The Federal Circuit's recent decision in Virtek Vision International ULC v. Assembly Guidance Systems, Inc. focuses on the motivation to combine aspect of the obviousness analysis. The court's ruling emphasizes that the mere existence of prior art elements is not sufficient to render a claimed invention obvious; rather, there must be a clear reason or rationale for a person of ordinary skill in the art to combine those elements in the claimed manner. In the case, the IPR petitioner failed to articulate that reasoning and thus the PTAB's obviousness finding was improper.
The Federal Circuit's recent 2-1 decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. highlights tensions in the court's interpretation of the patent infringement safe harbor under 35 U.S.C. § 271(e)(1). A forceful dissent by Judge Lourie argues that the majority's approach, while following precedent, improperly reads the word "solely" out of the statute and unduly expands the safe harbor exemption. Lourie ends his opinion with a call for en banc rehearing.
My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883). I thought I would write a more complete discussion of this important historic patent case.
Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking "bad patents." As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.
The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design. The Supreme Court ultimately reversed the lower court's decision upholding the patent and found instead that Brady's claimed invention lacked novelty and did not constitute a patentable advance over the prior art.
The U.S. Supreme Court is weighing whether to grant certiorari in Vanda Pharmaceuticals v. Teva Pharmaceuticals. I have been closely watching this obviousness case that could have significant implications beyond the pharmaceutical industry. The following essay provides an overview of the key legal issues at stake and introduces Teva's recent briefing.
The case centers on the proper legal standard for determining when an invention is "obvious" and therefore unpatentable under 35 U.S.C. § 103. In particular, Vanda argues that the Federal Circuit has unduly raised the non-obviousness hurdle -- barring patents based upon a "mere reasonable expectation of success" or that certain experiments would have been obvious to try, even though the result was not known.
This week USPTO Commissioner for Patents Vaishali Udupa issued a memorandum to all patent examiners entitled "Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))." The purpose of the memo is to remind examiners of the resources and guidance available when examining claims under 35 U.S.C. 112(f), commonly referred to as "means-plus-function" or "step-plus-function" claims. The memo summarizes key points regarding:
Determining whether a claim limitation invokes 112(f)
Clearly communicating on the record when 112(f) has been invoked
Evaluating the adequacy of the supporting disclosure
The USPTO has also requested public feedback on the guidance (6/18/24 deadline). Examiners will apparently undergo some training. Although not clear if this will be enforced, it may become more of a requirement for examiners to provide a claim construction section in their office action rejections.
Although the memo is generally helpful, there are two points of guidance that are lacking, and that I discuss below:
How is BRI applied at the initial stage of determining whether a claim is written in means-plus-function form?
How are means-plus-function limitations evaluated under the 112(a) written description and enablement requirements. Particular, must the "equivalents" covered by the claim be adequately supported by the specification?
Federal Circuit has denied Apple's petition for a writ of mandamus seeking to transfer a patent infringement case from the Western District of Texas to the Northern District of California. The case, Carbyne Biometrics, LLC v. Apple Inc., involves six patents related to authentication and fraud reduction technologies used in Apple devices. U.S. Patent Nos. 10,929,512; 11,475,105; 11,514,138; 9,972,010; 10,713,656; 11,526,886.
Back in May 2023, Carbyne filed the lawsuit in W.D. Tex. Austin division and the case was assigned to Judge Yeakel who promptly retired a few weeks later. Unlike the cases filed in Waco, Carbyne's Austin filing was clearly not a case of judge shopping, but is probably explained as forum shopping. Apple's HQ is N.D. Cal, and Carbyne appears to be NYC based -- neither forum is seen as patentee friendly. Austin is a good choice here because Apple has a billion dollar facility in the city where it manufactures some of the accused devices.
After some shuffling, the case was reassigned to Judge Alan Albright. Although Albright is in the Waco division, he loves patent cases; has extra bandwidth because patent cases have been diverted from his Waco courthouse; and he's willing to hear cases in Austin.
Once it became clear that Judge Albright would be in charge, Apple quickly filed a motion to transfer venue under Section 1404(a) -- arguing that the venue was inconvenient despite the fact that Austin is the company's second-home. The opposite of Judge Shopping, I might Apple's approach here "Judge Dodging."
In a nonprecedential disposition issued March 20, 2024, the Federal Circuit vacated a district court's denial of a permanent injunction to a patent owner, finding the lower court read Federal Circuit precedent too broadly to categorically preclude injunctions in situations where a patentee has a history of licensing the patent to third parties. In re California Expanded Metal Products Co., No. 2023-1140 (Fed Cir. Mar. 20, 2024). The decision reaffirms that the equitable framework laid out by the Supreme Court in eBay Inc. v. MercExchange, L.L.C. requires a case-by-case analysis of irreparable harm and the other injunction factors, even when the patentee's business model relies on licensing revenue rather than direct competition in practicing the patents. 547 U.S. 388, 391 (2006). However, the decision may well be seen simply as distinguishing between exclusive and non-exclusive licensing approaches.
