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:

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.

Ono Pharmaceutical Co., Ltd., v. Dana-Farber Cancer Institute, Inc. (Supreme Court 2021)

The Federals Circuit issued an important decision in this case back in 2020 that, in my view, further lowered the bar for joint inventorship. Traditionally, we have thought that a joint inventor must do more than simply tell the other inventors about the current state-of-the-art. In Ono, some of the inventive contribution made by Dana Farber scientists was published and made part of the prior art before the complete conception of the invention as claimed.  On appeal though, the Federal Circuit found those contributions could still count toward joint inventorship:

[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.

Fed. Cir. Opinion.  The end result in the case was that Dana Farber became co-owner of valuable patents to which Ono had previously claimed sole rights.

Now, Ono has petitioned the U.S. Supreme Court with the following question:

[35 USC 116] provides that “when an invention is made by two or more persons jointly, they shall apply for a patent jointly.” A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256.

The Federal Circuit has held that “to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

In this case, in conflict with this Court’s guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception. App. 13a.

The question presented is:

Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception.

[Ono Petition for Writ of Certiorari].

Note here that the 4th Circuit decision referenced here is an Levin v. Septodont Inc., 34 Fed. Appx. 65 (4th Cir. 2002)(unpublished).  In that case, Levin sued Septodent for breach of contract associated with payments on a patent sale agreement. The district court, found no breach because the patent was invalid for failing to properly list Donald Kilday as an inventor. In its decision the 4th Circuit explained the “significant contribution” requirement of a joint inventor should focus on patentability — “asking whether the contribution helped to make the invention patentable.”  Note that in that case, 4th Circuit was purporting to follow the Federal Circuit’s decision in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).  Pannu remains good law and was extensively cited and quoted in the Federal Circuit’s Ono opinion.

The petition cites one 19th century case – O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).  In its decision, the Supreme Court wrote that Morse should still be considered the inventor, even though he had received information and advice from various “men of science.”

Neither can the inquires he made, or the information or advice he received, from men of science in the course of his researches, impair his right to the character of an inventor. No invention can possibly be made, consisting of a combination of different elements of power, without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other. And it can make no difference, in this respect, whether he derives his information from books, or from conversation with men skilled in the science. If it were otherwise, no patent, in which a combination of different elements is used, could ever be obtained. For no man ever made such an invention without having first obtained this information, unless it was discovered by some fortunate accident. And it is evident that such an invention as the Electro-Magnetic Telegraph could never have been brought into action without it. For a very high degree of scientific knowledge and the nicest skill in the mechanic arts are combined in it, and were both necessary to bring it into successful operation. And the fact that Morse sought and obtained the necessary information and counsel from the best sources, and acted upon it, neither impairs his rights as an inventor, nor detracts from his merits.

O’Reilly v. Morse, 56 U.S. 62, 111 (1853)

Guest Post by Prof. Ted Sichelman, University of San Diego School of Law

Many online services provide district court patent litigation dockets, documents, and associated patent numbers. However, none of these services offer comprehensive, hand-coded patent numbers and case types, plus full dockets and key documents (complaints, summary judgments, verdicts), downloadable in bulk at no charge and with no license restrictions.

After more than three years of extensive automated and manual review of patent dockets, the USPTO’s Office of the Chief Economist —in conjunction with researchers from the University of San Diego’s Center for IP Law & Markets (myself) and Northwestern Law School (David L. Schwartz)—have completed that very goal, expanding upon the patent litigation dataset the USPTO had released in 2015.

Currently, the dataset (available here) includes:

• Dockets: The complete docket for every lawsuit filed in district courts tagged as a patent action in PACER (and many other patent cases tagged under non-patent PACER codes) from the first patent case logged in PACER through the end of 2016 (over 80,000 case dockets).
• Attorneys & Parties: Full lists of parties by type (e.g., plaintiff, defendant, intervener, etc.) and their attorneys, with full contact information for the attorneys gathered from public records.
• Patent Numbers: Comprehensive, hand-coded patent numbers by a team over 30 law students from all electronically available complaints in PACER in cases filed from 2003 through the end of 2016.
  • Based on testing against several of the leading commercial services, plus publicly available data from the Stanford NPE Litigation Database, the dataset’s patent number information is substantially more complete and accurate than any of these services (which often use automated methods for determining patents-in-suit).
• Case Types: Every case in PACER filed from 2003 through the end of 2016 is identified with one of 15 fine-grained case types, including patent infringement (non-declaratory judgement [DJ]), DJ on non-infringement and invalidity, DJ on non-infringement only, DJ on invalidity only, false marking, inventorship, malpractice, regulatory challenge, and others.

