De Forest Radio v. GE: A Landmark Supreme Court Decision on the Invention Requirement

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By Dennis Crouch

In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. v. General Electric Co., 283 U.S. 664 (1931), amended, 284 U.S. 571 (1931). The case involved a patent infringement suit over an improved vacuum tube used in radio communications. While the case predated the codification of the nonobviousness requirement in 35 U.S.C. § 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for "invention."

I wanted to review the case because it is one relied upon in the recent Vanda v. Teva petition, with the patentee arguing that the court's standard from 1931 has been relaxed by the Federal Circuit's "reasonable expectation of success" standard. The decision also provides an interesting case study in the way that the court seems to blend considerations of obviousness and

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Munsingwear Mootness in Sumitomo Pharma v. Vidal

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by Dennis Crouch

Although non-precedential, the Federal Circuit's new decision in Sumitomo Pharma v. Vidal offers the important conclusion that a patentee has no standing to appeal an invalidity holding once the patent expires, absent some showing of likely infringement during the prior six years.  Sumitomo Pharma Co. v. Vidal, No. 22-2276 (Fed. Cir. April 5, 2024).  The case is not so bad for the patentee because

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Guest Post: Where Are the Patent Judge Shoppers Going?

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By Paul R. Gugliuzza and J. Jonas Anderson

In the past few weeks, more and more people outside of patent law have learned about ‘judge shopping’—quirks in procedural rules that allow plaintiffs to pick not just a court but the individual judge who will hear their case.

Republican state attorneys general and conservative activists have been exploiting those rules to challenge federal government policies on abortion, immigration, gun control, transgender rights, and more in front of sympathetic, Republican-appointed judges, primarily in Amarillo and Wichita Falls, Texas.

Last month, the Judicial Conference of the United States (a group of judges who oversee the operation of the federal courts) issued a new policy urging courts to adopt case assignment procedures that prevent judge shopping, especially in cases challenging federal law.

Predictably, the beneficiaries of judge shopping—namely, Republicans—decried the new policy as politically motivated and urged district courts to ignore it. Democrats, for their part,

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USPTO Fees: Targeted Higher Fees to Push for Compact

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by Dennis Crouch

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees. [Read the Notice of Proposed Rulemaking] While incremental fee adjustments are common, the proposed changes for FY2025 are particularly noteworthy due to their magnitude in certain targeted areas and potential impact on applicant behavior. Many filers will likely change their practices based on the new higher fees. The USPTO appears to be using these fee adjustments as a tool to shape patent prosecution strategies, encouraging more compact patent applications and smaller patent families.  However, the USPTO is also seeking ways to ensure that the agency remains financially solvent and able to perform its statutory duties in the face of inflation and the Unleashing American Innovators Act of 2022 which reduced patent fees for small and micro entity applicants. The USPTO's proposed fee increases are largely unchanged from the plan announced last year.

One of the most striking changes in the proposed fee structure . . .

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Dow Chemical’s 1945 ‘Perfectly Plain’ Test for Obviousness

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by Dennis Crouch

The pending obviousness petition in Vanda v. Teva has prompted me to look back on some of the key Supreme Court cases cited in the briefs. Last week, I wrote about Atlantic Works v. Brady, 107 U.S. 192 (1883) in a blog post titled The Quest for a Meaningful Threshold of Invention.  Today, I'm looking at Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945), an obviousness case decided just a few years before a rewriting of the 1952 Patent Act.  At the time, the doctrine was identified as "want of invention," but the court's analysis is familiar to anyone practicing patent law today.

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Patent Rights and Cell-Free DNA cancer testing

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by Dennis Crouch

I have been following the ongoing case of Natera v. NeoGenomics that is currently on appeal before the Federal Circuit. Docket No. 24-1324. The technology in these cases has amazing potential and I have several friends who have used these techniques to detect early stage cancer.

