by Dennis Crouch

For the first time since 2008, the Supreme Court’s October 2021 term will come to a close without any patent decisions.  I have included a chart below, but should note that there is some debate around the edges about what constitutes a “patent decision.” Here is my list: SCTPatentCases.

In addition, the Court has also not granted writ of certiorari in any pending cases. Thus, it is entirely possible that the October 2022 term will come and go without any patent decisions.  The only IP centric case that has been granted certiorari is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, reviewing a Second Circuit copyright decision on the issue of transformative fair use.

Still, there are a number of important pending petitions that could also be transformative in the patent law construct, including four cases with outstanding calls for the views of the Solicitor General (CVSG).  I have divided the pending cases into three general categories:

Patentability:

• Eligibility under Section 101: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (CVSG requested May 3, 2021); Also, Universal Secure Registry LLC v. Apple Inc., et al., No. 21-1056; Interactive Wearables, LLC v. Polar Electro Oy, et al., No. 21-1281.; and Ameranth, Inc. v. Olo, Inc., No. 21-1228.
• Scope and Procedure for the Enablement Requirement: Amgen Inc., et al. v. Sanofi, et al., No. 21-757 (CVSG requested April 18, 2022);

Infringement and Damages:

• Do Enhanced Damages Require “Egregious Behavior”: Cisco Systems, Inc. v. SRI International, Inc., No. 21-1267.

Procedure:

• Prior art in Inter Partes Review: Baxter Corporation Englewood v. Becton, Dickinson and Company, No. 21-819 (use of expert testimony to fill gaps in the prior art).
• Using Claim Construction to Undermine Jury Decisions: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (CVSG requested October 4, 2021).
• Appellate Standing for IPR Challenger & Licensee: Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022); also Apple Inc. v. Qualcomm Incorporated, No. 21-1327.
• Res Judicata and the Patent-Specific Kessler Doctrine: PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (CVSG submitted, agreeding that Federal Circuit erred, but suggesting that this is not an appropriate case).

Most of these petitions will be decided by the end of June 2022, although the cases awaiting Gov’t amicus brief will likely be delayed until the Fall 2022.

In re Glascoe (Fed. Cir. 2022)

The USPTO refused to register Glascoe’s mark SCIENTIFIC STUDY OF GOD for use as a service mark when “analyzing the process of creating a human being, the earth, the universe and its environment.” I know what you are thinking–deceptively misdescriptive.  The TTAB did not go there, but instead refused registration after concluding that the mark was “merely descriptive.”

“A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)

Here. Glascoe’s purported services are related to the scientific study of god, which is the exact mark that is being claimed.  Glascoe appealed pro se. Her brief begins:

Pro Se Appellant DEIRDRE C. GLASCOE is an Extra-Terrestrial Life Form—The Alien Entity known As GOD. GOD Is A Brand Name®, as are “I AM,” “YHWH,”  “Yahweh,” “Jesus Christ™”, “Allah”, “Lord GOD of Israel,” “EL”, “Human Beings.” GOD’s Kingdom is a foreign state within the meaning of the Foreign Sovereign Immunities Act.

GlascoeBrief.  As you might guess from this excerpt, I did not find anything within Glascoe’s briefing that suggests ‘scientific study’ in a form that I would recognize. That makes me think that the misdescriptive refusal might be more appropriate.  For its part, the Federal Circuit provided a one sentence summary denial:  “Ms. Glascoe has failed to make any cogent, non-frivolous argument as to why the Board’s determinations were incorrect.”  In briefing, Glascoe noted that the TTAB had erred by failing “to recognize GOD as a legal person.”  On appeal, the Federal Circuit did not address that issue.

One thing that Glascoe does is use Anagrams as decoding keys to understand underlying meaning. I’ve provided a couple of examples from the briefing. 

by Dennis Crouch

In a recent filing, Brooklyn Brewery (Brewery) indicated plans to take its trademark opposition/cancellation case to the US Supreme Court.  The key constitutional question involves when a TM challenger has Article III standing to appeal an adverse TTAB decision. The issues are parallel to those faced on the patent side by unsuccessful Inter Partes Review (IPR) petitioners who attempt to appeal that loss.

