Can someone help me understand what’s going on with the rise in withdrawn patents? (FYI – since 2000 the numbers have been growing substantially faster than the rate of new patent issues). 

I posted last week about recently issued U.S. Patent No. 11,000,000. I should note though that the 50,000+ patents "withdrawn from issue." This messes up the count.

— Dennis Crouch (@patentlyo) May 21, 2021

by Dennis crouch

The Supreme Court should release its  Arthrex decision within the next 3-4 weeks on whether PTAB Judges were appointed in accordance with US Constitutional requirements. Officers of the United States must be nominated by the President and confirmed by the Senate; inferior Officers may be appointed by a head-of-department if authorized by Congress.  US Const. Art. II, Sec. 2,  Cl. 2. PTAB Judges were implicitly deemed inferior officers by Congress and appointment authority given to the Secretary of Commerce.  However, in Arthrex, the Federal Circuit ruled that the Judges had significant independent authority and thus must be considered Principal Officers.  The case was argued to the Supreme Court on March 1, 2021 and the court is set to decide (1) whether the PTAB judges are Principal Officers; and (2) if so, what result?  The outcome has the potential to impact several thousand PTAB decisions — either by rendering them void or by confirming their validity.

The Cure: As part of its Arthrex decision, the Federal Circuit struck-out an employment protection provision as it applied to PTAB Judges; and then ruled that, without those employment protections that PTAB judges were reduced to inferior officers.  The court then ruled that its on-the-fly ointment applied cure to any post-Arthrex PTAB decision.

The Federal Circuit’s recent decision in Corephotonics, Ltd. v. Apple Inc. (Fed. Cir. May 20, 2021) offers an example of the cure.  [CorephotonicsDecision]. Timeline:

• 2018, Apple filed an inter partes review petition to challenge Corephotonics’ U.S. Patent No. 9,538,152.
• October 31, 2019, the Federal Circuit decided Arthrex and also issued its curative ruling.
• Then, 32 days later (December 2, 2019), the PTAB issued its final written decision in Corephotonics–siding with Apple and finding the challenged claims obvious.

On appeal the Federal Circuit applied its precedent to hold that Arthrex cured the appointments problem for any PTAB determination issuing post-Arthrex.

Corephotonics made the clever argument that Arthrex did not actually apply to the lower courts until the mandate issued in the case.  In the Federal Circuit, the mandate typically issues 7-days after the time for filing of a petition-for-rehearing. Because a petition was filed in Arthrex, the mandate did not issue until 2020. On appeal, the Federal Circuit did not take the bait and instead found “no reason to depart from our holding in Caterpillar for purposes of resolving this appeal.”  In Caterpillar, the court did not address this particular mandate argument, but did uphold a PTAB decision issued immediately following Arthrex. See Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342 (Fed. Cir. 2020).

On the merits, the Federal Circuit also affirmed — finding that substantial evidence supported the obviousness determination.  The parallel infringement action has been stayed awaiting outcome of the IPR. Corephotonics, Ltd. v. Apple, Inc., Docket No. 5:17-cv-06457 (N.D. Cal. Nov 06, 2017).

by Dennis Crouch

At 12:01 a.m., this past Tuesday, the USPTO issued its newest batch of patents.  6549 utility patents; 13 reissues; and 699 design patents.

Back in 1848, the USPTO began its tradition of issuing patents every Tuesday. Over the course of 173 years, more than 9000 Tuesdays have passed and more than 11,000,000 patents issued.  During this time, the Patent Office has missed a handful of Tuesdays.  In the summer of 1945, the office skipped two weeks while the US was in the midst of WWII. It also skipped two weeks in the summer of 1970. I believe that delay was associated with the changeover to electronic databases at the Office and computerized printing.  On point, March 1971, the NYTimes published an article suggesting that the USPTO would pause printing that summer for a 12-week period due to printing cost increases associated “the inauguration of printing by computer.”  The times reported that “or several months it has been impossible to buy copies on the issue date.”  For those weeks, the patents “issued” on time, but were not really available until later.

