GWU Law has a great program designed to help IP scholars transition into academia:

Frank H. Marks Intellectual Property Fellowship

by Dennis Crouch

Rain Computing has filed an interesting petition to the Supreme Court focusing on indefiniteness and means-plus-function claims. Rain Computing, Inc. v. Samsung Electronics America, Inc., No. 21-170 (Supreme Court 2021).   Rain’s asserted claims require a “user identification module configured to control access of … software application packages.”  The Federal Circuit interpreted “module” as a non-structural nonce word.  As such, the court interpreted the module element a means-plus-function limitation under 35 U.S.C. § 112(f).  The problem though was that the specification did not disclose any corresponding structure “clearly linked” with the claimed function.  As such, the Federal Circuit found the claims invalid as indefinite.

The first question in the petition focuses on the courts trigger-happy approach to invalidating means claims and the interpretive difference between a claim limitation and the claim as a whole.  Although courts often construe individual claim limitations, indefiniteness is generally determined by considering the claim as a whole in light of the specification and the prosecution history and asking whether the claim informs “with reasonable certainty those skilled in the art about the scope of the claim.”  Nautilus.  The idea here is that the Federal Circuit should have asked the broader question — would someone of skill in the art have reasonable certainty as to the claim scope?  Instead, the court did a shortcut and effectively held that the  element-by-element corresponding-structure is a requirement of patentability if means language is used. The petitions also notes the construction provision of 112(f) requiring that “such claim shall be construed to cover the corresponding structure …”  On its face, the provision focuses on construction of the whole claim, not just the means-element.

The second question is directed toward the Federal Circuit’s conclusion that the specification disclosed only a ‘general purpose computer’ when the district court held otherwise.  The petition suggests that change-of-course would require clear-and-convincing evidence before the claim can be invalidated.  The underlying assumption of this argument is that some aspect of interpreting the specification is a question of fact (rather than a question of law).

Whether a patent claim may be invalidated for indefiniteness only if, under 35 U.S.C. § 112, para. 2 (now subsection 112(b)) as construed by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014), the whole claim, “read in light of the specification delineating the patent, and the prosecution history, fail[s] to inform, with reasonable certainty those skilled in the art about the scope of the claim” and 35 U.S.C. § 112(f) (previously 112 para. 6) affects only coverage of a combination claim of which an element is expressed as allowed by the subsection?

Whether the United States Court of Appeals for the Federal Circuit panel in this case erred by invalidating a patent as indefinite without mentioning 35 U.S.C. § 112, para. 2 (now subsection 112(b)) and applying the Nautilus test and by substituting, without clear and convincing evidence, its conclusion of a “general purpose computer” for the district court’s finding of no “general computer”?

[Petition for Writ of Certiorari]

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I’ll note here that Rain Computing is represented by the Hsuanyeh Law Group, founded by Hsuanyeh Chang.  Dr. Chang is also the listed inventor of the patent here and is CEO of the petitioner Rain Computing.

by Dennis Crouch

Mondis Tech. LTD v. LG Electronics (Fed. Cir. 2021)

This is an appellate procedure case focused on the timing of the notice of appeal.  The statute creates a hard 30-day deadline for filing a Notice of Appeal (NOA).  28 U.S.C. § 2107(a).  One difficulty though is that the statutory scheme muddies the water in terms of when to start counting.  The courts have previously figured out how it works for ordinary appeals — you get 30-days from the final judgment. But, there is a special statute that allows interlocutory appeals in patent infringement lawsuits that creates a right to appeal in cases that are “final except for an accounting.”  28 U.S.C. § 1292(c).  With that provision, it would seem that the notice of appeal should be filed within 30 days of the court action that triggers the final-except-for-an-accounting status. But, there is another level of complication that comes from the NOA tolling provision found in Fed. R. App. Proc. 4(a)(4).  Rule 4(a)(4) focuses on post-verdict situation where a party files several motions for Judgment as a Matter of Law (JMOL) or New Trial.  In that situation, the Rule states that “the time to file an appeal runs … from the entry of the order disposing of the last such remaining motion.”  Rule 4(a) then goes on to particularly state that the notice of appeal is due 30 days after the last JMOL/NewTrial motion is decided.

The holding here: The court read an exception into Rule 4(a) — finding that it does not apply to § 1292(c) interlocutory appeals. As such, the appeal here was untimely and therefore dismissed for lack of jurisdiction.

Lets back up: At the trial court, a jury with the patentee and concluded that LG was willfully infringing the Mondis/Hitachi U.S. Patent No. 7,475,180.  Post-verdict, the district court denied LG’s motions for JMOL on infringement and validity and then later granted a new trial on damages and willfulness.

Normally, a new trial delays appeal because the case is not yet final — and so no immediate appeal under the Final Judgment Rule. 28 U.S.C. § 1291.  The statute also provides for interlocutory appeal in this particular situation — patent infringement lawsuits that are “final except for an accounting.”  28 U.S.C. § 1292(c).  In Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, (Fed. Cir. 2013), an en banc Federal Circuit held that “an ‘accounting’ in the context of § 1292(c)(2) includes the determination of damages.”

