Tag Archives: Historical Cases

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

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by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test’s requirements that 1) the primary reference must be “basically the same” as the claimed design, and 2) any secondary references must be “so related” to the primary reference that features from one would suggest application to the other, “impose[] limitations absent from § 103’s broad and flexible standard” and are “inconsistent with Supreme Court precedent” of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 “applies to all types of patents” and the text does not “differentiate” between design and utility patents.  Therefore, the same obviousness principles should govern.  This decision will generally make design patents harder (more…)

Without Undue Experimentation vs Without Any Experiments

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by Dennis Crouch

I was rereading the Supreme Court’s recent enablement decision of Amgen Inc. v. Sanofi, 598 U.S. 594 (2023) and was struck by the Supreme Court’s statement that its 19th Century decision of Wood v. Underhill, 46 U.S. 1 (1847) “establish[ed] that a specification may call for a reasonable amount of experimentation to make and use a patented invention.”  This statement from Amgen is surprising because Chief Justice Taney’s decision in Wood includes a seemingly contrary statement that bars any experimentation (more…)

Seeking Clarity on Comparison Prior Art: Seirus Petitions Supreme Court in Heat Wave Design Patent Dispute

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by Dennis Crouch

Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear.  The petition asks two questions related to the comparison process for design patent infringement — in particular, the questions focus on what can qualify as “comparison prior art” used to provide context for the infringement analysis.

Questions presented: (more…)

Patentee’s Unclean Hands

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by Dennis Crouch

The Federal Circuit’s new decision in Luv’N’Care, Ltd. (LNC) v. Laurain and EZPZ, relies on the doctrine of unclean hands to deny relief to the patentee (Laurain and EZPZ), affirming the district court’s judgment.  The appellate panel also vacated and remanded the district court’s finding that LNC failed to prove the asserted patent is unenforceable due to inequitable conduct during prosecution, as well as its grant of summary judgment one of the asserted patents was invalid as obvious.  U.S. Patent No. 9,462,903. The case here involves bowls/plates attached to a mat to help avoid spills and for easy cleanup. 22-1905.OPINION.4-12-2024_2300689.

Unclean Hands: The doctrine of unclean hands is an equitable defense that bars a party from obtaining relief when they have engaged in misconduct (more…)

The Quest for a Meaningful Threshold of Invention: Atlantic Works v. Brady (1883)

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by Dennis Crouch

My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883).  I thought I would write a more complete discussion of this important historic patent case.

Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking “bad patents.”  As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.

The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design.  The Supreme Court ultimately reversed the lower court’s decision upholding the patent and found instead that Brady’s claimed invention lacked novelty and did not constitute a patentable advance over the prior art.

(more…)

Establishing Guidelines for Patent Damages: The Garretson v. Clark Case of 1884

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by Dennis Crouch

Calculating damages for patent infringement can be a complex task, particularly when the invention is an improvement to an existing machine or product.  The Supreme Court’s 1884 decision in Garretson v. Clark, 111 U.S. 120, helped establish a rule requiring apportionment in cases involving improvement patents.

The plaintiff, Garretson held two patents covering improved mop heads and sued the defendants for infringement.  The lower court sided with the patentee — finding the claims valid and infringed and also issued an injunction to halt ongoing infringement.  However, the court balked at awarding the requested back-damages for past infringement.

The patentee had offered a simple lost-profit damage calculation.  In particular the court was presented with evidence showing how much profit the patentee made from the sale of each mop, and the patentee asked the court to force the defendant to pay that amount for each of infringing mop.  The circuit court judge Samuel Blatchford appointed NY patent attorney George J. Sicard to conduct an accounting.  Sicard came back with a recommendation of $0 in damages, and Blatchford agreed.

The issue here is that the patent covered an improvement to a mop, but the patentee was seeking damages for the entire profits associated with the mop — not just the value of the improvement.  In his opinion, Blatchford wrote:

The patentee must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative; or he must show, by equally reliable and satisfactory evidence, that the profits and damages are to be calculated on the whole machine, for the reason that the entire value of the whole machine, as a marketable article, is properly and legally attributable to the patented feature.

Garretson v. Clark, 10 F. Cas. 40, 44 (C.C.N.D.N.Y. 1878).  The plaintiff has the burden of proving damages, but its theory of damages utterly failed. And, no other damages evidence was presented. The effective result was no damages.

