Patent Damages and the Need for Reform

Patent

This is a guest Post by Michael J. Mazzeo, Jonathan Hillel and Samantha Zyontz[1]

Our analysis of a new dataset challenges the assumptions on which the Patent Reform Act is based and questions the need for damages law reform. Damages provisions of the Patent Reform Act, the latest version of which was recently introduced for vote in the Senate, are premised on concerns that awards are “too often excessive”[2] and those large verdicts featured in media headlines “represent the tip of the iceberg” of excessive awards.[3] Last week at the inaugural Samsung-Stanford Patent Remedies Conference, we presented a very different picture of patent infringement damages.

In our prize-winning study, “Are Patent Infringement Awards Excessive?: The Data Behind The Patent Reform Debate”, we compile a dataset comprising infringement awards from over 300 cases decided in US federal courts between 1995 and 2008. We build on a proprietary dataset from PricewaterhouseCoopers, supplementing it with information about the litigants, lawsuits and economic value of the patents-at-issue. Using standard statistical techniques and regression analysis, we search for evidence of “excessive” awards. Certain of our key findings are summarized below:

1. The eight largest awards represent nearly half of the total amount of damages in our dataset. As shown below, the distribution of damages is highly skewed, and awards in the largest eight cases represent over 47% of cumulative damages.

Mazzeo1

2. Patent infringement damages are highly predictable. We perform an 80-variable log-linear regression analysis that explains nearly 75% of the variation in the observed awards. As shown below, the first-order results of our regression indicate that juries and large defendants are correlated with higher awards.

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Filing-Date-Focused-System – The Key is the Scope of the Grace Period

Patent,

[Update] A vote on S.23 is expected this evening, March 2, 2011. Before becoming law, the bill would need to also be approved by the House of Representatives.

I want to thank Professor McCrackin and her students for providing a useful analysis that compares the patent-race issues involved with the move to a first-to-file system.

I have long maintained that pressure to move to first-to-file has very little to do with these patent races. Interferences are extremely rare. And, as we all know, if it is difficult to prove prior dates of conception and reduction to practice, it is all-but-impossible to prove diligence at the level required by caselaw. Thus, in the words of Paul Morgan, analyzing the change in terms of the patent race is a "truly academic exercise."

For this reason, in my 2010 article on anticipation I decided to move the nomenclature away from first-to-invent and first-to-file systems and instead talk about whether the patent system is filing-date-focused or invention-date-focused and also to query the type of grace period allowed by the various systems.

What few are talking about with the proposed legislation is that it would increase the scope of prior art available to invalidate a patent – even when no competing patent application is filed.

In particular, the proposed legislation severely restricts the one-year grace period currently available to a patent applicant. Under the new legislation, a prior inventor could only antedate a pre-filing disclosure if that disclosure was (1) derived from the inventor or (2) made public after the inventor publicized her invention. Under the current rules, the one-year grace period operates without regard to the source of the putative prior art.

Even more, under current law, sales and offers-to-sell only constitute prior art if those sales occurred more than one year before the patent application filing date. 35 U.S.C. § 102(b). In those circumstances, no "swearing behind" is necessary against sales activities because they only qualify as prior art if they occurred outside of the grace period. It appears from the language of the bill, that no grace period would be allowed for pre-filing sales activities. Rather, the grace period language in the proposed bill only relates to "disclosures" and on sale activity is typically not seen as a disclosure.

From a practical standpoint, these elements involving the grace period are much more likely to impact patent applicants than any potential interference issue.

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Comparison of the Current U.S. First-to-Invent System with the First-Inventor-To-File System Proposed in the Patent Reform Act of 2011 (S.23)

Patent, ,

Guest Post By Prof. Ann McCrackin, Stephen Brodsky, and Amrita Chiluwal. Prof. McCrackin is Director of the Patent Prosecution Program at the Univ. of New Hampshire School of Law (formerly Franklin Pierce Law Center). Mr. Brodsky and Ms. Chiluwal are both 2011 JD Candidates at the Univ. of New Hampshire School of Law.

The Patent Reform Act of 2011 ("S.23") is now being considered by the full U.S. Senate. One of the provisions of S.23 would replace the current first-to-invent ("FTI") system with a first-inventor-to-file ("FITF") system. Some of the differences between these two systems are outlined below in order to help understand the changes in Sec. 2 of the S.23 Bill. For simplified illustrative purposes, Parties ("A" and "B") and their invention ("Widget") will be used below.

First-to-Invent

The current U.S. system is a first-to-invent ("FTI") system. Under the FTI system, the first party to invent is entitled a patent on that invention upon filing for a patent application (as long as all of the other patentability requirements are met). Even if the first party to invent is not the first to file, that party could still be entitled to the patent rights. In situations where there are multiple inventors of the same invention, the determination as to who is entitled to the patent rights is made during an interference proceeding. Interference proceedings are administrative proceedings held at the USPTO that legally determine the first inventor. However, there are time constraints on interference proceedings, e.g., typically a party cannot bring an interference proceeding on an invention after a patent has issued on that patent. Therefore, the first person to file would get the patent unless another person is able to prove prior invention in an interference proceeding.

The following examples involve two parties who claim the same invention in an FTI system:

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Patent Reform – An Important Amendment to the Bill

Patent,

The Senate is today considering the Patent Reform Act of 2011, with the proviso that the legislation is now being termed the “America Invents Act of 2011.” A major element of the bill would eliminate first-to-invent rights and also eliminate any pre-filing grace period except for inventor-derived disclosures (and post-inventor disclosure disclosures). In several ways, the legal reforms would move US law closer to the rest-of-the-world (ROW) by primarily basing patent rights on the date that a patent application is filed rather than the date of invention.

Anti-Harmonization: In noting a major deficiency in the bill, Hal Wegner has expressed concern that the unfortunate end result is anti-harmonization. The particular concern is the question of when “secret” prior art (today termed 102(e) prior art) is available for obviousness (or inventive step) analysis.

