United States Patent & Trademark Office (USPTO) v. Booking.Com B.V. (Supreme Court 2020) [Full Decision PDF]

In this trademark case, the USPTO asked the court to implement its “nearly per se” rule that a generic term remains generic even if coupled with a generic top level domain (such as “.com”).  The 4th Circuit sided with BOOKING.COM and the Supreme Court has now affirmed: “[W]e discern no support for the PTO’s current view in trademark law or policy.” Id.

According to the majority, the question is not whether some portion of BOOKING.COM is generic but rather whether the term “taken as a whole” is generic.  Then the court queries — what type of generic thing is a “booking.com”

That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.

In its opinion, the court notes the PTO inconsistency (ART.COM and DATING.COM are both registered).

The following quote from the case is probably the most controversial:

[I]f “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider. Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined.

The majority opinion was written by Justice Ginsburg and joined by six other justices, including all five conservatives. Justice Sotomayor concurred in a very short opinion; and Justice Breyer wrote in dissent and would have applied Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602 (1888). Justice Breyer writes:

Goodyear recognized that designations such as “Company,” “Corp.,” and “Inc.” merely indicate corporate form and therefore do nothing to distinguish one firm’s goods or services from all others’. . .  .[W]here a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts. . . .

Breyer in dissent.

Breyer spends some time focusing on the problems associated with survey evidence.  I suspect that aspect of his dissent will have some impact on how courts conduct trademark cases in the future.

As TM owners willingly give up their racially disparaging and gender stereotyping marks, are there ways to ensure that the marks are not reoccupied by others wanting to free ride on their fame and infamy?

Guest Post by Deborah R. Gerhardt, Reef C. Ivey II Excellence Fund Term Professor of Law at UNC School of Law

Quaker Oats says it plans to phase out its “Aunt Jemima” brand. The character has long been criticized as a stereotypical representation of black women as inferior servants. In recognition of the problem, the Company had been gradually revising the brand’s image and considering when might be the appropriate time to phase it out altogether. Of course, if taking a bold stand against racism had been their true intent, they would have taken much more decisive action to drop the brand long ago.

As Trevor Noah observed on the Daily Show’s June 17, 2020 episode,

It’s also amazing that the brand knew that Aunt Jemima was racist and then instead of just changing it, they chose to instead slowly phase out the racism over time. That is so ridiculous. Can you imagine you caught your partner cheating and instead of stopping, they said, Yeah, yeah. You’re right baby. This is so wrong. I think I’m going to slowly start phasing out all of my affairs. From now on no sex, just hand stuff.

Amidst protests following the wake of George Floyd’s untimely death, Quaker Oats proclaims it truly does plan to take action to recreate the brand, although you would not know that from looking at its website one week after the announcement. As the screenshot below illustrates, no indication of abandonment appears on their pancake mix or syrup web pages.

The current plan is hardly inspiring. It appears to be: “Let’s keep the admittedly racist mark in place until a suitably less racist substitute has been crafted.”

One of the potential ways to challenge a third-party registration of a racist brand was eliminated in 2017. For years Section 2(d) of the Lanham Act blocked registrations that disparaged a group of people. But despite this bar, the “Aunt Jemima” mark (and so many other disparaging marks) registered anyway.  Some however, were blocked or cancelled (including the Washington Redskins mark) on that basis before the Supreme Court held the bar unconstitutional in Matal v. Tam 137 S. Ct. 1744 (2017). Since that decision, the First Amendment right to free expression permits citizens to seek registration of racially offensive trademarks.

After Tam, the Quaker Oats plan to abandon the Aunt Jemima mark raises an interesting question: what if a third party were to seize the opportunity to pick up the well-known mark and double down on the racist stereotype? Are there strategies that Quaker Oats can use to minimize any consequential harm? For a fun take on what such a highjacking looks like, go here https://southpark.cc.com/clips/vlg1j1/from-one-redskin-to-another to see what happens when the Southpark kids adopt “the Washington Redskins” for their start-up after the registration was cancelled. Contrary to the suggestion in that episode, there at least a couple of strategies that may work.

