The Judicial Conference and Its Random Assignment “Policy”

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Guest post by Professors Jonas Anderson[1] and Paul Gugliuzza[2]

On Tuesday, March 12, 2024, the Judicial Conference of the United States—the self-governing body of the federal judiciary—held a press conference and issued a press release touting the Conference’s “strengthen[ing of] the policy governing random case assignment, limiting the ability of litigants to effectively choose judges in certain cases by where they file a lawsuit.”

As we’ve explained in a series of articles, in many federal courts throughout the country, all or practically all cases are assigned to a single judge, giving litigants the ability to “judge shop”—that is, to choose their own judge.  Many divisional court houses are associated with a single federal judge, and cases filed in that courthouse are assigned to that predetermined judge.

Judge shopping has been a particularly long-standing problem in patent cases and corporate bankruptcy cases. More recently, Republican state attorneys general have filed numerous challenges to federal government actions on matters such as abortion, gun control, and immigration in single-judge divisions in Texas.

After a few days of confusion about the scope and content of the Judicial Conference’s new policy on case assignment, the Conference subsequently released a three-page document titled Guidance for Civil Case Assignment in District Courts.

The Judicial Conference’s interest in stopping judge shopping is commendable—it’s hard to think of any principled reason why a party should be able to pick the individual judge who hears their case. But we see at least three major flaws in the Judicial Conference’s action.

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When is a Government Official’s Social Media a State Action?

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by Dennis Crouch

Lindke v. Freed, 601 U.S. ___ (2024) 22-611_ap6c.

This recent decision from the Supreme Court case grapples with the issue of when a public official's social media activity constitutes state action for purposes of a First Amendment claim under 42 U.S.C. §1983.  I've been following the case as part of my work on internet and media law issues.

The case arose after James Freed, the city manager of Port Huron, Michigan, deleted comments and blocked a Port Huron citizen (Kevin Lindke) from commenting on Freed's personal Facebook page after Lindke used the forum to criticize the city's handling of the COVID-19 pandemic. Lindke sued Freed, arguing that Freed had violated his free speech rights by censoring him in a public forum.

In a unanimous opinion authored by Justice Barrett, the Supreme Court created a two step test, holding that that a public official's social media conduct only qualifies as state action under §1983 if the official:

  1. possessed actual authority to speak on the State's behalf on the particular matter at issue, and
  2. purported to exercise that authority when speaking in the relevant social media posts.

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Banning TikTok: Protecting Americans from Foreign Adversary Controlled Applications Act

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by Dennis Crouch

Along with my work in intellectual property, I also spent a lot of time focusing on internet law issues and their interrelation with AI, privacy, speech and security.  We have seen growing calls for action surrounding Section 230 modifications and social media censorship, and several pending Supreme Court cases could reshape the legal landscape governing online platforms.

Banning TikTok: The U.S. House of Representatives passed a bill this week, with a vote of 352-65, that could potentially ban TikTok in the United States. The bill, called the Protecting Americans from Foreign Adversary Controlled Applications Act, would require TikTok to divest from its China-based parent company ByteDance or face consequences such as being cut off from app stores and hosting services in the U.S.

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The Analogous Art Doctrine Post-KSR: Insights from the Federal Circuit’s Daedalus Decision

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by Dennis Crouch

In a short nonprecedential decision, the Federal Circuit affirmed a PTAB IPR decision finding claims 15-25 of U.S. Patent No. 8,671,132 ('132 patent) unpatentable under 35 U.S.C. § 103 over combinations of prior art references. Daedalus Blue LLC v. Vidal, No. 2023-1313, slip op. at 2 (Fed. Cir. Mar. 13, 2024).  The key issue on appeal was whether the Gelb reference qualified as analogous art for the purposes of the obviousness analysis.  Daedalus unsuccessfully argued that the PTAB erred in two respects: (1) by finding Gelb to be in the same field of endeavor as the '132 patent, and (2) by determining that Gelb is reasonably pertinent to the problems addressed by the '132 patent.  This post discusses the analogous arts test and provides key guidance to patent attorneys in today's post-AIA world.

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Timeliness in Supreme Court Practice

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The recent case of Purdue Pharma v. Collegium Pharmaceutical, Case no. 23A766, highlights the importance of adhering to the Supreme Court's rules and presenting compelling reasons when requesting an extension of time to file a petition for certiorari. The Supreme Court's denial of Purdue's request for a 30-day extension serves as a reminder that even in cases involving significant legal questions, the Court expects parties to follow its procedural rules and provide strong justifications for any deviations.

