Inter Partes Reexaminations: USPTO Can Only Consider References from the Request that Were Found to Raise a Substantial Question of Patentability

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By Dennis Crouch

Belkin v. Kappos (Fed. Cir. 2012) (Appeal of Inter Partes Reexam No. 95/001,089)

OptimumPath’s U.S. Patent No. 7,035,281 broadly covers a wireless router with onboard authentication and is based upon an application filed in the year 2000. When Belkin filed its inter partes reexamination request, it argued that a set of four prior art references render all 32 claims unpatentable. The USPTO partially granted Belkin’s request. However, the USPTO found that only one of the four references (“Pierce”) raised a substantial new question of patentability, and the Pierce-SNQ only related to claims 1-3 and 8-10 of the ‘281 patent. The USPTO thus rejected the request as to the remaining claims 4-7 and 11-32. Further, the USPTO also rejected the notion that the four-reference combination raised a SNQ with regard to claims 1-3 and 8-10.

Belkin filed a petition to challenge the partial denial. Since the reexamination had been granted as to claims 1-3 and 8-10, Belkin only challenged the USPTO’s adverse decision regarding the other claims. That petition was duly denied. As prosecution developed, the Examiner (supported by the BPAI) determined that the lone reference (Pierce) did not actually anticipate claims 1-3 or 8-10. Further, the USPTO refused to consider the four-part combination obviousness argument that had been rejected at the request stage. The BPAI then confirmed the Examiner’s decision – holding that the Board did not have the power to now decide that the combination of references raise a SNQ of patentability because that determination is not appealable under 35 U.S.C. § 312(c).

The USPTO differentiates between petitions and appeals and according to the Board, Belkin erred by failing to timely petition to challenge SNQ determination rather doing what it did (waiting to appeal that determination after receiving an adverse examiner decision0.

Now, the Court of Appeals for the Federal Circuit (CAFC) has affirmed the Board decision – holding that

The proper course of action was for Belkin to have petitioned the Director to review the determination that the arguments relying on the [other three references] did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin did not do so, and thus that decision became final and non-appealable, rendering those issues beyond the scope of the reexamination.

One problem raised by this decision by Judge Lourie and joined by Chief Judges Rader and Judge Wallach is that it conflicts with the MPEP.

MPEP § 2648 identifies a hypothetical situation parallel to Belkin’s – where an inter partes reexamination request on a particular claim is granted based upon one set of prior art but denied based upon another set of prior art. According to the MPEP, no petition challenging the partial-grant may be filed with regard to that claim and that once granted, the reexamination will consider “all prior art.”

[N]o petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.

MPEP § 2648. The Federal Circuit decision here considered the conflict created by the MPEP and ultimately determined that the MPEP does not carry the weight of law and thus is easily discarded. The court writes:

[T]he MPEP does not have the force of law, and is only entitled to judicial notice as the PTO’s official interpretation of statutes and regulations with which it is not in conflict. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).

This holding here (following Molins) becomes even more important under the AIA as the PTO has received a substantial additional amount of rulemaking authority for determining the proper methodology of conducting the array of post-grant challenge options. Here we have a re-affirmance that the USPTO’s statements in the MPEP will not be given the same deference that will be due to rules promulgated and printed in the code of federal regulations (CFR). The court noted that this decision should not be seen as offering any guidance as to how the AIA will be interpreted (since this case applies the old law regarding inter partes reexaminations).

Limit Scope of Reexamination: The court here goes on to hold that the Patent Act strictly limits the prior art that the USPTO can apply in considering challenged claims during reexamination. In particular, in the reexamination the PTO can only consider the prior art that the director found raised the substantial questions of patentability. The court writes:

In any event, in order to reconcile what may otherwise appear to be conflicting provisions, we hold that, under the statute, available prior art may only be considered to answer the specific questions of patentability found by the Director.

In a footnote, the expressly refuses to rule on a situation where the patentee amends claims or adds new claims during the reexamination. Thus, in those situations, the PTO might have the power to consider other references.

We do not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.

The problem with this holding on the “statute” is that the court does not actually identify the statutory provision that lead to its conclusion. I suppose that the best statute on point is Section 312(c) that limits the appeal of SNQ determinations. If we allow a requester to force the consideration of additional references by appealing to the BPAI – then that begins to look like an appeal of the SNQ determination. That seems to be a fairly weak argument and perhaps that is why the court did not spell it out.

For its part, the Board was likely thinking of this case as an important stake-in-the-ground to limit the scope of the new post grant review regimes (that the Board is handling directly rather than the CRU). The importance is evidenced by the fact that the case was decided by an expanded 5-judge panel which included Board Vice-Chief Judge James T. Moore and Judge Allen MacDonald as added members.

Trans-Border Active Patent Inducement under Akamai

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By Dennis Crouch

This post discusses Professor Holbrook’s new essay on the extraterritorial consequences of the recent Akamai decision.

In Akamai v. Limelight, an en banc Federal Circuit (CAFC) expanded the scope of liability for actively inducing patent infringement (inducement). Under the old rule, an active inducement charge required proof that an induced third party actually practiced the patented method. Akamai loosened that constraint a bit. Under the new rule, actively inducing infringement of a patented method no longer requires underlying infringement by the third party. The court replaced that element with a requirement of proof that each step of the patented method be performed. Thus, the difference between the old and the new is that active inducement no longer follows the single infringing actor rule that is *still* applied in the context of direct infringement. Under the new rule, a defendant could be held liable for active inducement even when it took three different actors to collectively perform the patented-steps. The statutory basis for active inducement is 35 U.S.C. §271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). At least as interpreted, the statute does not provide any help in understanding which of these two interpretations (old & new) are correct.

Akamai raises a host of further more detailed question about application of the newly revised doctrine.     

In his most recent essay, Professor Timothy Holbrook (Emory) focuses on one of his specialties – international application of the patent laws – and considers how the new law of inducement applies in the international and trans-border patent infringement context.

The crux of Holbrook’s essay begins with the statutory definition of direct patent infringement that uses the phrase “within the United States” as a territorial limitation on patent infringement actions. 35 U.S.C. § 271(a). The old rule of active inducement was linked to this definition and thus included an implicit territorial limitation as well. In Akamai, the court decoupled active inducement from the direct infringement definition of 271(a) and challenges whether (and how) a territorial limitation will be applied moving forward.