In the next few months, the USPTO will make available:

• Documents: Initial complaints, summary judgment orders, and verdicts (bench and jury) that are electronically available for all patent cases in PACER filed from 2003 through the end of 2016.

The data is downloadable only in bulk and is not searchable at the USPTO website. However, it is relatively straightforward to download and search the patent number, case type, and attorney data, in Microsoft Excel or other database and statistical packages.

Importantly, there are no licensing restrictions whatsoever on the use of the data, and the research team and USPTO expect that commercial and non-commercial services will add the information to their search interfaces in the coming year. Additionally, the research team is hoping to update all of the data for patent cases filed through the end of 2020 sometime next year. Further down the road, we hope to code cases for outcomes and add appeals by supplementing Jason Rantanen’s comprehensive Compendium of Federal Circuit Decisions with full dockets and key documents.

In examining litigation trends, many researchers across the academic, public, and private sectors have used proprietary datasets, which generally could not be disclosed to other researchers for study replication and testing. Hopefully, academics and others will now use the USPTO’s fully open dataset for studies on the U.S. patent litigation system to allow for meaningful review of empirical studies.

Documentation on the database is available here and at the USPTO webpage. Anyone interested in using the data is also welcome to contact me (tsichelman@sandiego.edu) with technical and other questions.

by Dennis Crouch

Oral Argument set for October 7, 2020 in Google v. Oracle. 

• (1) Whether copyright protection extends to software code and the organizational structure of a programming language; and
• (2) Whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.
• What is the role of the Jury in deciding fair use? (Raised by the Court)
• What is the role of patents in the protection of a software code? (Raised by Crouch)

Certiorari Denied:

• Following its first conference, the Supreme Court has denied certiorari in a number of patent cases.  In particular, the court has denied certiorari in all the patent cases ready-for-conference with the notable exception of the Arthrex cases focusing on appointments clause issues are still pending.
• Still Pending: 
  • Constitutional challenge to Admin Patent Judges: United States v. Arthrex, Inc., No. 19-1434; Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-1452; Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458; Polaris Innovations Limited v. Kingston Technology Company, Inc., No. 19-1459.  These cases remain the most likely for certiorari. 
• Denied:
  • Retroactive application of IPR to already applied-for patents: Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204.
  • AIA Challenge: Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 19-1451;
  • Divided Infringement and 271(g): Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147.
  • Federal vs State Law for Patent Licensing: Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68.
  • Right to a Jury Trial on Specific Performance of FRAND license: TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269.
  • Patent Eligibility: The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32.
  • Due Process Issues Regarding Sua Sponte Judicial Order: Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351.
  • Appealing IPR Termination:BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381.
  • Power of PTO To Exclude Patent Attorney: Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844.
  • Obviousness – Nexus for Secondary Indicia: SRAM, LLC v. FOX Factory, Inc., No. 20-158.

This Week’s Conference: 

• Voiding a patent after a damage award: Phazzer Electronics, Inc. v. Taser International, Inc., No. 19-1378
• Arthrex Appointments Issue: Essity Hygiene and Health AB v. Cascades Canada ULC, et al., No. 20-131; ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228; Customedia Technologies, LLC v. Dish Network Corporation, et al., No. 20-135 (also eligibility question)
• Trade Secret Inventorship Question and Federal Jurisdiction: Acer America Corporation, et al. v. Intellisoft, Ltd., (Bruce Bierman), No. 20-313.

Response Requested:

• The “Respondent” has a right to file a response to a petition for writ of certiorari.  However, as a strategy (and money saving device), many repondents waive their right. In cases of interest, the Supreme Court will often request a response.  However, the request for response need only be requested by a single Justice. And, some of the justices have reportedly given authority to their law clerks to file the request.
• Recent CFR’s
  • Are the Fed. Reserve Banks “People” or “the Government”: Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al., No. 20-333
  • Reasonable Royalty and Apportionment: Cochlear Corporation, et al. v. Alfred E. Mann Foundation for Scientific Research, et al., No. 20-362
  • Notice and Damages: Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al., No. 20-355

Gregory James v. J2 Cloud Services (Fed. Cir. 2020)

James filed this change-of-inventorship lawsuit against the patent owner (Advanced Messaging Tech.). James alleged that he was the sole inventor of U.S. Patent No. 6,208,638 and that his name should replace that of Jaye Muller and Jack Rieley.

