The Public Private Nature of Patents

Patent

Patent law is a quirky mix of private and public law.  Individual inventors and their assigns are granted private property rights and the freedom-of-contract to license those rights as they see fit.  But, patents are designed to serve a public purpose, and  the courts have occasionally struck-down private agreements that go too-far — especially agreements that frustrate the invalidation or cancellation of wrongfully issued patents.

In Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021), the question on appeal is whether an agreement between parties can enforceably prohibit the filing of an Inter Partes Review (IPR) petition.   In the case, Kannuu and Samsung entered into an NDA that included a forum selection clause — choosing NYC Courts (Federal or State) as the sole arena for litigating actions or proceedings relating to the agreement.  Kannuu shared substantial information about its patent porfolio.  Samsung decided not to pursue any license agreement but did (allegedly) adopt the  disclosed navigation/search functionality Samsung Smart TVs.

Kannuu then sued (6 years later) after several of its patents had issued in NYC Federal Court. In response, Samsung filed a batch of IPR petitions. The PTAB granted 2 of 5.  Although Kannuu raised the forum-selection argument to the PTAB, the PTAB did “declined to consider the merits of whether the FSC barred Samsung’s petitions.” Kannuu brief.  Back in court, the district court refused to issue an  anti-IPR injunction — holding that the forum selection clause did not exclude IPR filings. The preliminary injunction denial is now on appeal with two basic questions:

  1. Do the terms of this particular forum-selection-clause prohibit Samsung from filing the IPR.
  2. If so, is the forum-selection-clause unenforceable as a violation of public policy favoring patent challenges.

Law professors have gotten involved in the appeal with Kannuu being represented by Prof. Ted Sichelmann (USD) and competing amicus briefs filed on each side:

  • Kannuu Appellant Brief.
  • Kannuu Appellee Brief.
  • Kannuu Prof Amicus Supporting Kannuu. Prof. Adam Mossoff (George Mason) & Matthew Dowd is representing a group of law professors supporting Kannuu’s position. These include Profs. Jonathan Barnett (USC); Richard Epstein (NYU/UChicago); Jay Kesan (Illinois); Adam Mossoff (George Mason); and Kristen Osenga (Richmond).
  • Kannuu Prof Amicus Supporting Samsung. Stanford’s IP Clinic (Phillip Malone) has filed a brief supporting Samsung’s position on behalf of a group of law professors.  These include Profs. Margo Bagley (Emory); Jeremy Bock (Tulane); Dan Burk (UCIrvine); Michael Carrier (Rutgers); Rochelle Dreyfuss (NYU); Samuel Ernst (GGU); William Gallagher (GGU); Shubha Ghosh (Syracuse); Leah Chan Grinvald (Suffolk); Erik Hovenkamp (USC); Mark Lemley (Stanford); Orly Lobel (USC); Brian Love (SCU); Stephen McJohn (Suffolk); Michael Meurer (BU); Shawn Miller (USD); Tyler Ochoa (SCU); Christopher Turoski (Minnesota).

= = = =

Here, I expect that the Federal Circuit will duck the question of general public policy and instead affirm the narrow interpretation of the forum-selection clause.

= = = =

The IPR proceedings continue to more forward. These were instituted in September 2020 and so we can expect a that the final written decision will be issued September 2021.   The Federal Circuit has ordered an expedited appeal with oral arguments planned for July 2021.

Naked TM Licensing Allowed, even if Insufficient establishing TM Rights

Patent

by Dennis Crouch

The Federal Circuit has denied en banc rehearing in the interesting case of Authentic Apparel Group, LLC v. US.  In the case, the court enforced an agreement that was pretty-dang-close to a naked trademark license — holding that use of a mark for decoration on clothing still counts as a trademark-use for licensing purposes.

In view of the clear shift in the law toward allowing trademark licenses, we do not agree with Authentic that a “decorative” use of a trademark is necessarily divorced from the goodwill associated with the trademark such that it cannot be considered a licensed use “for trademark purposes.” We recognize, of course, that a purely decorative design may not qualify for trademark protection in the first place. . . . But, again, this appeal does not involve a challenge to the validity of the Army’s trademarks, but rather a question of what limitations the Army may place on the use by a licensee of trademarks that the Army already owns.

Slip Op.  In its rehearing petition, the licensee asked the following:

Whether a trademark owner can lawfully transfer an interest in only the “aesthetic aspects” of its trademark pursuant to a license without simultaneously transferring the goodwill of the business in which the mark is used, or that part of the goodwill of the business connected with the use of and symbolized by the mark.

AuthenticPetitionForRehearing.

I see this as a very interesting issue for the US Supreme Court, but the briefing and setup of the case has not been 100% top notch.

Authentic Apparel Group, LLC v. U.S., 989 F.3d 1008 (Fed. Cir. 2021) (en banc  subsequently denied)

Federal Circuit on TM Licensing: We’re going to Enforce the Terms

 

EDTex vs WDTex

Patent

Here is a simple chart counting law review articles discussing both patent law and either the “Eastern District of Texas” or “Western District of Texas” (or both).  Because of some law review delays and dating-games, Westlaw can really only provide data through 2019.

