Here is a new example of a Schedule-A case filed in the Northern District of Illinois.

Dyson Tech. Ltd. v. Persons listed on Schedule A, Docket No. 1:22-cv-05946 (N.D. Ill. Oct 27, 2022).

DysonAnonComplaint.  The list of defendants is apparently in Schedule-A, but that document was filed under seal.  The complaint alleges that the defendants are all counterfeiters who operate in “foreign jurisdictions with lax intellectual property enforcement systems” such as “the People’s Republic of China.” They are selling products in the US via online stores such as eBay, AliExpress, Alibaba, Amazon, Wish.com, Walmart, Etsy, and DHgate. The justification for the under-seal filing is similar to that of sealed warrants or sealed indictment in criminal cases.  In particular, the patentee has indicated that it plans to seek a TRO in a way that will preserve evidence:

If Defendants were to learn of these proceedings prematurely, the likely result would be the destruction of relevant documentary evidence and the hiding or transferring of assets to foreign jurisdictions, which would frustrate the purpose of the underlying law and would interfere with this Court’s power to grant relief. Once the temporary restraining order has been served on the relevant parties and the requested actions are taken, Dyson will move to unseal these documents.

MotionToSeal.

Dyson’s patent here is U.S. Design Patent No. D853,642 and appears to cover its “Airwrap” product.  [$699 on Amazon]. According to RPX, the patentee here has already sued 1,000+ defendants for infringement even before this actions.

By Sarah Burstein, Professor of Law at Suffolk University Law School

• ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule “A,” No. 21-2150 (Fed. Cir. 2022);
• ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule “A,” No. 22-1071 (Fed. Cir. 2022)

On October 28, the Federal Circuit released two decisions stemming from a single case in the Northern District of Illinois. These appear to be the first—and certainly the first precedential—Federal Circuit cases dealing with the merits of one of the numerous “Schedule A” design patent cases that have been filed in recent years in the NDIL.

And when I say “numerous”: A search of Lexis CourtLink for NDIL cases with “Schedule A” in a party name results in a list of 2,669 cases filed since 2011.

In these cases, the plaintiffs name the defendants (and sometimes themselves) only in sealed “Schedules A.” Sometimes they don’t even file the patent number publicly. See, e.g., this case.

These plaintiffs assert that this secrecy is necessary to defeat nefarious Chinese “counterfeiters” who are monitoring U.S. PACER dockets. The use of this “counterfeiting” rhetoric is troubling in and of itself (for reasons including the ones I discussed in this previous Patently-O post) but these cases raise a number of additional concerns.

Professor Lorianne Updike Toler outlined some of these concerns in her motion to file an amicus brief in a different Schedule A case. That motion was denied because the judge (a different one from the one involved in the cases that are the focus of this post) felt that allowing Professor Toler “to present new arguments (no matter how meritorious or persuasive) on behalf of absent Defendants would thus pay insufficient heed to the principle of party presentation.”

One issue Professor Toler raised in her motion was the issue of fair notice. And, indeed, in ABC Case No. 21-2150, the Federal Circuit reversed a 2020 preliminary injunction (and a related order) because the judge issued preliminary injunctions against parties who had not yet been served with process and who were not given proper notice pursuant to Federal Rule of Procedure 65.

Since I first noticed the uptick in these cases a few years ago, I’ve had my own concerns about these cases, largely focused on the merits of these claims. These complaints often don’t include pictures of the infringing products in their publicly-filed pleadings, so an outside observer has no way to tell whether the claims have merit or not.

The Federal Circuit’s decision in ABC Case No. 22-1071 does nothing to assuage these concerns. In that decision, the Federal Circuit reversed a 2021 preliminary injunction in the same case, finding the court improperly analyzed the issue of design patent infringement.

It is clear, from reading the decision, that the design patent infringement claims lacked merit. The plaintiff’s infringement expert (and one might seriously question whether a designer’s option satisfies the requirements of Federal Rule of Evidence 702 when the standard for infringement relies on the perspective of the hypothetical ordinary observer, not on the perspective of a designer of ordinary skill) seemed to be a victim of what I’ve referred to as “the concept fallacy” in design patent litigation—i.e., the erroneous view that design patent protect design concepts, as opposed to the actual shapes or surface designs claimed.

Specifically, the plaintiff’s expert appeared to believe that the patents-in-suit covered the concept of a hoverboard with an “hourglass shape.” They do not.

Additionally, the expert appears to have relied on a theory—never adopted by, and in fact, specifically rejected by the Federal Circuit—that posits that a design patent may be entitled to a broader scope if it is “far from” the prior art. That’s not how design patent infringement works. As I explained here: “The use of the prior art in the design patent infringement analysis is a one-way ratchet—it can be used to narrow the presumptive scope of a claim but cannot be used to broaden it.” (For more on how the test for design patent infringement actually does work, see this short essay.)

These are serious problems, especially to the extent that the district court thought that “[r]esolving this expert dispute will likely require a trial.”

*           *           *

The panel’s discussion of the infringement standard on the merits also merits further discussion. In its decision on the 2021 injunction, the Federal Circuit correctly notes that the district court erred in concluding that a putative “clash of experts” meant that the plaintiffs had discharged their burden to show a likelihood of success on the merits. And the panel was correct that, overall, the plaintiffs failed to prove they were likely to succeed on the merits

But other parts of the Federal Circuit panel’s analysis are problematic.

For example, in a footnote, the panel suggests that “substantial similarity” means the same thing in design patent that it does in copyright. The panel suggests that the duplication of a “dominant feature” of a design patent might sometimes be sufficient to constitute design patent infringement:

In other words, where a dominant feature of the patented design and the accused products—here the hourglass shape—appears in the prior art, the focus of the infringement substantial similarity analysis in most cases will be on other features of the design. The shared dominant feature from the prior art will be no more than a background feature of the design, necessary for a finding of substantial similarity but insufficient by itself to support a finding of substantial similarity.

Op. at 13-14. This suggestion misapprehends the standard set forth by the en banc Federal Circuit in Egyptian Goddess.

As the en banc court made clear in Egyptian Goddess, design patent infringement requires evaluation of the design as a whole. That is very different from the way that copyright infringement is evaluated today.

In Egyptian Goddess, the en banc Federal Circuit was very clear: The prior art can be used to only to narrow the presumptive scope of the design. That is because “where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” It is not, as the panel suggests here, due to some kind of “dominant feature” dissection analysis.

But in this case, we shouldn’t even have to get to the prior art step. The accused product shown in this decision is “plainly dissimilar” from the claimed design:

As can be seen from these images (included in the panel decision), there are numerous differences—none of them immaterial—between the shape of the claimed designs and the accused products. These are plainly dissimilar designs. The analysis should have ended at Egyptian Goddess step 1 with a finding of noninfringement.