Between 1850 and 1880, the Office also missed a handful of Tuesday issuances — always during Christmas week. Overall result though is 99.9% on time.

by Dennis Crouch

Apple Inc. v. Qualcomm Inc. (Fed. Cir. 2021) [Apple En Banc]

In this Inter Partes Review, the PTAB sided with the patentee Qualcomm and issued a final written decision that the challenged claims had not been proven obvious. (Note – this was after Qualcomm disclaimed some of the more dubious claims). Apple appealed.  (U.S. Patent No. 7,844,037).

Apple has a right to appeal under the statute, but Federal Courts will only hear cases involving an actual case-or-controversy that involves “an injury in fact.”  “To establish injury in fact, the alleged harm must be ‘concrete and particularized and actual or imminent, not conjectural or hypothetical.'” Slip Op; quoting Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) and Lujan v. Defs. of Wildlife, 504 U.S. 555 (1992). The standing requirement is derived from Article III of the U.S. Constitution. Thus, although Congress purported provide a statutory right to appeal, no appeal is permitted unless the appellant can show some injury stemming from the outcome of the case below.

Apple and Qualcomm have a license deal, and Apple has licensed the patent at issue (along with at least 20,000 other patents).  Typically, a licensee has standing to challenge a patent, because it will help it escape from paying royalties. Here, however, Apple did not allege that the patent’s invalidity would impact any ongoing royalty payments.  Presumably, the rate is identical even if it is only 19,999 patents under the license.  In other words, Apple did not show how it is injured by the ongoing validity of the one challenged patent. (Actually there are two parallel cases, so “two challenged patents.”)

Now, Apple has petitioned the Federal Circuit for en banc rehearing, arguing that the outcome is contrary to MedImmune Inc. v. Genentech, Inc., 549 U.S. 118 (2007); Cardinal Chem. Co. v. Morton Int’l Inc., 508 U.S. 83 (1993); and Altvater v. Freeman, 319 U.S. 359 (1943).

The Federal Circuit’s decision is a classic Judge Moore opinion that identifies and defines a particular rule (here the in-fact-injury) and then strictly applies the rule to that facts at issue.  The problem though is that the Supreme Court’s constitutional analysis is not so cut-and-dry.  Here, the petition argues that the court’s analysis provides “rigid, patent-specific rules” that the Supreme Court has previously rejected.

Kaszuba v. Hirshfeld (Supreme Court 2021) [Petition for Certiorari][FedCir Decision]

This pending petition for certiorari involves a trademark registration dispute between Kaszuba (HOLLYWOOD BEER) and Hollywood Vodka LLC (HOLLYWOOD VODKA).  Kaszuba first registered his mark (albeit on the Secondary Register).  Later, HVL was denied registration — in part because of the existence of the Kaszuba’s mark.  HLV then filed a cancellation proceeding before the Trademark Trial & Appeal Board (TTAB).  After a drawn-out process, the Board eventually sided with HLV—entering judgment against Kaszuba as a sanction for discovery violations.

I’ll note that neither of these brands stand-up to the more popular Hollywood Brewing Co. (Hollywood, FL). 

Kaszuba’s new petition for writ of certiorari to the U.S. Supreme Court asks three interesting questions:

1. Whether the Federal Circuit erred in finding that Hollywood Vodka had standing under Lexmark and 15 U.S.C. § 1064.
2. Whether the Federal Circuit err in allowing Intervention by the USPTO Director under, the patent law provision of 35 U.S.C § 143.
3. Whether Administrative Trademark Judges are, for purposes of the Appointments Clause, Principal Officers who must be appointed by the President with the Senate’s advice and consent.

The second question is where plain error lies.  In its decision, the Federal Circuit allowed the U.S. Gov’t to intervene in the case based upon Section 143 (Hollywood Vodka did not participate in the appeal).  That section of the Patent Act does provide for intervention, but only specifically for appeals from the PTAB, and only in derivation, IPR, or post-grant review proceedings.

The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.

Section 143 obviously does not provide authority for the PTO to intervene in an appeal from the TTAB.  However, that may be harmless error as the Federal Circuit has previously allowed intervention in trademark cases. See In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) (“Because the original appellee Hexawave did not appear, the PTO moved, and the court granted leave to the Director, to participate as the appellee.”).

