In my view, Obviousness is the most fundamental of patent law doctrines, and certainly much of the work of patent attorneys is to convince patent examiners that the claims are not obvious.
In Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright's holding that claims of Neonode's US8095879 are invalid as indefinite. No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.
The recent Federal Circuit decision in Platinum Optics v. Viavi Solutions focuses attention once again on the case-and-controversy requirement derived from Article III of the U.S. Constitution, which extends federal judicial power to "Cases" and "Controversies."
The seemingly simple phrase has been the subject of extensive judicial jockeying in the development of the doctrine we know as "standing."
Most U.S. utility patents are (or will eventually be) part of a patent family with at least one other U.S. patent. The recent rise in focus on obviousness type double patenting (ODP) has been unnerving to some, especially with the Cellect decision from 2023 that seemed to greatly expand the risk of family members colliding based upon differing expiration dates due to Patent Term Adjustment (PTA).
The Federal Circuit's new ODP opinion in Allergan USA v. MSNLabs, 24-1061 (Fed. Cir. August 13, 2014), provides some major relief to patent portfolio holders, holding that "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date." This ruling provides a measure of protection for first-filed patents that receive substantial PTA, shielding them from ODP challenges based on their own continuations sharing the same priority date.
A recently filed petition for writ of certiorari in Lemon Bay Cove, LLC v. United States highlights the longstanding difficulty in defining regulatory taking as well as determining when a regulatory takings claim becomes ripe for judicial review. The brief was filed by the Pacific Legal Foundation, a public interest law firm that focuses largely on protecting private property against government intrusion and regulation.
Background: Lemon Bay Cove, LLC owns about 6 acres of intercoastal property in Charlotte County, Florida, north of Ft. Myers. In 2012, Lemon Bay applied to the U.S. Army Corps of Engineers for a permit to fill about 2 acres around Sandpiper Key to construct a 12-unit townhome development. After a nearly four-year process, the Corps denied the application with prejudice in 2016.
Lemon Bay then filed suit in the Court of Federal Claims, alleging that the Corps' denial effected a per se regulatory taking under Lucas v. South Carolina Coastal Council, 505 U.S. 1003 (1992), by depriving the property of all economically viable use.
Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024)
Unified Patents is paid by its members to fight against non-practicing entity (NPE) patent assertions -- often by challenge patent validity via inter partes review. In this case, Unified challenged Voice Tech's U.S. Patent No. 10,491,679 which covers technology for controlling a computer via a mobile device using voice commands. At the conclusion of the IPR, the Patent Trial and Appeal Board (PTAB) sided with Unified - finding all challenged claims (1-8) of the '679 patent unpatentable as obvious over the combination of two prior art references, Wong and Beauregard. The PTAB also denied Voice Tech's request for rehearing. On appeal, the patentee won a minor battle on waiver, but ultimately lost on the merits.
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
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).
In a recent decision out of the Southern District of Texas, Judge Lee Rosenthal found the patent infringement case brought by VDPP against Volkswagen to qualify for sanctions under the Patent Act 35 U.S.C. § 285. The court also relied upon 28 U.S.C. § 1927 and its inherent powers to directly sanction VDPP's attorney William P. Ramey (Ramey LLP). VDPP, LLC v. Volkswagen Group of America, Inc., No. H-23-2961 (S.D. Tex. July 11, 2024).
Two of the most controversial patent law changes of the past year have involved obviousness-type double patenting, which allows applicants to patent obvious variants of their earlier patents by disclaiming the extra term of the later-expiring patent. First, the Federal Circuit held in In re Cellect that patents tied by double patenting must expire on the same day even if one of the patents has received a patent term adjustment (PTA) giving it a more-than-twenty-year term. The en banc denial and pending cert petition in Cellect have attracted substantial interest from amici and commenters. Second, the USPTO proposed that terminal disclaimers include a commitment to not enforce the patent if any claims in the patent to which it is tied are found to be obvious or not novel. Early commentary on the proposal was “overwhelmingly negative.”
In our new draft article, Fixing Double Patenting, we argue that this outcry is unwarranted.
I recently provided a set of interesting data on the large number of patents that are "at risk" of being invalidated based on the Federal Circuit's Cellect decision. This post follows up with a discussion of a recent article titled "Fixing Double Patenting" released in draft form by Stanford Professors Mark Lemley and Lisa Larrimore Ouellette. The article takes a critical look at the practice of obviousness-type double patenting in the U.S. patent system.
Many have been thinking of the potentially large impact of Cellect v. Vidal, which is now pending before the Supreme Court. This week I uncovered striking data that a very large number of patents have been impacted.
The Federal Circuit's practice of issuing no-opinion affirmances under Rule 36 is facing renewed scrutiny in two recent petitions for rehearing en banc. In UNM Rainforest Innovations v. ZyXEL Communications Corp. and Island Intellectual Property LLC v. TD Ameritrade, Inc., the petitioners argue that the court's use of one-word Rule 36 judgments allowed it to sidestep key legal and factual issues raised on appeal. These petitions highlight ongoing concerns about the Federal Circuit's frequent use of Rule 36 and its impact on patent law development. The failure to provide an explanatory opinion is an appellate-procedure issue - the two patentees also argue that the lower tribunal made substantive legal errors.
I don't see the court as having a truly nefarious reason for its common no-opinion judgments, but the situation does call to mind the ancient fable about the emperor's new clothes adapted and popularized by Hans Christian Andersen.
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.
As the Supreme Court's 2023 year draws to a close, the court has denied certiorari in the vast majority of IP related cases, with the Dewberry trademark damages case left as the only IP case granted certiorari. Seven petitions remain undecided and the court will pick them up again when it begins the 2024 term in late September. This post briefly reviews these cases.
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.
A second amicus brief has been filed - this one from the Intellectual Property Owners Association (IPO) - encouraging the Supreme Court to grant certiorari in Cellect, LLC v. Vidal, No. 23-1231. The case concerns 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).
The Federal Circuit recently decided the en banc design patent case of LKQ v. GM, but the court has not issued an en banc decision in a utility patent case since 2018. There are currently four interesting petitions pending before the court.
Ten years ago - 2014 - the Supreme Court decided Alice Corp v. CLS Bank, holding that - yes indeed - the expansive language of Mayo v. Prometheus (2012) applies equally to software and technology patents. A few weeks later, the USPTO began a dramatic transformation - pulling back notices of allowance and issuing thousands of supplemental office actions. The Federal Circuit's May 2024 en banc decision in LKQ v. GM is perhaps as dramatic a change for the design patent arena as Alice was for utility patents. The old Rosen-Durling test made it almost impossible to reject a design patent as obvious except for extreme cases involving either direct copying or extremely broad claims. The key difficulty was that precedent required the obviousness inquiry to begin with a single prior art reference that is "basically the same" as the claimed design - a roughly 1-to-1 relationship. Further, any secondary references had to be ‘so related’ to the primary reference that features in one would suggest application of those features to the other." In LKQ, the court found those requirements "improperly rigid” under principles of KSR which require a flexible obviousness inquiry. The overall effect is to make it easier to find a design patent obvious.
