Comcast Corp. v. ITC and Rovi Corp. (Fed. Cir. 2020)
Rovi complained to the US International Trade Commission (ITC) that Comcast’s customers directly infringe Rovi’s U.S. Patents 8,006,263 and 8,578,413 when they use the X1 system. The ITC agreed and found Comcast in violation.
Three issues to talk about here: (1) Importing “articles that infringe”; (2) Importation by third parties; (3) Patents are now expired.
Articles that Infringe: The ITC statute provides for action based upon “importation … of articles that (i) infringe a valid and enforceable US patent.” 19 U.S.C. § 1337(a). Comcast argues that the set-top boxes do not infringe the patent at the point of importation, but rather only become infringing once in use by the customer. On appeal, the Federal Circuit held that this issue was already decided in Suprema, Inc. v. U.S. Int’l Trade Comm’n, 796 F.3d 1338 (Fed. Cir. 2015) (en banc) (ITC still can take action to block imports even though direct infringement is post-importation). Note here that Comcast hired former US Solicitor General Donald Verrilli as its appellate counsel — in part to potentially push this issue up to the Supreme Court.
Third Party Importation: The Comcast X1 boxes are actually imported by ARRIS and Technicolor. On appeal, the Federal Circuit confirmed that Comcast counts as the importer for Section 337 purposes because Comcast caused the articles to be imported and because the articles are particularly tailored to Comcast’s system so as to have no other use.
Expired Patents: The patents at issue here have expired. As such, the ITC exclusion order has no further prospective effect. Since the ITC is not authorized to award damages, Comcasted that the patent expiration rendered the entire case and appeal moot. On appeal, however, the Federal Circuit chose to decide the issues — finding that “appellate finality” is warranted based upon “collateral consequences” that may stem from its outcome. In particular, the court noted two additional ITC actions involving Rovi patents asserted against the same Comcast X1 box in which ALJ noted that the present appeal will impact the outcome of the ongoing investigation. “We conclude that there are sufficient collateral consequences to negate mootness.”
= = = = =
The case also involves parallel district court litigation that was originally filed in E.D. Tex. but moved to S.D.N.Y. That case has been stayed pending outcome of the ITC litigation under 28 U.S.C. § 1659. Although the ITC upheld the asserted claims, the USPTO cancelled the claims of the asserted patents as part of an IPR proceeding. Those final decisions are now being appealed by Rovi to the Federal Circuit.
One of the appeals included the following interesting colloquy at oral from Judge Lourie associated with the patent’s listing of 1,500 cited references.
Judge Lourie: You are presumably registered to practice in the Patent Office?
Attorney: I am
Judge: What do you understand the purpose of citing prior art references to be?
Attorney: During prosecution?
Judge: During prosecution, yes.
Attorney: So that the examiner may consider them in whether to allow the claims
Judge: In other words, they are relevant to patentability
Judge: This patent, I’m sure you didn’t draft it, but you are standing here. This patent has 22 columns of cited references; Probably between 1,500 and 2,000. It’s very difficult to escape the conclusion that the applicant was trying to bury — it didn’t even cite [the reference used in the IPR]. What can be the sound purpose in citing 1,500 – 2,000 references other than to bury the examiner.
Attorney: The Rovi family of companies have a lot of different patent applications all related to similar technology. And I know that there is an obligation when you have multiple patents that are related to cite all of the prior art references.
Judge: So five references; ten references; twenty references …
Attorney: They do tend to accumulate when you have large patent portfolios. Because if you don’t cite all of the prior art references you cited for another patent that has your name on it then the implication is that well you purposefully didn’t cite it. …
Judge: Well you’ve given a pretty good defense and I commend you for that. But, it is not convincing as to the citation of 1,500 references. Will you filter back to the originators of this patent, at least with respect to one judge ‘it doesn’t sit very well.’? It doesn’t leave a good impression of patent prosecution.
Oral arguments in 2019-1188 available here: http://www.cafc.uscourts.gov/oral-argument-recordings
“How much “consideration” on any actual per document average basis is there when the search results come back with several thousand hits (with NO IDS even in the picture)?”
Depends on the examiner, the case type, the VOT they’re doing, and the spe etc. but in general if you’re talking about getting into the over a thousand or two refs considered then each ref is just getting a few secs at most consideration to determine if it is relevant to look at further. Which, truth be told, is usually overkill for 99.9% of them, but that’s just if you’re doing a good job, which obviously probably some people are not. After you have your best good 100 or so (hopefully less but these days in my art it’s nearly always 80+ nowadays) refs you look at those to see if there are any to use in a rejection.