The Southpark spoof appears to be coming true with recent application to register marks on AUNT JEMINA and ESKIMO PIE by notorious “trademark entrepreneur” Leo Stoller. Consider Also Mark Cohen’s discussion of Colgate Palmolive’s Darlie (“Black man toothpaste.”) trademark in China.

The easiest option is to lean on the USPTO’s examiner corps. Even if the company ceases using the mark, the company’s portfolio of registrations will remain on the Principal Register until, one by one, they expire. If a new entrant to the syrup and pancake mix market applies to register “Aunt Jemima,” the Examiner would look at the Principal Register and see if any confusingly similar marks are still live. I predict that as long as Aunt Jemima lives on the Principle register, the marks will block others from registering confusing similar brands. We will not have to wait long to see if my prediction is right because on June 18, 2020, an individual in California applied to register “Aunt Jemima” for “Pancake mixes; Maple syrup; Pre-mixed pancake batter; Table syrup.” Something at the USPTO would have to go terribly against the norm for this application to succeed. Quaker Oats owns five registrations (and one pending application) for the brand, and some will not be up for renewal until 2025. Even if Quaker Oats took no action against the current applicant, the mark’s continued presence in the USPTO’s TESS data will give trademark examiners a clear and easy way to deny registration of the mark to anyone else until the last Quaker Oats “Aunt Jemima” mark expires.

This practice reveals that some trademark owners can succeed in blocking new entrants years after use has stopped. Although the Lanham Act ties trademark rights to use, for the sake of efficiency, USPTO trademark examiners treat third party federal registration as an irrefutable heuristic for use in office actions. When an Examiner blocks an application because the proposed mark is confusingly similar to one already registered, the USPTO treats the facts in the registration as true. Because Quaker Oats would not be a party to the applicant’s registration proceeding, USPTO examiners will not look into allegations of abandonment without Quaker Oats present to defend its brand. The company’s current “Aunt Jemima” registrations will be more than sufficient to deny the new entrant registration. However, if Quaker Oats opposed the registration, the new entrant could raise the defense of abandonment. Therefore, Quaker Oats would be smart to stay quiet and let the USPTO take care of the matter. If the new entrant had the chutzpah to seek cancellation of the Quaker Oats federal registrations, they would have to respond to the applicant’s claim that “Aunt Jemima” was available because Quaker Oats abandoned use of the mark and expressed a clear intent not to resume its use.

Beyond the arena of registration, there are alternatives for Quaker Oats to explore if someone were to actually start using the “Aunt Jemima” mark in commerce, whether or not the new entrant sought registration. The Lanham Act is broad enough to assert a claim against a new adopter even if the original trademark owner abandoned the mark as a matter of law as long as consumers still draw a connection between the “Aunt Jemima” mark and Quaker Oats. The language of 15 USC 1125(a) may support a cause of action for false sponsorship, false affiliation or false designation of origin or state unfair competition if a new entrant used the mark in commercial advertising in a way that causes Quaker Oats harm.  Contrary to what the Redskins (the football team not the start-up) owner claimed in the South Park skit, there actually is something a trademark owner can do, and much that the USPTO will do for a trademark owner both before and after the mark has been abandoned.

by Dennis Crouch

B/E Aerospace v C&D Zodiac (Fed. Cir. 2020)

Commercial aircraft lavatories are always oddly shaped in order provide some amount of functionality while minimizing space usage. B/E’s patent here covers the shape of the bathroom that includes the carve-out for a seat just forward — notice the “s” shape of the wall in the image below.  On appeal here the Federal Circuit has affirmed the PTAB obviousness decision.  This outcome was easy to guess once I read the court’s opening discussion line: “The technology involved in this appeal is simple.”  U.S. Patent Nos. 9,073,641 and 9,440,742.

The claims includes two “recesses” in the wall — you can see these in Figure 2 above.

