Update on Supreme Court Patent Cases: Fact Law Divide

by Dennis Crouch

Olaf Sööt Design’s pending petition for certiorari centers on the age-old division between issues-of-fact and issues-of-law.  The U.S. Constitution generally requires due process, and particularly protects litigants’ rights to a jury trial in common law cases.  One quirk–the right to a trial by jury does not cover issues-of-law, and only extends to some issues-of-fact.

This bifurcated system results in an odd dynamic in patent law — regularly seen with regard to infringement and claim construction:

  • Patent infringement is an issue-of-fact tried by a jury under the Seventh Amendment.  Typically, a jury is asked to decide whether the evidence shows that the defendant is performing the claimed invention.
  • Claim construction is treated as a question of law (or mixed question of fact and law), decided by a judge.  In contemporary patent litigation, a judge will typically be asked to decide whether the legal scope of the claims extend to cover the defendant’s actions.

With this setup, the whole case can be decided at either stage, but claim construction typically comes first and so often steals-the-show.  One problem though, is the potential of unduly undermining the Constitutionally protected jury system.

One case pending before the Supreme Court focuses-in on these issues: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (Petition).  Sööt asks the following question:

In Markman v. Westview Instruments, Inc., 517 US 370 (1996), this Court held that the meaning of terms in a patent “claim” stands as a question of law and must be construed by the court. Under the Seventh Amendment, if requested by the patent owner, the jury must make the factual determination as to whether the defendant infringed the patent in light of the court’s claim construction. Consistent with the Seventh Amendment, the Markman decision leaves to the jury all factual determinations beyond the court’s construction of the claim. The question presented by this petition for writ of
certiorari is:

Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question,  previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.

The Supreme Court will consider the petition next week.

Patent Law at the Supreme Court December 2021

33 thoughts on “Update on Supreme Court Patent Cases: Fact Law Divide

  1. 8

    Claims are not inventions. Claims are words used to describe inventions. Abstractions of inventions.

    The invention itself- that which is novel and useful over the prior art- should also be construed as a matter of law. Without such construction, it’s often impossible to fairly draw a PHOSITA, because “the art” is in the eye of the beholder.

    In a typical “do it on a computer” claimset, the art involved may be in computing, or it may be in that activity which is digitized, or some (heretofore undesignated) combination.

    That’s why the abstraction puzzle is nigh unsolvable: abstraction in claims is not the same thing as abstraction in inventions.

    1. 8.1

      Martin, I doubt you are right when you contend that abstraction in inventions is “not the same thing” as abstraction in claims. Abstraction is something that human brains do. Inventions don’t. Setting aside the question whether the human brain thinks in words, there is no doubt in my mind that only with words can human brains discuss amongst themselves an abstract concept such as an invention. So when we imagine an inventive concept, and want to communicate it to another human brain, all we have available to us to accomplish that task are words. A patent claim is a definition in words of the abstract concept we desire to communicate from one human brain to another. It’s the same thing as the inventive concept, not a different thing.

      And BTW, this is why an AI can’t invent, because it has no imagination, no doubts, no capacity to draft the claim.

      1. 8.1.1

        MaxDrei,

        You do realize that the party that drafts the claims is not the inventor, right?

        That drafter is merely the hired hand of the inventor, and you show your lack of understanding on the “AI as inventor” topic with such a silly mistake.

      2. 8.1.2

        Further, You seem to be inputting more than what is necessary for the legal definition of inventor.

        As I have pointed out, the full gamut of humanity (or even approaching the Singularity Point) is simply not required for the legal act of invention.

        It is plain error to attempt to elevate that legal definition to be more than what it is.

      3. 8.1.3

        I strongly disagree. The invention exists, once made & has its own intrinsic property. Gears have teeth that mesh even if no minds exist to contemplate them.

        Some inventions cannot exist without a human mind & some can. There lay the difference.

        1. 8.1.3.1

          Marty, you continue to attempt to do battle in some fantasy land and not in the terrain of patent law.

          See Sun Tzu.

          1. 8.1.3.1.1

            You wouldn’t know the realm of patent law from the realm of your various tics, shibboleths, and reflexes, but guess what Jack, patent law is a creature of politics and philosophy . Since everything is irony, you have no idea of the terrain or where or how to change anything, including your diaper.