So the result here (no injunction) is plainly correct. But the panel’s analysis muddies the Egyptian Goddess waters in unhelpful—and utterly unnecessary—ways.

I pulled up 10 recent federal complaints alleging trade secret misappropriations to get a sense of what filings look like today.  All 10 involved allegations against former employees.  Most focused on sales folks leaving and soliciting customers.  A couple of cases involve employees forming allegiances with  the competitor before leaving.  One involves a competitor trying to hire-away employees. And, one includes a text full of explicit emoji.  Overall, about 50 new Federal trade secret cases were filed in the past 30 days with about 600 over the past 12 months.

1. MGA Home Healthcare Colorado, LLC v. Thun, Docket No. 1:22-cv-02534 (D. Colo. Sep 28, 2022).  According to the complaint: Former employee (Thun) was lead client manager but was terminated by MGA. Thun then joined a competitor Amazing Health Care and began soliciting clients.  The employment agreement included a non-solicitation clause extending for 12-months following the end of employment.
2. Schnitzer Steel Industries, Inc. v. Dingman et al, Docket No. 1:22-cv-00361 (D.R.I. Oct 03, 2022). According to the complaint: Former employee (Dingman) had signed both a non-compete and non-disclosure agreement with scraper Schnitzer.  Dingman was fired in June 2022 and then formed a competing company to purchase and recycle catalytic converters.  He then started calling all of the same suppliers and has “successfully stolen business” from Schnitzer. 
3. H.B. Fuller Company v. Strzegowski, Docket No. 0:22-cv-02389 (D. Minn. Sep 28, 2022). According to the complaint: Former employee (Strzegowiski) joined competitor and began soliciting former customers. 
4. Cartiga, LLC v. Robles, Docket No. 9:22-cv-81612 (S.D. Fla. Oct 19, 2022). According to the complaint: Former employee (Robles) began soliciting former customers.  Attachments to the complaint include a nice row of middle fingers in response to the cease and desist letter.  
5. NEBCO, Inc. v. Butler, Docket No. 4:22-cv-03217 (D. Neb. Sep 29, 2022). According to the complaint: Employee (Butler) allegedly began doing a bit of self dealing with a competitor with plans to join that company. 
6. MERIDIAN BANK v. SANDY SPRING BANK et al, Docket No. 2:22-cv-03951 (E.D. Pa. Oct 04, 2022). According to the complaint: Nine former employees were hired away by competing bank who had been given confidential information regarding salary, benefits, and customer lists. 
7. TRANSACTLY, INC. v. MOVE-IN READY, LLC et al, Docket No. 1:22-cv-00987 (W.D. Tex. Sep 29, 2022). According to the complaint: Employees formed a competing company and sent confidential information to the new company before quitting. 
8. BIGRENTZ, INC. v. KGM Enterprises, LLC, Docket No. 1:22-cv-00430 (D. Idaho Oct 13, 2022). According to the complaint: Former employee formed competing company and began recruiting more employees with knowledge of customers lists and have begun soliciting those customers. 
9. Gartner, Inc. v. G2.com, Inc., Docket No. 3:22-cv-01291 (D. Conn. Oct 13, 2022). According to the complaint: Competitor is hiring former employees seeking to “steal” plaintiff’s market share.  Sued both competitor and former employees. 
10. BMO Harris Bank, N.A. v. Eimen et al, Docket No. 1:22-cv-05378 (N.D. Ill. Sep 30, 2022). According to the complaint: Former wealth management employees joined competitors and began soliciting former clients. 

Molly Metz is a competitive jump-roper (5-time world champ) and also an inventor of an innovative jump rope handle that allows super speed jumping loved by both competitors and cross-fit freaks.  U.S. Patent Nos. 7,789,809 and 8,136,208.  There has been massive infringement since her patents issued 10-12 years ago.  Financing an infringement lawsuit is a bit tricky, especially for a total-startup (micro entity) in a fairly small market.  After failed licensing discussions, her company Jump Rope Systems eventually sued Coulter Ventures (owners of Rogue Fitness) in 2018 for patent infringement.  Jump Rope Systems, LLC v. Coulter Ventures, LLC, 18-cv-731 (S.D. Ohio).  Coulter turned around and petitioned for inter partes review (IPR).  IPR2019-00586, IPR2019-00587.  The PTAB granted the petitions and eventually concluded that the claims were obvious compared against the prior art.  The PTAB decision here is fairly questionable as applying hindsight bias in justifying the combination of prior references. Still, the Federal Circuit affirmed without opinion.

The Federal Circuit precedent is clear that all enforcement litigation should end as soon as the PTAB finds a claim unpatentable in an IPR/PRG and the determination is affirmed on appeal.  “That affirmance … has an immediate issue-preclusive effect on any pending or co-pending actions involving the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).  As I write below, the Federal Circuit’s approach has some doctrinal holes.  Still, it is precedent and the district court followed that precedent–dismissing the case and siding with the accused infringer.  Jump Rope appealed, but made clear to the Federal Circuit that the purpose of its appeal was to change the law and moved for summary affirmance of the district court’s judgment.

The IPR Certificate eventually issued in August 2022 stating that the claims have been cancelled, but that time the district and appellate courts had already been treating them as cancelled for months.

= = =

Jump Rope Systems’ case is now pending before the US Supreme Court on petition for writ of cetiorari and it argues that the Federal Circuit’s approach is in direct conflict with our law of issue preclusion.   Question presented:

Whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit  in federal district court. 

Jump Rope Petition.  

Although the Second Restatement of Judgments is not “law” as such, the Supreme Court (and other courts) have repeatedly concluded that its statements do reflect the law.  One theory for immediately applying the PTAB judgment is the doctrine of collateral estoppel (aka “issue preclusion”).   In XY, the Federal Circuit particularly concluded that collateral estoppel applies to immediately bar a patent infringement lawsuit once the PTAB finds the claims unpatentable and that determination is affirmed on appeal.  Judge Chen’s XY decision has numerous problems. The basic concern is that the opinion fails to consider standard limitations on the application of collateral estoppel, such as differing standards of review.  One key example: the PTAB decided obviousness based upon the low standard of preponderance of the evidence; and the IPR Appeal was decided on an even lower substantial evidence standard.  But, decisions on those low standards do not tell us whether the issue would be decided the same way under a higher standard of clear and convincing evidence. Standard issue preclusion rules prohibits this sort of application.  See Grogan v. Garner, 498 U.S. 279 (1991).  But, the Federal Circuit majority simply concluded that the patentee “had its day in court” and now is bound by the outcome.  As I noted above, in my view the PTAB obviousness decision here is quite weak in the way that it combines disparate references and identifies the problem to be solved.  I mention this because it seems like a case where the standard of review might make a difference.