• an upper recess to receive the inclined seat-back; and
• a lower recess for the back legs (“seat support”)

PTAB found the claimed invention obvious based upon the two prior art references shown below (and note the lower bottom recess):

Neither of the prior art references include the lower recess to support the back legs. However, the PTAB concluded that a skilled artisan would have found it obvious to modify these to include the claimed second recess. The Board concluded that this modification is was a “predictable” modification for solving a known problem — especially when “coupled with common sense.”

The Board was helped-along with its prior art analysis looking at several other contemporary references showing a lower recess.  I’ll note here that these contemporary references were not used as “prior art” but rather as information of the level of skill in the art.

On appeal, the Federal Circuit has affirmed finding the second recess “nothing more than the predictable application of known technology . . . because a person of
skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.”  In addition, the court found that it would have been “common sense” to modify the prior art in order to try to save further space.

Here, the Board’s invocation of common sense was properly accompanied by reasoned analysis and evidentiary support. The Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on
Mr. Anderson’s detailed expert testimony. The Board noted Mr. Anderson’s opinion that a “person of ordinary skill in the art would recognize that as a seat is moved further aft the seat support necessarily is also moved further aft.”

Slip Op. The court particularly noted that the simplicity of the technology aided in the conclusion of obviousness.

Here, just like in Perfect Web, the evidence shows that the technology of the claimed invention is simple. The patents relate to contoured walls that “reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures.” The missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved.

Id.

With regard to the design drawings submitted to identify the level of skill in the art.  The Federal Circuit determined that it need not reach the issue of whether they were improperly handled or prohibited by 35 U.S.C. 311(b).  Rather, the court held that the PTAB’s obviousness conclusion stands on its own – based upon the two prior art references coupled with the expert testimony.

The court today denied two en banc petitions:

Biogen International GmbH v. Banner Life Sciences LLC, 20-1373 (Fed. Cir. 2020)

The law allows for a limited extension of patent term based upon regulatory delays – such as FDA delay in approving a drug for sale.  The statute is unfortunately complex and poorly written. 35 U.S.C. 156.

In this case, Biogen received a patent term extension for its Patent US7619001 associated with using the drug Tecfidera (MS treatment). By the time of the litigation, the patent would have expired, but for the term extension.

Banner’s proposed version of the drug is a bit different than Biogen’s Tecfidera — although apparently bioequivalent. The court included the following diagram showing the differences with the Biogen’s version is DMF and Banner’s is MMF (both versions were covered by the asserted claim):

In the case, the Federal Circuit held that the term extension did not apply in this situation.  The court limited limiting PTE to only situations where the same drug (active ingredient) is being accused of infringement, even if the alternative is covered by the patent claims and includes the same active portion.  The court wrote:

Because the scope of a patent term extension under 35 U.S.C. § 156 only includes the active ingredient of an approved product, or an ester or salt of that active ingredient, and the product at issue does not fall within one of those categories, we affirm the judgment of the district court.

In its petition for rehearing, Biogen asked two questions:

1. Whether the panel’s decision allows an infringer to avoid an innovator’s patent term extension by using the claimed and bioequivalent active moiety of the compound in the patentee’s approved drug product.
2. Whether patent term extension under 35 U.S.C. § 156(b)(2) for method claims is limited to the “approved product” only, where the only limit that Congress imposed on patent term extension for method claims is “any use claimed by the patent and approved for the product,” and Congress further provided that “[a]s used in this subsection, the term ‘product’ includes an approved product” (i.e., is not “limited” to an approved product). 35 U.S.C. § 156(b) (emphases added).

PhRMA also filed an en banc petition in support. The PhRMA brief argues that this decision will allow generic companies skirt the Hatch-Waxman generic-innovator compromise. In particular, generic companies will be able to rely upon innovator data to gain market entry since the active portion of the drug product is the same, while not being subject to the term extension.

The Federal Circuit has denied the en banc petition without further opinion.

[BiogenCAFCDecision] [Discussion by Kevin Noonan]
[Biogen en banc petition] [Biogen PhRMA Amicus]

= = = = =

Dragon Intellectual Property v. DISH Network LLC, 19-1283 (Fed. Cir. 2020).