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When ‘Interlock’ Causes Gridlock: Lessons from the Federal Circuit’s Decision in CoolIT Systems v. Vidal

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by Dennis Crouch

In a nonprecedential decision, the Federal Circuit has vacated and remanded a PTAB decision siding against the patentee.  The key issue on appeal was the proper construction of the claim term "matingly engaged," which appears in the limitation "a compliant member matingly engaged with the second side of the housing member." CoolIT Sys., Inc. v. Vidal, No. 2022-1221 (Fed. Cir. Mar. 7, 2024). Coolit v Vidal.

One of the take-aways from the case is that parties should be cautious about using terms that may themselves require construction, as this can lead to a "construing the construction" problem. Courts aim to adopt constructions that clarify the meaning of the disputed term without introducing new ambiguities.   See Jason Rantanen, Construing Claim Constructions, Patently-O (Sept. 28, 2011, 4:13 PM).

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Magic Language in Patent Applications

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by Dennis Crouch

The Federal Circuit handed down a mixed decision in Chewy, Inc. v. International Business Machines Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) ChewyvIBM. The district court had ruled against the patentee (IBM) -- finding one patent ineligible and the other not infringed.  On appeal, the Federal Circuit largely affirmed, but found one claim that passes through the pre-trial gauntlet.  The patents at issue were IBM's U.S. Patent Nos. 7,072,849 and 7,076,443, relating to improvements in web-based advertising.  On remand, a jury may need to decide whether claim 12 of the '849 patent is valid and infringed.

The first half of the post focuses on eligibility and is fairly standard.  The second half of the post is what all patent prosecutors need to read because it delves into "magic language" - binding statements - in describing the invention.

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Newly Released CBP Ruling Reveals Apple Watch Pulse Oximetry Redesign

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by Dennis Crouch

In January 2024 a then-secret order from US Customs and Border Protection (CPB) had a major impact in the Masimo v. Apple case. That opinion from CBP's Exclusion Order Enforcement (EOE) Branch has now been released in redacted form and provides some insight into how Apple was able to quickly modify its Apple Watch designs to avoid the ITC's limited exclusion order that would have blocked import of the infringing devices. The CBP EOE ruling determined that Apple's redesigned watches, which disabled the infringing pulse oximetry functionality, were sufficiently modified to fall outside the scope of the ITC's exclusion order, allowing them to be imported and sold in the US.

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Celanese v. ITC: The Overlooked 271(g) Wrinkle and Competing Policy Concerns

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by Dennis Crouch

If you recall, Celanese v. ITC involves the sweetener known as AceK (acesulfame potassium), a compound discovered back in the 1960s.  Celanese began selling the product on the competitive market in 2011, and eventually decided to file for patent protection on its manufacturing process in 2015.  In my prior post on Celanese v. ITC, I focused on the key statutory interpretation question of whether, under the AIA's revised 35 U.S.C. § 102, a patentee's pre-filing sale of a product made by a secret process starts the one-year clock for patenting that process.

Although Celanese did not patent the product itself, one interesting fact that I failed to mention in the prior post is that Celanese is seeking an exclusion order at the ITC preventing importation of Ace-K. This adds an interesting wrinkle to the policy debate.

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No Contradiction ⇒ No Indefiniteness

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by Dennis Crouch

The Federal Circuit recently issued a decision in Maxell, Ltd. v. Amperex Technology Limited, No. 2023-1194 (Fed. Cir. Mar. 6, 2024), reversing Judge Alan Albright's finding that certain claims of Maxell's patent covering rechargeable lithium-ion battery indefinite under 35 U.S.C. § 112, ¶ 2 (112(b)). U.S. Patent No. 9,077,035.

The case provides important cover for patent prosecutors who inelegantly add narrowed limitations from the dependent claims into the independent claims without rewriting or deleting the corresponding broader element descriptions already there.

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Pfizer v. Sanofi: Applying the Results-Effective Variable Doctrine in Obviousness Analysis

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by Dennis Crouch

The Federal Circuit has affirmed the PTAB's finding that Pfizer's pneumococcal vaccine patent is obvious, but has vacated and remanded the Board's denial of Pfizer's motion to amend certain claims. Pfizer Inc. v. Sanofi Pasteur Inc., No. 19-1871 (Fed. Cir. Mar. 5, 2024); U.S. Patent No. 9,492,559. Pfizer v. Sanofi Opinion.

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AI and Society: Government, Policy, and the Law at Mizzou

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I am super excited to be part of a big interdisciplinary conference this week here at the University of Missouri where we'll be focusing on AI and Society: Government, Policy, and the Law. Co-hosted by the Truman School of Government and Public Affairs and the University of Missouri School of Law, this two-day event on March 7-8, 2024, will bring together a diverse group of experts to explore four main themes: AI in Government, Impact of AI on Democracy, Government Regulation and AI, and Creating an AI Ready Public Sector; and a collection of the papers will be published in the Missouri Law Review.

