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.
The case involves Anthony Novak who created a parody Facebook page to mock his the local police department in Parma, Ohio. The posts were clearly parody after perhaps a bit of initial confusion. Once Novak heard that the police were upset, he took down the posts (after 12 hours online). Still, Novak was eventually arrested, jailed, and prosecuted for disrupting police functions. His home was searched, and all of his electronic equipment was seized. A jury eventually acquitted Novak. He then turned around and sued for violation of his constitutionally protected civil rights. But, the courts found the arresting officers entitled to qualified immunity. Novak v. City of Parma, Ohio, 33 F.4th 296 (6th Cir. 2022).
The petition for certiorari asks two questions:
Whether an officer is entitled to qualified immunity for arresting an individual based solely on speech parodying the government, so long as no case has previously held the particular speech is protected.
Whether the Court should reconsider the doctrine of qualified immunity.
One problem with Novak’s posts is that over the past few years it has become more and more difficult to tell the difference between satire and reality. The Sixth Circuit suggested a preemptive “THIS IS PARODY” warning, but that doesn’t seem quite right. For parody to really work, there needs to be some initial source confusion — the parody has to be initially plausible to get full comedic effect.
Over at The Onion, journalists are sad-proud about the fact that they regularly forecast future events with their “reporting.” They give the example of their 2017 post on nuclear codes sitting around at Mar-A-Lago. Those folks are obviously concerned that their work may also be held
The Onion files this brief to protect its continued ability to create fiction that may ultimately merge into reality. As the globe’s premier parodists, The Onion’s writers also have a self-serving interest in preventing political authorities from imprisoning humorists. This brief is submitted in the interest of at least mitigating their future punishment.
Onion Brief. According to the Supreme Court docket, the court has twice rejected the Onion Brief, but I’m confident that the court went ahead and read the thing.
Let me know what you think.
= = =
I feel compelled to mention that I spent a summer living in Parma Ohio (in one of the houses below). I was 19 and just had a 10-speed bicycle that I rode to work each day. As far as I recall, there was nothing good in that town; and it was worse for someone without a car. I also spent an afternoon in Parma Italy. This was after a month tooling around northern Italy, and we were craving something American. So, we stopped at the Parma Ikea and had Swedish Meatballs.
Zahner’s Design Pat. D746,078 covers the ornamental design of a shower curtain as shown in the figures above. Zahner sued Katri Sales for infringement, and the defendant turned-around and filed a request for ex parte reexamination. The examiner found some great prior art from 2013, which predates this particular design application filing date. But, the design patent also claimed priority to Zahner’s prior utility patent application (Serial No. 09/617,402) that predates the reference. The utility application includes a number of drawings that are similar-to, but not exactly the same as those in the Design Patent. (Images below).
The basic question in the case then was whether the priority drawings provide sufficient written description support for the eventual design as claimed.
09/617,402 (Priority filing)
The PTAB found the design claim was not sufficiently supported by the priority disclosure and so the priority claim was invalid. And, without the priority claim, the invention had become obvious by the time of the later actual filing date. The basic problem, can be seen in the design patent’s perspective view shown below. The perspective shows that the inner surface of the aperture is flat and with right-angled edges. According to the PTAB, those features are new to the design patent and not disclosed by Figure 21 of the priority filing. On appeal, the Federal Circuit affirmed without opinion.
Close-up of the Design Patent drawing
Zahner disagrees with the merits of the decision here, but has also suggested that it will raise procedural challenges in an upcoming petition for writ of certiorari. In particular, Zahner intents to raise the same question that Arthrex will likely raise, although this time in the reexamination context:
Question: Does the Reexamination Statute permit a challenge to priority claims?
Zahner has also argued that its situation is particularly egregious because the priority question was particularly addressed by the examiner during the original prosecution. That is important because reexaminations are limited to “new” questions of patentability.
After receiving the R.36 no-opinion affirmance, Zahner filed a petition for panel rehearing that included the following line: “A written opinion on this issue is respectfully requested.” The Federal Circuit though denied the petition without opinion. This situation thus raises the issue I addressed in my 2017 paper titled Wrongly Affirmed without Opinion. In that paper, I argue that these no-opinion judgments are contrary to the statutory requirement of Section 144 requiring the court to issue an opinion in appeals from the PTO. Although this argument has been raised in dozens of cases, the court has not yet responded to the argument, and the peculiar procedural setup allows this status quo. In a recent request for extension of time, Zahner indicated to the Supreme Court that it also plans to raise the no-opinion question.
I mentioned Arthrex above, its petition to the Supreme Court will be due in November 2022. In its failed petition for rehearing on the IPR-priority issue, Arthrex asked the following question:
Whether 35 U.S.C. § 311(b)’s restriction “only on a ground that could be raised under section 102 or 103” permits IPR challenges that depend solely on compliance with the written description requirement of section 112.
As a general rule of thumb, the prior art disclosure of a chemical species anticipates (and thus renders unpatentable) a chemical genus encompassing that species. The prior art disclosure of a chemical genus, on the other hand, generally does not anticipate a species falling within the scope of the genus – except when it does. In re Petering, 301 F.2d 681 (C.C.P.A. 1962), decided by the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit) in 1962, provides an example in which the court holds that prior art disclosing a genus of 20 chemical compounds anticipated a species falling within that genus. The Petering court explained that the prior art may be deemed to disclose each member of a genus when, reading the reference, a person of ordinary skill can “at once envisage each member of this limited class.”
Mylanv. Merck provides an example going the other way, with the Federal Circuit affirming a Patent Trial and Appeal Board decision finding that the prior art disclosure of a genus comprising 957 predicted salts did not anticipate the following claim, which recites one of those salts.
A dihydrogenphosphate salt of a 4-oxo-4-[3-(trifluoromethyl)-5,6-dihydro [1,2,4]triazolo[4,3-a]pyrazin-7(8H)-yl]-1-(2,4,5-trifluorophenyl)butan-2-amine of Formula I:
or a hydrate thereof.
The claimed salt is sitagliptin dihydrogenphosphate (“sitagliptin DHP”), a dipeptidyl peptidase-IV (“DP-IV”) inhibitor and the active ingredient in JANUVIA, which is marketed by Merck for the treatment of non-insulin-dependent (i.e., Type 2) diabetes. Mylan petitioned for inter partes review (IPR) of a number of patent claims of U.S. Patent 7,326,708 (the “’708 patent”), including the independent claim presented above, as part of its bid to bring a generic version of JANUVIA to market prior to expiration of the patent. Mylan argued that the challenged claims were anticipated and/or rendered obvious by the disclosure of the genus of 957 salts in an earlier Merck-owned U.S. patent and its equivalent International Patent Publication (referred to collectively as “Edmondson”).
In particular, Mylan argued that under In rePetering Edmondson’s disclosure of the genus anticipated the challenged claims because a skilled artisan reading Edmondson would “at once envisage” the sitagliptin DHP salt. But the Board rejected this argument, finding that none of the challenged claims were anticipated by Edmondson. The Federal Circuit affirmed, finding that while In re Petering does stand for the proposition that a skilled artisan may “at once envisage each member of [a] limited class,” the “key term” in this statement is the word “limited.” The court found that the genus of 957 salts disclosed in Edmondson is a far cry from the 20 compounds “envisaged” by the narrow genus in Petering.
The Federal Circuit went on to explain:
We cannot provide a specific number defining a “limited class.” It depends on the “class.” But we agree with Merck and hold that the Board did not err in finding that a class of 957 predicted salts[, as disclosed in Edmondson,] is insufficient to meet the “at once envisage” standard set forth in Petering.
The manner in which Edmondson discloses the genus probably had some bearing on the outcome. Edmondson does not explicitly define a genus of 957 salts. Instead, Edmondson discloses a list of 33 compounds, one of which was sitagliptin. It also discloses eight “preferred salts,” one of which was phosphate, the salt used in sitagliptin DHP. The product of multiplying 33 x 8 is 264, so there are at least 264 possible combinations of the 33 chemical compounds with the eight salts. But there are also possible differences in stoichiometry, i.e., the ratio of the salt’s ions. For example, the stoichiometry of the claimed sitagliptin DHP is 1:1, i.e., a 1-to-1 ratio of sitagliptin to phosphate. However, other stoichiometry’s are possible. For example, Merck was also able to prepare sitagliptin phosphates having stoichiometries of 3:2 and 2:1. Taking into account the various possible stoichiometries, the court accepted Merck’s representation that the 33 compounds could potentially be formulated into a total of 957 different salt forms using the eight preferred salts.
Of course, the fact that Edmondson does not anticipate the claims does not necessarily mean that it would not render them obvious, particularly in combination with other prior art references. In this case, however, Edmondson could not be used as a prior art reference for purposes of obviousness with respect to a number of the claims at issue in the IPR, including Claim 1. In a nutshell, the reason for this was that under pre-AIA 35 U.S.C. 103(c)(1) Edmondson could not be used as 102(e)/103 prior art because Edmondson and the challenged patent were both owned by Merck, and Merck was able to antedate Edmondson as a 102(a)/103 reference with respect to Claim 1 and some of the other claims at issue.
Merck was not able to antedate Edmondson with respect to some of the other challenged claims, including Claim 4, which depends from Claim 1 and recites a crystalline monohydrate form of the (R)-enantiomer of sitagliptin DHP. I think it is safe to assume that Claim 4 corresponds to the proposed generic product, given that in Canadian proceedings (discussed below) Mylan stipulated that its product would infringe the Canadian equivalent of Claim 4. The Board addressed the merits of Mylan’s assertion that Edmondson (in combination with other prior art) rendered Claim 4 obvious, and concluded that it did not. The Federal Circuit affirmed this conclusion.
This past April, a Canadian court issued a decision finding the Canadian equivalent of Claim 4 not invalid for obviousness and/or insufficiency (i.e., lack of enablement). Significantly, the Canadian Court found that “[t]he evidence indicates that the [skilled artisan] would not have any specific motivation arising from [Edmondson] to focus on the particular crystalline form of a salt of sitagliptin over the other compounds disclosed within [Edmondson].”
Last month, Merck announced that the U.S. District Court for the Northern District of West Virginia had found the ‘708 patent not invalid and infringed in a Hatch-Waxman infringement suit brought against Mylan (which is now a part of Viatris). I tried to take a look at that decision, but found that it had been filed under seal. The case is being appealed to the Federal Circuit, and it will be interesting to see what happens if that appeal results in a decision. Bear in mind that in patent infringement litigation the accused infringer (e.g., Mylan) is able to rely on prior art (e.g., public use or on-sale events) and grounds for invalidation (e.g., obviousness-type double patenting or lack of enablement) that are not available in IPR proceedings.
It is time to pick-up our consideration of Supreme Court patent cases for the 2022-2023 term. A quick recap: Despite dozens of interesting and important cases, the Supreme Court denied all petitions for writ of certiorari for the 2021-2022 term. The most anticipated case last year was the 101 eligibility petition regarding automobile drive shaft manufacturing process. American Axle (cert denied). Bottom line, no patent cases were decided by the Court in the 2021-2022 term and none were granted certiorari for the new term starting this week.