There is a lot going on in Brewery v. Brew Shop, but the question before the Supreme Court focuses on Brewery’s opposition to Brew Shop’s multi-class trademark registration application.  The application covers beer & beer-making-kits (both in Class 32) and also sanitizing products (Class 5).  Brewery challenged registration in both classes (and lost).  On appeal, the Federal Circuit divided up its opinion between the three types of goods.  It ruled on the merits for the beer and beer-making-kits. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021). But, refused to hear the portion of the appeal relating to the sanitizing products.

Lack of Standing: With respect to use of the mark on sanitizing products, the appellate court dismissed Brewery’s appeal because the company did not show any concrete injury since Brewery does not compete in the sanitizing product market. “To be clear, an opposer cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark.” The parties also do not compete in the beer-making-kit market. However, the court found standing there since “beer-making kits are related to beer and to some extent compete with beer since they are sold in many of the same stores.” And,  according to the court folks who brew beer also drink beer.  (Note that in this video, one of the BBS founders says that she didn’t like beer). It is important to note that the court’s holding here is on Constitutional grounds. The U.S. Constitution prevents the appellate court from hearing an appeal on this particular aspect of the case.

Brewery has not yet filed its petition for writ of certiorari, but it did recently petition the Surpeme Court for an extension of time and that document included the following:

This case presents a substantial and important question of federal law: what must a party show to have Article III standing to appeal an adverse judgment from the Trademark Trial and Appeal Board to the United States Court of Appeals for the Federal Circuit? Below, the Federal Circuit for the first time held that such appellants must show that (1) it competes in the same line of business as the appellee, and (2) failure to cancel or refuse registration of a mark would likely cause the appellant competitive injury. The Federal Circuit’s unprecedented decision contravenes this Court’s decisions, including Lexmark Int’l, Inc. v. Static Components, Inc., 572 U.S. 118 (2014), and, for many litigants, forecloses appellate review of adverse TTAB decisions.

[Petition]

This result is what my old Brooklyn butcher might have termed “slicing the bologna a bit too thin.”  In my view, if a party has Constitutional standing to challenge one aspect of a trademark registration, the Constitution should permit a challenge of all aspects of that application.  You could think of this like having standing to challenge claim 1 of the patent, but not claims 2-4.  That result can happen, but ordinarily requires an affirmative act by the patentee to show that there is no way that any liability would ever flow from those extra claims.

Facts: This was not raised by Brewery’s attorneys, but I’ll also note that my 2 minute internet search revealed the Brooklyn Brewery napkin below–showing that in-fact the company may compete in the sanitizing product marketplace.

In its opposition, the Brewery had argued that Brew Shop’s mark – as used on sanitation products – lacked acquired distinctiveness.  However, the Board did not actually render a decision on that issue.  In some of its briefing, Brewery argues that this situation calls for an automatic remand under the “ordinary remand rule;” and that such a remand does not require the full standing analysis. Brewery En Banc Petition.

= = =

As mentioned, the trademark oppositions and cancellation proceedings have a number of parallels to IPR challengers, including the issue of appellate standing for unsuccessful petitioners.  A patent case on the point is pending before the Supreme Court, and we are awaiting the views of the Solicitor General. Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022).

One difference between the Trademark and Patent cases is that the TM opposition statute limits the availability of oppositions to folks who “who believe[] that [they] would be damaged by the registration of a mark upon the principal register” 15 U.S.C. § 1063(a).  What that means is that we already have a decision by the TTAB that Brewery had standing to make these challenges.  The Federal Circuit did not appear to provide any deference to the TTAB’s factual conclusions regarding that issue.  In addition, the court took the unusual stance of avoiding the question of statutory standing in favor of deciding Constitutional standing in violation of the common principle of Constitutional avoidance.

Trademark Registration No. 4,034,439; U.S. Trademark Application Serial No. 86,280,776; Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021).

Kathi Vidal is now the USPTO Director after being sworn-in by Federal Circuit Chief Judge Kimberly Moore.  Congratulations!

Dir. Vidal’s first press release is a call for dialogue on what needs to happen to advance the patent office and “to expand, protect, and commercialize U.S. innovation.”  In addition to IP expansionist statements, the announcement also repeatedly adds caveats: “minimizing inappropriate opportunistic behavior … deterring abuses and gamesmanship.”  The other key theme taking steps to ensure that the innovation incentive reaches broadly to all Americans “especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy . . . from every region of the Country and across gender, race, identity, socioeconomic class, and veteran status, as well as among all other groups that have been underserved and overlooked.”  This is exactly right – for our world to remain viable, we need to allow space for each person’s individual genius.   Vidal proposes reaching out to actually teach innovation “in our schools, universities, and communities and encourage the emergence of additional innovation hubs.”