In the European and proposed US first-to-file system, when two individuals independently make the same advance, only the first-inventor-to-file the patent application will receive a patent on that invention. However, it is actually quite rare that the second-filed application’s claim set will be entirely anticipated by the previously filed disclosure. The big question then is not novelty, but rather obviousness (or inventive step) – do the claims in the second-filed application present an inventive step over the prior art? In Europe and the ROW, the first-filed patent application can only be used for novelty analysis and is not applied to the question of obviousness unless that first-filed application was otherwise published. Under the new US bill, however, these unpublished, secret filings would be used both for novelty and obviousness grounds.

An Example: To be clear, the issue arises when Inventor-A files a patent application and then, a few months later, Inventor-B files a patent application claiming a similar (but different) invention. It is usually the case that (1) Inventor-A will not immediately publicize its invention and (2) the first-filed application will not be published until 18-months after its filing. Under the proposed system, Inventor-B’s patent could be blocked on obviousness grounds based on Inventor-A’s application. In Europe and Japan, however, the earlier filed application would not be used in the obviousness (inventive step) analysis unless published prior to Inventor-B’s application date.

Thus, under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.

Importance: This issue turns out to be important in a fairly large number of cases. In a recent study, I found that, on average, US patents cite to about 5.5 references that conform to this situation – i.e., the average patent in my study cited to 5.5 other patent applications that were on-file prior to the filing of the patent application under examination but were not published until afterwards. The legal question for examiners is whether those references should be considered only for novelty grounds or if obviousness should be a consideration as well.

I do not know the answer to the question of whether the proposed US system is better or worse than the current European system. I do know, however, is that the US proposal does not harmonize those laws and may tend to frustrate US applicants by offering a lower bar to patentability in Europe than in their home country.

A Framework for Analysis: The Supreme Court’s 2007 decision in KSR v. Teleflex offers one framework for analysis. That case talked about a common sense approach to obviousness analysis – both in choosing prior art references to consider and in applying those references against the proposed invention. The common sense framework suggests that we not consider prior art references that could not have been accessible to someone of ordinary skill in the art. In this situation, these previously-filed applications were, by definition, kept secret within the Patent Office and not published elsewhere. Under those conditions, a common sense approach would exclude those when determining the level of ordinary skill in the art.

If the fix is to eliminate this secret prior art from obviousness analysis, the solution is a simple three-line amendment to the proposed legislation.

CAFC Declines to Take Prosecution Laches En Banc

Patent,

By Jason Rantanen

Cancer Research Technology Ltd. v. Barr Laboratories, Inc. (Fed. Cir. 2011) (Precedential Order) Download 10-1204 enbanc order

This morning the CAFC denied Barr Laboratories' request for rehearing en banc.  Review was barely denied: the judges split 5-5, just short of the 6-judge majority currently required for rehearing en banc.  Dissenting from the denial, both Judges Prost and Dyk expressed opinions on the issue of prosecution laches.

I previously wrote about Cancer Research Technology here.  In a nutshell, the panel majority reversed the district court's finding of prosecution laches on the ground that no prejudice was shown due to the lack of any evidence of intervening rights arising during the prosecution period.  Judge Prost dissented from that ruling, rejecting the idea that prosecution laches requires either prejudice or intervening rights. 

Judge Prost's dissent from the denial of rehearing en banc, joined by Judges Gajarsa, Moore, and O'Malley, reiterates and bolsters that view.  Drawing on Supreme Court precedent, Judge Prost again argues that the Supreme Court's test for prosecution laches does not require evidence of intervening rights:

This narrowing of the doctrine is not only unnecessary, it is contrary to Supreme Court precedent.  It is true that in both Woodbridge and Webster the Court refused to enforce the patent where both unreasonable delay and intervening rights existed. Woodbridge, 263 U.S. at 53, 56-57; Webster, 264 U.S. at 465-66. In each of these cases, however, the Court made clear that both unreasonable delay and intervening rights were not required to support a finding of prosecution laches.

Prost dissent at 3-4.  In Judge Prost's view, this precedent instead requires the court to favor flexibility over rigidity as the Supreme Court instructed in decisions such as Bilski, KSR, and eBay.

Judge Dyk wrote separately, commenting that while he agrees with Judge Prost that evidence of intervening rights should not be required, he disagrees with the use of a "totality of the circumstances" test, "which is really no test at all." Dyk dissent at 1.

Is Woodridge Applicable? In his IP newsletter, Hal Wegner takes issue with Judge Prost's characterization of a Supreme Court "doctrine" of prosecution laches based on Woodridge, pointing out that the case had nothing to do with a granted patent.  As explained in an amicus brief filed in Symbol Technologies:

Woodbridge v. United States, 263 U.S. 50 (1923), does not provide any guidance regarding prosecution laches because Woodbridge never received a patent. Rather, the Woodbridge case involved a statutory compensation act for private relief for an unpatented invention of Woodbridge. Woodbridge, 263 U.S. at 51. The statute's language required the trial court to deny relief to Woodbridge because there had been laches in his patent procurement process. Id. This statutory laches in a private law therefore had nothing to do with laches in the patent law.

In contrast, Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924), did include a discussion of prosecution laches. An examination of the facts in that case, however, reveals that the key issue involved what today would be inequitable conduct. Accordingly, Webster hardly shapes the contours for a well-formed ‘doctrine.’”

Hal Wegner, quoting Symbol Technologies, Inc. v. Lemelson Medical, Educ. & Research Foundation, 422 F.3d 1378 (Fed. Cir. 2005), Brief Amicus Curiae of Takeda Pharmaceutical Co., 2004 Westlaw 3335267, p. 4 (2004)(original emphasis).

Guest Post: Centocor, the Antibody Exception, and Claiming Only What was Invented

Patent, , , , ,

By Oskar Liivak
Assistant Professor, Cornell Law School

As Jason Rantanen’s post describes, Centocor claimed but failed to disclose any fully humanized antibodies.  Abbott consistently pushed this argument and they won.  It was the simplest and most direct way to dispose of the case.  This approach necessarily left other important issues undecided, however.  Both Eli Lilly and I separately filed amicus briefs in favor of Abbott and we both argued for a decidedly more aggressive, alternative argument for written description invalidity.  As the Court in Centocor disposed of this case by simpler means, clear judicial resolution of our arguments will have to wait for another day.

