Toothbrush walks into a bar

by Dennis Crouch

Maxill, Inc. v. Loops, LLC (Fed. Cir. 2020)f [Maxill v. Loops]

The Loops patent covers a flexible toothbrush — and the claims require “an elongated body being flexible throughout the elongated body.”  US8448285 (Claim 1). Apparently, these brushes are sold primarily to “institutional” settings such as prisons.

Early in the case, the patentee moved for summary judgment of infringement.  The district court denied the motion, and acted sua sponte to enter summary judgment of non-infringement.  Apparently, the judge had inspected the accused product and found that the head-portion of the elongated body wasn’t flexible. Although the body was made of flexible rubber, once the stiff head (with bristles) was molded-in, the body was no longer flexible.

On appeal, the Federal Circuit has reversed and remanded — finding that the district court erred in  its claim construction of “elongated body being flexible throughout the elongated body.”  The appellate court found that the flexibility requirement does not require the whole assembly to be flexible, but rather only that the elongated itself be flexible.

Loops argues that the accused toothbrush’s elongated body is made of orange flexible material that is flexible throughout (a position that Maxill does not dispute) and that this component is separate from the more-rigid head component. . . . We agree with Loops and conclude that, based on the claim language and structure, as well as the specification, the district court misunderstood the flexibility limitation to pertain to the elongated body when combined with the head as opposed to the elongated body alone. . . . Reversed.

Slip. Op. Read the claim and tell me what you think? Does the body need to be flexible when assembled, or only pre-assembly?

1. A toothbrush, comprising:

an elongated body being flexible throughout the elongated body and comprising a first material and having a head portion and a handle portion;

a head comprising a second material, wherein the head is disposed in and molded to the head portion of the elongated body; and

a plurality of bristles extending from the head forming a bristle brush, wherein the first material is less rigid than the second material.

Claim 1.

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The appellate panel also took issue with the sua-sponte summary judgment without first providing the party with a “full and fair opportunity to present its case.”  Here, although Loops had presented its summary-judgment argument of infringement, the appellate panel found that summary-judgment of non-infringement to be an entirely different matter. “Under the circumstances, we conclude, Loops did not have a full and fair opportunity to respond to Maxill prior to the district court’s sua sponte grant of summary judgment.”

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I was researching old inventors, but couldn’t find the burial place of William Addis, the toothbrush inventor. . . No plaque.

Federal Circuit: User Experience is not Computer Functionality

by Dennis Crouch

Simio, LLC v. FlexSim Software (Fed. Cir. 2020) (opinion by Chief Judge Prost and joined by Judges Clevenger and Stoll).

In this case, the Federal Circuit has affirmed the lower court’s summary dismissal of Simio’s infringement lawsuit on eligibility grounds.  The appellate panel also upheld the lower court’s refusal to permit the patentee to amend its complaint — seeing the proposed amendment as “futile.”

Dennis Pegden has received many awards for his work developing software (and programming languages) for simulating real-life processes in order to optimize decisionmaking; perform risk analysis, etc.  He was a professor who then developed his own company that was bought-out by Rockwell. Later, he formed the new company Simio, that owns the patent at issue here: U.S. Patent No. 8,156,468.  The ‘468 patent is effectively an object-oriented simulation programming tool that allows users to develop simulation models of process flows using a graphical framework.

In December 2018, Simio sued its competitor FlexSim for infringement of the ‘468 patent; FlexSim responded with its successful motion-to-dismiss on eligibility grounds.  The district court found the claims directed to the unpatentable abstract idea of the “decades old computer programming practice of substituting text-based coding with graphical processing.”

On appeal, the Federal Circuit affirmed — finding that the claims were indeed directed to transitioning from text-based coding to icon-based.  In making its “directed to” conclusion, the court repeatedly quoted the specification’s explanations that

[A]n object in the present invention is simple and completely graphical. There is no need to write programming code to create new objects. . . . Simio™ objects can be created with simple graphical process flows that require no programming. . . . [T]his invention can bring an improved object-oriented modeling approach to a much broader cross-section of users. . . . [etc.]

Quoting the patent specification.  And, the court agreed that “Simply applying the already-widespread practice of using graphics instead of programming to the environment of object-oriented simulations is no more than an abstract idea.”

Prior decisions have found innovations that improve computer functionality to be non-abstract (and thus patent eligible). Here, the court admitted that the claimed innovation may well improve the ability of many individuals to create simulations, but found that such a usability improvement does not count as an improvement to the computer’s functionality.

