Patent – Patently-O https://patentlyo.com America's leading patent law blog Tue, 18 Sep 2018 14:11:55 +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 #tarriffed: IP at Core of Enhanced Chinese Tariff — WTO Action Pending in the Background https://patentlyo.com/patent/2018/09/tarriffed-enhanced-background.html https://patentlyo.com/patent/2018/09/tarriffed-enhanced-background.html#comments Tue, 18 Sep 2018 14:11:55 +0000 https://patentlyo.com/?p=24512 by Dennis Crouch

The White House is following through with its promise of adding a 10% tariff to $200 billion in goods imported into the US from China — set to begin on September 24, 2018.  On January 1, 2018, the tariffs are set to be raised to 25% on January 1, 2019. This is in addition to the 25% tariff applied earlier this summer on $50 billion in imports.  The President also issued statement that “if China takes retaliatory action against our farmers or other industries, we will immediately pursue phase three, which is tariffs on approximately $267 billion of additional imports.”

Tariffs have put the U.S. in a very strong bargaining position, with Billions of Dollars, and Jobs, flowing into our Country – and yet cost increases have thus far been almost unnoticeable. If countries will not make fair deals with us, they will be “Tariffed!”

— Donald J. Trump (@realDonaldTrump) September 17, 2018

Note – the tariffs are calculated based upon a valuation of the goods at the point of entry into the US.  The Trade Agreements Act of 1979 provides six different ways methods of customs valuations in ranked order: (A) transaction value; (B) transaction value of identical merchandise;  (C) transaction value of similar merchandise; (D) deductive value; (E) computed value; and (F) reasonable value.

Continue reading #tarriffed: IP at Core of Enhanced Chinese Tariff — WTO Action Pending in the Background at Patently-O.

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by Dennis Crouch

The White House is following through with its promise of adding a 10% tariff to $200 billion in goods imported into the US from China — set to begin on September 24, 2018.  On January 1, 2018, the tariffs are set to be raised to 25% on January 1, 2019. This is in addition to the 25% tariff applied earlier this summer on $50 billion in imports.  The President also issued statement that “if China takes retaliatory action against our farmers or other industries, we will immediately pursue phase three, which is tariffs on approximately $267 billion of additional imports.”

Note – the tariffs are calculated based upon a valuation of the goods at the point of entry into the US.  The Trade Agreements Act of 1979 provides six different ways methods of customs valuations in ranked order: (A) transaction value; (B) transaction value of identical merchandise;  (C) transaction value of similar merchandise; (D) deductive value; (E) computed value; and (F) reasonable value. 19 U.S.C. 1401a.

Earlier in 2018, the United States Trade Representative (USTR) released its Section 301 Report concluding that China is engaged in unfair policies and practices relating to United States technology and intellectual property. The report highlighted:

  • “China uses joint venture requirements, foreign investment restrictions, and administrative review and licensing processes to require or pressure technology transfer from U.S. companies.
  • China deprives U.S. companies of the ability to set market-based terms in licensing and other technology-related negotiations.
  • China directs and unfairly facilitates the systematic investment in, and acquisition of, U.S. companies and assets to generate large-scale technology transfer.
  • China conducts and supports cyber intrusions into U.S. commercial computer networks to gain unauthorized access to commercially valuable business information.”

According to the USTR release, the new tariffs follow because “China has been unwilling to change its policies involving the unfair acquisition of U.S. technology and intellectual property.”

Trade Act of 1974 authorizes the USTR to take action to address these conclusions — via tariffs and exclusion orders.

In addition to US unilateral action, the WTO Dispute Settlement System is designed to help countries resolve this exact type of dispute the US and China have filed competing complaints that are now in process.  The key underlying dispute is DS542 filed by the US against China for “Certain Measures Concerning the Protection of Intellectual Property Rights” in violation of Articles 3, 28.1(a) and (b) and 28.2 of the TRIPS Agreement.  In the complaint (“request for consultations”) document, the USTR explained the basis for WTO action:

China denies foreign patent holders the ability to enforce their patent rights against a Chinese joint-venture party after a technology transfer contract ends. China also imposes mandatory adverse contract terms that discriminate against and are less favorable for imported foreign technology. Therefore, China deprives foreign intellectual property rights holders of the ability to protect their intellectual property rights in China as well as freely negotiate market-based terms in licensing and other technology-related contracts.

