by Dennis Crouch
The US Supreme Court has almost cleaned-up its patent docket for the October 2020 term. I still expect a decision at some point this week (by July 2) in Minerva Surgical, Inc. v. Hologic, Inc. focusing on the ongoing viability of assignor-estoppel. The court has already decided its one other patent-focused case for the term–United States v. Arthrex, 594 U. S. ___ (2021). In Arthrex, the court altered the power of the PTO Director beyond statutory limitations in order to preserve the PTAB’s constitutional authority during IPR proceedings. A number of parallel petitions had raised the same or similar questions to Arthrex. The Court vacated and remanded some cases back to the Federal Circuit “for further consideration in light of United States v. Arthrex, Inc.” For other cases, the court simply denied certiorari. There are also several Arthrex-follow-on petitions pending that have not yet been fully briefed. I expect these will also be denied.
The court also denied certiorari in TCL Communication v. Godo Kaisha IP Bridge 1, No. 20-1545. That case asked a couple of interesting questions regarding proof of literal infringement. The court allowed the patentee to make assumptions about the accused devices based upon admissions that the devices conform to certain industry standards.
The lone hold-over case is American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 20-891 focusing on patent eligibility. A petition for certiorari was filed in that case back in December 2020. After briefing was completed, the Supreme Court then requested the views of the U.S. Government on whether the court should grant certiorari. Those views will come from the US Solicitor General, but probably will not be submitted until November or December 2020. The CVSG signals some amount of interest, making this case the most likely to be granted cert next year. Am. Axle asks two questions:
- What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
- Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?
A follow-on petition asks the identical questions in iLife Technologies, Inc. v. Nintendo of America, Inc.
New cases have already begun to line-up for consideration next term, starting at the end of September 2021:
- Standing: Trademark – Standing to Cancel a TM Registration – Naked TM, LLC v. Australian Therapeutic Supplies Pty. Ltd.; See also Kaszuba v. Hirshfeld (similar issues, pro se).
- Standing: Prisoner’s right to protect his patent rights via court action – Tormasi v. Western Digital Corp.
- Preclusion: Ongoing viability of the Kessler Doctrine as an expansion of traditional issue and claim preclusion. PersonalWeb Technologies, LLC v. Patreon, Inc.
- Anticipation: Is a method claim expressly requiring use of a man-made protein anticipated by use of a naturally-occurring version of the protein. Biogen MA Inc., Petitioner v. EMD Serono, Inc.
- Due Process: Many of the patents cancelled via IPR had already been applied-for or issued prior to the America Invents Act of 2011. Does that “retroactive application … violate the Due Process Clause of the Fifth Amendment to the United States Constitution?” Ultratec, Inc. v. CaptionCall, LLC
- Writing Opinions: Does the use of Federal Circuit Rule 36 to summarily affirm decisions from the PTAB “without opinion” violate 35 U.S.C. § 144? Ultratec, Inc. v. CaptionCall, LLC (see alternative question on due process)
The court will likely act on these certiorari petitions within the first couple of weeks of the October 21 term. Each of these cases are interesting and important. Still, it is quite possible that the Court will not grant certiorari in any new patent case for the next year.
BREAKING: Justices Narrow Bar On Patent Attacks By Inventors
The U.S. Supreme Court refused Tuesday to completely eliminate a doctrine that bars inventors from challenging their own patents, but imposed new restrictions on when it can be invoked, ruling that the Federal Circuit has applied the rule too broadly.
So it sounds like-surprise, surprise, surprise–that the Scotus has once again weakened patents.
Shock of all shocks.
From SCOTUS blog – The Court sends the case back to the Federal Circuit for more proceedings “consistent with this opinion.”
“but probably will not be submitted until November or December 2020.” 2021?
“Does that ‘retroactive application … violate the Due Process Clause of the Fifth Amendment to the United States Constitution?'”
Yes, it does. Will SCOTUS care? No, they won’t.
“Does the use of Federal Circuit Rule 36 to summarily affirm decisions from the PTAB ‘without opinion’ violate 35 U.S.C. § 144?”
Yes, it does. Will SCOTUS care? No, they won’t.
SCotUs had passed a few times now on the issue of retroactive application of IPRs to pre-AIA patents, but soon or late they are going to take that issue. Just like they passed on the VII amendment issue a few times before they finally took Oil States. Maybe Ultatec is the one—or maybe not. Eventually, however, they are going to take a case and decide that issue (although my prediction just now is worth exactly what you paid for it).
Why do you describe the issue in Biogen v. EMD Serono as “infringement”? The question presented in that case reads “[w]hether courts may disregard the express claim term ‘recombinant’ so as to render a method-of-treatment patent anticipated…?” Surely this classes as “anticipation,” not “infringement.”
That petition, meanwhile, is a waste of time. The claim recites “administering to a patient… a recombinant polypeptide produced by a non-human host transformed by a recombinant DNA molecule… .” In other words, product-by-process. There is nothing inherently wrong with product-by-process claiming, but everyone knows that product limitations get no patentable weight when evaluating the product. Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 310 (1884).
If you need to distinguish your method over a prior art process based on the components used, then you need to describe distinguishing structure of those components. Product-by-process will not do the job. That is the law in the U.S. and always has been.
Mea culpa. “[E]veryone knows that
productprocess limitations get no patentable weight when evaluating the product.”Thanks Greg. That was an error on my part.
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