Artesano Bread vs Artisan Bread

Patent

Interesting pending civil action in Grupo Bimbo v. Hirshfeld (E.D.Va. 2021).

The Mexican company Grupo Bimbo makes more bread than any other company — including Wonder Bread and Sara Lee brands in the USA.  Bimbo is attempting to register a mark for its “ARTESANO” line of bread — after apparently selling more than $1 billion in pre-packaged sliced bread product.

The PTO found that “Artisan Bread” is a generic term, and that consumers will translate the Spanish word “ARTESANO” to its English equivalent when purchasing.

In this appeal, the resemblance between ARTESANO and the word “Artisan” is so evident in both sound and appearance that the average American consumer will automatically translate ARTESANO and equate ARTESANO and the word “artisan.”

Bimbo has now filed a civil action under 15 U.S.C. 1071(b) seeking a declaration from the District Court that its mark is not generic but instead is distinctive.

Bimbo Complaint.

Stinging Oral Arguments from Chief Judge Moore

Patent

Chief Judge Moore does not mince words — especially when she senses that a party is attempting to mislead her as to the record.  I transcribed the following from recent oral arguments in Shure Incorporated v. ClearOne, Inc.  This is a discussion between Chief Judge Moore and ClearOne’s attorney Christina V. Rayburn — discussing whether Shure’s briefing was frivolous.

Chief Judge Moore: Did you file a motion asking us to contemplate whether the brief as written [by Shure] was frivolous . . . given the clear inconsistencies between the brief and [Shure’s] statements to the district court?

Ms. Rayburn: We seriously considered it, your honor, but we chose not to.

Chief Judge Moore: Well, you can always do it after arguments.

Ms. Rayburn: Thank you your honor.

[Oral Arg Recording]

 

 

 

Proving Printed Publications

Patent

Ex parte Zhang, Reexam No. 90/014,234, 2021 WL 633718 (PTAB)

Folks continue to file anonymous ex parte reexaminations.  Michael Piper of Conley Rose filed this one on behalf of an anonymous party challenging Zhang’s U.S. Design Patent No. D810,925 (“breast pump”).   The reexamination examiner agreed with the challenge and issued a final rejection that the claimed design was anticipated by four different prior art references.  Note that design patent anticipation asks whether the design to be patented is “substantially the same” as the prior art in the eyes of an ordinary observer.

Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.

Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511 (1871)).

Not Prior Art: On appeal, the PTAB has reversed — finding that cited references are not prior art at all.

First to Disclose: Two of the references were Chinese Design Registrations filed and published a couple of months before Zhang’s filing date.  Prior to that date, but still within one-year, Zhang had already licensed the design and licensed pumps embodying the patented design were on sale in China. The timing of this prior public disclosure was just right to save the day under Section 102(b)(1)(B).

(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor … or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Zhang apparently did not make this argument until the appeal, and, the examiner withdrew his rejection after receiving the declaration with supporting evidence.

The other two references were internet publications purportedly published online two-years before Zhang’s application filing date.  However, the PTAB found insufficient evidence proving their publication dates.

Here, an anonymous third party, through counsel, provided the USPTO with copies of two webpages in a foreign language … each paired with an uncertified English translation. Both documents and translations were submitted by a third party requester in a very unclear, grainy or pixelated manner and the text and details over the figures are very difficult to discern.

The submitted material do include printed dates, but the PTAB found them unclear and insufficient without any corroborating evidence regarding context or accuracy. Further, no evidence was submitted showing that the sites were publicly accessible as of those dates, and the pages are no longer available on the internet.

There is simply no explanation or verification of the source, date or accessibility of the information presented on these documents. While we can put some weight in the duty of a signatory of a registered patent attorney in accordance with 37 C.F.R. § 11.18 that statements of fact are “believed to be true,” we simply cannot find the evidence sufficient to establish the documents as prior art.

Zhang.  Thus, the PTAB reversed the rejection.

Another week, another mandamus

Patent

by Dennis Crouch

In re Uber Technologies, Inc. (Fed. Cir. 2021)

Another week, another mandamus. This case is parallel to In re Samsung discussed earlier where Ikorongo divided its patent rights between Ikorongo-Texas (right to enforce in W.D.Tex.) and Ikorongo-Tech (right to enforce elsewhere in USA).  In Samsung, the appellate court rejected this brazen attempt to manipulate venue. Here, the court found “no basis for a disposition different from the ones reached in Samsung” and ordered transfer to N.D.Cal.

Bald-Faced Attempt to Manipulate Venue Rejected

 

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Executive Order on Promoting Competition in the American Economy

Patent

President Biden is expected to sign an executive order today focusing on competition that includes 72 separate initiatives.  The following are a few.

