to develop the invention of the Acorda patents, even if those inventions were obvious.”
The decision in Acorda falls in line with the court’s 2005 decision in Merck & Co. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) (en banc denied; cert denied). In that case, the Federal Circuit also held that a prior patent that precluded market entry was the cause of Merck’s commercial success — not the invention’s ingenuity.
The Federal Circuit’s invocation and expansion of its judicially manufactured blocking-patent doctrine to negate Acorda’s “significant,” “convincing,” and unrefuted evidence of nonobviousness is plainly irreconcilable with this Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), which established that an inquiry into commercial success, failure of others, and long-felt but unmet need is an important protection against hindsight bias in the obviousness analysis. As Judge Newman recognized in her dissent—and as Federal Circuit judges have emphasized in prior dissents highlighting the blocking-patent doctrine’s deficiencies—the elimination of that essential safeguard makes it far more likely that courts will submit to the “temptation” of invalidating patents that are obvious only when viewed through the lens of the patents’ own teachings.
The Federal Circuit’s application of its blocking-patent doctrine in this case was particularly problematic because the court of appeals identified no evidence that anyone was actually deterred by the Elan patent from researching low-dose uses of 4-AP—and instead shifted the burden of proof to Acorda to “supply evidence” to negate the district court’s “implicit finding” of blocking. In so doing, the Federal Circuit upended the clear-and-convincing-evidence burden of proof for invalidity challenges that this Court recognized in Microsoft Corp. v. i4i Limited Partnership, 564 U.S. 91, 101–02 (2011), and obliterated the presumption of validity that Congress codified in the Patent Act, 35 U.S.C. § 282(a).
Omega’s patents cover remote control and monitoring systems for vehicles. The defendant, CalAmp, helps companies and governments monitor their vehicles (location and status, such as battery health and vehicle speed). In the infringement trial, a Florida jury sided with the patentee – finding the patents willfully infringed and not invalid. The district court then trebled the damages and awarded attorney fees — for a tidy sum of $15 million (with an ongoing royalty of $13 per unit).
On appeal, the Federal Circuit has made several interesting rulings. In a later post, I’ll return to the validity issue.
This post will focus on infringement: Some of Omega’s claims require both “a transmitter and a receiver for receiving signals from said transmitter.” (33 and 31 in the figure above). CalAmp’s accused device has the transmitter, but the accompanied receiver is a cell-phone tower. Since CalAmp does not supply cell towers, the appellate panel found CalAmp cannot be a direct infringer under the All Elements Rule.
Making and Selling vs Using: Note here that we’re talking about system claims, and the patentee particularly accused CalAmp of “making and selling” the invention. As explained below, infringement allegations for “using” an invention can be treated more expansively under the beneficial control doctrine.
The patentee had also alleged CalAmp’s indirect infringement — that CalAmp should be liable for its customers’ infringing use of the system. On appeal, the court agreed that there was sufficient evidence to find that the customers had “used” the claimed system:
“[T]o use a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.” Centillion Data Sys., LLC v. Qwest Commc’ns Int’l, 631 F.3d 1279 (Fed. Cir. 2011). “[A] person must control (even if indirectly) and benefit from each claimed component.” Intellectual Ventures I v. Motorola Mobility, 870 F.3d 1320 (Fed. Cir. 2017). Here, there was evidence from which the jury could infer that customers controlled and used the system and received the required benefits.
In other words, the cell-phone tower was being “used” by the customers as part of the system, and therefore it didn’t matter that they were owned by and more generally controlled by a separate entity.
Despite finding potential liability here, the court substantially vacated the infringement verdict on other grounds (informing the jury of the proper claim construction / proof of knowledge for inducement / etc).
At the end of the appeal, only one claim was left as valid/infringed. The Federal Circuit determined that the patentee had not provided sufficient evidence at trial to support the full damage award based upon that lone claim. Thus, the new trial will also be needed on damages.
