Patent – Patently-O https://patentlyo.com America's leading patent law blog Thu, 15 Nov 2018 18:22:37 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.8 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Protecting your Flavor https://patentlyo.com/patent/2018/11/protecting-your-flavor.html https://patentlyo.com/patent/2018/11/protecting-your-flavor.html#comments Thu, 15 Nov 2018 10:35:21 +0000 https://patentlyo.com/?p=25400 Protecting your Flavor

Levola Hengelo BV v. Smilde Foods BV (Court of Appeal, Arnhem-Leeuwarden, Netherlands 2018) involves a spreadable dip known as ‘Heksenkaas’ or Witch’s Cheese.  In particular, the claimant argued that it owned a copyright in the taste of its dip.

We have copyright for protection for works that excite our other senses — works with a certain look, feel, or sound. Why not taste and odor?  We have literary and audiovisual works — why not flavorful works?

As you might imagine, the court said no — taste cannot be protected under European copyright. “The taste of a food product cannot be likened to any ‘works’ protected by that treaty and, to my knowledge, no other provision of international law provides for the copyright protection of the taste of a food product. . . . I consider that the taste of a food product does not constitute a ‘work’ within the meaning of Directive 2001/29.”

Update: The Netherlands Court of Appeals case was decided earlier this year, the EU Court of Justice has now provided its own answer to the question – agreeing with the Court of Appeals and holding that

Directive 2001/29 must be interpreted as precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

Continue reading Protecting your Flavor at Patently-O.

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Protecting your Flavor

Levola Hengelo BV v. Smilde Foods BV (Court of Appeal, Arnhem-Leeuwarden, Netherlands 2018) involves a spreadable dip known as ‘Heksenkaas’ or Witch’s Cheese.  In particular, the claimant argued that it owned a copyright in the taste of its dip.

We have copyright for protection for works that excite our other senses — works with a certain look, feel, or sound. Why not taste and odor?  We have literary and audiovisual works — why not flavorful works?

As you might imagine, the court said no — taste cannot be protected under European copyright. “The taste of a food product cannot be likened to any ‘works’ protected by that treaty and, to my knowledge, no other provision of international law provides for the copyright protection of the taste of a food product. . . . I consider that the taste of a food product does not constitute a ‘work’ within the meaning of Directive 2001/29.”

Update: The Netherlands Court of Appeals case was decided earlier this year, the EU Court of Justice has now provided its own answer to the question – agreeing with the Court of Appeals and holding that

Directive 2001/29 must be interpreted as precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

ECLI:EU:C:2018:899.

 

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Get that Case Out of Here! Federal Circuit Continues to Allow Mandamus Actions to Cure Improper Venue https://patentlyo.com/patent/2018/11/continues-mandamus-improper.html https://patentlyo.com/patent/2018/11/continues-mandamus-improper.html#comments Wed, 14 Nov 2018 16:34:44 +0000 https://patentlyo.com/?p=25397 by Dennis Crouch

In re OATH HOLDINGS, INC. (Formerly Known as Yahoo Holdings, Inc.) (Fed. Cir. 2018)

The outcome of this case is simple: Oath doesn’t have to defend a patent infringement lawsuit in E.D.N.Y. because that location is an “improper venue.”

Under TC Heartland (2017), patent owners in patent cases now have a fairly limited set of options for filing infringement actions.  In particular, a lawsuit against a domestic defendant must be filed either:

  1. Where the defendant resides (i.e., its state of incorporation)
  2. Where the defendant has a regular and established place of business (i.e., physical building).

TC Heartland falls directly in line with the prior supreme court decision in Fourco Glass (1957).  However, during the interim, the Federal Circuit had expanded its definition of proper venue to include any court that has personal jurisdiction over the defendant.  Thus, for someone who studies only Supreme Court law, TC Heartland was a continuation of an unchanged law. On the other hand, the case was a major shift for those of us whose gaze is directed to the Federal Circuit (and practical district court litigation).

