The Federal Circuit's new decision in Sanho v. Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024).
The basic holding is that the 102(a)(2)/(b)(2) safe harbor triggered by an inventor's pre-filing "public disclosure" of the invention requires that the invention be made "reasonably available to the public." Neither public uses nor private sales satisfy this requirement. This is a long post, because the issues are both important and interesting. In the end, I suggest a panel rehearing in the case because I believe that the Federal Circuit unfairly found forfeiture of key arguments whose resolution would help clarify the law.
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
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.
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).
This is just a first look at how overturning Chevron may impact patent practice.
In the past, both the USPTO and patent attorneys have largely ignored the larger scope of administrative law, but in recent years USPTO operations have been under tighter control from the White House, and courts have increasingly asked whether the agency is following the rules. Administrative patent law was truly launched with the American Invents Act of 2011 and the resulting administrative patent trials by the PTAB -- resulting in hundreds of appeals arguing that the USPTO's procedural approach is an abuse of administrative power. Importantly, the Supreme Court in Cuozzo Speed Techs. v. Com. for Intell. Prop., 579 U.S. 261 (2016) provided the patent office with Chevron deference for its determinations regarding AIA trials, including issues such as its approach to claim construction. But Chevron has now been overruled, and many are wanting the Federal Circuit to revisit the USPTO approach.
The Federal Circuit recently denied a petition for mandamus seeking to overturn a district court order transferring a patent case from the Western District of Texas to the Northern District of California. In re Haptic, Inc., No. 2024-121 (Fed. Cir. June 25, 2024). This case was filed in Austin and assigned to Judge Robert Pittman with Haptic alleging that Apple's "Back Tap" feature on iPhones infringes U.S. Patent No. 9,996,738 relating to gesture detection systems. Haptic is headquartered in Austin at the home of its longtime CEO and listed inventor Jake Boshernitzan. The company was part of Techstars Austin Accelerator as it developed its product known as Knocki that allows users to tap on ordinary surfaces to control various actions on phones and other devices. Knock on wood. The patent and Knocki product are designed to expand touch interfaces beyond traditional touchscreens, potentially opening up new modes of interaction with smart devices and appliances. The '738 patent particularly issue covers systems and methods for detecting tapping or knocking gestures on surfaces to control electronic devices.
Apple also has a major presence in Austin, with about 10,000 Austin employees and a billion-dollar second headquarters campus in the city. Nevertheless, Judge Pitman
This is another "skinny label" generic pharmaceutical patent case. The basic setup involves a drug that has several different approved uses; with the branded manufacturer holding patents covering only some of the uses. The generic company is then permitted to sell the drug, but is labelled only for non-patented uses. These labels are known as carve-out or "skinny" labels under 21 U.S.C. § 355(j)(2)(A)(viii).
It is inevitable that people will purchase and use the generic drugs for the patented uses, and that the generic distributer will be accused accused of inducing those infringing acts. Although the generic typically makes a profit on these sales, it those profits pale in comparison to the profits lost by the branded company.
Amarin v. Hickma highlights some of the challenges that generics are facing when marketing drugs with these carved-out labels. One difficulty is that the FDA severely limits what the generic can say about the drug and its uses, and the carve-out is generally based upon statements made by the patentee. Here, the court follows a label-plus approach. The skinny label itself will not be enough to show inducement, but that evidence can be combined with other evidence (such as marketing) to prove liability.
The Federal Circuit's 2023 decision in Axonics, Inc. v. Medtronic, Inc. marked an important change in inter partes review procedure, ensuring petitioners have an opportunity to respond patentee's newly proposed arguments, with the hope of discouraging patent owners from holding-back ("sandbagging") at the institution stage. Case-in-point is the Federal Circuit's recent Apple v. Omni MedSci decision authored by Judge Alan D. Albright sitting by designation.
The Federal Circuit has affirmed a D.N.J. court's dismissal of patentee Beteiro's infringement complaints against DraftKings, et al., agreeing that the asserted claims are directed to patent ineligible subject matter under 35 U.S.C. § 101. Beteiro, LLC v. DraftKings Inc., No. 2022-2275 (Fed. Cir. June 21, 2024). The patents at issue were directed to methods of facilitating remote gambling activity using devises equipped with GPS.
