101: Extending Uncertainty to All Fields

by Dennis Crouch

It appears that we have not yet seen the most invasive nature of contemporary patent eligibility doctrine.  Case in point: Yu v. Apple Inc. (Fed. Cir. June 11, 2021) [Yu vs Apple].

Yanbin Yu and Zhongxuan Zhang are the inventors and owners of U.S. Patent No. 6,611,289 (‘Digital cameras using multiple sensors with multiple lenses’).  The pair sued Apple and Samsung for patent infringement, but the district court dismissed the cases for failure-to-state-a-claim.  In particular, the court found the claims directed toward an abstract idea and thus invalid under 35 U.S.C. § 101.  On appeal, the Federal Circuit issued a 2-1 decision affirming with Judge Prost and Taranto in the majority and Judge Newman in dissent.

The asserted claims are directed to a digital camera having multiple analog image sensors with lenses mounted on the image sensors. The claims also include analog-to-digital circuitry to digitize images from each camera so that they can be stored in memory. The claims then require creation of a “resultant digital image” based upon images from the two different cameras.  Note, the patent application was filed back in 1999; issued in 2003; and has now expired.

On appeal, the Federal Circuit affirmed that the claims at issue are merely directed to the following abstract idea:

“claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.”

The problem, according to the majority, is that claims “merely invoke generic processes and machinery.” (Quoting Smart Sys.) In some ways, the patent’s specification also suggests an abstraction — especially the following line: “there is a great need for a generic solution that makes digital cameras capable of producing high resolution images without enormously incurring the cost of photo-sensitive chips with multimillion photocells.”  ‘289 Patent.  But, I would suggest reading the specification for an understanding that this is a technological solution.

The appellate panel suggests that the specification probably does include a patent eligible invention in the form of “a four-lens, four-image-sensor [including] a black-and-white sensor.”  But, the claims at issue do not require four sensors or the B/W sensor.

In dissent, Judge Newman explains:

This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’ . . . [C]laim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images. The camera of the ’289 patent may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.

Slip Op.  Newman’s dissent also walks into the bigger picture of Section 101 jurisprudence:

In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.

The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received.

The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.

= = = = =

1. An improved digital camera comprising:

a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;

two lenses, each being mounted in front of one of said two image sensors;

said first image sensor producing a first image and said second image sensor producing a second image;

an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;

an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and

a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

2. The improved digital camera as recited in claim 1, wherein said first image sensor sensitive to said full region of visible color spectrum.

4. The improved digital camera as recited in claim 1, wherein said analog-to-digital converting circuitry comprises two individual analog-to-digital converters, each integrated with one of said first and second image sensors so that said first and second digital images are digitized independently and in parallel to increase signal throughput rate.


Journal of the Patent & Trademark Office Society

The Journal of the Patent & Trademark Office Society has been publishing intellectual property scholarship for 100+ years (since 1918).  Originally it was the Journal of the Patent Office Society, the journal changed its name in 1985 to expressly include trademarks.  The US Patent & Trademark Office (formerly the US Patent Office) had changed its name in 1975.

The first issue included an two articles and several notes:

  • Wm. I. Wyman, Thomas Jefferson and the Patent System, 1 J. Pat. Off. Soc’y 5 (1918).
  • F.W.H. Clay, The relation of the examiner to the inventor and his attorney, 1 J.
    Pat. Off. Soc’y 8 (1918).

Three of my favorite articles in the journal are all historical pieces by Edward Walterscheid.

  • Edward C. Walterscheid, The Early Evolution of the United States Patent Law: Antecedents (Part 1), 76 J. Pat. & Trademark Off. Socy. 697 (1994).
  • Edward C. Walterscheid, The Early Evolution of the United States Patent Law: Antecedents (Part 2), 76 J. Pat. & Trademark Off. Socy. 849 (1994).
  • Edward C. Walterscheid, Patents and Manufacturing in the Early Republic, 80 J. Pat. & Trademark Off. Socy. 855 (1998).

Some of you may have known Edward, who died in 2011.

Here’s what I’m writing to announce: JPTOS was in a publishing hiatus over the past year, but is now back and ready to accept article submissions:

JPTOS is a publication written by and for the benefit of IP practitioners. We favor topical, practical articles that can be useful to our readers. There is no page length limit, however, articles greater than 40 double spaced pages may have to be split into separate articles.

