By Jason Rantanen

DePaul Professor Joshua Sarnoff has a new article addressing a recently reinvigorated subject: the doctrine of equivalents.  In Correcting Misunderstandings of Literal Infringement Scope Regarding After-Arising Technologies Protected By the Doctrine of Equivalents, forthcoming in the Akron Law Review, Professor Sarnoff argues that while it is conventional wisdom that, for purposes of ‘literal’ infringement, interpreted claim meaning and the application of such meaning can expand over time to encompass after-arising, equivalent technologies, this conventional wisdom is wrong: “current case law regarding literal infringement does not authorize claims to literally encompass or apply to after-arising technologies.” Id. at 6.

The term “after-arising technologies” refers to the idea that there are technologies that are developed after an application is filed or a claim is written.  Due to the centrality of time to patent law, a central question in patent law is whether a patent’s claims can (and should) encompass technologies that were unknown–and indeed may have been unforseeable–at the time the claim was drafted.  Excellent examples of this problem can be found in Kevin E. Collins, The Reach of Literal Claim Scope into After-Arising Technology: On Thing Construction and the Meaning of Meaning, 41 Conn. L. Rev. 493 (2008) and Robert P. Merges & John F. Duffy, Patent Law and Policy: Cases and Materials, 7th ed. (2017), at 273-277 (discussing the “temporal paradox” mostly in the context of enablement).

Professor Sarnoff advances his premise through several arguments, drawing from the Federal Circuit’s precedent in Schering Corp. v. Amgen, which “limits the temporal meaning and scope of application for literal infringement to equivalent technologies known to be embodiments of the claim language as of effective filing date of the claim,” as well the statutory interpretive rule of § 112(f).  Sarnoff at 3.

Central to Professor Sarnoff’s premise is the corollary that:

If claim meaning or the scope of application of such meaning can expand over time for literal infringement purposes, then there is less need to resort to the doctrine of equivalents to protect against after-arising technologies.  However, if claim meaning or application scope is limited to technologies that were known as of the filing date to be claim embodiments, then the doctrine of equivalents is necessary for any such protection. 

Id. at 1. Thus, Professor Sarnoff argues, decreased ability to rely on literal claim scope to reach after-arising technologies puts more pressure on the doctrine of equivalents–indeed, it’s ability to encompass after-arising technologies has been offered as a primary justification for the doctrine.  But this additional pressure creates its own problems given the fuzziness of scope that the doctrine of equivalents allows.  Restricting literal claim scope to known embodiments may also conflict with the ‘”pioneering invention patent doctrine,” to the except that doctrine continues to be viable.

Read the whole article here: http://ssrn.com/abstract=3549932

As courts continue to streamline their operations, the Federal Circuit has denied three petitions for en banc rehearing:

• 19-1177 Koninklijke Philips N.V. v. Google LLC (obviousness: propriety of using a prior art reference to show ‘general knowledge’ and thus avoid the the need to consider limitations on combining prior art.)
• 18-1768 Polaris Innovations Limited v. Kingston Technology Co. Inc. (Arthrex redux)
• 19-2026 Mirror Imaging, LLC v. Fidelity Information Services (Arthrex redux)

The question I’m posing in civil procedure: What are other ways that we can streamline our legal process to still provide equal protection and substantial justice while avoiding the current difficulties created by COVID-19? Can we use this as an inflection point to build a better system?

The USITC sided with Rovi against Comcast and barred importation of the set top boxes that Comcast uses for its X1 cable service.  Comcast has now petitioned its case to the U.S. Supreme Court with three questions:

1. Should the case be vacated as moot since the patents are now expired?United States v. Munsingwear, Inc., 340 U.S. 36 (1950).
2. The statute focuses on “articles that  . . . infringe.” Here, the accused set-top boxes themselves don’t infringe and are not infringing when imported.  The infringement only occurs when used by customers.   What gives?
3. The ITC found that Comcast did not actually import the set top boxes, but should still be liable for “importation” of the boxes.  What gives?

[Petition]  The petition explains that the ITC’s approach here has shifted over the past few years:

The Commission has increasingly asserted authority over purely domestic patent infringement that is the province of Article III courts and juries. Here, the Commission issued an order banning importation of set-top boxes that are integral to Comcast’s X1 cable service, even though those boxes are staple articles of commerce that infringe no patents; the purported inducement and infringing uses occurred domestically after importation; and Comcast did not itself import the boxes.