I myself had been doing like bare min 8 hrs search, but after last promo I’ve got to cut it down, it just isn’t feasible, with google, citation, IDSs, etc. to fit it all into the time budget. Just not physically feasible. As in the work can not be physically completed presuming 100% efficiency at time management and admin efficiency, and presuming I was writing shty actions (sadly I’m not). And talking to most people around me I’m doing overkill as is compared to near everyone I’ve talked to.
“then each ref is just getting a few secs at most consideration to determine if it is relevant to look at further.”
Exactly.
Thank you.
That sounds like competent examination. But in litigation it’s all about one of those reference’s Figure 64 and column 131, lines 33 through 41.
Great argument for IPRs. Even for abolishing the presumption of validity.
insignificant dallasite,
I would posit even more than your elimination of that (VERY) important stick in the bundle of property rights of existence and level of presumption of validity:
Get rid of examination altogether and go to a registration system.
What is the budget of the Patent Office? Some 3.7 BILLION dollars? ( link to uspto.gov )
ALL of that is innovator funded.
ALL.
Maybe a pure registration system would take a couple million tops to have and run — something a simple registration fee could handle. Turn those BILLIONS back into the pockets of innovators and get out of the way.
>They do tend to accumulate when you have large patent portfolios.
Some think the McKesson case created an obligation to submit every office action from every patent that portfolio, too.
That is not the holding of McKesson and the obligation referred to does not exist.
There are a lot of patent attorneys running around who can barely write a complete sentence. They “think” a lot of things but they aren’t worth taking seriously.
There is a clear and sharp divide in the comments here.
On the one side you have several “regulars” with known dispositions of being anti-patent: Ben (an examiner), Paul (a litigator against those with patents), MaxDrei (a Foreign interlocutor), and Malcolm (being Malcolm).
On the other side are those who recognize reality, the actual law, and who seek to protect innovators.
Really, an inventor and those he fights for Anti patent?LOLOL
Readers should be able to independently judge for themselves what comments are protecting innovators by encouraging their recognizing reality and actual law rather than misleading personal opinions of what the law should be. Just as one example, if I had a nickel for every erroneous allegation here and on Gene’s blog of impending patent law unconstitutionality decisions or impending patent law legislation I could have bought a whole box of Twinkies by now.
As I and others have noted her many times, there are indeed several things about patent law that could and should be improved with rational compromises. Only recently, on PatentDocs, did I even see a attempt at proposing realistic Alice-101 legislation compromise language instead of the prior draconian and ambiguous language that went nowhere.
Not that your assumptions of my past patent law career has any basis, but in any case there is no such thing as a patent litigator who will only represent defendants and not patent owners.
Paul,
Your words here (specifically, you representing patent holders) just don’t conform with well over 95% of your words ON patent law issues (those that you actually deign to engage in as opposed to just sniping from the sidelines; which also are just not in your favor).
Young practioners read the blog posts and think that must be the law and then get smacked down at the PTAB, ITC, FTC, District Courts, Federal Circuit, and Supreme Court. But you have to admit, the posers (sorry; posters) can be entertaining.
As to the 101 issues, “rational compromise” does not — cannot — be a code word for abdication of what is desired in the removal of the mess created by the Supreme Court.
This most definitely means NOT accepting any gift horses (like those left at the gates of Troy).
As PatentDocs pointed out a few weeks ago, it was refusal to compromise on anything by extremists on both sides that killed any chances of 101 legislation.
As was (actually) pointed out in the counter, Paul, was that what really K1lled the matter was the disingenuous “jump on the bandwagon – we want to fix the problem when we really do not want to fix the problem” ADDITIONS to the original thrust and the ADDED 112/100 traps that d00med the attempt.
Your spin here is NOT accepted.
Paul, can you link to the Patent Crocks post you are referring to?
I find it difficult to believe what you are saying.
PatentDocs “What is an Abstract Idea, Anyway?”
Posted: 01 Mar 2020 09:21 PM PST
Thanks, Paul.
That article is pretty awful but I suppose a small part of it does at least represent a tiny , tiny step forward for a blog that is otherwise just another reactionary and mindless source of misinformation about subject matter eligibility.
Borella and Noonan are both shills for wealthy would-be exploiters of the system, at the end of the day. “More patents” is all they really seem to care about, like so many other nonsense spouters in this community.
““More patents” is all they really seem to care about, like so many other nonsense spouters in this community.”
You do realize your own nonsense with such a statement, eh Malcolm?
All things being equal, one MUST want ‘more patents’ as that patent bargain (Quid Pro Quo) is understood.
Your view here is the epitome of being anti-patent.