The court’s first order of business comes on September 28, 2022 when it meets for the “long conference” to consider a fairly large pile of petitions that have piled-up over summer break. Of the 17 pending patent-focused petitions, 13 are set to be decided at the long conference. I have subjectively ordered the cases with the most important or most likely cases toward the top. Leading the pack are three cases focusing on “Full Scope” Enablement & Written Description. Topics:
Enablement / Written Description (All three are biotech / pharma): 3 Cases;
Infringement (FDA Labeling): 1 Case;
Anticipation (On Sale Bar): 1 Case;
Double Patenting (Still the law?): 1 Case;
Procedure / Standing: 6 Cases;
Eligibility (AmAxle Redux): 3 Cases; and
Randomness (don’t bother with these): 2 Cases
1. Full Scope Written Description in Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566
According to the Federal Circuit, US patent law contains separate and distinct written description and enablement requirements. This case focuses on the required “written description of the invention” and challenges the court’s requirement that the specification demonstrate possession of “the full scope of the claimed invention” including unknown variations that fall within the claim scope.
Juno’s patent covers the highly successful and valuable CAR-T gene therapy. The claims require a “binding element” to bind T-cells to cancer cells. The specification does not provide much of any disclosure regarding how these binding cells actually work but instead states that binding elements are “known” and “routine” and cites to a decade-old article on the topic. The idea here is that the patentee did enough to enable someone to make and use the invention–isn’t that enough? But, the Federal Circuit concluded that the specification should have done more to disclose those binding elements, including all “known and unknown” elements covered by the claims.
Juno argues that the Federal Circuit’s test “is simply impossible to meet” for biotech inventions and is not part of the law envisioned by Congress. The argument on virtual impossibility is a centerpiece of several enablement/written description cases pending. Although the focus here is biotech, the same arguments are brewing with regard to AI-assisted inventions. In its responsive brief, Kite reiterates that “as precedent has held for over 50 years—§ 112’s requirement of a “written description” is distinct from the requirement to “enable any person skilled in the art to make and use the” invention.” That 50-year reference makes me chuckle because that is roughly the same period that Roe v. Wade was good law before being overturned by the Court last term.
The Federal Circuit’s decision in Juno was also a big deal because it overturned the jury verdict–holding that no reasonable jury could have found written description support. But, it is tough to get the Supreme Court to hear a review on detailed factual findings.
Chief Judge Moore issued the decision in the case that was joined by Judges Prost and O’Malley. The petition was filed by noted Jones Day attorney Greg Castanias along with former SG Noel Francisco and BMS (Juno) deputy GC Henry Hadad. Joshua Rosenkranz (Orrick) is running the show for the respondent Kite Pharma. The petition has been supported by five amicus briefs, the most of any pending case.
2. Written Description for an Effective Treatment in Biogen International GmbH v. Mylan Pharmaceuticals Inc., No. 21-1567
If the Supreme Court grants certiorari in Juno, there is a good chance that it would also hear the parallel written description case of Biogen v. Mylan. Biogen’s patent claims is directed toward a drug treatment for multiple sclerosis. The treatment has one easy step: administer “a therapeutically effective amount [of] about 480 mg” of DMF per day along with an excipient for treatment of multiple sclerosis. The Federal Circuit found the claim lacked written description support — especially for a showing that 480 mg is an “effective” treatment. The specification expressly states that “an effective dose … can be from … about 480 mg to about 720 mg per day.” But, the court found that singular prophetic “passing reference” “at the end of one range among a series of ranges” was insufficient to actually the notion that the patentee possessed an “effective treatment” at the 480 mg dosage. Effectiveness is often relegated to the utility doctrine, but here it is an express claim limitation.
In some ways Biogen and Juno are both outliers–albeit at opposite ends of the spectrum. In Juno, the patentee is seeking a broad genus claim based upon a somewhat narrower disclosure while in Biogen, the patentee is seeking a quite narrow claim based upon a much more general disclosure. It is a forest-tree situation. If you describe several trees, can you claim possession of the forest? Likewise, if you describe the forest, can you claim possession of individual trees? Note also that there are similarities with the pending enablement petition in Amgen v. Sanofi as well as with the likely upcoming petition in Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (written description). The overlap between written description and enablement is inextricable. It is usually true that the arguments that prove or disprove written description have the same impact on enablement. But here in these cases the defendants and courts continue to reiterate the potential differences.
The decision was authored by Judge Reyna and joined by Judge Hughes. Judge O’Malley wrote in dissent. The court then denied en banc rehearing despite a dissenting opinion from Judge Lourie joined by Chief Judge Moore and Judge Newman. Supreme Court expert Seth Waxman is handling the petition along with his team from Wilmer. Nathan Kelley (Perkins) is representing Mylan. Kelley is the former USPTO Solicitor and PTAB Chief Judge.
3. Full Scope Enablement in Amgen Inc. v. Sanofi, No. 21-757
Amgen also fits well as a companion case to Juno v. Kite. The difference is that Amgen asks about enablement rather than written description. Still, the focus is the same–does enabling “the invention” require enabling all potential embodiments (even those not yet comprehended by the patentee). As in Juno, the genus claim here is also functionally claimed, a feature that appears to make it more susceptible to invalidation under both WD and Enablement doctrines. I would have previously put this case even higher in the ranking, but the Gov’t recently filed an amicus brief in the case suggesting that the Court deny certiorari.
Jeff Lamkin (MoloLamkin) is representing the patentee Amgen in the petition. George Hicks (Kirkland) is counsel of record on the other side. The Gov’t CVSG brief was filed by folks at the DOJ SG’s. USPTO officials did not join. Although the internal politics are always unclear, this often means that the USPTO does not fully agree with the Gov’t position.
4. Skinny Label Infringement in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, No. 22-37
This case delves deeply into the patent-FDA overlap and involves an increasingly common situation “skinny label” situation. The setup involves an unpatented drug with multiple clinical uses, only some of which are patented. What this means is that a generic producer should be permitted to market the drug for the unpatented uses, but excluded from marketing the drug for the patented uses. One problem here is that the healthcare payers are going to recognize that the drugs are interchangeable and very quickly start buying the generic version even for the unauthorized patented use. One way to think about this case is the level of responsibility that the generic manufacturer has to make sure that its drug is not used in an infringing way. At what point do sales-with-knowledge equate with inducement?
The particular question presented focuses on FDA-approved labels that carve-out patented uses. In the process, the FDA starts with the branded drug’s label and asks the brand manufacturer to identify which parts of the labeled uses are infringing. Those labelled uses are then deleted from the label. Teva and the FDA followed that exact process in this case. But, the courts found that the “skinny label” still encouraged infringement — part of the problem was that the infringing and non-infringing uses were so similar to one another. Petitioner here is seeking a safe-harbor, asking: “If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?”
Chief Judge Moore wrote the opinion in this case joined by Judge Newman. Judge Prost wrote in dissent. After an initial outcry, the panel issued a new opinion that toned-things down a bit and suggested that labelling will usually not be infringing, but that this was somehow an exceptional case. Subsequently the full court denied en banc rehearing, with Chief Judge Moore re-justifying her position while Judges Prost, Dyk, and Reyna all dissented. The jury had originally sided with GSK — finding infringement. However, the district court rejected the verdict and instead granted Teva’s motion for judgment as a matter of no infringement. Judge Stark who is now a member of the Federal Circuit was the district court judge in the case.
Willy Jay (Goodwin) is handling the petition; Juanita Brooks (Fish) is in opposition.
5. Post IPR Estoppel in Apple Inc. v. Caltech, No. 22-203 (Briefing ongoing)
This important case raises a question of statutory interpretation regarding post-IPR estoppel: Does IPR estoppel 35 U.S.C. § 315(e)(2) extend to all grounds that reasonably could have been raised in the IPR petition filed, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.” Apple would like to challenge the validity of Caltech’s patents, was barred by the District Court based upon Apple’s unsuccessful IPR against the same patent.
Bill Lee (Wilmer) is counsel of record for petitioner. Briefing is ongoing in the case.
6. Judicial Recusal in Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 22-246 (Briefing ongoing)
Although a patent case, the focus here is about the judicial code. Cisco lost a $2 billion verdict, but was able to get the decision vacated on appeal because the Judge’s wife owned $5,000 in Cisco stock. The judge had placed it in a blind trust, but the appellate court found that was insufficient since the statute requires “divestment” under the statute. The petition asks whether this strict statutory interpretation is correct; and whether any impropriety can be excused as harmless error.
Former Solicitor Paul Clement is handling the petition.
7. Summary Judgment standard in Hyatt v. USPTO, No. 21-1526
My favorite part of this litigation is the mock-up created by folks at the USPTO of Gil Hyatt applying the “Submarine Prosecution Chokehold.” Although the image was a ‘just a joke,’ Hyatt is not joking about what it represents. In particular, Hyatt argues that the USPTO created a secret policy to block issuance of his patents, regardless of the merits of his particular claims. Hyatt filed an APA lawsuit seeking an order forcing the PTO to actually examine his patent applications. But, the district court issued a sua sponte summary judgment — finding that the office was already diligently working. Oddly though, the court did not apply the summary judgment standard provided by R.56 but instead drew inferences against Hyatt. The petition asks simply: “Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action.” Hyatt also argues that the district court applied too-high a standard with regard to setting aside past agency actions.
Famed professor of constitutional law Erwin Chemerinsky (Berkeley) filed the petition. The U.S. Gov’t waived its right to file a responsive brief.
8. Double Patenting and SawStop Holding LLC v. USPTO, No. 22-11
The petition here focuses on the non-statutory judicially created doctrine of obviousness type double patenting. It asks: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”
A good percentage of patents (about 10% or so) are tied to another patent via terminal disclaimer. In general, the patent office requires a terminal disclaimer in situations where a patentee is seeking to obtain a second (or subsequent) patent covering an obvious variation of an already obtained patent. Otherwise, the second patent will be rejected on grounds of obviousness-type double patenting. When I previously wrote about the case, I compared it to the Supreme Court’s abortion decision in Dobbs. In that case, the court explained that a right to abortion “is nowhere mentioned in the Constitution.” Similarly, obviousness type double patenting has no grounding in the Patent Act. Dobbs also rejected the 50 year old precedent of Roe v. Wade (1972). The fact that a precedent is old does not convert that precedent to a sacred text. One difference here is that OTDP has a somewhat older provenance than did Roe.
The need for terminal disclaimers was greatly reduced following the 1995-GATT patent term transformation. For the most part, all family members expire on about the same date. The big difference happens with patent-term-adjustment that can sometimes make a really big difference — especially if the patentee has successfully appealed. The SawStop situation represents an interesting case-study for anyone thinking about the ongoing importance of OTDP and Terminal Disclaimers.
David Fanning is inhouse counsel for SawStop and filed the petition. The USPTO (through the SG) waived its right to file in opposition.
9. Eligibility in Worlds Inc. v. Activision Blizzard Inc., No. 21-1554
Worlds was an early developer of 3-D virtual chatrooms and its US7,181,690 has a 1995 priority filing date. This particular patent has two steps to be performed on the client device being operated by a first user:
(a) Receive position information about some user-avatars
(b) Using that position information, determine which avatars to display to the first user
The courts found the claims directed to the abstract idea of “filtering.” The petition asks (1) what is the standard being “directed to” an abstract idea; (2) who bears the burden of coming forth with evidence on Alice Step 2. In particular, does a party seeking to invalidate a claim need to provide evidence of what was well-known, routine, and conventional? The petition here is really a follow-on to American Axle. That was denied certiorari at the end of the 2021-2022 term.
Wayne Helge (Davidson Berquist) is counsel of record for Worlds. Sonal Mehta (Wilmer) represents Activision, but only filed a statement waiving her client’s right to respond.