542-1

 

 

 

 

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Pharmacy Gag Clauses https://patentlyo.com/patent/2018/09/pharmacy-gag-clauses.html https://patentlyo.com/patent/2018/09/pharmacy-gag-clauses.html#comments Tue, 18 Sep 2018 13:41:07 +0000 https://patentlyo.com/?p=24513 https://twitter.com/realDonaldTrump/status/1041751173034848260

Americans deserve to know the lowest drug price at their pharmacy, but “gag clauses” prevent your pharmacist from telling you! I support legislation that will remove gag clauses and urge the Senate to act. #AmericanPatientsFirst

— Donald J. Trump (@realDonaldTrump) September 17, 2018

Continue reading Pharmacy Gag Clauses at Patently-O.

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https://twitter.com/realDonaldTrump/status/1041751173034848260

Americans deserve to know the lowest drug price at their pharmacy, but “gag clauses” prevent your pharmacist from telling you! I support legislation that will remove gag clauses and urge the Senate to act. #AmericanPatientsFirst

— Donald J. Trump (@realDonaldTrump) September 17, 2018

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Burden Shifting at the PTAB and the Obviousness of Ranges https://patentlyo.com/patent/2018/09/burden-shifting-obviousness.html https://patentlyo.com/patent/2018/09/burden-shifting-obviousness.html#comments Mon, 17 Sep 2018 16:14:14 +0000 https://patentlyo.com/?p=24508 Burden Shifting at the PTAB and the Obviousness of Ranges

by Dennis Crouch

The new DuPont v. Synvina decision is important for its specific application obviousness of claim ranges.  It also creates some amount of tension with prior cases — particularly Dynamic Drinkware and Magnum Oil – regarding burden shifting within Inter Partes Review proceedings.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

In its Inter Partes Review (IPR) final decision, the Board sided with the patentee — finding that DuPont hadn’t proven Synvina’s challenged chem-prep patent obvious. (Claims 1-5 and 7-9 of U.S. Patent 8,865,921.)  On appeal, the Federal Circuit has reversed — um actually, the claims are obvious.

Claim 1 is directed to a method of preparing FDCA — an organic compound known since 1876.  FDCA can be made from plant-sugars and then used to make plastic and other polymers.

The claim requires only one step — “contacting a feed . . . in the presence of an oxidation catalyst . . .  at a temperature between 140° C. and 200° C. [and] at an oxygen partial pressure of 1 to 10 bar.”   The claim particularly defines the “feed” (“a compound selected from the group consisting of [HMF], an ester of [HMF], [5MF], .

Continue reading Burden Shifting at the PTAB and the Obviousness of Ranges at Patently-O.

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Burden Shifting at the PTAB and the Obviousness of Ranges

2,5-Furandicarboxylic acid.pngby Dennis Crouch

The new DuPont v. Synvina decision is important for its specific application obviousness of claim ranges.  It also creates some amount of tension with prior cases — particularly Dynamic Drinkware and Magnum Oil – regarding burden shifting within Inter Partes Review proceedings.

E.I. DuPont de Nemours v. Synvina C.V. (Fed. Cir. 2018)

In its Inter Partes Review (IPR) final decision, the Board sided with the patentee — finding that DuPont hadn’t proven Synvina’s challenged chem-prep patent obvious. (Claims 1-5 and 7-9 of U.S. Patent 8,865,921.)  On appeal, the Federal Circuit has reversed — um actually, the claims are obvious.

Claim 1 is directed to a method of preparing FDCA — an organic compound known since 1876.  FDCA can be made from plant-sugars and then used to make plastic and other polymers.

The claim requires only one step — “contacting a feed . . . in the presence of an oxidation catalyst . . .  at a temperature between 140° C. and 200° C. [and] at an oxygen partial pressure of 1 to 10 bar.”   The claim particularly defines the “feed” (“a compound selected from the group consisting of [HMF], an ester of [HMF], [5MF], . . .  and a mixture of two or more of these compounds with an oxygen-containing gas” as well as the catalyst (“both Co and Mn, and further a source of bromine”) and indicates that the claimed contacting takes place in the presence of “acetic acid or acetic acid and water mixture”.