This post highlights those remaining issues, why we should still care about them, and how they are tied to a much larger ongoing struggle in patent law – can a patent claim cover more than what was actually invented (i.e. conceived and disclosed) by the inventor?  I think the answer is clear – it cannot – but not every patent attorney or CAFC judge agrees.  I think this is perhaps the most important ongoing debate in patent law.  § 112 as applied to antibodies is but one battlefront in this larger fight. 

ABANDONING THE ANTIBODY EXCEPTION
The arguments in both of our briefs would have resolved the case in favor of Abbott but would have also resolved a very problematic ambiguity relating to the written description for antibodies generally – the so-called ‘antibody exception.’  The PTO’s written description guidelines seem to suggest that disclosure of an antigen alone can provide § 112 support for any antibody that binds to that antigen.  See U.S.P.T.O., Written Description Training Materials Revision 1 March 25, 2008 at 45-46.  Cases like Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004), have cited these guidelines but the guidelines have yet to be really at the center of a case – even here in Centocor the CAFC distinguishes them.  The trouble is that those PTO guidelines are in tension if not complete conflict with written description as described in Ariad v. Eli Lilly, 598 F.3d 1336, 1354 (Fed. Cir. 2010) (en banc).  With the rapid growth of and enormous revenues associated with antibody related therapies, patent law must clarify this issue.

The crux of the argument is simple.  I believe that the disclosure requirements of § 112 limit claims to the subject matter actually invented by the inventor and disclosed by the specification.  Ariad at 1351.  If we consistently applied this rule for disclosure in light of today’s understanding of protein structure, disclosure of a well characterized antigen alone would not provide support for an antibody that binds to that antigen.  And disclosure of one actual antibody provides § 112 support only for that antibody—not the entire genus of antibodies that binds to the antigen.  This view is in direct conflict with the antibody exception.  Here is the argument.    

Ariad reaffirmed that § 112 “requires … that the specification must … show that the inventor actually invented the invention claimed.” Id.  As best I can surmise, to invent something a person must conceive it.  Conception is how patent law decides when something is invented; conception is how patent law decides who invents something; and it should be the way patent law determines what the something is that was invented.  From the perspective of conception (namely a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice”) the antibody exception and the broad claims it would allow start to look totally absurd. 

The problem is, as put by Eli Lilly in their amicus brief, “[e]ven with today's most advanced scientific tools, it is impossible to predict the actual structure … of a not-yet-known antibody based on the structure of an antigen or even the structure of another antibody that binds that same antigen.”  Though my own scientific background was not in immunology (it was in the more general field of three dimensional protein structure determination) I agree with Eli Lilly.  Even given the three dimensional structure of an antigen, no person today can conceive (without actually going into the lab and making one) an antibody that will bind to that antigen.  Furthermore, even once we make one antibody that does bind to an antigen, that alone does not allow for the conception of any other antibodies (much less every antibody) that will also bind to that antigen.

As the Federal Circuit determined, Centocor’s “application only provides amino acid sequence information … for a single mouse variable region.”  Slip Op. at 14.  That meager though still useful (see http://en.wikipedia.org/wiki/Infliximab) disclosure pales in comparison to the broad genus of variable regions that were claimed.  Asserted claims 2 and 3 covered any antibody with a human constant region and a human variable region that binds and neutralizes TNFα in a similar location as the deposited antibody.  There is nothing in the specification that evidences conception of any other variable regions beyond the one deposited variable region.  That disparity between the solutions disclosed versus the solutions claimed is why I viewed this case as being nearly identical to the over-reaching patentees in The Incandescent Lamp case, 159 U.S. 465 (1895).  Where a solution to a technical problem is found through trial and error (even sophisticated, elegant trial and error like for antibodies) without further discovering how to extrapolate to other solutions from the one found solution, then claims cannot exceed that one particular solution.  See id. at 472.  As a result I argued that the asserted claims are invalid under § 112 because they claim variable regions (whether humanized or not) that Centocor certainly did not invent or disclose.

From a policy perspective some might worry that this will provide incredibly narrow and worthless claims in a rapidly growing and important field.  I am not so sure.  It will certainly allow others to produce their own antibodies to the same antigen as the other antibodies will likely differ in actual variable region structure.  The narrow claims still prevent outright piracy and copying of your particular antibody but they also leave room for competition.  With tens of thousands of dollars a year for treatment for these drugs, a little fair competition doesn’t sound bad.  Lastly, the big question is the ability for generic biologic producers to piggy back on the testing data for the initial biologic.  I don’t see a problem from narrow claim scope in this regard either.  Though it depends on the details of the generic approval process for biologics, roughly speaking I wouldn’t want safety and efficacy data from one antibody to be used to confirm the safety and efficacy of structurally different antibodies even if they bind to the same antigen.

When § 112 and its usage of ‘the invention’ is rightfully tied to the subject matter actually invented (i.e. conceived and disclosed), then the shortcomings of the antibody exception become quite apparent.  In fact, when viewed in that light (which I think is the only way to interpret the statute) I cannot fathom a scenario by which the PTO could have possibly drafted the antibody related written description guidelines that have led to the antibody exception.

THE INVENTION AS THE EMBODIMENTS CONCEIVED AND DISCLOSED
But therein lies the problem: not everyone in patent law thinks about the statutory appearances of the invention in § 102, § 112, and more importantly § 271, as tied to the subject matter actually invented (i.e. conceived and disclosed).  For some the invention is just a short-hand reference for whatever subject matter the applicant claims because “the claims … define the invention….”  Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004).  The difference between these two views is critically important yet patent law has never confronted this confusion directly.  In fact, ask yourself, how do you conceptually and practically define the ‘invention’ in 35 U.S.C.?  I think some of our most pressing debates are fueled by talking past each other.  We are often thinking differently about the invention without actually being aware of the disagreement. 