At the time of the decision, Blatchfort was a circuit court judge. In 1882, he was nominated by President Chester Arthur to the U.S. Supreme Court.  Because of the long backlog at the time, Blatchfort reached the court before the case was heard (even though it was directly appealed).  The Supreme Court finally got around to hearing the appeal in 1886 and affirmed in an opinion by Justice Field.

The high court quoted Blatfort’s decision as I have done above and  also remarked that for improvement patents, “the patentee must show in what particulars his improvement has added to the usefulness of the machine or contrivance. He must separate its results distinctly from those of the other parts, so that the benefits derived from it may be distinctly seen and appreciated.” Garretson v. Clark, 111 U.S. 120 (1884).

The decision helped establish a clear rule for patentees to follow when claiming damages for improvements in existing machines or contrivances. It emphasized the presentation reliable and tangible evidence to apportion profits and damages between patented and unpatented features or evidence to demonstrate that the entire value of the product is attributable to the patented feature.

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An interesting aside from this case is that the defendant – Charles B. Clark – is also co-inventor of one of the two asserted patents.  Clark had transferred his rights to a third party, and Garretson bought them up.  The case involves sales of 100,000+ mops.

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Note here that this case was brought in equity rather than at law and so that raises a major difference between current cases, and we had different statutory language under the 1870 Act.  A lot of our 1800s patent cases have quirks that leave them not susceptible to direct application to today’s cases.  Still, I be but they still provide some amount of foundational guidance and gives a chance to observe the evolution of the legal principles we know today.

Today in Patent Law Class: Markman v. Westview Instruments

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by Dennis Crouch

Today in Patent Law Class, we covered the Supreme Court’s important decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) focusing on the question of whether the patentee has a 7th Amendment right to have a jury decide “genuine factual disputes about the meaning of a patent?”  The Supreme Court’s answer: No, although claim construction might involve underlying factual determinations, the doctrine is ultimately a question of law best decided by a judge.  Id.  Twenty years later, the Supreme Court reiterated these same principle in Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (holding that, underlying factual findings should be given deference on appeal).

The underlying patent (RE33,054) was directed to an inventory control system for a drycleaner.  A jury sided with the patentee and found infringement, but the district court rejected the verdict. Rather, the district court awarded Judgment as a Matter of Law to the defendant on grounds of non-infringement.  The district court particularly considered the claim term “inventory” and construed that term to be tied to individual articles of clothing–as would be necessary to satisfy the claimed inventive result to “detect and localize spurious additions to inventory.”  Under that construction, the defendant could not infringe because its system tracked transactions rather than articles of clothing, and each transaction might include multiple articles.  On appeal, the Federal Circuit issued an in banc affirmance.  Then on certiorari, the Supreme Court also affirmed.  This double affirmance means that the Federal Circuit’s decision also continues to have precedential merit.  Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).

The law-fact divide is an important feature of complex civil litigation procedure — especially patent law.  The importance arises in several different contexts.  In Markman, the question was “who decides” judge or jury; In Teva, the question was appellate deference to district court fact finding; In Microsoft Corp. v. I4I, Justice Breyer explained that the law-fact divide is important for burdens of proof since burdens such as clear-and-convincing-evidence only apply to factual findings and no such burden is associated with issues of law. Microsoft Corp. v. I4I Ltd. Partn., 564 U.S. 91, 114 (2011) (Breyer, J, concurring). In addition, the evidentiary standards tied to the Federal Rules of Evidence applies to issues of fact, and does not (necessarily) bind the inquiry into questions of law.  Thus, in deciding a question of law, a court may consider information that might not be available to a jury when deciding a question of fact.

The Markman hearing quickly became a popular process for district courts to receive argument and evidence before construing the claims (often resulting in summary judgment). Because of their popularity, Markman is – by far – the most cited Supreme Court patent case of the 1990s.   Markman hearings show how timing is also important for the law-fact divide.  Claim construction is decided before trial; leaving juries regularly being seen as irrelevant to questions of infringement and anticipation.  This is especially true when parties craft their proposed claim construction to hone-in on the ultimate questions of infringement or validity.