Note there are lots of brewing Hollywood TM disputes.  Below is a screenshot of a few TM cases at the PTO.

by Dennis Crouch

The Federal Circuit’s new decision in Trimble Inc. v. PerDiemCo LLC reads like my recent Civil Procedure final exam.[1]  The topic is personal jurisdiction–when may a Federal Court exercise its power over an out-of-state patentee in a declaratory judgment action challenging the patent’s validity.  The holding is important–repeated and specific threats of litigation by an out-of-state patentee can be sufficient to establish personal jurisdiction for a declaratory judgment action.[2]  The decision relies upon the an expanded notion of purposeful availment from the Supreme Court’s 2021 decision in Ford,[3] but should also be seen as further limiting the holding of Red Wing Shoe.[4]

In the U.S., personal jurisdiction is handled on a state-by-state basis, even if the case is filed in Federal Court.  “Due process” requires a defendant to have sufficient connection with the forum state before a court can exert power over the defendant or the defendant’s assets.[5]  This lawsuit was filed in California against PerDiemCo, and so the personal jurisdiction question boils down to whether PerDiemCo has directed its activities toward California in a way that makes jurisdiction fair, just, and reasonable according to our traditions.[6]

PerDiemCo, the patentee, is a Texas LLC with rented office space in Marshall, TX.  Its sole employee is Robert Babayi–a patent attorney practicing in Washington DC who has apparently never visited the Texas office.  PerDiemCo owns a number of U.S. patents covering the electronic logging of hours for commercial vehicles and also a process known as geofencing.[7]  (Geofencing is the process of electronically “monitoring whether a vehicle enters or leaves” an area.)  PerDiemCo’s only apparent business is licensing its patents.

Trimble is a Delaware corporation with its headquarters in N.D. Cal. (Sunnyvale).  Trimble is traded on NASDAQ and has a current market cap of $18.75 billion. (TRMB) — most of its business is related to geospatial technology.  ISI has does business and has offices throughout the United States.  Innovative Software Engineering, LLC (ISI) is also involved in the lawsuit. ISI is a subsidiary of Trimble that is both incorporated and headquartered in Iowa.

The Purposeful Availment: Back in 2018 PerDiemCo’s Babayi mailed a letter to a ISI’s corporate HQ in Iowa, accusing ISI of infringing PerDiemCo’s patents.  ISI is a subsidiary of Trimble, and so forwarded the letter to Trimble’s Chief IP Counsel Aaron Brodsky located in Colorado.   The parties then began to conduct some amount of negotiation: “Throughout these negotiations, PerDiemCo communicated with Trimble via letter, email, or telephone at least twenty-two times.”  The communications apparently included express threats to sue Trimble for patent infringement.  However, all the communications were apparently via Brodsky in Colorado.

PerDiemCo exchanged twenty-two communications with Trimble in California over a period of three months, some through its subsidiary ISE in Iowa and others through its Chief IP Counsel in Colorado.[8]

In 2019, Trimble and ISE sued for declaratory judgment.  Rather than choosing Iowa or Colorado, the companies chose the Northern District of California, which is Trimble’s home court.

The Question: On these facts, may the California district court exercise personal jurisdiction over the defendant?

The Answer: The district court dismissed the case, finding that it would be unreasonable to assert personal jurisdiction.[9]  On appeal, however, the Federal Circuit reversed—finding no problem with the case proceeding in California.  In particular, the Federal Circuit found (1) sufficient minimum contacts with the state of California related to the cause of action and (2) that exercise of jurisdiction by a California court would be reasonable.

= = =

Directed to California: If you recall, PerDiemCo repeatedly communicated with Trimble, but only through individuals residing outside of California.  These were seen as contacts directed to California because they are “communications sent to Trimble, a California resident.”[10]  The court did not spend much time on this particular issue, but addressed it in a footnote:

The [District] court held that PerDiemCo’s communications with Mr. Brodsky in Colorado were, for personal jurisdictional purposes, directed to Trimble in California, rather than in Colorado. This focus is consistent with our cases. Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc., 909 F.3d 1134, 1139 (Fed. Cir. 2018) (holding that, for personal jurisdiction purposes, a letter sent to a company’s counsel is directed to the company at its headquarters, not the location of counsel); Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001) (same); Akro Corp. v. Luker, 45 F.3d 1541, 1546 (Fed. Cir. 1995) (same).