To be clear, in my mind all of this might be a different situation once the USPTO issues its IPR certificate that actually cancels the claims.  At that point, the patent has been cancelled, but the parties here appear to be fighting about the pre-cancellation interim period.  One additional complication to this case is the reality that obviousness is a question of law, albeit one based upon substantial subsidiary facts.  Legal decisions by the courts also become binding precedent (apart from their preclusive impact on the parties), but this area becomes complicated when the legal determinations are based upon unique underlying factual conclusions.

by Dennis Crouch

Rothy and Birdies compete in the shoe market.  Rothy’s launched its knit loafers in 2017; Birdies launched its product in 2021 and Rothy’s sued for infringing three of its design patents. D885,016, D885,017, D909,718, and D870,425.

Birdies moved for summary judgment of both invalidity and non-infringement.  For the invalidity defense it (partially) relied upon its prior calf-hair version of the shoe shown in the comparison chart above.  The defendant made the classic defensive argument that the prior art is so similar to the accused product that either (1) the patent is invalid [if broadly interpreted] or (2) the patent is not infringed [if narrowly interpreted].  On summary judgment, Birdies argued:

Ultimately, by accusing the knitted Blackbird—a shoe with a silhouette that predates Rothy’s patents—of infringement, Rothy’s has created a catch-22 for itself. If the asserted patents are given Rothy’s broad construction (broad enough to cover the knitted Blackbird), then the patents are necessarily invalid: the original (non-knit) Blackbird predates the asserted patents, and using a knit material does not save the patents from invalidity, particularly given the myriad of other preexisting knit flats, as well as the absence of knit from at least a subset of the asserted patents. Alternatively, if the patents are given a narrower reading that allows for differences (other than the knit material) between the original Blackbird and the asserted patents, then the knitted Blackbird does not infringe.

Birdies Motion for SJ.   The argument makes sense.  But, the district court didn’t agree.  For invalidity, the district court concluded that the prior art wasn’t quite good enough to find the design obvious.  Then, for infringement, the court noted that Birdies’ reliance on its own same-shaped shoe for invalidity almost admits infringement. “Birdies even admits as much by arguing that the original Blackbird—made of calf hair—and the Rothy’s patented designs share a silhouette.” Rothy’s, Inc. v. Birdies, Inc., 21-2438 (N.D. Cal. 2022).  In the end, the district court denied the defendant’s motion for summary judgment:  “A jury could reasonably find that Birdies’ knitted Blackbird, depicted [above], infringes each of Rothy’s patents.” The case here offers another example of why Inter Partes Review (IPR) proceedings are a godsend for accused infringers.  The separate tribunals allow for the patent challenger to tell two different stories without worrying about creating confusion.

The decision here was from May 2022. Since then, the parties settled the case with Birdies agreeing to stop making & selling the accused designs. 

The pleadings include the fabulous set of drawings of historic men’s shoes and boots from John Peacock’s book titled Shoes: The Complete Sourcebook.  I would buy (and wear) those 1880 English flowered loafers if I could find a reasonable pair.

The following is a guest post from Logan Moore. Logan is a 3L at the University of Missouri School of Law and a member of our Veterans Law Clinic.  Under the leadership of Prof. Angela Drake, our clinic filed an amicus brief in this important new Federal Circuit case. — Dennis

by Logan Moore 

I. Introduction

Veterans are typically entitled to benefits for service-connected disabilities. The Department of Veterans Affairs (VA) has adopted a rating schedule, divided into different diagnostic codes (DCs) for various symptoms or conditions, to evaluate how an injury impairs a veteran’s earning capacity.^[1] The VA recently amended its diagnostic code for claims related to prosthetic knee replacements (DC 5055) to clarify that the criteria apply to “total [knee] replacements only.”[2] The amendment resolved ambiguity as to whether DC 5055 also covered partial knee replacements. For claims filed under DC 5055 on or after February 7, 2021, the new, seemingly unambiguous rating criteria will be applied. For pending claims filed before February 7, 2021, however, the old, ambiguous rating criteria will be applied if more favorable to the veteran.[3] Therefore, even though the VA formally amended its rating schedule almost two years ago, courts’ interpretation of the “old” DC 5055 still has a meaningful impact on thousands of pending claims filed before February 7, 2021.

The National Organization of Veterans’ Advocates (“NOVA”) petitioned the Federal Circuit to review VA’s interpretation of the prior DC 5055 language. Specifically, VA set out its own interpretation of the diagnostic code in 2015 – in the “Knee Replacement Guidance” – and again in 2016 – in the “Knee Replacement Manual Provision.” Thus, in National Organization of Veterans’ Advocates v. Secretary of Veterans Affairs (“NOVA 2022”),[4] the Federal Circuit faced several important questions about DC 5055, including (1) whether the Knee Replacement Guidance or the Knee Replacement Manual Provision constitutes the “final agency action” reviewable by the Federal Circuit; (2) whether DC 5055 was ambiguous at the time of VA’s guidance; (3) whether Auer agency deference applied to VA’s interpretation;[5] and (4) whether the Gardner pro-veterans canon required any doubts to be resolved in NOVA’s favor.[6]

NOVA 2022 provides some clarity on two principles that are often in conflict in veterans’ law cases—the general rule of deference to an agency’s interpretation and a pro-veteran canon to resolve all doubt in favor of the veteran. And its holding gives important insight on how adjudicators should analyze disability claims under DC 5055 for claims filed before February 7, 2021.

Ultimately, the NOVA 2022 majority held: (1) the Knee Replacement Guidance published in July 2015 was the “final agency action” subject to the court’s review; (2) at the time of this final agency action, DC 5055 was ambiguous as to whether it covered partial knee replacements; (3) the Knee Replacement Guidance was not entitled to Auer deference as it was inconsistent with a vast majority of prior Board decisions; and (4) the petitioner’s interpretation was entitled to the pro-veteran presumption because the language of DC 5055 did not unambiguously support the Secretary’s argument.

With this preview in mind, it is helpful to briefly discuss a prior Federal Circuit decision regarding VA’s “Knee Replacement Guidance”—Hudgens v. McDonald, 823 F.3d 630 (Fed. Cir. 2016).[7]

II. Hudgens v. McDonald

Michael Hudgens injured his knee while serving on active duty in the United States Army. In 2003, he had partial knee replacement surgery, and, in 2006, he sought benefits from the VA for his injury. When he was eventually given a 0% disability rating for right knee instability, he appealed to the Board of Veterans’ Appeals (“Board”). At the time of Mr. Hudgens’s claim and appeal, DC 5055 provided the following guidance for prosthetic replacement of the knee joint:

For 1 year following implantation of prosthesis ……………… 100 [% disability rating].

With chronic residuals consisting of severe painful motion or weakness in the affected extremity …………….. 60 [% disability rating].