Id. The petition repeatedly notes that ITC actions allow patentees “to evade limitations on injunctive relief in litigation” setup by the Supreme Court in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

The Federal Circuit is set to start holding oral arguments again for the week of April 6, 2020. The arguments not be in-person but rather conducted via telephone (audio only).  The currently conceived setup won’t allow non-parties to listen-in on the conversation but the court is recording oral arguments and has indicated that it “will continue to release same-day audio for all arguments.” Additionally, a substantial number of scheduled arguments have been cancelled with a notice that:

The panel of judges that will decide this appeal has determined that oral argument is unnecessary. See Fed. R. App. P. 34(a)(2)(C).

The cited rule of appellate procedure indicates that a party’s request for oral arguments may be denied based upon unanimous agreement from the assigned panel of three judges agree that “oral argument is unnecessary” because:

(A) the appeal is frivolous;

(B) the dispositive issue or issues have been authoritatively decided; or

(C) the facts and legal arguments are adequately presented in the briefs and record, and the decisional process would not be significantly aided by oral argument.

Fed. R. App. Proc. R. 34(a)(2).

The rules of appellate procedure allow for use of “physical exhibits other than documents” during oral arguments. R. 34(g). That’s probably not happening either.

The US is reporting more new jobless claims last week than for the entire prior year — ending a 10-year streak of month-by-month “job growth” that began shortly after Pres. Obama took office and has continued for the past three years under Pres. Trump.

In addition to cutting employees, businesses are likely to cut patents. Russ Krajec offers some preliminary numbers on abandonment of rejected claims — finding that the number for the first half of March 2020 show an abandonment rate of double normal.

Effects of COVID-19 on Patents – Twice The Number of Abandonments

The following is the text of the CARES Act as it relates to the USPTO deadlines. [Full Text of the Bill].

SEC. 12004. 

(a) IN GENERAL.—During the emergency period described in subsection (e), the Director may toll, waive, adjust, or modify, any timing deadline established by title 35, United States Code, the Trademark Act, 19 section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note), or regulations promulgated thereunder, in effect during such period, if the Director determines that the emergency related to such period—

(1) materially affects the functioning of the Patent and Trademark Office;
(2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or
(3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.

(b) PUBLIC NOTICE.—If the Director determines that tolling, waiving, adjusting, or modifying a timing deadline under subsection (a) is appropriate, the Director shall publish publicly a notice to such effect.

(c) STATEMENT REQUIRED.—Not later than 20 days after the Director tolls, waives, adjusts, or modifies a tim13 ing deadline under subsection (a) and such toll, waiver, adjustment, or modification is in effect for a consecutive or cumulative period exceeding 120 days, the Director shall submit to Congress a statement describing the action taken, relevant background, and rationale for the period of tolling, waiver, adjustment, or modification.

(d) OTHER LAWS.—Notwithstanding section 301 of the National Emergencies Act (50 U.S.C. 1631), the au21 thority of the Director under subsection (a) is not contin22 gent on a specification made by the President under such section or any other requirement under that Act (other than the emergency declaration under section 201(a) of such Act (50 U.S.C. 1621(a))). The authority described in this section supersedes the authority of title II of the National Emergencies Act (50 U.S.C. 1621 et seq.).

(e) EMERGENCY PERIOD.—The emergency period described in this subsection includes the duration of the por5 tion of the emergency declared by the President pursuant to the National Emergencies Act on March 13, 2020, as
7 a result of the COVID–19 outbreak (and any renewal thereof) beginning on or after the date of the enactment of this section and the 60 day period following such duration.
(f) RULE OF CONSTRUCTION.—Nothing in this section may be construed as limiting other statutory authorities the Director may have to grant relief regarding filings or deadlines.

(g) SUNSET.—Notwithstanding subsection (a), the authorities provided under this section shall expire upon the expiration of the 2-year period after the date of the enactment of this section.

(h) DEFINITIONS.—In this section:

(1) DIRECTOR.—The term ‘‘Director’’ means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

(2) TRADEMARK ACT.—The term ‘‘Trademark Act’’ means the Act entitled ‘‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes’’, approved July 5, 1946 (15 U.S.C. 1051 et seq.).