The listed inventors – Rieley and Muller are famous in the music world.  Rieley was the Beach Boy’s manager in the 1970s and co-wrote many songs with them as part of their “revival.” Muller (“J”) is a German musician.  In the 1990s, the pair started a company known as JFAX.  The company – now known as J2 – has a $2.6B market cap.  The company’s original idea was to receive VM and faxes via email. (more…)

by Dennis Crouch

In an interesting inventorship dispute, the Federal Circuit has affirmed a lower court ruling that two scientists should be added to the list of inventors on a set of patents obtained by Ono Pharmaceuticals. The change in inventorship means a change in ownership rights as well, and these are valuable patents.

Dana-Farber Cancer Institute, Inc. v. Ono Pharma Co. (Fed. Cir. 2020).

Ono holds a number of tied to cancer therapies that disrupt PD-1 receptor/ligand activity on certain cancer cells.  That disruption then allows a stronger immune response by the patient’s body. US7595048; US8168179; US8728474; US9067999; US9073994; and US9402899.

In the 1990’s Dr. Tasuku Honjo discovered the PD-1 receptor, isolated its DNA sequence, and studied various aspects of its relationship to “programmed cell death.” He was awarded the Nobel Prize for this research. Honjo then started a quest to find a ligand binding to PD-1.

At some point, Honjo began collaborating with Drs. Freeman and Wood who were working in the US.  The trio shared substantial data and plans back-and-forth and began a collaborative research project.

Then what happened — Freeman and Wood filed a patent application on a response-modulation therapy but did not include Honjo on the application (even after he asked to be included). Honjo then filed his own patent application in Japan — the parent application for all of the patents at issue here. Although years later, Dana-Farber eventually sued for correction of inventorship under 35 U.S.C. § 256(b) — a move that would give it partial ownership over the patents.

Invention is generally thought to have two key points of demarcation: (1) conception of the invention; (2) reduction of the invention to practice.  That said, the primary focus is usually on the first point – conception.  Joint inventorship creates some confusion on this point – but the basic requirement is that each joint inventor must significantly contribute to the conception or reduction to practice. On this point, the Judge Lourie quotes one of his own opinions from 1998:

All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Quoting Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Regarding conception, the court also notes that “conception” may be somewhat speculative:

[C]onception is complete when an idea is definite and permanent enough that one of skill in the art could understand the invention. An inventor need not know, however, that an invention will work for its intended purpose in order for conception to be complete, as verification that an invention actually works
is part of its reduction to practice.

Slip Op. citing Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed. Cir. 1994).

Some of the information provided by Freeman and Wood had already been made public by the time of the “complete invention.”  The Federal Circuit, however refused to “hold categorically that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention.”

[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.

Id.  In the end, the court concluded that Ono’s arguments were essentially a request to “adopt an unnecessarily heightened inventorship standard.” The court declined.

Guest Post by Colleen V. Chien and Evan Hastings, Santa Clara University School of Law*

The COVID pandemic has created an urgent need for innovation to protect against, treat, test for, and eventually, inoculate against the virus. To save time and lives requires collaboration, making it an opportune time to strengthen the capacity of the patent system, as one part of the much larger innovation ecosystem,^[1] to coordinate and include, among multiple innovators, not only to protect and exclude.

A few years ago, one of us wrote a pair of articles^[2] about the importance of contextual patent disclosure (meaning information about, for example, patent ownership, licenses and pledges, and government interests in patented innovation) for open innovation and argued for greater investments and attention to such non-traditional forms of “patent disclosure.” During the COVID crisis, the demand for just this sort of contextual information – most recently by Reps. Lloyd Doggett and Rosa DeLauro, who have asked Gilead for a detailed breakdown of remdesivir patents, applications, and licenses supported with government funding – underscores its usefulness for government accountability as well, especially as the US government commits billions of dollars (some of which is already bearing fruit) to fund COVID innovation. Contextual information can also facilitate voluntary licensing, a market-based “third” way in the access v. innovation debate.[3]

