Can we eliminate the anticipation doctrine and still have a fully-operational patent system with 99.99% identical outcomes? (Add additional comment below).
Jeff Berkowitz is a Miami real estate developer, lawyer, and now inventor. Berkowitz, along with architect Bernardo Fort Brescia and civil engineer Ronald Klemencic were recently awarded a design patent on their design for SkyRise Miami. D908917 (“The ornamental design for a building as shown and described.”). The building is apparently now under construction, although at a somewhat delayed pace.
The design patent took-up 3 1/2 years of prosecution. That is an unusually long time for a design patent. The examiner initially issued a restriction requirement because two sets of drawings had been submitted. Subsequently, the examiner identified inconsistencies in the various views that required repeated correct.
One additional trick in the case is that the tower was originally proposed back in 2013. The image below comes from around then and is certainly prior-art.
Ed. Note: Prof. Sapna Kumar has been working on international intellectual property law issues for decades. In fact, I believe we were students in the same international IP course at the University of Chicago way back when, along with Prof. Rantanen. I asked Prof. Kumar to provide some of her thoughts on how our international IP system is responding to the COVID-19 Pandemic. A draft of her recent on-point article is available online: Compulsory Licensing of Patents During the Pandemic.
By Sapna Kumar, Law Foundation Professor of Law at the University of Houston Law Center
Due to the global nature of the COVID-19 pandemic, vaccines and treatments are in short supply and prohibitively expensive for many countries. For this reason, some scholars and foreign governments have argued that all IP rights should be suspended for such drugs for the duration of the pandemic. Others have made the more modest recommendation that countries be permitted to use compulsory licensing under TRIPS Article 31 to produce generic versions of needed drugs, in exchange for paying “adequate remuneration in the circumstances of each case” to the patent holder. This raises the question of whether patent rights are creating an impediment to getting people needed drugs during the pandemic.
The United States has not been particularly consistent in its attitude towards non-permissive government use of patented inventions and compulsory licensing. In the 1950s and 60s, it imported patented drugs from generic manufacturers to cut costs. During the anthrax scare in the early 2000s, after Canada licensed Bayer’s patented Cipro drug to a generic manufacturer, the U.S. government threatened to do the same to help negotiate a better price. Since 2010, there have been at least three cases of patent holders seeking compensation for the government’s unauthorized use of their defense-related inventions.
Notwithstanding the U.S. government’s regular unauthorized use of patented inventions, it has been quick to punish countries that use compulsory licensing to provide life-saving drugs to its citizens. When South Africa was suffering from the worst of the AIDS epidemic and seeking to import generic antiretroviral drugs, the Clinton administration placed South Africa on the Special 301 Report Watch List. Subsequent Democratic and Republican administrations have punished other countries seeking to utilize Article 31 to provide drugs to people who would otherwise go without treatment.
This brings us back to the current shortage of COVID-19 vaccines and treatments. Whether IP rights are harming patients and whether compulsory licensing can help depends, at least in part, on the type of drug at issue. Consider Gilead’s small-molecule drug remdesivir, which can be used as a COVID-19 treatment and was scarce during 2020. The Bangladeshi company Beximco was able to independently recreate remdesivir in just a few months. It began selling its generic equivalent in May, more than a month before any of the Gilead-licensed facilities began production. Other Bangladeshi companies soon began producing the generic, leading to a growing surplus that allowed Bangladesh to export to at least 21 other countries. As a Least-Developed Nation, Bangladesh is exempt from various TRIPS requirements, which allowed it to recreate the patented drug without retaliation.
Consequently, in the Summer of 2020, remdesivir was not scarce in Bangladesh, nor was it scarce in low- and middle-income countries that were able to buy from Gilead-licensed generic manufacturers beginning in late June. Yet during the same time period, the United States was facing an acute shortage and had to ration the drug. This tells us that the U.S. shortage was likely based on patent rights—Gilead failed to maximize all available production facilities and failed to grant countries like the United States access to drugs produced under license in countries like India. Had the government issued a compulsory license, it would have lessened the shortage.