Thus, we have contacts and threats of litigation directed toward a resident of California; and these threats relate directly to the eventual cause of action.

What about Red Wing: One big hurdle for Personal Jurisdiction is the Federal Circuit’s 1998 decision in Red Wing Shoe Co.[11]  In that case, court held that a patentee does not open-itself to personal jurisdiction in a particular state simply by accusing an in-state resident of infringement.  According to the court, that result would be unfair.

Principles of fair play and substantial justice afford a patentee sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum. A patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement. Grounding personal jurisdiction on such contacts alone would not comport with principles of fairness.[12]

In Red Wing, there were three warning letters sent by the patentee HHI to the DJ Plaintiff Red Wing.  These letters apparently accused Red Wing of infringement and also offered to license the patents. In addition, HHI’s prior licensees sold licensed products in the forum state (Minnesota), but HHI did not control those sales.  After reviewing those facts, the Federal Circuit found those connections insufficient to for Personal Jurisdiction.  In particular, the court suggested that the minimum contacts prong had likely been met, but that it remained unfair that those limited contacts would lead to a court proceeding.

In Trimble, the Federal Circuit purported to uphold Red Wing Shoe, but limited the case situations with a small number of communications.  Rather, the court found that PerDiemCo’s contacts were “extensive” and went beyond simply “informing” Trimble of its infringement and seeking a license agreement.

PerDiemCo amplified its threats of infringement as the communications continued, asserting more patents and accusing more of Trimble and ISE’s products of infringement. Indeed, PerDiemCo went so far as to identify the counsel it retained to sue Trimble and ISE and the venue in which it planned to file suit. PerDiemCo’s twenty-two communications over the course of about three months fall well outside the “sufficient latitude” we sought to grant patentees “to inform others of [their] patent rights without subjecting [themselves] to jurisdiction in a foreign forum” on the basis of three letters sent over a similar time period in Red Wing.

The Trimble court found that the PerDiemCo communications should be collectively termed “a negotiation” rather than merely providing information. “And Trimble is headquartered in California, connecting California to Trimble’s claims, which is a consideration the Court in Ford found relevant in distinguishing its earlier decision in Bristol-Myers.” In the end, the court found that the minimum contacts were “easily satisfied.” And, any fairness concerns were also overcome.

In its 1985 Burger King Decision,[13] the Supreme Court expanded upon the five fairness elements highlighted by World-Wide Volkswagen Corp. v. Woodson.[14]  Trimble walks through these same elements, concluding that it is indeed fair to haul PerDiemCo into a California court.

• Burden on the defendant. Although PerDiemCo has a Texas office, the courts found that office “pretextual” and certainly a distance from Washington DC where Babayi is located. Still, the company has repeatedly filed lawsuits in Texas.  According to the appellate court, if Texas is OK, so is California.   The basic decision here is that PerDiemCo does not really have any home because it is merely the owner of intangible assets.  If PerDiemCo was instead an operating company, then outcome would have been totally different.[15]
• Forum state’s interest in adjudicating the dispute. On this second point, the court found that N.D. Cal. Has a significant interest in hearing the dispute because Trimble is a “resident” of Northern District of California.
• Plaintiffs’ interest in obtaining convenient and effective relief. Nearby federal court is helpful to the plaintiff Trimble.
• Interstate judicial system’s interest in obtaining the most efficient resolution of controversies. On this point, the court did not find any favor one way or the other.
• The shared interest of the several states in furthering fundamental substantive social policies. This does not appear to apply directly.

As you can see, the BK bullet points did not reveal any fairness concern, and thus  the appellate panel reversed the lower court’s dismissal for lack of personal jurisdiction.

= = = =

Personal Jurisdiction as Patent Law Specific but Not Patent Law Specific.

The Federal Circuit has for many years applied its own law to personal jurisdiction questions even though the doctrine is procedural in nature. Unlike questions of inconvenient venue, the court has found that jurisdiction is “intimately involved with the substance of the patent laws.”[16] For convenient venue questions, the court applies the law of the regional circuit court of appeals.