The USPTO’s recently-launched Patents 4 Partnerships platform, the US-based Open Covid Pledge, and Japan-based Open Covid-19 Declaration represent important efforts to provide contextual information about patent owner intents (to share and license technology) to the public. These efforts, as well as others to provide immunity to makers of personal protective equipment (PPE) and supplies are profiled below. Building on previous work, here are several other steps that could bolster collaborative innovation and patent disclosure, on coronavirus and in general. Many could be taken by the USPTO and other agencies as executive actions and do not require Congressional authority:

• Early Publication: to enable faster tech transfer and licensing, patent offices could encourage the publication of applications prior to the 18-month mark (as permitted by 37 C.F.R. § 1.219), to support a potential move to a default to open that applicants could opt-out of.
• Improve reporting of government interests and patent owners: collaboration, licensing, and tracking of taxpayer investment depends on complete and consistent patent ownership information which, for a variety of reasons, is lacking. Using AI and other approaches, the USPTO could work, independently and with other agencies, to improve the accuracy and completeness of patent ownership as well as government ownership and government inventorship information, as called for by Professor Arti Rai and her co-authors as well as previous USPTO rulemakings.^[4]
• Patent-product data: the product to which a patent is associated provides crucial context for understanding the technology. Since the America Invents Act authorized virtual marking, companies have put product-patent information on company websites (see this disclosure by 3M of relevant respirator patents) to put potential infringers on notice in accordance with the virtual patent marking doctrine. The FDA’s Orange and Purple Books list the patents associated with FDA-approved pharmaceutical products. Consolidating (and even enhancing, as Professor Jeanne Fromer has called for) patent-product information in the patent registry could reduce the considerable search costs associated with discovering the products associated with patents and vice versa^[5]and enhance technology learning made possible by but not necessarily through the patent. (See Professor Jason Ratanen’s theory of peripheral disclosure.)
• Federating and encouraging license, pledge, defensive-only, and other contextual patent disclosures: public companies are required to publicly disclose material technology licenses with the SEC in often the only public disclosure of these agreements. Moderna’s multi-million dollar agreement with BARDA to hasten a COVID vaccine, which has reported early promising results, for example, is slated to be released with this process. Making it easier to find such licenses would help drive greater accountability and market transparency. Extending the Patents 4 Partnerships platform to include pledges or otherwise making it easier to record them, by patentees or third parties would help preserve them and document reliance, enhancing their enforceability. (See also Professor Jorge Contreras’ “Patent Pledges” database) Going further and offering a “defensive-only” patent option or other disavowal of patent enforcement similar to existing license of right schemes, for example in exchange for a fees discount, could vastly expand the size of technology “whitespaces.” (See also Professor Toshiko Takenaka’s idea of Inclusive Patents for open innovation).

Like the initiatives described below, these steps would help unify a fragmented, noisy landscape of innovation information supporting open innovation within, not outside of, the existing patent system.

Open Covid Patent Pledge / Covid-19 Declaration

Adoptees of the US-based Open Covid Pledge, created by Professors Jorge Contreras, Mark Lemley, and others,  promise to share their patents and related intellectual property on non-exclusive, royalty-free, worldwide terms for the purpose of ending the COVID pandemic. To do so, an adoptee makes a public announcement of intent and then implements one of the three licenses, all of which grant rights to patent and regulatory exclusivities until one year after the WHO declares the end of the pandemic or Jan 1, 2023, whichever comes earlier or a compatible variant and notifies the Pledge. Nearly 20 companies, including tech giants Microsoft and IBM have signed on, with details about each company’s commitment linked to from the Pledge website. Most members have provided access to their entire patent portfolio; while others have instead pledged a particular technology, such as the New Jersey Institute of Technology, or copyrights, like Skopos Labs. Over twenty of Japan’s major corporations have made a similar commitment to not assert some 300,000 patents through the Open Covid-19 Declaration, including two leading suppliers of COVID tests, LSI Medience and SRL Inc, and Teijin Limited, a Japanese pharmaceutical and information technology company. IAM has reported that the initiative, led by Canon, has reached out to thousands of Japanese companies and intends to expand to companies in China and Korea as well. Though no contract is ever signed, the pledges rely on estoppel and implied license theories for enforceability. For an analysis under US law, see Pledge Co-founder and Creative Commons GC Diane Peters’ whitepaper.