W.D.Tex. is now the most popular district court for patent infringement claims, followed by Delaware.  E.D.Tex. still caries weight, but is no longer the go-to-district (because of venue restrictions).

Want an Eligible Patent: Explain the Technological Advance in Sufficient Detail

Patent,

WhitServe LLC v. Dropbox, Inc., 19-2334 (Fed. Cir. 2021) (nonprecedential)

The district court dismissed WhitServe’s patent infringement complaint with prejudice — finding the claims ineligible as a matter of law.  On appeal, the Federal Circuit has affirmed. WhitServe is the brainchild of patent attorney and inventor Wesley Whitmyer of Whitmyer IP Group.  The patent at issue here. U.S. 8,812,437.

Claim 10, the focus of the case, is directed to an internet-based data-backup system and requires expected capability of “requesting, transmitting, receiving, copying, deleting, and storing data records.”  In the appeal, the Federal Circuit found that these activities are abstract ideas: “Such transmitting, saving, and storing of client records is a fundamental [and longstanding] business practice” and therefore an abstract idea.  Data storage at a generalized level is the focus of claim 10 and therefore claim 10 is “directed to an abstract idea.”

Here the system disclosed in claim 10 claims the computer function of maintaining data records, including storing records at different sites for  added protection. This is an abstract idea.

Slip op. In its analysis, the court considered WhitServe’s argument that its physical arrangement of the components offered a specific and technological improvement.  On appeal, however, the court rejected those arguments. The basic issue was that the claims (and specification) are all discussed at a too-high of a level of generality.  I see the following sentence as the key take-away line from the case:

The specification does not, however, explain the technological processes underlying the purported technological improvement.

Id. Adding the tech-features within the claim would certainly have been sufficient. Also, the court may well have accepted these same claims if the technical improvement had been simply disclosed in the specification with sufficient detail.  Of course, this implies that such a sufficiently-technical solution was available to the inventor.  This line also effectively eliminated the possibility of recovering the claim under Alice/Mayo Step 2.

The claims recite generic computer components performing routine conventional functions. Viewing claim 10’s elements in combination does not alter our conclusion because the claims lack a non-conventional and non-generic arrangement. Accordingly, we conclude that the ’437 patent does not disclose an inventive concept  and, as a result, does not transform claim 10 into patent eligible subject matter.

Id.

As part of its argument regarding eligibility, WhitServe had presented evidence of inventiveness, including secondary indicia of non-obviousness.  On appeal, the court disregarded that evidence as irrelevant.

Objecti[ve] indicia of nonobviousness are relevant in a § 103 inquiry, but not in a § 101 inquiry.

Id. Invalidity AFFIRMED.

= = = =

10. A system for onsite backup for internet-based data processing systems, comprising:

a central computer accessible by at least one client computer at a client site via the Internet for outsourced data processing;

at least one database containing a plurality of data records accessible by said central computer, the plurality of data records including internet-based data that is modifiable over the Internet from the client computer;

data processing software executing on said central computer for outsourcing data processing to the Internet from the at least one client computer, said data processing software modifying the internet-based data in the plurality of data records according to instructions received from the at least one client computer, the modifying including updating and deleting the internet-based data in the plurality of data records;

a client data request, sent from at least one client computer via the Internet to said central computer, the client data request comprising a request for a backup copy of at least one of the plurality of data records;

software executing on said central computer to receive, via the Internet from the at least one client computer, the request for a backup copy of at least one of the plurality of data records including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software;

and software executing on said central computer to transmit the backup copy of the at least one of the plurality of data record including the internet-based data in the at least one of the plurality of data records that has been modified by said data processing software to the client site for storage of the internet-based data from the at least one of the plurality of data record in a location accessible via the at least one client computer;

wherein the location is accessible by the at least one client computer without using the Internet.

 

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:

Federal Circuit Transitions

Patent

As expected, the Federal Circuit has announced the upcoming transition of Chief Judge from Judge Prost to Judge Moore scheduled for May 22, 2021.  Judge Prost has served as chief for seven years, and Judge Moore will begin her seven year term.  According to the court announcement, Judge Prost will continue in active service. Congratulations to the Court on a successful transition.

Earlier this year, Judge Wallach announced his upcoming move to senior status set for May 31, 2021.  President Biden has nominated Tiffany Cunningham as his replacement.

The Next Chief Judge: Judge Moore

Tiffany Cunningham: Nominee for the United States Court of Appeals for the Federal Circuit

Guest Post by Prof. Dmitry Karshtedt: Nonobviousness and Time

Patent, ,

Dmitry Karshtedt is an Associate Professor of Law at GW Law whose work I’ve followed for years.  Below he introduces the core idea underlying his new article on nonobviousness forthcoming in the Iowa Law Review.  -Jason

Nonobviousness and Time
Dmitry Karshtedt

Over the years, courts and commentators have said many thoughtful things about secondary considerations evidence and its role in the law of § 103, and reasonable minds have expressed significant disagreement about the value of this evidence. Consider, for example, the Federal Circuit’s fractured en banc Apple v. Samsung decision in 2016 and the never-ending debate over whether secondary considerations are best treated as rebuttal evidence to a prima facie case of obviousness based on the prior art, or whether all obviousness evidence should be analyzed holistically and at once.