The fight over the disclosure requirements evidenced in Ariad and Centocor is just one visible battle between these two world views.  Another important flashpoint is claim interpretation.  Just a month ago on Jan. 24 (as noted here on Patently-O) in IP Frontline, Hal Wegner described the ongoing problems with claim interpretation.  Discussing Arlington Indus. v. Bridgeport Fittings he pointed to the “festering sore” in Federal Circuit jurisprudence over the proper conceptual relationship between the claims and the specification.  He noted that “[u]ntil there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit.”  That festering sore is another important instance of this broader fight over the proper conceptual relationship between claims, the invention, and the specification.  In a recent article, I further detail this controversy and its proper resolution.  For those interested in that broader discussion see Oskar Liivak, Rescuing the Invention from the Cult of the Claim (http://ssrn.com/abstract=1769270).

I thank Kevin E. Collins and Jason Rantanen for very helpful and insightful comments.

Centocor v. Abbott: Written Description and Antibody Claims

Patent,

By Jason Rantanen

Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir. 2011) Download 10-1144
Panel: Bryson, Clevenger, Prost (author)

Centocor, the holder of Patent No. 7,070,775, which claims fully human antibodies to human necrosis factor α ("TNF-α"), sued Abbott for infringement by the therapeutic antibody Humira®.  A jury rejected Abbott's defenses and awarded Centocor $1.67 billion in damages.  After the district court granted Abbott's JMOL of no willful infringement, but denied JMOL on invalidity, noninfringement and damages, Abbott appealed. 

Later Added Claims Lacked Written Description
On appeal, the CAFC reversed, focusing solely on the issue of written description.  In many ways this is a prototypical written description case.  Centocor's approach to developing a TNF-α antibody involved first identifying a mouse antibody to human TNF-α, then changing the less critical portions of the antibody to make it more human – thus producing a chimeric antibody.  Abbott followed a different path, setting out from the start to develop a fully human antibody, a process that ultimately led to Humira®.  Both Centocor and Abbott obtained patents on their antibodies.

In 2002, after Abbott obtained regulatory approval to market Humira®, Centocor filed claims to fully human antibodies as part of an ongoing continuation of the chimeric antibody patent family. These claims later issued as part of the '775 patent.  In responding to Abbott's argument that the fully human antibody claims lacked adequate written description, Centocor relied on a 1994 CIP in the chain that predated the 1996 filing date of Abbott's patent application.

In its opinion, the CAFC honed in on the lack of disclosure of any human variable regions (the portion of the antibody that binds to TNF-α) in the 1994 CIP.  Examining the "four corners" of the 1994 CIP application, the court concluded that "[t]here is nothing in the specification that conveys to one of skillin the art that Centocor possessed fully-human antibodies or human variable regions that fall within the boundaries of the asserted claims."

"while the patent broadly claims a class of antibodies that contain human variable regions, the specification does not describe a single antibody that satisfies the claim limitations. See Eli Lilly, 119 F.3d at 1566-69. It does not disclose any relevant identifying characteristics for such fully-human antibodies or even a single human variable region. See id. Nor does it disclose any relationship between the human TNF-α protein, the known mouse variable region that satisfies the critical claim limitations, and potential human variable regions that will satisfy the claim limitations."

Slip Op. at 16-17.  Essentially, the claims constituted a wish list of properties for a fully-human, therapeutic TNF-α antibody would possess – but a mere wish or plan for obtaining the invention is not sufficient to satisfy the written description requirement. 

Disclosure of a Protein Does Not Necessarily Suffice to Support Claims to All Associated Antibodies
Centocor also suggested that it satisfied the written description requirement by fully disclosing the human TNF-α protein.   It based that suggestion on the current PTO written description guidelines, together with Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004).  One example in the PTO guidelines indicates that "'an isolated antibody capable of bding to [protein] X' is adequately described where the specification fully characterizes protein X-even if there are no working or detailed prophetic examples of actual antibodies that bind to protein X."  Slip Op. at 17-18.  In other words, simply disclosing the "lock" is suffient to support a claim to the key fitting into that lock.  This view was reinforced by Noelle, in which the CAFC held that:

"as long as an applicant has disclosed a “ fully characterized antigen,” either by its structure, formula, chemical name, or physical properties, or by depositing the protein in a public depository, the applicant can then claim an antibody by its binding affinity to that described antigen."

Noelle, 355 F.3d at 1349. 

Accepting that while this may be true in some cases, the CAFC rejected its application to the multi-part claims at issue.  "While our precedent suggests that written description for certain antibody claims can be satisfied by disclosing a well-characterized antigen, that reasoning applies to disclosure of newly characterized antigens where creation of the claimed antibodies is routine."  Slip Op. at 19.  Here, the creation of the claimed antibodies – which possessed a number of characteristics beyond their relationship with the antigen – was anything but routine.  "Claiming antibodies with specific properties, e.g., an antibody that binds to human TNF-α with A2 specificity, can result in a claim that does not meet written description even if the human TNF-α protein is disclosed because antibodies with those properties have not been adequately described."  Id. at 20.  As Centocor "failed to support its contention that generating fully-human antibodies with he claimed properties would be straightforward for a person of ordianry skill in the art" at the time, possession of the known antigen did not place it in possession of the claimed antibodies. 

For those who are interested in reading further, PatentDocs has a detailed write-up of the decision.

 

Federal Circuit Dispositions (Updated)

Patent

By Jason Rantanen

Last week I posted data about the CAFC's use of Rule 36 summary orders for the past several years, and suggested that there appears to be a notable uptick in the court's use of Rule 36 for patent infringement appeals this year.  Several folks commented that because there are frequently fewer judges sitting during the summer months, it may be possible that most Rule 36 dispositions occur during the early months of the financial year.  As a result, the linear projection I used for 2011 overpredicted the number of Rule 36 dispositions for the year.

To examine this suggestion, I conducted the same search as before, but limited the time range to the identical period as for 2011: October 1 – February 14.  Fully expecting that the suggestion was correct, I was surprised by the results.  Over the 12 years that I had examined the number of hits were almost exactly what would be expected from a linear prediction: 516 predicted vs. 513 actual.  Looking at the last five years produced essentially the same result: 247 predicted vs. 236 actual, a ratio of 1.05 predicted : actual.  Applying this value, along with a more appropriate multiplier than I originally used (12/5 as opposed to 24/9, since virtually all Rule 36 orders will come in the first half of the month), still produces a prediction of 89 Rule 36 dispositions this year – far exceeding the previous highest total of 64 (2007).