To support its conclusion that the 7th Amendment does not require a jury trial to decide factual disputes about the meaning of a patent, the Supreme Court first looked to history.  The court suggested that historical preservation analysis is the best approach since the 7th Amendment requires that “trial by jury shall be preserved.”  This amendment was part of the Bill of Rights ratified in 1791 and so the court generally looks back to that time for its historic preservation analysis.  The problem though is that 1791 (and prior) patents did not include claims, and so there was no relevant historic answer as to who decides claim scope. The court then looked to precedent–citing a number of 19th century cases and treatises reflecting that claim construction was a judicial function.  And, the court also concluded that giving the authority to judges would get better results, since judges are better at construing legal documents than juries, and also lead to more uniformity of law.

In Markman, we learned that it is the judge’s role to construe the claims, but courts continued to argue for the next decade+ about claim construction methodology and procedure.  The proposed uniformity was lacking.  In my view, the uniformity has now largely been realized, at least within the court system, once Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) was decided and the dust settled.

19th Century Patent Law: Initial Disclosures for the Defense

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by Dennis Crouch

Even if you are not a litigator, you may still remember learning about the R.26(a)(1) initial disclosures required at the start of a lawsuit.  Some areas of law have particular additional disclosure requirements.  One example — old patent law.  The Patent Act of 1836 included a unique disclosure requirement for defendants raising a defense that patent was invalid because the invention was already publicly known or used.  The statutory provision:

Whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, he shall state in his notice of special matter the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used.

Patent Act of 1836, Section 15.  Thus, the defendant is required to automatically identify the names and residence of the people with prior knowledge as well as the location where the item was used.

In Wise v. Allis, 76 U.S. 737 (1869), the Supreme Court was asked to opine on the  level of specificity required by the statute.  The case involved an improvement in balancing millstones for grinding grain.  The defendant had provided notice that the invention had been previously used in “Utica, Rochester, Buffalo, Albany, New York City, and Brooklyn, in the State of New York.”  At the time, New York City had about 1,000 different mills where the millstone might have been used, and so that part of the notice did not really provide much information.  The plaintiff complained that the notice was thus insufficient and that the defense should be barred.

In its decision, the Supreme Court sided with the defendant and found the disclosures sufficient. In particular, the Court suggested that the provision should be read as a whole, and noted that the defendant had provided the name and address of individual people in each of the cities who had knowledge of the prior use.  That individualized disclosure was sufficient to satisfy the purpose of the rule — that is, to allow the patentee ability to respond and/or cross examine the witness.  The Court explained:

The object of the rule is undoubtedly to enable the other party to make such answer … either by way of pleading or of evidence, or such cross-examination of the witness of the party setting up the plea or notice as the facts of his case may enable him to do. In other words, to apprise him fairly of what he may expect to meet under the plea or notice. . . . If [the defendant] fairly puts his adversary in the way that he may ascertain all that is necessary to his defence or answer.

Wise v. Allis, 76 U.S. 737 (1869). Today, Rule 26(a)(1)(A)(i) operates in parallel to this old patent rule, but for all civil actions.  It requires automatic disclosure of the name and address and phone number “of each individual likely to have discoverable information … that the disclosing party may use to support its claims or defenses,  unless the use would be solely for impeachment.”

Prosecution History Disclaimer 1880 – 2019

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Technology Properties Limited LLC v. Huawei Technologies Co., Ltd. (Supreme Court 2019)

In its new petition for writ of certiorari, Tech. Properties focuses on claim construction and the Federal Circuit’s application of prosecution history disclaimer.

Whether the United States Court of Appeals for the Federal Circuit’s development and application of the doctrine of “prosecution history disclaimer” is consistent with fundamental principles of separation of powers, the Patent Act, and long-established Supreme Court precedent.

[Petition][Appendix].

The patent at issue here (5,809,336) stems from a 1989 application and a divisional filed just before the 1995 change-over to the 20-year-from-filing patent term. The microprocessor system claims require an “oscillator.”  In interpreting that limitation, the court added some additional negative limitations that (1) the oscillator “does not require a command input to change the clock frequency” and (2) the oscillator’s frequency “is not fixed by any external crystal.” The addition was based upon arguments that the patentee made during prosecution.  That narrowing, the patentee argues “runs afoul of the separation of powers among Congress, the USPTO, and the federal courts embodied in the Patent Act.”