My take is different: the whole primary/secondary categorization is unhelpful, especially in litigation and during post-issuance PTAB review. Let’s take one illustration. Commercial success and the skepticism of experts are both classified as “secondary considerations,” while teaching away is usually considered to be a part of the primary inquiry. However, skepticism has much more in common with teaching away, which directly tells us that the claimed invention would have been challenging to come up with, than with commercial success, which represents a market response to the invention that may indicate nonobviousness only indirectly. So what is the point of these evidentiary silos?

My answer is that there is no point. In Nonobviousness: Before and After, forthcoming in Iowa Law Review, I examine the different types of evidence used in the obviousness analysis and conclude that the primary/secondary framework does not make sense or have a strong precedential basis. The framework comes from throwaway language in Graham v. John Deere, in which the Supreme Court was grasping for some kind of a label for non-prior art evidence in § 103 cases. It has no grounding in established pre-Graham obviousness (and “invention”) precedent—which, for example, repeatedly supported the proposition that evidence like failure of others can be highly probative of validity. And it is inconsistent with KSR v. Teleflex, which sang a veritable paean to non-prior art evidence (e.g., market pressure and design need) in rejecting the Federal Circuit’s “blinkered focus on individual documents”—as the court acknowledged in one post-KSR opinion. Yet despite its lack of a coherent normative or precedential basis, classification as primary or secondary is well-entrenched and matters a lot in practice because the label can lead to arbitrary bolstering or discounting of certain evidence. On the one hand, the “secondary” scarlet letter can lead courts to ignore good evidence like failure of others, harming the patentee’s case. On the other hand, a boost from the “primary” label can sometimes cause courts to overvalue evidence like unexpected results in favor of the patentee.

I propose a better approach to structuring § 103 analysis based on the timing of the evidence. Under my approach, the filing date provides a useful default dividing line between different kinds of obviousness evidence: rather than categorizing obviousness evidence as primary or secondary, we should instead view the evidence as ex ante or ex post. With this framing, we can see precisely why skepticism has more in common with teaching away than with commercial success: skepticism and teaching away reflect the pre-filing state of the art and thus speak directly to a PHOSITA’s lack of motivation or reasonable expectation of success to pursue the invention at issue, while commercial success is (usually) a post-filing response to the invention and thus constitutes only indirect evidence of nonobviousness. The readers of this blog are very familiar with the concept of nexus—in the sense that a proponent of objective indicia evidence must establish a link between that evidence and the technical merit of the invention as claimed.  My article’s proposal extends this concept to timing in that the party relying on ex post evidence must demonstrate a connection between that evidence and the elements of motivation and reasonable expectation of success at the time of filing. With ex ante evidence, however, temporal nexus is not an issue.

In my scheme, commercial success has more in common with evidence like copying or licensing than with the skepticism of experts and failure of others, which is classic ex ante evidence. And unexpected results, which the Federal Circuit has had great trouble fitting into Graham’s silos (some cases characterize that evidence as primary while others, as secondary), are instead divided into ex ante and ex post unexpected results.  As I show in the article, there is (pre-Graham) Supreme Court precedent supporting this general scheme and even some modern cases sometimes (almost) get it right. However, there is too much confusion in the case law to sustain a consistent approach, suggesting the need for an explicit adoption of the proposed ex ante/ex post framework. The tables below illustrate the key moves (indicated in italics), and the article explains why the proposed scheme will help decision-makers determine the relevance and weight of various nonobviousness evidence with greater accuracy.

 

Table 1. Graham’s Primary-Secondary Framework

Primary Evidence Secondary Evidence
Content of the prior art and the differences between it and the claimed invention  

Commercial success
Prior art teachings “toward” or “away” from the claimed invention  

Failure of others
Comparison of the properties of the claimed invention with those of the prior art, including unexpected results (?)[1]  

Long-felt need
Expert skepticism
Copying of the claimed invention, licensing, and other forms of industry acquiescence
Industry praise (or disbelief)
Simultaneous invention
Unexpected results (?)

 

 

Table 2. Proposed Time-Based Scheme

Ex ante evidence
(relating to state of the art facing a PHOSITA at time of filing)		 Ex post evidence
(in reaction to or during further development of the invention)
 

Content of the prior art and the differences between it and the claimed invention

  

Commercial success
Prior art teachings “toward” or away” from the claimed invention, as well as market pressure and design need Copying of the claimed invention, licensing, and other forms of industry acquiescence
Comparison of the properties of the prior art with those of the claimed invention, including unexpected results, if discovered before filing Comparison of the properties of the prior art with those of the claimed invention, including unexpected results, if discovered after filing
Failure of others Industry praise (or disbelief)
Long-felt need
Expert skepticism
Simultaneous invention

        [1].     Question marks next to “unexpected results” reflect their inconsistent classification

Read the draft article here: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3820851

Assignor Estoppel at the Supreme Court

Patent,

by Dennis Crouch

The U.S. Supreme Court heard oral arguments on April 21, 2021 in the pending assignor estoppel case of Minerva Surgical Inc. v. Hologic Inc.   The basic idea is that an inventor who signs the oath-of-inventorship and assign rights to a third party is estopped from later challenging the patent’s validity in court.   The inventor here (Truckai) filed for patent protection and assigned rights in his inventions to the company he started. That company then sold rights to Cytyc Corp who then sold to Hologic.  Truckai made bank on the sale, but “could not stop innovating.” He then turned around and started his own new company Minerva operating in a similar space.   Some of the claims that eventually issued for Hologic had been substantially amended during prosecution and seemingly broadened to particularly cover Minerva’s new focus.  Hologic then sued Minerva for infringement. Minerva attempted to raise a defense of invalidity based upon lack of written description / enablement based upon the expanded claim scope. However, the courts refused to allow the challenge based upon the doctrine of assignor estoppel.  Note here that the parties appear to disagree about the scope of changes and Truckai’s involvement.