One suggestion is that the Federal Circuit should rely upon its control-and-beneficial use doctrine developed in NTP v. Research-in-Motion, 418 F.3d 1282 (Fed. Cir. 2005), to determine whether the territorial limits of the patent laws bar an inducement action. However, NTP is a deeply unsatisfying opinion and has little basis in the law, and such an extension of that opinion would have even less basis in law. Holbrook suggests that when portions of the induced activity occurs in another country, the court should focus on whether the patentee bringing the infringement action has a parallel patent in that other country. If so, then the inducement action can move forward. On the other hand, the absence of such parallel patents suggest that the trans-border inducement action unduly extends US law. Holbrook writes:

The baseline principle would be as follows: if there would not be infringement of the patent in the foreign country, then there would be no infringement of the United States. As I have advocated elsewhere, this approach takes into account potential conflicts with foreign law, which is one of the justifications for the presumption against extraterritoriality.

I should note that Holbrook has offered his solution more broadly as a replacement for the NTP test.

For patentees, the interesting result of Professor Holbrook’s approach is that provides an additional incentive for patentees obtain foreign patent protection because that protection bolsters their US patent rights. In this sense, it gives an edge to non-US innovators who are already much more likely to obtain foreign rights than are US based entities. The approach also offers a straightforward avenue for someone to receive the benefit of practicing the invention without paying royalties and without infringement liability. The approach would be to identify countries where the patent is not protected and induce performance of some steps of the method there. However, in most cases that approach is likely too far-fetched for most situations.

Read the essay: Timothy Holbrook, The Potential Extraterritorial Consequences of Akamai, forthcoming in the Emory International Law Review (2012) online at http://ssrn.com/abstract=2154277.

US Courts Reject German Injunction Order in Microsoft v. Google Patent Battle

Patent,

by Dennis Crouch

Microsoft Corp. v. Motorola, Inc. (9th Cir. 2012)

The Ninth Circuit Court of Appeals has confirmed a temporary injunction blocking enforcement of Motorola’s German patent infringement judgment against Microsoft’s Xbox 360. In May 2012, the German court (sited in Mannheim) based its injunction order on three holdings: that (1) a licenses between Microsoft and Motorola did not cover asserted patents; (2) Motorola’s commitments of the patents to FRAND agreements were not enforceable by Microsoft; and (3) Microsoft did indeed infringe the two asserted patents. The two Motorola patents asserted in Germany are EP0538667 (“‘667”) and EP0615384 (“‘384”). These patents relate to the H.264 video coding and the 802.11 WLAN standards.

This is a somewhat unique situation because Motorola’s patents are part of FRAND licensing commitments; both parties are American companies (although it is a German Motorola subsidiary that is pursuing the German case); and the German patent dispute is being resolved within contract litigation between the parties here in the US. In this vein, the Ninth Circuit decision relied on recent writings by Professor Lemley and Judge Posner that both push-against awarding injunctive relief for patents that have been involved in a FRAND license commitment. The appellate panel also found that US overrunning the German decision did not intolerably violate principles of comity — especially because the German infringement action was filed after the US contract litigation had already started. One hook on the comity front is that the German injunction requires some additional action by Motorola (posting of a bond) before the Xbox injunction would begin. Thus, the US courts did not need to overturn the German decision but instead only order Motorola not to enforce its injunction.

Of course, Google now owns Motorola and is operating as puppet master behind the scenes.

http://www.ca9.uscourts.gov/datastore/opinions/2012/09/28/1235352.pdf

 

Patently-O Bits & Bytes by Lawrence Higgins

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Patent Backlog to fall below 600K by end of the year!

  • The current patent backlog is around 623,000 patents and is decreasing by an average of about 5,000 patents per month. This time last year the USPTO had a backlog of an estimated 683,000 patents and in 2010 it was 728,000 patents backlogged. By the end of the year the backlog should be under 600,000. The decrease from 2011 to 2012 is by almost 60,000 patents and this can be contributed to the hiring initiative that the USPTO implemented. The USPTO currently has around 7,600 patent examiners with plans to hire more in the near future. However, the patent backlog will be expected to start to slightly increase around March of 2013 due to the first-to-file patent system. [Link]

Great new free educational website!

  • Coursera.org offers online classes in many different subject matters online for free. For example, they offer courses in electrical and materials engineering, computer science, biology & life sciences, and many more. The classes are taught by some of the leading institutions in the world. Some classes even offer a certificate of completion. I am currently enrolled in a computer science course taught by faculty from the University of Toronto.

Patent Jobs:

  • Harrington & Smith is seeking a patent associate with a degree in EE or physics and at least 2 years of experience to work at their Shelton, Connecticut office. [Link]
  • Krieg DeVault is looking for an IP associate with 3-7 years of experience to work at their Indianapolis office. [Link]
  • Harrity & Harrity is searching for patent attorneys/agents with a background in EE, computer science, or physics and a minimum of 2 years of experience to work at their Fairfax, VA office. [Link]
  • Honigman is seeking a patent attorney/agent with a degree in EE or computer science to work at their Oakland Count, Michigan office. [Link]
  • Byrne Poh is looking for a patent attorney/agent with a degree in EE or computer science to work at their New York office. [Link]
  • The Ollila Law Group is seeking a patent attorney with an EE and at least 2 years of experience to work at their Boulder office. [Link]
  • Abel Law Group is seeking a chemical practitioner with 2+ years of experience to work at their Austin office. [Link]
  • Klarquist Sparkman is seeking an IP Litigation Associate with 1-2 years of experience to work at their Portland office. [Link]

Upcoming Events:

  • The Synopsis under IP/Patents Telecom Sourcing (SUITS) Conference is presented in conjunction with the ITEXPO on October 2 and 3, 2012 in Austin, Texas. The SUITS Conference provides a unique forum for innovators of in the field of telecommunications, including developers, executives, implementers, licenses, licensors, end users, and carriers, to learn about and discuss intellectual property issues. Key topics will include the changing patent law landscape, litigating in the telecom space post Apple v. Samsung, monetizing telecom patents and more. The conference includes moderators Christopher Douglas of Alston and Bird, Jeb Dykstra of technology Sector Law, Raffi Gostanian of Open Invention Network and Todd Juneau of Juneau Partners with guest speakers that include John Horvath of Google, Ross Barton and Stacey White of Alston and Bird, Robert Johnson of AmelioWave, Noreen Rucinski of Schneider Rucinski Enterprises and more. http://itexpo.tmcnet.com/suits/
  • The 13th Annual Maximizing Pharmaceutical Patent Lifecycles is scheduled for October 10-11 in New York. The conference will feature, Presentations from key representatives from the USPTO who will provide you with direct insights and the logic of this agency on some of most pressing life cycle management strategies that the industry is facing today, Analyses of recent critical cases affecting patent life cycle planning including: Caraco (use codes); Prometheus (subject matter eligibility); Sun Pharma (double patenting); Ariad (patentability); and Therasense (inequitable conduct) – and strategies for using these cases to your advantage and many more topics. [Link] (PatentlyO readers register for with PO 200 for a discount)
  • The University of Akron School of Law's Center for IP & Technology will host the 6th Annual IP Scholars Forum on October 26, 2012, from 9:00AM – 2:00 PM. The Forum's purpose is to bring together a small group of prominent scholars for intensive, high-level discussions on cutting-edge issues of common interest. This year's Forum will discuss "The Impact of IP on Public Health." Guest include: Frank Pasquale, Andrew Torrance, Jim Chen Jay Dratler, Jr., Katherine Van Tassel, and many others. [Link]
  • The IP Section of the Nevada State Bar is hosting its annual CLE program in Las Vegas on November 2. The program will have sessions on trademarks, the top 10 patent cases of the year, IP strategy war stories, and many more. Guest speakers include: Mary LaFrance, Marketa Trimble, Mikio Ishimaru, Sean Carter, Jason Smalley, and many others. [Link]
  • ACI's 14th Advanced Forum on Biotech Patents will be held on November 28-29, in Boston. ACI's 14th Advanced Forum on Biotech Patents brings together another top-notch faculty of expert biotech patent practitioners who will share their experience and knowledge to help you avoid pitfalls and maximize the value of your intellectual property. [Link] (PatentlyO readers register for with PO 200 for a discount)
  • The ACI's Orphan Drugs and Rare Diseases conference will take place on November 28-29 in Boston. There are an estimated 6,000 rare diseases currently recognized in the U.S. alone; European authorities recognize as many as 8,000 rare diseases. With only approximately 150 treatments for these diseases approved so far according to the FDA's orphan designation database, there is a unique opportunity for companies of all sizes to invest in research and development to try to capture this lucrative market share. Indeed, according to a leading industry report, the orphan disease therapeutics market will continue to see a marked increase in value through the decade, increasing from 2010's $2.3 billion to an estimated $6 billion in 2018. [Link] (PatentlyO readers register for with PO 200 for a discount)

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Practice Note on US/EPO Patent Family Prosecution

Patent

Guest Post by Gwilym Roberts (UK) of Kilburn & Strode LLP

The USPTO delivered an advisory on 30th July 2012 urging US practitioners to file Form PTO/SB/69 effectively releasing search results from an unpublished US patent application for delivery to the EPO.  Practitioners in Europe have become aware of this because of the flurry of queries they have received subsequently from US attorneys requiring clarification! 

The relevant EPO provision is Rule 141 EPC.  Rule 141(1) is the key provision which entered into force on 1st January 2011 requiring applicants filing a European patent application claiming priority to additionally file a copy of the results of any search on the application from which priority was claimed.  However under Rule 141(2) the EPO can make special arrangements and US Federal Register Notice 2011-33539 notes that the USPTO has agreed with the EPO to provide the search results directly.  As a result, the EPO, prior to entry into force of the new rule, confirmed to users that they did not need to provide priority search results for US originating cases.  Hence, as far as European Patent attorneys are concerned, when we file a European patent application claiming priority from a US patent application there is no obligation on us, under EP law, to additionally provide search results from the original US application.

Before we get on to the new complexities following the USPTO advisory, as a final point Rule 141(3) does permit the European Patent Office to additionally request copies of search results from related cases.  In practice we are seeing this invoked in only very few instances. 

The complexity had come, as noted in the Federal Register Notice, because, of course, most if not all US patent applications will not have been published at the time a European application is filed claiming priority, meaning that the search results are not publically available.  As a result, Form PTO/SB/69 needs to be filled out for any US case in which an EP priority is likely to be claimed.  In practice this has not been happening, it would appear, hence issuance of the advisory pleading with US attorneys to fill out the form.  Of course the form is discretionary not obligatory and it may well be that in some instances applicants are not happy for their information to be released before publication of the patent application.  But the implication of the advisory notice is that if the situation is not remedied, the EPO exemption may be lifted meaning that on every EP case filed claiming priority from the US, the US search results need to be filed which will of course add to the burden and cost of the process.  It's not clear whether there has been discussion to that effect between the EPO and the USPTO, nor what prompted the appearance of the advisory. 

So what does this mean for US attorneys?  At present, whether or not the form is filed on the given case has no effect on the legal situation in Europe – European patent attorneys are not obliged to independently file copies of the priority search results by virtue of the notice from the EPO President.  Given that in due course the US application will be published the practical effects of not filing the form are likely to be either that processing of the European application is delayed until publication of the US application from which it claims priority, or that the EPO will start invoking Rule 141(3) and independently asking for the search results.  Longer term, however, we may see the exemption being lifted with the ensuing problems as described above. 

So for now perhaps the answer is, going forwards, and with applicant consent, to file the form, given that the results will be publically available at 18 months anyway.  However if the applicant is uncomfortable then this needs to be taken into account although it's worth noting that the search results will not become visible from the EPO earlier than 18 months either as it is subjected to the same non-publication period.  Questions have been raised as to whether it is necessary to file back dated release forms for applications already filed.  There will be no need to do this for applications that have been published but more generally this does not appear to be something the USPTO Advisory is requesting.

As regards the USPTO, it is clearly taking the correct legal line in terms of applicant interest.  But looking at other offices the approach taken by the UKIPO is certainly more straightforward – when requesting search on patents form 9A there is a box to be ticked requesting consent for sharing search information confidentially but note H indicates that in any event they are obliged to provide some information before publication to the EPO.  In other words, they just do it.  The relationship between EP law and UK law is far closer and intertwined, or course, but what a simple solution!

Summary

  • It is necessary to provide search results from US applications in relation to EP applications claiming priority from them, but this is done automatically by the EPO 
  • The USPTO can only send the priority search documents pre publication with applicant consent which it is now pleading with users to provide
  • From an EP perspective there is no legal obligation for US applicants to provide such a consent
  • But the long term result otherwise may be that the EPO no longer automatically obtains copies of US search results adding to the burden of the applicant, so it is worth doing, with client consent
  • There seems no need to retrospectively provide consent on existing applications.