On April 3, 2019, President Trump released a “memorandum on combating trafficking in counterfeit and pirated goods” which calls for a report on the state of the issue to be completed by November 1, 2019. Homeland security is in charge, with consultations from Commerce, Justice, OMB, USTR, and others, including intellectual property rights holders.
The memorandum mentions a couple of prior studies on counterfeiting and piracy, but the current data continues to be lacking — as the GAO wrote in 2010: “U.S. government estimates of economic losses resulting from counterfeiting cannot be substantiated due to the absence of underlying studies.”
A few elements of the memorandum are important to consider:
The Administration is treating counterfeit goods and copyright piracy as homeland security and law enforcement issues — directing those groups to to step-up their efforts.
The Administration is focusing as much on trafficking as it is production. Think about vendors such as Amazon, Physical carriers such as FedEx, digital pipeline operators; payment providers, and customs brokers. For legitimate intermediaries, however, the focus is on acting as “beneficial partners in combating trafficking.”
Although counterfeit goods may be costing the makers of branded products, the companies trafficking in the goods are making money. It will be interesting to see the extent that those companies operating on an international scale will be willing to cooperate with US law enforcement.
A key point of argument and policy over the past decades has been the level of authority given to the USPTO as the government’s expert patent law agency. When the USPTO makes a decision — is that decision respected by other tribunals? At times the agency is given substantial deference (factual conclusions made by the PTAB), but other agency decisions are also regularly reviewed de novo without deference. With regard to interpretation of substantive patent law, PTO determinations are often simply ignored.
Cleveland Clinic Found. v. True Health Diagnostics LLC (Fed. Cir 2019) (nonprecedential) offers a case-in-point with the following key statement from the Federal Circuit:
While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to natural laws and those directed to patent-eligible applications of those laws, we are mindful of the need for consistent application of our case law.
In the case at hand, the Federal Circuit refused to follow or give any deference to PTO guidelines and instead affirmed a lower court determination that the claims at issue were ineligible as effectively claiming a law of nature.
Over the years, the PTO has shifted policy. In the old eligibility cases like Diehr and Chakrabarty, the agency was refusing to issue patents that it saw as crossing-the-eligibility-line. However, the new statements by Dir. Iancu go the other-way, with the USPTO creating a policy of issuing patents that the courts would find invalid (if given the opportunity).
The statement from the court here is important although buried in a non-precedential opinion. One reason for its importance is its clear tension with the Federal Circuit’s recent decision in Natural Alternatives that called for Skidmore deference to be given to the PTO statement on eligibility.
The U.S. Patent and Trademark Office has adopted guidance on how examiners [and the agency as a whole] should determine whether a claim is eligible under § 101 and provided examples of eligible and ineligible claims. Under these guidelines, a claim to a practical application of a natural product to treat a particular disease is patent eligible. The parties dispute the persuasiveness of this document and the weight we should afford it under Skidmore v. Swift & Co., 323 U.S. 134, 65 S.Ct. 161, 89 L.Ed. 124 (1944).
Nat. Alternatives Intl., Inc. v. Creative Compounds, LLC, 2018-1295, 2019 WL 1216226, at *5 n.2 (Fed. Cir. Mar. 15, 2019). Although Natural Alternatives was precedential, its statement regarding Skidmore deference was admittedly dicta by Judge Moore. Judge Moore was also on the Cleveland Clinic panel, and I suspect that she would not have signed the opinion if it had been issued as precedential. Of course, that begs the question of why sign it as a non-precedential opinion?
I first worked with Wes Austin back in 2006 as he developed his Dunes CLE program and later followed with some interest his Utah-based patent firm Austin-Rapp. As the image shows below, Austin has expanded from patent law into comedy as well. His new sitcom – THE IP SECTION – merges the two (as well as Mormonism) and stars a patent lawyer who wants to be a stand-up comedian.