So, LG had a right to appeal once the renewed JMOL motions on liability were denied.  But, LG did not appeal until months later, after the new trial on damages was ordered.  As mentioned above, FRAP 4 typically tolls appeals until all post-verdict motions are decided. Here, the court held that the rule does not fully apply in the  1292(c) interlocutory appeal situation — but rather only tolls the timing of the interlocutory appeal until all liability-related motions are decided.

When only motions unrelated to the judgment being appealed remain, the judgment is final except for an accounting and the time to file an interlocutory appeal begins.

Because FRAP 4(a)(4) does not toll the interlocutory appeal period for outstanding motions unrelated to the interlocutory judgment, the damages motions that remained outstanding after the September Order did not toll the time frame for LG to file its notice of appeal on the liability portion of this case. . . .  Because LG did not file its notice of appeal  within thirty days of the issuance of the September Order, its notice of interlocutory appeal was untimely.

Slip Op.  The court notes that this interlocutory appeal process is optional.  LG will still be able to appeal all of the issues once the damages/willfulness trial is completed.

by Dennis Crouch

This decision shows how potential defendants can easily use their corporate structure to shelter a parent company from having to defend against patent infringement lawsuits.

Andra Group v. Victoria’s Secret Stores (Fed. Cir. Aug 3, 2021)

Andra sued Victoria’s Secret for infringing its US Pat. 8,078,498 covering a lingerie virtual showroom.  Actually, Andra sued L Brands Inc (LBI), the parent company, as well as Victoria Secret Stores LLC (Stores) which operates the physical retail stores; Victoria’s Secret Direct Brand Management, LLC (Direct), which manages the internet activities (including in-store direct online and returns from the stores); and Victoria’s Secret Stores Brand Management, Inc. (Brand)  which creates the apparel products.  At the time of the lawsuit*, these companies were all directly linked together in a tight corporate subsidiary structure under LBI.  Still, each defendant gets to raise the defense of improper venue.

Under the statute for patent litigation venue, venue is proper in a judicial district if either (1) the defendant is incorporated in the district or (2) the defendant infringes within the district and also has a “regular and established places of business” in the district.  28 U.S.C. 1400(b).  Here, none of the defendants are incorporated in E.D. Texas and only the VS Stores has a regular-and-established-place-of-business in the district.  As such, the district court dismissed the case against all of the non-stores defendants and, at that point, Andra also voluntarily dismissed its case against VS Stores.

On appeal, the Federal Circuit affirmed — particularly holding that the VS Stores do not serve as places of business for the non-store defendants.  The court concluded that Andra had not proven that LBI sufficiently controls VS Stores despite public filings by LBI that dictate various “store operations, hiring, and conduct” and that the stores are acknowledged representatives of Brand and Direct (returns go the roughte website …).  The court found that LBI’s public filings were statements about the various brands, but did not necessarily convey control over its wholly owned subsidiaries. The decision goes on, but basically serves as a total apologist for

* On August 3, 2021, LBI spun-off all of the Victoria Secret companies into a separate company VS&Co (VSCO) and LBI has changed its name to Bath & Body Works Inc. (BBWI).  Its totally unclear how this change would impact the lawsuit.  Also, this is confusing because of VSCO.

by Dennis Crouch

Utility Doctrine does not get much use in patent prosecution.  Still, examiners do reject claims on utility grounds. The following are three recent PTAB decisions that all reverse examiner utility rejections.  In Horne, focus is whether a partially-built tool has any utility; In Zauderer, the question is whether a theoretical rocket ship design has any credible utility; and in Grajcar the question focuses on whether data was provided to support a sex-selection method.

Ex parte Horne, APPEAL 2020-004000, 2021 WL 2788193 (2021)

Applicant claimed a saw blade blank without cutting teeth and the examiner rejected the claims as lacking utility since it was just a work-in-process. On appeal, the PTAB reversed — finding that creation of the blank is a useful step in the blade manufacture process. “Contrary to the Examiner’s suggestion, the utility requirement of § 101 does not require an invention to be a ‘final product’ made to sell to end users.”