  • Non-Compete Agreements: About half of private-sector businesses require non-compete agreements.  This stifle’s competitions and limits workplace mobility. The FTC is being asked to either ban or significantly limit non-compete agreements.
  • License Requirements: About 1/3 of jobs in the US require some sort of license from a state authority.  These licenses limit mobility and lock folks out of certain jobs.  The FTC is being asked to ban occupational licensing requirements that impede economic mobility.
  • Prescription Drugs: Drug prices are higher in the US than in any other country — even for the identical product.  This is largely a construct of Federal Law.  The FDA is directed to begin importing prescription drugs from Canada (in cooperation with states and tribes); The HHS is directed to support for generic and biosimilars and create a comprehensive plan (within 45 days) to combat high prescription drug prices and price gouging; FTC is asked to ban “pay for delay” agreements between patent owners and generic competitors.
  • Right to Repair: The FTC is encouraged to “limit powerful equipment manufacturers from restricting people’s ability to use independent repair shops or do DIY repairs.” This is particularly focused on farmers, but will likely extend to other areas.
  • Hearing Aids: Sell these over the counter.
  • Hospitals: Complete implementation of hospital price transparency rules. Recognize that hospital mergers are usually not good for patients.
  • Obamacare: Do a post-Trump revamp of the National Health Insurance Marketplace to standardize plans and make it much easier for consumers to understand and comparison shop.
  • Internet: Restore net neutrality rules; limit early termination fees for home internet; require more transparency in pricing; limit private deals between ISPs and landlords that limit tenant access to competition and benefit the landlord.
  • Internet Mergers: Apply greater scrutiny of mergers, especially by dominant internet platforms.
  • Privacy: The FTC is encouraged to develop rules on surveillance and the accumulation of data by big-tech and to bar unfair competition in internet marketplace.
  • Passenger Train: Encourage the Surface Transportation Board to require railroad track owners to provide rights of way to passenger rail and to strengthen their obligations to treat other freight companies fairly.

More to come on this topic.  Note, the statement does not mention patent rights or intellectual property, but several of the orders have IP implications.

https://www.whitehouse.gov/briefing-room/statements-releases/2021/07/09/fact-sheet-executive-order-on-promoting-competition-in-the-american-economy/

 

It is Time to Tell Your Eligibility Stories

Patent

by Dennis Crouch

At the behest of several leading Senators, the USPTO has begun a study on the “Current State of Patent Eligibility Jurisprudence.”  To that end, the agency is seeking comments from the public that will be due by Early September.  The agency would like input from various stakeholders, including inventors, owners, investors, licensees, users, and patent attorneys. The agency appears to be looking from key insight regarding the actual experience of parties involved — telling a story of the impact of patent eligibility doctrine.

Acting Director Hirshfeld has made clear in some settings his predilection for broad subject matter eligibility, and the wording of the questions suggest that the Agency is looking for reasons to decry the current state of narrowed eligibility.

The exact topic of comments are not limited, but the Agency has created a list of 13 questions that may guide input. I have paraphrased:

  1. How does eligibility jurisprudence impact business in your tech area (be specific)?
  2. What impacts have you experienced because based upon changes over the past decade? This  includes patent prosecution, enforcement, R&D, employment, innovation, sales, competition, etc.
  3. How is eligibility jurisprudence impacting the following: quantum computing; AI; precision medicine; diagnostic methods; pharmaceutical treatments; and other computer-related inventions?
  4. How does US eligibility jurisprudence differ from your experience in other leading patent regimes?
  5. Provide details on cases that were denied based upon eligibility in the US, but were allowed in other leading patent regimes.
  6. Explain if US eligibility doctrine has shifted research/investment/jobs to other parts of the world.
  7. Explain if US eligibility doctrine has shifted IP strategy toward trade secrecy.
  8. Explain if US eligibility doctrine has shifted how you license or purchase patents.
  9. Explain how US eligibility doctrine has shifted your litigation strategies.
  10. What is the impact of US eligibility jurisprudence on the “global strength of US intellectual property.”
  11. What is the impact of US eligibility jurisprudence on the US economy as a whole.
  12. What is the impact of US eligibility jurisprudence on particular market areas?
  13. How is the public impacted by the state of US eligibility jurisprudence?

Read more here: https://public-inspection.federalregister.gov/2021-14628.pdf

I expect that the comments here will also be relevant to the views of the solicitor general that will be submitted in Am. Axle.

Submit comments via the Federal Register portal using Docket No: PTO-P-2021-0032.

 

 

 

Iconic Timberland Boots — Trade Dress Worthy?

Patent

by Dennis Crouch

Timberland has been selling its iconic boots back in 1973 – almost 50 years ago.  Actually, at the time the company name was Abington Shoes, but quickly changed its name to Timberland Boot because of the popularity.  Timberland did not patent or register a copyright the design, and the market it rife with copycat boots.