[Simio’s] argument does not explain how the computer’s functionality is improved beyond the inherent improvement of the experience of a user who cannot (or maybe, would rather not) use programming.

Slip Op. Quoting Customedia, the court explained its position that “user experience” is not “computer functionality.”

Simio pointed to particular improvements of user behavior offered by its invention such as faster simulation model development (a major selling point of the products in this area). Again, the court found that an abstract idea is still abstract, even if done quickly.

In Alice Step 2, the court admitted that the claim may include novel features, but those novel features are the abstract idea.

And that’s really what we have: a claim directed to the idea of using graphics instead of programming to create object oriented simulations—maybe a new idea, but still an abstract one—and lacking any inventive concept, any meaningful application of this idea, sufficient to save the claim’s eligibility.

Slip Op.

The rules of civil procedure allow for flexible pleading. Rule 8 simply requires “a short and plain statement of the claim.”  And, defects in a complaint are regularly fixed via amendment.  The rules of Civil Procedure require courts to “freely give leave” to amend pleadings “when justice so requires.”

Here, the district court refused to allow the patentee to amend its pleadings with specific allegations regarding the uniqueness of various claim elements.  On appeal, the Federal Circuit affirmed — finding that the proposed amendment were “conclusory statements” to be disregarding when ruling on a Rule 12(b)(6) motion.

Simio had delayed in its request to amend until after the deadline set by the district court in the R. 16(b) scheduling order.  On appeal, the Federal Circuit found that the district court was within its rights to deny amendments after that deadline absent presentation of good cause. Here, the court’s granting of the motion-to-dismiss didn’t count as good cause.

Free Speech Tuesday: Tinker on Snapchat

Mahoney Area School District v. B.L. (Supreme Court 2020)

This case is about whether the First Amendment protects high-school students and their Snaps against punishment and regulation by public school officials.

Question Presented by the School: Whether Tinker v. Des Moines Independent Community School District, 393 U.S. 503 (1969), which holds that public school officials may regulate speech that would materially and substantially disrupt the work and discipline of the school, applies to student speech that occurs off campus.

Competing Question by the kid: Whether the court of appeals correctly held that a public high school violated the First Amendment when it punished a student for her colorful expression of frustration, made in an ephemeral Snapchat on her personal social media, on a weekend, off campus, containing no threat or harassment or mention of her school, and that did not cause or threaten any disruption of her school.

B.L. apparently was a varsity cheerleader during her freshman year, but was relegated to J.V. during her sophomore year.  After receiving that news, B.L. posted a photo of herself and several friends raising their middle fingers and including the following quote: “Fuck school fuck softball fuck cheer fuck everything.”  Although the post was only temporarily on Snapchat, at least one student took a screenshot and provided it to a school official.  In addition, at least one person accessed the vulgarity from a school computer.

B.L. was then kicked-off the team. According to the school, a good cheerleader must have “have respect for the school, coaches, teachers, [and] other cheerleaders” and must also avoid “foul language and inappropriate gestures.”  ACLU sued on B.L.’s behalf and won, including a 3rd Circuit decision limiting School’s control over student off-campus speech.




Consolidated Appropriations Act of 2021

The huge appropriations bill includes a few IP gems: [LINK]

  • Appropriation: $3.6 billion to USPTO. All money must com from PTO fees. The Copyright Office is appropriated $93 million; ICE has $15 million for IP border enforcement; The Federal Circuit receives $33 million. (I believe this is in addition to the judicial salaries of $229k for 2020).
  • Illicit digital transmission: Big new copyright protections against streamers with felony penalties.
  • CASE Act of 2020: Small-claims copyright court.
  • Trademark Modernization Act of 2020: This change includes new mechanisms for opposing/canceling trademark registrations, including third-party submission of evidence. Allow for “expungment” of a registration application that has not been used in commerce, and 3rd party petition to cancel on non-use grounds.   PTO Director is given extra authority to unilaterally reconsider, modify, or set aside TTAB decisions. (This is a likely solution if Supreme Court finds PTAB unconstitutionally appointed).
  • Trademark Modernization Act of 2020: Presumption of injunctive relief — overcoming eBay:

‘‘A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.’’

  • Biologic Patent Transparency: requires the holder of a license to market a biologic drug to disclose all patents believed to be covering that drug.



Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Request for Comments on the National Strategy for Expanding American Innovation

The USPTO is in the midst of writing a new “report concerning patenting and entrepreneurship activities among women, minorities, and veterans” and is seeking comments (www.regulations.govdocket number PTO-P-2020-0057).