Compulsory licensing, however, is not a cure-all for drug shortages. Biologics, including vaccines, can be difficult to recreate without know-how that is protected by trade secrecy. Issuing a compulsory license won’t force companies to divulge the optimal manufacturing conditions for producing the drug. Moreover, compulsory licensing won’t increase a supply of a needed drug if there is a shortage of raw materials or manufacturing capability—as is currently the case with various COVID-19 vaccines.
Consequently, for the current pandemic, compulsory licenses or other mechanisms for circumventing patent rights are only going to be useful for countries that will not be receiving an adequate vaccine supply in the near future and that have access to needed raw materials and manufacturing facilities. For countries like the United States that have pre-purchase agreements and the means to buy more vaccines, a compulsory license may not be helpful in the near term, given the amount of time it would take to recreate the drug. But for at least some low- and middle-income countries, compulsory licensing could make it possible to save lives, especially if revaccination is periodically required.
Any move that is taken with regard to IP rights during pandemics must be done with an eye towards not threatening drug development for future pandemic responses. Suspending all IP rights for the duration of the pandemic will give pharmaceutical companies little incentive to develop new drugs when the next pandemic arises, absent a change in how we incentivize drug development. But the same is not true for compulsory licensing and government use of patents. There is scant empirical evidence that the practice harms innovation, given that adequate remuneration must be paid under TRIPS. This is particularly true for licenses issued by low-income countries, which spend little on drugs compared to high-income countries.
One lesson from the pandemic is clear: the United States needs to reassess its inconsistent approach towards government use and compulsory licensing of drugs and should reassess the lack of concessions that it asks for when it pours billions of dollars into private pharmaceutical companies. Current U.S. law does not make it easy enough for a willing third-party manufacturer to petition for a license to a scarce drug, as several prior drug shortages have illustrated. U.S. agencies also need to expressly address know-how in their contracts when providing funding for research. Federal funding recipients that develop a drug or treatment should be required to utilize out-licensing to generic manufacturers to keep pace with demand after an initial grace period, in exchange for fair compensation.
Finally, the United States needs to join the European Union in revisiting its ugly practice of punishing low- and middle-income countries that utilize compulsory licensing to provide life-saving drugs to its citizens. If South Africa or other countries are forced to utilize compulsory licensing to produce COVID-19 drugs, will we repeat the mistakes we made during the AIDS epidemic? Or will we recognize that a global pandemic represents the kind of extenuating circumstance that TRIPS Article 31 was meant to address?
This is a super interesting patent-as-property case. In 2018, Christy filed a class-action lawsuit asserting that the cancellation of its patent via Inter Partes Review was taking subject to the due process requirements of the Constitution as well as the Fifth Amendment requirement of “Just Compensation.”
… nor shall private property be taken for public use, without just compensation.
Christy also argued that the payment of USPTO maintenance fees, without refund, constitutes an “illegal exaction.” The Court of Federal Claims rejected Christy’s argument as did the Court of Appeals for the Federal Circuit.
Christy, Inc. v. United States, 141 Fed. Cl. 641 (Ct. Fed. Clm. 2019);
Christy, Inc. v. United States, 971 F.3d 1332 (Fed. Cir. 2020).
Now, Christy has the case up to the Supreme Court with the following two questions:
Petitioner Christy, Inc. obtained a patent after following all the steps and rules and paying all of the fees demanded of it. Upon trying to assert its property rights embodied in the patent against an accused infringer, the Government invalidated the patent during Inter Partes Review (“IPR”) initiated by the accused infringer because it had allegedly been mistakenly issued. Christy, Inc. received no compensation for its property nor return of the fees it paid. In that context, the Questions Presented are:
1) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), must compensation be paid under the Takings Clause?
2) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), should the issuance and maintenance fees that were demanded by the government by mistake be returned?
The Federal Circuit offered a very low quality opinion on the issues here. In particular, the Federal Circuit simply stated that it was bound by a prior decision holding that “cancellation of patent claims in [an] inter partes review cannot be a taking under the Fifth Amendment.” The prior decision is Golden v. U.S., 955 F.3d 981 (Fed. Cir. 2020) where Larry Golden represented himself pro se. In that decision, the court also did not explain its decision but rather simply cited to another prior case, Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019). In Celgene, the court likewise did not examine the issue of takings, but rather cited to its older decision of Joy Technologies, Inc. v. Manbeck, 959 F.2d 226 (Fed. Cir. 1992) and Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985). However, neither of these cases addressed the takings clause they focused instead on alleged violation of due process. So, as is often the case, the trail Federal Circuit self-citation leads nowhere.