Over the past several years, Timberland has been attempting to register the shape of the boots as protectable trade dress. However, the USPTO’s Trademark Trial & Appeal Board (TTAB) rejected the application, finding that the the company had failed to demonstrate that the boot shape had acquired secondary meaning in the eyes of consumers.  The examiner had also rejected the trade dress registration as  improperly functional, but the TTAB did not reach that issue.

In a new lawsuit, Timberland has asked a district court judge to overturn these rulings and find that the trade dress is distinctive and registrable.

Complaint: TBL Registering TM on Timberlands

In its brief, Timberland provides examples of other shoe shape trade dress that have been registered, including the classic low-top Converse sneakers.

 

 

Dismissal on the Pleadings — for Indefiniteness

Patent

DataCloud Techs v. SquareSpace (D.Del. 2021)

Eligibility and indefiniteness are both judged primarily as questions of law, although both can occasionally depend upon some underlying factual finding.  And, even when questions of fact are at issue, it is a judge (rather than a jury) that hears the evidence and determines the facts.

In recent years, eligibility determinations have moved forward in the litigation context and become a true “threshold test.”  See Bilski v. Kappos, 561 U.S. 593 (2010).   Often, eligibility is the first substantive determination in patent litigation and it is typically decided either on a motion to dismiss (12(b)(6)) or motion on the pleadings (12(c)).

With all the parallels, it is not surprising that some litigants are also suggesting that indefiniteness be decided at the pleadings stage.

The recent motion for dismissal by SquareSpace is on point — arguing that DataCloud’s patent claims indefinite functional limitations parallel to those rejected by the Supreme Court in O’Reilly v. Morse. [Brief in Support of Motion to Dismiss].

The brief walks through Supreme Court history in indefiniteness associated with functional claim limitations.

  • O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854)
  • Corning v. Burden, 56 U.S. (15 How.) 252 (1854)
  • Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864)
  • Fuller v. Yentzer, 94 U.S. 288 (1877)
  • Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895)
  • Westinghouse v. Boyden Power Brake Co., 170 U.S. 537 (1898)
  • Busch v. Jones, 184 U.S. 598 (1902)
  • Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928)
  • General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)
  • United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)
  • Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)
  • Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271 (1949) (“Graver I”)

SquareSpace filed its motion to dismiss in May and DataCloud has recently filed an amended complaint and has argued that the amended complaint renders the motion “a nullity.”  The new complaint adds three additional patents and also includes an allegation that attempts to skirt the indefiniteness question:

A person skilled in the art … would understand that each of the limitations and/or steps in the claims … are defined by what they do (not what they are). Even if any limitation and/or step of the claims is “functional”— and none are—the teachings of the … Patent provides to any skilled artisan sufficient structure, material, or acts necessary to perform the recited function or provides information sufficiently identifying a finite group of structures, materials, or acts necessary to perform the recited function that were well known to skilled artisans at the priority date.

Amended Complaint.

= = = =

Lawyers on the brief include James Dabney and Sue Robinson (as well as others).

 

En Banc: When Employees Leave with a Half-Baked Invention

Patent

I have been following the patent ownership lawsuit of Bio-Rad Laboratories, Inc. v. International Trade Commission and 10X Genomics.  The case is now pending on a petition for en banc rehearing before the Federal Circuit.

Several former Bio-Rad employees left to form 10X Genomics.  While at Bio-Rad, the individuals began development of a number of ideas but did not complete conception or reduction-to-practice.  Some months later, after leaving and forming 10X, they completed the inventions and filed patent applications. Bio-Rad now argues that it has partial ownership rights to the inventions based upon the inventor’s contributions while employees.

In the appeal, the Federal Circuit sided with 10X, holding that the terms of the employment agreement were limited to Intellectual Property, and pre-conception ideas were not enough.

Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign

Now, Bio-Rad  has petitioned for en banc rehearing arguing that the decision is contrary to a host of Federal Circuit decisions:

First, the panel’s decision conflicts with this Court’s precedent that employment contracts such as Bio-Rad’s are to be given their full import and not limited to a final conceived patentable invention.  See, e.g., AT&T v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992).

Second, the panel’s decision also conflicts with precedent regarding joint inventorship that can occur serially over time and that contribution of a single idea to a final invention can qualify as joint inventorship, which is a protectable right subject to contract. See, e.g,. Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297 (Fed. Cir. 2010).  Precedent does not impose a temporal restriction on when a person can become a co-inventor. The analysis requires comparing the significance of the work alleged to be an inventive contribution to the claims as a whole. Fina Oil & Chem Co. v. Ewen, 123 F.3d 1446 (Fed. Cir. 1997).

BioRadEnBanc.

Bio-Rad is correct that the Federal Circuit appears to have been too tight in its statements of the law, but it may well be that the contributions made while employees at Bio-Rad were still insufficient.

What is Your Preferred Method for Attacking Functional Claims?

