In Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright's holding that claims of Neonode's US8095879 are invalid as indefinite. No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.
I have written several times about the Chestek case regarding notice-and-comment requirements under the APA. A second notice-and-comment case is also pending before the Federal Circuit, potentially having a much greater impact on patent practice. The case, Apple v. Vidal, focuses on IPR discretionary denials, which the USPTO implemented as policy without any formal rulemaking notice-and-comment.
The U.S. Solicitor General has filed the Government's opposition to Chestek PLLC's petition for a writ of certiorari in a case challenging the USPTO's authority to implement certain procedural rules without notice-and-comment rulemaking. The case has has significant implications for the agency's regulatory powers. In particular, the Federal Circuit's decision frees the agency so that it most situations it can conduct rulemaking without any notice-and-comment. Chestek offers some similarities to another APA case pending at the Federal Circuit, Apple v. Vidal, that similarly questions whether the FINTIV discretionary denial rules should have gone through notice-and-comment.
If you recall, this case center's on the USPTO's attempt to address trademark fraud. One approach that the agency has taken is to require trademark applicants to provide their domicile address (defined as their permanent legal residence or principal place of business) rather than just a mailing address. 84 Fed. Reg. 31,498 (July 2, 2019). The agency found that many of the fraudulent filing were from foreign applicants using a U.S. mailing address. This requirement is designed to help weed those out. Chestek refused to provide her home address to the USPTO because of privacy concerns, leading the USPTO to reject her trademark application.
This is my third post focusing on Google's en banc challenge to 'loose' damages testimony. The patentee, EcoFactor, has now filed a responsive brief in the ongoing smart thermostat patent dispute which resulted in a $20 million jury verdict against Google. A 2-1 Federal Circuit panel affirmed the verdict and, as you might expect, EcoFactor's en banc response defends the decision, arguing that the case presents a straightforward application of established precedent. At core, EcoFactor argues that Google and amici are seeking to impose new, rigid rules that go beyond existing Federal Circuit precedent. Although some say that hindsight is 20/20, anyone who has undergone a hypothetical damages analysis will understand that the process always involves some degree of guestimation and uncertainty -- adding additional precision and calculation is unlikely to provide any true certainty or predictability.
The recent Federal Circuit decision in Platinum Optics v. Viavi Solutions focuses attention once again on the case-and-controversy requirement derived from Article III of the U.S. Constitution, which extends federal judicial power to "Cases" and "Controversies."
The seemingly simple phrase has been the subject of extensive judicial jockeying in the development of the doctrine we know as "standing."
Google's pending en banc petition in EcoFactor v. Google has drawn significant support from some tech giants, focusing on the application of Daubert standards to patent damages expert testimony. Five amicus briefs supporting Google's position have been filed with the Federal Circuit, each arguing for stricter scrutiny of damages calculations and expert reliability in patent cases. This post discusses the case and the issues presented by the amici army.
In light of the Federal Circuit's recent decision in Celanese v. ITC, it's worth examining the policy implications of maintaining a strong on-sale bar that extends even to invalidate patents on secret processes when the resulting products have been commercialized. This rule is rooted in pre-AIA jurisprudence and is now affirmed under the AIA.
Most U.S. utility patents are (or will eventually be) part of a patent family with at least one other U.S. patent. The recent rise in focus on obviousness type double patenting (ODP) has been unnerving to some, especially with the Cellect decision from 2023 that seemed to greatly expand the risk of family members colliding based upon differing expiration dates due to Patent Term Adjustment (PTA).
The Federal Circuit's new ODP opinion in Allergan USA v. MSNLabs, 24-1061 (Fed. Cir. August 13, 2014), provides some major relief to patent portfolio holders, holding that "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date." This ruling provides a measure of protection for first-filed patents that receive substantial PTA, shielding them from ODP challenges based on their own continuations sharing the same priority date.
Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n, 22-01827 (Fed. Cir. August 12, 2024). In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.
The newest patent-focused petition for writ of certiorari to the Supreme Court was recently filed by Zebra Technologies, challenging the Federal Circuit's determination that the a patentee had standing to sue for infringement even though a third party separately held rights to assign, license, and enforce patent rights.
The case offers an increasingly common situation in patent litigation finance where the litigation funder is seeking legal assurances and collateral rights, but where those rights potentially risk stripping the patent owner from the exclusionary rights necessary to establish standing.
Welcome to August 2024. This post offers a recap of some of the week's events.
Democrat VP Nominee Gov. Tim Walz apparently owns no stocks. For those of us that do, this week experienced extremely high price volatility. One of the biggest losers of the week (percentage wise) is Houston based FibroBiologics, Inc. (Nasdaq: FBLG) whose 3rd quarter Q-10 reported "substantial doubt about our ability to continue as a going concern." The filing noted increased R&D costs, delay in clinical trials for their wound healing fibroblast treatments, and financing struggles. The companies 150+ issued/pending patents (global) and are likely the company's largest assets. Currently pending APN 17/757,309 includes what seems to be a very broad claim of administering fibrobrasts to treat or prevent kidney disease:
1. A method of preventing or treating kidney disease in an individual having, or at risk of having, kidney disease comprising administering a prophylactically or therapeutically effective amount of fibroblasts, modified fibroblasts, and/or products derived from fibroblasts.