With intermediate degrees of residual weakness, pain or limitation of motion rate by analogy to diagnostic codes 5256, 5261, or 5262.

Minimum rating …………….. 30 [% disability rating].

Both the Board and the United States Court of Appeals for Veterans Claims (“CAVC”) denied Mr. Hudgens’s claim on the grounds that DC 5055 applied only to total knee replacements. Mr. Hudgens ultimately appealed to the Federal Circuit.

Prior to the court’s consideration of Mr. Hudgens’s case, the majority of the Board’s decisions regarding DC 5055 found that the regulation did apply to partial knee replacements.^[8] But in July 2015, just before final briefs were due to the Federal Circuit in Mr. Hudgens’s case, the VA published an informal rule (the “Knee Replacement Guidance”) to clarify that the language of DC 5055 “refers to replacement of the joint as a whole.”^[9] Thus, the Hudgens court was tasked with addressing the confusion surrounding DC 5055’s coverage.

In Hudgens, the Federal Circuit ultimately held that (1) DC 5055 was ambiguous ­– it did not expressly state that it applied to only full knee replacements, and the majority of Board decisions regarding DC 5055 found that it actually covered partial replacements, (2) Auer deference did not require acceptance of the VA’s interpretation in the Knee Replacement Guidance – it is the Veterans Court’s “stated practice” to look to Board decisions for guidance and the Knee Replacement Guidance conflicted with numerous prior Board rulings,^[10] and (3) the pro-veteran presumption applied. Therefore, the Federal Circuit ultimately held that DC 5055 covered partial knee replacements.

III. NOVA 2022

Fast-forward a little more than six years, and the National Organization of Veterans’ Advocates (“NOVA”) petitioned the Federal Circuit to review the VA’s updated interpretation of DCs 5055.^[11]

III.A. VA’s Post-Hudgens Amendment to DC 5055

Six months after Hudgens, the VA directed regional office (“RO”) adjudicators “to not evaluate under DC 5055 any claims for partial knee replacements filed and decided on or after July 16, 2015” (Knee Replacement Manual Provision).^[12] And in 2020, the VA amended DC 5055 following notice-and-comment to “clarify [its] intent to provide a minimum evaluation following only total joint replacement.”^[13] The amended regulation provides, in relevant part:

Prosthetic replacement of knee joint: … Minimum evaluation, total replacement only ……………….. 30 [% disability rating].

In addition, a note was added to the rating schedule to emphasize that “prosthetic replacement” in DC 5055 “means a total replacement of the named joint.”^[14]

III.B. Jurisdictional Question

The Federal Circuit first briefly resolved the jurisdictional question: which VA instruction – the Knee Replacement Guidance or the Knee Replacement Manual Provision – constituted the final agency action subject to the court’s review? The court acknowledged that “Manual [P]rovisions that merely republish prior agency interpretations or restate existing law are not reviewable” in the Federal Circuit. Because the Knee Replacement Guidance “predates the Knee Replacement Manual Provision, and the Manual provision makes no substantive change to the Guidance,” the NOVA 2022 court held that the July 2015 Knee Replacement Guidance was the reviewable agency action.

III.C. Whether “Old” DC 5055 Covers Partial Knee Replacements After VA’s Knee Replacement Guidance

With the jurisdiction question answered, the court turned to address whether the VA’s interpretation of DC 5055 in its Knee Replacement Guidance was “arbitrary and capricious” or contrary to law.^[15] The court noted that it must look to the text of DC 5055 “on the date the VA promulgated the Knee Replacement Guidance” because the court’s evaluation is whether the Guidance constitutes a valid interpretation of the code. The court followed Hudgens and concluded that the version of DC 5055 that existed when the VA promulgated the Knee Replacement Guidance is ambiguous.

Similar to Hudgens, the Federal Circuit then considered whether Auer deference or the Gardner pro-veteran presumption applied in this case. The court ultimately held that the prior conflicting Board decisions still precluded application of the Auer deference because “no relevant law or facts [had] changed since [its] decision in Hudgens.” Notably, since Hudgens, the Supreme Court reinforced the limits of the Auer doctrine. Specifically, in Kisor the Court provided that Auer deference is not appropriate where the agency interpretation “creates an unfair surprise” that upends reliance by regulated parties.^[16]

According to the Federal Circuit, the Knee Replacement Guidance created unfair surprise because (1) Board decisions provide persuasive authority to the CAVC, (2) the vast majority of Board decisions prior to the Guidance applied DC 5055 to partial replacements, and thus (3) the prior Board interpretations may have “engender[ed] reliance interests that foreclose” Auer deference. Therefore, the NOVA 2022 court concluded that Hudgens still controlled its decision and the Knee Replacement Guidance did not qualify for deference.

Finally, under the pro-veteran canon of construction, the Federal Circuit determined that it must defer to NOVA’s interpretation of DC 5055. In Hudgens, the court held that “even if the government’s asserted interpretation of DC 5055 is plausible, it would be appropriate under the pro-veteran canon only if the regulatory language unambiguously supported the government’s interpretation.” And as the NOVA 2022 court explained, the text of DC 5055 at the time of the Knee Replacement Guidance was certainly ambiguous and thus any doubt should be resolved in favor of petitioners.

IV. Conclusion

There remain thousands of pending veteran disability benefit claims filed before the VA recently amended some of its rating criteria—including DC 5055. The Federal Circuit’s holding in NOVA 2022 provides important guidance to adjudicators charged with applying the old DC 5055 language to a veteran’s pre-2021 claim.

= = =

^[1] 38 C.F.R. § 4.1.

[2] DC 5055 can be found at 38 C.F.R. § 4.71a.

[3] Under the “pro-veteran canon,” ambiguous VA regulations are interpreted in a manor favorable to the veteran.

[4] Nat’l. Org. of Veterans’ Advocates, Inc. v. Secretary of Veterans Affairs, 48 F.4th 1307, 1310 (Fed. Cir. 2022).

[5] Under Auer v. Robbins, an agency’s interpretation of its own regulation is controlling unless the interpretation is “plainly erroneous or inconsistent with the regulation.” 519 U.S. 452, 461 (1997).

[6] Under Brown v. Gardner, “interpretive doubt is to be resolved in the veteran’s favor.” 513 U.S. 115, 118 (1994).

[7] Hudgens v. McDonald, 823 F.3d 630 (Fed. Cir. 2016).

^[8] To this point, 11 out of 14 relevant Board decisions found that DC 5055 was applicable to both full and partial knee replacements. Id. at 637.

^[9] Agency Interpretation of Prosthetic Replacement of a Joint, 80 Fed. Reg. 42042 (July 16, 2015).

^[10] The Supreme Court has clarified that Auer deference is unwarranted where “the agency’s interpretation conflicts with a prior interpretation.” Christopher v. Smithkline Beecham Corp., 567 U.S. 142, 155 (2012).