Patent

by Dennis Crouch

VoIP-Pal.com, Inc. v. Apple, Inc., No. 20-1809 (Supreme Court 2021)

VoIP-Pal sued Apple for infringing its U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.  Apple filed four petitions for for inter partes review, but all four were denied by the PTAB. Judge Koh then dismissed the infringement case in Apple’s favor–finding that all asserted claims were directed to ineligible subject matter.  On appeal, the Federal Circuit affirmed without opinion (R.36). Now, VoIP-Pal has petitioned for writ of certiorari.  The case is now part of a trio of eligibility cases pending before the Court. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891; iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760.

The patents here are all directed routing calls using Voice Over Internet Protocol (VoIP) communications.  The basic idea is to rout calls based upon a user identification, rather than using key parts of a telephone number (such as country codes; area codes; and other signals).  Once the recipient ID is entered, the system would look-up their location and route the communications accordingly.   Judge Koh found the claims were directed to the abstract idea of “Routing a communication based on characteristics of the participants.”  Judge Koh did not attempt to define “abstract idea,” but noted some hallmarks found in VoIP’s claims:

Claim 1 is directed to an abstract idea: (a) the claimed method discloses only generalized steps drafted in purely functional terms; (b) it is analogous to well-known, longstanding practices; and (c) it does not recite an improvement in computer functionality.

In its petition for writ of certiorari, VoIP-Pal asks three questions:

1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. §101?

2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

3. Is it improper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?

[Petition] The 112 discussion is basically an argument that any problems with functional claim limitations should be dealt with under §112 rather than §101.

= = =

The chart above shows the number of U.S. patents issued each year that include the phrase “VoIP” somewhere in the document.  Folks were already doing some packet-switched voice communications before the 2000’s, but typically used a different name.

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Recent Prophetic Example cases from the PTAB

Patent

Ex parte Callewaert, APPEAL 2019-005598 (Patent Tr. & App. Bd. Feb. 25, 2021).

Following an obviousness rejection, applicant relied upon an example in the specification to help prove an unexpected result (that the living cell would create certain “unnatural glycan structures”).  The PTAB rejected the argument — finding that the example was written in the present tense and therefore assumed to be prophetic and therefore “does not provide the factual evidence needed to support unexpected results.” (emphasis in original).  It appears in this case, the PTAB treated the prophetic example as merely an argument. 

= = = =

Ex Parte Cigan, APPEAL 2020-001230 (Patent Tr. & App. Bd. Sept. 14, 2020)

Cigan provides a minor counterpoint to Callewaert. The patent applicant argued that the prior art examples should be disregarded as merely a prophetic example.  The PTAB rejected the call and instead presumed that the prior art teachings were enabling.  See In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (holding that prophetic examples in the prior art are still presumed to be enabling).

= = = =

Ex Parte Harriman, APPEAL 2020-004459 (Patent Tr. & App. Bd. Feb. 10, 2021)

In Harriman, the PTAB reversed an examiner’s enablement and written description rejections, holding that the prophetic examples of an immunoglobulin light chain were sufficient.  The claims are directed to a genetically modified (transgenic) chicken grows human immunoglobulin.  (owned by Ligand)

Bald-Faced Attempt to Manipulate Venue Rejected

Patent

by Dennis Crouch

In re Samsung Electronics Co., LTD (Fed. Cir. 2021)

The Federal Circuit has again granted mandamus and ordered Judge Albright to transfer two cases case out of his W.D.Tex. court to a more convenient forum (N.D.Cal.).

The underlying actions were filed by a patent holding company known as Ikorongo Texas LLC against Samsung and LG Electronics. As explained below, the owners of Ikorongo Texas formed the company as an attempt to solidify venue in W.D.Texas and avoid the case being transferred for inconvenient forum.

Ikorongo Texas is owned by five-individuals led by patent agents Hugh Svendsen & Sarah Svendsen.  The five also own a separate company known as Ikorongo Technology LLC.  The asserted patents were previously fully owned by Ikorongo Tech. However, before suing, Ikorongo Tech geographically divided the patent rights. In particular, the company assigned all rights in the patents relating to the WDTX back to the five-individuals.  At that point, the five individuals owned all rights to sue and collect damages associated with infringement occurring in the “specific counties” covered by WDTX.  The five individuals then created the new company Ikorongo Texas and assigned their WDTX rights to the company.  Ikorongo Texas then sued Samsung and LGE.  The following day, Ikorongo Texas amended its complaint to also add Ikorongo Tech as a co-plaintiff so that collectively they could seek damages for the full USA.  Ikorongo Texas is a Texas LLC (corporate registration in Texas), but its owners and managers all reside in North Carolina.