            1. 8.1.3.1.1.1

              Your mindless rant shows but two things: you are mindless, and you can rant.

              NONE of what you assert is on point.

              As they say,
              S
              U
              C
              K
              S
              to be you.

        2. 8.1.3.2

          Let’s not confuse the inventive concept defined by the words of the claim with a specific embodiment within the ambit of that claim, such as a particular “gear”.

          A “gear” can be an embodiment of any number of different inventive concepts, each one defined in words by a respective patent claim.

          Let’s not confuse an inventive concept with a work in material form, the subject of copyright. There is no copyright in an idea but there sure are legal rights to protect an inventive concept.

          1. 8.1.3.2.1

            MaxDrei,

            If Marty wants to get all corporeal, just point him to a traffic light and ask him what the patent-utility is (and where that utility is formed).

  2. 7

    Please pardon potential rePeat due to filter…

    Down below, we end 2021 with the same b0r ing voices of those signing the same b0r ing anti-patent themes.

    Happy 2022 everyone — let’s try to engage and move conversations forward this upcoming new year.

    1. 7.1

      OK, how about the good patent news report that Standard Essential Patents (SEP) filings and their technical contribution assertions continue to increase, with “more than 100,000 technical contributions already submitted at 3GPP meetings just for 2G, 3G, 4G and 5G [wireless phone standards] in 2021” and “Per IPlytics data, the cumulative number of self-declared SEP families surpassed 72,000 in 2021, .. a five-fold increase in just 10 years.” [Sounds like a veritable OK, how about the good patent news report that Standard Essential Patents (SEP) filings and their technical contribution assertions continue to increase, with “more than 100,000 technical contributions already submitted at 3GPP meetings just for 2G, 3G, 4G and 5G [wireless phone standards] in 2021” and “Per IPlytics data, the cumulative number of self-declared SEP families surpassed 72,000 in 2021, .. a five-fold increase in just 10 years.” [Sounds like a veritable OK, how about the good patent news report that Standard Essential Patents (SEP) filings and their technical contribution assertions continue to increase, with “more than 100,000 technical contributions already submitted at 3GPP meetings just for 2G, 3G, 4G and 5G [wireless phone standards] in 2021” and “Per IPlytics data, the cumulative number of self-declared SEP families surpassed 72,000 in 2021, .. a five-fold increase in just 10 years.” [Sounds like a Niagara Falls or Cornucopia of future patent lawyer billing opportunities.]

      1. 7.1.1

        Sorry for the unintended repeats.

      2. 7.1.2

        How about the simple and direct comment to that story at IPWatchdog.

        When I said engage, I meant engage on point.

    2. 7.2

      Covid has a silver lining. All those ideas stolen by the big companies and manufactured by them too, making the little guy take minimum wage while they get richer… is now over! And the people in the congress that say it is becoming a socialist republic, is as clear as the nose on your face. They have BIG TECH STOCK and their gravy train is about to come to an end. The investigation about 1/6 is about this too. People that had 401 K were getting benefit in their 401 k numbers. They thought it was all about what Trump was doing for them. It was in a way. But, the rich got richer, and the poor got nothing! So I hope the 1/6 situation is also understood to be the cries of the rich claiming the election was stolen. What Justice Roberts said about Judges who are committing crimes on the bench because they own the stock they are making decisions on. He should also go further and tell it like it is. anyone in congress that has stock in TECH need to sell it. not give it to their family. BUT SELL IT. When they leave congress they can re-up.

  3. 6

    BTW the patent drawing above is not from the subject Olaf Sööt Design, LLC patent, which is on some kind of resin. It is a drawing from the patent of the cert petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891. Partially showing one [unclaimed] example of the [unclaimed]materials of [unclaimed] shapes and [unclaimed] locations within a drive shaft to reduce two vibration modes.

    1. 6.1

      Indeed, albeit the AA claim is not to the shaft but to a method of designing the shaft. The yellow bit in the image is (I believe) a cardboard drive shaft liner, the thing conventionally used to damp driveshaft vibrations. One understands though that, in accordance with the invention, Applicant’s paper liner damps two vibration modes in the shaft by at least 2% whereas (according to the Applicant) the conventional paper liner doesn’t succeed at all. I wish the Supreme Ct would take the AA case, and give the claim the going-over it richly deserves. After all, in these days of complex and esoteric biotech and telecoms cases, when will SCOTUS ever again be served up with a case with such easy to grasp facts as we have here?