Appellate Review of Patent Claim Construction: The Reality and Wisdom of a “Mongrel” Standard

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Guest Post by Professors J. Jonas Anderson (American University) and Peter S. Menell (Berkeley)

Patent scope plays a central role in the operation of the patent system, making patent claim construction a critical aspect of nearly every patent litigation.  With the resurgence of patent jury trials in the 1980s, the allocation of responsibility for interpreting patent claims between trial judge and jury emerged as a salient issue.  While the Supreme Court’s Markman decision usefully removed claim construction from the black box of jury deliberations notwithstanding its "mongrel" (mixed fact/law) character, the Federal Circuit’s adherence to the view that claim construction is a pure question of law subject to de novo appellate review produced an unusually high reversal rate. The high rate of reversal distorted the evidentiary foundation of claim construction determinations, delayed settlement of patent cases, ran up litigation costs, and turned appellate review of nearly every patent case into re-litigation of patent claim terms.

In 2004, the Federal Circuit undertook to reassess this regime in the Phillips case.  On its face, the majority en banc opinion largely stayed the course.  Indeed, the studies to have emerged since Phillips suggest that not much has changed, finding that the reversal rate remained high and that the Federal Circuit’s analytical framework remained largely unchanged.

Our recent article reports the results of a longer term, comprehensive, empirical analysis of the Federal Circuit’s claim construction jurisprudence from 2000 through 2011.  See “From de novo Review to Informal Deference: An Historical, Empirical, and Normative Analysis of the Standard of Appellate Review for Patent Claim Construction,” available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2150360.  In contrast to prior analyses, we find that the claim construction reversal rate has dropped precipitously since the Phillips decision.

 

Pre-Phillips

Post-Phillips

Percentage of terms reversed

37.6%

23.8%

Percentage of cases with at least one reversed claim term

40.7%

29.9%

Percentage of cases resulting in remand, reversal, or vacation due to claim construction error

35%

24.1%

The following figure shows the term-by-term reversal rate as a rolling average over 100 terms.  The blue line indicates the date that the Federal Circuit granted en banc review in Phillips.  The green line indicates the date of the oral argument.  The red line indicates the date that the decision issued.

Reversal Rate

As our article explains, although a majority of the Federal Circuit declined to overturn the de novo standard, just about all members of the Federal Circuit apparently concluded at or around the time of the Phillips argument that they should lighten up on their scrutiny of district court decisions.  The immediate drop in reversals that occurs following the Phillips argument suggests that the change in reversal rates cannot simply be explained by district courts having changed their practices in response to the Phillips decision.  If the real benefit of Phillips was the opinion’s value in instructing district court judges, we would expect to see a delayed and gradual drop in reversals followed by a later increase as litigants began selecting only the strongest cases for appeal.  Instead, we see an immediate and sustained drop in reversals.

As the following chart indicates, affirmance rates for all members of the Federal Circuit rose after Phillips.

Affirmance Votes

In addition, use of summary affirmances increased significantly following the Phillips decision and has remained higher than the pre-Phillips period.

SJ

Reversal rates have fallen across all technology fields except business methods. 

Technology Fields

During 2011, the average reversal rate dipped to 17%.  In the two years prior to Phillips, the rate was in the mid-40s.

This does not mean, however, that the problems of de novo review have been adequately resolved.  So long as the Federal Circuit subscribes to the view that claim construction is a question of law subject to de novo review, district courts will downplay their resort to experts and fact-finding in managing claim construction in an effort to avoid reversal.  This will undermine the quality of adjudication and appellate review by failing to elicit relevant evidence and perpetuating opaque analysis and reasoning.  We propose a “mongrel” standard of appellate review of claim construction decisions that better reflects the comparative strengths of trial judges in determining how skilled artisans understand patent claim terms. 

The proper standard integrates fact-finding based on experts who can illuminate the perspective of skilled artisans and claim draftpersons with careful review of the intrinsic record.  Lower courts’ assessments of such evidence should be upheld if not clearly erroneous or clearly contradicted by the specification or prosecution history.  The Federal Circuit would review the intrinsic record on a more independent basis, but with due regard for the district court’s deliberations, proximity to the full record, and integration of the skilled artisan perspective.  Were the Federal Circuit to embrace such a standard, lower courts would openly exercise their discretion to receive such evidence and build a forthright record supporting their interpretation.  Such a “mongrel” appellate standard would foster better development of the basis for claim construction analysis while promoting earlier settlement of patent litigation and lower litigation cost.  Where the disputed claim term is particularly susceptible to skilled artisan construction, the district court’s ruling would carry great weight.  But where the term is set forth or substantially constrained by the specification or prosecution history, then the intrinsic record would control.  But even in the latter circumstance, we believe that the Federal Circuit should apply a heightened standard – a showing by the appellant of unambiguous evidence in the intrinsic record supporting an alternative construction – so as to promote settlement and reduce litigation costs and uncertainty.

Recognizing this more limited role for appellate review of claim construction should not be viewed as abandoning the effort to improve the clarity of patent claims.  That remains a critical component of improving the efficacy of the patent system.  What our analysis shows is that achieving that goal through de novo review of patent claim construction misapprehends comparative institutional analysis at a heavy cost.  Claim clarity can and should be handled through the claim indefiniteness doctrine and through greater efforts by the Patent Office to ensure that patent claims are clear at the front end of patent protection.

The Supreme Court is currently considering whether to grant a writ of certiorari in a case presenting the standard of appellate review for claim construction decisions in Retractable Technologies, Inc. v. Becton, Dickinson and Co.  We believe that the time is ripe to formalize a “mongrel” standard.