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Issues for Comment: The USPTO seeks comments from the public that will be used to help draft a national strategy to create opportunities that will expand our innovation ecosystem to include all individuals, including those from underrepresented socioeconomic, geographic, and demographic groups. The questions below are grouped according to the categories within the broad conceptual framework outlined above for the national strategy. The USPTO welcomes answers to these questions, as well as any additional comments, from the public:

I. General

1. Inventors and entrepreneurs come from all walks of life and are not always employed by a large corporate or educational institution. How can people and organizations in the innovation ecosystem better support them?

2. Women and some minorities have not participated proportionally in the patenting of inventions. What barriers to innovation inclusion are specific to underrepresented groups? What supporting role should government organizations play in helping underrepresented groups overcome these barriers?

3. Mentoring and networking have been shown to be effective tools in supporting and encouraging underrepresented inventors and entrepreneurs. How can organizations and intellectual property practitioners in the innovation ecosystem better connect underrepresented innovators to each other and to mentors, both internally and across organizations?

4. Developing organizational metrics to document the effectiveness of diversity and inclusion initiatives is necessary to track outcomes of action plans and initiatives. What are best practices that organizations can internally employ to measure their own progress, particularly in the area of intellectual property protection?

5. Measuring national progress in realizing greater inclusion and diversity in invention, entrepreneurship, and intellectual property may take years, and it will be critical to identify complementary short- and long-term metrics that are precursors to and indicators of expanding innovation. What are some specific, meaningful, and relevant measures that can be used to:

a. Support year-over-year performance of action plans and initiatives in the short-term?

b. Demonstrate the long-term creation of diversity and inclusion in the innovation ecosystem while complementing short-term performance metrics?

6. Invention, entrepreneurship, and intellectual property protection have been shown to be concentrated in certain areas of the country and among individuals from higher socioeconomic groups. What new or existing channels could be created or utilized to more effectively deliver information and resources to prospective innovators from all demographic, geographic, and economic backgrounds?

II. Creating Innovators—Helping To Prepare People To Obtain the Skills and Develop the Interests Necessary To Become Innovators, Problem Solvers, and Entrepreneurs

7. Research has shown that “invention education”—the infusion of transdisciplinary education in problem identification and problem solving—is critical to developing innovation skills in learners. How can educational institutions at all levels (pre-kindergarten through post-graduate) successfully infuse concepts of invention, entrepreneurship, and intellectual property education into curricula?

8. To supplement formal education, how can community institutions, particularly in rural and economically disadvantaged areas, build awareness of, and skills and interests in, invention, entrepreneurship, and intellectual property among students of all ages?

9. More can be done to help teachers, even those with a formal science, technology, engineering, or mathematics (STEM) background, incorporate concepts of innovation into their teaching methods. What new or existing professional development opportunities, resources, and programs could train teachers to incorporate invention education concepts into their instruction? How could these efforts be leveraged and scaled so that similar resources and opportunities are accessible to all teachers?

III. Practicing Innovation—Harnessing Skills and Interests to the Act of Innovation

10. Recent progress in developing STEM graduates from underrepresented groups has been documented. How can similar rates of invention and entrepreneurship be attained? How can organizations best recruit and retain innovators from diverse backgrounds?

11. Inventors thrive when cultural and institutional barriers within workplaces are minimized or removed. What are examples of these barriers, and how can organizations remove them to create an inclusive, innovative workplace culture?

12. Access to information and resources is pivotal for the development of individual inventors and small businesses. How can the nation better support individual inventors and small businesses with resources so they can successfully translate their skills and creativity into the acts of invention, intellectual property protection, and entrepreneurship?

13. Another important objective is increasing diversity in the entire Start Printed Page 83908intellectual property field. What are ways of promoting diversity in the corps of intellectual property attorneys and agents who represent innovators?

IV. Realizing Innovation—Reaping the Personal and Societal Benefits of Innovation

14. Financial support is a critical element in translating an innovation into commercial success. What organizations, programs, or other efforts help promote access to capital to an expanded group of inventors and entrepreneurs—demographically, geographically, and economically?

15. Successfully commercializing an inventive product or concept requires in-depth knowledge about production processes, market forces, and other pertinent information. What types of mentoring initiatives could be implemented or expanded to help experienced entrepreneurs impart this specialized knowledge to diverse and novice inventors?