In its decision, the Federal Circuit also affirmed the district court's R.59(e) order setting aside the damages verdict -- meaning that although the patentee proved infringement, it will receive $0 in compensatory damages.
In Sisvel v. TCT Mobile and Honeywell, the Federal Circuit has affirmed the PTAB's IPR findings that the claims are obvious. The non-precedential decision provides further insight into the Federal Circuit's reasonable expectation of success test.
Sisvel's U.S. Patent 8,971,279 covers a method of sending Semi-Persistent Scheduling (SPS) deactivation signals that essentially "piggyback" on existing messages. SPS is a technique used in LTE networks to more efficiently allocate radio resources to user equipment (UE) for periodic transmissions, such as Voice over IP (VoIP). In SPS, the base station pre-allocates resources to the UE for a set period of time, reducing the need for frequent scheduling requests and grants. SPS deactivation signals are messages sent by the base station to the UE to indicate that the pre-allocated resources are being released and are no longer available for the UE's periodic transmissions. These signals are necessary to free up the resources when they are no longer needed, allowing them to be reassigned to other UEs or used for other purposes.
In the context of Sisvel's '279 patent, the invention was directed to a specific method of sending SPS deactivation signals by filling a preexisting binary field (the resource indication value or "RIV") with all "1"s. This 111111111 technique was intended to provide a more efficient way of signaling SPS deactivation while still ensuring that the deactivation message would not be mistaken for a valid resource allocation message. In the patented system, the string of ones would always be processed as an invalid value and never mistaken for a valid resource allocation message, providing stability to the network, regardless of size.
TCT Mobile and others petitioned for IPR, asserting that the challenged claims were obvious based on various combinations of prior art, including Samsung and Dahlman. The PTAB found the claims unpatentable as obvious, and Sisvel appealed.
The Federal Circuit has issued an interesting nonprecedential order in In re VLSI Technology LLC, denying VLSI's petition for a writ of mandamus that sought to reverse a district court order allowing Intel to amend its answer to assert a declaratory judgment counterclaim regarding a patent license defense.
The Federal Circuit's brief order sheds some light on the standards for amending pleadings late in litigation and the propriety of declaratory judgment counterclaims in patent cases even where the underlying infringement claims have been extinguished.
In a recent nonprecedential decision, the Federal Circuit affirmed a district court ruling ordering the correction of inventorship for U.S. Patent No. 9,376,049. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The patent at issue, originally naming a single inventor (Steve Campbell), claims a lightweight intermodal container system for transporting refrigerated gaseous fluids.
This post examines the reasoning behind the Federal Circuit's affirmance as well as the potential applicability of the equitable defense of laches in cases brought under 35 U.S.C. § 256 to correct inventorship on an issued patent.
Guest post by Professors Jonas Anderson[1] and Paul Gugliuzza[2]
On Tuesday, March 12, 2024, the Judicial Conference of the United States—the self-governing body of the federal judiciary—held a press conference and issued a press release touting the Conference’s “strengthen[ing of] the policy governing random case assignment, limiting the ability of litigants to effectively choose judges in certain cases by where they file a lawsuit.”
As we’ve explained in a series of articles, in many federal courts throughout the country, all or practically all cases are assigned to a single judge, giving litigants the ability to “judge shop”—that is, to choose their own judge. Many divisional court houses are associated with a single federal judge, and cases filed in that courthouse are assigned to that predetermined judge.
Judge shopping has been a particularly long-standing problem in patent cases and corporate bankruptcy cases. More recently, Republican state attorneys general have filed numerous challenges to federal government actions on matters such as abortion, gun control, and immigration in single-judge divisions in Texas.
After a few days of confusion about the scope and content of the Judicial Conference’s new policy on case assignment, the Conference subsequently released a three-page document titled Guidance for Civil Case Assignment in District Courts.
The Judicial Conference’s interest in stopping judge shopping is commendable—it’s hard to think of any principled reason why a party should be able to pick the individual judge who hears their case. But we see at least three major flaws in the Judicial Conference’s action.
This recent decision from the Supreme Court case grapples with the issue of when a public official's social media activity constitutes state action for purposes of a First Amendment claim under 42 U.S.C. §1983. I've been following the case as part of my work on internet and media law issues.
The case arose after James Freed, the city manager of Port Huron, Michigan, deleted comments and blocked a Port Huron citizen (Kevin Lindke) from commenting on Freed's personal Facebook page after Lindke used the forum to criticize the city's handling of the COVID-19 pandemic. Lindke sued Freed, arguing that Freed had violated his free speech rights by censoring him in a public forum.