Continue reading Get that Case Out of Here! Federal Circuit Continues to Allow Mandamus Actions to Cure Improper Venue at Patently-O.

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by Dennis Crouch

In re OATH HOLDINGS, INC. (Formerly Known as Yahoo Holdings, Inc.) (Fed. Cir. 2018)

Oath, Inc. tagline blue transparent.svg

The outcome of this case is simple: Oath doesn’t have to defend a patent infringement lawsuit in E.D.N.Y. because that location is an “improper venue.”

Under TC Heartland (2017), patent owners in patent cases now have a fairly limited set of options for filing infringement actions.  In particular, a lawsuit against a domestic defendant must be filed either:

  1. Where the defendant resides (i.e., its state of incorporation)
  2. Where the defendant has a regular and established place of business (i.e., physical building).

TC Heartland falls directly in line with the prior supreme court decision in Fourco Glass (1957).  However, during the interim, the Federal Circuit had expanded its definition of proper venue to include any court that has personal jurisdiction over the defendant.  Thus, for someone who studies only Supreme Court law, TC Heartland was a continuation of an unchanged law. On the other hand, the case was a major shift for those of us whose gaze is directed to the Federal Circuit (and practical district court litigation). The Federal Circuit has identified the latter frame of reference as appropriate — holding that TC Heartland was a change in the law.  In re Micron Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017).  The Micron decision was important because it prompted district courts to revisit the venue question even if the issue was seemingly waived.

In its decision here, the Federal Circuit holds that Oath/Yahoo should not be considered to have waived the venue issue because it promptly raised the issue immediately following TC Heartland.

There is no dispute that venue in the Eastern District of New York in this case is contrary to § 1400(b). The only question is whether Oath waived or forfeited the right to have the case dismissed on that basis by waiting too long to invoke it. The district court answered yes to that question. The district court’s principal ground for doing so, however, rests on its failure to follow our directly controlling Micron precedent addressing the issue of waiver under Rule 12(g)(2) and (h)(1) as applied to TC Heartland’s rejection of this court’s earlier, longstanding VE Holding precedent. . . .

Micron answers the entire question of waiver under Rule 12(g)(2) and (h)(1) for purposes of this case: there was no such waiver. In what is nearly the only basis for the district court’s denial of Oath’s venue motion, the district court clearly erred in not following the Micron precedent giving that answer. That error warrants mandamus relief.

On remand, the district court is ordered to either dismiss the case or transfer it to a proper venue.

= = = =

One tricky aspect of this decision involves the question of “binding precedent.” The Federal Circuit’s patent law precedent is binding on all of the district courts with regard to patent law questions.  However, the Federal Circuit relies upon the law of the various regional circuit courts of appeals when deciding non-patent issues such as  general civil procedure.  Here, although the question of proper venue is a “patent law” question, the patentee argued that the waiver analysis of Micron was an interpretation of First Circuit law and didn’t bind the E.D.N.Y. judge sitting in the Second Circuit.  On appeal, the Federal Circuit rejected that analysis holding that “issues of waiver or forfeiture of patent-venue rights under § 1400(b) and § 1406(a) are likewise governed by our [Federal Circuit] law.” Thus, Micron controls all the district courts.

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Inventors Can Challenge their Own Patents – But Only at the PTAB https://patentlyo.com/patent/2018/11/inventors-challenge-patents.html https://patentlyo.com/patent/2018/11/inventors-challenge-patents.html#comments Wed, 14 Nov 2018 01:14:58 +0000 https://patentlyo.com/?p=25393 by Dennis Crouch

The traditional rule of assignor estoppel prevents prior owners of a patent from later challenging the validity of the patent.  The doctrine stems from old property law cases and is based upon the idea is that the assignor “should not be permitted to sell something and later to assert that what was sold is worthless, all to the detriment of the assignee.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988); see Westinghouse Elec. & Mfg. Co. v. Formica Ins. Co., 266 U.S. 342 (1924). Of course, most ‘assignors’ are inventor-employees who assign away rights well before even conceiving of their inventions.  In his 2016 article, Mark Lemley argued that:

[T]he doctrine is out of touch with the realities of both modern inventing and modern patent law, and that it interferes with both the invalidation of bad patents and the goal of employee mobility.