This patent-focused personal jurisdiction doctrine goes back several decades.  In Trimble though the court explains that since that time the Supreme Court has “made clear that the analysis of personal jurisdiction cannot rest on special patent policies.”[17]  In Particular, in its 2017 SCA Hygiene decision, the Supreme Court stated that “[p]atent law is governed by the same … procedural rules as other areas of civil litigation.”[18] The appellate panel also notes other areas where the Supreme Court “has repeatedly rejected special rules for patent litigation in the context of rules governing civil litigation generally.”

In its decision, the appellate panel only takes this change toward generalism halfway.  In particular, the court uses the Supreme Court’s guidance to narrow its application of Red Wing. But, the court does not question the underlying premise that Federal Circuit law should prevail on the question of personal jurisdiction.  This seems to be a bit of doublespeak or perhaps a lack of coherence that could be resolved by an en banc rehearing.

= = = =

[1] Trimble Inc. v. PerDiemCo LLC, 2019-2164, 2021 WL 1898127, at *1 (Fed. Cir. May 12, 2021).

[2] See, Silas K. Alexander and Nicole R. Townes, Repeated and Specific Litigation Threats – Sufficient Minimum Contacts, Knobbe Martens Blog (2021).

[3] Ford Motor Co. v. Montana Eighth Jud. Dist. Ct., 141 S. Ct. 1017, 1024 (2021).

[4] Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998); See also Jack Henry & Associates, Inc. v. Plano Encryption Technologies LLC, 910 F.3d 1199 (Fed. Cir. 2018).

[5] Ford.

[6] See Int’l Shoe Co. v. Washington, 326 U.S. 310, 316–17 (1945) and Bristol-Myers Squibb Co. v. Superior Ct. of Cal., 137 S. Ct. 1773, 1779 (2017).

[7] Patents at issue here include: (1) U.S. Patent No. 8,149,113; (2) U.S. Patent No. 9,485,314; (3) U.S. Patent No. 9,621,661; (4) U.S. Patent No. 9,680,941; (5) U.S. Patent No. 9,871,874; and (6) U.S. Patent No. 10,021,198; (7) U.S. Patent No. 9,319,471; (8) U.S. Patent No. 9,954,961; (9) U.S. Patent No. 10,104,189; (10) U.S. Patent No. 10,148,774; and (11) U.S. Patent No. 10,171,950.

[8] Trimble.

[9] Id.

[10] Trimble.

[11] Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998); Genetic Implant Sys. Inc. v. Core–Vent Corp., 123 F.3d 1455 (Fed.Cir.1997).

[12] Id.

[13] Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985)

[14] World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980).

[15] See Xilinx, Inc. v. Papst Licensing GmbH & Co. KG, 848 F.3d 1346 (Fed. Cir. 2017) (treating non-practicing entity differently than operating company who also owns patents).

[16] Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed.Cir.1995).

[17] Trimble.

[18] SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017).

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Bally Gaming) (Fed. Cir. 2021)

In a pair of CBM decisions, the PTAB found New Vision’s patent claims ineligible under Section 101.  New Vision had proposed alternative claims, but those were also found to be invalid. On appeal, the Federal Circuit did not review the merits, but instead vacated and remanded on Arthrex grounds.

New Vision requests that we vacate and remand the Board’s decisions in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court. Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.

Slip. Op.

Judge Newman authored an opinion that dissents in-part.  In particular, Judge Newman argued that the choice-of-forum clause in a contract between the parties required any dispute over the patent to be resolved in a Nevada-based court, not in the USPTO.  “The Board refused to respect the forum selection agreement, and proceeded to final decision of the petitions.”  Judge Newman argued that the appellate panel should consider the issue before remanding.

Judge Newman particularly wanted to decide this issue here with her colleague Judges Moore on the panel (along with Judge Taranto).   A parallel question is question under consideration in Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021).  Oral arguments are expected in that case in July 2021 before a yet-to-be-disclosed panel.

The Public Private Nature of Patents

U.S. Patent Nos. 7,451,987 and 7,325,806.  The parallel litigation (filed in Nevada) is stayed pending outcome of the CBM review. New Vision Gaming &
Development, Inc. v. Bally Gaming Inc., No. 2:17-cv-01559-APG-BNW (D.
Nev.).

by Dennis Crouch

On May 11, 2021, the USPTO issued US Patent Number 11,000,000.  Eleven million. Don’t forget that the office has issued another 1,000,000 design+plant patents and an additional 10,000 patents from 1791 to 1836 before the current numbering system was established.  I was a junior in college at Princeton when Patent No. 5,500,000 issued to John Feagin covering a zip-tie method for suturing. Over the past 25 years, the number of U.S. patents has effectively doubled.