^[11] Nat’l. Org. of Veterans’ Advocates, Inc. v. Secretary of Veterans Affairs, 48 F.4th 1307, 1310 (Fed. Cir. 2022).

^[12] See VA Adjudication Procedures Manual M21-1 Section III.iv.4.A.6.a (“Knee Replacement Manual Provision”).

^[13] Schedule for Rating Disabilities: Musculoskeletal System and Muscle Injuries, 85 Fed. Reg. 76453, 76456 (Nov. 30, 2020).

^[14] 38 C.F.R § 4.71a.

^[15] Under the Administrative Procedure Act (“APA”), a court should “hold unlawful and set aside agency action” that is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” or is promulgated “without observance of procedure required by law.” 5 U.S.C. § 706(2)(A), (D).

^[16] Kisor v. Wilkie, 139 S. Ct. 2400, 2418 (2019).

One of my favorite of all global patent law events is the Patent Cup–a regatta that takes the battle of wits beyond the courtroom or patent offices.  The idea was hatched in 1989 by two friends, German patent attorney Peter Franck and French patent attorney Frederic Benech. The idea was to have a sailing patent attorney or agent organize in his or her own country a friendly race among IP professionals to showcase local sailing venues that might otherwise not be discovered. While a friendly competition, the Patent Cup has included sailors with both world-champion and Olympic pedigrees.  As with many other events, the pandemic delayed the event for a couple of years, but the 31st running of the Patent Cup was a great success a few weeks ago in my old town of Chicago.  The 2022 Patent Cup was organized by my former boss Marcus Thymian.

The regatta took place on Lake Michigan in September 2022 benefitted from perfect weather (not always a sure thing in Chicago). Principal Race Officer (PRO) and Chicago patent litigator Leif Sigmond, Jr., was able to run 9 competitive races and a more casual distance race. A mixed team from Australia, New Zealand, and Brazil (captained by Australian patent attorney James Cherry) claimed first place and were awarded the Patent Cup trophy. Thymian’s US team was second, while a team of current and former EPO patent examiners was third.

The regatta was sponsored Thymian and Sigmond’s respective firms: GrowIP Law Group and BakerHostetler and included sailors from 9 different countries. The competitors raced on the Chicago Yacht Club’s fleet of “Tom 28” boats. Next year’s Patent Cup is scheduled to take place at a yet-to-be-determined European location.  Congratulations to the winners!

by Dennis Crouch

The Federal Circuit’s recent decision in IBM v. Zillow Group, Inc., — F.4th — (Fed. Cir.  Oct 17, 2022) is a companion case another recent opinion, Weisner v. Google, — F.4th — (Fed. Cir. Oct 13, 2022).  The two eligibility appeals were decided a days apart by the same three-judge panel of Reyna, Hughes, and Stoll following oral arguments held minutes apart. Both district courts dismissed infringement lawsuits at the pleading stage and the “abstract idea” question was up on appeal.

The two appellate opinions are also parallel.  In both cases Judge Hughes concluded that claims were ineligible as directed to abstract ideas.  Likewise, in both cases Judge Stoll concluded that the patentees had alleged plausible and specific facts showing that the claims embodied inventive concepts. As such Judge Stoll concluded that dismissal on the pleadings–before weighing any evidence–was improper.  But, the two cases have different outcomes because of the third panel member, Judge Reyna.  In IBM, Judge Reyna joined Judge Hughes’ opinion siding with the defendant.  In Weisner, Judge Reyna joined Judge Stoll’s opinion siding with the patentee.

Read my post on Weisner: Dennis Crouch, Distinguishing Collecting Information from Using Information, Patently-O (Oct 17, 2022).

To be clear all three judges agreed that most of the asserted claims were invalid.  The disagreement is over a subset that, according to Judge Stoll at least, the patentees made plausible and specific allegations sufficient to overcome a motion to dismiss.

Federal litigation begins with a plaintiff filing a complaint. In patent litigation, this is typically the patentee suing a defendant for patent infringement.  Under the rules, the complaint must include a “short and plain statement … showing” that the patentee is entitled to relief.  FRCP R. 8. In Iqbal and Twombly, the Supreme Court reinterpreted this rule to require nonconclusory allegations of specific facts that make the cause-of-action plausible.  If the complaint fails this standard, the defendant can seek what was traditionally known as a “demurrer” and is now called a “motion to dismiss for failure to state a claim upon which relief can be granted” under R. 12(b)(6) or “motion on the pleadings” under R. 12(c).

At the pleading stage, the court generally does not require the parties to provide admissible evidence to prove their factual contentions.  But, one trick with patent eligibility is that eligibility is a question of law rather than a question of fact and the courts can require parties to prove-up questions of law very early-on in the lawsuit.  This is especially true in the context of patent eligibility where, for the most part, the proof is intrinsic evidence such as the patent document itself and perhaps the prosecution history file.  But, eligibility can at times also require consideration of extrinsic evidence, such as whether aspects of the claimed invention were, in-fact, already generic concepts to a person of skill in the art.

IBM’s asserted US7187389 claims a method of displaying layered data on a map.  The image just above comes from IBM’s expert showing how the invention allows for ordering of the various layers, and for rearranging the layers as well and using non-spatial visual clues such as opacity to help show the layering.  On appeal, the judges all agreed that the claims are directed to the abstract idea of “organizing and displaying information.”  Although the particular method claimed may be novel, the court’s Alice Step-1 analysis explains that the claims do not recite any “improvement in computer technology” and instead relies upon functional steps such as “selecting” information; “identifying” information; “matching” information; “re-matching” information; “displaying” information; “rearranging” information; etc.

Such functional claim language, without more, is insufficient for patentability under our law.

Slip Op. At Alice Step-2, the majority inquired as to any specific inventive concept beyond the abstract idea itself (and found none).   Here, the court again focused on the functional limitations that it found to be insufficient: “simply not enough under step two.”

In partial dissent, Judge Stoll looked particularly to claims 9 and 13 that focused on rearrangement of the layers and particularly required “rearranging logic” and “re-matching logic.”  Judge Stoll then read the IBM complaint which explained how the problem of rearrangement of an overly cluttered display is not a simple task — especially once you begin dealing with a large number of objects.  Although expert testimony is not normally needed at the motion-to-dismiss stage, eligibility is different and district courts are regularly allowing expert declarations.  In this case, IBM actually attached its expert declaration to the amended complaint itself in order to preempt the eligibility challenge.  The expert testimony explained the difficulty of rearranging and re-matching data in a way that is comprehensible on a display.  The layers coupled with dynamic re-layering as claimed help solve this problem, according to the expert.

In her decision, Judge Stoll read IBM’s specific allegations as supported by their expert declaration and found them to make a plausible claim of a technical improvement sufficient satisfy Alice Step 2.  As such, Stoll would have reversed as to those claims, as she did in Weisner.