I don’t expect the patentee to prevail in this case, but that will only be based upon the Supreme Court’s rejection of its own prior statements.
A patent for an invention is as much property as a patent for land. The right rests on the same foundation and is surrounded and protected by the same sanctions. Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1877).
Briefing in the case will continue through the spring.
New PatentlyO Patent Law Journal article by Thomas F. Cotter, Taft Stettinius & Hollister Professor of Law, University of Minnesota Law School, and Innovators Network Foundation Intellectual Property Fellow. Professor Cotter is also the author of the Comparative Patent Remedies blog.
Abstract: It has often been observed that, while patent rights are territorial in scope, commerce is global and, increasingly, interconnected. Indeed, with the advent of 5G and the Internet of Things (IoT), technical standards soon will enable not only devices such as smartphones and tablets, but also automobiles, medical devices, and even home appliances to receive and transmit data within and across national borders. To achieve these ends, firms participate in standard-setting organizations (SSOs) to hammer out the technical standards that enable communication and interoperability among devices. Moreover, because the implementation of these standards requires the use of many different, typically proprietary, technologies, SSOs generally encourage or require their members both to declare their ownership of patents that may be essential to the practice of the relevant standard, and to commit to licensing these standard-essential patents (SEPs) on fair, reasonable and nondiscriminatory (FRAND) terms. The FRAND commitments themselves, in turn, often are interpreted as binding contracts for the benefit of third parties (that is, for the benefit of implementers). In principle, these requirements work to ensure both that implementers are able to access essential technologies, and that owners are fairly compensated for their inventive contributions.
Two problems nevertheless can impede the smooth working of such a system. The first is that SSO rules typically do not define the term “FRAND,” for a variety of reasons. Disputes over the meaning of FRAND therefore are inevitable. The second is that, because patents are territorial, courts often have been reluctant to adjudicate foreign patent rights. This understanding of patent rights, however, might appear, to some observers at least, to collide with commercial realities, when parties are unable to reach agreement and opt for adjudication by national courts. Current responses to these problems are likely to prove unsatisfactory for both owners and implementers; a comprehensive solution nonetheless remains, for now, elusive.
Read: Thomas F. Cotter, Is Global FRAND Litigation Spinning Out of Control, 2021 PatentlyO Law Journal 1 (2021) (Cotter.2021.GlobalFRANDLitigation)
Prior Patently-O Patent L.J. Articles:
Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20 (2020) (Chien.2020.ImpactOfAlice)
Paul R. Michel and John T. Battaglia, eBay, the Right to Exclude, and the Two Classes of Patent Owners, 2020 Patently-O Law Journal 11 (2020) (Michel.2020.RightToExclude)
Thomas F. Cotter, Two Errors in the Ninth Circuit’s Qualcomm Opinion, 2020 Patently-O Patent Law Journal 1 (2020). (Cotter.2020.TwoErrors.pdf)
Jasper L. Tran & J. Sean Benevento, Alice at Five, 2019 PatentlyO L.J. 25 (2019) (Tran.2019.AliceatFive.pdf)
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)
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)
Normally, a notice of appeal filed in federal appellate court does not include details on what particular issues are being appealed. That comes later in the appellant’s opening brief.
One exception is found in R. 44 of the Federal Rules of Appellate Procedure (FRAP). R. 44 requires notice of any Constitutional Challenge of a Federal or State statute. This must be provided “immediately upon the filing of the record or as soon as the question is raised in the court of appeals.” That constitutional challenge notice is then sent over to the US Attorney General (or respective state counterpart) who may want to intervene to defend the statute. Depending upon a few factors, the constitutional challenge notice may be due prior to the opening brief. This type of certification was provided in all the Arthrex-style challenges of PTAB appointments.
A second exception that is patent-law-specific is found in within the set of rules and regulations promulgated by the USPTO. 37 C.F.R. 90.2(a)(3)(ii). The rules require that the notice of appeal of any IPR, CBM, or Post-Grant Review “provide sufficient information to allow the Director to determine whether to exercise the right to intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served as provided in § 42.6(e) of this title.” An example of this type of notice can be seen in the following notice of appeal. [ExampleNoticetoPTO].