U.S. Patent No. 11,000,000 is one of a family of inventions owned by 4C Medical Tech. of Minneapolis directed to heart surgery tools. The inventors are Saravana Kumar and Jason Diedering.  The patent claims a method of delivering and also repositioning a prosthetic heart-valve (AltaValve) that is used to repair a leaky-valve issue experienced by several million Americans (typically over age 75).

The invention itself is quite simple — basically, there is a catheter tube with a set of wire pairs.  Each pair includes one wire with a looped end and a second with a straight end.  The pairs work together to deliver, release, and position the prosthetic valve within the heart.  The claims were rejected as obvious and then allowed after a fairly minor amendment.

The patent and its family have been prosecuted by Jeff Stone and his team at Barnes & Thornburg (Minneapolis).  Check back here in Spring 2024 when I’m expecting an announcement for Number 12,000,000.

From the USPTO: https://www.uspto.gov/about-us/news-updates/united-states-issues-patent-number-11000000

GREE, Inc. v. SuperCell Oy (Fed. Cir. 2021) (nonprecedential)

SuperCell is a Finnish company that makes and distributes the mobile game “Clash of Clans.”  SuperCell is owned primarily by the Chinese multinational Tencent, the “world’s largest video game vender.”  The patentee GREE is a Japanese mobile game developer and holds a number of mobile-device game related patents.

On May 7, 2021 a jury sided with Gree in a patent infringment lawsuit, holding SuperCell liable and awarding $92 million in infringement damages.

GreeSuperCellVerdictForm.  The jury also found the infringement willful and that the patent claims were not invalid.  In the coming months, Judge Gilstrap will rule on the soon-to-be-filed JMOL motions and also rule on the question of enhanced damages associated with the adjudged willful infringement. GREE also asked for injunctive relief in its final pre-trial contention and so that will come up as well.

Today, the Federal Circuit decided a parallel case involving a separate GREE patent — not one subject to the recent jury verdict. U.S. Patent Number 9,897,799.  For this patent, SuperCell filed a petition for Post Grant Review. The PTO granted the petition and eventually found the claims invalid under Section 101. On appeal here, the Federal Circuit has affirmed that judgment. In particular, the appellate panel agreed that the claims are directed to “the abstract idea of associating game objects and moving one or more of the objects.”  Further, the claims did not include any inventive step going beyond the routine and conventional.

The most important part of this decision is where the court (effectively) says “Claim It.”  There is some suggestion in the caselaw that a patentee might describe specific improvements within the detailed description and then include broader claims that encompass those improvements, but at a more general level.  Here, GREE described particular syntax of touches and swipes within the specification. ON appeal, the Federal Circuit found that those elements didn’t count for the Alice analysis because they were not claimed.

The Board also correctly explained that none of the syntax of touches and swipes that GREE cites as its inventive step are captured in any of the elements of the claims.

Slip Op.

= = = = =

1. A computer-implemented method for operating a computer game, the method comprising:

storing, in a storage module, a plurality of virtual objects and the arrangements of those virtual objects on a game field;

accepting, via an input face configured to detect a touch operation, operation information regarding a touch operation performed by a user;

associating, using a processor, a plurality of virtual objects as a group; determining, using a processor, whether the operation information comprises a direction operation;

upon determining that the operation information comprises a direction operation, moving, using a moving processor, one or more of the plurality of associated objects as a group in the direction indicated by the direction operation;

storing, in a storage module, the new arrangements on the game field of the one or more of the plurality of associated objects moved with the moving processor;

displaying, on a computer screen, the game field and the plurality of virtual objects arranged on the game field; and

displaying, on a computer screen, the new arrangement on the game field of the one or more of the plurality of associated objects moved with the moving processor.

= = = = =

Going back to the $92 million case, The following patents are at issue.