Assignor estoppel has a bit of a winding history. The statute provides no guidance, but the doctrine seems to have its origin in the property law doctrine of estoppel-by-deed that normally accompanies a warranty deed (although sometimes a quitclaim deed).

The following are what I see as the seven key historic points for the doctrine:

  • Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342 (1924). “The rule supported by [prior lower court decisions] is that an assignor of a patent right is estopped to attack the utility, novelty or validity of a patented invention which he has assigned or granted as against any one claiming the right under his assignment or grant. . . [T]his court will not now lightly disturb a rule well settled by 45 years of judicial consideration and conclusion in those courts.”
  • Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249 (1945). This case limited the scope of estoppel, but did not pass any judgment on whether assignor estoppel should be eliminated wholesale.
  • Patent Act of 1952. The Patent Act says nothing about assignor estoppel.  This looks like Congressional acquiescence and adoption.
  • Lear Siegler, Inc. v. Adkins, 330 F.2d 595 (9th Cir. 1964).  In this case, the court eliminated a somewhat similar doctrine of licensee estoppel.  Some also understood Lear as likely eliminating assignor estoppel.
  • Diamond Sci. Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988). The Federal Circuit in this case rejected an expansion of Lear and instead held that assignor doctrine generally applies in patent cases.
  • America Invents Act of 2011. The major revision says nothing about assignor estoppel and so appears suggest acquiescence. The question is, acquiescence of what?
  • Lemley, Rethinking Assignor Estoppel (2016). This article almost certainly helped the Supreme Court to believe this is an important and open question.

In the background, we also know that the PTAB has determined that assignor estoppel does not apply to Inter Partes Review (IPR) proceedings.

The briefing and oral arguments focus on three potential outcomes:

  • Keep it: Keep the doctrine as-is and bar the defendant from challenging the patent validity.
  • Limit it: Cabin-in the doctrine so that we look at what was actually assigned via document and only apply estoppel based upon that assignment.  This case would probably need to be remanded to determine whether it applies here.
  • End it: Eliminate the doctrine and give effect to the statutory statement that written description and enablement “shall be defenses in any action involving the validity or infringement of a patent.” 35 USC 282.

One open question will likely be whether the outcome will be merely a default rule that can be changed via contract.  If so, employers may be able to add language to the employment contracts and assignment documents to include waiver of the right to challenge future validity.

= =

One of the key sub-debates seemed to be the correct pronunciation of ASSIGNOR:

Federal Circuit Moves Another Case Out of W.D.Tex.

Patent

In re TracFone Wireless, Inc. (Fed. Cir. 2021)

In its second go-round in the case, the Federal Circuit has ordered District Court Judge Albright to grant TracFone’s motion to transfer its case to the S.D.Fla. on convenience grounds under 28 U.S.C. § 1404(a).  “We conclude that the district court clearly abused its discretion in denying transfer under § 1404(a).”  Generally, Section 1404(a) provides substantial discretion to the district court to determine whether or not to transfer a case to a different venue.  The statutory guidelines focus on “the convenience of parties and witnesses [and] the interest of justice”

In its opinion, the appellate panel walked through the parties/witnesses:

  • Patentee Precis is a Delaware company with “no disclosed place of business.”
  • The key inventor likely to testify (Karvenon) lives in Mankato.
  • The attorney involved in patent prosecution likely to testify lives in Arizona.
  • Defendant TracFone is also a Delaware company, its principal place of business is in Miami Florida. TracFone has identified for Florida-Based witnesses likely to testify.

Effectively, there is no reason for this case to be in Waco, Texas.  Still, the district court explained that the convenience here, in his discretion, did not rise to being “clearly more convenient” so as to demand transfer.   On appeal, the Federal Circuit disagreed — finding the district court’s conclusion “clearly flawed.”

The court did not reach the issue of improper venue that was also raised.

Read it here: TracFone Decision April 2021

TracFone: Mandamus All Over Again

Timing the Venue Inquiry in W.D. Texas

Egregious Delay and Blatant Disregard for Precedent

 

 

Sua Sponte Claim Construction

Patent,

Olaf Sööt Design, LLC v. Daktronics, Inc. (Fed. Cir. 2021)

Sööt’s patent covers a winch system used for major theatre productions.  A jury found Daktronics Vortek product infringed under the doctrine of equivalents and awarded $1 million in damages.

On appeal, the Federal Circuit reversed, holding that “Under the proper construction, the Vortek product does not infringe claim 27 either literally or under the doctrine of equivalents.”