With permissions secured, the next question is how to find technologically relevant IP. The lightweight nature of the Open Covid Pledge makes it, as founder Jorge Contreras has described, “a start” at doing so. Innovators can use traditional search tools, but without context, in particular reliable assignee or product information, may be hard-pressed to find relevant technology. A few pledging companies have supplied some contextual disclosure – Hewlett Packard Enterprises, for example, has highlighted the use of wifi technologies to create a floating hospital in Italy and Sandia National Labs has a search database that is broken down by technology – but the task of finding relevant, safe-from-suit technology remains with the innovator. Due to these features, the Open Covid Pledge is likely to serve primarily as a useful non-assertion covenant that helps to clear the path for innovation, at least until Jan 1, 2023.

Patents 4 Partnerships

While the Open Covid Pledge and Non-Assertion Declaration described above provide freedom to operate in view of hundreds of thousands of patents, the USPTO’s recently launched Patents 4 Partnerships platform makes it easier for potential technology partners to find one another, as one of us previously called for. It does so by enabling patentees to indicate, and enabling the public to discover, the availability of technology for licensing, currently of about ~200 assets. Director Iancu described the platform as “a meeting place that enables patent owners who want to license their IP rights to connect with the individuals and businesses who can turn those rights into solutions for our health and wellbeing.” In this initial launch, the platform includes a searchable repository of patents and published patent applications related to the COVID-19 pandemic available for licensing. In the future, the USPTO intends to consider expanding to other areas of technology.

Platform listings link to license information pages such as this one; most patent assets have been filed within the past 5 years. Currently, the majority of available listings are from universities and federal labs such as the Federal Laboratory Consortium for Technology Transfer, the AUTM Innovation Marketplace, the National Institutes of Health, NASA, and other government agencies. Neither the idea of hastening commercialization of government inventions, nor the idea of a licensing registry are new. Several years ago, the World Intellectual Property Organization established a marketplace for green technologies called WIPO Green. In 2008, the Eco-Patent Commons was established to facilitate green technology transfer from firms pledging their technology. Unfortunately, the Common was shut down in 2016 with Professors Bronwyn Hall and Christian Helmers finding no evidence that it increased the diffusion of pledged innovation. A 2019 study in the Houston Law Review by the authors and Professor Jorge Contreras based on numerous interviews identified several structural issues, providing an excellent background read for designers of licensing or pledge platforms seeking to learn from the past. One concrete step would be to ensure that there is a mechanism for tracking usage, to drive iteration and improvement. IP owners are encouraged to submit via a form technologies related to COVID-19 that are available for licensing.

 Good Samaritan and Other Immunities

The maker movement has made extraordinary contributions to the COVID response. Timothy Kroninger and Edward H. Rice suggest that good samaritan law, stemming from “public necessity” doctrine, can immunize makers from claims of infringement during the COVID crisis due to the imminent need for medical supplies. Additionally, attorneys from Arnold & Porter have identified the Public Readiness and Emergency Preparedness (PREP) Act and Defense Production Act (DPA) as the source of several, limited regulatory immunities for innovators. These cover approved and unapproved medical supplies made for emergency use, and government contractors for any act or failure to act resulting directly or indirectly from compliance with a rule, regulation, or order, respectfully.

Conclusion

As innovators around the world rise to the challenge of collaboratively finding Covid solutions, the

Patents 4 Partnerships platform, Open Covid Pledge, and Open Covid-19 Declaration demonstrate the clarifying and coordinating informational role the patent system can also play. Four additional steps that deserve consideration during this unprecedented moment include: encouraging early publication; improved reporting of government interests, inventors and patent owners; consolidating patent-product data; and enabling and federating license, pledge and other contextual patent disclosures. Such investments in contextual patent information, like the Patents 4 Partnerships platform, can help accelerate not only Covid innovation, but open innovation in general.

*Evan Hasting is a Graduate Fellow and 2019 graduate of Santa Clara School of Law, and Colleen V. Chien is a Professor at Santa Clara University School of Law.

^[1] Professor Lisa Ouellette’s Written Description blog is providing excellent coverage of innovation developments related to COVID by a team of Professors including, in addition to Professor Ouellette, Jake Sherkow, Rachel Sachs, and Nicholson Price.

^[2] Colleen V. Chien, Contextualizing Patent Disclosure, 69 Vand. L. Rev. 1849 (2016); and Colleen V. Chien, Opening the Patent System Diffusionary Levers in Patent Law, 89 S. Cal. L. Rev. 793 (2016).