10. Mandamus Jurisdiction in CPC Patent Technologies PTY Ltd. v. Apple Inc., No. 22-38
This petition fascinated me for a couple of days as I tried to think through the scope of mandamus jurisdiction. We know that the Federal Circuit hears patent appeals, but the petition argues that the same court does not necessarily hear mandamus actions filed in patent cases. Rather, according to the petition, the Federal Circuit’s jurisdiction should depend upon whether the mandamus action itself arises under the patent laws. Here, the mandamus focused on transfer for inconvenient venue under Section 1404(a). Everyone agrees that issue is not patent law specific.
George Summerfield (K&L Gates) is handling the petition. Apple did not file a response.
11. Eligibility in Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281
This case has similar features to Worlds v. Activision and was also filed in prior to the denial of American Axle. The petition explains that the patents claim “electronics hardware device comprising a content player/remote-control combination having numerous concretely-recited components that undisputedly qualifies as a ‘machine’ or ‘manufacture’ under the statutory language of 35 U.S.C. § 101.”
12. Junker v. Medical Components, Inc., No. 22-26
Junker’s petition raises an issue that has repeatedly come before the court — the on sale bar. Here, the purported “offer to sell” was made by “a third party who had no right to sell the invention and with no involvement by the patentee?” Junker asks whether that counts as an offer?
13. Licensee Standing in Apple Inc. v. Qualcomm Incorporated, No. 21-1327
This petition raises the identical issue that Apple raised in a 21-746. That case was denied certiorari earlier in 2022 and is very likely to be denied here as well. The question presented: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.” Qualcomm restated the question as follows: “Whether a licensee that offers no evidence linking a patent’s invalidation to any concrete consequence for the licensee nevertheless has Article III standing to challenge the validity of the licensed patent.”
Mark Fleming (Wilmer) represents Apple and Jonathan Franklin (Norton Rose) represents Qualcomm.
14. Eligibility and Hardware in Tropp v. Travel Sentry, No. 22-22
This eligibility petition attempts to distinguish Alice on grounds of computer-technology vs real hardware with the following question presented: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101.” One issue with the petition is that the problematic claims don’t really claim the physical hardware (a padlock with a master key), but rather a process of giving the extra key to TSA. In some ways, I see this as a lower-quality version of American Axle.
15. PTO Acting Ultra Vires in CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527
Anyone working with inter partes reviews (IPRs) knows that the PTAB first decides whether to institute the IPR and, after instituting, will hold the trial and issue a final written decision. One oddity though is that the statute actually calls for the USPTO Director to decide the institution question with the PTAB only stepping in once the IPR is instituted. The current procedure exists because the PTO Director has delegated her institution authority to the PTAB. In its petition, CustomPlay asks the court to rule that this delegation is improper – a violation of “the statutory text and legislative intent.” In addition, the petition asks a constitutional due process question: “Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.”
16. Filler v. United States, No. 22-53
Filler had an interesting claim, but made a major error by dividing his patent rights between two entities in such a way that neither had enforcement power. Filler argues that the U.S. Gov’t used his patented invention without paying and sued in the Court of Federal Claims. The petition here asks about whether his Fifth Amendment takings claim was properly barred by the Assignment of Claims Act.
Filler is the inventor and is also an attorney (and MD and PhD) filed the petition himself.
17. Arunachalam v. Kronos Incorporated, No. 22-133
Lakshmi Arunachalam has filed a number of patent related petitions over the past several years. This one asks a number of questions including “Whether Trustees of Dartmouth College v. Woodward, 17 U.S. 518 (1819) was properly decided.”
The new en banc petition in Thaler v. Vidal offers potential for future development on the law of invention and inventorship.
by Dennis Crouch
Hi, my name is Dennis, I am a natural person, a human being, an individual. But, I also think of myself as a collective–trillions of cells and other biologic matter, only some of which expresses “my” DNA; a host of personalities all housed within a thick skull.
In my view, it is unquestionable that AI regularly contribute to inventive concepts so substantially as to be named joint-inventors alongside their human counterparts, if it were permitted. Many of us are hung-up on the notion that inventorship requires “conception in the mind”–a feat perhaps beyond any computer today. But conception is not a requirement for joint inventorship. Cases like Dana-Farber v. Ono help us understand how it might work. In Dana-Farber case, some of the joint inventors (our AI equivalents) provided data and analysis, but then the actual “conception” was done by a third party after receiving the data inputs. Even though only one of the inventors actually “conceived,” the Federal Circuit held that all three should be listed as inventors because each made substantial contributions that led to the conception. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020). See Toshiko Takenaka, Unravelling Inventorship, 21 Chi.-Kent J. Intell. Prop. 71 (2022).
The key legal justification for excluding AI is the traditional human-only rule of inventorship. Although the Patent Act does not expressly declare “inventors-must-be-humans” or “no-robots,” since 2011 it has stated that inventors are “individuals.”
(f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
35 U.S.C. § 100(f)/(g) (2011). Earlier this summer, the Federal Circuit sided against Dr. Stephen Thaler on this issue. Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). Thaler has been attempting to seek patent protection for two inventions created by DABUS, his AI computer. Id. In the case, the USPTO admitted (for the purposes of the litigation) that DABUS had conceived of an invention. Thus, the only question on appeal was whether the USPTO acted appropriately in denying patent protection solely based upon the fact that the purported inventor is non-human. Id.
The court sided with USPTO’s no-patent stance. It held that US Patent Laws require listing of an inventor, and that inventor must be a “natural person” — i.e., human being. Although the court cited several statutory justifications for its decision, the key factor came from the definitions found in 35 U.S.C. § 100 that identify inventors as “individuals.” The court concluded that the term “individual” is best interpreted as limited to a human being. Thaler, 43 F.4th at 1211. One quirk of this ruling is that this ‘individual’ definition was added quite recently as part of the 2011 America Invents Act and nothing in the legislative history indicates an intent to use the term to exclude AI from inventorship rolls.
Through his attorney (Professor Ryan Abbott), Thaler has now petitioned the Federal Circuit for en banc rehearing on the following question:
Whether an artificial intelligence can be an inventor for purposes of patent law, which implicates the most fundamental aspects of patent law, namely, the nature of inventorship and therefore whether AI discoveries can be patented.
Thaler en banc petition. The petition makes three key complaints against the petition, which I paraphrase below:
The panel selectively quoted from dictionaries for its conclusion that individuals are always human. The better definition of individual is a “distinct, indivisible entity”–a definition that would include an AI-inventor. I might ask, if an AI is not an individual, does that mean it is a collective?
The panel unduly disregard of the Patent Act’s promise of patent rights regardless of “the manner in which the invention was made” and without limiting eligibility scope only to areas contemplated by Congress. See 35 U.S.C. 103 (“Patentability shall not be negated by the manner in which the invention was made”); 35 U.S.C. 101 (“Whoever invents or discovers any new and useful process …”); Diamond v. Chakrabarty, 447 U. S. 303 (1980) (that the patent system allows for “inventions in areas not contemplated by Congress.”).
In the face of evolving technology that redefines the potential of inventorship, the panel failed to interpret the statute “in light of [the] basic purpose” of the Patent Act. Quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975).
Id. In some ways, Judge Stark’s opinion reads like a district court applying the law handed-down rather than an appellate court with a larger role of considering meaning and importance of ongoing precedent. Perhaps this makes sense, Thaler was the first precedential opinion authored by Judge Stark’s since joining the Court of Appeals earlier in 2022. Judge Stark was previously a district court judge in Delaware for more than a decade.
I have always seen the final sentence of Section 103 as an important declaration of patent law policy that goes beyond simply obviousness doctrine. “Patentability shall not be negated by the manner in which the invention was made.” One particular bit of the Federal Circuit decision that gets in my craw is the court’s statement limiting that provision as only applicable in the obviousness context. In my view, the statement should be applicable in the Thaler analysis as well as in other contexts, such as patent eligibility. I’m planning a subsequent post that will focus more on this issue.
If my calculations are correct, any Amicus Brief in support of Thaler (or Support of Neither Party) would need to be filed by Oct 3 (absent extension).
The absence of a dissent in the original opinion makes the odds of overturning the panel decision quite low–Thaler would need seven of the remaining nine active judges (assuming that none of the original three change their minds). But, Thaler may still appreciate an outcome where one or two judges offer some additional commentary that would then serve as fodder for the upcoming petition for writ of certiorari.
In re Google, 22-1611 (Fed. Cir. 2022) (non-precedential order)
In Arthrex, the Supreme Court rewrote the Patent Act, charging the USPTO Director with authority to review final written decisions stemming from inter partes and post grant review proceedings (IPR/PGR). One open question is the Director’s role in mill run patent applications that have been rejected by the Board. There are two particular actions that Directors have taken in recent decades:
Create a stacked rehearing panel that overturns the prior PTAB panel decision. This approach is typically taken when the Director wants to make a precedential statement on some matter of law or procedure.
If the party appeals, admit to the Federal Circuit that the PTAB erred and seek remand to reconsider the PTAB panel decision. This second path is the approach taken here for Google.
Google’s pending Application No 15/487,516 claims video processing method using adaptive composite intra-prediction. In its decision, the Board construed three key claim limitations as “conditional limitations.” The Board generally gives no patentable weight to conditional method steps in the anticipation/obviousness analysis. See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential). Google filed its notice of appeal to the Federal Circuit and must have had some discussions with the Solicitors office because the agency filed its request for remand even before Google filed an opening brief.
I have included the claim below, but the basic setup is that the claim includes the following stylized step:
A method comprising …
in response to a determination that a first block is available, generate a pixel value …
The basic question here is whether this claim limitation requires any action. The PTAB read it as merely conditional — effectively replacing it with the following:
A method comprising …
if the system determines that a first block is available, then generate a pixel value …
The Board explained its position that the claims did not recite a step of “determining” that the first block exists and so it is not required by the claims.
[W]e understand the phrase “in response to a determination that” a condition exists to be equivalent to a recitation of “if” that condition exists because claim 1 does not affirmatively recite a step of determining that the first prediction pixel is available prior to reciting the step that is performed in response to—i.e., when or if—such a condition exists.
PTAB Appeal 2020-005221. The PTAB then applied Schulhauser to conclude that “the Examiner need not present evidence of the anticipation of any of the disputed conditional method steps, because they are not required to be performed under the broadest reasonable interpretation of the method steps recited in representative independent claim 1.” Google sought reconsideration, but the Board stuck to its original decision.
Now before the Federal Circuit, the Director has concluded that the Board erred. Through the SG, the Director submitted an interesting reason for its determination–that a close reading of the specification shows that the first determination step is present in “every embodiment.” Thus, according to the Director, the PTAB’s reading of the claims as conditional limitations “would be inconsistent with the specification.”
Upon review, and under the specific facts of this case, the Director acknowledges that the Board erred in designating L1 and L2 as conditional limitations governed by Schulhauser because such a reading would be inconsistent with the specification, which teaches that for every embodiment a first prediction pixel is available and a determination of whether a second prediction pixel is available is made.
Dir Motion to Dismiss. This statement from the Director appears somewhat contrary to the usual approach of Broadest Reasonable Interpretation (BRI) which avoids importing limitations into the claims simply because they are present in each disclosed embodiment.
Google did not object to the dismissal and the Federal Circuit has ordered a remand.