One-step methods were already known for preparing FDCA, but disclosed different temperature, pressures, solvents, and catalysts.  The closest identified prior art references are listed below as comparisons to the aforementioned claim 1.

In a number of prior cases, even pre-KSR, the Federal Circuit has found a “prima facie case of obviousness” when ranges within the prior art overlap with that of the claimed invention.

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.

In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).  That prima facie case may be overcome by evidence from the patentee — by providing evidence of unexpected results, for example.  Here, however, the PTAB did not apply this burden-shifting approach — rather, the Board cited Dynamic Drinkware and Magnum Oil as prohibiting this old-style burden-shifting framework in the IPR context.

On appeal, the Federal Circuit holds here that the traditional obviousness burden-shifting associated with ranges applies to IPR proceedings.  To be clear, the patentee never has the burden of proving non-obviousness.  But, once a prima facie case of obviousness is established, the claims will be cancelled unless the patentee provides evidence to support its position.  The court explains:

While a patentee technically has no “burden” to do anything to defend the validity of its patent other than hold the patent challenger to its own burden of persuasion, that burden of persuasion is necessarily satisfied when there is no evidentiary reason to question the prior art’s disclosure of a claimed range. Magnum Oil is not to the contrary.

Having articulated the standard, the court then looked at evidence presented — finding that “[t]he ranges disclosed in the prior art overlapped with those of claim 1.”  In particular, the court pieced together the cited references above to show overlap — when taken as a whole.  That overlap created a prima facie case of obviousness — and the patentee was unable to present evidence to unseat that initial conclusion. “At bottom, this case involves a strong case of obviousness based on very close prior art and weak evidence of nonobviousness.”

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USPTO FEES ACT – S. 3416 https://patentlyo.com/patent/2018/09/uspto-fees-3416.html https://patentlyo.com/patent/2018/09/uspto-fees-3416.html#comments Mon, 17 Sep 2018 13:40:29 +0000 https://patentlyo.com/?p=24501 USPTO FEES ACT – S. 3416

by Dennis Crouch

S. 3416 An Act to amend the Leahy-Smith America Invents Act to extend the period during which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office may set or adjust certain fees.

Mr. Grassley (for himself, Mrs. Feinstein, Mr. Coons, and Mr. Hatch) recently introduced the USPTO FEES Act – Funds for Efficient and Effective Services Act.  The primary clause in the provision would extend the USPTO feemaking authority for an additional eight years.

Section 10(i)(2) of the Leahy-Smith America Invents Act (35 U.S.C. 41 note) is amended by striking “the 7-year period beginning on the date of the enactment of this Act” and inserting “the 8-year period beginning on the date of enactment of the USPTO FEES Act”.

The current law provides for a sunsetting of USPTO Fee Setting authority:

AIA Sec. 10(i)(2) SUNSET.—The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the 7-year period beginning on the date of the enactment of this Act.

Continue reading USPTO FEES ACT – S. 3416 at Patently-O.

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USPTO FEES ACT – S. 3416

by Dennis Crouch

S. 3416 An Act to amend the Leahy-Smith America Invents Act to extend the period during which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office may set or adjust certain fees.

Mr. Grassley (for himself, Mrs. Feinstein, Mr. Coons, and Mr. Hatch) recently introduced the USPTO FEES Act – Funds for Efficient and Effective Services Act.  The primary clause in the provision would extend the USPTO feemaking authority for an additional eight years.

Section 10(i)(2) of the Leahy-Smith America Invents Act (35 U.S.C. 41 note) is amended by striking “the 7-year period beginning on the date of the enactment of this Act” and inserting “the 8-year period beginning on the date of enactment of the USPTO FEES Act”.

The current law provides for a sunsetting of USPTO Fee Setting authority:

AIA Sec. 10(i)(2) SUNSET.—The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the 7-year period beginning on the date of the enactment of this Act.

The AIA was enacted on September 16, 2011 — thus, the 7-year period ended on September 16, 2018. Under under this now historic provision, the USPTO was essentially given discretionary authority to set its own fees with the caveat that the fees be set in “only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents.” AIA Section 10(a)(2).

Prior to 2011, changes in fees or the fee structure required a specific Act of Congress.