(i) EMERGENCY REQUIREMENT.—The amount provided by this section is designated by the Congress as being for an emergency requirement pursuant to section 251(b)(2)(A)(i) of the Balanced Budget and Emergency Deficit Control Act of 1985.

Coronavirus Aid, Relief, and Economic Security (CARES) Act and the USPTO

The $2 trillion stimulus and economic rescue bill known as the CARES Act is moving forward in the Senate.  Although not generally a key aspect of the legislation, the current proposal on the table includes temporary authority for the USPTO Director to “toll, waive, adjust, or modify, any timing deadline” established by the patent or trademark laws or by prior PTO regulation.  In order to take action, the director must determine that the COVID-19 National Emergency:

(1) materially affects the functioning of the Patent and Trademark Office;

(2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or

(3) prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.

Here the “emergency” period is defined as the National Emergency declared by President Trump on March 13, 2020, as a result of the COVID–19 outbreak. The Director’s authority would begin with the enactment of the legislation and last until the end of the Emergency (including any renewals) plus 60 more days.  In addition, the whole thing sunsets in 2-years.

Dir. Iancu has privately indicated a need for the legislation, but has not stated publicly what if he would make any immediate actions or whether he would delegate his authority to the PTAB to make these determinations.

My reading of the proposal is that it provides authority to the USPTO Director but does not place any requirement on the Director to act. Thus, a particular party who experiences problems with filing or meeting other deadlines will not have a claim under the statute.

All of the deadlines are easy for the PTO Director to adjust with the one exception being the original filing date. In addition, international obligations may create some problems with adjusting PCT-related dates — although WIPO and the big-five are working through potential arrangements as we sit here today.

I am writing a separate post on Galderma Labs., L.P. v. Amneal Pharms. LLC (Fed. Cir. March 25, 2020), but wanted to note the claim language found in Gladerma’s U.S. patent No. 8,206,740.  In particular, I was first surprised to see the final element of the claim written as an “optional” limitation:

1. An oral pharmaceutical composition of doxycycline, which at a once-daily dosage will give steady state blood levels of doxycycline of a minimum of 0.1 μg/ml and a maximum of 1.0 μg/ml, the composition consisting of

(i) an immediate release (IR) portion comprising 30 mg doxycycline;

(ii) a delayed release (DR) portion comprising 10 mg doxycycline; and

optionally, (iii) one or more pharmaceutically acceptable excipients.

The MPEP offers some ambiguous thoughts on use of the term “optionally” within claim language — concluding that it may raise indefiniteness concerns where ambiguity arises from a “list of potential alternatives.” MPEP 2173.05(h) Alternative Limitations.   In the usual claim situation, an “optional” limitation creates confusion because it doesn’t appear to do any actual work in the claim because a claim “comprising” a list of features may also include other features as well. In that situation, the ambiguity comes into play because we still want to assign some meaning to the claim element even though it is largely meaningless.

In the claim above, however, the “optionally” language complements a “consisting of” transition.  It does substantial work because of the closed transition — without the optionally limitation a formulation having the “pharmaceutically acceptable excipients” would be found not literally infringing.

I previously discussed Fote v. Iancu. Charles Fote has now petitioned the Supreme Court for certiorari — asking the following question:

Whether a court of appeals must provide an opinion explaining its reasoning in an appeal that involves a complex and unsettled area of the law and in which a written opinion would likely provide the appellant with a viable basis for seeking rehearing, rehearing en banc, or certiorari.

Petition.

(more…)

The following post is republished from the USPTO Director’s Blog and is authored by USPTO Director Andrei Iancu and Deputy Director Laura Peter. 