      1. 6.1.1

        when will SCOTUS ever again be served up with a case with such easy to grasp facts as we have here?
        Easy to grasp facts? LOL

        The District Court judge didn’t easily grasp those facts — thinking that Hooke’s law was somehow implicated. Half the Federal Circuit didn’t easily grasp those facts — denying rehearing en banc.

        You think the generalists over at the Supreme Court will find these facts to be easy to grasp? I see you’ve been working on your standup routine.

        Although I wouldn’t mind SCOTUS taking this case on, it could easily be disposed with a holding that the MoT test is not dead, and there is a transformation here.

        1. 6.1.1.1

          WT, I stand by my comment and suggest that what was difficult for the DC was to apply SCOTUS-made eligibility law to the simple facts of the case. It isn’t easy, and it’s no easier at the Fed. Ct. But at least with simple engineering facts, the fiendishly-difficult legal issue can more easily be clarified.

          Over here in Europe, for quite a few years, the different jurisdictions that adjudicate patents under the European Patent Convention found it difficult to decide whether to find the claim i) simply ineligible or ii) eligible but obvious. The two rival approaches are vigorously defended by their respective EPC jurisdictions, to this day.

          In Europe, the obviousness trial is relatively efficient and accurate. In a jurisdiction where obviousness is inherently so complex and expensive, how much more attractive does that make it for the court to find the claim ineligible? Any perception that a court is inclined to take a short cut to end the litigation will damage the reputation of the court.

          Here is a rare opportunity for the Supreme Court to go some way to repair that reputation, by handing down an opinion on a simple engineering case that can be applied cleanly by zealous advocates to case with much more esoteric matrices of fact. Do the Justices at least understand that, I wonder.

          1. 6.1.1.1.1

            Unglaubich

            To MaxDrei’s “WT, I stand by my comment and suggest that what was difficult for the DC was to apply SCOTUS-made eligibility law to the simple facts of the case. It isn’t easy, and it’s no easier at the Fed. Ct. But at least with simple engineering facts, the fiendishly-difficult legal issue can more easily be clarified.</i.”

            SMH

            MaxDrei continues: “After all, in these days of complex and esoteric biotech and telecoms cases, when will SCOTUS ever again be served up with a case with such easy to grasp facts as we have here?

            – and this to Wt’s reply pointing out: “The District Court judge didn’t easily grasp those facts — thinking that Hooke’s law was somehow implicated. Half the Federal Circuit didn’t easily grasp those facts — denying rehearing en banc. You think the generalists over at the Supreme Court will find these facts to be easy to grasp?”

            Yet again, MaxDrei is untethered to the real world. ESPECIALLY in regards to eligibility, it’s as if he really thinks that our Supreme Court has somehow not been a player in butchering patent law – regardless of damage to the reputation of the Court. Quite in fact, I would daresay that the Supreme Court’s intrusion into writing the patent law that they want to write has been the number one cause of damage to the reputation of the Court, especially along lines of “simple engineering facts.”

            Over here in Europe

            Absolutely immaterial – and (yet again), MaxDrei desiring to p[oy his EPO Uber Alles while rudely disregarding US Sovereign as the basis of the legal discussion.,

            how much more attractive does that make it for the court to find the claim ineligible?

            FULL STOP

            This comment indicates a complete lack of appreciation and understanding of US law and our separation of powers (notwithstanding the fact that I have taken MaxDrei to task on this very legal point for well over a decade now).

            Our Rule of Law is NOT to have the Court write the statutory (and explicitly prescribed by our Constitution to be the sole domain of our legislature) as to how they want the outcome to be, but they are to apply to the law as written – expressly opposite your intonation of “attractiveness.” You appear to want to not only use “attractiveness” as an excuse – and somehow a proper one — but you fail to grasp just how wrong that view is legally.

            Do the Justices at least understand that, I wonder.

            Your ‘wonder’ is either disingenuous or you are just c1ue1ess. Do you really think that the Justices have NOT been trying to legislate from the bench? For the YEARS that you have been commenting on US patent law, this disconnect of yours strains credibility.