Below is a chart showing the number of Rule 36 dispositions during only the first four and a half months of the financial year. 

Rule 36 - first four and a half months
A word of caution: Any estimates of total Rule 36 dispositions for the year are still highly speculative, and I would avoid reading too much into this data.  Nor do I think it wise to try to ferret out reasons for the apparent spike in Rule 36 dispositions at this point – it's just far too early.  Still, the data does suggest that it might be a good idea to keep an eye on the court's use of Rule 36 dispositions, and it would be an interesting subject to examine if a long term trend does become apparent.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Sharon Barner returns to the practice of law

  • Former Deputy Director of the USTPO has announced her return to the Foley & Lardner law firm in Chicago. Barner was chair of the Intellectual Property Department at Foley & Lardner before she left to work for the USPTO. While at the USPTO Barner was the driving force behind the 2010-2015 USPTO's Strategic Plan. [Link]

Carlson Marketing is suing MillerCoors

  • Carlson Marketing Worldwide is suing MillerCoors over its "Miller High Life Extras Loyalty Program." Carlson owns patent [6,039,244] which covers a "Method of building up a data bank containing customer data and/or for the organization of." At issue in the suit is the 1st claim of the patent which claims, "a method for motivating a customer to purchase a product or a service and for rewarding the customer for repeat purchases thereof, the method comprising the steps of…" [Link] If Carlson wins this suit they could potentially file suit against many more large companies for patent infringement.

Can Patent Attorneys and Agents use Groupon when seeking new clients?

  • According to the Rule 5.4(a) of the ABA's Model Rules of Professional Conduct, "a lawyer or law firm shall not share legal fees with a nonlawyer. Groupon makes money by keeping approximately half the money the person pays for the coupon. So maybe Rule 5.4(a) would rule out patent attorneys in some states, but what about patent agents? The state of Missouri does allow lawyers to use Groupon as a way of obtaining new clients. While other places like North Carolina does not allow lawyers to use Groupon [Link]. The question I pose is, "Would the USPTO allow agents and attorneys to use Groupon?"

European Parliament voted for a single patent law system

  • European member states will soon operate under a single patent law system rather than rely on their individual patent law systems. While the single patent law system is voluntary, most European states joined the system. There appear to be at least 2 holdouts as Italy and Spain have decided not to join at this time. [Link] The benefits of this system over the current state of affairs will not be understood until the legislation is developed.

Patent Jobs:

  • King & Spalding is seeking a patent attorney with 2 years experience and a engineering background to work in its Houston or Atlanta office. [Link]
  • Rothwell, Figg, Ernst & Manbeck is searching for a patent attorney with 3-6 years experience. To work in its DC office. [Link]
  • NXP is seeking an IP Monetization Specialist with an electrical engineering background to work in their San Jose location. [Link]
  • Sheldon Mark & Anderson is in search of a patent attorney with 2-5 years experience in IP litigation. [Link]
  • Klarquist Sparkman is seeking a patent associate or agent with 1-4 years experience. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th Annual Symposium entitled "The Economics of Intellectual Property and Technology on March 4th in Chicago. The keynote speaker is Michael Fricklas, General Counsel of Viacom. [Link]
  • The Toledo Intellectual Property Law Association (TIPLA) will be hosting its 2011 Spring Seminar, entitled "A Comprehensive Approach to Protecting Designs: The Overlap of Patent Design, Trade Dress, and Copyright Protection", on March 9th at the University of Toledo College of Law. Guest speakers include: Theresa Orr, Katrina Quicker, Christopher Weston, and William Bryner. [Link]
  • The Columbus School of law will host its Dean William Robinson Intellectual Property Law Lecture Series on March 29. The series lecture will be presented by Professor Jeffrey Lefstin. [Link]
  • The University of Houston Law Center's Institute for Intellectual Property & Information Law will host a Symposium on June 4th in Sante Fe, New Mexico. The Symposium will focus on "Trademark: Today and Tomorrow". Presenters include:  Ann Bartow, Barton Beebe, Greg Lastowka, Mark McKenna, and Rebecca Tushnet. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Sharon Barner returns to the practice of law

  • Former Deputy Director of the USTPO has announced her return to the Foley & Lardner law firm in Chicago. Barner was chair of the Intellectual Property Department at Foley & Lardner before she left to work for the USPTO. While at the USPTO Barner was the driving force behind the 2010-2015 USPTO's Strategic Plan. [Link]

Carlson Marketing is suing MillerCoors

  • Carlson Marketing Worldwide is suing MillerCoors over its "Miller High Life Extras Loyalty Program." Carlson owns patent [6,039,244] which covers a "Method of building up a data bank containing customer data and/or for the organization of." At issue in the suit is the 1st claim of the patent which claims, "a method for motivating a customer to purchase a product or a service and for rewarding the customer for repeat purchases thereof, the method comprising the steps of…" [Link] If Carlson wins this suit they could potentially file suit against many more large companies for patent infringement.

Can Patent Attorneys and Agents use Groupon when seeking new clients?

  • According to the Rule 5.4(a) of the ABA's Model Rules of Professional Conduct, "a lawyer or law firm shall not share legal fees with a nonlawyer. Groupon makes money by keeping approximately half the money the person pays for the coupon. So maybe Rule 5.4(a) would rule out patent attorneys in some states, but what about patent agents? The state of Missouri does allow lawyers to use Groupon as a way of obtaining new clients. While other places like North Carolina does not allow lawyers to use Groupon [Link]. The question I pose is, "Would the USPTO allow agents and attorneys to use Groupon?"

European Parliament voted for a single patent law system

  • European member states will soon operate under a single patent law system rather than rely on their individual patent law systems. While the single patent law system is voluntary, most European states joined the system. There appear to be at least 2 holdouts as Italy and Spain have decided not to join at this time. [Link] The benefits of this system over the current state of affairs will not be understood until the legislation is developed.