[3] Activated, for example, in the recent call by world leaders for a “patent-free” People’s Vaccine.

^[4] The Global Patent Registry developed by IPwe is attempting to use blockchain to solve the ownership tracking problem.

^[5] It appears that this site http://www.iproduct.io/data by Professor Gaétan de Rassenfosse will at some point release such a database, at this point, it says, “the data will be released as the underlying papers get published.”

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by Dennis Crouch

Sometimes I think of myself as the creativity machine.  A cool part of this system is that I have a right to seek and obtain patent protection for my inventions (if any).  The USPTO is treating Mr. Dabus differently.  When Dabus filed for patent protection in 2019, the examiner refused to examine the patent and the PTO Commissioners Office has confirmed the refusal.

The problem is that Mr. Dabus (DABUS) is not human, but rather is a machine – a creativity machine.  (more…)

Keith Manufacturing Co. v. Larry D. Butterfield (Fed. Cir. 2020)

This is another prevailing-party case following a settlement. 

Butterfield is a former employee of Keith Mfg.  After leaving the company, Butterfield filed a patent application that eventually resulted in US9126520. The patent covers a mechanism for unloading trailers — which also happens to be the focus of Keith’s business.  The lawsuit alleges various causes of actions, including trade secret misappropriation, breach of contract, invalidity, inventorship correction, etct.

Butterfield issued a covenant-not-to-sue Keith on the patent; and the parties then settled the case. The lawsuit officially ended with the filing a stipulation of dismissal with prejudice pursuant to Rule 41(a)(1)(A)(ii) (voluntary dismissal without court order based upon agreement of the parties).

The stipulated dismissal did not mention costs or attorney fees, and Butterfield subsequently moved for attorney fees under the Patent Laws (section 285) as well as FRCP 54(d) and Oregon state statute.

The district court rejected the request for fees — holding that a stipulation-of-dismissal without a court order does not count as a “judgment” and that R.54(d) implicitly requires a “judgment” as a prerequisite to awarding fees. No judgment; no attorney fees. In particular, the rule states that the motion for attorney fees must be filed within “14 days after the entry of judgment” and must also “specify the judgment.”

On appeal, the Federal Circuit has reversed — explaining that the use of “judgment” in R.54(d) has the “prudential purpose” of avoiding R.54(d) requests of attorney fees all throughout the litigation and the subsequent piecemeal appellate litigation.  Rather, in this case, “judgment” in the provision should be seen as including “dismissal.” Thus, on remand the district court may now consider the attorney fee motion.

Note – the Federal Circuit outcome here is the same as that reached by the 10th Circuit in Xlear, Inc. v. Focus Nutrition, LLC, 893 F.3d 1227 (10th Cir. 2018) (Lanham Act case).

by Dennis Crouch

Rep. Danny Davis (D-Il) and Paul Gosar (R-Az) have introduced the Inventor Rights Act. H.R.5478 that creates a set of rights and privileges associated with inventor-owned patents.  These are patents owned by their respective inventors or owned by an entities controlled by the inventors.  In addition to ownership, the inventor must hold “all substantial rights.”

Big Four: 

1. No Involuntary Post-Issuance Proceedings against inventor-owned patents.  No IPR, Post-Grant Review, or reexamination, or any other “determination about the validity” without “consent of the patentee.”
2. Injunctions would now be likely against infringers of inventor-owned patents. The Bill would create a presumption of both irreparable harm and inadequate remedy at law for infringement of an inventor-owned patent.
3. Broadened Venue for filing of infringement lawsuits.  Here, the proposal does not recapture all of the venue “lost” in TC Heartland. 
4. Damages law would offer a new option: Profit disgorgement + attorney fees + treble damages for willfulness when inventor-owned patents are infringed.

Inventor Rights Act 2019. These are all major changes.  Although all of the provisions have historic roots.

Currently, only a rather small fraction of patents would qualify as “inventor-owned patents” under the statute. However, the Bill would tend to both (1) encourage individual inventorship and (2) encourage patent holding situations that take advantage of the inventor-owner rights. Tech company founders would likely keep ownership of their patents, although I suspect that large companies would remain wary of allowing regular employees to retain “all substantial rights” in the patent.

Folks at US Inventor, including Josh Malone and Paul Morinville, have lobbied for the proposal and have included substantial discussion on their website: https://www.usinventor.org/inventor-rights-act/.