The defendants in the lawsuit admitted that venue was proper in WDTX, even under the high bar for proper venue created by 28 U.S.C. § 1400(b).  But, the defendants argued that N.D.Cal. is a better, more convenient venue, and requested transfer. Even if venue is proper, a defendant may still complain that that the forum is inconvenient and request a change of venue. The statute:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

28 U.S.C. § 1404(a). A court has discretion as to whether to transfer a case, but should look to the convenience of the parties, convenience of the witness, and also the interest of justice. In addition, the court may only transfer a case to a district where venue and personal jurisdiction are proper (“where it might have been brought”).

Judge Albright refused to transfer the case to California — holding that Ikorongo Texas would not have had proper venue to sue in the state. In patent cases venue is only proper against a US corporate defendant if either (1) the defendant is incorporated within the state or (2) the infringement occurred within the district and the defendant has a regular place of business in the district.   The defendants here are incorporated in NY & Delaware, and the infringement alleged by Ikorongo Texas was only in WDTX. Thus, no proper venue.

On mandamus, the Federal Circuit has rejected that analysis — rejecting this “collusive” attempt to avoid the transfer on convenience grounds.

Ikorongo Texas is plainly recent, ephemeral, and artificial—just the sort of maneuver in anticipation of litigation that has been routinely rejected. . . . [T]he district court disregarded the pre-litigation acts by Ikorongo Tech and Ikorongo Texas aimed at manipulating venue.

Slip Op. The court then disregarded the creation geographic division and ordered transfer (after also finding that the convenience factors clearly weigh in favor of transfer and refusing to transfer would be an abuse of discretion).

The decision here has a limiting feature–that Ikorongo Texas was formed for the sole purpose of manipulating venue.  I wonder what the courts would say about Apple closing its store in E.D.Tex.

= = = =

I’ll note also that the case might have turned out differently if Ikorongo Tech had not been added to the case.

= = = =

The decision does not rely in direct on-point precedent, but instead relies heavily upon precedent in in the context of subject matter diversity jurisdiction. Miller & Lux, Inc. v. E. Side Canal & Irrigation Co., 211 U.S. 293, 305–06 (1908). In that case, a California corporation had formed a separate Nevada corporation and transferred property rights to the Nevada Corp in order to create diversity jurisdiction. The Supreme Court said No.  One problem with this analogy is that there is a particular statute barring collusive incorporation in order to create diversity jurisdiction:

A district court shall not have jurisdiction of a civil action in which any party, by assignment or otherwise, has been improperly or collusively made or joined to invoke the jurisdiction of such court.

28 U.S.C. § 1359.  Although also statutory, diversity jurisdiction has an express constitutional basis whereas convenient-forum is entirely statutory.  That distinction has historically offered courts to – at times – distinguish between the two in their analysis and interpretation. The opinion does not delve into why the linkage is appropriate here.

 

Do you Tell the PTO that the Disclosed Embodiments are Merely Prophetic?

Patent

by Dennis Crouch

Many patent applications are not fully reduced-to-practice by the time the patent application is filed. Although reduction-to-practice is a required element of invention, the Courts and Patent Office have long permitted the filing of a patent application to constructively satisfy the RTP requirement. Still, the application must fully satisfy the disclosure requirements of 35 U.S.C. 112(a), namely written description, enablement, and best mode.

A patent specification will typically include a series of examples, embodiments, use-cases and/or experimental results. In this post, I’ll refer to these collectively as “examples.”  One way of categorizing the examples is to divide between actual  “working examples” and predicted “prophetic examples.”  As you might guess, working examples are typically more compelling and indicative that the invention will actually work as claimed. But, prophetic examples also have their use and are absolutely permissible.  Although I have not measured this, I expect that the vast majority of patentees rely on prophetic examples to some extent in order to expand the scope and depth of their disclosure.  Thus, even if the patentee has reduced the invention to practice and explained the RTP in a working example, the specification may also provide a set of prophetic examples with differing arrangements, elements, and outcomes. Because of their differences, the courts and USPTO have called on patent applicants to take care in distinguishing between the two in their patent applications.

My definition of prophetic example is broad: I’ll pause here to recognize that my definition of prophetic examples is broad.  Traditionally, many have focused the “prophetic example” doctrines only on reports of experimental results that are typically found in chemistry and biology related patents. In her Prophetic Patents article, Professor Janet Freilich primarily limited her analysis to “experiments that report protocols that were not actually conducted and describe results that are made up, or prophesized.”  Using that definition and an automated search, Freilich found about 50% of chem/bio patents include prophetic examples. The MPEP has a broader definition that more closely parallels mine: “A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.” MPEP 2164.02.  Basically, if you are describing something that has not been actually reduced to practice, it is a prophetic example.

The USPTO has published a new notice to patent applicants with the same reminder cautioning applicants to distinguish between working and prophetic examples:

The USPTO is reminding patent applicants of their duty to ensure that patent applications are written in a manner that clearly distinguishes prophetic examples with predicted experimental results from working examples with actual experimental results. Prophetic examples, also called paper examples, are typically used in a patent application to describe reasonably expected future or anticipated results. Prophetic examples describe experiments that have not in fact been performed. Rather, they are presented in a manner that forecasts simulated or predicted results. In contrast, working examples correspond to work performed or experiments conducted that yielded actual results.