The particular litigation here centers on Natera's US Patent No. 11,519,035 issued on December 6, 2022 that covers a method of detecting cancer through analysis of cell-free DNA (cfDNA) obtained from blood samples.  The basic idea is that small fragments of DNA that are released into the bloodstream by cells, including cancer cells. High throughput extraction and sequencing technologies can then be used to detect mutations and their potential associated risk factors, including the presence of cancer and the specific type of cancer. cfDNA cancer screening has lots of advantages, most notably, it is almost non-invasive (blood sample) and provides potential early across the entire body.  It can be particularly effective for detecting reemergence of cancer for someone in remission because the particular mutation is already known.  This is known as a "tumor-informed" test.

Natera's '035 patent is directed to methods for amplifying and sequencing cell-free DNA (cfDNA) to detect cancer. The claimed invention involves three key steps: (1) tagging cfDNA with universal adaptors, (2) amplifying 25-2,000 single nucleotide polymorphism (SNP) loci in a single reaction volume, and (3) performing massively parallel sequencing.  Each of these steps were known in the prior art, but the combination of all three appears to be new. NeoGenomics is accused of infringing through its use of its RaDaR, an independently developed cancer-detection test that purportedly employs a similar process for analyzing cfDNA to provide highly sensitive detection of cancerous mutations. NeoGenomics disagrees, arguing the claims require the tagging and targeted amplification to occur in separate PCR reactions with different primer sets, and that its approach combines this process.

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Federal Circuit Affirms Invalidity of Blockchain Gemstone Tracking Patent Under Section 101

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by Dennis Crouch

In Rady v. The Boston Consulting Group, Inc., No. 2022-2218 (Fed. Cir. Mar. 27, 2024), the Federal Circuit affirmed the dismissal of a patent infringement lawsuit, holding that the asserted claims of Rady's US10469250 were ineligible under 35 U.S.C. § 101.  The patent, owned by Max Rady, patent describes scanning a physical item, determining its unique pattern of imperfections (i.e., "signature"), and recording that signature to a blockchain if not previously registered.

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Obviousness and Pharmaceutical Method of Treatment Claims

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by Dennis Crouch

In April 2024, the Federal Circuit issued a significant decision vacating a district court's judgment that Janssen Pharmaceuticals' dosing regimen patent claims were nonobvious. Janssen Pharms., Inc. v. Teva Pharms. USA, Inc., No. 2022-1258 (Fed. Cir. Apr. 1, 2024). The case involved Janson's U.S. Patent No. 9,439,906, which claims methods of treating schizophrenia by administering specific doses of the long-acting injectable antipsychotic paliperidone palmitate.

Teva filed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Janssen's Invega Sustenna product, which embodies the claimed methods. In the ensuing Hatch-Waxman litigation, Teva stipulated to infringement but challenged the patent on obviousness and indefiniteness grounds. Following a bench trial Judge Cecchi (D.N.J.) rejected Teva's invalidity defenses, and Teva appealed.

On appeal, Judge Prost authored a unanimous opinion affirming the district court's indefiniteness determination but vacating and remanding on obviousness.  Overall, this is a bad case for pharmaceutical formulary patents.

This post focuses on the court's obviousness holding and its potential implications for pharmaceutical method of treatment claims more broadly. I make three key claims. . .

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Jury Instructions and Objective Indicia of Nonobviousness: Federal Circuit Grants New Trial in Inline Plastics v. Lacerta

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In a recent decision, the Federal Circuit vacated a judgment of invalidity and remanded for a new trial, holding that the district court's jury instruction on objective indicia of nonobviousness constituted prejudicial legal error. The case, Inline Plastics Corp. v. Lacerta Group, LLC, No. 2022-1954 (Fed. Cir. Mar. 27, 2024), involved patents relating to tamper-resistant and tamper-evident food containers.

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Today’s Obviousness Key: Motivation to Combine

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by Dennis Crouch

The Federal Circuit's recent decision in Virtek Vision International ULC v. Assembly Guidance Systems, Inc. focuses on the motivation to combine aspect of the obviousness analysis. The court's ruling emphasizes that the mere existence of prior art elements is not sufficient to render a claimed invention obvious; rather, there must be a clear reason or rationale for a person of ordinary skill in the art to combine those elements in the claimed manner.  In the case, the IPR petitioner failed to articulate that reasoning and thus the PTAB's obviousness finding was improper.