The USPTO is currently receiving comment associated with a proposal to shift some of its fees. However, the Office does not have authority to restructure those fees without first hearing from Congress and the President.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2018/09/patently-bits-and-bytes-by-juvan-bonni-11.html https://patentlyo.com/patent/2018/09/patently-bits-and-bytes-by-juvan-bonni-11.html#comments Mon, 17 Sep 2018 13:00:52 +0000 https://patentlyo.com/?p=24491 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Andrew Joseph: Richard Sackler Granted Patent for Addiction Treatment (Source: Business Insider)
  • Ciara Linnane: Bausch Health Stock Soars 8.6% Premarket on News of Patent Settlement (Source: Market Watch)
  • Matt Day and Benjamin Romano: Amazon Has Patented a System That Would Put Workers in a Cage, on Top of a Robot (Source: The Seattle Times)
  • Shona Ghosh: Snapchat Figured Out How to Analyze People’s Selfies to Score Their Emotions (Source: Business Insider)
  • Michael Wolf: Amazon Patent Points to In-Flight Recharging For Delivery Drones (Source: The Spoon)

Commentary and Journal Articles:

  • Megan Molteni: CRISPR’s Epic Patent Fight Changed the Course of Biology (Source: Wired)
  • Leo Sun: BlackBerry Moves to Make Money From Its Patents (Source: The Motley Fool)
  • Jed Grant: What Would a Blockchain Patent War Look Like? (Source: Tech Crunch)
  • Prof. Peter S. Menell: Economic Analysis of Intellectual Property Notice and Disclosure (Source: SSRN)

New Job Postings on Patently-O:

  • HARRINGTON & SMITH
  • Colby Nipper
  • Morgan, Lewis & Bockius LLP
  • BASF
  • Blackbird Technologies

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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Guest Professor: Arguing the Scandalous Clause https://patentlyo.com/patent/2018/09/professor-arguing-scandalous.html https://patentlyo.com/patent/2018/09/professor-arguing-scandalous.html#comments Sun, 16 Sep 2018 18:11:55 +0000 https://patentlyo.com/?p=24488 Guest Professor: Arguing the Scandalous Clause

Prof. Ned Snow (SC) has published several articles on the interplay between free speech and intellectual property rights. His most recent article is titled Denying Trademark for Scandalous Speech. I asked him to provide some comments on the Brunetti FUCT case. – DC

by Prof. Ned Snow

The arguments against the scandalous clause are several.  Trademark law, it is argued, should concern itself with consumer efficiencies and commercial goodwill—not the psychological protection of children or the majoritarian morality.  Consumers choose whether they will view a mark; so by trademarking a scandalous image, no one is forcing anything on anyone.  Besides, it’s inevitable that children will hear and see much worse in schools and on the internet.  Furthermore, given the diverse moral views in society, a moral-based criterion seems very subjective to enforce.  Trademark eligibility, it is argued, should not reflect the moral code of the PTO, a judge, or anyone else for that matter.  It should reflect laissez-faire ideals: if there is demand, let the market supply it.  So go the arguments.

But these arguments are misplaced.  The focal point of Brunetti is not about whether the scandalous clause seems unwarranted or foolish. 

Continue reading Guest Professor: Arguing the Scandalous Clause at Patently-O.

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Guest Professor: Arguing the Scandalous Clause

Prof. Ned Snow (SC) has published several articles on the interplay between free speech and intellectual property rights. His most recent article is titled Denying Trademark for Scandalous Speech. I asked him to provide some comments on the Brunetti FUCT case. – DC

by Prof. Ned Snow

The arguments against the scandalous clause are several.  Trademark law, it is argued, should concern itself with consumer efficiencies and commercial goodwill—not the psychological protection of children or the majoritarian morality.  Consumers choose whether they will view a mark; so by trademarking a scandalous image, no one is forcing anything on anyone.  Besides, it’s inevitable that children will hear and see much worse in schools and on the internet.  Furthermore, given the diverse moral views in society, a moral-based criterion seems very subjective to enforce.  Trademark eligibility, it is argued, should not reflect the moral code of the PTO, a judge, or anyone else for that matter.  It should reflect laissez-faire ideals: if there is demand, let the market supply it.  So go the arguments.