The second patent at issue is IBM’s US9158789 which claims a method of “coordinated geospatial” mapping.   The basic idea is that a user draws a particular area on a map, and then is given filtered results specific to their particular selection.  The figure above comes from IBM’s patent and shows how the user can draw a boundary (the triangle).  The list is then populated with relevant results from inside the boundary.  I used this with Zillow (the accused infringer) when looking for a house to buy in a specific area of Columbia Missouri.  A screenshot of my neighborhood below (no houses for sale though). 

Judge Hughes explains that the IBM claims are directed to the abstract idea of :

Responding to a user’s selection of a portion of a displayed map by simultaneously updating the map and a co-displayed list of items on the map.

Slip Op.  In making this Step-1 determination, the appellate court significantly overlapped the Step-2 analysis–holding that the claims are “result-oriented” rather than directed to technical improvements. Once it dis reaching Step-2, the court found that the claims contained no inventive concept: The invention “was not directed to a computer-specific problem and merely used well-understood, routine, or conventional technology (a general-purpose computer) to more quickly solve the problem of layering and displaying visual data.”  The court also read through the claim steps and found them to be functionally claimed–a loser under Step-1 and Step-2.

= = =

It is not clear why Judge Reyna sided with the patentee in Weisner but with the accused infringer in IBM.  My best stab at distinguishing the two holdings is as follows. From these two cases, we might divide the claims into three categories:

• Collecting and organizing data (these are the invalid claims in Weisner);
• Collecting; organizing; and displaying data (these are the invalid claims in IBM); and
• Collecting; organizing; and using data (these are the valid claims in Weisner).

Reading between Judge Reyna’s sub silento lines, methods of use that go beyond mere display represent the type of invention that is more likely to pass muster.

By Paul R. Gugliuzza, Professor of Law, Temple University Beasley School of Law

The Federal Circuit decides lots of mandamus petitions on transfer of venue under 28 U.S.C. § 1404(a). Most federal courts of appeals decide one or two per year, at most. The Federal Circuit, in 2021 alone, decided 30.

Yet the Federal Circuit rarely designates those decisions as precedent. Over 85% of the court’s venue mandamus decisions since 2008 have been nonprecedential. And, it’s worth noting, the Federal Circuit’s few precedential decisions are wildly unrepresentative: nearly 80% of them grant mandamus, even though, overall, petitioners succeed less than a third of the time.

In an order issued earlier this month, District Judge Alan Albright—who, despite recent changes in how cases are assigned to judges in his district, still has twice as many patent cases on his docket as any judge in the country—picked up this thread about the proliferation of nonprecedential Federal Circuit transfer decisions.

In Motion Offense v. Google, the patentee, who opposed transfer, argued that Judge Albright should follow Fifth Circuit case law on transfer of venue—and ignore the nonprecedential Federal Circuit decisions Google cited in its transfer motion. Judge Albright rejected the patentee’s argument, noting that he “cannot and does not overrule the reasoning of the Federal Circuit in a patent case.” (Motion Offense slip op. at 7.)

He continued: “Although the Federal Circuit issues unpublished, nonprecedential transfer opinions, the Federal Circuit frequently cites these opinions as though they precedentially interpret Fifth Circuit law.” (Id. (emphasis mine).)

Given how important transfer disputes are to patent litigation—and how often they occur—it’s worth asking whether Judge Albright is correct about how the Federal Circuit treats its nonprecedential transfer decisions.

Since 2008, the Federal Circuit has issued well over 100 nonprecedential transfer decisions, most of them coming out of two district courts in the Fifth Circuit: the Eastern and Western Districts of Texas. Those nonprecedential Federal Circuit decisions technically aren’t binding in future cases. Indeed, under the Federal Circuit’s unusual choice-of-law regime, the venue analysis is ostensibly governed by Fifth Circuit precedent, so even Federal Circuit decisions designated as precedential are binding only to the extent they’re interpreting Fifth Circuit law.

Yet the Federal Circuit does, in fact, often cite its own nonprecedential transfer decisions as if they were binding interpretations of Fifth Circuit law.

*          *          *

Drawing on a dataset that Jason Rantanen, Jonas Anderson, and I developed for a soon-to-be published article on the Federal Circuit’s mandamus practice, I looked at every Federal Circuit ruling on a mandamus petition challenging a decision by Judge Albright to deny transfer under § 1404(a)—38 rulings in total, all issued since June 2020. I then examined the citations in those rulings to prior Federal Circuit and Fifth Circuit decisions.

The bottom line: nearly a quarter of the citations were to nonprecedential Federal Circuit opinions.

Figure 1: Citations to Federal Circuit and Fifth Circuit Opinions in Federal Circuit Mandamus Decisions Reviewing § 1404(a) Transfer Denials by Judge Albright

This result holds across both (1) the precedential status of the citing decision and (2) whether the citing decision granted or denied mandamus. The only possible exception is Federal Circuit decisions denying mandamus, which tend to be quite short and light on citations as whole, including citations to nonprecedential Federal Circuit decisions.

Table 1: Citations in Federal Circuit Mandamus Decisions That Are Designated as Precedential (n=4)

Table 2: Citations in Federal Circuit Mandamus Decisions That Are Designated as Nonprecedential (n=34)

Table 3: Citations in Federal Circuit Decisions That Grant Mandamus (n=20)

Table 4: Citations in Federal Circuit Decisions That Deny Mandamus (n=18)

*          *          *

It’s not just the numbers but also the substance of the rulings that reflect the Federal Circuit’s heavy reliance on prior nonprecedential decisions.

For instance, in granting a mandamus petition filed by Apple, the Federal Circuit chided Judge Albright for “erroneously discount[ing]” the location of third-party witnesses in the transfer analysis. The Federal Circuit quoted from its prior nonprecedential opinion in In re HP for the proposition that “there [is] ‘no basis to discount’ third-party entities . . . ‘just because individual employees [i.e., witnesses] were not identified’” in the transfer motion. (Apple slip op. at 6.) The Federal Circuit’s opinion in Apple also relied on and quoted from two prior, nonprecedential decisions involving Google to reject Judge Albright’s treatment of the location of party witnesses in the transfer analysis. (Id. at 7, 10.)

Indeed, one of those Google opinions itself relied on the Federal Circuit’s prior nonprecedential decision in In re TracFone in granting transfer, writing that “[t]his case fits squarely within that line of precedent”—the “line of precedent” consisting of two cases: the Federal Circuit’s precedential opinion in another dispute involving Apple, In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020), and the nonprecedential decision in TracFone. (Google slip op. at 10.)