My thought: It seems to me that the USPTO does not possess authority to require an applicant include certain elements within its notice of appeal. The contents of the notice of appeal are governed by statutory law along with the rules of appellate procedure and the Federal Circuit’s own local rules of procedure. None of those authorities require or suggest that the notice-of-appeal include the substantive elements required by the USPTO. The US Courts are generally in control of determining their own procedures, and the PTO has no authority to amend those procedures for its own convenience.
Does this matter? In general, this is a rather small point, and the PTO’s approach is a practical and efficient solution. The key issues though are timing and strategy. The PTO rule forces the appellant to figure out its appellate position 30-days early and also to disclose that position to the opposing party 30-days early.
Editor’s Note: Avery Welker is a 1L at Mizzou and likely a future patent attorney. He is starting a new series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch
By Avery Welker
“That doesn’t look too bad,” I thought to myself while scanning through my Civil Procedure reading assignment over Rule 56, Summary Judgment. Fed R. Civ. P. 56 (2020). Then I had the pleasure of reading Celotex Corp. v. Catrett and discovered that if you don’t pay attention to which party bears the burden of proof, you could be in trouble. Celotex Corp. v. Catrett, 477 U.S. 317 (1986). This is where Exigent Technology, Inc. (Exigent) found themselves in 2006 in the process of pursuing an infringement action against Atrana Solutions, Inc. (Atrana). Exigent Tech., Inc. v. Atrana Sols., Inc., 442 F.3d 1301 (Fed. Cir. 2006).
Exigent owned U.S. Patent No. 6,651,885, a “multi-function transaction processing system,” which includes a transaction processing system with the ability to attach a payment to a user account, among other functions, and alleged infringement literally or through the doctrine of equivalents. U.S. Patent No. 6,651,885 (filed Jun. 8, 2000; issued Nov. 25, 2003); Exigent Tech., Inc., 442 F.3d at 1303-04. The general idea was to expand the traditional debit/credit card transactions by issuing “authorization codes” to purchasers on a card, which could have other purchases attributed and stored on it. U.S. Patent No. 6,651,885. The system was designed to rid merchants of the cost of selling multiple cards that only contained singular access codes, like a pre-paid minutes card for calling long-distance, and put them all on one larger card assembly (shown below). Id. The above illustration shows a familiar looking terminal (20) but includes a large card printer (where the purchased information is stored) (37). Id. at fig.1.
The below figure is where the magic happens: The entire “card assembly,” (50) is a large sheet that contains a detachable physical card (e.g., for pre-paid phone minutes) (52), any merchant promotions, or other purchases (e.g., (55), (56)). Id. at fig.2. All in the name of efficiency.
In the lawsuit, the defendant Atrana moved for summary judgment, arguing that the patentee Exigent would not be able to prove infringement. Exigent Tech., Inc., 442 F.3d at 1303. The trial court agreed and granted summary judgment stating that there was no evidence on the record that Atrana infringed the patent. Id. at 1305. Upon a motion from Atrana, the trial court amended the summary judgment order to clarify that Exigent had the burden of proving infringement on every element of the claims. Id. at 1305. Exigent appealed, claiming that Atrana’s summary judgment motion of non-infringement was not sufficiently supported by the evidence. Id. at 1305-06.
Enter Celotex. If summary judgment is the treasure you seek, Celotex is your treasure map. It is the Supreme Court’s definitive guide to supporting a summary judgment motion when the non-moving party holds the burden of proving its case at trial. Celotex arose out of a wrongful-death complaint brought by the respondent, Catrett, who alleged that her husband’s exposure to asbestos-containing products (including those manufactured by Celotex) caused his death. Celotex Corp., 477 U.S. 317 at 319.