The most interesting aspect of the petition here is reliance on so many 19th century decisions by the Supreme Court:

  • Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274 (1877) (The Patent Act of 1836 “relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture. . . . This duty is now cast upon the Patent Office. There his claim is, or is supposed to be, examined, scrutinized,
    limited, and made to conform to what he is entitled to.”)
  • Merrill v. Yeomans, 94 U.S. 568 (1876) (claims are of primary importance).
  • Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880) (prosecution history cannot “enlarge, diminish, or vary” the claim limitations).
  • White v. Dunbar, 119 U.S. 47 (1886) (“unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms”).
  • McCarty v. Lehigh Val. R. Co., 160 U.S. 110 (1895) (“[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim, . . . we should never know where to stop.”).

Of course, the petition also includes the mystery statement: “While the prosecution history can play some role in claim construction, it should not be used to diminish or enlarge the scope of the claims.” What is this mystery role?

Are Patents Monopolies? It Depends on the Relevant Century

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Guest Post by Charles Duan of Public Knowledge

The question of whether patents are monopolies is one of ongoing debate. But an important aspect of that debate is the correct meaning of the word “monopoly.” A change in the word’s meaning over the last few centuries can explain at least some of the differing opinions on the question.

Today, the word “monopoly” refers to a concentration of economic market power in a single firm or entity. But up through the early 19th century, that was not the accepted definition. In that time period, a monopoly was a government grant of an exclusive right, more akin to a franchise or government contract.

COkeThe leading definition comes from the English jurist Sir Edward Coke. (The commonly used style “Lord Coke” is incorrect for reasons given in note 3 of this brief.) Coke was the author of the English Statute of Monopolies and expounded upon the law in his 1644 Institutes on the Laws of England as follows:

A monopoly is an Institution, or allowance by the King by his Grant, Commission, or otherwise to any person or persons, bodies politique, or corporate, of or for the sole buying, selling, making, working, or using of any thing, whereby any person or persons, bodies politique, or corporate, are sought to be restrained of any freedome, or liberty that they had before, or hindered in their lawfull trade.

This definition carried over to America. George Mason, for example, objected to the proposed federal Constitution on the grounds that “the congress may grant monopolies in trade and commerce”—an objection that makes sense only if a monopoly is something that “the congress may grant.”

Under Coke’s definition, patents for inventions are almost certainly monopolies, albeit not “odious” monopolies. Colonial statutes of Massachusetts and Connecticut provided that “No monopolies shall be granted or allowed amongst us, but of such new Inventions”; the exception for inventions suggests that invention patents would otherwise have been proscribed monopolies. English and American cases also treated patents as monopolies, under this older meaning. See, e.g., Turner v. Winter, 99 Eng. Rep. 1274, 1276 (K.B. 1787) (“[E]very patent is calculated to give a monopoly to the patentee . . . .”); Wilson v. Rousseau, 45 U.S. (4 How.) 646, 678, 681–83 (1846). And of particular importance, the Framers agreed: As Walterscheid explains in detail, both Madison and Jefferson referred to invention patents as monopolies, but disagreed on how problematic the monopolies would be in practice.

To be sure, there were some who argued that patents for inventions were not monopolies, on the grounds that, being directed to new inventions that did not exist previously, those patents do not “restrain[] of any freedome, or liberty that [the people] had before.” This view, reviewed by Giles Rich in 1942, is perhaps subject to debate on the merits, but does not appear to take serious hold until the later 19th century—about the time that antitrust law and the modern definition of “monopoly” would have arisen.

And, more importantly, this older ground of debate has little to do with the modern question of whether patents are antitrust-style monopolies, which deals in considerations of market power or economic concentration. The modern question is interesting and important as well, but the authorities discussing the historical definition shed little light on the modern question, and vice versa.

This change in the meaning of “monopoly” from government decree to economic condition is likely familiar to many, but I had not seen it so far in my reading. The most recognition of the distinction that I can find is a footnote to a Federal Circuit opinion (by Judge Rich) noting “that ‘monopoly’ is used in different senses in patent and antitrust law,” but he gives no further explanation. And relevant today, none of the briefs in the Oil States case so far explicitly note the historical definition of “monopoly,” and at least one brief cites the modern definition in a historical context.