Similarly, in granting mandamus in In re Juniper Networks—a precedential decision—the Federal Circuit cited its prior nonprecedential opinion in In re Hulu five times, concluding that “this case is a very close cousin of our recent decisions in Samsung [precedential] and Hulu [nonprecedential], and the disposition of this case is largely dictated by the disposition of those cases.” (Juniper slip op. at 14 (emphasis mine).)

Perhaps the most stunning treatment of nonprecedential mandamus decisions by the Federal Circuit is In re Pandora Media, which actually contains more citations to nonprecedential Federal Circuit rulings than to precedential Federal Circuit rulings. The Federal Circuit’s determination that Judge Albright erred by disregarding the subpoena power of the proposed transferee court was based entirely on three nonprecedential opinions: a 2014 case involving Apple, the Hulu case mentioned above, and a 2018 case involving HP. (Pandora slip op. at 6.)

The Federal Circuit in Pandora also leaned on the nonprecedential opinions in TracFone and Google (both discussed above) in criticizing how Judge Albright analyzed considerations about convenience for potential witnesses, noting that “we held in TracFone and Google that the litigation should be conducted where more witnesses could testify without leaving their homes or their regular places of business.” (Pandora slip op. at 12 (emphasis mine).)

*          *          *

It’s tempting to brush off the Federal Circuit’s use of nonprecedential decisions to justify its venue mandamus rulings. Venue mandamus is a niche issue, brought to prominence by a semi-specialized appellate court that is fighting a problem of court competition somewhat unique to patent litigation. And sometimes the Federal Circuit discusses nonprecedential decisions because it was the parties who cited them in the first place, creating a bit of a chicken-or-egg dynamic.

Yet the court’s own rules are clear about how it’s supposed to treat nonprecedential decisions. Federal Circuit Rule 32.1(d) states, in relevant part:

The court may refer to a nonprecedential or unpublished disposition in an opinion or order and may look to a nonprecedential or unpublished disposition for guidance or persuasive reasoning but will not give one of its own nonprecedential dispositions the effect of binding precedent.

This rule makes plain that nonprecedential venue mandamus rulings are not binding law. But the Federal Circuit arguably treated them as such in cases like Google, Pandora, and many others.

Viewed in that light, Judge Albright’s frustration is understandable: how can he make transfer decisions that are consistent with Federal Circuit law when it’s impossible to tell precisely what that law is?

*          *          *

We live in a time of declining public trust in government institutions and skepticism of the rule of law. Though transfer disputes in patent litigation might not capture the public’s attention like Supreme Court cases about guns, abortion, or voting rights, the Federal Circuit’s unprincipled use of nonprecedential opinions is precisely the sort of everyday lawlessness that, over the long term, can strain trust in the courts.

*          *          *

A few methodological notes and caveats:

• In calculating the numbers reported above, I counted only citations within the analytical portion of the Federal Circuit’s ruling, and only in the portion of the court’s analysis addressing the § 1404(a) issue specifically.
• I ignored citations in “citing” or “quoting” parentheticals.
• I hand counted the citations, so it’s possible I missed or misclassified a small number of them. But the numbers are sufficiently large (545 relevant citations across 38 decisions) that a few errors, if they exist, wouldn’t affect the overall results much.
• David Hricik wrote for this blog about how, in an earlier version of the Motion Offense order, Judge Albright claimed he’d have denied transfer under Fifth Circuit venue law but was compelled to grant transfer under Federal Circuit law. That claim remains in the amended order mentioned above, though Judge Albright altered the text slightly, writing: “The Court’s decision turns on whether it should apply traditional Fifth Circuit transfer law or apply the Federal Circuit’s interpretations of Fifth Circuit transfer law. This Court cannot ignore or overrule cases from the Federal Circuit. Only because of those Federal Circuit cases, this Court GRANTS Defendant’s Motion to Transfer.” (Motion Offense slip op. at 1. (first emphasis mine))

by Dennis Crouch

I’m always excited to read a decision that splits hairs–finding some claims in a patent valid and others invalid.  My hope is that the explanation will really get to the crux of the issues and help me to better understand how the law works. I’m often disappointed, but the Federal Circuit’s newest decision in Weisner v. Google LLC, — F.4th — (Fed. Cir. 2022) does offer some good clues.  The basic outcome here: Weisner’s claims directed toward collecting information are abstract ideas; those directed toward using the information are patent eligible.  This outcome is consistent with what we are seeing in biotech as well: diagnostics get a thumbs down; therapeutics get a thumbs up.

Weisner sued Google for patent infringement back in 2020, asserting infringement of a family of four patents. U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911.  But, Google won the case fairly quickly on a R.12(b)(6) motion to dismiss with a holding from the district court that the asserted claims are ineligible under 35 U.S.C. § 101 (abstract ideas).  On appeal, a divided Federal Circuit has reversed-in-part, holding that some of the claims are patent eligible because they implement “a specific solution to a problem rooted in computer technology.”  Alice Step 2.

Judge Stoll wrote the majority opinion joined by Judge Reyna. Judge Hughes dissented, arguing that all the claims are invalid.

Weisner’s four patents are all part of the same family and all relate to ways of recording a person’s physical location history in ways that correspond to certain transactions. In the image (Fig.3 above), you can see the dude interacting with a Macy’s story device. Dude’s phone is configured to record the transaction along with the location history and push it to the cloud.  Dude is doing something similar at Benson’s (Fig.4 below), but in that one he is entering the transaction details manually since Benson’s is a Brooklyn institution and isn’t high-tech like Macy’s.

The Federal Circuit divided the claims into two categories:

• Claim Set A: Accumulating location histories for later use.
• Claim Set B: Accumulating the location history and also using hose histories to improve search results (e.g., give different search results if someone has been to a Brooklyn Benson’s before).

In the appeal, the Federal Circuit agreed that all of the claims fail Alice step 1. In particular, the court found that they were all directed to the unpatentable idea of “collecting information on a user’s movements and location history and electronically recording that data.”  Essentially, this is an electronic travel log that is effectively the same as what humans have been doing for all of history.  As the district court wrote: “Humans have consistently kept records of a person’s location and travel in the form of travel logs, diaries, journals, and calendars, which compile information such as time and location.” Weisner v. Google LLC, 551 F. Supp. 3d 334 (S.D.N.Y. 2021).  Weisner argued that the claims were limited to keeping travel history of members only — a feature that improves data integrity.  On appeal though, the Federal Circuit rejected this claim as “attorney argument, unlinked to the complaint or the patent claims or specifications.”  Even though eligibility is a question of law, it must still be based upon something more than simply attorney argument.

At step 2, the court also agreed that Claim Set A was not salvageable because the recited innovations are all merely generically claimed components.