• Claim 3 of U.S. 10,328,346
• Claim 8 of U.S. 10,335,689
• Claim 1 of U.S. 10,076,708
• Claims 2 and 3 of U.S. 10,413,832
• Claims 1 and 6 of U.S. 9,079,107
• Claims 1 and 5 of U.S. 9,561,439

On appeal, SuperCell will likely argue that these are all invalid as ineligible (along with other issues)

By Sapna Kumar, Law Foundation Professor of Law at the University of Houston Law Center

While COVID-19 cases continue to drop in the United States, many countries are fighting resurgences of the virus and struggling to obtain vaccines and medical supplies. Back in October, India and South Africa petitioned the World Trade Organization (WTO) to waive all IP protection surrounding drugs and medical products needed to combat the pandemic. The petition also called for “the unhindered global sharing of technology and know-how.”

Existing safeguards regarding IP rights during public health emergencies have some issues. TRIPS Article 31 permits countries to issue compulsory licenses of patented technology, but the process for importing patented drugs is cumbersome under Article 31bis. Countries must also pay “adequate remuneration in the circumstances of each case” to the patent holder. Moreover, the U.S. government has a lengthy history of punishing countries that utilize compulsory licensing with trade-related sanctions.

It was therefore significant that President Biden announced on Wednesday that he will support waving IP protections for COVID-19 vaccines. U.S. Trade Representative Katherine Tai released a statement noting that “the extraordinary circumstances of the COVID-19 pandemic call for extraordinary measures,” and pledging to help expand vaccine manufacturing and distribution. This reversal in the Biden Administration’s position may be in response to increasing pressure from various groups and the unfolding crisis in India.

However, many questions still remain. First, will a waiver pass in the WTO? Although the European Union has stated that it is willing to reconsider the proposal, Germany remains staunchly opposed. Germany helped fund the Pfizer/Bio-N-Tech vaccine and has expressed concern that a broad waiver could undermine innovation. Chancellor Angela Merkel’s government has also noted that the real obstacle to widespread vaccination is production capacities.

Another issue relates to the know-how surrounding the COVID-19 vaccines. As I and others have written, vaccines are notoriously difficult to reverse-engineer because they are derived from living organisms and are structurally complex. One of the keys to rapid production is for the manufacturers to share proprietary knowledge regarding manufacturing processes that are typically protected as trade secrets. However, neither TRIPS nor U.S. law appear to provide mechanisms for compelling unwilling companies to do so. Nor are there any contractual provisions in the funding agreements under Operation Warp Speed that require such a disclosure.

It is also unclear whether a waiver of IP rights will make a difference. Take, for example, India, which has underinvested in health care for decades. Just a few months ago, India was giving away millions of vaccine doses in an attempt to compete with China in vaccine diplomacy, falsely believing that India had achieved herd immunity. In April, Prime Minister Narendra Modi was speaking unmasked before packed crowds at political rallies. An argument can be made that complacency is playing a far greater role than IP rights in India’s second wave.

Furthermore, as others have pointed out, IP rights are only a piece of what is needed to produce vaccines. There is currently a global shortage of raw materials and proper manufacturing facilities. The spoiled vaccines from Emergent BioSolutions’ plant in Baltimore furthermore illustrate the difficulties of bringing new manufacturing facilities online. Because the Moderna and Pfizer vaccines both require storage at low temperatures and utilize novel mRNA technology, they pose further challenges in countries that lack necessary infrastructure for manufacturing and for distribution of vaccine doses.

Ultimately, any waiver of TRIPS obligations that passes is likely to be modest in reach, perhaps reducing the procedural burdens currently surrounding the use of compulsory licensing. It is unlikely that Biden will somehow force U.S.-based vaccine manufacturers to turn over know-how. Overall, the greatest benefit of the Biden Administration’s support for the waiver is that it signals a departure from the prior approach of punishing countries facing health crises and that it might spur pharmaceutical companies to voluntarily increase out-licensing and donations of vaccines.

* Image above comes from the plague of Ashdod, 1630, Artist Nicolas Poussin

Guest Post: Pandemic drug shortages: Is compulsory licensing the answer?

The USPTO recently issued U.S. patent No 10,999,961.  That means the old odometer is about to roll over.  On Tuesday, May 11, 2021, at 12:01 a.m., we can expect Patent No. 11,000,000.