The problem with this decision is that neither party appealed claim construction.  Rather, the adjudged infringer appealed on infringement.  Sööt petitioned for rehearing on the issue of waiver, but that quest has now also been denied.

Whether waiver prevents a challenge to claim construction on appeal sua sponte where a party’s waiver is based on the  act that the original claim construction was (i) sponsored by the party during Markman, (ii) accepted by the district court, and applied by the jury in reaching its verdict; and (iii) not challenged on  appeal by either party. If not, what conditions must exist to overcome such waiver on claim construction.

sootEnBancPetition.

This case comes just in time to see my new 6 second video explainer on the two ways to argue patent infringement:

Amgen v. Sanofi: Who Decides Full Scope Enablement

Patent

by Dennis Crouch

Amgen Inc. v. Sanofi-Aventis (Fed. Cir. 2021)

Patent claims typically cover an infinite number of potential infringing embodiments.  This seemingly renders true full-scope enablement an impossible task.  But the metaphysics are an illusion.  If we want valid patents, then there has to be some “good enough” threshold for enablement.

The focus in Amgen is a particularly tricky type of claim: genus claim with functional limitations.  Here, the claim is directed to an isolated monoclonal antibody defined by its ability to bind with the protein PCSK9 and consequently block PCSK9 from binding to LDL-C.

An isolated monoclonal antibody [that] binds to [one of the residues of PCSK9] and … blocks binding of PCSK9 to LDRL.

US8829165 (US8859741 is also at issue). In its decision, the Federal Circuit found the claims too broad in comparison to the disclosure.  “The functional limitations here are broad, the disclosed examples and guidance are narrow.”  Thus, although the jury found the claims enabled, the appellate majority affirmed the district court’s  post-verdict JMOL (notwithstanding the verdict).  This is a biopharma case, but the decision here can also be seen largely as an attack on functional claim limitations across the spectrum of patent technology fields.

Now, Amgen has filed a strong petition for en banc rehearing arguing that the majority has improperly created a new stiffer test for genus claims with functional limitations.

Question 1: Whether the panel’s new enablement test for genus claims with functional limitations, which has no basis in §112’s text, conflicts with Supreme Court decisions, including Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846); and Mowry v. Whitney, 81 U.S. (14 Wall.) 620 (1872), and decisions of this Court and its predecessor, including AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234 (Fed. Cir. 2003), and In re Angstadt, 537 F.2d 498
(C.C.P.A. 1976).

As mentioned above, the question of enablement was given to the jury.  Here, however, the Federal Circuit held that enablement is a question of law.  The distinction is likely dispositive in this type of close case where the jury sided with the patentee.  By treating enablement as a question of law, the Federal Circuit was able to review the issues de novo without impinging upon the reexamination clause of the 7th Amendment.  The second question challenges this approach:

Question 2: Whether enablement is a question of fact, as the Supreme Court has held, see Battin v. Taggert, 58 U.S. (17 How.) 74 (1854); Wood v. Underhill, 46 U.S. (5 How.) 1 (1846), or a question of law, as this Court holds, Op.6.

[Petition for Rehearing]

The brief cites and discusses a really well researched and written article by Professors Karshtedt, Lemley, and Seymore titled The Death of the Genus Claim (forthcoming 2021).  The article notes that today “it is no longer possible to have a valid genus claim. . . . [This] represents both bad law and bad policy.” Id.  In its decision, the majority seemed to largely agree, but declined to expressly foreclose the possibility of genus claims.

This is a very important case for pharma and biotech patenting, but will also likely have an impact on the doctrine of enablement generally — especially its relationship to functional claim limitations since those are found in most patents.  I expect a number of amicus briefs will be filed in the case over the next few weeks.

More to come.

Functional Claim “Raises the Bar for Enablement”

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:

Supreme Court on Patent Law for April 2021

Patent, ,

by Dennis Crouch

Here is a rundown of what’s happening with US Supreme Court cases:

Decided: The court recently decided Google LLC v. Oracle America, Inc., holding that Google’s use of Oracle’s Java API was a fair use and therefore not copyright infringement.  The court made no determination as to whether the API was actually copyrightable in the first place. The case does not expressly decide any patent law issues, but does provide some guidance as to how courts should approach mixed questions of law and fact (such as claim construction) and the right to a jury trial. The jury trial issue was interesting.  Although a number of juries were given fair use questions pre-1791, the court held that our current version of fair use claims its ancestry from the equity rather than common law. Thus, no right to a jury trial on the question of fair use under the Seventh Amendment. “In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.”

Argued: On March 1, 2021, the court heard oral arguments in US v. Arthrex regarding  it is proper for the Secretary of Commerce to appoint the PTAB judges as inferior officers of the United States. Or, instead, are they principal officers of the United States that must be appointed by the US President and confirmed by the Senate (as we do with Article III judges).  Nobody likes the Federal Circuit’s decision, and the question really is which way it should fall. (My guess is that these judges will be seen as inferior officers).  I expect that part of the majority decision (whichever way it goes) will involve interpreting the role and involvement of the PTO Director in PTAB decisions.  An inferior officer decision will interpret the statute as providing the PTO director with substantial authority; a principal officer decision will downplay the role of the PTO director.  Decision should be released by Mid-June 2021.