But these arguments are misplaced.  The focal point of Brunetti is not about whether the scandalous clause seems unwarranted or foolish.  That the clause apparently does not reflect good policy is irrelevant to the discussion at hand.  Why?  Because this is a case about separation of powers—not about policy arguments for or against the scandalous clause.  This is a case about whether courts have power to strike down an act of Congress.  As seemingly unwise as congressional acts may be, the Constitution provides Congress a large measure of discretion before a court must step in and strip away the majority’s will.  This simple, bedrock principle often gets lost in the debate.  The debate quickly moves to the merits of whether the scandalous clause makes good sense in trademark law.  As interesting as that question may be, it is not the focus here.  The question here is whether Congress has exceeded its broad discretionary authority.

Viewed through this framework, the issue takes on a new light.  The presumption is that Congress always acts within its discretionary authority to pass a law.  But of course Congress shall make no law abridging the freedom of speech.  And when does “abridging” occur?   Case law indicates that when Congress is imparting a benefit rather than imposing a penalty, the argument that an abridgment has occurred becomes much weaker.  When Congress is giving a property right rather than taking one away, the Court has interpreted the Constitution as providing Congress much more leeway to make laws that affect speech content.  Enter the limited-public-forum doctrine.  The trademark system amounts to Congress distributing a resource in order to facilitate private speech that promotes commercial transactions.  This description nicely fits the meaning of a limited public forum.  Accordingly, insofar as Congress’s choice of how to determine trademark eligibility is at least reasonable in light of trademark’s purpose, and insofar as Congress does not favor a particular viewpoint, Congress is not abridging speech.  In that situation, courts lack power to invoke the First Amendment as a basis to condemn Congress’s choice.

The issue, then, boils down to whether the scandalous clause is viewpoint neutral, and whether its restriction is at least reasonable in view of trademark’s general purpose of promoting commercial transactions.  Viewpoint neutrality turns on the meaning of scandalous.  If scandalous means anything offensively immoral (which is what the “immoral clause” means), or alternatively, if scandalous means an actual scandal (e.g., no trademarking content about Russian election meddling (?)), then the clause would be viewpoint discriminatory.  Under those meanings, the clause would enable government to restrict speech based on offense caused by a speaker’s view of what is right and wrong, or based on offense caused by a speaker’s view on a public matter.  Matal v. Tam teaches that a restriction based on offense caused by a speaker’s view (i.e., disparaging content) is viewpoint discriminatory.  On the other hand, if scandalous means offensively pornographic or vulgar—which represents the overwhelming majority of content that the PTO currently rejects for registration under that clause—the clause appears viewpoint neutral.  Under that meaning, the clause would not be targeting content based on offensiveness of any viewpoint, but rather based on offensiveness of the content’s public visibility and effects.  That a person is offended by an image of sex used as a trademark—publicly visible for anyone to see—does not imply that the person is offended at the idea of sex.  This distinction is important in assessing viewpoint neutrality.  On this point I direct readers to my article, Denying Trademark for Scandalous Speech, 51 U.C. Davis 2331 (2018), for further discussion.

As for the question of reasonableness, the bar is not high.  The reason for Congress’s enacting the scandalous clause need not compel the conclusion that the clause makes good sense as a matter of policy.  It need not demonstrate the wisdom of its enactment.  Rather, the reason must merely show that Congress was attempting to pass a law that supported the general purpose of trademark law—promoting commercial transactions.  Congress can meet that burden.  First, children represent a significant segment of the commercial marketplace.  Pornographic and vulgar content pose psychological harms to children, so discouraging such content promotes children’s well being in the commercial marketplace.  Second, a significant segment of the commercial marketplace finds the public visibility of pornographic or vulgar content to be objectionable.  Arguably, then, scandalous marks inhibit full market participation.  Third, pornographic marks may cause consumers to make decisions based on imperfect information.  Social science suggests that pornography leads to addictive behaviors in some consumers, harming marriages and family relationships.  Consumers often fail to account for such negative effects, thereby inaccurately valuing the utility that they will receive from the pornographic marks or their associated products.  Thus, the restriction on scandalous content appears reasonable in light of trademark’s general purpose of promoting commercial transactions.