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Federal Circuit Debates Scope of 271(e)(1) Safe Harbor and the Meaning of “Solely”

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by Dennis Crouch

The Federal Circuit's recent 2-1 decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. highlights tensions in the court's interpretation of the patent infringement safe harbor under 35 U.S.C. § 271(e)(1). A forceful dissent by Judge Lourie argues that the majority's approach, while following precedent, improperly reads the word "solely" out of the statute and unduly expands the safe harbor exemption.  Lourie ends his opinion with a call for en banc rehearing.

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The Quest for a Meaningful Threshold of Invention: Atlantic Works v. Brady (1883)

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by Dennis Crouch

My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883).  I thought I would write a more complete discussion of this important historic patent case.

Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking "bad patents."  As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.

The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design.  The Supreme Court ultimately reversed the lower court's decision upholding the patent and found instead that Brady's claimed invention lacked novelty and did not constitute a patentable advance over the prior art.

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The Obviousness Hurdle

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by Dennis Crouch

The U.S. Supreme Court is weighing whether to grant certiorari in Vanda Pharmaceuticals v. Teva Pharmaceuticals. I have been closely watching this obviousness case that could have significant implications beyond the pharmaceutical industry.  The following essay provides an overview of the key legal issues at stake and introduces Teva's recent briefing.

The case centers on the proper legal standard for determining when an invention is "obvious" and therefore unpatentable under 35 U.S.C. § 103.  In particular, Vanda argues that the Federal Circuit has unduly raised the non-obviousness hurdle -- barring patents based upon a "mere reasonable expectation of success" or that certain experiments would have been obvious to try, even though the result was not known.

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Guidance on Examining Means Plus Function Claims

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This week USPTO Commissioner for Patents Vaishali Udupa issued a memorandum to all patent examiners entitled "Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))." The purpose of the memo is to remind examiners of the resources and guidance available when examining claims under 35 U.S.C. 112(f), commonly referred to as "means-plus-function" or "step-plus-function" claims. The memo summarizes key points regarding:

  1. Determining whether a claim limitation invokes 112(f)
  2. Clearly communicating on the record when 112(f) has been invoked
  3. Evaluating the adequacy of the supporting disclosure

The USPTO has also requested public feedback on the guidance (6/18/24 deadline).  Examiners will apparently undergo some training. Although not clear if this will be enforced, it may become more of a requirement for examiners to provide a claim construction section in their office action rejections.

Although the memo is generally helpful, there are two points of guidance that are lacking, and that I discuss below:

  1. How is BRI applied at the initial stage of determining whether a claim is written in means-plus-function form?
  2. How are means-plus-function limitations evaluated under the 112(a) written description and enablement requirements. Particular, must the "equivalents" covered by the claim be adequately supported by the specification?

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Judge Dodging: Apple loses Mandamus Transfer Action This Time

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by Dennis Crouch

In re Apple Inc., No. 24-111 (Fed. Cir. 2024)

Federal Circuit has denied Apple's petition for a writ of mandamus seeking to transfer a patent infringement case from the Western District of Texas to the Northern District of California. The case, Carbyne Biometrics, LLC v. Apple Inc., involves six patents related to authentication and fraud reduction technologies used in Apple devices. U.S. Patent Nos. 10,929,512; 11,475,105; 11,514,138; 9,972,010; 10,713,656; 11,526,886.

Back in May 2023, Carbyne filed the lawsuit in W.D. Tex. Austin division and the case was assigned to Judge Yeakel who promptly retired a few weeks later.  Unlike the cases filed in Waco, Carbyne's Austin filing was clearly not a case of judge shopping, but is probably explained as forum shopping.  Apple's HQ is N.D. Cal, and Carbyne appears to be NYC based -- neither forum is seen as patentee friendly. Austin is a good choice here because Apple has a billion dollar facility in the city where it manufactures some of the accused devices.

After some shuffling, the case was reassigned to Judge Alan Albright. Although Albright is in the Waco division, he loves patent cases; has extra bandwidth because patent cases have been diverted from his Waco courthouse; and he's willing to hear cases in Austin.

Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue under Section 1404(a) -- arguing that the venue was inconvenient despite the fact that Austin is the company's second-home.  The opposite of Judge Shopping, I might Apple's approach here "Judge Dodging."

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Reviving the Permanent Injunction Inquiry: Federal Circuit Rejects a Categorical Rule Against Injunctions for Licensing Patentees

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by Dennis Crouch

In a nonprecedential disposition issued March 20, 2024, the Federal Circuit vacated a district court's denial of a permanent injunction to a patent owner, finding the lower court read Federal Circuit precedent too broadly to categorically preclude injunctions in situations where a patentee has a history of licensing the patent to third parties. In re California Expanded Metal Products Co., No. 2023-1140 (Fed Cir. Mar. 20, 2024). The decision reaffirms that the equitable framework laid out by the Supreme Court in eBay Inc. v. MercExchange, L.L.C. requires a case-by-case analysis of irreparable harm and the other injunction factors, even when the patentee's business model relies on licensing revenue rather than direct competition in practicing the patents. 547 U.S. 388, 391 (2006).  However, the decision may well be seen simply as distinguishing between exclusive and non-exclusive licensing approaches.

In its decision, the Federal Circuit also affirmed the district court's R.59(e) order setting aside the damages verdict -- meaning that although the patentee proved infringement, it will receive $0 in compensatory damages.

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More on Reasonable Expectation of Success from the Federal Circuit

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by Dennis Crouch

In Sisvel v. TCT Mobile and Honeywell, the Federal Circuit has affirmed the PTAB's IPR findings that the claims are obvious.  The non-precedential decision provides further insight into the Federal Circuit's reasonable expectation of success test.

Sisvel's U.S. Patent 8,971,279 covers a method of sending Semi-Persistent Scheduling (SPS) deactivation signals that essentially "piggyback" on existing messages. SPS is a technique used in LTE networks to more efficiently allocate radio resources to user equipment (UE) for periodic transmissions, such as Voice over IP (VoIP). In SPS, the base station pre-allocates resources to the UE for a set period of time, reducing the need for frequent scheduling requests and grants. SPS deactivation signals are messages sent by the base station to the UE to indicate that the pre-allocated resources are being released and are no longer available for the UE's periodic transmissions. These signals are necessary to free up the resources when they are no longer needed, allowing them to be reassigned to other UEs or used for other purposes.

In the context of Sisvel's '279 patent, the invention was directed to a specific method of sending SPS deactivation signals by filling a preexisting binary field (the resource indication value or "RIV") with all "1"s. This 111111111 technique was intended to provide a more efficient way of signaling SPS deactivation while still ensuring that the deactivation message would not be mistaken for a valid resource allocation message.  In the patented system, the string of ones would always be processed as an invalid value and never mistaken for a valid resource allocation message, providing stability to the network, regardless of size.

TCT Mobile and others petitioned for IPR, asserting that the challenged claims were obvious based on various combinations of prior art, including Samsung and Dahlman. The PTAB found the claims unpatentable as obvious, and Sisvel appealed.

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Licensing by Acquisition: The High-Stakes Dispute Over Whether Intel is Licensed to VLSI’s Patents

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The Federal Circuit has issued an interesting nonprecedential order in In re VLSI Technology LLC, denying VLSI's petition for a writ of mandamus that sought to reverse a district court order allowing Intel to amend its answer to assert a declaratory judgment counterclaim regarding a patent license defense.

The Federal Circuit's brief order sheds some light on the standards for amending pleadings late in litigation and the propriety of declaratory judgment counterclaims in patent cases even where the underlying infringement claims have been extinguished.

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Inventorship Correction Affirmed for Patent on Intermodal Container for Transporting Gaseous Fluids

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by Dennis Crouch

In a recent nonprecedential decision, the Federal Circuit affirmed a district court ruling ordering the correction of inventorship for U.S. Patent No. 9,376,049. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The patent at issue, originally naming a single inventor (Steve Campbell), claims a lightweight intermodal container system for transporting refrigerated gaseous fluids.

This post examines the reasoning behind the Federal Circuit's affirmance as well as the potential applicability of the equitable defense of laches in cases brought under 35 U.S.C. § 256 to correct inventorship on an issued patent.

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