In a unanimous opinion authored by Justice Barrett, the Supreme Court created a two step test, holding that that a public official's social media conduct only qualifies as state action under §1983 if the official:
possessed actual authority to speak on the State's behalf on the particular matter at issue, and
purported to exercise that authority when speaking in the relevant social media posts.
Along with my work in intellectual property, I also spent a lot of time focusing on internet law issues and their interrelation with AI, privacy, speech and security. We have seen growing calls for action surrounding Section 230 modifications and social media censorship, and several pending Supreme Court cases could reshape the legal landscape governing online platforms.
Banning TikTok: The U.S. House of Representatives passed a bill this week, with a vote of 352-65, that could potentially ban TikTok in the United States. The bill, called the Protecting Americans from Foreign Adversary Controlled Applications Act, would require TikTok to divest from its China-based parent company ByteDance or face consequences such as being cut off from app stores and hosting services in the U.S.
In a short nonprecedential decision, the Federal Circuit affirmed a PTAB IPR decision finding claims 15-25 of U.S. Patent No. 8,671,132 ('132 patent) unpatentable under 35 U.S.C. § 103 over combinations of prior art references. Daedalus Blue LLC v. Vidal, No. 2023-1313, slip op. at 2 (Fed. Cir. Mar. 13, 2024). The key issue on appeal was whether the Gelb reference qualified as analogous art for the purposes of the obviousness analysis. Daedalus unsuccessfully argued that the PTAB erred in two respects: (1) by finding Gelb to be in the same field of endeavor as the '132 patent, and (2) by determining that Gelb is reasonably pertinent to the problems addressed by the '132 patent. This post discusses the analogous arts test and provides key guidance to patent attorneys in today's post-AIA world.
The recent case of Purdue Pharma v. Collegium Pharmaceutical, Case no. 23A766, highlights the importance of adhering to the Supreme Court's rules and presenting compelling reasons when requesting an extension of time to file a petition for certiorari. The Supreme Court's denial of Purdue's request for a 30-day extension serves as a reminder that even in cases involving significant legal questions, the Court expects parties to follow its procedural rules and provide strong justifications for any deviations.
In a nonprecedential decision, the Federal Circuit has vacated and remanded a PTAB decision siding against the patentee. The key issue on appeal was the proper construction of the claim term "matingly engaged," which appears in the limitation "a compliant member matingly engaged with the second side of the housing member." CoolIT Sys., Inc. v. Vidal, No. 2022-1221 (Fed. Cir. Mar. 7, 2024). Coolit v Vidal.
One of the take-aways from the case is that parties should be cautious about using terms that may themselves require construction, as this can lead to a "construing the construction" problem. Courts aim to adopt constructions that clarify the meaning of the disputed term without introducing new ambiguities. See Jason Rantanen, Construing Claim Constructions, Patently-O (Sept. 28, 2011, 4:13 PM).
The Federal Circuit handed down a mixed decision in Chewy, Inc. v. International Business Machines Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) ChewyvIBM. The district court had ruled against the patentee (IBM) -- finding one patent ineligible and the other not infringed. On appeal, the Federal Circuit largely affirmed, but found one claim that passes through the pre-trial gauntlet. The patents at issue were IBM's U.S. Patent Nos. 7,072,849 and 7,076,443, relating to improvements in web-based advertising. On remand, a jury may need to decide whether claim 12 of the '849 patent is valid and infringed.
The first half of the post focuses on eligibility and is fairly standard. The second half of the post is what all patent prosecutors need to read because it delves into "magic language" - binding statements - in describing the invention.
In January 2024 a then-secret order from US Customs and Border Protection (CPB) had a major impact in the Masimo v. Apple case. That opinion from CBP's Exclusion Order Enforcement (EOE) Branch has now been released in redacted form and provides some insight into how Apple was able to quickly modify its Apple Watch designs to avoid the ITC's limited exclusion order that would have blocked import of the infringing devices. The CBP EOE ruling determined that Apple's redesigned watches, which disabled the infringing pulse oximetry functionality, were sufficiently modified to fall outside the scope of the ITC's exclusion order, allowing them to be imported and sold in the US.
If you recall, Celanese v. ITC involves the sweetener known as AceK (acesulfame potassium), a compound discovered back in the 1960s. Celanese began selling the product on the competitive market in 2011, and eventually decided to file for patent protection on its manufacturing process in 2015. In my prior post on Celanese v. ITC, I focused on the key statutory interpretation question of whether, under the AIA's revised 35 U.S.C. § 102, a patentee's pre-filing sale of a product made by a secret process starts the one-year clock for patenting that process.
Although Celanese did not patent the product itself, one interesting fact that I failed to mention in the prior post is that Celanese is seeking an exclusion order at the ITC preventing importation of Ace-K. This adds an interesting wrinkle to the policy debate.