As already stated, these reasons do not necessarily imply that Congress should have enacted the scandalous clause.  Indeed, the clause may be criticized for various reasons.  The clause certainly calls for subjectivity in its enforcement—as much subjectivity as enforcing the distinction between descriptive and suggestive marks; assessing the presence of secondary meaning; or determining that a mark has become generic.  The clause certainly does not represent a laissez-faire approach—much like the regulation of public television and airwaves (restricting pornographic and vulgar content), or the very trademark system itself (creating an artificial monopoly).  The clause certainly does not further source identification—just like the clauses that prevent registration of government flags or insignia, portrayals of deceased presidents, portrayals of living individuals, and surnames.  The clause may even result in market inefficiency—although not as much inefficiency as results from trademark’s dilution rights.  All these problems with the scandalous clause may be lamented and bemoaned, but they do not suggest that Congress has abused its discretion by abridging the freedom of speech.  These problems are relevant to a much different discussion—a discussion about whether we—through Congress—should change this law.  They do not inform the discussion about whether the Constitution gives courts power to reject our will.

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The Federal Circuit Strides Forward with No-Opinion-Judgments https://patentlyo.com/patent/2018/09/federal-circuit-judgments.html https://patentlyo.com/patent/2018/09/federal-circuit-judgments.html#comments Fri, 14 Sep 2018 19:50:29 +0000 https://patentlyo.com/?p=24480 The Federal Circuit Strides Forward with No-Opinion-Judgments

by Dennis Crouch

Capella Photonics, Inc., v. Cisco Systems, Inc., SCT Docket No. 18-304 (Supreme Court 2018) (on petition for writ of certiorari)

Capella Photonics has asserted its patents covering wavelength-separating technology using array of “fiber collimators” in at least ten separate infringement lawsuits, including a still pending action against Cisco filed in 2014.  After being sued, Cisco reached-out to the USPTO seeking an inter partes review of two patents.  RE42,678 and RE42368.  The USPTO complied and issued final decisions finding the claims obvious. The PTAB’s decision particularly found the use of collimators to be obvious based upon the use of prior art circulators.  On appeal, Capella argued that the Board had erred as a matter of law in both its claim construction and obviousness conclusions (issues to be reviewed de novo on appeal).

For its part, the Federal Circuit heard oral arguments in the case on February 8, 2018 and allowed one business day to pass before issuing its judgment on February 12, 2018: AFFIRMED WITHOUT OPINION R. 36.  [Appendix of Decisions in the Case]

The Federal Circuit has repeatedly vacated District Court and PTAB decisions when the lower tribunal failed to explain the basis for its decision. 

Continue reading The Federal Circuit Strides Forward with No-Opinion-Judgments at Patently-O.

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The Federal Circuit Strides Forward with No-Opinion-Judgments

by Dennis Crouch

Capella Photonics, Inc., v. Cisco Systems, Inc., SCT Docket No. 18-304 (Supreme Court 2018) (on petition for writ of certiorari)

Capella Photonics has asserted its patents covering wavelength-separating technology using array of “fiber collimators” in at least ten separate infringement lawsuits, including a still pending action against Cisco filed in 2014.  After being sued, Cisco reached-out to the USPTO seeking an inter partes review of two patents.  RE42,678 and RE42368.  The USPTO complied and issued final decisions finding the claims obvious. The PTAB’s decision particularly found the use of collimators to be obvious based upon the use of prior art circulators.  On appeal, Capella argued that the Board had erred as a matter of law in both its claim construction and obviousness conclusions (issues to be reviewed de novo on appeal).

For its part, the Federal Circuit heard oral arguments in the case on February 8, 2018 and allowed one business day to pass before issuing its judgment on February 12, 2018: AFFIRMED WITHOUT OPINION R. 36.  [Appendix of Decisions in the Case]

The Federal Circuit has repeatedly vacated District Court and PTAB decisions when the lower tribunal failed to explain the basis for its decision.  Unfortunately, the Federal Circuit continues to rampantly use its self-directed power to issue judgments without any opinion or explanation — even when the review is de novo and thus requires an affirmative statement from the court.  In a 2017 article, I argued that the Patent Act speaks to this issue — and requires that the Federal Circuit provide an opinion in cases on appeal from the USPTO.

The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion.

35 U.S. Code § 144 – Decision on appeal.  There are many situations where Congress and the various states have similarly required tribunals to provide their opinion rather than simply the mandate or judgment.  Prior to 1989, the Federal Circuit always wrote opinions as did its predecessor court, the CCPA.  In 1989, however, the Federal Circuit adopted its Local Rule 36 that permitted no-opinion-judgments.  I have found no evidence (anecdotal or otherwise), that the court considered the text of Section 144 when implementing its local rule.