16. Formalized partnerships like tech transfer offices/conferences, accelerators, and incubators can help streamline commercialization objectives such as product development, licensing, and distribution. What can be done to make these partnerships more accessible and effective at supporting all inventors and entrepreneurs?

V. Other

17. Please provide any other comments that you feel should be considered as part of, and that are directly related to, the development of a national strategy to expand the innovation ecosystem demographically, geographically, and economically.

Andrei Iancu

Government Contracts and Ownership of Technical Data

by Dennis Crouch

The Boeing Company v. Air Force (Fed. Cir. 2020)

This is a government contract case involving rights to technical data provided to the government from a contractor.  Boeing is working on a multi-billion-dollar F-15 Eagle Passive/Active Warning Survivability System (EPAWSS) project subject to a DoD contract.  Under the contract, Boeing “retains ownership” of the technical data it generates and delivers.  However, the U.S. Gov’t receives also “unlimited rights” to the data, including the right to “use, modify, reproduce, perform, display, release, or disclose [the] technical data in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so.”

When Boeing began providing data, it included first notice below.  The U.S. Gov’t. objected to that language and Boeing offered the second alternative. Still though the U.S. Gov’t. objected as out of compliance with the DoD regulations. (DFARS 252.227-7013(f)).  This objection apparently came as something of a surprise — Boeing says that it has been marking its technical data with propriety legends since 2002.

Boeing wanted to retain its limitations on use and further disclosure by “Non-U.S. Government recipients” and so petitioned to the Armed Services Board of Contract Appeals (ASBCA).  After losing, Boeing brought its appeal to the Federal Circuit.  On appeal here, though the Federal Circuit has reversed.

This is a contract dispute that focuses on the DoD regulations because they were incorporated into the contract.  The regulations strictly limit they ways that a Contractor can “assert restrictions on the [US] Government’s right[s].”  Here, the Federal Circuit drew a fine-point — finding that Boeing’s restrictions are expressly designed to restrict only non-US-Governmental parties. Although the regulations state that “All other markings are nonconforming markings,” the court held that that statement as only applying to markings that restrict US governmental rights.

Thus, we agree with Boeing that Subsection 7013(f) … is silent on any legends that a contractor may mark on its data when it seeks to restrict only the rights of non-government third parties.

Slip Op.

Anyone savvy will note that if the US government has “unlimited rights,” then those rights would include the full right to release, disclose, our otherwise authorize a third-party to use the data. Boeing’s modified proposal takes this into account — stating that third-parties use must be authorized either by Boeing or the U.S. Gov’t.  However, the Gov’t still argues that its rights are being restricted because it requires the Government to be the “authorizer” — something potentially quite burdensome and “inconsistent with its unlimited rights.”  On remand, the Board may consider this issue.

In its decision, the Federal Circuit walks through a set of light policy arguments as well:

Boeing asserts that the Board’s interpretation of Subsection 7013(f) will have far-reaching consequences that will impair contractors’ abilities to protect their rights in their technical data and threaten the willingness of technology innovators to do business with the government. The government responds that allowing contractors unbridled freedom to mark technical data with self-created legends of their choosing is inconsistent with the DFARS and would encumber unrestricted information with unclear markings that make it difficult for the government to exercise its license rights.

To be clear, neither party presents any policy arguments that would be sufficient to overcome the plain language of Subsection 7013(f), as explained above. In any event, we decide this case on the regulation, not policy. … But our interpretation of the plain language of Subsection 7013(f) has the added benefit of alleviating some of Boeing’s policy concerns.


Technical Data Rights: The underlying question, of course, is what rights are we talking about? The US does not have a category of property rights known as “technical data rights.”  The best data protection may be trade-secret rights, but that does not seem to work here because we’re talking about data that has been turned over to another party without any restriction.  Boeing’s copyright notice is probably the best-clue.  However, copyright protection in a document is a far-cry being the “owner” of the technical data as the court discussed.

Pre-AIA 102: Meaning of On Sale “in This Country”

by Dennis Crouch

Caterpillar v. ITC & Wirtgen (Fed. Cir. 2020)

Caterpillar filed a complaint with the International Trade Commission (ITC) against Wirtgen — arguing that the German manufacturer was importing infringing devices into the US.  However, the ITC found the claims invalidated by the company’s pre-filing sales.  On appeal here, the Federal Circuit has affirmed.

Caterpillar’s U.S. Patent No. 7,140,693 covers a milling machine with retractable wheels (or tracks).   The invention here was originally created by engineers at the Italian company Bitelli in the late 1990’s.  Caterpillar purchased Bitelli in 2000, the priority patent application was not filed (in Italy) until April 2001, followed by the PCT in 2002.  Bitelli had already been selling embodiments of the invention even before 2000.