But, Claim Set B is different. First, because Set B adds the search results uses, the Federal Circuit found it to be a “much closer question” as to whether they are directed to an abstract idea.  In the end though the court concluded that the claims are directed to an abstract idea at Alice Step 1.  I note here that the appellate court did not use any real analysis to decide this issue other than seemingly attorney judgely  argument.  Perhaps the court should have checked the prior portion of this very opinion where it discounted mere attorney argument on the same topic.

At Alice Step 2, the court concluded that the claims recite a specific implementation that – at least at this stage – should have survived a motion to dismiss because they “plausibly capture an inventive concept.  Here, the court notes that the inventive concept comes from tying searches to a third party “reference individual” whose location history is similar to the party doing an internet search. “The system then prioritizes search results that the reference individual has visited.”  In its decision, the Federal Circuit explained that this linkage is more than simply “improving web search using location history.” Rather, it is a specific implementation of that concept.

Judge Hughes wrote in dissent that the claimed search improvements are just like any old search with the addition of new searchable data — location history.  The Stoll majority responds in a footnote that Judge Hughes opinion “misses the point” by discounting the importance of prioritizing travel histories in the search.  As I mentioned in the intro, this outcome fits a standard approach that we are seeing in eligibility cases — it is much easier to protect methods of using information than it is to protect methods of collecting information.  In the use-case, the information itself combined with some use will regularly be seen as an inventive concept.  On the other hand, the courts have been less willing to say that collecting information is patent eligible.

= = = =

The patents here are co-owned by the inventors, Sholem Weisner and Schmuel Nemanov.   Weisner wanted to sue Google, but Nemanov refused.   Weisner went ahead and sued Google and also joined Namanov as an involuntary party under FRCP 19(a).  See, AsymmetRx, Inv. v. Biocare Med., 582 F.3d 1314, 1322 (Fed. Cir. 2009)(“A patentee that does not voluntarily join an action prosecuted by its exclusive licensee can be joined as a defendant….”).   The agreement between the two parties is a bit interesting. Weisner owns 78% of the rights, and the parties agreed that he would control exploitation of the patent “and will not be undercut by a minority owner.” WeisnerNemanovAgreement. The two battled these issues in a parallel lawsuit in NY State Court. WEISNER, SHOLEM vs. NEMANOV, SHMUEL, Docket No. 502269/2020 (N.Y. Sup Ct. Jan 29, 2020).

by Dennis Crouch

On Oct 14, the Supreme Court met in conference to discuss pending petitions, including two patent cases, both of which remain pending.

Relist on Written Description: The first is the big biotech full-scope written description case of Juno v. Kite.  A jury awarded $1.2 billion in damages, but the Federal Circuit found the claims invalid.  This is the third conference where the case was considered, and for a third time the court has decided to put-off its decision and instead relist the petition for a later conference.  Although the Juno petition remains alive, its odds of being granted are going down (according to historic relisting numbers).

In Ariad, the Federal Circuit definitively held that Enablement and Written Description are two separate and distinct doctrines, but the Supreme Court has not since offered its remarks.  Juno’s petition asks for the court to compare the statutory language of 112(a) against the Federal Circuit’s requirement of showing “possession [of] the full scope of the claimed invention” including all “known and unknown” variations of each component?

CVSG on Eligibility: In the patent eligibility case of Tropp v. Travel Sentry, the Supreme Court asked for the Solicitor General to provide the Government’s views on eligibility. Tropp’s petition asks “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible.” U.S. Patent Nos. 7,021,537 and 7,036,728.  The SG has already been requested to file an eligibility brief in Interactive Wearables, LLC v. Polar Electro Oy.   That petition asks identical questions to those proposed in American Axle as well as one focusing on the overlap between sections 112 and 101.  “Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?”  In its May 2022 filing, the Biden SG’s office supported granting certiorari in American Axle, arguing that Alice Corp. continued to create “uncertainty and confusion in the lower courts.”  This was the same conclusion drawn by President Trump’s SG in Hikma v. Vanda.

1. A method of improving airline luggage inspection by a luggage screening entity, comprising:

making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,

marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,

the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and

the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.

Christopher Rudy filed his fishing hook patent application back in 1988 with a file-wrapper-continuation in 1989.  At the time he was already a patent attorney and so worked his own case.  But, the USPTO offered some resistance.  The BPAI/PTAB issued three different opinions on record, and the Federal Circuit also issued a 2020 decision holding that some of the claims were directed to the unpatentable abstract of “selecting a fishing hook based upon observed water conditions.”  In re Rudy, 956 F.3d 1379 (Fed. Cir. 2020). Back on remand, Rudy cancelled the offending claims and finally received his U.S. Patent No. 11,406,092.  As a pre-GATT patent, the term should last for 17-years from issuance.  That makes a pretty good run going forward: the patent will issue 51 years after its original filing date.  This is the first pre-GATT patent issued since 2020.  Over the past five years, the Office has issued about 25 (none to Gil Hyatt). A number of these were held in abeyance due to DOD Secrecy Orders. As far as I know, the only one being litigated is 9,674,560 owned by Personalized Media Communications.

= = =

Rudy’s basic discovery was that fishing-lure selection is not a one-size-fits-all situation.  He particularly noted that factors such as water-clarity and light intensity at fishing depth will impact lure color selection.  The patent includes a nice table:

The recently issued patent includes a number of apparatus and method claims.  My favorite is No. 16, which claims a surefire method for catching a fish.

16. A method to catch fish, comprising steps of

(1) observing clarity of water to be fished to determine whether the water is clear, stained or muddy,

(2) measuring light transmittance at a depth in the water where a fishing hook is to be placed, and then

(3) selecting a color of the fishing hook to be used by matching the observed water conditions ((1) and (2)) with a color [from the table above]

then attaching the selected hook to a fishing line,

then placing the attached, selected hook in the depth in the water where fishing is to take place,

and then catching the fish with the attached, selected hook,

wherein the fishing hook used is disintegrated from but is otherwise connectable to a fishing lure or other tackle and has a shaft portion, a bend portion connected to the shaft portion, and a barb or point at the terminus of the bend, and wherein the fishing hook used is made of a suitable material, which permits transmittance of light therethrough and is colored.

USPTO Director Kathi Vidal is beginning to move forward with various initiatives that I’ll discuss in upcoming posts. Most recently though, the Office issued a Request for Comments seeking public input on mechanisms for “bolstering the robustness and reliability of patents.” Comments due January 3, 2023 via Federal eRulemaking Portal at regulations.gov (docket: PTO-P-2022-0025).  The document includes a commitment from the USPTO to increase patent examiner time, training and resources.

One question asked in the RFC is whether the USPTO should require patent applicants to link claim limitations to particular disclosures in the originally filed specification.  That linkage would facilitate examiner understanding of the invention as well as considerations such as enablement and written description.  In some cases cases, the office could automatically demand more detailed analysis — such as for genus; markush; or functional claim limitations.

Lots more in there: read it here.