The Federal Circuit has reversed a preliminary injunction order in a trade secret misappropriation case, finding that the district court abused its discretion by failing to properly evaluate the likelihood of success on the merits and the balance of harms. Insulet Corp. v. EOFlow, Co., No. 2024-1137 (Fed. Cir. June 17, 2024). The appellate court held that the district court's analysis was deficient in several key respects, including not addressing the statute of limitations defense, defining trade secrets too broadly, and not sufficiently assessing irreparable harm and the public interest.
This classic trade secret case involves former employees left to join a competitor. As free humans, they are permitted to take their skill and wisdom to the new jobs, but are forbidden from misappropriating trade secret knowledge. That line drawing is particularly difficult, and one reason why many employers moved toward contractual non-compete agreements. The case is also complicated because the defendant here admit to reverse engineering that apparently lead to some substantial similarities between the products.
The decision highlights a high bar for obtaining a preliminary injunction, even in trade secret cases involving competitors where we previously may have assumed irreparable harm. The Federal Circuit here explained that lower courts are required to individually evaluate each of the four injunction factors - likelihood of success on the merits, irreparable harm, balance of hardships, and public interest. Conclusory assertions of competitive harm are insufficient to show irreparable injury. For trade secret claims in particular, the alleged trade secrets must be defined with specificity. But, this proof is often difficult at the preliminary injunction stage of a case when the particular knowledge used by the defendant has not been fully discovered.
The Federal Circuit has been seen as largely supporting strong trade secrecy rights. However, this decision may put a damper on forum shopping attempts.
[I have substantially updated this post - correcting a couple of issues from the original and also added info from the letter from former USPTO leaders. - DC 6/1/24]
by Dennis Crouch
As I have previously discussed on Patently-O, the USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024). Under the proposed rule, a terminal disclaimer will only be accepted by the USPTO if it includes an agreement that the patent will be unenforceable if tied (directly or indirectly) to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). This proposal has generated significant debate among patent practitioners, with many expressing concerns about its potential impact on innovation and patent rights. It is a dramatic change in practice because the typical rule required by statute is that the validity of each patent claim must be separately adjudged. See 35 U.S.C. § 282(a).
The comment period is open until early July, but a number of comments have already been submitted. And I looked through them in order to get some early feedback. You can read the comments here
The Federal Circuit's 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents "questions of exceptional importance." Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024).
The Federal Circuit's recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024). Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
In this appeal, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining an opposition proceeding and refusing registration of the standard character mark #TODECACHO for hair combs. Procedural and Substantive: the Federal Circuit held that the TTAB properly allowed Framboise to extend its trial period; and that substantial evidence supported the TTAB's finding that Framboise established prior use. Opinion by Judge Lourie, joined by Judges Linn and Stoll.
In Brazilian Portuguese the colloquial phrase - "to de cacho" - is often used to mean "I am angry." In the context of this case, however, it references difficult to control curly hair.
The Supreme Court has denied Vanda Pharmaceuticals' petition for certiorari, leaving in place a Federal Circuit decision that invalidated Vanda's patents on methods of using the sleep disorder drug Hetlioz (tasimelteon) as obvious.
Although non-precedential, the Federal Circuit's new decision in Sumitomo Pharma v. Vidal offers the important conclusion that a patentee has no standing to appeal an invalidity holding once the patent expires, absent some showing of likely infringement during the prior six years. Sumitomo Pharma Co. v. Vidal, No. 22-2276 (Fed. Cir. April 5, 2024). The case is not so bad for the patentee because
In a recent decision, the Federal Circuit vacated a judgment of invalidity and remanded for a new trial, holding that the district court's jury instruction on objective indicia of nonobviousness constituted prejudicial legal error. The case, Inline Plastics Corp. v. Lacerta Group, LLC, No. 2022-1954 (Fed. Cir. Mar. 27, 2024), involved patents relating to tamper-resistant and tamper-evident food containers.