Your cognitive dissonance is afire.
It’s amazing how often unrelated patent applications are reported on IDSs, but products/services offered by the applicant in the same area as the claimed invention are totally unknown to the inventors! What a wonderful system we have.
So Judge Lourie and the panel doesn’t know that applicants have a duty under Rule 56 to disclose “all information known to that individual to be material to patentability?” Even if it’s 1500-2000 prior art references? Is there now a Judge Lourie exception to this rule that applies only when faced with a panel that includes Judge Lourie? So applicants are now required to predict the future if their patents are involved in an appeal that includes Judge Lourie on the panel? Message to Judge Lourie: time to retire, bud.
I wonder if plaintiffs in a patent infringement suit can now cite Judge Lourie when the defendants raise inequitable conduct as a defense.
“What is the difference between considering a large number of references in the course of the “regular” search and considering a large number of references cited by Applicant?”
A. Lots of examiners are trying to keep the total number of refs down because otherwise the search balloons out of the budgeted time.
B. Any refs cited by the applicant are extra refs to be considered on “top of” all the refs that the examiner has to look at in a normal search.
C. It’s just more work and generally speaking they’re not all that relevant when a big IDS comes in, so it’s all just more busy work so examiners are not happy about just wasting time on whatever refs the applicant cites that aren’t relevant.
6,
How much “consideration” on any actual per document average basis is there when the search results come back with several thousand hits (with NO IDS even in the picture)?
The only examiner search results that are relevant are those the examiner actually cites of record. If the examiner search, or cites examiner selected therefrom, misses relevant prior art that one can get hit with in an IPR, that is the gamble one made in getting claims issued without conducting one’s own more thorough prior art search. As noted many times, U.S. PTO application search and examination fees are too low to justify total reliance on it for filing law suits.
“The only examiner search results that are relevant are those the examiner actually cites of record”
Relevant for what?
Paul, I don’t think that you understood the point. The point is NOT which references end being used and cited of record.
THOSE are not the references (or list of references) “considered.”
The point here is the verb “considered.”
“is the gamble one made in getting claims issued without conducting one’s own more thorough prior art search”
A true statement that is none the less meaningless in the present context.
Your reply is non-responsive.
… should read:
THOSE are not the ONLY references (or list of references) “considered.”
Judge Lourie: I’m shocked shocked to find that prosecutors taking advantage of examiner time constraint is going on in here.
Clerk: Here’s your next case where once again an examiner had 30 hours to consider a field of art with half a million references.
Judge Lourie: Ooh, thank you, very much!
Ben, what we need is an IPR APJ panel or judge with the intestinal fortitude to say something like: “Given the very large number of technical references cited by applicants and the few hours of time available for their examination by a PTO examiner, there is no rational basis for assuming here that the examiner had considered all of the contents of all of those references in allowing the subject claims.”
[But as others have noted, these reference-dumps of large numbers of references the applicants are aware of from related U.S. or foreign activities seems unavoidable for avoiding possible IC accusations in enforcing the patent.]
“[But as others have noted, these reference-dumps of large numbers of references the applicants are aware of from related U.S. or foreign activities seems unavoidable for avoiding possible IC accusations in enforcing the patent.]”
Hardly, it’s just a failure of government. The courts need to get together with the patent office to determine what sort of thing should be reasonable for people with large fams and other situations of that sort so this nonsense doesn’t continue to be out of hand, and get even more so.
You know, 6, coming from England, I personally don’t see any problem. All it needs, as Paul Morgan points out, is for the courts to provide guidance on what sort of conduct under Rule 56 will inoculate an Applicant against a finding of IC. The courts could, for example, explain that a crude data dump of 1500 references onto your prosecution file simply isn’t enough.
Is that too much to ask? I think not.
Writers here delight in calling upon Examiners at the PTO simply to “do their job”. Me, I prefer to exhort the judges to do their job properly. For the sake of orderly operation of the patent system.
The courts do not have the power to add a new duty to applicants that is not within the law.
Your “The courts could, for example, explain that a crude data dump of 1500 references onto your prosecution file simply isn’t enough.” is contrary to the fact that such IS enough.
Applicants simply are not required to do what you would want them to do. See post 2.1 (among others from me).
Alternatively, the USPTO needs to give the examiners more time in these situations…
…particularly when USPTO specifically charges a fee to have the reference considered.
What (exactly) does “be considered” entail?
There appears to be a rampant misperception that “consideration” means examination-like** reading of every word of the reference.
Heck, the specification being examined OFTEN does not get this treatment.
** clearly, this description is for how applications are supposed to be examined.
>What (exactly) does “be considered” entail?