Mark A. Lemley, Rethinking Assignor Estoppel, 54 Hous. L. Rev. 513 (2016).

In Arista Networks, Inc. v. Cisco Sys., Inc., 2017-1525, 2018 WL 5851331 (Fed. Cir.

Continue reading Inventors Can Challenge their Own Patents – But Only at the PTAB at Patently-O.

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by Dennis Crouch

The traditional rule of assignor estoppel prevents prior owners of a patent from later challenging the validity of the patent.  The doctrine stems from old property law cases and is based upon the idea is that the assignor “should not be permitted to sell something and later to assert that what was sold is worthless, all to the detriment of the assignee.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988); see Westinghouse Elec. & Mfg. Co. v. Formica Ins. Co., 266 U.S. 342 (1924). Of course, most ‘assignors’ are inventor-employees who assign away rights well before even conceiving of their inventions.  In his 2016 article, Mark Lemley argued that:

[T]he doctrine is out of touch with the realities of both modern inventing and modern patent law, and that it interferes with both the invalidation of bad patents and the goal of employee mobility.

Mark A. Lemley, Rethinking Assignor Estoppel, 54 Hous. L. Rev. 513 (2016).

In Arista Networks, Inc. v. Cisco Sys., Inc., 2017-1525, 2018 WL 5851331 (Fed. Cir. Nov. 9, 2018), the Federal Circuit was faced with the question of whether assignor estoppel applies to prevent an assignor from later challenging a patent in an inter partes review proceeding. In that framework, the court sided with Lemley and agreed to rethink the doctrine — holding that an inventor is not estopped from challenging his assigned patent in an IPR proceeding.

In this case, the inventor-professor-billionaire David Cheriton was formerly employed as Cisco’s chief product architect.  After inventing an improved “logging module,” Cheriton assigned rights to Cisco who patented the invention. The assignment included several promises , including a promise to “do everything possible to aid said assignee, their successors, assigns and nominees, at their request and expense, in obtaining and enforcing patents for said invention in all countries.”  Cheriton later left Cisco and founded Arista.  At that point, Cisco turned around and sued Arista for infringement.  Arista responded with the IPR challenge.

On appeal, the Federal Circuit began with a consideration of the common law approach — “that assignor estoppel is a well-established common-law doctrine that should be presumed to apply absent a statutory indication to the contrary.”  Although the AIA obviously did not mention the doctrine, the appellate court found that the law had an “evident” statutory purpose that is contrary to the doctrine. In particular, the court focuses on Section 311(a) that states:

(a) In General.— Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.

In reading the statute, the court decided that “plain language of this statutory provision is unambiguous. . . The plain language of § 311(a) demonstrates that an assignor, who is no longer the owner of a patent, may file an IPR petition as to that patent. . . . In sum, we conclude that § 311(a), by allowing “a person who is not the owner of a patent” to file an IPR, unambiguously dictates that assignor estoppel has no place in IPR proceedings.”

The legal analysis by the court could fairly be called low quality because it does not content with the many other areas of patent law (and other areas of law) that allow for departures from the statute in order to allow for traditional common law doctrines.  Take for instance, Section 282(b) that provides invalidity as a defense in “any” infringement lawsuit — of course as discussed above the court has held that 282(b) does not eliminate assignor estoppel.

I will note that the appellate panel questioned the ongoing viability of assignor estoppel as it applies in any patent case, but decided to narrowly focus its decision here on IPR proceedings rather than patent law cases as a whole.