Notice: Properly Presenting Prophetic and Working Examples in a Patent Application, PTO-P-2021-0020 (Fed. Reg. July 1, 2021) (“Notice”).  The notice indicates that examiners generally do not question disclosed test results unless there is a reasonable basis to do so.  But, prophetic examples that fail a reasonableness test will be rejected for insufficient disclosure (enablement and/or written description).

In addition, applications that include prophetic examples should make clear whenever the example is prophetic.  Otherwise, the application may be deemed to include a misleading statement in violation of the applicant’s “duty of candor and good faith in dealing with the Office.” 37 C.F.R. 1.56.

One way to disclose prophetic examples is to expressly label them as “Prophetic Examples.” “It is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities.” Notice. The PTO has also deemed it appropriate to use future-tense language in describing prophetic examples and past tense for working examples. “When drafting a patent application, care must be taken to ensure the proper tense is employed to describe experiments and test results so readers can readily distinguish between actual results and predicted results.”

The USPTO Notice focuses on prophetic examples stemming from experimental results, and thus remains to be seen whether the requirements will be practically extended to situations involving prophetic embodiments and use-cases presented without any experimental results. One approach for patent applicants is to write everything as if it is a prophetic example.

PTO Director Review Process following Arthrex

Patent

by Dennis Crouch

The USPTO has released some implementation information for Arthrex. In its decision, the Supreme Court held that the USPTO Director has power to review any IPR decision by the PTAB.  The Agency’s basic approach is as follows:

  1. At times, the PTO Director might initiate review of an IPR Decision sua sponte. This is unlikely.
  2. A party may request review of a final written decision for an IPR/PGR.

The request must be filed within 30-days of the PTAB’s final written decision or rehearing decision. The Agency has indicated that a request for review by the USpTO Director will be considered a request for rehearing under 37 C.F.R. 90.3(b) — that means that no appeal to the Federal Circuit will be due until after the Director acts on the request. In the short-term, the Office is not charging a fee for the request, but a fee will be added.

Request vs Petition: I’m not sure why, but the PTO is not identifying the Request for Review as a Petition for Review.

Pop-Panels and Ex Parte Proceedings: The Supreme Court identified inter partes review as demanding a process for PTO Director Review.  However, it is clear that this extends to Post-Grant and Covered-Business-Method Reviews.  It is unclear though whether it will extend to reexaminations or ordinary ex parte examination. I’m sure that the Director will still receive those petitions this month.  The Office created Precedential Opinion Panels (POP) as a mechanism for giving the PTO Director more direct control over PTAB precedent. The Agency has indicated that the POP system remains in place for now, but is could be eliminated in favor of the simpler system of director review.

Links:

Webinar: PTO will host a webinar Thursday, July 1 at 10 a.m. ET on implementation. [LINK]

Assignor Estoppel Persists — But Only for Claims Specifically Assigned

Patent

by Dennis Crouch

Minerva Surgical Inc. v. Hologic Inc. (Supreme Court 2021)

In my property law course, I spend a good bit of time walking through post-conveyance rights and obligations. What warranties are are promised to the buyer?  Do these need to be express or may they be implied? Can you disclaim the warranties by selling via quitclaim deed or “as is”? Are warranties different in for sale than for a gift? And What about caveat emptor?   My class focuses on land and, to a lesser extent, personal property. Minerva asks the same questions, but for patents.  The court upheld the assignor doctrine, but with some big caveats.

  • Majority: Justice Kagan. Joined by Chief Justice Roberts and Justices Breyer, Sotomayor, and Kavanaugh.
  • Dissent: Justice Alito.
  • Dissent: Justice Barrett. Joined by Justices Thomas and Gorsuch.

The dissenting opinions would have overturned the prior precedent, although Justice Alito’s approach would have been more strident especially with regard to the reenactment canon (did the 1952 Act reenact the prior law except where expressly disturbed?).

These ideas of stare decisis and silent reenactment are part of a major ongoing debate within the Court over its role in changing its own prior precedent.

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Practice Note: The holding in the case suggests that attorneys may want to begin to require inventors to sign a confirmatory assignment at the time of patent issuance. 

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In a 5-4 decision, the Supreme Court has upheld prior precedent maintaining the doctrine of assignor estoppel:

When an assignor warrants that a patent is valid, his later denial of validity breaches norms of equitable dealing.

The baseline here is an issue of unfair dealing:

By saying one thing and then saying another, the assignor wants to profit doubly—by gaining both the price of assigning the patent and the continued right to use the  invention it covers. That course of conduct by the assignor strikes us, as it has struck courts for many a year, as unfair dealing—enough to outweigh any loss to the public from leaving an invalidity defense to someone other than the assignor.