Now to the Supreme Court, Capella has asked the Supreme Court to review the issue -with the following question presented:

Whether the Federal Circuit’s practice of routinely issuing judgments without opinions in appeals from the Patent Trial and Appeal Board violates 35 U.S.C. § 144, which provides that the Federal Circuit “shall issue . . . its mandate and opinion” in such appeals.

Petition for Writ of Certiorari. I explain in the article, that the issue was rather low-level up until 2013 and the explosion of inter partes review (IPR) proceedings and resulting appeals to the Federal Circuit.  Because those cases typically involve complex obviousness analysis (as in the case at hand), the shortcut route has been for the court to issue R.36 Judgments Without Opinion in these IPR appeals. The result has been hundreds of R. 36 Judgments of PATO appeals over the past few years.

Although a number of parties have raised the issue with the Federal Circuit, the court has not yet addressed the issue directly (other than by continuing to issue no-opinion-judgments).  I will note that the same question is also presented in the pending petition in Leon Stambler v. Mastercard International, Inc., SCT Docket No. 17-1140.

Rob Sterne’s team at Sterne Kessler is representing the patentee-petitioner. Sarah Guske (Baker Botts) represented Cisco in the appeal.

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Conflicting Canons of Claim Construction https://patentlyo.com/patent/2018/09/conflicting-canons-construction.html https://patentlyo.com/patent/2018/09/conflicting-canons-construction.html#comments Fri, 14 Sep 2018 15:41:32 +0000 https://patentlyo.com/?p=24474 Conflicting Canons of Claim Construction

Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. 2018)

In a short order, the Federal Circuit has denied ELB’s petition for en banc rehearing in this case — the petition had raised particular issues regarding the proper methodology for construing patent claims.

  1. Construing claim terms in the context of the specification and preamble; and
  2. Construing claim terms in a way that provides a scope commensurate with the disclosure.

In the original Federal Circuit opinion from July 2018 the Federal Circuit vacated a lower court judgment of non-infringement after finding that the District Court had improperly read a limitation from a disclosed embodiment into the claim.

Blackbird Tech’s US patent at issue (7,086,747) is directed to an LED light fixture designed to retro-fit to the space of old tubular fluorescent light fixture having a ballast cover.  The claims particularly require a “housing having an attachment surface.”

Although not required expressly by the claims, the district court concluded that the attachment surface must include a fastener to connect the attachment surface to the ballast cover — since that was the only way shown by the patent. 

Continue reading Conflicting Canons of Claim Construction at Patently-O.

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Conflicting Canons of Claim Construction

Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. 2018)

In a short order, the Federal Circuit has denied ELB’s petition for en banc rehearing in this case — the petition had raised particular issues regarding the proper methodology for construing patent claims.

  1. Construing claim terms in the context of the specification and preamble; and
  2. Construing claim terms in a way that provides a scope commensurate with the disclosure.

In the original Federal Circuit opinion from July 2018 the Federal Circuit vacated a lower court judgment of non-infringement after finding that the District Court had improperly read a limitation from a disclosed embodiment into the claim.

Blackbird Tech’s US patent at issue (7,086,747) is directed to an LED light fixture designed to retro-fit to the space of old tubular fluorescent light fixture having a ballast cover.  The claims particularly require a “housing having an attachment surface.”

Although not required expressly by the claims, the district court concluded that the attachment surface must include a fastener to connect the attachment surface to the ballast cover — since that was the only way shown by the patent.  On appeal, however, the Federal Circuit rejected that construction:

We do not agree that this fastener limitation should be imported into the claim.

There is no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into claim 12. In fact, in describing the embodiment in Figure 5, the specification explains that the fastening can be achieved by “many different types of fastening mechanisms” including “an adhesive strip” (think tape), “a magnet, clips, screws, etc.”  It never refers to this run-of-the-mill fastener as the “present invention” or “an essential element” or uses any other language that would cause the ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

In the original panel decision, Judge Moore penned the majority decision and was joined by Chief Judge Prost.  Judge Reyna filed a dissent — concluding that the “attachment surface” limitation is an element of the claimed retrofit function of the invention and should be attachable to something in the old housing. Judge Reyna writes: “The plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function.”