Bits and Bytes

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by Dennis Crouch

  • Human-Attorney Interaction: I’ve been enjoying the forum at ASKPatents.  My favorite question so far: How to torpedo a bad patent my former large employer is filing in my name? 
  • Patent Infringement as a Civil Liberty: The ACLU has filed its petition for writ of certiorari with the U.S. Supreme Court in the Myriad gene patent case.  Many of us believe that the Supreme Court is likely to take the case. Dr. Kevin Noonan (who is pessimistic on the case) has more on Patent Docs. Dr. Noonan has also written an interesting post on In re Droge and its place in the obviousness doctrinal framework.
  • More Patent Harmonization: The Senate has passed S.3486 –  the Patent Law Treaties Implementation Act of 2012.  The House has not yet voted on its version of the Bill and is unlikely to take any action until after the November 6 elections. The Act would implement both the Hague Agreement (common design application) and the Patent Law Treaty (common filing issues for utility patents). [BNA] 
  • Is China Serious about Intellectual Property?: IPKat writes: “Xiao Zhenjiang, the leader of a counterfeiting gang was sentenced to life in prison and all of his belongings and property was ordered confiscated for counterfeiting almost GB £9,900,000 of luxury goods, specifically HERMÈS handbags/purses.”
  • Kodak Rounding Error: As another example of American schools failing to teach mathematics, it appears Kodak accidentally added a decimal when predicting a $2.6 billion sale of its patent portfolio.  Market estimates are now about 10% of that figure. Neil Wilkof writes more.
  • Next USPTO Director?: Managing Intellectual Property is queuing recently “retired” but indefatigable Robert Armitage as next USPTO Director.  Armitage should rightfully be seen as the driving force behind passage of the America Invents Act (AIA).  Armitage says that Kappos continues to be the right person for the job.  
  • No Standing to Defend Constitution: The USPTO has responded to Mark Stadnyk’s constitutional challenge to the AIA.  Their stance — that Stadnyk has no standing to defend the constitution because he cannot show any real or immediate injury due to the law’s implementation.  

Patent Maintenance Fees

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By Dennis Crouch

I have written before that about 50% of patents expire prematurely because the patent owners choose to not pay the maintenance fees. In many ways this is a good thing in that it clears-the-deck of patents whose owners may know of their worthlessness but that still require analysis and consideration by anyone conducting a freedom-to-operate search. And, by the time that maintenance fees are due (especially the 2nd or 3rd stage fees), the patentee should have a good sense of the market value of particular patent rights and can thus make an informed decision about whether or not to pay the fees due. Professor Rochelle Dreyfus wrote about this briefly in her 2006 article titled Pathological Patenting. Dreyfus wrote that “application fees should be low enough to attract patenting by all inventors and maintenance fees should be high enough to encourage abandonment of noncommercial patents.” Rochelle Dreyfus, Pathological Patenting: The PTO as Cause or Cure, 104 Mich. L. Rev. 1559 (2006).

A major percentage of USPTO revenue is generated through these maintenance fee payments. Since those payments require no additional USPTO work beyond the fee processing, the several hundred million dollars in maintenance fee payments can be used to subsidize the examination of more recently filed patent applications. In 2008 and 2009, the USPTO saw a major drop in maintenance fee payments that can be correlated with the economic downturn. The payments have risen again and are hovering around the all-time highs. The USPTO is in the midst of a major revision of its fee structure based upon its newfound authority and responsibility under the America Invents Act (AIA). As part of those changes, the USPTO has suggested an increase in the maintenance fee payments, including a 55% increase in amount charged for the 3rd stage maintenance fee. In a recent whitepaper on fees, the USPTO Director’s official advisory committee (PPAC) agreed with an increase in maintenance fees but suggested that the 3rd stage fee increase could negatively impact USPTO revenue.

The maintenance fees set forth in the NPRM are reasonable since by this point in the process, patentees should have a better sense of the value of their Intellectual Property (IP), although the PPAC still questions the increase proposed for the third stage maintenance fee. Given the percentage of patentees who currently pay for this stage, the concern is that revenues will decrease more than projected when fewer patentees elect 3rd stage maintenance. As the USPTO has noted, the AIA Fee Setting authority does not contemplate a once-and-done approach, but careful (at least yearly) review of fees and the observed behaviors of both applicants and Office personnel in response to the fees. PPAC encourages such continual review, especially with respect to things like responses to the 3rd Maintenance Fee and potential future course-corrections.

The chart below provides a time series of maintenance fee payments grouped according to fee payment deadline. Maintenance fees are due at three points following patent issuance: 3 ½ years; 7 ½ years; and 11 ½ years and the current fees are $1,130, $2,850, and 4,730 respectively (with 50% discounts for small-entities). In each case, the patentee is given an additional six-months to pay the maintenance fee (with a late-penalty surcharge). Thus, the USPTO does not officially record the patent as expired until the 4 year; 8 year; or 12 year mark respectively. It is those expiry deadlines that are represented in the chart below. Even after expiry, the USPTO generously allows expired patents to be revived. Those revivals are taken into account in the chart.

The chart shows three different series. The top series represents the percentage of patents where the first fee was paid. The middle series represents the percentage of patents where the second fee was paid. Obviously, in order to be eligible to pay the second fee, the patentee must have also paid the first fee. The lower series represents the percentage of patents where the third fee was paid.

From the chart, we can see that the percentage of payments for the second and third fee have fully recovered from the 2008-09 downturn and are at their highest points in the past decade. Payment for the first maintenance fee payment is still slightly below the pre-downturn rate. I expect another drop once the USPTO implements the new fee structure in early 2012. The chart above is important for USPTO revenue, but it doesn’t tell the whole story since the number of issued patents has been rising over the past 12 years, as we move forward USPTO revenue may increase even if fee payment percentages decrease.

Patent Expiry: An important element of any freedom to operate search involves the question of whether or not particular patents have expired and thus freely available in the public domain for subsequent commercialization. Unfortunately, our current patent information system does a very poor job of linking patent expiration to search results. In addition, the USPTO’s loose revival allowances (that make it easy to revive abandoned patents) mean that the data could not currently be relied on even if available. We still have some work to do.

Outside the Box Innovations v. Travel Caddy

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By Jason Rantanen and Dennis Crouch

Outside the Box Innovations LLC (Union Rich) v. Travel Caddy  (Fed. Cir. 2012) Download 09-1171
Panel: Newman (concurring in part and dissenting in part), Prost, O'Malley (opinion for the court Per Curiam)

A major criticism of the inequitable conduct doctrine has been that patents could be held unenforceable based upon even "minor and inadvertent errors" that occurred during prosecution of a patent.  A major purpose of the Supplemental Examination provision of the America Invents Act was to provide an avenue for correcting the potential unenforceability of patent rights due to those errors. While the AIA was percolating through Congress, however, the Federal Circuit issued its en banc opinion in Therasense v. Becton Dickinson.  Under the revised legal framework for inequitable conduct articulated in Therasense, it is highly questionable whether these "minor" violations continue to meet the materiality requirement of inequitable conduct. 