Celotex moved for summary judgment asserting that Catrett produced no evidence that any Celotex product was the proximate cause of her husband’s death, and that Catrett could not identify any witnesses that could testify to her husband’s exposure to Celotex’s asbestos-containing products, thus there was no genuine issue of material fact. Id. at 319-320. The trial court granted the motion, but the D.C. Circuit reversed, holding that since Celotex did not try to produce evidence in support of their motion (i.e., prove that Catrett’s husband was not exposed to Celotex’s products), they were not entitled to summary judgment. Id. at 321-22. The Supreme Court then reversed again, holding that summary judgment was proper in that instance. Id. at 328. The Court reasoned that where the nonmoving party has the burden of proof of a dispositive issue at trial, the moving party need only point out to the trial court that there is no evidence supporting the nonmoving party’s case, which discharges the moving party’s usual burden to show an absence of genuine dispute of material fact. Id. at 325.
The Court noted the spirit of Rule 56 in the holding of Celotex:
Rule 56 must be construed with due regard not only for the rights of persons asserting claims and defenses that are adequately based in fact to have those claims and defenses tried to a jury, but also for the rights of persons opposing such claims and defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and defenses have no factual basis.
Id. at 327.
Celotex turned out to be bad news for Exigent, who argued in the Federal Circuit that Atrana did not properly support their summary judgment motion with admissible evidence showing non-infringement. Exigent Tech., Inc., 442 F.3d at 1308. This was in reference to an arguably inadmissible declaration from Atrana’s CEO. Id. The Federal Circuit noted that it ultimately did not matter whether the declaration was admissible as evidence because Atrana, the moving party, successfully discharged their burden of proof on the dispositive issue of non-infringement, by pointing out that Exigent had no evidence of infringement. Id. at 1309. The Federal Circuit held that Exigent did not advance any argument or bring any evidence of infringement, and therefore summary judgment was proper. Id.
Summary judgment is a remedy that arguably helps the courts “secure the just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1 (2020). The irony is not lost on me that a remedy that can speed up an action resulted in further litigation, stringing out the action for both parties.
In its October 2020 decision in EcoServices v. Certified Aviation, the Federal Circuit issued a somewhat muddled nonprecedential opinion. The en banc petition has now been briefed and awaiting action from the court.
The patents at issue cover methods and systems for washing a jet engine. A jury sided with the patentee and the district court awarded $2 million in back-damages, and $400 per infringing wash in ongoing royalties.
[Federal Circuit Decision] On appeal, the Federal Circuit affirmed on validity — rejecting the defendant’s eligibility and obviousness argument — as well as infringement. The appellate court did find problems with the ongoing royalty (as well as the award of supplemental damages for ongoing infringement during the course of the lawsuit). However, the appellate found problem’s with the ongoing royalty because one of the two-infringed patents has now expired. “Here, the record does not support that a later jury would have calculated a royalty of $400 per wash as a royalty award for infringement of the ’262 patent alone.” The majority opinion was penned by Judge Schall and joined by Judge O’Malley. Judge Dyk wrote in dissent — arguing that the claims should be deemed invalid as directed toward an unpatentable abstract idea.
The defendant subsequently petitioned for en banc rehearing on eligibility grounds, asking “whether the bare idea of automating a known, manual process using a generic machine is a patent-eligible invention.” Here is claim 1 of Certified Aviation’s US9162262.
1. A system for washing turbine engines comprising:
a washing unit for providing a washing liquid to the turbine engines;
an information detector configured to gather information related to engine type; and
a control unit configured to accept the information related to engine type from the information detector and to determine a washing program to be used as a function of the information relating to engine type from a set of preprogrammed washing programs, and further configured to regulate the washing unit according to washing parameters associated with the washing program used.
Reading this claim, you can see that it includes three elements: a “washing unit” that delivers soapy-water to the turbine; an “information detector” such as an RFID or Bar Code reader; and a “control unit.” The information detector detects the engine type and then the control unit runs a particular “washing program.”
The improvement here is the automation of the of the washing-process by automatically detecting the engine-type and then selecting parameters depending upon the engine type. But, the particular detection scheme was a very well known approach (RFID or Bar Codes); and the particular wash parameters for any given turbine are not specified in the patent document. The patent explains that this type of activity was already being done in the field — but was using humans to identify/select rather than an automaton. This had the added benefit of “completely eliminating subjectivity” and thus avoiding user-error in the wash approach. (Quoting the inventor’s testimony at trial). Before this invention, the “human operator would consult a card for the type of engine to be washed, and [manually] enter the established flow parameters for the engine type.” Quoting Judge Dyk’s dissent.