Pre-AIA patent law included some geographic limits on prior art.  The on-sale bar in particularly only applied to sales in the United States.

A person shall be entitled to a patent unless — (b) the invention was … sale in this country, more than one year prior to the date of the application for patent in the United States.

35 U.S.C. 102(b) (pre-AIA). Since this is a pre-AIA patent, the pre-AIA laws apply.

During litigation, patent claims are presumed valid unless proven invalid with clear and convincing evidence.  Here, Wirtgen presented records showing the sale of two Bitelli SF 102 C machines were sold to a U.S. Customer. One in June 1999 and the other in July 2000.  The machines were apparently delivered to the Bitelli factory gates in Italy, and the customer may have brought them to America.  The July-2000 machine (or at least a machine bearing that serial number) is actually located in the U.S., but there are no historic records of its location prior to 2018.

In finding the patent claims invalid, the ITC concluded the deliveries in Italy were still “directed to the United States” in a manner sufficient to satisfy the “in this country” prong of the on sale bar “by at least July 2000.”

On appeal, the Federal Circuit has affirmed.

Sale to US Company Not Enough: Wirtgen argued that “Under black-letter law, a sale to a U.S. company is an invalidating sale under § 102(b).” On appeal, the Federal Circuit rejected that contention — “our cases do not hold that the mere fact that the sale was made to a United States company is sufficient” to be “in this country.”

Sale Directed to the US is Enough: A foreign sale can be consider a US sale if it constituted “commercial activity directed to the United States.”  Here, the court found substantial evidence to support that conclusion for the 1999 invoice:

  • Buyer located in US;
  • Invoice suggests that US Tariffs were due (although the same tariff number is used in EU and other countries around the world);
  • Sale in US dollars;
  • Description of the machine in US;
  • the VAT assessment was at 0% rate — the rate used for export out of Italy and the EU. (20% for items staying in Italy); and
  • No other evidence indicating that the purchase was for use anywhere but the US.

Based upon all of this, the Federal Circuit affirmed that sales were in the US for the purposes of the on-sale bar.  Note here that the court’s conception of “directed to” analysis here is similar to the Supreme Court’s test for personal jurisdiction.  A key difference though is that the on sale bar is a statutory provision and the geographic limitation has been eliminated for post-AIA (2011) patents.

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In this case, the the Italian patent application was filed in April 2001, followed by a PCT in 2002 and then the U.S. national stage in 2003. The ITC decision concluded that July 2000 was “more than a year before the application for the ‘693 was filed.”

These facts, considered collectively, are clear and convincing evidence that the Bitelli SF 102 C was “on sale in this country” by at least July 2000, more than a year before the application for the ‘693 patent was filed, thus qualifying as prior art under section 102(b).

Calendarios will note that July 2000 is less than one year before the Italian priority date of 2001.  The problem is that the pre-AIA US statute granting priority for foreign national filings expressly excluded on-sale and public-use activity from the priority claim:

[A foreign-filed application] shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if … filed within twelve months …; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.

35 U.S.C. 119(a) (Pre-AIA). Thus, for the on-sale and public use bar, the Italian national filing does not count as priority.  A separate provision on the code allowed the PCT date to still count. Thus, for Caterpillar, the critical date is April 2001 — 1 year before the PCT filing date.

Important additional note, these quirks were eliminated in the AIA.  Public uses and on-sale activity in Italy now count as prior art.  And, the Italian priority filing counts for all purposes.

[Note – I updated this statute after re-reading pre-AIA Section 119.]

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Odd side-note.  Figure 1 of the patent document includes two versions – one with wheels 1 and one with tracks 1a.  The priority documents only included the drawing with wheels (as shown above).  During prosecution, the examiner objected to claims directed toward tracks rather than wheels (Cat’s preferred emobidment as shown in the photo below), and the patentee added the new drawing 1a in the midst of prosecution with the statement that “no new matter has been added by these amendments.”  The examiner accepted the amendment without further comment. I’m rusty on Italian reading, but I believe that the Italian priority document does mention tracks, but only as follows:

As alternatives to wheels on the machine, track units can be applied and henceforth the word “wheel” may be replaced with the word “track unit.”

[Priority Document].