Unsurprisingly, post-Therasense, the Federal Circuit has been skeptical of these types of claims.  Last fall, in Powell v. Home Depot, 663 F.3d 1221, the Federal Circuit affirmed a district court determination that the patentee did not commit inequitable conduct by failing to update a Petition to Make Special as this was "not the type of unequivocal act, 'such as the filing of an unmistakably false affidavit,' that would rise to the level of affirmative egregious misconduct.'" (PatentlyO discussion here). In Outside the Box Innovations v. Travel Caddy, the Federal Circuit continues in the direction set by Powell, although it does not appear to be ready to completely abandon the notion that certain "minor" violations can constitute inequitable conduct – perhaps maintaining a bit of the "bark" of inequitable conduct despite curtailing its "bite." 

Small Entity Fees and Inequitable Conduct

The USPTO offers a major price-break for “small entities” – a 50% reduction in fees if the patent owner qualifies for “small entity status.”  In practice, small entities can actually be quite large. The usual rule is that the organizational structure be less than 500 employees.   Small entities can lose their status, however, by inter alia licensing the patent to a non-small entity.  See Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1142 (Fed. Cir. 2003).  (It's worth noting that the America Invents Act offers an even more aggressive price reduction of 75% for "micro entities," which the USPTO plans to implement in early 2013.)

Prior to Therasense, the Federal Circuit had held that inequitable conduct could arise when a large entity pays only the small entity fees.  See Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1231-33 (Fed. Cir. 2007).  Here, the patentee (Travel Caddy) paid the small entity fee when it should have paid the large entity fee (based upon licensing affiliates). The district court held the patents unenforceable. On appeal, the Federal Circuit reversed not on the ground of materiality, but on the basis of a lack of intent.  The court thus deferred to another day the question of whether the false statement associated with the small entity fee payment could rise to the level of "affirmative egregious misconduct," leaving it intact, if somewhat dinged up:

[A] false affidavit or declaration is per se material. Although on its face, it appears that a false declaration of small entity status would fall within the definition of an “unmistakably false affidavit,” particularly since a party that claims entitlement to small entity status does so in a sworn written declaration, we need not decide that question.[] Even if a false assertion of small entity status were per se material, the requirements of Therasense are not met here because there was no clear and convincing evidence of intent to deceive the PTO.  Specifically, there was no evidence that anyone involved in the patent prosecution knew that a patent license had been granted to a large entity and deliberately withheld that information in order to pay small entity fees.

Slip Op. at 13. 

Writing in dissent, Judge Newman argued that the majority did not go far enough in its reversal because the filing of the small entity statement by affidavit should not render the incorrect statement “per se material.”  Judge Newman also argued that a contingent patent license to a distributor should not necessarily defeat the small entity status.

Failure to Inform Patent Office of Pending Litigation

Manual of Patent Examining Procedure §2001.06(c) states that "Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the U.S. Patent and Trademark Office."  The application leading to Patent No. 6,991,104 was a continuation of the application that led to Patent No. 6,823,992.  On September 23, 2005, a declaratory judgment was filed seeking a declaration of noninfringement of the '992 patent; Travel Caddy did not inform the patent examiner of the existence of this litigation prior to the '104 patent's issuance on January 31, 2006. 

The Federal Circuit reversed the district court's pre-Therasense finding of both materiality and intent on this theory of inequitable conduct as well. On materiality, the Federal Circuit ruled that the failure to disclose the existence of a litigation "when there was no citation of prior art, nor any pleading of invalidity or unpatentability in the ’992 complaint as it existed during pendency of the ’104 application" did not constitute "clear and convincing evidence" of materiality.  Slip Op. at 7.  On intent, "the record contains no suggestion of how the withholding of the information concerning the ’992 litigation could have deceived the examiner and no suggestion of deliberate action to withhold it in order to deceive the examiner."  Id. at 8. 

Experts Need Not Be Lawyers: In a somewhat bizzare ruling, the district court excluded an expert offered by one of the parties on the ground that he was not a lawyer.  "To be sure, many lawyers have technical training, but it is technological experience in the field of the invention that guides the determination of obviousness, not the rhetorical skill or nuanced advocacy of the lawyer."  Slip Op. at 19.  The Federal Circuit concluded that this constituted an abuse of discretion, and that the error had a "substantial influence" on the outcome of the case.

Claim Construction: The opinion also includes a detailed discussion of claim construction procedure in the context of a prior interpretation by a CAFC panel reviewing a denial of a preliminary injunction (although no final resolution of the issue is reached), and addresses issues of claim construction generally.  Judge Newman dissented from the opinion on these issues as well.

Federal Circuit Again Denies Declaratory Judgment Jurisdiction: DJ Plaintiff Must Provide Evidence of Real and Immediate Conflict

Patent,

By Dennis Crouch

Matthews Int’l Corp. v. Biosafe Eng’g, LLC, (Fed. Cir. 2012)[1]

Judge Mayer begins his opinion with the statement: “Matthews is a leader in the “death care” industry.[2] It manufactures cremation equipment, caskets, and bronze memorials and sells them to funeral homes.”  Matthews is moving into the field of environmentally conscious cremation with its new BioCremation units.[3]

The patent owner in this case – Biosafe – purchased a handful of patents at the bankruptcy sale of the defunct company Waste Reduction Inc. Those patents are directed to using alkaline hydrolysis to break down hazardous biological waste.[4]

After a series of communications between the parties, Matthews filed for a declaratory judgment of non-infringement, invalidity, and unenforceability. The complaint also alleged state law claims of trade libel, defamation, and tortious interference with contractual relations.  Western District of Pennsylvania Judge Fischer[5] dismissed the case – holding that the court lacked declaratory judgment jurisdiction over the case.

At the time of the DJ lawsuit, Matthews had only created prototype models of the BioCremation units and had not settled on various parameters of the system or its operation.  Based upon that fact, the district court held that the potentially infringing features of the system were “fluid and indeterminate” and thus that the DJ claim “lack[ed] the necessary reality to satisfy the constitutional requirements for declaratory judgment jurisdiction.”[6]

On appeal, the Federal Circuit has affirmed – holding that “Matthews’ dispute with Biosafe lacks the requisite immediacy and reality to support the exercise of declaratory judgment jurisdiction.” 

Immediacy: Basically, the court agreed with the lower court that the action was not ripe because no party was in a position to immediately infringe the patent since – at the time of filing – no BioCremation units were in operation.  Further, the complaint did not allege that anyone would be using the units in an allegedly infringing manner.  As such, “its dispute with Biosafe is too remote and speculative to support the exercise of declaratory judgment jurisdiction.”