In his dissent, Judge Dyk cites prior precedent to the point that “mere automation of manual processes using generic computer components” is an abstract idea, even if the automation provides substantial advantages. The majority disagreed and found instead that the claims “are directed to an improved system for washing jet engines and not to an abstract idea.”
In other words, the claims … do not recite the mere desired result of automated jet engine washing, but rather, recite a specific solution for accomplishing that goal.
Slip Op. The court released its decision as non-precedential. That means that its outcome will have little impact on the overall jurisprudence of this area, it also means that the decision was not (likely) distributed to the other Federal Circuit judges prior to release.
The en banc petition largely follows Judge Dyk’s dissent, but offers an interesting bit of analysis regarding the point-of-novelty link to eligibility.
This Court has held that the eligibility inquiry begins by “understand[ing] the problem facing the inventor and, ultimately, what the patent describes as the invention.” ChargePoint. This point-of-novelty inquiry guards against drafting efforts to patent abstract ideas by hiding them among prior art or otherwise insignificant elements.
Here, the defendant argues is that the point of novelty is the automation, and automation is an abstract idea. The Federal Circuit asked for a response from the patentee, and that has now been filed as well.
PhRMA has filed an interesting brief arguing that proper-venue in ANDA patent-infringement cases under §271(e)(2) should be determined under the general venue statute (28 U.S.C. §1391) rather than the patent-specific venue statute (28 U.S.C. §1400(b)).
Section 1400(b) is an exception to the general venue statute, 28 U.S.C. §1391. It should be construed narrowly and extended to §271(e)(2) actions only if doing so is consistent with the text and purpose of both statutes. But the text of §1400(b) cannot be reconciled with §271(e)(2); the enacting Congress in 1897 did not contemplate hypothetical acts of infringement; and extending §1400(b) to §271(e)(2) actions would conflict with the Hatch-Waxman Act’s purpose. Maxims of statutory interpretation therefore indicate that the general venue statute should govern §271(e)(2) actions.
PhRMA Brief on Venue. Section 1400(b) offers much narrower venue choices than that available under §1391, and PhRMA members are arguing for a broader forum selection choices for suing generic oncomers. Valeant Pharmaceuticals v. Mylan Pharmaceuticals. In its original decision, the Federal Circuit applied the narrow venue of 1400(b), but an en banc petition is pending before the court.
The new petition for certiorari in Samaranayake v. Iancu (Supreme Court 2021) has little chance of being granted, but it does offer some insight on USPTO procedure. I mentioned 35 U.S.C. § 144 in a prior post this week. This case also focuses on Section 144 and asks whether the Federal Circuit exceeded its statutory jurisdiction by creating its own record rather than relying solely on the record before the USPTO. The statute:
[T]he Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. . . .
35 U.S.C. § 144. The question presented to the Supreme Court stems directly from the statute:
Whether, in creating the required evidentiary record de novo rather than merely reviewing the agency Record below, … the Federal Circuit exceeded its statutory jurisdiction under 35 U.S.C. § 144.
Haritha Samaranayake is the first listed inventor on U.S. Patent Application No. 13/877,246 along with several other Finland-based inventors who were apparently working under Prof. Seppo Ylä-Herttuala. The application claims a 2011 UKIPO priority filing date and is now owned by a Gliotherapy Limited. As the company-name suggests, the patent here claims a method for treating malignant gliomas.
1. A method of treating cancer in a human patient, said method comprising:
diagnosing a cancer in a human patient,
administering to said human patient a viral gene therapy vector having a transgene, and
within about 30 days of said administration of said viral gene therapy vector, administering to said human patient a cytotoxic agent other than gancylovir.
The basic procedural setup in the case:
Examiner twice rejected claims as obvious and Applicant appealed to PTAB.
In her Answering Brief, Examiner conceded that the Evidence of Record did not support the rejection, but offered a new rejection based upon new prior art (not previously of record in the case). Of note, the Examiner provided a citation to the cited non-patent-literature, but did not actually provide a copy of the references in the record.
The PTAB agreed with the examiner and found the claims obvious.
On appeal to the Federal Circuit, and now before the Supreme Court, the Applicant argued/argues that those references were never made of-record, and thus cannot serve as the basis for Affirmance on Appeal. For its part, the Federal Circuit affirmed the rejection without opinion (R.36); and denied the en banc rehearing petition without opinion.