Read more here.

by Dennis Crouch

Although Nautilus made it easier for a court to find claim terms indefinite, the Federal Circuit continues indicate that the definiteness test strongly favors validity.

In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. (Fed. Cir. 2022), the court has sided with the patentee–rejecting the district court’s indefiniteness finding.

Niazi’s US6638268 covers a double lined catheter designed for placing an electrical lead in the coronary sinus vein. The outer catheter is a “resilient catheter having shape memory and a hook shaped distal end.”  The inner catheter is a “pliable catheter.”  In Figure 8 below, you can see that the larger outer catheter can get most of the way to the vein destination, but its less-pliable construction makes it difficult to follow all the twists.  The pliable inner catheter is then inserted and extended to reach the vein location.

D.Minn. Judge Wright found the terms “resilient” and “pliable” indefinite and therefore that the claims were invalid. On appeal, the Federal Circuit has reversed–holding that terms meet the requirement of “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Patent law’s definiteness requirement is derived from the requirement that patent claims “particularly pointing out and distinctly claiming the subject matter” of the invention.  35 U.S.C. 112.  The purpose of express claims is to provide public notice of the scope of exclusive rights so that competitors and potential copycats can arrange their affairs to avoid infringement.  (We could pause here to question whether competitors and potential copycats do this in the ordinary course or if it is instead merely legal fiction.)  But, the Supreme Court has also recognized that claims need not perfectly delineate claim scope — rather, the claims must provide “reasonable certainty” as to their scope. Nautilus.  In particular, the Federal Circuit has repeatedly found terms of relative degree to be definite so long as POSITA would have “enough certainty.”  Further, “a claim is not indefinite just because it is broad.” Slip Op.  On the other hand, “purely subjective” claim terms are indefinite — such as “aesthetically pleasing” as used in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345, 1349–56 (Fed. Cir. 2005) (there must be some “objective anchor”).

Here, according to the court, Niazi’s claims terms provide enough guidance to avoid being labelled indefinite.

• Resilient: The claims require “an outer, resilient catheter having shape memory.”  In its decision, the court concluded that resilient is guided by the “shape memory” requirement.  The specification further explains that it may have a “braided design.” and may be made of “silastic or similar material” with the purpose of “return[ing] to its original shape” after being distorted.  The specification also categories resilience in terms of both torque control and stiffness.
• Pliable: The claims require “an inner, pliable catheter slidably disposed in the outer catheter.”  The specification provides further explanation: “constructed
  of a more pliable, soft material such as silicone;” and without “longitudinal braiding, which makes it extremely flexible and able to conform to various shapes.”

In addition to each having some amount of support from the specification, the court also noted that the two terms can be read relative to one another– the pliable inner catheter must be “more flexible than the outer.”

Definiteness is ordinarily a question of law and so the Federal Circuit reviews the issue de novo on appeal. Here, the court found sufficient reasons to find the terms definite. Reversed.

Note: The court also considered dictionary definitions.  It did not discuss whether those definitions introduced extrinsic evidence requiring deference rather than de novo review.

= = = =

Niazi’s Claim 11 is a method-of-use claim that did not use the pliable/resilient terms.   Thus, it survived the district court indefiniteness attack.  The defendant here St. Jude supplied the accused catheter, and Niazi argued that St. Jude had induced doctors and hospitals to infringe.  The district court found no inducement.  On appeal, the Federal Circuit affirmed — holding that under the correct construction of the claim terms there was no underlying direct infringement.

= = = =

Exclusion as a Discovery Sanction: In his expert report, Dr. Niazi’s technical expert (Dr. Burke) stated that he had personally infringed the Niazi patent while using the accused products.  The problem: Dr. Burke had not been identified as a fact witness as required by R.26(a)/(e).  Dr. Niazi’s damages expert relied upon several license agreements to support his report. However, those agreements were not identified during fact discovery despite a specific request for documents.  Both expert reports were provided after the close of fact discovery (as is common).  As a sanction for the late disclosures, the District Court struck those facts from the expert reports and barred Dr. Burke from testifying as a factual witness.   On appeal, the Federal Circuit affirmed on a technical ground — finding that Niazi’s appeal on this question failed because he did not challenge the actual basis for the district court’s decision–whether the delay in disclosure was “substantially justified or harmless.”