This is a common setup: Patentee sues for infringement; Defendant collaterally attacks patent via IPR and claims are cancelled; District court then dismisses case as moot – void ab initio. The petition questions whether the defendant can be considered a “prevailing party” for attorney fees in such a situation. “When, if ever, can a litigant be deemed the ‘prevailing party’ in a case terminated as a result of mootness?”

In the case, the district court found no prevailing party in this situation. On appeal, the Federal Circuit rejected that approach – holding that the defendant could be considered a prevailing party because it rebuffed the claims.  The Federal Circuit has now denied the en banc petition — meaning that its rule sticks.

DragonIP en banc petition

BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381 (Supreme Court 2020)

This case is procedural and it focuses – once again – on the unique two-step, two-decision-maker divide by Congress for inter partes review (IPR) proceeding.

1. Step 1 – Institution: The USPTO Director decides whether to grant an IPR petition and “institute” proceedings.  This decision is “final and nonappealable.”
2. Step 2 – Trial: Once the IPR is instituted, the PTAB takes-charge and moves the case to a final decision.

As the USPTO planned-out how to actually implement the proceedings, the Director at the time (Kappos) recognized that he didn’t want to personally decide all of the IPR decisions and also recognized that the USPTO petitions office was (is) not operating at peak efficiency (except for the automatically granted petitions). So, the the rules delegated the Director’s authority for instituting IPRs to the PTAB judges.  This effectively rewrote the proceedings as follows:

1. Step 1: The USPTO Director PTAB decides whether to grant an IPR petition and “institute” proceedings.  This decision is “final and nonappealable.”
2. Step 2: Once the IPR is instituted the PTAB then takes-charge and moves the case to a final decision.

Delegation of institution authority results in some amount of confusion about whether a given decision by the PTAB is associated with a non-appealable institutional decision or instead an appealable final judgment in the case.

BioDelivery began at the PTAB with three IPR petitions against Aquestive’s US8765167. This was pre-SAS, and the USPTO partially instituted the proceedings.  On appeal, the Federal Circuit vacated the final written decision on SAS grounds — holding that the USPTO cannot partially institute an IPR.  The partial-institution clearly falls on the side of step-1 nonappealable institution decision, but the Supreme Court created a limited exception in this situation.  See SAS Institute v. Iancu, 138 S. Ct. 1348 (2018) as limited by Thryv, Inc. v. Click-to-Call Techns., LP, 140 S. Ct. 1367 (2020).  You can read that original 2018 BioDelivery opinion here BioDelivery Scis. Intl., Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205 (Fed. Cir. 2018).

In SAS, the Supreme Court held that at institution stage the Director must either (1) institute the proceeding as to all challenged claims or (2) deny the petition all together. Federal Circuit then extended SAS to also require that any final written decision address every ground for challenge (not just every claim). PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018).

On remand, the PTAB decided it was faced with the question of whether to (1) proceed with a final decision on all grounds raised or (2) drop the whole case. It chose the latter–terminating all three IPR petitions.

The patent challenger then appealed again and the Federal Circuit had to figure out whether the termination of proceedings was more like an institution decision or a final written decision.  The court decided the former and held that the termination was final and nonappealable.  BioDelivery Scis. Intl., Inc. v. Aquestive Therapeutics, Inc., 935 F.3d 1362 (Fed. Cir. 2019) (opinion by Judge Reyna, dissent by Judge Newman); en banc petition denied at BioDelivery Scis. Intl., Inc. v. Aquestive Therapeutics, Inc., 946 F.3d 1382 (Fed. Cir. 2020) (dissent by Judge Newman).

Now comes the petition for writ of certiorari — arguing that “termination” should not be considered an institution decision. Questions presented:

1. Does the Judiciary have authority to review a Patent Office decision refusing to implement its mandate and this Court’s precedent?

2. May a petitioner appeal a decision terminating an instituted IPR, despite the decision being mislabeled as a nonappealable decision?

[BioDelivery Petition]

Although the situation is muddled by the PTAB/Director delegation, the basic question is whether ‘termination’ of an [improperly] instituted IPR is a furtherance of the institution process given to the discretion of the Director or is it instead a role given by statute directly to the PTAB.  The statute does discuss termination following settlement, but not in the particular context of this case.