One important caveat to this case — the application itself appears to still be unpublished. Thus, the information that I’m reporting comes only from public documents filed with the Federal Circuit. I don’t have the application itself or any of the briefs filed with the PTAB. I do have the challenged claim:
A method comprising:
generating, by a processor in response to instructions stored on a non-transitory computer readable medium, a decoded current block by decoding an encoded current block, wherein decoding the encoded current block includes adaptive composite intra-prediction, and wherein adaptive composite intra prediction includes:
in response to a determination that a first prediction pixel from a first block immediately adjacent to a first edge of the encoded current block is available for predicting a current pixel of the encoded current block:
determining whether a second prediction pixel from a second block immediately adjacent to a second edge of the encoded current block is available for predicting the current pixel, wherein the second edge is opposite the first edge; and
in response to a determination that the second prediction pixel is available, generating a prediction value for the current pixel based on at least one of the first prediction pixel or the second prediction pixel;
generating a reconstructed pixel corresponding to the current pixel based on the prediction value; and
including the reconstructed pixel in the decoded current block; and
Schulhauser involved a heart-monitoring method claim with the following conditional step:
triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;
Ex parte Schulhauser, APPEAL 2013-007847, 2016 WL 6277792 (Patent Tr. & App. Bd. Apr. 28, 2016) (precedential). The panel concluded that step in conditional form can be ignored for anticipation purposes. The Board relied particularly on the Federal Circuit’s non-precedential decision in Cyber settle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) where the court explained that: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Id. Schulhauser distinguished this method-claim from system claims that include the same conditional functionality since the system “still requires structure for performing the function should the condition occur.” Id. The MPEP now reflects this same approach:
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.
MPEP 2111.04 (II). The Board has relied upon Schulhauser in hundreds of decisions. However, there appears to be some ongoing debate within the PTAB about the scope of the case, with a number of cases having dissents on this point. See., e.g., Ex Parte Botman, APPEAL 2021-004052, 2022 WL 4093710 (Patent Tr. & App. Bd. Sept. 2, 2022); Ex Parte Gopalan, APPEAL 2017-007009, 2018 WL 2386111 (Patent Tr. & App. Bd. May 21, 2018); Ex Parte Erhart, APPEAL 2019-004505, 2021 WL 195811 (Patent Tr. & App. Bd. Jan. 8, 2021).
In the appeal, Google was represented by Jonathan Tietz and Andy Dufresne (Perkins). The per curiam order was issued by Judges Lourie, Chen, and Stark.
This is a Patent Term Adjustment (PTA) case. Back before 1995, patents were awarded a term of 17-years following issuance. As part of an international negotiation and with some anti-submarine policy justifications, the US switched over to a 20-year term that starts counting days as of the application’s filing date. The 20-year term from filing date was seen as roughly equivalent to 17-years from issuance since most patent applications take about three years to issue. In the end, this kept overall patent term roughly the same. But, it also allowed for some major variability. Some patent applicants were concerned that delays by the USPTO due to backlogs or unreasonable examination practices might effectively cut into the patent term. Congress heard those concerns and created the PTA system that adds extra days to the patent term when those delays exist. 35 U.S.C. § 154(b). Unfortunately, the PTA statute is not a model of clarity and has been the subject of numerous court battles over various quirky elements.
The provision at issue in Sawstop has to do with PTA added for PTAB appeals and district court challenges. Under the law, added term is triggered by the following:
(iii) appellate review by the [PTAB] or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability,
35 U.S.C. § 154(b)(1)(C)(iii).
I have written previously about Sawstop technology that covers a safety feature for power saws “that instantly stops the saw blade upon contact with flesh.” The appeal here is a consolidated appeal regarding two Sawstop patents. Sawstop is struggling because its patents are all expiring and competitors are hot-on-its-heels.
In the first case (‘476), the applicant had appealed an obviousness rejection by the examiner. The PTAB rejected the examiner’s decision, but simultaneously issued a new ground of rejection on obviousness. Thus, the ultimate conclusion was that the rejection was affirmed, albeit for different reasons. On remand, the claims eventually issued, but only after an RCE (which cut-off further PTA). After the patent issued, the owner asked for PTA associated with the PTAB appeal, but the PTO refused as did the district court.
In the appeal, the Federal Circuit has also sided against Sawstop. The rule quoted above is triggered by “a decision in the review reversing an adverse determination of patentability.” On appeal, the Federal Circuit found no reversal by the PTAB — although it did “cast aside the examiner’s basis for rejecting claim 11,” the Board simultaneously established reasoning for rejecting that same claim. The result was that the claim remained rejected. The Federal Circuit here focused on the substantive outcome — the patentee’s appeal was not successful and therefore there was no reversal.
The Federal Circuit also addressed a second element of the test — that the “patent was issued under a decision in the [appellate] review.” The court has interpreted that requirement as mandating that at least one claim considered by the PTAB have found its way into the issued patent without significant or substantive post-appeal amendments. Here, the patentee had amended the claims after the PTAB decision in order to achieve allowance. Thus, no Type-C PTA.
The second case (‘796) is a bit more complicated, the applicant had appealed rejections of claims 1 and 2 for anticipation a non-statutory double patenting (provisional). The Board issued a partial-reversal–holding that claim 1 was no good, but claim 2 was patentable. But Sawstop really wanted claim 1 and so filed a civil action with the DC District Court–and won that case. The one caveat is that the civil action focused only on anticipation and did not address non-statutory double patenting. Back at the Office, the PTAB maintained its double-patenting rejection and Sawstop was given a choice: (1) drop claim 1 or (2) file a terminal disclaimer. Sawstop chose the latter, and cancelled claim 1. But again, filed an RCE with several further amendments to other claims and the specification before eventual allowance.
The USPTO awarded PTA for the successful PTAB appeal, but refused any PTA for delay in getting the district court decision. On appeal, the Federal Circuit affirmed this analysis again on two grounds. First, although the district court did reverse the anticipation claim, it did not decide that claim 1 was “patentable.” As such, the court did not “revers[e] an adverse determination of patentability.” Sawstop had argued that – at the time – the OTDP rejection was only provisional and thus should not count. The Federal Circuit might have bought this argument if Sawstop also explained that it was somehow barred from including the issue in its Section 145 Civil Action, but Sawstop did not provide such an explanation. The second reason for agreeing with the PTO is that Claim 1 (the Subject of the District Court civil action) never issued in the patent. And, as discussed above, the court has interpreted the rule to only apply when the claim at issue in the ‘appeal’ ends up in the issued patent. Thus, no Type-C PTA for this one either.
Throughout this process, the Federal Circuit repeatedly justified its ruling as a plain language interpretation of the rule. I’ll note, however, that the court does not do so with the “appellate review” portion of the statute. A Section 145 civil action is not an appellate review of the PTAB decision, but rather separate action. See Kappos v. Hyatt, 566 U.S. 431 (2012). But, the court appears to have no trouble seeing it as an appeal in this context.
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Judge Linn wrote the decision here joined by Judges Newman and Chen. Sawstop was represented by Jared Newton and his team from Quinn Emanuel as well as David Fanning, SawStop’s inhouse counsel. Hugham Chan the E.D. Va. US Attorney’s Office argued for the Gov’t. Chan & Newton both graduated from GWU Law in 2010 & 2011 respectively. Chan is a former clerk of Judge Chen; Newton is a former patent examiner.
Inaction is generally defined as “the lack of action.” The two terms are antonyms. Still, courts regularly find that–at times–inaction constitutes action. Most of us learned in criminal law about crimes of omission where the actus reus is the “failure to perform a legal duty even when one has the capacity to do so.” The Federal Circuit performed this analysis in its recent decision in Gilbert Hyatt v. USPTO, 21-2324, — F.4th — (Fed. Cir. Sept 8, 2022).
Hyatt’s microprocessor patent applications have been pending since the 1990s and claim priority back much earlier filings. All this was prior to the 1995 implementation of the Uruguay Round Agreements Act that started measuring patent term from the filing date. Under the old rules that govern Hyatt’s applications, a patent is given force for 17 years following issuance. For the most part, these applications are also unpublished and the file histories are kept secret.
Hyatt’s appeal here relates to his pending U.S. Patent Application No. 08/435,938. Back in 2013 the application included about 200 pending claims. However, the USPTO forced Hyatt to select eight of those claims for examination as part of the PTO’s Hyatt-Management-Efforts. The examiner then rejected all eight of those claims. Hyatt then significantly amended the pending claims. According to the Federal Circuit, the amendments replaced all of the words of one of the claims except for the “A” starting the claim and the word “comprising.” The examiner then responded with a restriction requirement.
For most patent applicants, restriction requirements are just slightly annoying and add some cost to the clients. But, for the most part the restriction/divisional don’t substantially reduce the rights. And, in fact at times they can be beneficial because they avoid obviousness-type double patenting problems.
For Hyatt, the restriction requirement was very problematic. If he filed a divisional application to the remaining claims, he would lose his pre-GATT status. The result for the divisional application would be zero-days of patent term. Hyatt filed a civil action that the PTO’s restriction requirement violated the Administrative Procedure Act (APA). In particular, Hyatt pointed to 37 C.F.R. § 1.129 as prohibiting the restriction practice. The district court sided with the USPTO as has the Federal Circuit on appeal.
Section 129(b) generally prohibits the USPTO from issuing a restriction requirement in applications that has a priority claim from at least three years before the the June 1995 cut-off. Hyatt’s case meets that three year timeline. The provision also includes the following exception: A restriction requirement is allowed if: “(ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant.” The fight here is on the question of whether the PTO’s failure to issue a restriction requirement prior to April 1995 was “due to actions by the applicant.”
Due to Action by the Applicant: The USPTO’s explains that it didn’t issue a restriction requirement pre-1995 because, back then the application’s claims were all directed to the same invention. Hyatt’s amendments 20-years later necessitated the restriction. In this scenario, the USPTO explained that Hyatt’s pre-1995 action was that he “failed to disclose claims to a separate invention” pre-1995.
On appeal, the Federal Circuit agreed that Hyatt’s pre-1995 actions could be characterized as the action of “withholding” the future claims, and it is easy imagine the causation chain–the PTO’s failure to issue a restriction pre-1995 was due to Hyatt’s withholding of the future claims. Since around 2001, the MPEP explanation of how the rule works included an example that appears to exactly match Hyatt’s situation:
Examples of what constitute “actions by the applicant under 37 CFR 1.129(b) are: … (C) applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995.
MPEP 803.03 (8th Ed, 2001). Here, Hyatt disclosed several different inventions “delayed presenting claims” until much later. The court notes, as it always does, that the MPEP does not carry force of law. Still, the manual does at least put everyone on notice.
The Federal Circuit’s recent decision in Arendi S.A.R.L. v. LG Electronics Inc., 21-1967, — F.4th — (Fed. Cir. Sept 7, 2022), upholds Judge Stark’s discovery penalty against the patentee Arendi with the result that the trial moves forward against only one product of the hundreds that were accused.
Arendi sued LG in 2012 for infringing its US7917843. As required by Delaware local rules, Arendi provided a set of infringement contentions to LG. The local rules require the patentee to first provide a list of accused products and patents alleged being infringed. Subsequently, the patentee must disclose a set of initial claim charts mapping showing how each accused product maps to each asserted claim.
In Delaware, these local rules are seen as discovery requirements that operate alongside other mandatory discovery found in FRCP 26. See D. Del. Default Standard for Discovery § 4. The local rule states that the required disclosures here are “initial” and that the parties “shall be permitted to supplement.”