Argument Pending: One final case is set to be argued this term: Minerva Surgical, Inc. v. Hologic, Inc., focusing on the issue of assignor estoppel.  Can a prior owner of a patent right (such as an inventor) who transfers title to another (typically the employer) later assert in court that the patent is invalid?  In this case, the employee started his own competing company and was sued for patent infringement.  The lower court barred an invalidity defense. Now the question presented:

Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.

Oral arguments are set for April 21, 2021 with a decision by Mid-June 2021.

Other pending petitions:

Arthrex Issues: There are a large set of pending petitions awaiting the outcome of Arthrex. Some of these raise interesting additional issues, but most of them are pure follow-on cases : Iancu v. Luoma, et al., No. 20-74; Polaris Innovations Limited v. Kingston Technology Company, Inc., et al., No. 19-1459; Comcast Cable Communications, LLC v. Promptu Systems Corporation, et al., No. 20-92; Vilox Technologies, LLC v. Iancu, No. 20-271; Rovi Guides, Inc. v. Comcast Cable Communications, LLC, et al., No. 20-414; RPM International Inc., et al. v. Stuart, No. 20-314; Fredman Bros. Furniture Company, Inc. v. Bedgear, LLC, No. 20-408; Micron Technology, Inc. v. North Star Innovations, Inc., No. 20-679; Iancu v. Fall Line Patents, LLC, et al., No. 20-853; Immunex Corporation v. Sanofi-Aventis U.S. LLC, et al., No. 20-1285; Comcast Cable Communications, LLC v. Promptu Systems Corporation, No. 20-1220; Wi-LAN, Inc., et al. v. Hirshfeld, No. 20-1261

Patent Eligibility: Of the pending eligibility cases, I find American Axle and Ariosa the most interesting:  American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891; NetSoc, LLC v. Match Group, LLC, et al., No. 20-1412; NetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289; Ariosa Diagnostics, Inc., et al. v. Illumina, Inc., et al., No. 20-892.

Inventorship & Ownership: Ono Pharmaceutical Co., Ltd., et al. v. Dana-Farber Cancer Institute, Inc., No. 20-1258; In re Martillo, No. 20-1126 (suit to quiet title).

Obviousness: Amarin Pharma, Inc., et al. v. Hikma Pharmaceuticals USA Inc., et al., No. 20-1119 (secondary indicia); Sandoz Inc., et al. v. Immunex Corporation, et al., No. 20-1110 (obviousness type double patenting).

Willful Infringement: NetScout Systems, Inc. v. Packet Intelligence LLC, No. 20-1289 (this case also raises an eligibility question).

Procedure: Ericsson Inc., et al. v. TCL Communication Technology Holdings Limited, et al., No. 20-1130 (is pre-trial denial of summary judgment appealable absent post-trial JMOL); Warsaw Orthopedic, Inc., et al. v. Rick C. Sasso, No. 20-1284 (abstaining in favor of state court jurisdiction); PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (preclusion under the Kessler doctrine); Tormasi v. Western Digital Corp., No. 20-1396 (does a convicted state inmate have standing to sue for patent infringement).

Retroactive Application of IPRs: Security People, Inc. v. Hirshfeld, No. 20-1380.

Attorney Fees: Roadie, Inc. v. Baggage Airline Guest Services, Inc., No. 20-1420; WPEM, LLC v. SOTI Inc., No. 20-1291.

Antitrust: Abbvie Inc v. FTC (standard for showing objectively baseless “sham litigation” exception to Noerr-Pennington immunity).

 

Non-Transitory Innovation?

Patent

The (revised) chart above shows the percentage of issued utility patents whose claims include at least one reference to the term non-transitory.

The chart does not reflect any kind of innovation transformation.  Rather, in a February 2010 memo, PTO Dir. Kappos announced that claims directed toward information stored in computer readable memory would be rejected as ineligible under Section 101.

   The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter.  In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach.  A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim.  Cf.  Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101).  Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.  See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

Note on the data:

  • Limited to only US utility patents;
  • Limited to only look at independent claims;
  • Search included “non transitory”; “non-transitory” and “nontransitory”.

In the vast majority of cases, only one of the independent claims uses the non-transitory language.  97% of the patents included at least one additional independent claim that does not use the language.  Are those claims directed to code-stored-on-a-disk valuable and important?

US vs China – Moving toward Global Injunctions

Patent

by Dennis Crouch

Ericsson v. Samsung, Docket No. 21-1565 (Fed. Cir. 2021)

I wanted to briefly highlight this important pending Federal Circuit appeal involving parallel litigation in both the US and China. The Swedish company wants to litigate in the US, while the Korean company wants to litigate in China.

  • US Case: Ericsson Inc. v. Samsung Elecs. Co., No. 2:20-CV-00380-JRG (E.D. Tex. Jan. 11, 2021)
  • Chinese Case: Samsung Electronics Co., Ltd. et al. v. Telefonaktiebolaget LM
    Ericsson, (2020) E 01 Zhi Min Chu No. 743.

