Federal Circuit Slices the Bologna Thin with IPR Rehearing Waiver Decision

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by Dennis Crouch

Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024)

Unified Patents is paid by its members to fight against non-practicing entity (NPE) patent assertions — often by challenge patent validity via inter partes review.  In this case, Unified challenged Voice Tech’s U.S. Patent No. 10,491,679 which covers technology for controlling a computer via a mobile device using voice commands. At the conclusion of the IPR, the Patent Trial and Appeal Board (PTAB) sided with Unified – finding all challenged claims (1-8) of the ‘679 patent unpatentable as obvious over the combination of two prior art references, Wong and Beauregard.  The PTAB also denied Voice Tech’s request for rehearing. On appeal, the patentee won a minor battle on waiver, but ultimately lost on the merits.

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NO FAKES Act: Unpacking the New Bipartisan Bill on Digital Replicas

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Senators aim to rein in digital replicas with the “NO FAKES” Act which proposes a limited federal right to control one’s likeness using some DMCA-like notice-and-takedown elements.

Guest post by Professor Justin Hughes

This week, Senators Blackburn, Coons, Klobuchar, and Tillis introduced the bipartisan “NO FAKES” Act in Congress, a bill that has been under discussion for months and is intended to provide centerpiece legislation addressing the problem of digital replicas.  The recording industry (RIAA) and the actors’ union (SAGAFTRA) have been the leading proponents of such a law.  Senate Judiciary staff led a process with those groups–and with the Motion Picture Association (MPA)–that went through a long series of drafts.  AI companies were also part of the drafting process.

The bill is substantively complex and structurally complicated, partly the result of so many cooks in the kitchen.  What follows here are only the bill’s basics – as well as some concerns. (more…)

Presumption of Injunction: How the RESTORE Act Aims to Re-Empower Patent Holders

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by Dennis Crouch

For the vast majority of American history, a judgment of patent infringement (by a court sitting in equity) led almost directly to injunctive relief barring ongoing infringement.  This construct was flipped by the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a case which served as the first major step of weakening patentee rights over the past two decades.  Now, a new bipartisan bill aims to restore the pre-eBay status quo. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024, introduced by Senators Coons (D-Del.) and Cotton (R-Ark.), with a House companion bill from Representatives Moran (R-Texas) and Dean (D-Pa.), seeks to reshape and repair the availability of injunctive relief for patent holders.  As you’ll see, one nice element of the Bill is that it simply adds 1 sentence – creating a rebuttable presumption (more…)

Federal Circuit Closes Book on TRUMP TOO SMALL Trademark Saga

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by Dennis Crouch

In a brief order, the Federal Circuit has put what appears to be the final nail in the coffin of Steve Elster’s attempt to register “TRUMP TOO SMALL” as a trademark.

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Degrees of Disagreement: Google Petitions En Banc on Smart Thermostat Patent Damages

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by Dennis Crouch

Google recently petitioned for en banc review a Federal Circuit split decision in EcoFactor v. Google. The case focuses on when a damages expert testimony satisfies Daubert.  The original opinion also highlights an interesting debate regarding the appeal of pre-trial eligibility rulings.

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Lovevery Argues that APEX Jurisdiction Holding Undermines Anti-Counterfeiting Efforts

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by Dennis Crouch

This is my third post about SnapPower (SnapRays) v. Lighting Defense, and the Federal Circuit’s holding that patentee’s who use Amazon’s patent enforcement process (APEX) to block infringing product sales open themselves to personal jurisdiction in the home state of the accused infringer. SnapPower v. Lighting Def. Group, 100 F.4th 1371 (Fed. Cir. 2024). In my view, the Federal Circuit has gone too far with aggressive personal jurisdiction in this case, and the patentee Lighting Defense has petitioned for en banc rehearing on the issue.