In its disclosures, Arendi first provided a list of 200+ infringing products. But then when it came time to provide the claim charts, Arendi addressed only one product (the LG Rebel 4) and labelled it as “exemplary.” Later, Arendi and LG agreed on
eight representative products to stand-in for all accused products. The Rebel 4 was one of these eight. Despite the agreement on exemplary models, LG twice warned Arendi that it had not yet provided the claim charts as required by the local discovery rules. Arendi did not respond to those warnings.
Following the close of fact discovery, Arendi provided an expert report that spelled out its infringement contentions for five additional representative models. At that point, LG moved to strike those portions of the expert report based upon Arendi’s failure to timely disclose its infringement contentions as required by the local rule. Judge Stark was in charge (during his tenure as a district court judge) and granted the motion — holding that Arendi had “failed to fulfil its discovery obligations” and thus had lost its right to provide such disclosures at that point. In particular, the district court also noted the prejudicial impact since: “LG understood Arendi was accusing only the Rebel 4.”
At that point, Arendi simply filed a new lawsuit, still in the District of Delaware specifically alleging infringement of the excluded products from the expert report. That new case was also routed to Judge Stark who dismissed it with prejudice under the duplicative-litigation doctrine. On appeal, the Federal Circuit has affirmed.
Improper duplicative litigation typically involves a plaintiff bringing two different lawsuits that align along four axes: (1) same claims (2) against the same defendant (2) in the same court (4) at the same time. Walton v. Eaton Corp., 563 F.2d 66 (3d Cir. 1977) (en banc). In that scenario, the district court is given discretion to dismiss one of the cases as part of its “general power to administer its docket.”
On appeal, Arendi argued that its two cases did not involve the same claims once the district court granted LG’s motion to strike. In general, a patentee’s infringement assertion against one product is a different claim than its assertion of the same patent against a different product. On appeal though the Federal Circuit found that Arendi had mischaractered the district court’s order.
The court did not grant LG’s motion to strike parts of Arendi’s infringement expert report because Arendi failed to sufficiently accuse the non-Rebel 4 products. The court granted the motion to strike because Arendi “failed to fulfill its discovery obligations” with respect to those products, so Arendi’s infringement allegations in its expert report were procedurally untimely.
Slip Op. The distinction here is technical, but that is civil procedure. In Arendi I, the district court did not did not dismiss Arendi’s claims against non-Rebel products. Rather, the court but rather excluded the evidence necessary for Arendi to actually win on those claims. The difference is important because it meant that the same claims were still pending in both cases at the same time. “Left with the simple and obvious fact that the non-Rebel 4 products accused in Arendi II are identical to products accused in Arendi I, we determine that the district court did not err in dismissing the Arendi II complaint as improperly duplicative.” Id.
The Arendi I court indicated that it will consider allowing the amendment depending upon the outcome of this appeal. Of course, by now Judge Stark has moved to the Federal Circuit and the case is currently not assigned to any judge.
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Opinion by Judge Prost
Judges: Prost, Chen, Stoll
Kemper Diehl represented the plaintiff on appeal along with his team from Susman Godfrey; Andrew Schwentker from Fish & Richardson argued for the defendant.
The pending appeal in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) raises a number of important design patent law questions, including an issue of first-impression of the scope of “comparison prior art” available for the ordinary observer infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) and its key predecessor Smith v. Whitman Saddle Co, 148 U.S. 674 (1893). Since Egyptian Goddess, the Federal Circuit has placed renewed importance on the claimed “article of manufacture,” but not in the comparison portion of infringement analysis.
In 2021, the Federal Circuit issued the important, albeit short-winded, design patent decision In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021). In SurgiSil, the court held that the particular article-of-manufacture recited by the claims should not be ignored, even for anticipation purposes. SurgiSil’s cosmetic lip implant has a remarkably similar shape to lots of other two-pointed cylinders. As an example, the image above shows the SurgiSil lip implant (bottom) compared against a prior art blending stump (top) sold by Blick.
The PTAB found SurgiSil’s claim anticipated, but the Federal Circuit reversed–holding that a blending stump does not anticipate a lip implant.
Utility patent attorneys are familiar with the Schreiber decision that allows for non-analogous art to be used for anticipation rejections. In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997)(“whether a reference is analogous art is irrelevant to whether that reference anticipates”). In some ways, Schreiber could be seen as intension with SurgiSil. In reality though the two decisions fit well together and SurgiSil did not make a special design patent rule or reject Schreiber. Rather, Surgisil simply interpreted the claim at issue as requiring a lip implant and then found that a non-lip-implant didn’t satisfy that claim limitation. I will note that SurgiSil was a patent applicant’s appeal from the USPTO. The case was remanded back to the USPTO 10 months ago, and not patent has issued yet. I expect that the examiner has now rejected the claim on obviousness grounds.
SurgiSil, coupled with the court’s prior decision in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), place new weight on the claimed ‘article of manufacture.’ On open question is how this focus should play out in the infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).
A design patent’s scope is typically determined by its recited article of manufacture and single embodiment shown in the drawings. An accused design does not have to exactly match the drawings. Rather, what we do is ask whether an “ordinary observer” would be deceived that the accused design is the patented design. Egyptian Goddess. Before making the comparison, the ordinary observer is supposed to become familiar with the prior art (if the issue is raised). The prior art is used to help measure the scope of the claims. If there is no prior art remotely similar, then the patented design is going to be given a broader scope by the ordinary observer; on the other hand, when the prior art is quite similar to the patented design the patent scope will be narrow. Of note, comparison prior art is only used at the accused infringer’s behest, and so the issue will strategically arise only when the defendant has evidence of very similar prior art.
The open question: What prior art should we look to when making a comparison? That question is before the court in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) (pending before the Federal Circuit). In the case, the accused infringer (Seirus) had some spot-on comparison prior art, the only problem is that the references were sourced from disparate articles of manufacture far afield from Columbia’s claimed “heat reflective material.” The case is potentially big because of the profit disgorgement remedy available in design patent cases. 35 U.S.C. 289 (“[the infringer] shall be liable to the [patent] owner to the extent of [the infringer’s] total profit”). And, we might expect a strong potential that a decision here on the infringement side will reflect-back to also apply in any obviousness analysis.
I have written before about the Columbia v. Seirus lawsuit that involves the reflective (but water permeable) inner layer that both use to line their cold weather gear. Columbia’s Design Patent No. D657,093 claims the “ornamental design of a heat reflective material” as shown the drawings. As you can see from Figures 1 and 2 below, the design shows a wave-like design, which the inventor (Zach Snyder) says was inspired from his time living in Arizona and seeing heat ripple mirages rising from the ground.
The Seirus product is similar and uses a wave/ripple design. Early Seirus products lacked branding, but Seirus later added its brand name to the designs in order to promote its brand and avoid confusion. If you have seen these designs on apparel liners, it is coming from Seirus brand. Although Columbia has the patent, the company initially launched its product using a pixilated design (covered by a separate design patent) and later decided to not adopt the wave in order to avoid confusion with Seirus.
At trial, the jury was shown images of the patent as well as the accused product in order for it to conduct the ordinary observer test. The Egyptian Goddess infringement analysis also requires consideration of the prior art. Seirus presented some visually close references, including a 1913 utility patent covering the inner tire liner. (Fig 5 below from US1,515,792). The court limited the scope of comparison prior art to only fabrics for the Egyptian Goddess comparison. That tire patent was allowed because the inner layer was in a fabric form.
At trial, the jury sided with the defendant Seirus and found the patent not infringed.
Now on appeal, the patentee argues that infringement analysis prior art (“comparison prior art”) should be limited by the patent’s stated article of manufacture. If the Columbia court had limited comparison prior art to only those showing “heat reflective material,” it would have all been excluded. But, the district court allowed-in the prior art from unrelated arts, and then went further by precluding Columbia from asking the jury to reject the unrelated comparison prior art. The basic idea for limiting comparison prior art stems from the same notions expressed by the Federal Circuit in SurgiSil and Curver Luxembourg: design patents do not cover bare designs but rather designs “for an article of manufacture.” 35 U.S.C. 171. And, that “article of manufacture” portion of the law should remain at the forefront of all design patent doctrines. In Egyptian Goddess, the patent covered the “ornamental design for a nail buffer” and all the comparison prior art references were also nail buffers. 543 F.3d 665 (Fed. Cir. 2008). Likewise, in Whitman Saddle, the design patent at issue was directed to a “design for a riding saddle,” and the prior art used in comparison was also a riding saddle. 148 U.S. 674 (1893). But, the district court in Columbia refused to limit comparison prior art to only the same article of manufacture. The district court concluded that such a ruling would improperly import too much functional into the design patent right — design patents cover form, not functionality.
In my view, Columbia’s proposal of a strict article-of-manufacture limitation is too limiting because it does not reflect the perspective of either a designer or an ordinary observer and because it offers the potential opportunity for undue gamesmanship in the writing of the claims. As an alternative rule of law, the patentee suggests that the scope of comparison prior art be limited to articles that are either the same article of manufacture or “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs” This test comes from Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997) and was used to define the scope of prior art for an obviousness test rather than comparison prior art for the infringement analysis. But, it seems to roughly make sense that the same scope of prior art should be considered both for obviousness and for infringement analysis — although obviousness is from the perspective of a skilled designer and infringement is looks to the ordinary observer (i.e., consumer).
I would argue that even Columbia’s broader alternative approach is too narrow. In Columbia’s asserted patent, the images (below) show the use of the material as an inner liner for various articles of clothing as well as an outer liner for a sleeping bag. It would make sense to me that an ordinary observer might be deceived by other apparel liners using the same wave, even if not “heat reflective;” and thus that a jury should be permitted to consider those products as comparison prior art in the Egyptian Goddess infringement analysis. Unfortunately for Columbia, my broader notion of comparison prior art makes their case difficult since at least one of the comparison references shown to the jury was the wave pattern used as the outer liner of a rain jacket, US5626949, and all of the references are some form of fabric. Further, in some ways Columbia opened the door to a very broad scope of comparison prior art by including Figure 1 (shown above) claiming the material as a pattern apart from any particular application (such as those shown in other figures).
There are two primary procedural mechanisms to limit the scope of comparison prior art. (1) exclude prior art from consideration as irrelevant; (2) allow the jury to consider the evidence, but allow the parties to also introduce evidence regarding the extent that the prior art might influence the ordinary observer or skilled artisan. These are all issues that folks have repeatedly worked through (and continue to argue about) with regard to validity and obviousness in utility patents, but they remain undecided in the design patent infringement context post Egyptian Goddess. The appellate brief asks three particular questions on point:
What is the relevant scope of “comparison prior art” that is to be considered in a design patent infringement analysis?
Is it error to instruct the jury that all prior patents are comparison prior art to a design patent, and to fail to instruct the jury to limit the scope of comparison prior art to those related to the claimed article of manufacture?
Was it an error to prohibit Columbia from distinguishing comparison prior art on grounds that it failed to disclose a the claimed article of manufacture?
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. (Fed. Cir. 2022) (Appellant’s opening brief).
Now lets talk about the Logo. The figure above might be the key exhibit of the whole case. The figure shows the Seirus design with an overlay from Figure 2 of the Columbia patent. As you can see, the waves fit up almost perfectly (after a bit of resizing). A detailed analysis can find other differences in the waves, but the key visual difference is the repeated Seirus logo.
The importance of those logos was a key element of the prior appeal in the case. Columbia Sportswear N.A., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (Columbia I) The leading precedent of L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) indicates a copycat cannot escape design patent infringement by labelling products with a different trade name. (Images of the L.A. Gear patent and Accused infringer below). In Columbia I, the Federal Circuit distinguished L.A. Gear by explaining that the precedent “does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” Id. Rather the logo should be considered for its “effect of the whole design.” Id. (Quoting Gorham).