The Chinese court issued an anti-suit injunction order that would force Ericsson to stop litigating the case in the US (and globally anywhere but in Wuhan).  The US court then issued an anti-interference order that bars Samsung from attempting to enforce the Chinese order against the US actions.  Litigation between the parties is apparently also ongoing in the USITC, Netherlands, Germany, and Belgium.

Ericsson believes it has the stronger IP rights.  There is a general indication that those rights will be more strongly protected and with a higher royalty rate if determined by a US court rather than a Chinese court.  The following timeline from Samsung’s brief offers some historic perspective:

The basic setup here is as follows:

  • Both parties have committed to license their standard essential patents (SEPs) for 2G, 3G, 4G, and 5G cellular communication according to  “Fair, Reasonable and Non-discriminatory” (“FRAND”) principles
  • 2014 global cross-license of the SEPs between the two companies.  This agreement expired at the end of 2020.
  • December 7, 2020: Samsung sued Ericsson in Wuhan People’s Court seeking a declaration of global licensing terms in accordance the FRAND principles.
  • December 11, 2020: Ericsson sued Samsung in USA (E.D.Tex.) alleging Samsung failed to comply with its FRAND patent licensing commitments (and for declaratory judgment that Ericsson is not in breach).  In January 2021, Ericsson amended its complaint to include assertions of patent infringement — this ensures Federal Circuit jurisdiction over the appeal.
  • December 25, 2020: On request from Samsung, the Wuhan court issued an global “anti-suit injunction” — enjoining Ericsson from seeking relief from any other court, either in China or Globally.  And also ordering withdrawal of any claims already filed (such as the Texas action).  The order expressly indicates that violations of the order by Ericsson will be punished by with substantial fines.
  • December 28, 2020: Ericsson successfully petitioned the Texas Court to  issue a temporary restraining order (TRO) against Samsung.
  • January 11, 2021: Texas court issued a fairly narrow “anti interference injunction” — sometimes known as an “anti-anti-suit injunction.”  The court ordered that Samsung take no actions in the Chinese case that would interfere with the US lawsuit.  In addition, Samsung must indemnify Ericsson against any penalties levied by the Wuhan Court associated with Ericsson’s efforts to litigate the US case.

Samsung has now appealed the case to the Federal Circuit — arguing that the anti-antisuit injunction should be vacated or significantly narrowed.  Here are briefs filed:

I am generally sympathetic to Ericsson in this case with the big caveat that Ericsson committed its patents to FRAND licensing on a global level.  It does not seem reasonable (the R in FRAND) to expect that the result will be a separate lawsuit regarding the global license in each individual country.

Law School Canons: Summer-y Judgment

Patent

Editor’s Note: Avery Welker is a 1L at Mizzou and likely a future patent attorney. He is starting a new series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com. – Dennis Crouch

By Avery Welker

Grilling weather is coming up soon! You may be in the market for a new grill to set up in your backyard. Well, now you have to make a choice: will you go with the “Backyard Grill” or the “Backyard BBQ?” That’s not a choice that Variety Stores, Inc. (Variety | Plaintiff) wants you to need to make. Variety Stores, Inc. v. Wal-Mart Stores, Inc., 888 F.3d 651 (4th Cir. 2018).

Variety sued Wal-Mart Stores, Inc. (Wal-Mart | Defendant) over Wal-Mart’s use of “Backyard Grill” (logo shown above1) to promote their line of grills and grilling supplies. Id. at 656. Variety brought a plethora of federal claims, including trademark infringement and unfair competition. Id. at 658. Both parties filed motions for summary judgment and each adduced evidence in support of their own motion. Id. Variety showed evidence of more than $56 million of sales with their mark, which they have been using since 1993. Id. Wal-Mart, while submitting plenty of evidence in their own support, also brought forth evidence that their marks were not confused with Variety’s, whereas Variety did not bring any evidence of confusion at all. Id. The district court then granted partial summary judgment for Variety holding that Variety’s mark was protectable, Wal-Mart’s mark could create confusion, and that Wal-Mart’s choice to not follow their counsel’s advice showed intent to confuse consumers. Id. In part, Wal-Mart appealed the award of partial summary judgement for Variety. Id. at 659.

The “extraordinary” remedy of summary judgment has some deceptively ordinary rules: (1) there must be no genuine issue of material fact and (2) the movant must be entitled to judgment as a matter of law. Fed. R. Civ. P. 56 (2021). Courts, as the gatekeepers of summary judgment, must ensure fairness in the motion by crediting all evidentiary inferences in favor of the nonmovant when investigating any issues of material fact. Tolan v. Cotton, 572 U.S. 650, 656-57 (2014).

Tolan arose from a claim of excessive force, in violation of the Fourth Amendment. Id. at 651. Officer Edwards believed that Tolan (Plaintiff) and his cousin had stolen a car, which the two exited at Tolan’s home. Id. at 651-52. Tolan’s parents came out of the house when they noticed the brewing situation. Id. Officer Cotton (Defendant) arrived, responding to a request for backup from Edwards. Id. at 652. From here, the parties had differing stories. Id. at 653. The two parties disputed how Cotton handled Tolan’s mother during the incident, and as to how Tolan responded to Cotton’s interactions with Tolan’s mother. Id. The stories converge around an unfortunate ending, however: Cotton fired three shots towards Tolan, striking him in the lung. Id.