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Celanese v. ITC: Can a Secret Manufacturing Process Be Patented After Sale of the Resulting Product?

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by Dennis Crouch

The Federal Circuit held oral arguments on March 4, 2024 in the important patent case of Celanese Int'l. v ITC, 22-1827 (Fed. Cir. 2024).

The question: Under the AIA, does sale of a product by the patent applicant prohibit the patentee from later patenting the process used to make the product? 

Background

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The AGI Lawsuit: Elon Musk vs. OpenAI and the Quest for Artificial General Intelligence that Benefits Humanity

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By Dennis Crouch

Elon Musk was instrumental in the initial creation of OpenAI as a nonprofit with the vision of responsibly developing artificial intelligence (AI) to benefit humanity and to prevent monopolistic control over the technology. After ChatGPT went viral in late 2022, the company began focusing more on revenue and profits.  It added a major for-profit subsidiary and completed a $13+ billion deal with Microsoft -- entitling the industry giant to a large share of OpenAI's future profits and a seat on the Board. 

In a new lawsuit, Elon Musk alleges that OpenAI and its CEO Sam Altman have breached the organization's founding vision. [Musk vs OpenAI]. 

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Eligibility and Physical Products

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by Dennis Crouch

The six PTAB decisions reviewed below provide insight into the application of 35 USC 101 in cases involving more than just computer hardware and software. While the claims in each decision recite physical devices or molecules, the PTAB still found most to be ineligible as directed to an abstract idea and lacking an integrated inventive concept beyond well-understood, routine conventional activities. A core parallel across the decisions is the PTAB's focus on whether the additional elements in the claims, including the physical components, integrate the judicial exception into a practical application or provide significantly more.

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Four Funerals: Recent PTAB 101 Decisions

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I wanted to consider some recent PTAB jurisprudence on patent eligibility under 35 U.S.C. § 101. The following post reviews four recent eligibility cases. In all four cases the PTAB found the claims lacked eligibility. Two of the cases affirmed examiner rejections while the other two added eligibility as a new grounds for rejection after finding that the examiner erred in their 102/103 rejections. All four cases here involve communications technology where the patent applicant was seeking to claim the functional operational steps without describing any new "technology."  I have a second post coming with recent device 101 cases from the PTAB.

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Covenant to not sue “at any time” terminated with the license agreement

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by Dennis Crouch

The recent Federal Circuit decision in AlexSam, Inc. v. MasterCard Intl. Inc. provides a lesson into the importance of carefully drafting—and understanding—the scope of licensing terms, especially covenants not to sue.  Of importance to this case is understanding both their scope and their duration.  The second half of the post delves into the jurisdictional hook that allowed the Federal Circuit to hear this case, even though it originated as a state law breach of contract claim, as well as analyzing whether MasterCard's invalidity declaratory judgment counterclaim was truly compulsory, as required for Federal Circuit appellate jurisdiction.  The post also notes a curious empaneling of judges. 22-2046.OPINION.2-28-2024_2277625.

Background

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Making a Proper Determination of Obviousness

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by Dennis Crouch

Earlier this week, the USPTO published updated examination guidelines regarding obviousness determinations under 35 U.S.C. §103. While these new guidelines are not legally binding, they offer important insight into how the Office plans to apply an even more flexible approach to obviousness -- something Director Vidal sees as mandated by the Supreme Court’s 2007 decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). (2500 words).

Read the Guidance Here.

Overall the guidance here suggests that the office is looking to make non-obviousness a larger hurdle via increased flexibility.  Still, the guidelines spend some time on the requirements of a prima facie case; the necessity of both evidence and reasoning to support any obviousness rejection; and consideration of all evidence before the examiner.  Obviousness is already the most common rejection - with the vast majority of applications being initially rejected as obvious.  It will be interesting to see whether the rates go up even further following this new guidance. 

This post breaks down the guidelines and walks through some potential strategies for patent applicants. 

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Burden of Proof Buffers Patent Owner Misconduct in Patent Revival Case

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by Dennis Crouch

A jury in Judge Albright's W.D.Tex. court sided with Amazon - finding no infringement. On appeal, the Federal Circuit has affirmed -- particularly affirming Judge Albright rejection of Freshub's post-verdict motions. Freshub, Inc. v. Amazon.com, Inc., 22-1391 (Fed. Cir. Feb 26, 2024).  In a cross-appeal, Amazon argues that the district court should have found the patent unenforceable due to inequitable conduct. That appeal was also rejected. Freshub v Amazon.

No Reversible Error in Denying Inequitable Conduct

I want to use this blog post to focus on the finding of no inequitable conduct.

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