My problem is more that they charge money for a service but don’t actually deliver that service, in the sense that you actually get extra examiner time.
Ditto for extra claim fees, btw. There too, they charge more w/o actually allocating any more examiners time.
I recognize that you have gripes.
Without commenting on the gripes, let me ask AGAIN:
What (exactly) does “be considered” entail?
They are starting to do this. Once your application contains more than 10 pages of IDS, the examiner will get an extra hour.
So, whether you’re filing 10 or 500 pages of IDS, you can rest assured the examiner will have a whole extra hour to review the material.
In my effort to fit the situation to the movie reference, I think I was unclear.
Probably every case involving patents that Judge Lourie reviews originally involved an examiner who had too little time and too much art to sift through.
To only notice this problem when it’s foisted on the examiner by the applicant, and to ignore this problem when it’s deliberately instituted by the agency, is contemptible.
We’d be better off with a system that simply accepted that after some relatively low threshold number of references, the IDS is not actually considered by the examiner.
…and yet again – What (exactly) does “be considered” entail?
One wonders if Judge Lourie may have been thinking of the Penn Yan Boats case (S.D. Fla. 1972), which has been cited in the MPEP re duty of candor. In Penn Yan Boats, the evident burying of a reference prompted this comment from the district court:”Obviously, the purpose of this misrepresentation was to bury the Wollard patent in a long list of allegedly old prior art patents in the hope that the Patent Examiner, having already allowed the Stuart claims, would ignore the list and permit the Stuart patent to issue. Such conduct clearly violates the required standard of candor and fair dealing with the Patent Office.”
I have not looked at the Penn Yan Boats case, but I have a hunch that it does not comply with post below at 2.1.
I’ve had it cited in OA’s 3 or 4 times in 20+ years of practice. Never once applicable to the application being examined. Typical of examiners who love to cite cases they don’t know anything about.
I knew a senior examiner who used to cite that case, without further comment, whenever he received an IDS of several hundred references or more. I also know that, prior to rule changes in the 1990’s, attorneys after allowance routinely cited stacks of references that never came to the examiner. The non-reviewed IDS and references were simply placed in the paper patent file.
What is your (current) role, that would provide that you know this (ancient) examiner-privy stuff…?
I forgot to add the upshot that submitting references after allowance, even though the examiner would never see them, was thought to fulfill the duty of candor because the references were provided to “The Patent Office.” If the Patent Office did not apply the references, that was on The Patent Office. Then came Rules 56 and 97 (1992). Rule 97 ended the end-around and Rule 56 copied SEC rules and applied the definition of “material nonpublic information” in insider trading to what was “material to patentability” at the PTO. Insider trading is like inequitable conduct, right? What could possibly go wrong? Now it’s 2020.
Dennis, you raise a good point that challenging the granting of ITC exclusion orders against products that do not infringe the patent, and only become infringing in use by purchaser-customers, might be of interest to the Supremes. But that may be a lot less appealing [pun intended] if that product has no other possible uses?
“But that may be a lot less appealing [pun intended] if that product has no other possible uses?”
Paul, are you thinking of:
35 USC 271 (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
Reading the comments here, I am brought to the conclusion that whenever one thinks there might be close prior art, the best way to protect the Applicant would be to commission a searcher to list all prior publications they can find, even if they are of no more interest than as technical background wallpaper. The more the better, nudge nudge, wink wink.
For then one can file at the USPTO a prior art listing of at least 1500 documents, no sweat, with no obligation whatsoever to distinguish the docs that are relevant to patentability from those that are not.
One wonders therefore what is the purpose of Rule 56 (or whatever it is, these days) other than to generate work (billable hours) for attorneys at law which can in all good faith be billed on to the clients. Billing multiple hours for the service of kicking up dust strikes me as one more sign of a system that is not functioning optimally. Thank you judges!
MaxDrei,
You seem to have an obsess10n with “Guilty until proven innocent”….
I do find it amusing that the nugget from this case being expounded upon follows a post entitled:
“They Chose Advocacy over Candor”
In this nugget, the best advocacy is maximum (required) candor, and the ‘pushback’ is that “too much” is being provided (thus YOU — the Royal You — must be up to no good).
Respectfully, Judge Lourie needs pushback. Whether ‘polite’ as in post 1 below, or more direct, meh, that may be dependent on the type of channel involved (court and blog being recognized as very different channels).
It’s simply too difficult to determine if a reference is cumulative!
Impossible really. Especially for a patent attorney. Judges need to be more understanding.
It is not the role of a patent attorney to determine relative worth of references (including whether or not there is ‘sufficient’ cumulative coverage).