The examiner has not yet passed judgment on the claim. Melissa Sistrunk at Norton Rose appears to be handling the prosecution.
A recently filed petition for writ of certiorari in Lemon Bay Cove, LLC v. United States highlights the longstanding difficulty in defining regulatory taking as well as determining when a regulatory takings claim becomes ripe for judicial review. The brief was filed by the Pacific Legal Foundation, a public interest law firm that focuses largely on protecting private property against government intrusion and regulation.
Background: Lemon Bay Cove, LLC owns about 6 acres of intercoastal property in Charlotte County, Florida, north of Ft. Myers. In 2012, Lemon Bay applied to the U.S. Army Corps of Engineers for a permit to fill about 2 acres around Sandpiper Key to construct a 12-unit townhome development. After a nearly four-year process, the Corps denied the application with prejudice in 2016.
Lemon Bay then filed suit in the Court of Federal Claims, alleging that the Corps' denial effected a per se regulatory taking under Lucas v. South Carolina Coastal Council, 505 U.S. 1003 (1992), by depriving the property of all economically viable use.
Means-plus-function claims have generally been disfavored because of the tendency of courts to either (1) narrowly construe their scope when corresponding structure is detailed in the specification or (2) render them invalid as indefinite when the specification lacks sufficient corresponding structure. If Impact Engine's petition is well received, there is a good chance that this historically popular claim style will see a revival.
The Federal Circuit's recent decision in Impact Engine v. Google has again raised the issue of over the proper treatment of MPF, this time regarding patent eligibility and infringement analyses. Appeal No. 22-2291 (Fed. Cir. July 3, 2024). I had skipped a write-up of the non-precedential decision, but now Impact Engine has petitioned for en banc review, arguing that
The Federal Circuit's new decision in Sanho v. Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024).
The basic holding is that the 102(a)(2)/(b)(2) safe harbor triggered by an inventor's pre-filing "public disclosure" of the invention requires that the invention be made "reasonably available to the public." Neither public uses nor private sales satisfy this requirement. This is a long post, because the issues are both important and interesting. In the end, I suggest a panel rehearing in the case because I believe that the Federal Circuit unfairly found forfeiture of key arguments whose resolution would help clarify the law.
Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024)
Unified Patents is paid by its members to fight against non-practicing entity (NPE) patent assertions -- often by challenge patent validity via inter partes review. In this case, Unified challenged Voice Tech's U.S. Patent No. 10,491,679 which covers technology for controlling a computer via a mobile device using voice commands. At the conclusion of the IPR, the Patent Trial and Appeal Board (PTAB) sided with Unified - finding all challenged claims (1-8) of the '679 patent unpatentable as obvious over the combination of two prior art references, Wong and Beauregard. The PTAB also denied Voice Tech's request for rehearing. On appeal, the patentee won a minor battle on waiver, but ultimately lost on the merits.
Senators aim to rein in digital replicas with the “NO FAKES” Act which proposes a limited federal right to control one’s likeness using some DMCA-like notice-and-takedown elements.
Guest post by Professor Justin Hughes
This week, Senators Blackburn, Coons, Klobuchar, and Tillis introduced the bipartisan “NO FAKES” Act in Congress, a bill that has been under discussion for months and is intended to provide centerpiece legislation addressing the problem of digital replicas. The recording industry (RIAA) and the actors’ union (SAGAFTRA) have been the leading proponents of such a law. Senate Judiciary staff led a process with those groups–and with the Motion Picture Association (MPA)–that went through a long series of drafts. AI companies were also part of the drafting process.
The bill is substantively complex and structurally complicated, partly the result of so many cooks in the kitchen. What follows here are only the bill’s basics – as well as some concerns.
For the vast majority of American history, a judgment of patent infringement (by a court sitting in equity) led almost directly to injunctive relief barring ongoing infringement. This construct was flipped by the Supreme Court's 2006 decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a case which served as the first major step of weakening patentee rights over the past two decades. Now, a new bipartisan bill aims to restore the pre-eBay status quo. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024, introduced by Senators Coons (D-Del.) and Cotton (R-Ark.), with a House companion bill from Representatives Moran (R-Texas) and Dean (D-Pa.), seeks to reshape and repair the availability of injunctive relief for patent holders. As you'll see, one nice element of the Bill is that it simply adds 1 sentence - creating a rebuttable presumption
In a brief order, the Federal Circuit has put what appears to be the final nail in the coffin of Steve Elster's attempt to register "TRUMP TOO SMALL" as a trademark.
Google recently petitioned for en banc review a Federal Circuit split decision in EcoFactor v. Google. The case focuses on when a damages expert testimony satisfies Daubert. The original opinion also highlights an interesting debate regarding the appeal of pre-trial eligibility rulings.
by Dennis Crouch