This case comes down to the basic question of what counts as the USPTO’s “record” when handling an appeal. Although we lack a decision from the Federal Circuit, the USPTO Solicitor’s Office makes the simple argument that prior art becomes “of record” if the full scientific citation is provided by the examiner and the reference is reasonably (or actually) available to the applicant. Likewise, the PTAB concluded in its rehearing decision that the reference “was made of record in the Examiner’s Answer because the Examiner provided a full citation to it.”
Not mentioned here, the patentee did not properly raise the full record issue until after-the-fact and also clearly had the references in-hand when drafting its reply brief.
I’ll mention here that the new Second Gentleman Doug Emhoff is an litigator, and has handled a number of intellectual property cases. These were primarily entertainment related copyright and trademark cases, although he has worked on a few patent cases as well.
Examples:
Jukin Media, Inc. v. Viumbe, LLC et al. (2017). In this case, Emhoff represented the copyright holder Jukin Media. Jukin media apparently finds popular user-generated content online and then helps the creators license it for money.
GMYL, L.P. v. James Martin et al. (2016). Emhoff represented Francis Ford Coppola’s company GMYL in a TM case regarding the COPPOLA mark. (Disclosure, I did some work for these folks while in practice as well).
The Estate of James J Marshall v. Thierry Guetta et al (2012). This is a pretty interesting copyright case. Marshall has a number of iconic photographs of famous musicians. (Coltrane; Sonny Rollins; Thelonious Monk; etc.) Guetta stylized those photos and started making money from them. Emhoff represented Guetta. The parties settled with an unspecified payment from Guetta.
Note, I’m calling these folks “ACTING ____” because it is simpler and makes sense. BUT, the “acting” title is a term of art defined within the US Code. To avoid some of the legal requirements associated with being an “acting director,” the temporary leadership is using the longer title of someone “Performing the functions and duties of ____”
Acting Director – Drew Hirshfeld. Hirshfeld started at the PTO back in 1994 as a patent examiner and rose through the ranks. Has held a number of leadership positions within the Office: Director of TC2100 (computer architecture and software), Deputy Commissioner for Patent Examination Policy; Chief of Staff to Director Kapps; and Commissioner of Patents. For over 100 years, the position of Commissioner of Patents was the head of the Patent Office. In 1999, the PTO Director / Deputy Director positions were created.
Acting Deputy Director – Coke Morgan Stewart. Stewart’s permanent role is Senior Counsel to the PTO Director and was previously in the PTO Solicitor’s office where she handled a number of Federal Circuit appeals. She was previously a patent litigator at Kaye Scholer.
The Federal Circuit and Supreme Court are both closed today. Although inauguration day is not a nationwide federal holiday, it is a holiday for non-essential federal employees who work in the Washington DC Area.
Congratulations to President Biden! We’ve got some work to do.
This morning I was looking for inauguration related patents and stumbled across Facebook’s recently issued US10855640, which essentially claims combining a live video with parallel live social media responses. This patent is part of a family claiming a 2009 priority date, and at least three other patents have also issued.
The image from the patent is really fascinating. It shows a line-drawing of the Washington Mall and reports on the inauguration of Barack Obama. The drawing also shows several reactions. The names of the people here are not made-up. Kevin Werbach is a popular Business-Tech professor at Wharton; Ryan Merket is a start-up guy; as is Tariq Krim, Monty Metzger, and Chris Sacca; Peter Rothman is a computational guru.
It turns out that at least some of folks didn’t know that FB had used their names or posts. I heard from Prof. Werbach who indicated he did actually post “Obama coming out now.” But, that post was at 11:43 a.m. instead of 11:47 AND, it was on TWITTER, not Facebook. I’m wondering whether there are any rights of publicity or false-light issues associated with using someone’s likeness in your patent application.
The original drawings filed with the PTO are actually images of these posts, and the line-drawing was created later.
In any event, it is hard to believe that this patent issued since claim 1 just seems obvious AND likely fails the Alice test.