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No Costs to Government when it Intervenes in IPR Proceedings https://patentlyo.com/patent/2018/11/government-intervenes-proceedings.html https://patentlyo.com/patent/2018/11/government-intervenes-proceedings.html#comments Mon, 12 Nov 2018 18:22:09 +0000 https://patentlyo.com/?p=25345 by Dennis Crouch

LG Electronics v. Iancu (Fed. Cir. 2018) [ORDER]

In a R.36 Affirmance, the Federal Circuit upheld the PTAB obviousness judgment. The USPTO promptly filed a request for a bill of costs for $387.60.  The Federal Circuit has now rejected that request since the PTO was an intervenor, not a party.

LG Electronics (LG) sued Advanced Micro Devices, Inc. (AMD) for infringement back in 2014 and AMD responded with the filing of this inter partes review (IPR) petition. U.S. Patent 7,664,971. The PTAB found all the challenged claims obvious and LGE appealed, but AMD did not defend the case on appeal since the parties settled the underlying infringement dispute.  At that point, the PTO “exercised its right to intervene” under 35 U.S.C. 143.

The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.

After affirming on the merits, the PTO asked for its costs Federal Circuit Rule 39.  Under the rule, costs just include copying, service of process, clerk fees, etc.

Continue reading No Costs to Government when it Intervenes in IPR Proceedings at Patently-O.

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by Dennis Crouch

LG Electronics v. Iancu (Fed. Cir. 2018) [ORDER]

In a R.36 Affirmance, the Federal Circuit upheld the PTAB obviousness judgment. The USPTO promptly filed a request for a bill of costs for $387.60.  The Federal Circuit has now rejected that request since the PTO was an intervenor, not a party.

LG Electronics (LG) sued Advanced Micro Devices, Inc. (AMD) for infringement back in 2014 and AMD responded with the filing of this inter partes review (IPR) petition. U.S. Patent 7,664,971. The PTAB found all the challenged claims obvious and LGE appealed, but AMD did not defend the case on appeal since the parties settled the underlying infringement dispute.  At that point, the PTO “exercised its right to intervene” under 35 U.S.C. 143.

The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.

After affirming on the merits, the PTO asked for its costs Federal Circuit Rule 39.  Under the rule, costs just include copying, service of process, clerk fees, etc. — and here added up to $388.

The Federal Circuit rule states that “if a judgment is affirmed, costs are taxed against the appellant.” However, the rule includes a caveat when costs are “for or against” the US. In that case, costs are assessed “only if authorized by law.”  28 U.S.C. § 2412(a) allows for costs when the Government is a party to litigation.  Here, however, the Government was an intervenor.

This appeal was not brought by or against the United States. It was a dispute arising between two private parties, AMD and LG. The PTO was an intervenor, which, although having a right to intervene, see 35 U.S.C. § 143, had no obligation to intervene. No one asked it to intervene. It was in effect a volunteer. Section 2412(a) is therefore not applicable to this case.

The court found no other particular statute authorizing costs to the government — and thus the court “decline[d] to award costs in these circumstances.”

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Interesting petition https://patentlyo.com/patent/2018/11/interesting-petition.html https://patentlyo.com/patent/2018/11/interesting-petition.html#comments Sat, 10 Nov 2018 17:14:20 +0000 https://patentlyo.com/?p=25374 Havilland v. FX Networks LLC, Supreme Ct. Docket No. 18-453

Olivia de Havilland is a 102-year-old, two-time Academy Award winning best actress, who played Melanie Hamilton in the movie classic, “Gone with the Wind.” Of particular relevance here, she is also a woman who lives her life devoted to high moral and ethical standards.

FX Networks, LLC and Pacific 2.1 Entertainment Group, Inc. appropriated the literal name and identity of Olivia de Havilland, without consent or compensation, to be the narrator of a mini-series, “Feud: Bette and Joan,” devoted to the theme of women actors catfighting, using vulgar language, and backstabbing one another. FX, claiming artistic license, admits that many of the statements and vulgar language attributed to de Havilland were fabricated and knowingly untrue.

The California Court of Appeal reversed the trial judge’s denial of a Motion to Strike, and dismissed Miss de Havilland’s claims, based on a First Amendment defense for docudramas.