In the second trial, Seirus spent some time focusing on the logos as important design elements and that may well have made the difference for the jury. In particular Seirus provided evidence that the logos were arranged and designed in a decorative way to be both ornamental and to catch attention. In addition, the logos are used to break-up the wave so that folks don’t get hypnotized. In other words, the logos were more than mere labeling. Still, on appeal Columbia has asked the appellate court to address these issues once again in the form of objections to the jury instructions:
Did the court err by failing to instruct the jury – that in this case – confusion (or lack of confusion) as to the source of goods “is irrelevant to determining whether a patent is infringed?” Columbia suggests that the problem comes about with the infringement instructions that focus on “deceiving” consumers. Columbia also implies that in some cases customer confusion as to source could be relevant evidence — such as in cases where the patentee also manufactures a product covered by the patent. Here, however, Columbia does not practice the patented invention.
Did the court err by failing to instruct the jury that “Labelling a product with source identification or branding does not avoid infringement?” (Quoting L.A. Gear). This final question appears to be rehashing the issue decided in Columbia I and so has presumably become unappealable law of the case. For its part, Columbia argues that “[t]o the extent Columbia I is in conflict with Unette, Braun, or L.A. Gear, the prior cases control.” On this point, it appears that Columbia may be preserving the issue for en banc or Supreme Court review.
Nike, Inc. v. Adidas AG & Kathi Vidal, 21-1903 (Fed. Cir. 2022)
This ongoing dispute between the two athletic apparel companies has been ongoing since Adidas filed its IPR petition back in in 2012. IPR2013-00067. The decade is explainable procedurally–this is the third appeal in the case. The appeals have all centered on Nike’s proposed substitute claims. Initially, the Board refused to allow Nike to enter a substitute claim. That decision was partially vacated on appeal by Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (Nike I) and then the doctrine of allowing substitute claims was substantially shifted by the court’s en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). The Board then issued a second written decision concluding that the substitute claims were obvious. On appeal, the Federal Circuit again vacated based upon the PTAB’s failure to provide notice that it would rely upon a particular prior art reference (Spencer). Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020) (Nike II). Back on remand, the Board opened the case to additional briefing on obviousness and then concluded again that the new claims were obvious. The PTAB again relied upon Spencer to teach a particular stitch configuration for flat lace holes.
Ordinary IPR proceedings place the burden of proof on the petitioner who challenged the patents. 35 U.S.C. 316(e) (“petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). Things get a little bit tricky with amended and substitute claims. Originally (pre-Aqua), the Board had held that the patentee had the burden of showing the patentability of any new claims. However, in Aqua, the en banc Federal Circuit held that 316(e) applies also to amended claims. Aqua (the AIA “places the burden of persuasion with respect to the patentability of amended claims on the petitioner.”).
Who Has the Burden – Petitioner, Patentee, or the Board?: In adversarial proceedings, we typically argue about which party has the burden of proving some factual contention. At times, however, the burden is placed upon the judicial tribunal instead. In my civil procedure class yesterday we covered Rule 11 sanctions and discussed how the rules empower the judge to act sua sponte, but must issue a written order that “describe the sanctioned conduct and explain the basis for the sanction.” FRCP R. 11.
In this case, it was the Board that raised the use of Spencer to teach the lace-hole in the substitute claim. And, despite the seeming direct statement from Aqua that the petitioner bears the burden, the Board concluded that in that situation the Board could take-on the burden of persuasion itself. The Board noted the unusual circumstances of substitute claims that raise new issues not expected by the petition and that – at times petitioners “fail to raise certain evidence of unpatentability that is readily identifiable and persuasive.” In order to protect the integrity of the system, it is the Board’s responsibility to step-up and provide the evidence. The Board read Aqua as prohibiting any shifting of the burden onto the patentee, but failing to provide any guidance in the situation of patentability questions raised by the Board.
On appeal here, the Court refused to particularly answer this question. Rather, the court noted that the petitioner (Adidas) met the burden of proof in its briefing on remand. Thus, even if the Board’s statement regarding its burden is in error, that error is harmless.
The Board and Adidas’s arguments mirror each other, and therefore, the outcome below would have been the same regardless of whether the burden fell to Adidas or the Board. We thus find it unnecessary to determine here whether, in an inter partes review, the petitioner or Board bears the burden of persuasion for an unpatentability ground raised sua sponte by the Board against proposed substitute claims.
Slip Op. Obviousness affirmed.
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One reason why it is totally fine for the court to duck the question of burden allocation is that the Patent Office has adopted a revised rule that expressly allocates the burdens of persuasion. The rule codified at 37 C.F.R. § 42.121(d). Under the new rules a petitioner always has the burden: “A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable.”
Patent cases regularly involve expert testimony about the how a “person having ordinary skill in the art” (PHOSITA) might think. PHOSITA is the objective ‘reasonable person’ that serves as a reference point for most patent doctrines. Often, PHOSITA is particularly defined by some educational or experience level related to the particular area of technology. The intuition here is that someone very little experience is likely to see an incremental invention as patentable; while someone with a very-high level of skill might see the same incremental advance as obvious. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . . while a higher level of skill favors the reverse.”). Although this intuition generally makes sense, most agree that particulars are fairly irrelevant.
One difficulty with patents is that the inventions often bridge two or more major educational areas. A good example of this is Best Medical Int’l., Inc. v. Elekta Inc., — 4th — (Fed. Cir. Aug 26, 2022). Best’s patents cover a method of optimizing a radiation beam for use in tumor targeting. US 7,015,490. The invention requires understanding of how radiation treatment works and its impact on tumor growth. In addition, the invention requires a substantial amount of computer programming to implement the particular algorithms.
In the IPR, the patentee introduced testimony from Daniel Chase who has been designing and running radiation plans for decades. One problem here, although Chase has been doing this work and has expertise in radiation therapy design and optimization, he is not a computer programmer.
The basic rule with experts testifying about PHOSITA appears to be that the experts need to personally be at or above PHOSITA level.
[W]here an issue calls for consideration of evidence from the perspective of one of ordinary skill in the art, it is contradictory to Rule 702 to allow a witness to testify on the issue who is not qualified as a technical expert in that art.
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)
In Best Medical, the PTAB qualified Chase as an expert as to portions of the invention, but then highly discounted his testimony regarding obviousness of the computer programming aspects of the invention. On appeal, the Federal Circuit gave deference to the Board’s factual conclusion that PHOSITA would have computer programming experience and affirmed that conclusion.
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Best Medical also includes a small but important mootness decision. In the case, the patentee caught itself in the eye of the needle. In particular, an issue became moot after the PTAB’s decision, but before it filed the notice of appeal. On appeal here, the Federal Circuit found that the decision stands cannot be appealed; and no Munsingwear vacatur.
We talked about the IPR above. In addition, the petitioners had also challenged the same patent via ex parte reexamination. In the reexam, Best Medical cancelled claim 1, but did so “without prejudice or disclaimer.” Claim 1 had also been challenged in the IPR and Best Medical asked the PTAB to also drop that claim — but the PTAB refused and instead issued its final written decision that Claim 1 was obvious. Why?: The reexam was still pending and Best Medical had not filed a statutory disclaimer as to claim 1. The Board explained that “Under SAS we still have to issue a ruling on that claim unless it’s actually disclaimed.” On appeal, the Federal Circuit found no problem with the Board’s approach: “We cannot say that the Board erred in addressing claim 1’s patentability under these circumstances.”
Ok if the Board had power to hold claim 1 obvious, then the patentee should have a right to appeal that decision. Right?-Wrong. The catch here is that the Reexam ended before the appeal here and Best Medical did not appeal claim 1. At that point, claim 1 was dead and gone and a moot point.
Why even appeal a claim that you cancelled? The patentee doesn’t want the claim back, but is concerned that the IPR decision regarding claim 1 could create some amount of res judicata that might later inhibit its ability to enforce similar claims. An examiner in a separate case with a claim similar to claim 1 has apparently already stated that she is “essentially bound by the Board’s reasoning” On appeal though the Federal Circuit found this reasoning insufficiently concrete to create standing. In particular, the court apparently doubted the examiner’s reasoning. “Indeed, we know of no cases that would apply collateral estoppel in these circumstances, nor has BMI cited any.” The court also concluded that potential collateral consequences are generally insufficient on their own to confer standing to appeal. Thus, the appeal on claim 1 is dismissed as moot.
To be clear, this still looks like a good outcome for the patentee because of the general approach to issue preclusion that “non-appealable issues and judgments are without preclusive effect.” SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373 (Fed. Cir. 2016).
The Federal Circuit’s decision here is a bit squirrelly for those of you who know about the Munsingwear line of cases. US v. Munsingwear, Inc., 340 U.S. 36 (1950), involved charges of violating WWII era price regulations. The district court had dismissed the case on the merits. Meanwhile, while the case was on appeal, the President cancelled and annulled the regulation. This seemingly made the appeal moot–except for the potential collateral consequences. In its decision, the Supreme Court vacated the judgment below with instructions to dismiss the case.
That procedure clears the path for future relitigation of the issues between the parties and eliminates a judgment, review of which was prevented through happenstance. When that procedure is followed, the rights of all parties are preserved; none is prejudiced by a decision which in the statutory scheme was only preliminary.
Munsingwear. In Best Medical, the Federal Circuit distinguished Munsingwear based upon timing of the appeal. The apparent difference: In Munsingwear the case became moot after the notice of appeal had been filed. In Best Medical the case became moot before the notice of appeal.
We also hold that Munsingwear vacatur is inapplicable here because this appeal did not become moot during the pendency of the appeal. Rather, the “mooting” event— claim 1 being finally canceled—occurred before BMI filed its notice of appeal.
Slip Op. This final bit appears potentially wrong to me. The Federal Circuit does not cite any prior cases holding that Munsingwear does not apply to cases that become moot during that short window between a lower court’s final judgment and the filing of a notice of appeal. But, I have not seek a case on-point yet.
This decision authored by Judge Chen and joined by Judges Taranto and Clevenger appears as something of a tour-de-force rejecting a large number of spurious eligibility arguments. The court seemingly made the case precedential to help avoid seeing these same arguments arise again.
Jeffrey Killian filed his patent application back in 2014 seeking to patent his computerized algorithm for identifying “overlooked eligibility for social security disability insurance” and other adult-child benefits. The basic approach is to get access to state records of individuals receiving treatment for developmental disabilities or mental illness from a state licensed facility. Those records are then compared against the Federal SSDI rolls. Once an individual is identified, the claims then call for information a GUI to open for a caseworker who inputs various information such as SSN, birth information, family information in order to determine eligibility for benefits. The examiner found the claims novel, non-obvious, and sufficiently definite. But, still, the claims suffered from the fatal defect of being directed toward an abstract idea. The PTAB affirmed the examiner rejection of all pending claims — concluding that the claims were directed to an “abstract mental process.” Although the claim recited various technology, the Board concluded that those were ancillary under Alice Step 1 (“insignificant extra-solution activity”); and under Alice Step 2, those additions were insufficient to transform the unpatentable idea into a patent eligible invention. On appeal, the Federal Circuit has affirmed.