Patent Jobs:

  • King & Spalding is seeking a patent attorney with 2 years experience and a engineering background to work in its Houston or Atlanta office. [Link]
  • Rothwell, Figg, Ernst & Manbeck is searching for a patent attorney with 3-6 years experience. To work in its DC office. [Link]
  • NXP is seeking an IP Monetization Specialist with an electrical engineering background to work in their San Jose location. [Link]
  • Sheldon Mark & Anderson is in search of a patent attorney with 2-5 years experience in IP litigation. [Link]
  • Klarquist Sparkman is seeking a patent associate or agent with 1-4 years experience. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th Annual Symposium entitled "The Economics of Intellectual Property and Technology on March 4th in Chicago. The keynote speaker is Michael Fricklas, General Counsel of Viacom. [Link]
  • The Toledo Intellectual Property Law Association (TIPLA) will be hosting its 2011 Spring Seminar, entitled "A Comprehensive Approach to Protecting Designs: The Overlap of Patent Design, Trade Dress, and Copyright Protection", on March 9th at the University of Toledo College of Law. Guest speakers include: Theresa Orr, Katrina Quicker, Christopher Weston, and William Bryner. [Link]
  • The Columbus School of law will host its Dean William Robinson Intellectual Property Law Lecture Series on March 29. The series lecture will be presented by Professor Jeffrey Lefstin. [Link]
  • The University of Houston Law Center's Institute for Intellectual Property & Information Law will host a Symposium on June 4th in Sante Fe, New Mexico. The Symposium will focus on "Trademark: Today and Tomorrow". Presenters include:  Ann Bartow, Barton Beebe, Greg Lastowka, Mark McKenna, and Rebecca Tushnet. [Link]

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

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Sharon Barner returns to the practice of law

  • Former Deputy Director of the USTPO has announced her return to the Foley & Lardner law firm in Chicago. Barner was chair of the Intellectual Property Department at Foley & Lardner before she left to work for the USPTO. While at the USPTO Barner was the driving force behind the 2010-2015 USPTO's Strategic Plan. [Link]

Carlson Marketing is suing MillerCoors

  • Carlson Marketing Worldwide is suing MillerCoors over its "Miller High Life Extras Loyalty Program." Carlson owns patent [6,039,244] which covers a "Method of building up a data bank containing customer data and/or for the organization of." At issue in the suit is the 1st claim of the patent which claims, "a method for motivating a customer to purchase a product or a service and for rewarding the customer for repeat purchases thereof, the method comprising the steps of…" [Link] If Carlson wins this suit they could potentially file suit against many more large companies for patent infringement.

Can Patent Attorneys and Agents use Groupon when seeking new clients?

  • According to the Rule 5.4(a) of the ABA's Model Rules of Professional Conduct, "a lawyer or law firm shall not share legal fees with a nonlawyer. Groupon makes money by keeping approximately half the money the person pays for the coupon. So maybe Rule 5.4(a) would rule out patent attorneys in some states, but what about patent agents? The state of Missouri does allow lawyers to use Groupon as a way of obtaining new clients. While other places like North Carolina does not allow lawyers to use Groupon [Link]. The question I pose is, "Would the USPTO allow agents and attorneys to use Groupon?"

European Parliament voted for a single patent law system

  • European member states will soon operate under a single patent law system rather than rely on their individual patent law systems. While the single patent law system is voluntary, most European states joined the system. There appear to be at least 2 holdouts as Italy and Spain have decided not to join at this time. [Link] The benefits of this system over the current state of affairs will not be understood until the legislation is developed.

Patent Jobs:

  • King & Spalding is seeking a patent attorney with 2 years experience and a engineering background to work in its Houston or Atlanta office. [Link]
  • Rothwell, Figg, Ernst & Manbeck is searching for a patent attorney with 3-6 years experience. To work in its DC office. [Link]
  • NXP is seeking an IP Monetization Specialist with an electrical engineering background to work in their San Jose location. [Link]
  • Sheldon Mark & Anderson is in search of a patent attorney with 2-5 years experience in IP litigation. [Link]
  • Klarquist Sparkman is seeking a patent associate or agent with 1-4 years experience. [Link]

Upcoming Events:

  • Northwestern Journal of Technology and Intellectual Property will hold its 6th Annual Symposium entitled "The Economics of Intellectual Property and Technology on March 4th in Chicago. The keynote speaker is Michael Fricklas, General Counsel of Viacom. [Link]
  • The Toledo Intellectual Property Law Association (TIPLA) will be hosting its 2011 Spring Seminar, entitled "A Comprehensive Approach to Protecting Designs: The Overlap of Patent Design, Trade Dress, and Copyright Protection", on March 9th at the University of Toledo College of Law. Guest speakers include: Theresa Orr, Katrina Quicker, Christopher Weston, and William Bryner. [Link]
  • The Columbus School of law will host its Dean William Robinson Intellectual Property Law Lecture Series on March 29. The series lecture will be presented by Professor Jeffrey Lefstin. [Link]
  • The University of Houston Law Center's Institute for Intellectual Property & Information Law will host a Symposium on June 4th in Sante Fe, New Mexico. The Symposium will focus on "Trademark: Today and Tomorrow". Presenters include:  Ann Bartow, Barton Beebe, Greg Lastowka, Mark McKenna, and Rebecca Tushnet. [Link]

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

Global-Tech v. SEB: Supreme Court Argument Tomorrow

Patent

By Jason Rantanen

Tomorrow, February 23rd, the Supreme Court will hear arguments in Global-Tech v. SEB, a case with broad implications for the doctrine of inducement of patent infringement.  Previous Patently-O postings on the subject, including summaries of several of the briefs, are provided below.  Unsurprisingly, there are a wide range of opinions as to the proper standard, with positions ranging from strict liability on the question of infringement to recklessness to requiring knowledge or purpose to infringe a patent. 

Other Patently-O writings on the subject:

In re Katz (part 2): Indefiniteness of computer processes

Indefinite, Patent, ,

By Jason Rantanen

In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011)
Panel: Newman, Lourie, Bryson (author)

In addition to the discussion of complex patent litigation management procedures, summarized yesterday, In re Katz is also notable for its analysis of the indefiniteness of computer processing-type means plus function elements.

The patents at issue relate to interactive call processing and conferencing systems.  Ten of the selected claims include "means for processing"-type limitations.   For example, claims 96, 98, and 99 of the asserted '863 patent recite a "means for processing at least certain of said answer data signals."  Applying WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) and Aristocrat Technologies Australia Pty Ltd v International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the district court found the claims indefinite because the specifications disclosed only general purpose processors without disclosing any of the algorithms used to perform the claimed functions.   