Most recently, toy-maker Lovevery has filed an amicus brief supporting en banc review. (more…)

Deja Vu All Over Again: SCOTUS Asked Again to Revisit Patent Eligibility

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by Dennis Crouch

Return Mail recently filed its petition for certiorari with the Supreme Court, seeking a broader scope of patent eligibility under 35 U.S.C. § 101. You may remember that Return Mail won its case before the Supreme Court a few years ago. Return Mail, Inc. v. United States Postal Service, 587 U.S. 618 (2019) (federal agencies are not “any person” under the AIA and therefore cannot challenge patents via IPR). (more…)

Obtaining vs. Maintaining: How SoftView v. Apple Reshapes Patentee Estoppel

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by Dennis Crouch

This is our second discussion of collateral estoppel in as many days.  Yesterday I wrote about Koss v. Bose, a case where the Federal Circuit concluded that a district court’s final judgment of invalidity had a preclusive effect on USPTO IPR analysis — rendering the patentee Koss’s appeal moot.   Today’s focus is on SoftView v. Apple, and a focus on the USPTO’s estoppel regulations as they apply between an IPR and reexamination proceeding. Case No 23-1005 (Fed. Cir. July 26, 2024). (more…)

Clever Pleading Can’t Save Koss’s Patents from Issue Preclusion Invalidity

Patent

by Dennis Crouch

Koss Corporation v. Bose Corporation, 22-2090 (Fed. Cir. July 19, 2024)

In its final written decisions, the PTAB found a number of Koss patent claims invalid and Koss appealed to the Federal Circuit. In the end, though the appellate panel found the appeals moot because all the claims had been invalidated in parallel district court litigation. Although the prior litigation involved a different party (Plantronics), Bose was able to take advantage of that invalidation decision under the doctrine of non-mutual collateral estoppel established by the Supreme Court in Blonder-Tongue Lab’ys, Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971).

Koss attempted a clever pleading trick (more…)

Patent Puzzles after the Supreme Court’s 2024 Administrative Law Cases: Stare Decisis, Rulemaking, and Discretion

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Guest post by Arti K. Rai, Elvin R. Latty Distinguished Professor of Law and Co-Director, Center for Innovation Policy at Duke Law

In a flurry of recent decisions, the Supreme Court has continued its skepticism of administrative agencies.  Although these decisions may not have as significant an impact in patent law as in other areas, they do pose interesting puzzles with respect to stare decisis as well as agency rulemaking and discretion that will provide many litigation opportunities going forward. (more…)

Animated GUI Design Patents

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For several years, the most controversial part of the design patent world was patenting of portions of a display screen.  But, things have moved forward with a steady flow of animated portions of a display screen.  The chart above shows the year-over-year numbers of design patents issued claiming some form of an animated or transitional display. (more…)

The Shift Towards Primary Examiners: Implications for Patent Prosecution

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by Dennis Crouch

In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies.

Our data reveals a dramatic drop in the percentage of assistant examiners over the past decade. Prior to 2015, over 35% of patents were examined by assistant examiners. Since 2020, this number has plummeted to less than 20%. But these assistant examiners did not simply disappear. (more…)

Ejusdem Generis Goes to War in Reservist Pay Dispute

Patent

by Dennis Crouch

Although not a patent case, Feliciano v. Department of Transportation merits attention as one of only two Federal Circuit cases granted certiorari for the October 2024 Supreme Court term, alongside the veterans benefits case of Bufkin v. McDonough.

In Feliciano, the Supreme Court will consider whether federal civilian employees who are called to active military duty are entitled to differential pay even if their service is not directly connected to a declared national emergency. The case stems from the Federal Circuit’s interpretation of the differential pay statute, 5 U.S.C. § 5538, which requires federal agencies to provide supplemental pay to federal employees called to active duty when their military salary is less than their civilian salary.

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Alice Backs Anna: Federal Circuit Finds Miller Mendel’s Background Check Patent Abstract

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By Dennis Crouch

In Miller Mendel, Inc. v. City of Anna, Texas, No. 2022-1753 (Fed. Cir. July 18, 2024), the Federal Circuit affirmed a district court’s judgment on the pleadings that the asserted claims of Miller Mendel’s U.S. Patent No. 10,043,188 (‘188 patent) are ineligible for patent protection under 35 U.S.C. § 101. The court also affirmed the denial of the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285.