The situation also reminds me of the recent essay by Brian Fry and Maybell Romero, The Right to Unmarry: A Proposal,  https://ssrn.com/abstract=3566944.

= = = =

I have included Fig. 1 from the challenged patent above. The claims are directed to an “oral film” that melts-in-your-mouth for drug delivery.  The film includes an “anti-tacking agent” such as vegetable oil or wax.

By Jason Rantanen

The Surpeme Court seems to have ended its term for patent cases today – although the court has at least one more week of business before the summer break.

Petitions denied:

• Collabo (retroactive IPR violates due process & takings); Celgene (same); Enzo (Same)
• Hospira (limits on DOE); CJ CheilJedang (same)
• Comcast (mootness of ITC decision for expired patent)

Federal Circuit decision Vacated & Remanded: 

• Emerson Electric Co. (Thryv follow-on case)

Consideration of one fully briefed petition was postponed. Chrimar Systems. Chrimar has to do with the timing of judgment finality and issue preclusion. Particularly: How does claim cancellation via inter partes review impact prior court judgments upholding the the patent? (In this case, an appeal in the infringement litigation was still pending on other grounds).  A petition on related issues was recently filed in PhaZZer, and the court may be considering the issues together.

The last direct IP case for the court to decide this term is USPTO v. Booking.com. In that case, the USPTO wants to apply a bright-line-rule that adding “.com” to a generic word does not create a protect-able mark.  One reason I’m rooting for Booking.com is that they label me a Level 2 Genius! (Image below as proof).

by Dennis Crouch

The Black Lives Matter movement, ongoing protests, and statements of alliance have given me new hope that our society and its institutions are ready to take another step toward equal justice.

In 1857, the US Supreme Court decided Dred Scott v. Sandford, 60 U.S. (19 How.) 393 (1857) and affirmed what various state courts had previously decided — that under the law, free (non-enslaved) black and brown people were not United States Citizens.

[A]s long ago as 1822, the Court of Appeals of Kentucky decided that free negroes and mulattoes were not citizens within the meaning of the Constitution of the United States; and the correctness of this decision is recognized, and the same doctrine affirmed, in 1 Meigs’s Tenn. Reports, 331.

Dred Scott.  The following year, the US Patent Office with support of the US Attorney General took action to enforce the law in a memorandum entitled “Invention of a Slave.”  The memo begins with its clear statement: “A new and useful machine invented by a slave cannot be patented.” Under Dred Scott, a non-enslaved people of color also lacked the requisite citizenship.  Two recent articles walk through these events: Brian L. Frye, Invention of a Slave, 68 Syracuse L. Rev. 181, 194 (2018) (historical analysis); Kara W. Swanson, Race and Selective Legal Memory: Reflections on Invention of a Slave, 120 Columbia Law Review 1077 (2020) (reflection on historical and ongoing impact, inter alia).  The decision actually frustrated slave owners and during the civil war, the patent laws of the Confederate States did allow for patenting of inventions by enslaved peoples – although all ownership rights would flow to their owners.

In many ways, the courts fit its slavery cases within the doctrines of property law.  Enslaved people were identified as property.   A third new article in this vein is not intellectual property focused but walks through many ways that these old slavery cases remain good law today. Justin Simard, Citing Slavery, 72 Stan. L. Rev. 79 (2020).

Prof. Swanson reflected on her personal journey with Invention of a Slave — a journey that fits many of our own constructs:

As a former patent attorney turned legal scholar, I first encountered Invention of a Slave as an appropriately forgotten opinion. I saw no relevance to my former practice or to teaching patent law. I thought of it as a minor piece of patent lore, remaining firmly within my legal mindset of sorting precedents into “good” versus “bad” law. Nothing in my background as a white American, trained in science, law, and history in majority-white institutions, led me to see it differently.