The Federal Circuit agreed with the district court's analysis of three claims.  Under Federal Circuit precedent, "a computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm."  Slip Op. at 18, citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).  "[B]y claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the 'overbreadth inherent in open-ended functional claims,' … in violation of the limits Congress placed on means-plus-function claims in section 112, paragraph 6."  Slip Op. at 19 (internal citation omitted).  Thus, claims 21 and 33 of the '551 patent and claim 13 of the '065 patent, which claim a “processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data” but do not disclose an algorithm that corresponds to the “based on a condition coupling an incoming call to the operator terminal” function are invalid for indefiniteness.

The CAFC reached the opposite result on the remaining seven claims – not on the ground that the patent disclosed the requisite algorithms, but on the basis that no algorithm was necessary because the claim elements may simply claim a general process computer:

[i]n the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of “processing,” “receiving,” and “storing.” Absent a possible narrower construction of the terms “processing,” “receiving,” and “storing,” discussed below, those functions can be achieved by any general purpose computer without special programming.  As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of “processing,” “receiving,” and “storing” are coextensive with the structure disclosed, i.e., a general purpose processor.

Slip Op. at 20-21. 

The CAFC also reviewed the district court's grant of summary judgment on other issues of indefiniteness, as well as written description, obviousness, claim construction, and noninfringement, largely affirming.  Of these issues, patent litigators may want to take note of the court's comment that when dealing with written description issues it is permissible for the court to construe claims whose meaning has not been placed in dispute, "as claim construction is inherent in any written description analysis."  Slip Op. at 27.  Using this seemingly innocuous statement, the CAFC rejected Katz's argument that it was denied the opportunity to demonstrate specification support or proffer expert testimony on the written description issue because it "should have been clear to Katz that the construction of the claims was important to the written description analysis." 

Patently-O Bits and Bytes by Dennis Crouch

Patent

By Dennis Crouch

  • Prioritized Examination: Yesterday, I wrote about the PTO’s implementation of a prioritized examination program (Track 1). Although the notice published by the PTO indicated that the Office was proceeding “with immediate implementation,” the notice also refers to an “implementation date.” I contacted PTO officials for some clarification and can report that Track 1 is not yet available; that the implementation date has not been set; but that the expectation is that the program will be implemented in May or June of this year.
  • Story Suggestions: My student (and future patent attorney) Lawrence Higgins has been writing these bits and bytes posts lately. He’s planning to write about interesting cases, bits of patent law news, moves made by patent law thought leaders, upcoming events, jobs available, etc. If you have topic suggestions, e-mail him: Lawrence.Higgins@patentlyo.com.
  • End Patents?: Eric Johnson, Professor of Law at UND has released a draft of his article: Intellectual Property’s Great Fallacy. In the article, Prof. Johnson attempts to explain why, except for some specific circumstances, patents and copyrights are completely unnecessary. “Using recent advances in behavioral economics, psychology, and business-management studies, it is now possible to show that there are natural and intrinsic motivations that will cause technology and the arts to flourish even in the absence of externally supplied rewards, such as copyrights and patents.” http://ssrn.com/abstract=1746343

Patently-O Bits and Bytes by Dennis Crouch

Patent

By Dennis Crouch

  • Prioritized Examination: Yesterday, I wrote about the PTO’s implementation of a prioritized examination program (Track 1). Although the notice published by the PTO indicated that the Office was proceeding “with immediate implementation,” the notice also refers to an “implementation date.” I contacted PTO officials for some clarification and can report that Track 1 is not yet available; that the implementation date has not been set; but that the expectation is that the program will be implemented in May or June of this year.
  • Story Suggestions: My student (and future patent attorney) Lawrence Higgins has been writing these bits and bytes posts lately. He’s planning to write about interesting cases, bits of patent law news, moves made by patent law thought leaders, upcoming events, jobs available, etc. If you have topic suggestions, e-mail him: Lawrence.Higgins@patentlyo.com.
  • End Patents?: Eric Johnson, Professor of Law at UND has released a draft of his article: Intellectual Property’s Great Fallacy. In the article, Prof. Johnson attempts to explain why, except for some specific circumstances, patents and copyrights are completely unnecessary. “Using recent advances in behavioral economics, psychology, and business-management studies, it is now possible to show that there are natural and intrinsic motivations that will cause technology and the arts to flourish even in the absence of externally supplied rewards, such as copyrights and patents.” http://ssrn.com/abstract=1746343

Patently-O Bits and Bytes by Dennis Crouch

Patent

By Dennis Crouch

  • Prioritized Examination: Yesterday, I wrote about the PTO’s implementation of a prioritized examination program (Track 1). Although the notice published by the PTO indicated that the Office was proceeding “with immediate implementation,” the notice also refers to an “implementation date.” I contacted PTO officials for some clarification and can report that Track 1 is not yet available; that the implementation date has not been set; but that the expectation is that the program will be implemented in May or June of this year.
  • Story Suggestions: My student (and future patent attorney) Lawrence Higgins has been writing these bits and bytes posts lately. He’s planning to write about interesting cases, bits of patent law news, moves made by patent law thought leaders, upcoming events, jobs available, etc. If you have topic suggestions, e-mail him: Lawrence.Higgins@patentlyo.com.
  • End Patents?: Eric Johnson, Professor of Law at UND has released a draft of his article: Intellectual Property’s Great Fallacy. In the article, Prof. Johnson attempts to explain why, except for some specific circumstances, patents and copyrights are completely unnecessary. “Using recent advances in behavioral economics, psychology, and business-management studies, it is now possible to show that there are natural and intrinsic motivations that will cause technology and the arts to flourish even in the absence of externally supplied rewards, such as copyrights and patents.” http://ssrn.com/abstract=1746343

USPTO Implements Prioritized Examination (Track 1)

Patent

The USPTO has been working for a while on its three-track program for utility patent prosecution. The multi-year backlog of applications yet to be examined is the driving force for the program. The program is also built on a key insight – that some patent applicants are seriously harmed by delays in prosecution while others would prefer additional delay if it allows them to also defer cash outlays for the prosecution and maintenance costs. The three track program would allow applicants to pay an additional fee to enter the accelerated track (Track 1). Alternatively, applicants may be able to delay paying certain fees by deferring examination in Track 3. It is expected that most applications would follow the standard course, which now defines Track 2.