The Question for the Court is: Are reckless or knowing false statements about a living public figure, published in docudrama format, entitled to absolute First Amendment protection from claims based on the victim’s statutory and common law causes of action for defamation and right of publicity, so as to justify dismissal at the pleading stage?

Continue reading Interesting petition at Patently-O.

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Havilland v. FX Networks LLC, Supreme Ct. Docket No. 18-453

Olivia de Havilland is a 102-year-old, two-time Academy Award winning best actress, who played Melanie Hamilton in the movie classic, “Gone with the Wind.” Of particular relevance here, she is also a woman who lives her life devoted to high moral and ethical standards.

FX Networks, LLC and Pacific 2.1 Entertainment Group, Inc. appropriated the literal name and identity of Olivia de Havilland, without consent or compensation, to be the narrator of a mini-series, “Feud: Bette and Joan,” devoted to the theme of women actors catfighting, using vulgar language, and backstabbing one another. FX, claiming artistic license, admits that many of the statements and vulgar language attributed to de Havilland were fabricated and knowingly untrue.

The California Court of Appeal reversed the trial judge’s denial of a Motion to Strike, and dismissed Miss de Havilland’s claims, based on a First Amendment defense for docudramas.

The Question for the Court is: Are reckless or knowing false statements about a living public figure, published in docudrama format, entitled to absolute First Amendment protection from claims based on the victim’s statutory and common law causes of action for defamation and right of publicity, so as to justify dismissal at the pleading stage?

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Infringing?: Offers (made in the US) to Sell (abroad) https://patentlyo.com/patent/2018/11/infringing-offers-abroad.html https://patentlyo.com/patent/2018/11/infringing-offers-abroad.html#comments Fri, 09 Nov 2018 17:01:22 +0000 https://patentlyo.com/?p=25371 Infringing?: Offers (made in the US) to Sell (abroad)

by Dennis Crouch

Texas Advanced Optoelectronic Solutions, Inc., (TAOS) v. Renesas Electronics America, Inc., fka Intersil Corporation (Supreme Court 2018)

This case focuses on TAOS’ patented photodiode array ambient light sensor that is now widely used in smartphones to adjust display brightness.  U.S. Patent No. 6,596,981.  Following failed merger negotiations with TAOS, Intersil developed a competing product and Apple signed-on as a client. However, a jury found Intersil liable for patent infringement, trade secret misappropriation, breach of contract, and tortious interference with prospective business (finding that Intersil had improperly used confidential information from the merger talks).

A tough aspect of the patent case against Intersil itself is that 98.8% of its products are manufactured, packaged, and tested abroad — then delivered to customers abroad. U.S. patent law is territorial and almost none of the products were made, used, or sold “within the United States.” 35 U.S.C. 271(a).  In its new petition for writ of certiorari, TAOS argues that the infringer should still be liable becase it made “offers to sell” the invention within the US.

Here, the evidence shows that an offer was made in California by Intersil to sell the accused sensors to Apple at $.035 each. 

Continue reading Infringing?: Offers (made in the US) to Sell (abroad) at Patently-O.

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Infringing?: Offers (made in the US) to Sell (abroad)

by Dennis Crouch

Texas Advanced Optoelectronic Solutions, Inc., (TAOS) v. Renesas Electronics America, Inc., fka Intersil Corporation (Supreme Court 2018)

This case focuses on TAOS’ patented photodiode array ambient light sensor that is now widely used in smartphones to adjust display brightness.  U.S. Patent No. 6,596,981.  Following failed merger negotiations with TAOS, Intersil developed a competing product and Apple signed-on as a client. However, a jury found Intersil liable for patent infringement, trade secret misappropriation, breach of contract, and tortious interference with prospective business (finding that Intersil had improperly used confidential information from the merger talks).

A tough aspect of the patent case against Intersil itself is that 98.8% of its products are manufactured, packaged, and tested abroad — then delivered to customers abroad. U.S. patent law is territorial and almost none of the products were made, used, or sold “within the United States.” 35 U.S.C. 271(a).  In its new petition for writ of certiorari, TAOS argues that the infringer should still be liable becase it made “offers to sell” the invention within the US.