Swanson.  Although not originally relevant to her, Swanson began to wonder why the the document remained relevant to the African American community. She explains – “Invention of a Slave might be unread by lawyers, but the African American community and its white allies were encouraged to take a look if they needed further proof to understand why so few African Americans had patented inventions before Reconstruction.”  Swanson.  Reconstruction era Constitutional Amendments and the Civil Rights Act of 1866 ended the the prohibition on patenting by brown and black Americans. Still, Professor Swanson’s essay walks through a small sample of ongoing roadblocks and hurdles for patentees, patent examiners, and lawyers.  Jim Crow of the patent system.

In my own state of Missouri, and at my home institution the University of Missouri School of Law, it took the US Supreme Court to order us to admit a qualified African American student, Lloyd Gaines. State of Missouri ex rel. Gaines v. Canada, 305 U.S. 337 (1938).  Even after that decision, the State determined that mixed race legal education would be so problematic that it opened a separate law school for non-white students. As for Lloyd Gaines, he disappeared in Chicago before starting law school. Here at the University of Missouri School of Law, we did not graduate an African American attorney until 1970.

Dropbox, Inc. v. Syncrhonoss Tecnologies, Inc. (Fed. Cir. 2020)

The appellate court here invalidates three Dropbox patents as ineligible (abstract ideas) and also confirms that the lawsuit was properly disposed on the pleadings. U.S. Patent Numbers 6,178,505, 6,058,399, and 7,567,541.

Looking at the ‘505 patent.  Claim 8 requires the following:

• An “apparatus” for providing an information resource to a user.  The apparatus has the following element:
• “an access checker” that (a) compares the “trust level” of the user identification mode, the network-path, and the encryption of the access request against (b) the sensitivity level of the resource being obtained.

The claims do not spell-out how this checking or comparison will take place, and the Federal Circuit notes that the specification also fails to delve into any “technological solution.” “Instead, the specification largely treats the ‘access filter’ as a black box.”  To be patent eligible:

The patent has to describe how to solve the problem in a manner that encompasses something more than the principle in the abstract. . . . And, that solution has to be evident from the claims.

Slip Op.

Specificity Required for an Inventive Concept: Regarding Alice Step 2, the patentee argued that its approach provided a more “economically secure way to transmit data.”  On appeal, the Federal Circuit found that advance – even if true – to be insufficient.  Rather, a claim includes an “inventive concept” at Step 2 when it “recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art.” Slip Op. (Quoting BASCOM).

On the Pleadings. In its (amended) complaint, Dropbox included five paragraphs alleging how the asserted patents provide an advancement over the prior art.  The problem, as noted in the prior paragraph, was that the allegations were not sufficiently specific.

The district court opined that some of these allegations found in the complaint should be disregarded as “attorney arguments . . . attempting to manufacture a factual question” insufficient to defeat a motion to dismiss. That holding is by the district court is questionable regarding complaints. On appeal, the Federal Circuit did not address the issue directly but instead held that the allegations were insufficient because the alleged innovative advance was not specifically tied to the claims themselves.

by Dennis Crouch

In re Seattle SpinCo, Inc. (Fed. Cir. 2020)

(a) Wapp Tech first sued UK software company Micro Focus plc (MF PLC) in E.D. Tex. for infringing several of its patent, including U.S. Patent No. 9,971,678 (system for testing app for mobile device). (b) MF PLC then had a two fold response.  First, through its US subsidiaries (MF LLC and SpinCo), the company filed a declaratory judgment (DJ) action in D.Del. Then, the MF PLC moved for dismissal in the Texas case for lack of personal jurisdiction — arguing that it lacked minimum contacts with Texas. The Texas court agreed with MF and granted the motion-to-dismiss.  However, the court permitted Wapp to amend its complaint to add the MF US subsidiaries (MF LLC and SpinCo).  Following that amendment, the Texas case continues, and the Delaware case is stayed pending outcome of the transfer arguments.  The Federal Circuit has now denied mandamus — thus it looks like the case will stay in E.D. Tex.