The basic debate here stems from the reality that the canons of construction conflict with one another.   The unfortunate result though is the old-fallback that claims mean what the Federal Circuit says they mean.

[BBT En Banc Denial][Original Panel][En Banc Petition]

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House Considering Bill that… Needs Thought (Updated). https://patentlyo.com/patent/2018/09/considering-enforcement-injunctions.html https://patentlyo.com/patent/2018/09/considering-enforcement-injunctions.html#comments Thu, 13 Sep 2018 20:00:55 +0000 https://patentlyo.com/?p=24467 A link to the bill is here, and I understand committee mark up was yesterday.  The text is:

‘‘No court of the United States (and no district court of the Virgin Islands, Guam, or the Northern Mariana Islands) shall issue an order that purports to restrain the enforcement against a non-party of any statute, regulation, order, or similar authority, unless the non-party is represented by a party acting in a representative capacity pursuant to the Federal Rules of Civil Procedure.’’

I am trying to envision the problems this creates for patents, and happen to be writing a book on Remedies right now.

A fellow professor who supports the bill noted that my original headline had it backwards.  Let me see if I can put it in context and understand it:

A court, if this is enacted, cannot restrain enforcement of a statute against a non-party.  So, a court could not issue an injunction that did not allow a patent owner to enjoin non-parties, because a statute allows injunctions. (I think I have the double negative right.)  So, I *think* it helps patent injunctions?  What about in contributory or inducement cases?

Continue reading House Considering Bill that… Needs Thought (Updated). at Patently-O.

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A link to the bill is here, and I understand committee mark up was yesterday.  The text is:

‘‘No court of the United States (and no district court of the Virgin Islands, Guam, or the Northern Mariana Islands) shall issue an order that purports to restrain the enforcement against a non-party of any statute, regulation, order, or similar authority, unless the non-party is represented by a party acting in a representative capacity pursuant to the Federal Rules of Civil Procedure.’’

I am trying to envision the problems this creates for patents, and happen to be writing a book on Remedies right now.

A fellow professor who supports the bill noted that my original headline had it backwards.  Let me see if I can put it in context and understand it:

A court, if this is enacted, cannot restrain enforcement of a statute against a non-party.  So, a court could not issue an injunction that did not allow a patent owner to enjoin non-parties, because a statute allows injunctions. (I think I have the double negative right.)  So, I *think* it helps patent injunctions?  What about in contributory or inducement cases?

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Houston: 34th Annual Fall Institute on IP Law https://patentlyo.com/patent/2018/09/houston-annual-institute.html https://patentlyo.com/patent/2018/09/houston-annual-institute.html#comments Thu, 13 Sep 2018 16:58:09 +0000 https://patentlyo.com/?p=24463 Houston: 34th Annual Fall Institute on IP Law

I’m looking forward to the upcoming 34th Annual Fall Institute on IP Law hosted by the University of Houston Law Center (law.uh.edu/ipil) and HIPLA (hipla.org) in Galveston on Sept 27, 2018.  I am keynote speaker – with what I think is a fun topic: 

The Life-Changing Magic of Tidying Up [our Patent System and your Patent Portfolio], with apologies to Marie Kondo.”  

I’ll post my materials after the talk.

The committee has put together a great program with 30+ speakers.  Most are patent focused, but I’m particularly looking forward to Robert Cote’s talk on Funding IP and Seth Jaffe’s discussion of CyberSecurity.  See you in Galveston!

Continue reading Houston: 34th Annual Fall Institute on IP Law at Patently-O.

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Houston: 34th Annual Fall Institute on IP Law

I’m looking forward to the upcoming 34th Annual Fall Institute on IP Law hosted by the University of Houston Law Center (law.uh.edu/ipil) and HIPLA (hipla.org) in Galveston on Sept 27, 2018.  I am keynote speaker – with what I think is a fun topic: 

The Life-Changing Magic of Tidying Up [our Patent System and your Patent Portfolio], with apologies to Marie Kondo.”  

I’ll post my materials after the talk.

The committee has put together a great program with 30+ speakers.  Most are patent focused, but I’m particularly looking forward to Robert Cote’s talk on Funding IP and Seth Jaffe’s discussion of CyberSecurity.  See you in Galveston!

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