To be clear, Matthews (or its customers) do not have to release their product at-risk (i.e., begin infringing) before the courts will hear the lawsuit.  Rather, the declaratory judgment jurisdiction threshold can be crossed prior to product release. In this case, the court suggests that the way to meet that threshold test is to provides “some specific and concrete evidence regarding how Matthews’ customers plan to use the cremation units.”[7]

Reality:  The court explained its “reality” test for declaratory judgment jurisdiction as focusing on whether the DJ plaintiff has an actual product whose technology is “substantially fixed” as opposed to being “fluid and indeterminate.”  Here again, at the prototype stage it was impossible to know or predict whether the BioCremation units would be used in a way that could allegedly infringe.

Burden on DJ Plaintiff: Although the court did not discuss presumptions, the de facto holding here falls in line with the court’s recent decision in Medtronic, Inc. v. Boston Scientific Corp. (Fed. Cir. 2012).[8] In both cases, the court places the burden on the DJ plaintiff to actually show that a real and immediate controversy exists between the parties.

Trap for Unwary DJ Plaintiffs: The court does, however, present a bit of a trap for declaratory judgment plaintiffs when it asks them to provide evidence of a credible infringement argument.

[2] Before RADER, Chief Circuit Judge, MAYER and SCHALL, Circuit Judges.

[4] See U.S. Patent Nos. 5,332,532, 6,437,211, 6,472,580, 7,183,453, 7,829,755, and 7,910,788.

[5] Biography of Judge Nora Barry Fischer at /media/docs/2012/09/j_fischer.pdf.

[6] Matthews Int’l Corp. v. Biosafe Eng’g, LLC, No. 11-CV–0269, 2011 WL 4498935 (W.D. Pa. Sept. 27, 2011) (“District Court Decision”).

[7] See Sierra Applied Scis., Inc. v. Advanced Energy Indus., Inc., 363 F.3d 1361, 1379 (Fed. Cir. 2004) (concluding that a dispute lacked the required immediacy where a prototype of the product in question would not be operational until more than a year after the complaint was filed); Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 1520, 1527 (Fed. Cir. 1992) (affirming the dismissal of a declaratory judgment claim where clinical trials of an allegedly infringing product had just begun and it was “years away” from being approved by the Food and Drug Administration (“FDA”)); Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 764 (Fed. Cir. 1990) (concluding that the actual controversy requirement was not satisfied where the allegedly infringing product “would not be finished until at least 9 months after the complaint was filed”).

[8] Good-Standing Licensee Must Prove Non-Infringement in DJ Action, at https://patentlyo.com/patent/2012/09/good-standing-licensee-must-prove-non-infringement-in-dj-action.html.

USPTO Funding Secured Through March 2013

Patent,

by Dennis Crouch

The USPTO does not receive any funding from general taxation sources. Rather, the agency is fully funded by the fees paid by patent applicants and patent owners.  Unfortunately, this link between fees and USPTO spending is based upon tradition and the usual approach rather than any actual requirement that the fee revenue be available for office expenditures.  The result is that Congress maintains the USPTO purse strings. 

In a bipartisan vote, the Senate recently passed the Continuing Appropriations Resolution, 2013.[1] That resolution was necessary because fiscal year 2013 begins October 1, 2012 and executive agency spending had only been appropriated through fiscal year 2012. 

The continuing resolution is a six-month gap filler and allows the USPTO and many other federal agencies to continue to spend money at the rate set for fiscal year 2012.

President Obama had asked for a increase in USPTO appropriations and that particular issue would likely receive bipartisan support.[2] The problem for the USPTO is that it is continually swept up as a small part of the contentious budget debate that often results in across-the-board solutions.  One reason for this is that federal budget accounting counts USPTO revenue as government revenue and USPTO spending as government spending. Thus, cuts in USPTO spending are in-fact budget cuts.[3]

Taking a step back, why shouldn’t some portion of the USPTO revenue be used for general government spending, i.e., deficit reduction or market infrastructure expenditures?  In particular, how is taking 10% from the USPTO worse increasing income, payroll, or business profit taxes – especially since a significant number of patent owners are foreign entities that pay no other federal taxes.  USPTO maintenance fees (renewal fees) are essentially property taxes – perhaps they should be treated as such.

 

[1] Continuing Appropriations Resolution, 2013, at http://thomas.loc.gov/home/gpoxmlc112/hj117_eh.xml.

Intellectual Ventures

Patent,

by Dennis Crouch

Although it is unclear, Intellectual Ventures may now be the largest worldwide patent holder.  Part of the organization's strategy is to develop important portfolios for various industries and then ensure that each participant in that industry obtain a license. 

In a recent press release, Intellectual Ventures announced settlements with two additional memory device manufacturers: SK hynix Inc. and Elpida Memory, Inc.  IV writes:

At this point, nearly all the world’s major memory companies have licensed our portfolio.

IV continues to be secretive in its patent ownership strategy. However, several thousand of its patents are now properly listed in the USPTO assignment database. Unfortunately, these listings represent only a fraction of the company's ownership.
 
 
 

 

Kappos: PTAB Has Authority to Challenge Section 101 issues

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By Dennis Crouch

On his blog, USPTO Director David Kappos has posted a response to my recent essay titled Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure? My essay was an extension of Prof. Hricik’s post on a similar topic but with a litigation focus. In the response, Kappos provides his conclusion (and thus that of the USPTO) that the new Patent Trial and Appeal Board (PTAB) has the power and duty to consider patentable subject matter challenges brought under 35 U.S.C. § 101 in post-grant review proceedings or covered business method review proceedings.

The problem with the statute is that the scope of these post-grant proceedings is defined by reference to another provision – 35 U.S.C. § 282(b)(2) and (3). Those provisions in §282 in turn reference “Part II” of the 1952 Patent Act that roughly includes 35 U.S.C. §§ 100 – 199 (skipping gaps). In addition, challenges can only be brought if “identified in part II as a condition for patentability” or as a “requirement of section 112, except failure to disclose the best mode.” Everyone is in agreement that the anticipation and obviousness elements of Sections 102 and 103(a) count as conditions for patentability. The language of the statute suggests that the requirements of Section 112 are not conditions for patentability. Most of us would probably think that Section 113’s requirement of drawings where necessary is also not a condition for patentability but instead only a requirement.

Now, the difference between a condition and a requirement is that conditions for patentability can legally serve as invalidity defenses in patent litigation and, under the AIA can also serve as the basis of a post-grant review. On the other hand, the USPTO can still refuse to issue a patent based upon failure to meet a mere requirement. But, once the patent issues such a failure cannot serve as invalidity defenses.