Here, the evidence shows that an offer was made in California by Intersil to sell the accused sensors to Apple at $.035 each.  Although the offer was made in California, delivery was set outside the U.S.  The delivery location is critical under the leading Federal Circuit decision in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010).  In Transocean, the court held that “offers to sell . . . within the United States” are limited to offers where – if accepted – the sale will occur in the United States.   Now TAOS raises the following question to the Supreme Court:

Whether an “offer[] to sell” occurs where the offer is actually made or where the offer contemplates that the proposed sale will take place.

[Petition].  Linguistically — the basic question is whether “within the United States” clause modifies “offers” or “sell” (or perhaps both). In the context of the statute’s list of bad actions it is pretty clear that the focal point is “offers.”

[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

35 U.S.C. 271(a). There is really no Congressional guidance on what was intended when the law was implemented as part of the Uruguay Round Agreements Act (1994).

In Transocean, the offer was made in Scandinavia to but for delivery in the US — the court held this as infringing because the sale was going to take place in the US. “In order for an offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States. The focus should not be on the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.”  Id. The Supreme Court called for views of the Solicitor General in that case, but the parties settled prior to resolution.   Now the court has another chance to consider the issues.

= = = =

The importance of this case is much greater following the Supreme Court’s recent decision in WesternGeco LLC v. ION Geophysical Corp.  In that case, the court indicated that foreign consequential damages are available to compensate for U.S. acts of infringement.   Here, that could mean that TAOS could collect damages for the foreign made products that stemmed from the US originated offer.

= = = =

One way to look at this case is through a simple two-by-two table of activities showing the location of the offer as well as the location of the proposed sale.  Everyone agrees that box-1 is infringing where both the offer and eventual sale are in the US; we all also agree that box-4 is not infringing where neither the offer nor the eventual sale are in the US.  The debate is then over boxes 2 and 3.  In Transocean, the Federal Circuit held that box-3 is also infringing — focusing on the location of the eventual sale.  Here, the patentee is arguing that the statute focuses on the location of the offer and thus that boxes 1 and 2 are the actionable situations.  I can also conceive of a court saying that of the four, only box 1 is infringing or alternatively that 1, 2, and 3 are all infringing..

 

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IPO IP Vids https://patentlyo.com/patent/2018/11/ipo-ip-vids.html https://patentlyo.com/patent/2018/11/ipo-ip-vids.html#comments Fri, 09 Nov 2018 14:54:00 +0000 https://patentlyo.com/?p=25369 IPO holds an annual IP Video contest.  My favorite this year is from Rhys Kroehler who won in the 16-18 year old category. [See them all]

 

Continue reading IPO IP Vids at Patently-O.

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IPO holds an annual IP Video contest.  My favorite this year is from Rhys Kroehler who won in the 16-18 year old category. [See them all]

 

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Interpreting Claims — Claiming Elements from the Background Art https://patentlyo.com/patent/2018/11/interpreting-claiming-background.html https://patentlyo.com/patent/2018/11/interpreting-claiming-background.html#comments Thu, 08 Nov 2018 21:16:38 +0000 https://patentlyo.com/?p=25360 DISCLOSURE: Back in 2013/14 I talked with the attorneys for Cave Consulting about serving as an expert witness for the underlying district court litigation. I ended up not doing any work related to the case. – DC

by Dennis Crouch

Cave Consulting Group, LLC, v. OptumInsight, Inc. (Supreme Court 2018) [20181102114930196_Cave Consulting v. Optuminsight Inc. Petition for Writ]

This pending case before the Supreme Court focuses on fundamental questions of how to interpret patent claim scope. 