Despite the exclusion order, Niazi still presented a declaration from Dr. Burke in support of summary judgment that included a number of factual claims based upon Burke’s personal experience.  The district court struck the statements and also awarded monetary sanctions under R. 37.  The Federal Circuit affirmed:

Here, the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. We see no abuse of discretion in the district court’s decision to award monetary sanctions.

Slip Op.

= = = =

Finally, the district court also excluded Niazi’s damage expert report as unreliable.

The district court excluded Mr. Carlson’s expert opinion as legally insufficient because Mr. Carlson failed to “apportion” between infringing and noninfringing uses and because he could not properly include leads in the royalty base. We affirm the district court’s exclusion.

Slip Op.   Here, the idea was that St.Jude agued that some uses were non-infringing and the expert did not attempt to apportion-out the non-infringing uses but instead merely stated that apportionment would be “impractical in view of real-world considerations.”

Here, the claim was that sales by St. Jude (along with its instructions) were inducing infringement the method-of-use claims.  The patentee argued that apportionment does not apply to method claims.   But, the Federal Circuit disagreed with that broad statement. “Damages should be apportioned to separate out noninfringing uses, and patentees cannot recover damages based on sales of products with the mere capability to practice the claimed method. Rather, where the only asserted claim is a method claim, the damages base should be limited to products that were actually used to perform the claimed method.”

by Dennis Crouch

Courts continue to struggle with their use of evidence for claim construction.  The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation.  The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.

The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc).  That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding.  At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires  a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.”  Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003).  In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.

I see disclaimer as an examination failure.  When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly.  If the specification would not support such an amendment, then the specification also would not support the disclaimer.  In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.

Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.”  The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse.  The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer.   In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).

Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal”  (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means.  In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer.  At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer.  In particular, the district court found that  the patentee’s prosecution disclaimer required the narrow construction.

1. A user input apparatus … comprising:

user input means for producing a user input  stream;

input means for producing [an] input signal;

converting means for receiving [the] input signal and producing therefrom an input stream; and

encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.

US6219730, claim 1.

Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.”  Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.

• Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
• Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.

On appeal, the Federal Circuit has rejected that construction as unduly limiting.

During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin).  Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.).   Those all look like “input signals”–but the patentee argued  in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming.  Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision.  The examiner accepted the distinguishing argument and allowed the case.

At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz.  The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.

On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.

Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.

Slip  Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.”  That is the disclaimer, nothing more.  “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.

On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency.  In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide.  [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].

= = = =

Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.

MBHB LLP is the exclusive sponsor for Patently-O.  I joined the firm as a law clerk back in 2001 and got my first assignments from Larry Aaronson.  I still cringe thinking about the amount of red-ink he spilled editing that first office action response.

Congratulations to our newest member of the United States Supreme Court, Justice Ketanji Brown Jackson, confirmed today by by the US Senate.  Justice Brown Jackson will take office once Justice Breyer retires in June 2022.  She does not have substantial patent law experience, but does have extensive experience handling administrative law cases based upon her time as a Federal District Court Judge and Appellate Judge, both in the District of Columbia.

Longtime Commissioner of Patents Drew Hirshfeld announced today that he plans to leave the USPTO this summer.  Until that point, he will likely serve as Acting Deputy Director to help Kathi Vidal hit the ground running as she begins her tenure as USPTO Director.  Hirshfeld writes:

Kathi Vidal … is, without a doubt, the right person to lead the USPTO. Not only is she highly qualified, but she has also repeatedly shown me and so many others how thoughtful and steadfast she is in her determination to do the right things for this agency and our nation’s inventors and entrepreneurs. She will be a great leader. . . . I cannot think of a better way to conclude my time at the agency than by helping Kathi in any way I can before a permanent deputy director arrives.

In this structure, Andy Faile will stay on as acting Commissioner for Patents until a new Commissioner is appointed by the Secretary of Commerce. 35 U.S.C. 3 (“The Secretary of Commerce shall appoint a Commissioner for Patents . . . for a term of 5 years.”).  Dave Berdan has been serving in the role of deputy director under Hirshfeld.  Berdan will likely return to his role as General Counsel — pushing Will Covey back to his permanent role of Deputy General Counsel and Director for the Office of Enrollment and Discipline (OED).