SpinCo then petitioned the Federal Circuit for mandamus, providing the following timeline chart:

Which Venue is the Right One: The petition for mandamus focuses on what it calls the “first-to-file rule” — arguing that a case should ordinarily remain in the court that first had proper jurisdiction over the case.  Although the Texas case was filed first, the Texas court didn’t have proper jurisdiction until 2019 – a year after the Delaware case was filed.  On appeal, the Federal Circuit found that the law was not so clear:

[Petitioner] cites no appellate court case that has held that first-filed status is determined by which court first secures personal jurisdiction over the parties.

Nor are we aware of any appellate case that has spoken of the first-filed rule in such terms.

Because there was no clear authority compelling action, the Federal Circuit denied mandamus.

Are We Talking in Circles: It is not surprising that there are not appellate decisions on this issue. A writ of mandamus is going to be required in order to get an appellate decision, and the court here holds that no mandamus will be granted without there first being an appellate decision.  This type of prudential venue question is not appealable after final judgment — Any harm caused by an error is already done and will be a moot point by the time final judgment is reached in the case.

PhaZZer v. Taser (Supreme Court 2020)  [Petition for writ of certiorari]

PhaZZer defaulted in the litigation and the district court awarded $7.8 million to Taser. On appeal, the Federal Circuit quickly issued a R.36 no-opinion affirmance in 2019.  Then, in February 2020 the USPTO finally cancelled the claims of the asserted patent (via reexamination). US7234262.

(more…)

I love the elvish doll designed by Dr. Dudley Joy Morton uncovered by Prof. Burstein.  Morton was an orthopedic surgeon who was also an amateur “paleoanthropologist.”  He was apparently the first to suggest that Australopithecus was a hominid.  Morton published several books about feet, but only one related to gnomes & elves: The Grampas’ Toyshop (1922), a book of Christmas poetry. “After lights out on Christmas Eve, Grampa Stabler, an old elf, takes Ned and Sister to Toyland to meet Santa Claus and see the inner workings of his toy-making workshop.”

by Dennis Crouch

In re Apple (Fed. Cir. 2020) [Apple Mandamus Petition]

On June 16, Apple petitioned the Federal Circuit for writ of mandamus on forum non-conveniens.  Uniloc has apparently sued Apple in 24 different lawsuits in E.D. Tex. and W.D. Tex. The vast majority of those cases have been transferred to N.D.Cal. (21 of them — transferred by Judges Gilstrap and Yeakel; 2 are stayed but likely to transfer or be dismissed later).  This lawsuit is the last active case.

The particular claims of this lawsuit were originally before Judge Yeakel (W.D.Austin), but Uniloc dismissed that case and refiled it before Judge Albright (W.D.Waco).  Judge Albright then refused to transfer the case.  Note here that Judge Albright is a former patent litigator and is apparently hoping to hear more patent cases, but Waco is not exactly a major industrial-innovation hub. (Aerial view of Waco shown below).

On June 17, the Federal Circuit acted immediately to call up on Uniloc to defend Judge Albright’s “order” (within the next seven days).

After briefing and conducting oral arguments on the transfer motion, Judge Albright immediately denied the motion at the conclusion of telephonic oral arguments on the issue.  At that point, the Court did not explain his reasoning, but indicated that a written order would be released soon.

From the transcript:

The Court would like to thank both sides for, really, one of the best arguments I’ve had in front of me. I’m blessed to have this job because the quality of the lawyers is so exceptional in every case I have. But I continue to find with patent cases, I guess, given the issues that are involved, the quality of lawyering just seems to get better and better as I go along.

The briefing was exceptional. The PowerPoints are very helpful. The Court is going to deny the motion to transfer, and we will get a written order out as soon as we can. The Markman is set for Friday afternoon at 1:30.

See Transcript of the Telephonic Motion Hearing Before the Honorable Alan D Albright, Dkt No. 61, May 12, 2020.

Apple Attempting to Shame the Court?: The oral order was May 12, so we are now about one month later later without an explanatory memorandum coming from the judge.  The mandamus here appears to be primarily an attempt to shame Judge Albright for his delay in providing an explanatory order during this time.  I wonder whether that complaint will fall on deaf ears before the Federal Circuit who regularly take six to nine months to write up their opinions.