We take article submissions pertaining to all areas of intellectual property, including patents, trademarks, copyrights, trade secrets, hybrids between all those forms, etc., as well as cutting-edge law & technology issues that may intersect intellectual property topics such as blockchain, cryptocurrencies, NFTs, artificial intelligence, robotics, 3D-printing, privacy/surveillance law, social media, bioengineering, pharmaceuticals, COVID vaccine patents or patent policies, the pandemic’s impact on IP laws/practice and much more. If you are a practitioner/lawyer, judge, law professor, law student, writer or anyone having an interest in the above areas, please submit by clicking the “Submit Manuscript” button above today!

Submit your articles here: https://jptos.scholasticahq.com.

Involving Patent Issues vs. Arising Under the Patent Laws


Joint Ownership and Trademark Registration

Bibiji Inderjit Kaur Puri v. Yogi Bhajan Administrative Trust (Fed. Cir. 2021)

I practice a form kundalini yoga that is somewhat in the tradition of Yogi Bhajan.  Bhajan died in 2004 leaving his widow (Puri) as well as an Administrative Trust (YBAT). In recent years, Bhajan’s history of sexual abuse has come to light as well.

Puri and YBAT have a fairly long history of litigation over ownership and control of Bhajan’s estate.  The most valuable aspect today is probably YOGI TEA that is sold by a third party, the East West Tea Company, but with Puri and YBAT each having a 50% undivided ownership of intellectual property rights.

The dispute at issue here started when Puri, acting alone, filed a trademark registration application for the mark YOGI for bath and beauty products. YBAT opposed, and the PTAB sided with YBAT — holding that:

[Puri] did not have a bona fide intent to use the mark in commerce solely in her individual capacity at the time she filed her involved because, at such time, [Puri] was aware that both [YBAT] and [Puri] each had an undivided and equal interest in the applied-for mark for the identified goods. Accordingly, we find that the involved application is void ab initio.

[TTAB Decision – OPP_47].  On appeal, the Federal Circuit has affirmed, finding the Board’s legal conclusions “without error” and its factual findings supported by substantial evidence.

The basic legal rule here is that all owners of a trademark must at least consent to the filing of a use-based trademark application.  Without consent, “the application
is void ab initio.”  For this point, the TTAB cites to Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1310 (TTAB 2014) (“the involved application is void ab initio because applicant is not the sole owner of the mark”).

This basic rule is derived from the statute 15 U.S.C. § 1051(a), which requires the trademark owner be the one who files for registration. The statute goes on to require a statement from the owner that “no other person has the right to use such mark..” 15 U.S.C. § 1051(a)(3)(D).   Here, although Puri as an owner of the mark, YBAT is also an owner with its own rights.  


Changes to the Rules of Ethics for Patent Law Practitioners

by Dennis Crouch

The professional conduct of US patent attorneys and agents are governed by the rules regarding “Representation of Others before the United States Patent and Trademark Office” found in the Code of Federal Regulations, Title 37, Part 11. 37 CFR 11.1 – 11.901.  Patent attorneys are also regulated by the rules of professional conduct of their home states.  Although there are some patent specific differences, the USPTO has been shifting its rules to be more in line with the ABA’s Model Rules of Professional Conduct that have been adopted, at least in part, by all fifty states.

In 2020, the USPTO proposed a number of changes to its rules to better align them with the ABA Model Rules.  Recently, the agency finalized those proposals (with minor changes) to be effective June 25, 2021.

Federal Register Notice [PDF]

Key changes:

  • Section 11.106(b)(7): New provision permits the disclosure of client information “to the extent the practitioner reasonably believes necessary . . . (7) To detect and resolve conflicts of interest arising from the practitioner’s change of employment or from changes in the composition or ownership of a firm, but only if the revealed information would not compromise the practitioner-client privilege or otherwise prejudice the client.”
  • Section 11.106(d): New provision that practitioners “shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.”
  • Section 11.118: The amendment here focuses on prospective clients, and changes the rule from someone who “discusses” becoming a client to someone who “consults” with the practitioner about the possibility of forming a client-practitioner relationship. This is generally thought to narrow the definition.