Implicit here is that assignor estoppel applies when the the assignor receives some compensation for transferring rights — that there is some deal.  A transfer without compensation then would not imply the same warranty.  Of course, inventors and others who assign their patent rights rarely offer an express “warrant that a patent is valid.” Doesn’t matter, the court found that , the court found that any assignment of any specific patent claims will typically include an implied warranty of validity.  “[T]he assignment of specific patent claims carries with it an implied assurance.”

There is no warranty in cases where there is no explicit nor implicit representations:

But when the assignor has made neither explicit nor implicit representations in conflict with an invalidity defense, then there is no unfairness in its assertion. And so there is no ground for applying assignor estoppel.

So, the warranty of validity is ordinarily implied when assigning “specific patent claims” but the court explains that a warranty would typically not exist if, for instance, the assignment occurred before the invention even existed.

An employee assigns to his employer patent rights in any future inventions he develops during his employment; the employer then decides which, if any, of those inventions to patent. In that scenario, the assignment contains no representation that a patent is valid. How could it? The invention itself has not come into being. See Lemley, Rethinking Assignor Estoppel, 54 Houston L. Rev. 513 (2016). And so the employee’s transfer of rights cannot estop him from alleging a patent’s invalidity in later litigation.

The court notes other situations where no warranty would be implied:

  • Assignment before invention;
  • Post-assignment change in the law that renders the patent invalid;
  • Post-assignment amendment to the patent claims, and the amendment alters the validity.

On remand, the Federal Circuit will consider how these caveats play into the specific case here where the claims were apparently changed substantially post-assignment.

 

Supreme Court: Closing out the Docket for 2020-21

Patent

by Dennis Crouch

The US Supreme Court has almost cleaned-up its patent docket for the October 2020 term.  I still expect a decision at some point this week (by July 2) in Minerva Surgical, Inc. v. Hologic, Inc. focusing on the ongoing viability of assignor-estoppel.  The court has already decided its one other patent-focused case for the term–United States v. Arthrex, 594 U. S. ___ (2021). In Arthrex, the court altered the power of the PTO Director beyond statutory limitations in order to preserve the PTAB’s constitutional authority during IPR proceedings. A number of parallel petitions had raised the same or similar questions to Arthrex. The Court vacated and remanded some cases back to the Federal Circuit “for further consideration in light of United States v. Arthrex, Inc.” For other cases, the court simply denied certiorari. There are also several Arthrex-follow-on petitions pending that have not yet been fully briefed. I expect these will also be denied.

The court also denied certiorari in TCL Communication v. Godo Kaisha IP Bridge 1, No. 20-1545.  That case asked a couple of interesting questions regarding proof of literal infringement.  The court allowed the patentee to make assumptions about the accused devices based upon admissions that the devices conform to certain industry standards.

The lone hold-over case is American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 20-891 focusing on patent eligibility. A petition for certiorari was filed in that case back in December 2020.  After briefing was completed, the Supreme Court then requested the views of the U.S. Government on whether the court should grant certiorari.  Those views will come from the US Solicitor General, but probably will not be submitted until November or December 2020.  The CVSG signals some amount of interest, making this case the most likely to be granted cert next year. Am. Axle asks two questions:

  1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
  2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

A follow-on petition asks the identical questions in iLife Technologies, Inc. v. Nintendo of America, Inc.

New cases have already begun to line-up for consideration next term, starting at the end of September 2021:

  • Standing: Trademark – Standing to Cancel a TM Registration – Naked TM, LLC v. Australian Therapeutic Supplies Pty. Ltd.; See also Kaszuba v. Hirshfeld (similar issues, pro se).
  • Standing: Prisoner’s right to protect his patent rights via court action –  Tormasi v. Western Digital Corp.
  • Preclusion: Ongoing viability of the Kessler Doctrine as an expansion of traditional issue and claim preclusion. PersonalWeb Technologies, LLC v. Patreon, Inc.
  • Anticipation: Is a method claim expressly requiring use of a man-made protein anticipated by use of a naturally-occurring version of the protein.  Biogen MA Inc., Petitioner v. EMD Serono, Inc.
  • Due Process: Many of the patents cancelled via IPR had already been applied-for or issued prior to the America Invents Act of 2011.  Does that “retroactive application … violate the Due Process Clause of the Fifth Amendment to the United States Constitution?” Ultratec, Inc. v. CaptionCall, LLC
  • Writing Opinions: Does the use of Federal Circuit Rule 36 to summarily affirm decisions from the PTAB “without opinion” violate 35 U.S.C. § 144? Ultratec, Inc. v. CaptionCall, LLC (see alternative question on due process)

The court will likely act on these certiorari petitions within the first couple of weeks of the October 21 term. Each of these cases are interesting and important.  Still, it is quite possible that the Court will not grant certiorari in any new patent case for the next year.