Last week, the USPTO published a statement that it is moving forward with immediate implementation of Track 1 – "providing fast examination for applicants desiring it, upon payment of the applicable fee." The fee – $4,000 – is steep, but the PTO calculated that fee is sufficient to cover the examination costs. The Administration's proposed budget would allow for a discount for small entities, but that would need Congressional approval because of limits USPTO fee setting authority.

What does an applicant get for $4,000:

Under Track I prioritized examination, an application would be accorded special status and placed on the examiner's special docket throughout its entire course of prosecution before the examiner until a final disposition is reached in the application. The aggregate goal for handling applications under Track I prioritized examination would be to provide a final disposition within twelve months of prioritized status being granted. The final disposition for the twelve-month goal means: (1) Mailing of a notice of allowance, (2) mailing of a final Office action, (3) filing of a notice of appeal, (4) declaration of an interference by the Board of Patent Appeals and Interferences (BPAI), (5) filing of a request for continued examination, or (6) abandonment of the application, within twelve months from the date prioritized status has been granted.

Additionally, the Office is planning to cap the number of prioritized examinations (if needed) in order to better ensure that a final disposition will be provided within twelve months.

In order to qualify for Track 1, the patent application must be an original utility or plant patent application filed electronically and have no more than four (4) independent claims and thirty (30) total claims. The prioritization will be terminated (without refund) if the applicant ever requests an extension of time to respond to an office action. Although recommended by the USPTO, no pre-filing search or analysis is required. The accelerated process is apparently available for continuation applications so long is the application is filed on or after the implementation date of the program.

Why $4,000: The USPTO has attempted to make clear that the $4,000 fee is set based on its "estimated average cost to the Office of performing the service" as required under 35 U.S.C. § 41(d)(2). According to the office, the fee is not "based upon any perceived level of participation" in the program. Adjustments to the fee are likely once the costs are better understood.

Documents:

Patent

We now have about 130 patent and technology law professionals registered to attend the Missouri Law Review’s symposium on February 25, 2011 in Columbia Missouri with USPTO Director Dave Kappos and professors Lisa Dolak, Christopher Holman, Mark Lemley, Peter Menell, Jason Mudd*, Lee Petherbridge, Ryan Vacca, Greg Vetter, and Elizabeth Winston.

There are about 20 more spots available. The event is free, but please register.

Links:

In re Katz: Managing Complex Patent Suits

Patent

By Jason Rantanen

In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011)
Panel: Newman, Lourie, Bryson (author)

Patent litigation is often an astonishingly complex affair.  As proof, one need look no further than In re Katz, an opinion that demonstrates both the heavy burden that patent infringements suits can place on the courts, and the remarkable job that trial and appellate courts do in dealing with those suits.  This post will discuss the CAFC's ruling regarding trial court claim selection procedures in complex patent infringement actions; a subsequent post will focus on the CAFC's review of the summary judgment rulings.

At the core of In re Katz resides the relatively simple concept of a patent holder asserting its patent rights against a group of alleged infringers.  In this instance, however, the patent rights consisted of  "a total of 1,975 claims from 31 patents" asserted against "165 defendants in 50 groups of related corporate entities."  Slip Op. at 6.  Although initially filed in Delaware and Texas, the Judicial Panel on Multidistrict Litigation transferred the actions to the Central District of California for coordinated pretrial proceedings before Judge Klausner.  

In an effort to manage the vast numbers of claims and infringement allegations, Judge Klausner imposed limitations on the number of claims to be addressed in the litigation.  The court "ordered Katz initially to select no more than 40 claims per defendant group, and after discovery to narrow the number of selected claims to 16 per defendant group."  Slip Op. at 7.  Katz was further limited to a total of 64 claims to be asserted against all defendants, although the court included a proviso that Katz could add new claims if they "raise[d] issues of infringement/validity that [were] not duplicative of previously selected claims."  Id. at 7. Katz sought to sever and stay the disposition of all the unasserted claims, contending that the limitations violated its due process rights.  The district court denied Katz's motion, and after granting summary judgment in the defendants' favor on the selected claims, Katz appealed.

On appeal, the Federal Circuit affirmed the district court's ruling on the motion to sever and stay, implicitly approving the court's claim selection procedure.  Focusing primarily on Katz's argument that the claim selection procedure violated its due process rights with respect to the unasserted claims, the CAFC held that the district court appropriately allocated to the patent holder the burden of showing that the issues raised by the new claims were not duplicative.  "When the claimant is in the best position to narrow the dispute, allocating the production burden to the claimant will benefit the decision-making process and therefore will not offend due process unless the burden allocation unfairly prejudices the claimant’s opportunity to present its claim."  Slip Op. at 11.  Here, Katz identified no errors in the district court's initial assessment, which revealed that the patents contained many duplicative claims.  Thus, it was efficient and fair to allocate the burden to Katz.  Furthermore, because Katz made no effort to identify any claims raising non-duplicative issues, the district court acted appropriately in denying Katz's motion.

Typical of several recent Federal Circuit decisions, the opinion includes a cautionary note.  "In approving the district court’s procedure, we do not suggest that a district court’s claim selection decisions in a complex case such as this one are unreviewable."  Rather, the panel comments that its holding is directed at broad assertions that courts may not impose claim selection requirements: 

Katz chose to make the “all or nothing” argument that the entire claim selection process was flawed from the start and that it is impermissible to give the judgments effect as to the unselected claims regardless of Katz’s failure to make any showing as to the uniqueness of any of those claims. That sort of global claim of impropriety is unpersuasive. In complex cases, and particularly in multidistrict litigation cases, the district court “needs to have broad discretion to administer the proceeding.” In re Phenylpropanolamine (PPA) Prods. Liab. Litig., 460 F.3d 1217, 1232 (9th Cir. 2006).

Slip Op. at 14.