Cotton moved for summary judgment with the district court, who granted it for Cotton, later affirmed by the Fifth Circuit. Id. at 654. In upholding summary judgment, the Fifth Circuit relied on Cotton’s version of Tolan’s response to Cotton’s interactions with Tolan’s mother (that Tolan rose to his feet) and to the lighting conditions of the porch where the shooting occurred (that it was dimly lit). Id. at 655. The Supreme Court noted that this was in error: the lower courts had failed to credit Tolan’s versions of the facts, vacating the Fifth Circuit’s judgment. Id. at 660. The Supreme Court expressed this message by pointing out the importance of juries:

The witnesses on both sides come to this case with their own perceptions, recollections, and even potential biases. It is in part for that reason that genuine disputes are generally resolved by juries in our adversarial system. By weighing the evidence and reaching factual inferences contrary to Tolan’s competent evidence, the court below neglected to adhere to the fundamental principle that at the summary judgment stage, reasonable inferences should be drawn in favor of the nonmoving party.

Id.

The Fourth Circuit applied this fundamental principle from Tolan to Variety Stores, Inc.  Variety Stores, Inc., 888 F.3d at 662. The court noted that Wal-Mart’s evidence purporting to show weaknesses in Variety’s trademark was improperly uncredited. Id. Both parties had produced evidence, that in the Fourth Circuit’s view, genuinely disputed the strength of Variety’s “Backyard” trademark, an issue that should have been resolved by a jury. Id. at 663-64. The court vacated the judgment for partial summary judgment for Variety. Id. at 667.

Tolan expresses a fundamental principle that makes summary judgment such an “extraordinary” remedy. Crediting the non-movant with permissive inferences is crucial to allowing both sides an opportunity to be heard in a dispute.

= = = =

1The Backyard Grill branding is all but disappeared from Wal-Mart stores. This is a photo of a friend’s Backyard Grill from Wal-Mart. A search of “Backyard BBQ brand” ironically came up with a Wal-Mart listing for grills. Wal-Mart’s new branding appears to be “Expert Grill.”

Grant Rate by Size and Representation

Patent

by Dennis Crouch

The chart below shows a measure of patent grant rate for a group of 30,000 recently completed patent prosecution cases. I reported earlier on the grant-rate differential based upon entity size classification: Large>Small>Micro. For this chart, I also added-in a second variable of whether the patent application filings were submitted by a registered US patent attorney or agent. As you might expect, those non-represented cases showed a much lower grant rate.

The most surprising result: Overall in this sample, I found that over 99% of patent applicants were represented by a US patent practitioner. An important note here is that the focus of this study was non-provisional utility application filings. I expect that the rate of true pro-se applications would be much greater if we looked at provisional patent applications.

I collected data of “disposals” for a four-week period during early 2021. I coded my database to consider each published patent application and whether (1) a patent issued in the case; or (2) the application was abandoned during the four-week period. I also coded each case according to its entity size and also whether a US patent attorney/agent had participated in the case. To calculate the grant rate, I simply divided the number of issued patents by the total disposals (issued patents + abandoned applications). Note here that this calculation is a bit different from the disposals that the USPTO uses for its examiner counts.

Entity type (Micro, Small, Large) is available from USPTO documents for each published patent application. It was more difficult to determine whether a particular applicant was represented. About 90% of the cases include a listing of one or more registered practitioners representing the parties. That linkage is typically created when the applicant files a power of attorney. For about 8% of the cases, I was able to look through the correspondence addresses for law-firms, individual attorneys, and applicants known to employ patent attorneys in order to conclude that they were represented. The final 2% required a case-by-case inspection. For each of those, obtained a copy of the application data sheet (if any) to see whether an attorney/agent had signed. In cases without an application data sheet, I looked for some responsive filing to determine whether it had been so signed.

I limited the scope of cases to only those that had been published because the files unpublished abandoned applications are not available for inspection. This likely skews the data somewhat because Small & Micro entities are somewhat more likely to file non-publication requests. However, about 90% of applications are published and so the impact of unpublished cases should not be too great.

In this sample, 74% of cases were tied to large entities; 23% to small entities; and 3% to micro entities. There are some important caveats regarding these entity sizes. Generally, a small entity can still be quite large. The basic cutoff is 500 employees. In addition, patent application at issue cannot have been licensed (obligated) to a large entity.

§ 121.802 What size standards are applicable to reduced patent fees programs?

A concern eligible for reduced patent fees is one:

(a) Whose number of employees, including affiliates, does not exceed 500 persons; and

(b) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.

13 CFR § 121.802. In addition, non-for profits (including universities) count as small entities without any limit on size.

Micro entities are a creation of the America Invents Act of 2011 and allow for reduced fees for individuals without much patenting experience (<5 prior applications filed for themselves) and who are not unduly wealthy (<3x median US household income). Again though, universities can count as micro entities. In my sample, a number of the small and micro entities are universities with a higher grant rate than the average for their category.

Generally, the USPTO requires non-human legal entities to be represented by a patent practitioners.  Of the 22,000+ large entity filings in my sample, I found only 4 that were not represented by a US patent attorney/agent. Those cases appeared to me to be ones where the filer should have claimed small or micro entity status.