  4. 5

    If there’s no genuine dispute about the operation of the accused product, every literal infringement dispute collapses into claim construction and should be resolved by the court. That’s my view, anyway. See Joshua L. Sohn, “Re-assessing the Role of Trial in Patent Litigation”, 27 Fed. Cir. B.J. 187 (2018).

    1. 5.1

      If the case is such that the Markman claim interpretation decision was based solely on determining the meaning of claims in the context of the patent specification* [and limiting admissions made in the application prosecution history], then judges doing that themselves makes sense. But what about the meaning of claim technical terms that are disputed and need to be determined by what they would mean to a POSITA at the filing date? And with expert testimony rather than technical dictionaries?
      *as akin to judges determining the meaning of words in a contract by reference to the contract document and its subject?

      1. 5.1.1

        A bit like obviousness, isn’t it? A legal determination based on the facts as established during the litigation.

        An English court, for example, construes the claim by asking itself what was the writer of the claim using the words of the claim to mean (to the skilled reader of the patent). If that had been the way the Chef America claim had been construed, the outcome would have been very different, and would have avoided the ridicule that the Chef America decision provokes. Sigh.

        1. 5.1.1.1

          Max, the ridicule of the Chef America “hot buns” versus “hot oven – burned buns” claim temperature decision is more appropriate for the PTO 103 allowance of those claims to begin with. Also, a good example of Comment 2 below that “it’s a results oriented court and it uses Markman and claim construction to achieve that [correct end] result.”

    2. 5.2

      If there’s no genuine dispute about the operation of the accused product
      There is almost always a dispute. Why would the accused infringer give up an argument?

      First, the accused infringer argues that their preferred claim construction should prevail. Notably, a claim construction can be performed without any knowledge whatsoever of the accused infringer’s product.
      Second, the accused infringer argues that their product doesn’t infringe based upon whatever claim construction comes out of Markman.

      1. 5.2.1

        No, there’s often no genuine dispute about how the accused product operates. A patent claim may require “X,” and the parties will hotly dispute whether the product’s undisputed operation qualifies as an “X”. That is often the infringement dispute. And that sort of dispute is really just a fight over the proper scope of “X”, which is a claim construction dispute for the court. See the cases I cite in my article, where the infringement dispute took exactly this form.

        1. 5.2.1.1

          OK with that J.S., but what about the potential timing differences? I.e., claim scope may get determined in an early pre-trial Markman, and any infringement disputes only in the jury trial [unless waived by the patent owner to get a summary decision and an immediate appeal of the claim interpretation to the Fed. Cir., as happens fairly often.]

          1. 5.2.1.1.1

            That’s when you get “rolling” claim constructions and O2 Micro battles. Often the parties will dispute whether the product’s agreed functionality falls within the scope of the construed claim, so the court has the power and the obligation to refine the claim construction (at any point in the suit) to resolve the dispute.

  5. 4

    Most patent suits will never get to the Supreme Court because the vast majority are settled before any trial. A contributor to that is PAEs who’s business model is to get lots of patents and sue lots of companies to get easy cash settlements for less than defendants legal costs. Gene’s blog notes that IP Edge [the PAE controlling numerous shell subsidiary named plaintiffs] accounts for approximately 20% of all U.S. patent filings! They rarely even get to a Markman claim interpretation, and almost all their cases are settled or dismissed in less than a year.

  6. 3

    IP Watchdog is reporting that Ikorongo Texas has petitioned for cert. of the CAFC’s transfer mandamus (WD Tex to ND Calif). I express no opinion on the likelihood of success for that petition, but I hope that the Court takes cert. The controlling precedent on venue transfers long predates electronic records, video conferences, etc. It would be useful for the SCOTUS to consider whether the factors from Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947) merit recalibration in view of technological and social changes since 1947.

    1. 3.1

      See “Bald-Faced Attempt to Manipulate Venue Rejected” | Patently-Ohttps://patentlyo.com › patent › 2021/07 › — “Ikorongo Texas is owned by five-individuals led by patent agents Hugh Svendsen & Sarah Svendsen.”

  7. 2

    Certainly strikes at the heart of a major criticism of the Federal Circuit – ergo – it’s a results oriented court and it uses Markman and claim construction to achieve that result. In other words, under this claim construction it’s legally (factually) impossible for the patent owner to prove infringement. Ipse dixit.

  8. 1

    Seems as unlikely to succeed as most any other cert. petition.

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