 

Disclosure and Definiteness

Patent

I believe the clincher in this case is the fact that TVnGO’s patent claims use language not found anywhere within the patent specification.  The result, claims invalid as indefinite. — Dennis Crouch

TVnGO v. LG Electronics (Fed. Cir. 2021) (nonprecedential) [Opinion]

Patentee TVnGO sued LGE–alleging that its Smart TV’s infringed U.S. Patent Nos. 8,132,220, 9,124,945, 9,392,339, 9,407,969, and 9,794,621.  The district court found all asserted claims across the five related patents invalid as indefinite under 35 U.S.C. 112.  On appeal, the Federal Circuit has affirmed. Opinion by Judge Prost, joined by Judge Reyna and Senior Judge Schall.

Section 112(b) of the Patent Act requires “one or more claims particularly pointing out and distinctly claiming” the invention. The language is only slightly modified from historical statutes:

  • Patent Act 1836: “But before any inventor shall receive a patent for any such new invention or discovery he … shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.”
  • Patent Act 1870: “[B]efore any inventor or discoverer shall receive a patent for his invention or discovery, he … shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.”

The addition of claims in the 1836 Act was designed to provide notice to the world as to the scope of the patent right following an on-point complaint from the U.S. Supreme Court (and others). See Evans v. Eaton, 20 U.S. 356 (1822). Over the years, the Supreme Court focused more on the importance of claims for publicly demarking the property line.  See Winans v. Denmead, 56 U.S. 330, 347 (1853) (Campbell, J., dissenting); Merrill v. Yeomans, 94 U.S. 568, 573 (1876) (The patent laws “leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights.”).  The 1952 Act did not appear to change these general rules but rather attempted to clean-up the requirement slightly by grammatically separating the disclosure requirements 112¶1 from the claim requirements 112¶2. In his  contemporary commentaries, P.J. Frederico explained that “the clause relating to the claim has been made a separate paragraph to emphasize the distinction between the description and the claim, and the language has been modified.” P.J. Frederico, Commentary on the New Patent Act (1952).  In 2011, the statute was renumbered so that Sections 112¶1 and 112¶2. are now Sections 112(a) and 112(b).

The newest Supreme Court case on point is Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).  In Nautilus, the court explained that claims must provide reasonable certainty as to the claim scope:

[W]e read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.

Id. Previously, the Federal Circuit had invalidated claims on definiteness only when claims are unable to be construed are “insolubly ambiguous.”  The Supreme Court found that standard allowed claims that “lack the precision § 112, ¶ 2 demands.”

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The claims here all generally relate to producing an overlay of logo icons and small window-in-window content on a TV screen.  All of the claims include the phrases “overlay activation criterion” or “overlay activation signal.”   One problem here is that the those terms were not found in the original disclosure but rather added during prosecution.  A second problem is that neither of these have any ordinary meaning to one skilled in the art (even though each word is individually  known, the combination is not known to PHOSITA).  A third problem is that the different patents appear to use the terms in slightly different ways — even though all have the same original specification. The court indicated that it was unclear whether the signal/criterion was focused on the icon-overlay or on the content-overlay or on both.

Here, a person of ordinary skill would encounter two claim phrases without an ordinary meaning in the art. Upon consulting the specification, he or she would not find those phrases.  And when attempting to glean their meaning from the patent’s use of “activates” and “activating,” he or she would find that “the patents teach two different results”—i.e., display of IP content associated with an already displayed overlay versus display of an overlay in the first place—without reasonable certainty as to which reading is correct. The asserted ’339, ’945, and ’621 patent claims are therefore indefinite.

Slip Op. Note here that the court’s ruling could have gleaned further definitional information from the claims that state expressly that the “overlay activation criterion” is used “to cause the display screen to display the overlays” and that the “overlay activation signal” is used to “generat[e] display drive signals causing the
TV screen to display the overlays.”

The other two patents provided more specific description of the terms within the claims, but also expressed what the court called intra-patent inconsistencies (within the patent).  The particularly inconsistency was the source of the activation criteria — was it from the internet or from the user’s devices.

On the one hand, the independent claims indicate that an “overlay activation criterion” is … provided “over the Internet” and “transmitted to the user’s premises.” But the dependent claims, on the other hand, state that “said overlay activation criterion includes . . . a user command information,” indicating that an “overlay activation criterion” can come from a user’s premises via the remote control. Comparing ’220 patent claims 1 and 9

Slip Op.  According to the court, this internal inconsistency further sealed the deal. Invalidity Affirmed.   I would note that the proffered inconsistency appears easily reconcilable in that the “activation criterion” and “user command” can come from two different sources.  But, that is a distinction I had to guess at and create in my head ex post — not something offered by the patent documents.

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Invalid.

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