Step 1. At Step 1 of the eligibility exception analysis, the court asks whether the claims are “directed to” an unpatentable exception, such as an abstract idea. In that process, the court endeavors to consider the claimed invention’s “character as a whole.” Here, it found that the “thrust” of the claims is collection and examining of data. Those are steps that humans do regularly in their own mind and, as such, the court found them an unpatentable abstract idea. The claims also recite various computer technology and use of input screens. However, the court the extra activity insufficient under Alice: A claim does not pass muster at step two by “[s]tating an abstract idea while adding the words ‘apply it with a computer.'” Slip Op. (quoting Alice).
Killian argued to the appellate panel that the eligibility standard applied by the USPTO was arbitrary and capricious–thus violating due process and APA requirements, inter alia. The court disagreed and provided two responses. (1) Appeal to Authority: The rules here come from the Supreme Court and therefore are not arbitrary & capricious; (2) Appeal to Reason: The Federal Circuit has provided sufficient guidance on how to apply the doctrine and how to figure out what counts as an abstract idea.
Although there is no single, inflexible rule for the abstract idea inquiry, our court has provided guidance as to what constitutes an abstract idea. We have explained that, first, “[t]he ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs. Once we identify the “focus of the asserted claims,” we may consider whether the claims “fall into a familiar class of claims directed to’ a patent-ineligible concept.” Elec. Power Grp.
We have provided still further guidance for those familiar classes of claims. For example, in the context of claims to results, we have explained that claims that “simply demand[] the production of a desired result . . . without any limitation on how to produce that result” are directed to an abstract idea. Interval Licensing. In the context of mental processes … we have explained that if a claim’s steps “can be performed in the human mind, or by a human using a pen and paper,” and the elements in the claim do not contain a sufficient inventive concept under Alice/Mayo step two, the claim is for a patent-ineligible abstract idea. Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327 (Fed. Cir. 2020) And we have explained that “[i]nformation as such is an intangible”; accordingly, “gathering and analyzing information of a specified content, then displaying the results” without “any particular assertedly inventive technology for performing those functions” is an abstract idea. Elec. Power Grp. We have provided further guidance for “cases involving software innovations,” where the abstract idea “inquiry often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’ ” Finjan.
Our case law also provides guidance as to “inventive concept,” particularly in the context of claims for computer implementations of abstract ideas. We have explained that claims for methods that “improve[] an existing technological process” include an inventive concept at step two. BASCOM. And claims that “recite a specific, discrete implementation of the abstract idea” rather than “preempt[ing] all ways of” achieving an abstract idea using a computer may include an inventive concept. Id. But claims to “an abstract idea implemented on generic computer components, without providing a specific technical solution beyond simply using generic computer concepts in a conventional way” do not pass muster at step
two. Id. “Neither attempting to limit the use of [the idea] to a particular technological environment nor a wholly generic computer implementation is sufficient.” buySAFE.
Slip Op.
Kilian argued that prior eligibility precedent should not apply to him because he did not have the opportunity to litigate those cases. On appeal the court rejected that attempt to undermine classic common law methodology.
Killian argued that the search for “inventive concept” at Alice Step 2 is improper because the Invention Requirement was eliminated by the 1952 Patent Act. On appeal, the court noted first that the old “invention” requirement is different from the “inventive concept” element of Alice. And, take it up with the Supreme Court.
Killian argued that the “mental steps” doctrine has no foundation. On appeal, the court found that argument “plainly incorrect” based upon statements from the Supreme Court in Mayo (quoting Benson).
Killian argued that the PTO failed to provide any actual evidence that its computer usage was routine and conventional. On appeal, the Federal Circuit pointed to Killian’s patent application statement that the claimed method “may be performed by any suitable computer system.” That said, the appellate court appears to have accepted the implicit judicial notice from the Board that “operations of storing, analyzing, receiving, and writing data are primitive computer operations found in any computer system.” At this very basic level, these issues can really be seen as questions of law (and thus subject to precedential enforcement). “As the Supreme Court has explained, generic computer functions, performed on, as the application itself admits, any generic computer, do not provide an inventive concept.”
If there had been a true question of fact in dispute, then prior precedent regarding similar inventions would not automatically establish those factual conclusions outside of the context of issue preclusion. Here, the patentee’s “specification admits that the computer, which the Board correctly identified as the additional element of the claims, is well-understood, routine, and conventional, no further evidence is needed.” Slip Op.
The AIPLA Journal Quarterly has been publishing articles since its first 1972 issue. That original issue included articles from Retired Supreme Court Justice Tom Clark as well as Sixth Circuit Chief Judge Harry Phillips and CCPA Judge Giles Rich.
Tom C. Clark, The Patent System Deserves Clean Hands, 1 AIPLA Q.J. 9 (1972) (arguing for doctrine of unenforceability for failure to disclose known prior art to the USPTO).
Harry Phillips, Burden of Proof in Patent Cases, 1 AIPLA Q.J. 17 (1972) (describing the lack of harmony among the various circuits).
Giles S. Rich, Laying the Ghost of the “Invention” Requirement, 1 AIPLA Q. J. 26 (1972) (walking through the history of drafting the 1952 Patent Act obviousness requirement).
I’m happy that the most recent issue – 50 years later – is an article that I co-authored on sovereign immunity and patent/copyright history.
Unlike most academic law journals, the AIPLA Q.J. articles are peer reviewed by an editorial board of intellectual property attorneys and professors. Two Editorial Board members review each manuscript, comment on the manuscript, edit the manuscript (if necessary), and indicate whether the manuscript should be selected for publication. The also journal has a staff of student members housed at GWU Law who have some say in the selection process and edit the articles.
The journal is seeking new members for its Editorial Board. You have to be an attorney and a member of the AIPLA. 3-year term begins in November. Apply here by August 31, 2022.
For our patent law course today, the students read the Justice O’Connor unanimous opinion in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989).
Bonito Boats centers on a Florida statute prohibiting copying of unpatented boat hulls via direct molding. The Florida courts had refused to enforce the law because it conflicted with Federal Patent Law. And the Supreme Court affirmed — holding that the “carefully crafted bargain” embodied by the US patent system occupies the entire space and thus preempts any further state action offering patent-like rights.
From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.
Id. The “balance” recognized by the Court is that some innovations are patentable, but only under the strict requirements found in sections 101-112 of the Patent Act. And, once a patent expires (or is refused or forfeited by public use), the balance allows “free access to copy whatever the federal patent and copyright laws leave in the public domain.” Compco Corp. v. Day–Brite Lighting, Inc., 376 U.S. 234 (1964). In its analysis, the court had to contend with its prior statements permitting state regulation of trade secrets covering innovations that could have been patented. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). The key difference is that the Boat Hull statute offered rights to inventions available to the public, while trade secret rights only apply information outside of public awareness. And, in addition the court noted that trade secrets protect a “most fundamental human right, that of privacy.” Id. In other words, there is a substantial state interest in protecting trade secrets that fall outside of the realm of the patent balance. Kewanee also made an assertion that trade secrets are so weak that they are unlikely to shift innovator activities. That final assertion has become dubious in my mind as trade secrets have become more important within certain industries, alongside the expansion of patent eligibility exclusions.
One reason we read Bonito Boats early in the semester is because of the way that O’Connor walks through the various patentability doctrines, explaining how each serves an important role in the patent balance.
The novelty requirement [operates] to exclude from consideration for patent protection knowledge that is already available to the public. [The provisions] express a congressional determination that the creation of a monopoly in such information would not only serve no socially useful purpose, but would in fact injure the public by removing existing knowledge from public use. . . . As the holding of Pennock makes clear, the federal patent scheme creates a limited opportunity to obtain a property right in an idea. Once an inventor has decided to lift the veil of secrecy from his work, he must choose the protection of a federal patent or the dedication of his idea to the public at large. As Judge Learned Hand once put it: “[I]t is a condition upon the inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy or legal monopoly.” Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2nd Cir. 1946).
In addition to the requirements of novelty and utility, the federal patent law has long required that an innovation not be anticipated by the prior art in the field. Even if a particular combination of elements is “novel” in the literal sense of the term, it will not qualify for federal patent protection if its contours are so traced by the existing technology in the field that the “improvement is the work of the skillful mechanic, not that of the inventor.” Hotchkiss v. Greenwood, 11 How. 248 (1851). In 1952, Congress codified this judicially developed requirement in 35 U.S.C. § 103, which refuses protection to new developments where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains.” The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under § 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor. Taken together, the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of either that which is already available to the public or that which may be readily discerned from publicly available material.
The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and “the best mode … of carrying out his invention,” 35 U.S.C. § 112, is granted “the right to exclude others from making, using, or selling the invention throughout the United States,” for a period of 17 years. 35 U.S.C. § 154. The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.
Bonito Boats. Of course one interesting bit of the story that the SUpreme Court admits is that Congress was not fully aware of what it was doing throughout all this careful crafting.
The Bonito Boats decision continues to have important influence on state activities. For instance, in its 2020 Jackson decision, the Second Circuit applied Bonito Boats in the copyright context to hold that copyright law impliedly preempted a particular right of publicity claim made by Curtis Jackson, aka “50 Cent.” In re Jackson, 972 F.3d 25 (2d Cir. 2020). Jackson had sold his copyrights to his record label, but was attempting to use rights of publicity to effectively control reproduction of his works.
UMN’s U.S. Patent No. 5,859,601 is super interesting because it is so similar to the patent rejected by the Supreme Court in Gottschalk v. Benson, 409 U.S. 63 (1972). Benson’s claims were directed toward a method of converting binary-coded decimal numbers into pure binary numbers. Similarly UMN’s claims are directed also to a method for converting binary numbers–this time from “m-bit binary datawords into n-bit binary codewords” by applying “maximum transition run (MTR) codes.” UMN’s basic idea is that researchers were finding long binaries with lots of transitions were more likely to lead to read-errors. Example, 010101010101 has lots of transitions while 111111000000 has only one transition. If the algorithm finds a long sequence of consecutive transitions then it does something (like adding a pause or transition code) to reduce the probability of error detection. The algorithm also adds an additional transition code at a regular interval.
UMN sued LSI for patent infringement in 2016 in the N.D. Cal.; LSI responded with its petition for inter partes review. The IPR proceedings were initially delayed by UMN’s claim of sovereign immunity. In 2019, the Federal Circuit held that “state sovereign immunity does not apply to [IPR] proceedings.” Regents of the Univ. of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. June 14, 2019), cert. denied, 140 S. Ct. 908, 205 L. Ed. 2d 458 (2020). Back on remand, the PTAB issued a split decision–finding independent claim 13 unpatentable but concluding that LSI failed to show that claims 14 and 17 were obvious. These claims add the allegedly unique limitation that the maximum transition run size is somewhere between 1 and 10.
LSI appealed its loss on the dependent claims and the Federal Circuit has now affirmed. LSI Corp. v. Regents of U. of Minnesota, 2021-2057, — F.4th — (Fed. Cir. Aug. 11, 2022). The original 2019 decision was authored by Judge Dyk and joined by Judges Hughes and Wallach. The Federal Circuit has an Internal Operating Procedure involving appeals following remand to attempt to reconstitute the same panel or one with at least two of the same judges. Judge Wallach took senior status in 2021 and so Judge Reyna was added to the new 2022 panel. Judge Dyk again wrote the opinion.
Prior Art By Another: Seagate was a collaborator with the UMN inventors (Moon and Brickner). And, back in September 1995, the inventors submitted a report to Seagate about their work. They filed their patent application April 1996–well within the 1-year statutory grace period. But, in January 1996 Seagate filed a patent application (Tsang) that does not list the UMN inventors. Tsang describes MTR coding in its background section and references the Seagate Report. Tsang also provided further improvements on the MTR methodology.