  • Section 11.702:  This provision focuses on attorney advertising. The changes conform more closely with the new ABA rules.  I’ve compared the old and new below.  The main changes here:
    • Advertising can include “contact information” rather than “office address.”  The notes indicate that this might be a website or email address, although I don’t see a website as necessarily being “contact information.”
    • Nominal gifts will now be expressly permitted to someone who refers clients to you, so long as they are “neither intended nor reasonably expected to be a form of compensation.”
    • Certified as a Specialist: The rules limit a practitioner’s ability to state or imply that he or she is “certified as a specialist in a particular field of law.” It is not clear to me that “patent law” would count here, but I’m going to speak with OED to make sure.

  • Section 11.703 makes some changes to the meaning of “solicitation” and when it is appropriate. Importantly, prohibited solicitation is now expanded beyond “prospective clients.”

Other changes are included as well.

Cert Denied; and What is left?

Supreme Court today denied certiorari in two patent cases:

  • Fast 101 Pty. Ltd. v. Citigroup Inc., No. 20-1517 (patent eligibility)
  • Comcast Cable Communications, LLC v. Promptu Systems Corporation, No. 20-1220 (Arthrex related, but the SCT petitioner is the patent challenger party who initiated the IPR in the first place).

The court has not yet granted certiorari for any patent cases for next term. There are a few interesting ones pending that should get an up/down vote (or CVSG) in the next couple of weeks:

  • Patent Eligibility: NetSoc, LLC v. Match Group, LLC, No. 20-1412;
  • Obviousness: Amarin Pharma, Inc., et al. v. Hikma Pharmaceuticals USA Inc., No. 20-1119;
  • Attorney Fees: Roadie, Inc. v. Baggage Airline Guest Services, Inc., No. 20-1420;
  • Civil Procedure: Rick C. Sasso v. Warsaw Orthopedic, Inc., No. 20-1452; Warsaw Orthopedic, Inc., et al. v. Rick C. Sasso, No. 20-1284.

There is also a pair of cases pending certiorari involving Obamacare reimbursement that could be big $$$$.  United States v. Maine Community Health Options, No. 20-1432; Common Ground Healthcare Cooperative v. United States, No. 20-1200; United States v. Common Ground Healthcare Cooperative, No. 20-1536.

= = = = =

I should mention that we are still awaiting two merits decisions that should be released by the end of June 2021.

  • Arthrex (proper appointment of PTAB judges)
  • Minerva (assignor estoppel)

– DC

A Swarm of Gnats and Injury-In-Fact

by Dennis Crouch

A swarm of gnats (midges) can be annoying.  Although each bug is almost too small to be seen or felt, 20,000+ of the critters buzzing around can cause some to panic or at least release a curse.  I’d advise you to just act gnaturally. But imagine for a second that you are able to capture two of the creatures that were part of the swarm.  Are you then able to pass judgment on those two captured individuals for the harm of the swarm?  Will killing those two gnats provide any relief from the swarm? (I know you are thinking revenge, but that is gnot the kind of concrete and particularized relief I’m talking about.)

In Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021), the Federal Circuit refused to pass judgment on the two without some evidence that they were the particular cause of any harm.  OK, we’re really talking about patents, and Apple is seeking to cancel two patents out of the 20,000+ that it has licensed from QualcommId.

MedImmune Licensee Standing Does not Apply to Portfolio License

The Case: After some litigation, Apple eventually licensed 20,000+ Qualcomm patents in a six-year-deal.* Meanwhile, Apple also pursued inter partes review (IPR) of two of the licensed patents. US7844037 and US8683362.  The PTAB granted the IPR petitions but eventually sided with Qualcomm–holding that the challenged claims had not been proven obvious.  Apple then appealed, but the Federal Circuit dismissed the appeal for lack of standing.  The court held that Apple had not shown any “injury-in-fact” associated with the continued existence of the two challenged patents.

The en banc petition focuses on the Supreme Court’s patent-licensee standing decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). In MedImmune, the Supreme Court rejected Federal Circuit precedent that a “licensee in good standing cannot establish an Article III case or controversy.”  Although the facts of MedImmune are some what different, Apple argues that the case should be read broadly based upon the Supreme Court’s repeated promotion of patent challenges.