The big question that we raised (and that Dir. Kappos has responded to) is what to do with the traditional elements of 35 U.S.C. § 101. For its part, the USPTO argues that all requirements of Section 101 are conditions for patentability and thus are proper subject of post-grant review proceedings. Director Kappos writes:

As we described in our final rules implementing post-grant review and covered business method review in the Federal Register, in our view the “grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the relevant case law and the legislative history.
 
Both the Supreme Court and the Federal Circuit have concluded that § 101 is a condition for patentability. In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the Supreme Court stated that the 1952 Patent Act “sets out the conditions of patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court has also addressed invalidity under § 101 when it was raised as a defense to an infringement claim under § 282. See Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012).
 
If that were not clear enough, the Federal Circuit expressly rejected the argument – raised by the dissenting judge in the case – that § 101 is not a “condition for patentability” under § 282, stating that “the defenses provided in the statute, § 282, include not only the conditions of patentability in §§ 102 and 103, but also those in § 101.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012) (internal quotation marks omitted) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)).

The Federal Circuit in Dealertrack also made clear that the use of the term “Conditions for patentability” in the titles of §§ 102 and 103, but not § 101, did not change the result, relying on the Supreme Court’s pronouncement in Pennsylvania Department of Corrections v. Yeskey, 524 U.S. 206, 212 (1998) (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)), that a statute’s title “is of use only when it sheds light on some ambiguous word or phrase” in the statute and that it “cannot limit the plain meaning of the text.” Id. (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)).
 
The legislative history of the AIA also makes clear that Congress intended the PTAB to consider challenges brought under § 101 in post-grant reviews. For example, a key House Committee Report states that “the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.” H.R. Rep. No.112-98, at 47 (2011). On the Senate side, Senator Kyl also included “section 101 invention issues” among those “that can be raised in post-grant review.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
 
So, the courts and Congress have indicated quite clearly, in our view, that the PTAB should consider patentability challenges brought under § 101 in post-grant and covered business method reviews. Unless the courts or Congress tell us otherwise, we will do so.

Read the Kappos Blog

Now, for reasons discussed in prior posts, I disagree with Director Kappos that the answer is so clear. Basically, the precedent cited is dicta and not controlling. However, I do agree with Director Kappos’ ultimate conclusion that Section 101 issues are (and will continue to be) be treated as conditions for patentability. I suspect his viewpoint will be vindicated within a couple of years as the issue reaches the Federal Circuit

Droge: Appealing Board Decisions (And Losing)

Patent, ,

By Dennis Crouch

In re Droge (Fed. Cir. 2012)

In a unanimous panel opinion, the Federal Circuit has affirmed a decision by the Board of Patent Appeals and Interferences (now Patent Trials and Appeals Board) that Droge’s claims are unpatentable as obvious when compared against the known prior art. In this case, it was the inventors’ own previously published academic article that ended the case.

Droge’ claimed invention covers a phage-mediated recombinant DNA method for use in eukaryotic cells and the inventor’s prior paper involved a similar technique in prokaryotic cells. Droge presented a credible argument that differences in the cell types and protein co-factors meant that someone skilled in the art would not expect the prokaryotic technique to work in eukaryotic cells.

On appeal, the Federal Circuit found two problems with Droge’s arguments: (1) the prior art does not need to create a true expectation that the new invention will work – rather, the question is whether it creates a “reasonable expectation of success.” For that point, court quoted the 2009 Kubin decision: “Obviousness does not require absolutely predictability of success … all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)). (2) Because the expectation of success is a factual question, the Board’s decision will only be overturned if that decision is unreasonable and lacks substantial evidence. That low evidentiary standard means that the Board’s decisions are affirmed unless clearly wrong.

After rejecting Droge’s arguments, the Federal Circuit then affirmed the rejection – finding the claims unpatentable.

Interesting – Dr. Peter Droge appears to be the owner of the patent application – having received an assignment from the other two inventors in 2002. The trio are also the listed inventors of U.S. Patent No. 7,491,539 that – according to the spotty USPTO assignment records – is co-owned by Dr. Droge and Boehringer Ingelheim.

Guest Post: The Problematic Origins of Nationwide Patent Venue.

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Guest Post by Professor Tun-Jen Chiang of George Mason University.

Patent litigators are all familiar with the Eastern District of Texas. The reason that this otherwise-unexceptional district is able to dominate patent litigation comes down to a little known case, VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), which created nationwide venue for virtually every patent case.

Some background is in order. 28 U.S.C. § 1400(b) allows a patent infringement action to be brought, inter alia, where the defendant "resides." Intuitively, one would think that residence refers to the state of incorporation or principal place of business, and under that version few defendants reside in East Texas.

28 U.S.C. § 1391(c) adds a wrinkle. It states: "For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction." By the plain language of the statute, a corporation that makes any sales in East Texas is then deemed to reside there. This is the basic analysis of VE Holdings.

But the Supreme Court decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) is very much to the contrary. Fourco dealt with the prior version of § 1391(c), which stated: "A corporation may be sued in any judicial district in which it . . . is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes." The respondent in Fourco specifically argued that old § 1391(c) was clear and deemed a corporation to "reside" wherever it did business. The Supreme Court nonetheless held it did not apply to § 1400(b):

We think it is clear that § 1391 (c) is a general corporation venue statute, whereas § 1400(b) is a special venue statute applicable, specifically, to all defendants in a particular type of actions, i.e., patent infringement actions. In these circumstances the law is settled that [h]owever inclusive may be the general language of a statute, it will not be held to apply to a matter specifically dealt with in another part of the same enactment. . . .

We hold that 28 U.S.C. § 1400 (b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391(c).

The Federal Circuit in VE Holdings distinguished Fourco because the statutory language had changed. See 917 F.2d at 1579. But the change in language was immaterial to the underlying rationale of Fourco: the new § 1391(c) was and is still a "general corporation venue statute," and § 1400(b) was and is still a "special venue statute applicable, specifically, to . . . patent infringement actions."

What we have is the familiar situation where the Federal Circuit tosses aside a Supreme Court decision by invoking a slim excuse. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Until very recently the Supreme Court indulged this. But the Court seems to have changed, and this would be a good time to revisit VE Holdings.

I should add one thing, which is that one can very much question whether Fourco itself is correctly decided. But this is, of course, not a question the Federal Circuit should arrogate upon itself to decide.