More on twitter:
Facebook recently obtained a patent on participating in the presidential inauguration via social media. US10855640 issued December 2020 "Interface for sharing posts about a live online event among users of a social networking system."https://t.co/CsyaIqq5BLpic.twitter.com/rKkymwfash
Hey @Facebook, and I sincerely mean this from the bottom of my heart, you can go fuck each of your shameful selves for using my likeness to obtain a patent for your hateful civil war profiteering dogshit. https://t.co/IdOaud5Ls5
As expected and is usual, Andrei Iancu has stepped-down from his post as Undersecretary of Commerce and USPTO Director a few hours before the conclusion of Donald Trump’s four years as president. Iancu will be remembered as being professional and engaged with the IP community throughout his three-year leadership. Every day Iancu spoke about the storied history of our patent system and its future potential. Iancu has been seen as more “pro-patentee” than his predecessor Michelle Lee, especially in ways that he transformed elements of the Patent Trial & Appeal Board (PTAB).
Iancu wrote the following letter to his PTO Colleagues announcing his resignation:
Dear colleagues,
It is with great pride and respect that I bid you farewell as Director of this remarkable agency, the nation’s epicenter of intellectual property policy and the guardian of America’s innovation economy. Thank you for the privilege to serve with you these past three years.
We have accomplished much together, and all of it was made possible by your exemplary professionalism, hard work, and dedication to public service. Everywhere I went during my tenure as Director, I received accolades about our agency and its employees. The USPTO has a unique culture of excellence that is second to none. And it is all because of you.
Together, we have balanced and strengthened America’s IP system, clarified some of its thorniest issues, and increased the reliability and predictability of the patents and trademarks we issue. Together, we have overcome challenges and navigated a government shutdown due to a lapse in funding, as well as the ongoing pandemic, without interruptions to our services. And through the National Council for Expanding American Innovation and other efforts, together we have laid the groundwork for a renaissance in American innovation, and for an IP ecosystem in which all Americans can partake irrespective of their geographic location or demographic status.
Born of the Constitution and steeped in history, America’s IP system is a crown jewel, a gold standard. You are its guardians. What you do here enables the greatest minds in the world to create and bring to market the tools that improve the human condition. It is hard to imagine a more consequential mission.
One of my favorite books is “The Boys in the Boat,” the true Depression-era story of nine hard-working young Americans who overcame all the odds to win the gold medal in rowing at the 1936 Summer Olympics in Berlin. In order to succeed at the things that matter, their boat maker told them they had to give themselves up to it completely: “When you were done and walked away from the boat,” he said, “you had to feel that you had left a piece of yourself behind in it forever; a bit of your heart.”
I’m leaving a bit of my heart here, at the USPTO, forever.
With warm regards,
Andrei Iancu
Although I have not heard, I expect that Laura Peter (Deputy Director) will also be resigning by Noon on January 20. Under ordinary succession process, Drew Hirshfeld, Commissioner for Patents, would take charge as the acting director until a successor is nominated by the new President and confirmed by the Senate. Hirshfeld has continually shown himself to be a solid manager with deep understanding of the patent law issues — something needed for the 10,000+ person office.
A few years ago, I wrote an article arguing that 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion when it decides cases on appeal from the USPTO.
The … Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.
35 U.S.C. § 144. [My Article] The provision was amended in 1984 to particularly require a “mandate and opinion.” However, prior to that time the Federal Circuit and its predecessor always wrote opinions associated with every judgment. Although there is no legislative history, I believe that the fact of an opinion was assumed and simply codified into law.
In this case, Waterblasting, LLC appealed an adverse IPR decision cancelling claims 1-4 and 10 of its US7255116 (Stripe removal system). On appeal, Waterblasting argued that the PTAB had erred in its legal analysis and also made factual conclusions that were not supported by substantial evidence.
The Federal Circuit sided with the PTO and affirmed. However, rather than explaining its decision, the Federal Circuit simply issued its judgment without opinion as permitted under Federal Circuit Local Rule 36.
In its newly filed en banc petition, Waterblasting argues that no-opinion judgments are improper in this situation:
§ 144 should be interpreted consistent with its clear language and the panel’s issuance of an affirmance without opinion is inconsistent with the law.
Note here that following my article, more than a dozen parties have asked the Federal Circuit to consider this issue. So far, the court gone meta — remaining silent about its choice to remain silent.