When in doubt — ANY doubt — report all material in an objective and systematic manner.
And yes, that ‘objective’ notion explicitly removes what you and MaxDrei apparently want to insert as a duty of a patentee (but is not such).
“It is not the role of a patent attorney to determine relative worth of references…”
Of course it is. It’s right there in Rule 56.
Please allow me to clarify:
I am using “relative” in the sense of one reference against another reference rather than the “relative” of whether or not a single reference falls within the purview of Rule 56.
The context here should have made my comment clear, but hopefully no one else will be confused.
If information is material it has to be cited. Rule 56 clearly defines what is material. As to the “relative” worth of one reference against another I don’t think that’s even a consideration. A reference, or other piece of information, is either material or it’s not.
“I don’t think that’s even a consideration”
Agree – and yet, look at the numerous comments on this thread (from the side that I have labeled as anti-patent) that propose that very type of thing.
There’s also something about not needing to submit cumulative references in Rule 56, if you want to get technical about it.
But it’s just a bunch of words, really, and nobody expects mere lawyers to be able to understand it.
You clearly have not been paying attention to the patent profanity**, have you Malcolm?
Sure 37 CFR 1.56 includes:
“(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.”
That “and” in front of the (1) and (2) are pretty significant caveats.
**patent profanity including that from the SAME BODY of which Judge Lourie is personally involved with.
See also: link to patentlyo.com
One recalls the utterance of an English patents judge about 20 years ago, to the effect that the best place to hide a leaf is in the Amazonian rain-forest. Here, the Judge asks, what plausible reason is there for 1500 or so references, other than to bury the Examiner. Fair question, no?
Wasn’t there another case recently, where the prosecuting attorney chose not to tell the USPTO references on the PCT-ISR? Were they X refs, Y refs or merely A refs (ie nothing more than technological background for the claimed subject matter) I wonder.
Back to the list of 1500 references. Presumably no Applicant is willing to allocate category X, Y or A to each of them, no PTO Examiner is demanding it and no court expects it. Even that I suppose would be a step too far. But at least it would be a defence against the charge of “burial”, no?
See post 1.
The charge of “burying” is NOT proper.
Your analogy of “hiding a leaf” does NOT carry because the insinuation of “hiding” is not proper in the first place.
Having a systematic and objective IDS listing protocol is an inoculation against a charge of “hiding.” Be that ‘reference numerical,” alphabetical, date of awareness, or some reasonable combination, it matters less than an objective and systematic application of the protocol, showing NO deference to ANY level of perceived importance of ANY particular reference. Your comments regarding “X,” “Y,” and “A” are NOT required of applicants. Please do not confuse the different roles of the different players.
Who can say if a reference is nothing more than technical background???
After all, the term “technical” is undefinable, like “abstract”. Nobody knows what these words mean and it’s unfair to expect mere attorneys to figure it out. Judges need to let boys be boys and stop trying to cram rules down everybody’s throat.
Your feelings (and misdirection) are noted.
Judge: So five references; ten references; twenty references …”
First, as to your comment that I was not the one prosecuting the case, I am the one now protecting the property of the innovator, so I do have a vested interest, even a solemn duty to do so.
That being understood, it would behoove the court (recognizing that your Honor may not have personally created the particular patent profanity that made advisable, and some may rightly say, made necessary such large disclosure sets) to recognize that submissions of even several thousand do no more than serve the stated purpose of the rule of law.
The court would be better served in understanding that it is the Patent Office — and only the Patent Office — that is empowered to make the call and at the end of the day to sift through ALL things that a Person Having Ordinary Skill In The Art may consider. The court should be aware that the volume of that material was even made more extreme in the passage of the America Invents Act.
Against that background, the personal views of “proper amount” of references and the relation of that amount with the serious charge of burying the Patent Office (such a charge here being made without substantiation and merely in volume) with the untowards implication of nefarious intent should be recalibrated.
With respect.
Your Honor.
Not to mention that these particular patents (or patent families) have been litigated over in about a dozen major cases in both district court, PTAB, and the ITC by TiVo over a 15 year period….resulting in a gazillion prior art references being pressed forward as relevant by various accused infringers. Thus any patent which issues from these family is going to necessarily reference pretty much EVERY one of the references used by either the courts or the PTO to try and deny the patent owner its property.
Isn’t it common for a U.S. examiner to consider large numbers of references in the course of his or her “regular” search? What is the difference between considering a large number of references in the course of the “regular” search and considering a large number of references cited by Applicant? If the difference relates to examination efficiency, why can’t the PTO develop a process by which both can be done with reasonable efficiency?
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