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Expired Patent, Exploding Sanctions: A Costly Litigation Lesson for VDPP and its Attorney

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In a recent decision out of the Southern District of Texas, Judge Lee Rosenthal found the patent infringement case brought by VDPP against Volkswagen to qualify for sanctions under the Patent Act 35 U.S.C. § 285.  The court also relied upon 28 U.S.C. § 1927 and its inherent powers to directly sanction VDPP’s attorney William P. Ramey (Ramey LLP). VDPP, LLC v. Volkswagen Group of America, Inc., No. H-23-2961 (S.D. Tex. July 11, 2024). (more…)

USPTO Issues 2024 Guidance on Patent Eligibility for AI Inventions

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by Dennis Crouch

Earlier this week I was reviewing some of the USPTO’s eligibility examples, noting that they were all quite old.  As if on cue, the Office has released a new set of updated guidelines – focusing on Artificial Intelligence related inventions and including three new examples.  In Bilski, the Supreme Court explained that the best way to understand whether a particular claimed invention is directed to an “abstract idea” is to look back on old examples for guidance.  The USPTO has found that a good way to administer this approach is to provide examples of situations that pass or fail the test.  Here, they introduce three new examples 47, 48, and 49.  And, while the Alice/Mayo test for analyzing subject matter eligibility has not changed, the new guidance is helpful as AI technology rapidly develops.   The USPTO continues to be open to issuing patents on AI inventions, including the use of AI. However, there must be a technical solution to a technical problem.

Although the guidance is effective July 17, 2024, the USPTO is open to comments via the regulations.gov portal.  The agency has provided two updated flow charts for its analysis that are included below. Although the USPTO guidance is not binding law,  it is the guidebook that examiners will be trained upon and required to use.  As such, any patent attorney operating practicing in the AI area should dig through these examples and the particular cases chosen by the Office as representative. (more…)

The Phantom Menace: Federal Circuit Upholds Judge Connolly’s Investigative Powers Even After Dismissal

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by Dennis Crouch

In Backertop Licensing LLC v. Canary Connect, Inc., the Federal Circuit addressed the scope of a district court’s inherent authority to investigate potential litigation misconduct. Chief Judge Connolly of the District of Delaware had initiated an inquiry into dozens of patent infringement cases filed by plaintiff LLCs associated with IP Edge, a patent monetization firm, and Mavexar, an affiliated consulting shop. The district court was concerned that the real parties in interest may have been concealed, that fictitious patent assignments were filed with the USPTO to shield those parties from liability, and that the plaintiff LLCs’ attorneys may have violated the Rules of Professional Conduct by taking direction from Mavexar without their formal-clients’ informed consent. (more…)

Zimmer v. Insall: The Power of Arbitration Agreements in Patent Royalty Disputes

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by Dennis Crouch

In the recent case of Zimmer Biomet Holdings, Inc. v. Insall, No. 23-1888 (7th Cir.  July 12, 2024), the Seventh Circuit affirmed an arbitration award requiring Zimmer to continue paying royalties to the estate of Dr. John Insall even after the expiration of the underlying patents.  This decision highlights the significant deference afforded to arbitration agreements and the limited ability of courts to vacate arbitral awards, even when they conflict with Supreme Court precedent.

The key precedents underlying the dispute in Zimmer v. Insall are Brulotte v. Thys Co., 379 U.S. 29 (1964) and Kimble v. Marvel Entertainment, LLC, 576 U.S. 446 (2015). In Brulotte, the Supreme Court held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” (more…)

Post-Loper Bright Patent Law: Will SCOTUS Redefine PTAB Discretion?

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by Dennis Crouch

The Supreme Court has requested a response to a pending petition for certiorari in United Therapeutics Corp. v. Liquidia Technologies, Inc., indicating that at least one justice sees potential merit in the case. The petition challenges the Federal Circuit’s application of the statutory limits on the Patent Trial and Appeal Board’s (PTAB) authority in inter partes review (IPR) proceedings.  I believe that there is a potential that the Court will issue a grant-vacate-remand (GVR) order, asking the Federal Circuit to reconsider its deferential decision based upon Loper Bright.

UTC owns the patent at issue, U.S. Patent No. 10,716,793, which is directed to methods of treating pulmonary hypertension using treprostinil. (more…)

The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional

Patent

By Dennis Crouch

This case would be great for a 2L law review note.

Back in May 2024, the Federal Circuit issued an important decision holding that a patentee’s use of Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state – despite no direct contacts with that state.  SnapRays, LLC v. Lighting Defense Group, LLC, No. 2023-1184 (Fed. Cir. 2024). The patentee has now petitioned for en banc rehearing, arguing that the opinion conflicts with prior Federal Circuit precedent and makes a holding that the Supreme Court at least implicitly rejected in Walden.  The case is important as APEX and other similar private sales-channel enforcement processes become increasingly popular. SnapRays En Banc Petition.

My view: The Federal Circuit erred here. (more…)