Once Tsang published/issued, it became prior art as of its filing date. Pre-AIA Section 102(e). Section 102(e) refers to “an application for patent . . . by another.” Here, Tsang is clearly another, but the particular portion of Tsang referenced was clearly derived from the UMN inventors Seagate Report. Under longstanding precedent, Section 102(e) has been interpreted exclude material derived from the inventors. In re Costello, 717 F.2d 1346 (Fed. Cir. 1983). In other words, regardless of the listed inventors on a purported prior art reference, we look to the actual underlying disclosure and ask whether that information was “by another.” Still LSI argued that Tsang was a proper 102(e) reference
Tsang’s summary of, and reliance on, the earlier work of Dr. Moon and Dr. Brickner does not make Tsang an inventor of the earlier work.
Slip Op. Thus, that portion of Tsang was properly excluded from prior art consideration. The court’s interpretation of Section 102(e) stretches our statutory interpretation limits since 102(e)’s prior art test is at the application level, and the court here drills down to specific disclosures and portions of the application. The AIA remedied this statutory stretching by creating the exception of 102(b)(2) that focuses on the disclosure level.
Shifting Arguments: LSI had Separately relied upon two tables found in a prior patent Okada. The problem — although the petition relied upon Okada, petitioner’s reliance on the particular tables didn’t happen until the IPR Hearing. In its decision the board found that the new theory was both untimely and unpersuasive. On appeal, did not address the untimely conclusion — only the persuasiveness. The Federal Circuit did not like that approach and concluded that untimeliness was a separate and independent ground that LSI forfeited “by failing to challenge it in its opening brief on appeal.”
The case should now head back to the Northern District of California where UMN is asserting both surviving claims. The lawsuit has been stayed for the past four years awaiting resolution to the IPR. Meanwhile, LSI’s motion for judgment on the pleadings that the asserted claims are patent-ineligible has remained undecided throughout that time. LSI 101 Motion.
Patrick McElhinny (K&L Gates) argued the IPR appeal for UMN and Kristopher Reed (Kilpatrick) argued for LSI. The same teams are also handling the underlying litigation.
What do folks think of this claim that is now pending on appeal to the Federal Circuit in Steuben Foods, Inc. v. Vidal, No. 20-1083 (Fed. Cir. 2022)?:
19. A method for automatically aseptically bottling aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than 100 bottles per minute, wherein the aseptically disinfected plurality of bottles are sterilized to a level producing at least a 6 log reduction in spore organism; and
aseptically filling the bottles with aseptically sterilized foodstuffs.
US6945013. It appears to me that the only point of novelty is the effective 100 bottles per minute feature, which is claimed here in purely functional form. I.e., it claims the result rather than how it actually happens. According to the briefing, the invention here is the “first high speed aseptic bottling system that would meet the FDA’s regulations related to aseptic packaging, which are the most stringent in the world.” According to the briefing, the real novel feature has to do with careful management of airflow “to ensure that air flows away from the bottle filling station of the aseptic bottling machine.” The drawing below shows the big vacuum tube (60) that sucks the air away. While that feature seems important, it is not actually claimed (by the broader claims being challenged).
Note that this case is IPR2014-01235, based upon an IPR petition filed in 2014. The court previously reversed the PTAB’s finding in favor of the patentee. On remand, the PTAB found the claim obvious. Nestle filed the IPR, but the parties eventually settled their dispute. The USPTO has intervened to defend its decision on appeal.
A few years ago I read a great series of fantasy books, The Wandering Inn. A key series storyline involves the protagonist meeting with ant-like Antinium and, through their interactions, transforming some of more computer-like hive members into individuals. The word individual is important for U.S. Patent Law, because the U.S. Patent Act was amended in 2011 to expressly require that inventors be “individuals.” 35 U.S.C. § 100(f) (2022). For Antinium, becoming individual meant breaking away from the hive-mind. In its newest decision on the topic, the Federal Circuit declares instead, for the purposes of patent law, an inventor must be human.
Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.
Thaler v. Vidal, 2021-2347, 2022 WL 3130863 (Fed. Cir. Aug. 5, 2022). In the case, Thaler claims to own a computer named DABUS, and that DABUS conceived-of two patentable inventions. But, Thaler refused to claim credit as the inventor. And, the USPTO refused to issue a patent without a listed human inventor.
In my mind, it was always clear that the Federal Circuit would refuse Thaler’s petition, but it remains a fascinating topic in my mind. American legal personhood continues to ingenerate debate well beyond AI, including the contexts of legal fictions such as corporations, pre-birth human, and even non-human organisms (such as rivers). The result here shuts-down the debate – at least for the patent law concept of inventorship.
Of all the arguments presented, I thought that Thaler’s best relied upon Section 103’s statement that patentability shall not depend upon “the manner in which the invention was
made.” Thaler argued that the PTO was, in fact, refusing to issue a patent because the invention was made by an AI rather than a human. On appeal, the Federal Circuit held that provision should be limited only to apply to the obviousness context. “Section 103 is not about inventorship. Instead, it provides, in relevant part, that inventions may still be nonobvious even if they are discovered during ‘routine’ testing or experimentation.” Slip Op.
The court went on to expressly explain that it is only interpreting the words given by Congress. If someone wants to change the rules, the correct path is through legislation. Thaler will petition to the Supreme Court, but is unlikely to win.
* Thanks to Avery Welker for helping with this post.
Guest Post by Edward Reines. Reines Co-Chairs the nationwide Patent Litigation practice at Weil Gotshal. He represents CareDx and Stanford in the pending patent lawsuits.
Professor Holman’s recent post on the Federal Circuit’s CareDx v. Natera opinion is a thoughtful addition to Professor Crouch’s review of that decision. Professor Holman concludes that the Stanford inventions were doomed from the start because they can be labelled as “molecular diagnostics methods” and are thus patent ineligible under Federal Circuit law. Professor Holman’s conclusion is troubling. It would limit the patentability of new inventions in an entire scientific discipline merely based on a label.
This labelling mode of analysis is fundamentally flawed because the Supreme Court’s Alice decision mandates a two-step test focused on the claimed advance of the patent, no matter the field of invention. The test is designed to “distinguish between patents” that would pre-empt a field by broadly claiming “[l]aws of nature, natural phenomena, and abstract ideas” and patents that do not pose this risk because they add to these concepts with “human ingenuity.” There is thus nothing inherent about molecular diagnostics that precludes their patentability and merely labelling a method as “molecular diagnostics” should not be a kiss of death.
Take the Stanford patents. Those patents document that the natural correlation between organ rejection and elevated levels of cell-free DNA of the organ donor was known for almost a decade before the inventions. The patents then explain that numerous scientists motivated to measure that increase in cell-free DNA failed to come up with the patented measurement methods. The patents cite an article published right before the Stanford patent filing that concluded that it was altogether “impractical” to measure cell-free DNA to monitor organ rejection.
The Stanford patents distinguish the failed prior art measurement efforts and describe new inventions on how to better measure cell-free DNA using advanced DNA analysis techniques. The claimed inventions are better measurement methods that previously eluded the field – not the discovery of the natural correlation itself. And there was no claim that they posed the pre-emption risk that animated Alice.
Federal Circuit law places at the heart of Alice step one whether the “claimed advance” is the natural law. In CareDx, as Magistrate Judge Burke had originally concluded, the claimed advance of the Stanford patents is an improved human-devised measurement method. The Federal Circuit’s opinion failed to properly focus on the “claimed advance” analysis and failed to squarely address that the patents describe numerous prior art failures. This prior art history is irreconcilable with the panel’s conclusion that the patented measurement methods are so conventional as applied to the natural correlation that they could not possibly qualify as patent-eligible human invention.
Instead, the Federal Circuit imported the “conventionality” analysis from step two into step one in lieu of a proper “claimed advance” analysis of Federal Circuit precedent. As originally contemplated in Mayo, the “conventionality” analysis was akin to determining if the claims included mere trivial additions on top of discovery of a natural law. Here, the conventionality analysis instead became a short-cut obviousness analysis. Yet, even that fails because the decade of prior failures at measuring the cell-free DNA for a good organ rejection test proves that it was not conventional to use the patented measurement methods for this purpose – otherwise the many groups working on the problem would have arrived at that solution ultimately invented by the Stanford team. And the supposed disclaimers in the patents never even suggest that applying the claimed measurement techniques to the tough context of cell-free DNA somehow was not an invention. Everything about the description of the inventions is inconsistent with that conclusion.
The Federal Circuit cannot blame the Supreme Court for this latest constriction of molecular diagnostic patenting even though many Federal Circuit judges have bemoaned the stinginess of the Supreme Court’s Alice test in this area. As explained long ago in Diamond v. Diehr, and as repeated in Bilski and Mayo, the Supreme Court recognizes that: “It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Even if the Stanford measurement methods were known (and the prior art history calls that into serious doubt) their application to a natural law can certainly be patent eligible if it is the product of human innovation, as claimed by the patents.
Professor Holman’s conclusion that the Federal Circuit labelling method may have controlled the CareDx outcome should give real pause to the patent law community. Such labelling might be useful to describe the inventions at issue in prior decisions, but it is not a basis to proscribe whether an invention is eligible for patenting. The Stanford patents are plainly directed to a better measurement method that evaded many motivated prior artists. Such human innovation is the claimed advance and is patent eligible under Alice even if it can be labelled as a molecular diagnostic method.
Wireless Protocol Innovations (WPI) v. TCT Mobile, Inc. (Fed. Cir. 2022) (non-precedential)
Literally Disclosed: In IPR round one, the PTAB sided with patent challenger TCT Mobile and found claims 1 & 3-5 of US8274991 unpatentable as obvious. On appeal though the Federal Circuit partially reversed, vacated and remanded. The appellate decision altered claim construction and told the PTAB to try its analysis again with the new construction.
Not Literally Disclosed: On remand, the patent challenger TCT successfully shifted its argument based upon the Federal Circuit’s new claim construction. The PTAB again found the claims obvious based upon the same prior art–albeit with a slightly different explanation. In its original decision, the PTAB concluded that the prior art disclosed a particular claim element. On remand, that conclusion was no longer appropriate because of the altered claim construction. Still, the PTAB concluded that it would have been obvious to modify the prior art achieve the invention as construed. I call this the not-literally-disclosed ground.
On appeal this time, the Federal Circuit has fully reversed–holding that TCT had waived the not-literally-disclosed ground by failing to raise it in IPR Round One–prior to the first Federal Circuit appeal. The court suggests here that an altered argument might be appropriate if the new claim construction had suddenly arrived out of the blue sky. But in this particular case, the Federal Circuit’s preferred claim construction was the construction argued throughout the IPR by the patent owner WPI.
TCT was on notice of WPI’s claim construction position [during the IPR Round One briefing] and TCT thus forfeited the Sen-modification argument by failing to even attempt to introduce it prior to remand. Our decision in Wireless Protocol I did not set forth a new claim construction never contemplated by the parties.
Slip Op.
The original Federal Circuit decision issued in the summer of 2019. The Board took 21 months to issue the new decision on remand. The patentee had also argued that the delay was improper because it blew past the 6-month goal set within the Board’s Standard Operating Procedure. On appeal, the Federal Circuit concluded that the parties had no appealable right in this situation:
We disagree with WPI that the Board violated WPI’s due process rights or any statute, regulation, or internal operating procedure by not meeting the goal to issue remand decisions within six months of this court’s mandate as set forth in the Board’s Standard Operating Procedure 9.