Doctrine of Equivalents in Lilly v. Apotex

Eli Lilly and Co v. Apotex, Inc. (Fed. Cir. 2020)

You don’t see this often — the district court held on summary judgment that Apotex infringes under the doctrine of equivalents.  On appeal, the Federal Circuit has affirmed – finding no error. (Nonprecedential opinion)

Lilly’s US7772209 claims a particular treatment scheme for pemetrexed disodium that includes a pre-treatment with folic-acid to avoid the harsh side-effects.  See, Crouch, Eligibility Cannot be Raised in IPR Appeal (2019).  Apotex’s product uses a slightly different salt – pemetrexed dipotassium.  Apotex needs its version to be the equivalent in order to receive drug approval, but it would prefer to still avoid infringement under the Doctrine of Equivalents.

Although Apotex (implicitly) admits that its version is an equivalent, the company argues that Lilly should be estopped from pursuing DoE infringement here because of Prosecution History Estoppel (PHE).  In particular, Lilly made a narrowing amendment to the claim term in question during patent prosecution to avoid the prior art and now seeks to reclaim that ground via equivalents.

My simplistic drawing above does the trick.  Lilly’s original patent filing did not expressly claim the use of “pemetrexed disodium,” but rather used the broader term “an antifolate.”  During prosecution, Lilly narrowed its claims to avoid some prior art — deleting the broader “antifolate” limitation and replacing it with the narrower “pemetrexed disodium.”

None of the dependent claims expressly recited Pemetrexed Disodium.  However, one original claim had limited the antifolate to “ALIMTA,” which is Lilly’s brand of Pemetrexed Disodium.  In addition, the specification noted that the “most preferred” antifolate for the practicing the invention is “Pemetrexed Disodium (ALIMTA), as manufactured by Eli Lilly & Co.”  The claim to ALIMTA was also deleted during prosecution based upon an indefiniteness rejection. MPEP 2173.05(u).

PHE: We know that a narrowing amendment made during prosecution creates a presumption of Prosecution History Estoppel that would bar the patentee from asserting infringement-by-equivalents over the surrendered subject-matter.

The district court found no surrender, and the Federal Circuit affirmed.  The first bit here is easy claim construction — the original (dependent) claim recited “ALIMTA” and now the claim recites “pemetrexed disodium.”  The district court found these to be synonymous, and the federal circuit agreed.  Apotex had argued that ALIMTA should have been seen as encompassing all forms of pemetrexed, and thus its deletion would serve as an additional narrowing amendment. The courts, however, rejected that argument based upon in intrinsic evidence within the patent documents.  This was the sole argument raised on appeal by Apotex and thus lost the case.

The court does not address PHE stemming from the bigger amendment (antifolate => pemetrexed disodium).  There was a continuation application in-between, but you “can’t use continuations to avoid fact of narrowing amendment.” Robert A. Matthews, 2 Annotated Patent Digest § 14:82.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

What is an Article of Manufacture for Design Patent Law?

USPTO is seeking public comment on the meaning of an “article of manufacture” as used in 35 U.S.C. 171(a):

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The Federal Circuit’s recent decision in Curver Luxembourg refocused attention on the importance of the particular article of manufacture in the design patenting process. That case reiterated the point that design patents must be tied directly to an article of manufacture, and not simply a design in the abstract.

[L]ong-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se.

Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019) (refusing to enforce Curver’s patent as a disembodied design).

[RFC Design Patents]

This particular RFC focuses on emerging technologies: projections; holographs; virtual/augmented reality; etc.  I would also include screen icons that are only temporarily shown when electricity is applied.  In general, the USPTO has deduced the following regarding screen icons from various precedential decisions:

  • they must be embodied in a computer screen, monitor, other display panel, or portion thereof;
  • they must be more than a mere picture on a screen; and
  • they must be integral to the operation of the computer displaying the design.

Particular questions from the RFC:

  1. Please identify the types of designs associated with new and emerging technologies that are not currently eligible for design patent protection but that you believe should be eligible. For these types of designs, please explain why these designs should be eligible, how these designs satisfy the requirements of section 171, and how these designs differ from a mere picture or abstract design. In addition, if you believe that these types of designs should be eligible, but a statutory change is necessary, please explain the basis for that view.
  2. If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is integral to the operation of a device (e.g., a virtual keyboard that provides input to a computer), is this sufficient to render the design eligible under section 171 in view of the current jurisprudence? If so,
    please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view.
  3. If the projection, holographic imagery, or virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is interactive with a user or device (e.g., a hologram moves according to a person’s movement), is this sufficient to render a design eligible under section 171 in view of the current jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the basis for that view.
  4. If the projection, holographic imagery, or image appearing through virtual/augmented reality is not displayed on a computer screen, monitor, or other display panel but is projected onto a surface or into a medium (including air) and is not otherwise integral to the operation of a device or interactive with a user or device (e.g., is a static image), is
    this sufficient to render a design eligible under section 171 in view of the current  jurisprudence? If so, please explain how the article of manufacture requirement is satisfied and how these designs differ from a mere picture or abstract design. If you believe that these designs do not meet the requirements of section 171, please explain the
    basis for that view.
  5. Do you support a change in interpretation of the article of manufacture requirement in 35 U.S.C. 171? If so, please explain the changes you propose and your reasons for those proposed changes. If not, please explain why you do not support a change in interpretation.
  6. Please provide any additional comments you may have in relation to section 171, interpretation or application of section 171, or industrial design rights in digital and new and emerging technologies.

Deadline for comments: Feb 4, 2021

Method: Comment via the portal at (Docket No PTO-C-2020-0068).

NCAA v. Alston: Antitrust and Athlete Pay

Best sports of the season may actually be in the court — the Supreme Court.  The Supreme Court has agreed to hear the antitrust against the NCAA and AAC regarding payments to student athletes.

The basic issue here is that big-sport colleges and their associations (NCAA, SEC, ACC, etc.) generate tremendous revenue while at the same time use horizontal agreements to force their athletes to remain amateur.

Question presented:

By NCAA: Whether the Ninth Circuit erroneously held … that the National Collegiate Athletic Association eligibility rules regarding compensation of student-athletes violate federal antitrust law.

Restatement by Athletes: Whether restraints that competing NCAA member schools have agreed to impose in the name of “amateurism” should be exempt from challenge under the antitrust laws.

And, who owns the IP?

See National Collegiate Athletic Ass’n v. Board of Regents of the University of Oklahoma, 468 U.S. 85 (1984)

Finjan’s Claims in IPR

Palo Alto Networks, Inc. v. Finjan, Inc. (Fed. Cir. 2020)

Note – I originally misread this decision as applying the Phillips standard for claim construction. On review, I realize that I misread the decision. The court explains:

For petitions for inter partes review filed on or after November 13, 2018, the Board applies the Phillips district court claim construction standard. 37 C.F.R. § 42.100(b) (2018); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Immunex Corp. v. Sanofi-Aventis U.S. LLC, 977 F.3d 1212, 1216 & n.2 (Fed. Cir. 2020). For petitions for inter partes review filed before November 13, 2018, like Palo Alto’s, we apply the broadest reasonable interpretation claim construction standard.

So, my original opinion–that the change in claim construction made the difference–is obviously wrong.

= = = =

This appeal stems from an IPR proceedings filed by Palo Alto (PANW) against Finjan’s US. Patent No. 8,141,154.  Back in 2017, the Board originally sided with Finjan and confirmed patentability of the claims (not proven unpatentable). In a 2018 appeal, however, the Federal Circuit vacated that decision under SAS.  The IPR had only been partially-instituted and the Supreme Court in SAS held that partial-institution is improper.   On remand, the Board expanded its institution to all challenged claims and then again sided with the patentee — finding none of the challenged claims were proven unpatentable.  On appeal here, the Federal Circuit has affirmed. (more…)

The USPTO Patent Litigation Dataset: Open Source, Extensive Docket and Patent Number Data

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

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

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

Currently, the dataset (available here) includes:

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

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

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

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

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

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

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

Some pending en banc petitions before the Federal Circuit

In re Apple (level deference given on mandamus review of discretionary transfer decisions). [Uniloc Brief][Crouch’s prior post]

Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals, Inc. (Proper venue for ANDA filing — what counts as having “has committed acts of infringement”). [ValeantANDAVenue][Crouch’s prior post]

C R Bard Inc. v. AngioDynamics, Inc. (printed matter and eligibility). [BardPrintedMatter][Crouch’s prior post]

EcoServices, LLC v. Certified Aviation Services, LLC  (automation & eligibility) [EcoWashingMachine][CAFC Decision]

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc. (inducement and “skinny labels”) [GlaxoInducingSkinny][Crouch’s Prior Post]



Injury-in-Fact and Standing to Appeal from the AIA-Trial Decisions

New petition for writ of certiorari in an interesting Hatch-Waxman and the question of Article III standing in appeals of AIA-Trial Decisions.

Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation (Supreme Court 2020)

Introducing generic alternatives that compete with previously approved drugs requires market approval through the Food and Drug Administration (“FDA”). To do so, competitors submit an Abbreviated New Drug Application (“ANDA”) that relies on the safety and efficacy data of the previously approved brand name drug. When that previously approved drug is covered by a patent, however, the mere act of filing the required ANDA subjects the competitor to an immediate patent infringement suit by the brand name company. Such suits are common. By filing an infringement action, the brand name company obtains an automatic 30-month stay during which the FDA cannot approve the competitor’s ANDA.

The real and immediate risk of an infringement suit extends equally to all members of joint ventures that work towards FDA market approval. Petitioners formed a joint venture with a manufacturing partner to develop a generic alternative to Respondent’s brand name drug. Fearing an infringement suit, Petitioner challenged the validity of Respondent’s patent through an administrative proceeding created by Congress under the Leahy-Smith America Invents Act. Petitioner did not prevail on the challenge and appealed the adverse decision.

The questions presented are:

i. Did the Federal Circuit categorically and erroneously preclude redress for injured members of joint ventures in the pharmaceutical industry by only recognizing (1) the manufactuing partner in the joint venture, and (2) the partner applying for FDA marketing approval in the joint venture, as having demonstrable injury-in-fact for Article III standing?

ii. Did the Federal Circuit err by rejecting the Leahy-Smith American Invents Act’s statutory estoppel provisions as a basis to demonstrate injury-in-fact for Article III standing?

Petition.  The petition here was filed by Terry Stanek Rea, former PTO Deputy Director (and Acting Director).

Adaptive Streaming – Not Patent Eligible

by Dennis Crouch

Adaptive Streaming Inc. v. Netflix, Inc. (Fed. Cir. 2020)

In this non-precedential decision, the Federal Circuit has affirmed the lower court’s finding that Adaptive’s asserted claims are ineligible under Section 101. In 2019, Adaptive sued Netflix in C.D. Cal. for patent infringement.  Rather than filing its answer, Netflix immediately filed a motion to dismiss for failure to state a claim. Fed. R. Civ. Pro. 12(b)(6).  That motion was granted — case dismissed.

The patent claims a personal broadcasting system that transcribes an incoming video into a more usable format.  Us7047305 (1999 priority date).  I subscribed to Netflix back in 2001 — receiving rental DVDs in the mail each month.  Netflix has changed dramatically — and one bit of its process appears to be a user-based translation engine.

Claim 39 at issue here requires a “broadcasting server” coupled to a “processor” with the capability of transcoding an incoming video signal from a first compression format into a second compression format “more suitable” for the client device — and available in multiple video stream outputs.  A dependent claim includes the functionality of changing the compression output “in response to a change in bandwidth conditions.”

Abstract Idea: The district court identified the abstract idea here as “collecting information and transcoding it into multiple formats.”

Directed To: With regard to what the claims are directed to, the court looked to the written description coupled with the claim language to deduce the “focus of the claimed advance of over the prior art.” (quoting Solutran (2019) and Affinity Labs 2016).  Here, the court concluded that the focus of the invention is format conversion of incoming video. “The focus is not any specific advance in coding or other techniques for implementing that idea; no such specific technique is required.”

Something more: The court offered a grade for the patent’s performance under Alice Step 2: “The claims also flunk the second step of the Alice inquiry.”  In particular, the court notes the presence of “generic” hardware carrying out its common function known in the art.  That much was admitted in the specification.

Patent Spec.  Regarding novelty + obviousness, the court here reiterated that satisfying those inquiries “does not imply eligibility under § 101, including under the second step of the Alice inquiry, because what may be novel and non-obvious may still be abstract.”

In its reply-brief, the patentee argued also that the commercial success of its invention should be used as evidence of patent eligibility.

[C]ommercial success and industry recognition serves as evidence that the technology underlying the asserted patent is far from well-understood, routine or conventional, and supports that the patent claims are directed to a technological solution to a technological problem.

[Adaptive_Streaming_Inc._v._Net_21]. The court did not consider that argument – considering it forfeited because not raised in the opening brief.

= = = = =

The patent here was originally owned by the dot com LUXXON, a company developing streaming services.  The patents were then assigned to an offshore holding company Hutchison Mediator (Bahamas) as part of an asset sale (part of CK Hutchison Holdings). Then WI-LAN took ownership and transferred rights to Adaptive Streaming, which appears to be a wholly owned subsidiary of WI-LAN (at least no other company owns >10%).


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