Ex parte Zauderer, APPEAL 2020-003919, 2021 WL 2495190 (2021)

Zauderer’s application claims a method rocket launching using a linear Faraday magnetohydrodynamic (MHD) generator attached to an MHD linear accelerator. The examiner rejected the claim as lacking credible and specific utility. In particular, the examiner concluded that the claims were directed toward an “inherently unbelievable undertaking [based upon] implausible scientific principles.” On appeal, the PTAB reversed — finding that the invention sufficiently useful.  In particular, the examiner had failed to particularly address the credibility of the scientific principles relied upon in the application.  Although the invention has not been reduced to practice (and thus was purely theoretical), the PTAB found “no prohibition against claiming an invention based upon a scientific theory, as long as the invention is useful to the public as disclosed.”  The application has now been allowed and should issue shortly (assuming Zauderer pays the fee). [25570_13584574_07-23-2021_NOA]

Ex Parte Grajcar, APPEAL 2020-005035, 2021 WL 1499408 (2021)

Grajcar’s application claims a method of sex-selection of tilapia using 440-460 nm wavelength light (this is blue/violet).  The examiner rejected the inventio as lacking utility since the patentee provided no experimental data proving that it actually works.  On appeal, the PTAB reversed — finding that the specification did include a sample of 12 larvae treated with 450 nm light and resulted in 9 males, 1 intersex, and 2 female.  The particular claim is directed to “selecting sex”, which is seemingly more general than selecting males in particular.  In the appeal the PTAB interpreted the claim as selecting males, thus resolving the dispute.

by Dennis Crouch

A potentially important product design trademark case is pending before the U.S. Supreme Court involving those chocolate covered bready-sticks. Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., Docket No. 20-1817 (Supreme Court 2021). 

Glico’s Pocky product has been sold since 1966 and are apparently popular. Lotte’s Pepero’s are a knock-off version. Glico sued for trademark infringement, asserting Glico’s trademark rights in the product design of chocolate-covered elongated rod biscuits. Glico registered this particular mark back in 1989. Reg. No. 1,527,208.

The lawsuit ended fairly quickly. The district court found that the design is functional and therefore not protectable by trademark.  On appeal, the 3rd Circuit affirmed.

If you have eaten one of these, then you know a bit about the shape functionality:

1. Biscuit end can be handled without getting chocolate on your hands;
2. Rod design allows for close-packing in a compact box suitable for sharing;
3. Rod design allows for eating “one bite at a time … without opening your mouth
   wide.”

According to the third circuit, these aspects were utilitarian and therefore functional as a matter of law.

In its petition, Glico presents the following questions:

The Lanham Act protects trade dress from unlawful copying. Trade dress includes a product’s design, such as the red wax seal on a bottle of Maker’s Mark, the shape of the Chanel No. 5 perfume bottle, and the configuration of the Pepperidge Farm Milano cookie. To qualify for trade dress protection, a product’s design cannot be “functional,” among other requirements. At issue in this case is the test for “functionality” in trade dress law and the role of alternative product designs in creating a dispute of fact that prevents summary judgment. This petition presents two questions:

1. Whether trade dress is “functional” if it is “essential to the use or purpose of the article” or “affects the cost or quality of the article,” as this Court and nine circuit courts have held, or if it is merely “useful” and “nothing more,” as the Third Circuit held below.

2. Whether the presence of alternative designs serving the same use or purpose creates a question of fact with respect to functionality, where the product’s design does not affect cost or quality and is not claimed in a utility patent.

[Petition].  AIPLA, IPO, and INTA have all filed briefs supporting certiorari.  Their argument is that the Third Circuit used an unduly expansive definition of “functional” that is contrary to the precedent of the Supreme Court and every other circuit court of appeals.

The briefs include lots of pictures of chocolate covered cookies (biscuits).

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Glico also holds a patent titled “Stick-shaped snack and method for producing the same.”  U.S. Patent No. 8,778,428.  The US patent claims a particular method of making these tasty snacks as well as “A stick-shaped snack made by the [claimed] method.” (product-by-process claim) The district court found the patent relevant to showing functionality. On appeal though, the Third Circuit disagreed since the patent focused on a particular method of manufacture rather than novel features of the product itself.  There is also a Japanese Utility Model patent but did not feature in the litigation.

by Dennis Crouch

The NHK-Fintiv Rule provides the PTAB with authority to deny institution of IPR proceedings when the challenged patent is already subject to pending parallel district court litigation.  The rule stems from two PTAB decisions that were later designated as precedential.

• NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, 2018 WL 4373643 (Patent Tr. & App. Bd. Sept. 12, 2018), designated precedential on May 7, 2019.
• Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495 (Patent Tr. & App. Bd. Mar. 20, 2020), designated precedential on May 5, 2020.

IPR proceedings have two major decision points.  Institution: After IPR petition is filed, the PTO Director determines whether or not to institute the IPR. The statute provides the director with discretionary authority on whether or not to institute the IPR, but does create a threshold — requiring that the petition show at least “a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. 314.  Also, the PTO Director has delegated their institution authority to the PTAB, and so a PTAB panel actually makes the decision.  Final Decision: If the IPR is instituted then the PTAB is charged with holding a trial and reaching a final decision “with respect to the patentability of any patent claim challenged.”  On the other hand, if institution is denied, the case is over and no appeal is permitted. “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. 314(d).  Note here that “nonappealable” has been generally interpreted as ordinarily not appealable. See Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) and Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020).

With NHK-Fintiv, PTAB panels are able to use their discretionary authority to deny institution in situations involving parallel litigation guided by a six-factor test that generally dance around the overarching question of whether “instituting a trial would be an inefficient use of Board resources.”