Cave Consulting’s U.S. Patent No. 7,739,126 covers a method of determining physician efficiency that includes, inter alia, a step of calculating a “weighted statistic” associated with various “episodes of care.”  The broader claims are not expressly limited to the particular statistic used, while the dependent claims require alternatively require “indirect standardization” (Claim 25) or “indirect standardization” (Claim 26) of the weighting.  To be clear, the specification spends substantial time focusing on indirect standardization in detail, whereas direct standardization is a method known in the prior art.

In its case against Optum (a subsidiary of UnitedHealthcare and my insurance provider), the patentee argued that Optum used the direct-standardization weighting as claimed and a jury found agreed with a $12 million damages award.

Continue reading Interpreting Claims — Claiming Elements from the Background Art at Patently-O.

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DISCLOSURE: Back in 2013/14 I talked with the attorneys for Cave Consulting about serving as an expert witness for the underlying district court litigation. I ended up not doing any work related to the case. – DC

by Dennis Crouch

Cave Consulting Group, LLC, v. OptumInsight, Inc. (Supreme Court 2018) [20181102114930196_Cave Consulting v. Optuminsight Inc. Petition for Writ]

This pending case before the Supreme Court focuses on fundamental questions of how to interpret patent claim scope. 

Cave Consulting’s U.S. Patent No. 7,739,126 covers a method of determining physician efficiency that includes, inter alia, a step of calculating a “weighted statistic” associated with various “episodes of care.”  The broader claims are not expressly limited to the particular statistic used, while the dependent claims require alternatively require “indirect standardization” (Claim 25) or “indirect standardization” (Claim 26) of the weighting.  To be clear, the specification spends substantial time focusing on indirect standardization in detail, whereas direct standardization is a method known in the prior art.

In its case against Optum (a subsidiary of UnitedHealthcare and my insurance provider), the patentee argued that Optum used the direct-standardization weighting as claimed and a jury found agreed with a $12 million damages award.

On appeal the Federal Circuit shifted claim construction and reversed — holding that the independent claims implicitly excluded direct-standardization weighting. In its holding the court relied upon its precedent in Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) in stating that claims should be construed to “tether the claims to what the specifications indicate the inventor actually invented.”

Optum had argued disclaimer, but could not point toward any “clear and unmistakable” disavowal of scope or lexicographical redefinition of the terms. Rather, the court simply found that the best construction of the claimed “weighted statistic” excluded the traditional direct-standardization weighting.

Cave does not identify, nor do we find, any indication in the ’126 patent’s description that its invention employs direct standardization, and, other than the dependent claims, Cave’s support for including direct standardization comes exclusively from the description of the prior art methods in the background section.

Although there might ordinarily be a claim differentiation argument, the court found it weak here because the aforementioned dependent claims had been added during prosecution.

[I]n view of the specification’s consistently limiting description, we conclude that these interpretive canons, despite the later-added dependent claims, cannot overcome the claim scope that is unambiguously prescribed by the specification.

Now Cave Consulting has petitioned the U.S. Supreme Court to hear the case with the following question presented:

May a court construe a patent claim in a way that contradicts its plain and ordinary meaning by relying on statements in the specification that do not constitute lexicography or disavowal?

Cave Consulting sets up the case as a debate over whether claims control the scope of the rights:

  • When there is a conflict between clear and unambiguous claim language and statements in the specification, the claim language wins. White v. Dunbar, 119 U.S. 47, 52 (1886)(“The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”)
  • Howe Mach. Co. v. Nat’l Needle Co., 134 U.S. 388, 394 (1890) (“Doubtless a claim is to be construed in connection with the explanation contained in the specification . . . but, since the inventor must particularly specify and point out [what] he claims as his own invention or discovery, the specification and drawings are usually looked at only for the purpose of better understanding the meaning of the claim, and certainly not for the purpose of changing it, and making it different from what it is.”);
  • Cimiotti Unhairing Co. v. Am. Fur Ref. Co., 198 U.S. 399, 410 (1905) (“In making his claim the inventor is at liberty to choose his own form of expression, and while the courts may construe the same in view of the specifications and the state of the art, they may not add to or detract from the claim.”);
  • Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510 (1917)(“It is to the claims of every patent, therefore, that we must turn when we are seeking to determine what the invention is . . . .”);
  • Smith v. Snow, 294 U.S. 1, 11 (1935) (“We may take it that, as the statute requires, the specifications just detailed show a way of using the inventor’s method, and that he conceived that particular way described was the best one. But he is not confined to that particular mode of use, since the claims of the patent, not its specifications, measure the invention.”);
  • Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 277 (1949) (refusing to narrow the unambiguous claim language based on the specification, noting that the Court has “frequently held that it is the claim which measures the grant to the patentee.”).