“Inventive Concept” and the Hot-Blast Cases

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Guest post by Jeffrey A. Lefstin, Professor of Law, University of California, Hastings College of Law

As the Supreme Court prepares to take up Alice Corp. v. CLS Bank, a major question the Court may confront is to what extent an “inventive concept” is necessary for patent eligibility under § 101. In Mayo v. Prometheus, the Court suggested that “conventional and obvious” activity cannot transform a law of nature or abstract idea into a patent-eligible invention. The Court seemingly revived Parker v. Flook, which held that only “inventive applications” of abstract ideas are patent-eligible. But when the Federal Circuit heard CLS Bank, divided as the court was, both Judge Rader and Judge Lourie emphatically rejected the idea that Mayo demands “inventiveness” for patent-eligibility.

In both Flook and Mayo, the Supreme Court anchored the requirement for inventive application in Neilson v. Harford, the famous English case on James Neilson’s hot-blast smelting process. The Court in Flook and Mayo focused on this passage appearing in Baron Parke’s opinion for the Court of Exchequer:

We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this—by interposing a receptacle for heated air between the blowing apparatus and the furnace.

Flook took this language to mean that an underlying idea or discovery should be treated as part of the prior art; Mayo took it to mean that a claim is patent-eligible only if the application of a discovery or idea is inventive or unconventional.

However, a reading of the Exchequer’s full opinion tells the opposite story. Neilson’s patent was sustained because his application was entirely conventional and obvious. The defendant’s challenge in Neilson was primarily a scope of enablement argument: Neilson had disclosed that the blast should be heated before introducing it into the furnace, but disclosed next to nothing about the heating means. In refuting the defendant’s challenge, both the patentee and the judges of the Exchequer emphasized that the mode and apparatus for heating air were old and well known in the field, and represented no invention by Neilson.

So why did Baron Parke write that Neilson’s discovery – his ‘principle’ – should be regarded as “well known”? The court was wrestling with the question of whether Neilson had claimed a patentable manufacture, or the abstract principle that hot air was superior to cold. And if a manufacture, was Neilson entitled to reach the accused blast furnace, which employed a different heating apparatus? The Exchequer had faced the same questions seven years earlier in Minter v. Wells, involving a patent to an adjustable chair. The defendant in Minter had argued that the patentee was trying to claim a well-known principle of mechanics: the self-adjusting lever. Alternatively, if the claim was to the chair rather than the principle, the patent should be restricted to the inventor’s particular embodiment. Baron Parke concluded instead that the patentee had claimed the application of the self-adjusting leverage to an adjustable chair. Therefore, the patent was not drawn to an abstract principle, and might extend to other chairs embodying the same application but with a different arrangement.

Minter thereby established that a patent might claim the application of a well-known principle to new ends, and might extend beyond the exact machinery employed by the patentee. In the famous passage from Neilson, Parke was applying the same doctrine to Neilson’s patent – except that Neilson’s ‘principle’ was new rather than well-known. Neilson was a more difficult case because, given Neilson’s minimal disclosure, the scope of enablement was more dubious than in Minter. But a special jury verdict on that point ultimately carried the day for Neilson.

Neilson was only one of some twenty cases asserted by Neilson in England and Scotland. Other decisions following and interpreting Neilson leave no doubt that the case stood not for inventive application, but for the distinction between principles in the abstract and patentable applications. For example, in a case litigated the next year, Househill v. Neilson, the Court of Sessions stated:

The main merit, the most important part of the invention, may consist in the conception of the original idea—in the discovery of the principle in science, or of the law of nature, stated in the patent, and little or no pains may have been taken in working out the best manner and mode of the application of the principle to the purpose set forth in the patent.

Neilson was understood the same way in the Supreme Court’s landmark 19th-century opinions that discussed Neilson extensively, such as Le Roy, Morse, and Tilghman. Further, in late 19th-century and early 20th-century American cases and treatises, it was black-letter law that while abstract principles and discoveries could not be patented, a practical application was patent-eligible without the need for inventive application – subject to certain exclusions such as the ‘mental steps’ rule.

As I wrote about last year, the actual origin of the inventive application test was Justice Douglas’s opinion in Funk Brothers, in 1948. The dubious history of the inventive application test in the wake of Funk suggests we would have been better served by following Justice Frankfurter instead of Justice Douglas. For it was Frankfurter’s concurrence that embraced the spirit of Neilson and the historical tradition: the claims to bacterial compositions in Funk were unpatentable not because they added or changed little relative to a law of nature or natural phenomenon, but because the patentee was claiming the idea of compatible strains instead of his practical application.

I write about the hot-blast cases, and the history of the inventive application test, in an article available here.