“To maintain our technological leadership, the United States must broaden our innovation ecosphere demographically, geographically, and economically.”—USPTO Director Andrei Iancu

Today, as part of Women’s History Month, the USPTO has officially launched the Expanding Innovation Hub (“the Hub”), an online platform available on the USPTO website that provides resources for inventors and practitioners to encourage greater participation in the patent system. The new platform is yet another step the USPTO has taken to broaden the innovation ecosphere, to inspire novel inventions, to accelerate growth, and to drive America’s global competitive edge. It builds on our SUCCESS Act report to Congress of 2019, as well as our Progress and Potential report on women inventors. (more…)

by Dennis Crouch

Arthrex, Inc. v. Smith & Nephew, Inc. and U.S. as intervenor (Fed. Cir. 2020) (en banc denial)

None of the parties in this case were happy with the Federal Circuit’s original decision in Arthrex and all filed petitions for en banc rehearing.  Those petitions have now been denied in what appears to be a 8-4 split with Judges Newman, Wallach, Dyk, and Hughes expressly dissenting from the denial.  Judge Moore authored the original opinion in the case and also authored an opinion here defending that original opinion. She was joined on the opinion by her original panel members of Judges Reyna and Chen as well as Judge O’Malley explaining that (1) the original decision was correct and (2) conducting a rehearing would “only create unnecessary uncertainty and disruption.”

The Arthrex panel followed Supreme Court precedent to conclude that the administrative patent judges (APJs) of the USPTO’s Patent Trial and Appeal Board were improperly appointed principal officers. It further followed the Supreme Court’s direction by severing a portion of the statute to solve that constitutional problem while preserving the remainder of the statute and minimizing disruption to the inter partes review system Congress created.

Judge Moore Op. Concurring in the en banc denial.  This quote mentions the the “severing” element of the original panel decision. In particular, the court invalidated the removal restrictions of 5 U.S.C. § 7513 as it applies to APJs — thus making it easier for the USPTO director to remove APJs at will. This move – according to the court – was sufficient to shift APJs from principal Officers to inferior Officers and thus “save” the system.

Judge O’Malley wrote her own concurring opinion that included the following statement:

While I agree with Judge Dyk and Judge Hughes that Title 5’s protections for government employees are both important and long-standing, I do not believe Congress would conclude that those protections outweigh the importance of keeping the remainder of the AIA intact—a statute it debated and refined over a period of more than six years.

The leading dissent by Judge Dyk argues that the severance choice here is an improper, “draconian remedy” that “rewrites the statute contrary to Congressional intent.  Judges Hughes and Wallach each wrote their own dissenting opinions – arguing that APJs were already inferior officers based upon the extensive control and authority exerted by the USPTO director.

= = = = =

The basic issue in the case is the Constitutionality of the appointments process for Administrative Patent Judges (APJs) sitting on the Patent Trial & Appeal Board (PTAB).  The Appointments Clause of the U.S. Constitution indicates that all “Officers of the United States” shall be nominated and appointed by the US President with the Advice and Consent of the Senate.  The provision then goes on to say that Congress has the power to alter this process for “inferior Officers, as they think proper.” In particular, Congress may allow inferior Officers to be appointed by “Heads of Departments.”  U.S. Const. Art. II, Sec. 2, Cl. 2.  An improperly appointed officer isn’t really an officer at all and so should have no power to render judgment to cancel privately held property rights.

APJs used to be hired by the USPTO Director.  However, Prof John Duffy shook that cage in his 2007 article: Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. In the article, Duffy argued that APJs are likely best classified as inferior Officers and thus could be appointed by a Head of Department — namely the Secretary of Commerce.  Congress quickly acted on Duffy’s submission and altered the law to fix the problem.

The America Invents Act (AIA) greatly increased the power of APJ with the advent of inter partes review (IPR) proceedings and the other AIA trials.  The PTAB has become the most frequented patent court in the country and thousands of patents have been cancelled based upon APJ rulings.

After losing before the PTAB in an inter partes review, Arthrex appealed to the Federal Circuit with the argument that the increased power granted by the AIA ratches APJs up to the status of principal Officers rather than inferior Officers.  The result of that conclusion would be that APJs would need Presidential Appointment with Senate consent.  In Arthrex, the Federal Circuit agreed with the contention, but rather than requiring Presidential Appointment, the court decided instead to invalidate a statute that provides job security to APJs.  Since job security (ability to be easily fired by someone other than the President) is an element of the inferior/principal Officer distinction, the Federal Circuit found that severing that portion of the statute was enough to change the nature of the role.

= = = =

The case offers an interesting constitutional query – but is also being used as a tool for those who are hoping for the IPR system to fail.