As you can see, this is an important area of jurisprudence that the Supreme Court has discussed on multiple occasions — increasing the odds of certiorari.

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Richard Brophy and Marc Vander Tuig of Armstrong Teasdale filed the petition on behalf of Cave Consulting.

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I’ll note here that it is cases like this that discourage patentees from including any background section at all.

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USPTO Updates https://patentlyo.com/patent/2018/11/uspto-updates.html https://patentlyo.com/patent/2018/11/uspto-updates.html#comments Thu, 08 Nov 2018 15:35:07 +0000 https://patentlyo.com/?p=25357 USPTO Updates

Continue reading USPTO Updates at Patently-O.

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USPTO Updates

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Whitaker on Patent Marketing https://patentlyo.com/patent/2018/11/whitaker-patent-marketing.html https://patentlyo.com/patent/2018/11/whitaker-patent-marketing.html#comments Thu, 08 Nov 2018 14:37:45 +0000 https://patentlyo.com/?p=25354 Whitaker on Patent Marketing

by Dennis Crouch

Following up on the patent experience of US Attorney General Matthew Whitaker.  Although not a patent attorney, Whitaker has been a board member of the now defunct invention promotion scam World Patent Marketing.  In 2017, the Federal Trade Commission (FTC) filed suit against the company, won a preliminary injunction against its ongoing business, and then a consent decree for $27 million in judgments and injunction against ongoing business.  (Apparently at least $24 million is gone and not being repaid.)

Gene Quinn has written extensively about invention marketing scams discussed the preliminary injunction on his IPWatchdog site.  Quinn explains:

“The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles. “Accordingly, the Court finds a preliminary injunction is necessary to maintain the status quo pending a trial on the merits.”

Perhaps most egregious, however, were the threats and intimidation World Patent Marketing directed toward complaining customers.

As a former Federal Prosecutor, Whitaker’s place on the Board lent the company a high level of credibility. For lending his name, Whitaker was paid only about $600 per month. 

Continue reading Whitaker on Patent Marketing at Patently-O.

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Whitaker on Patent Marketing

by Dennis Crouch

Following up on the patent experience of US Attorney General Matthew Whitaker.  Although not a patent attorney, Whitaker has been a board member of the now defunct invention promotion scam World Patent Marketing.  In 2017, the Federal Trade Commission (FTC) filed suit against the company, won a preliminary injunction against its ongoing business, and then a consent decree for $27 million in judgments and injunction against ongoing business.  (Apparently at least $24 million is gone and not being repaid.)

Gene Quinn has written extensively about invention marketing scams discussed the preliminary injunction on his IPWatchdog site.  Quinn explains:

“The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles. “Accordingly, the Court finds a preliminary injunction is necessary to maintain the status quo pending a trial on the merits.”

Perhaps most egregious, however, were the threats and intimidation World Patent Marketing directed toward complaining customers.

As a former Federal Prosecutor, Whitaker’s place on the Board lent the company a high level of credibility. For lending his name, Whitaker was paid only about $600 per month.  At the time, Whitaker was also managing director of his own small Iowa law firm and penned at least one letter toward a complaining customer:

Whitaker was not prosecuted by the FTC and was not named in either the preliminary injunction or the consent decree.  Unlike other board members, Whitaker has not returned the cash he received in the scheme and has made no public statement regarding his role or the scam.  My hope is that the AG will have learned from this experience, however his ongoing silence on the issue is troubling.

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