  • Lear, Inc. v. Adkins, 395 U.S. 653 (1969) (abolishing doctrine of licensee estoppel)
  • Blonder-Tongue Laboratories, Inc. v. U. of Illinois Found., 402 U.S. 313 (1971) (expanding issue preclusion against a patent previously determined invalid).
  • Cardinal Chem. Co. v. Morton Intern., Inc., 508 U.S. 83 (1993) (holding that courts may retain jurisdiction over invalidity counterclaims even after a determination of noninfringement).

Apple correctly argues that the IPR situation has unique circumstances that push toward standing: (1) estoppel tied to unsuccessful IPR; and (2) statutory right to appeal.  In the case, Unified Patents has filed a brief in support of en banc rehearing. And, the Federal Circuit has shown some interest by inviting a response from Qualcomm. That response is due June 9.

En Banc on Standing for IPR Challenge Appeals

= = = =

The panel noted in its opinion (and especially in oral arguments) that case involved a lack of evidence regarding the injury-in-fact.  That situation exists, in part, because the issue of standing was not addressed by the USPTO.  Rather, Article III standing only applies once a case moves into Federal Court, and so here addressed for the first time by the appellate court.  Usually the court has a nice tight record to work from, but no record exists for this issue.  Perhaps the court should have held an evidentiary hearing in order to elucidate this injury-in-fact. 

= = = = =

* Note – most of the deal has been kept confidential.

Law School Canons: You can’t always “have it your way!”

Editor’s Note: Avery Welker is a rising 2L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts. You can email ideas for future posts to avery@patentlyo.com.  – Dennis Crouch

By Avery Welker

If PerDiemCo LLC (PerDiemCo | Defendant) could have it their way, sending demand letters to a company in another state would not constitute minimum contacts for purposes of personal jurisdiction. Trimble, Inc. v. PerDiemCo LLC, No. 19-2164, 2021 WL 1898127, at *1, *7 (Fed. Cir. May 12, 2021). PerDiemCo is the assignee of eleven patents[1] at issue, all related to geofencing and electronic logging technology (commonly used in the trucking industry). Trimble, Inc., and ISE (Trimble’s wholly-owned subsidiary) (Trimble | Plaintiff) offer geofencing and logging technologies along with manufacturing and selling positioning devices. Id. at *1. Below is a figure depicting this technology, which shows the geofenced areas (boxed in), the entry and exit points (see figure reference 2204), and location information logs while a contact is within a geofenced area (see figure reference 2202). U.S. Patent No. 10,171,950 fig.22 (filed May 22, 2018) (issued Jan. 1, 2019).

The entire web of incorporations, headquarters, locations, and personal jurisdiction issue reads like a Civil Procedure personal jurisdiction final exam hypo. Trimble, Inc. is incorporated in Delaware and headquartered in Sunnyvale, California (in the Northern District of California). Trimble Inc., WL at *1. ISE is an Iowa LLC with its principal place of business in Coralville, Iowa (in the Northern District of Iowa). Id. PerDiemCo is a Texas LLC with office space in Marshall, Texas (Eastern District of Texas). Id. The sole owner, employee, and officer lives and works in Washington D.C. and has never visited the office space in Texas. Id.

PerDiemCo sent a letter to ISE in 2018 alleging ISE’s devices used technology in PerDiemCo’s patents (see footnote 1). Id. PerDiemCo attached an unfiled complaint against ISE for the Northern District of Iowa, asserting nine patents against ISE, included a claim chart, offered a non-exclusive license to PerDiemCo’s patents, and a draft nondisclosure agreement for negotiations. Id. ISE subsequently forwarded the letter to Trimble’s IP counsel in Westminster, Colorado. Id. at *2. The counsel responded to PerDiemCo to inform that the issues would be communicated through Trimble. Id. PerDiemCo responded to Trimble and alleged that Trimble’s products also infringed in PerDiemCo’s patents, attaching a claim chart. Id. The parties agreed to negotiate for a few months. Id. PerDiemCo leveled new allegations of patent infringement against Trimble’s geofencing products and allegations based on two previously unasserted patents. Id. PerDiemCo repeatedly threatened to sue Trimble in the Eastern District of Texas on the infringement accounts. Id.

In response, Trimble and ISE sought a declaratory judgment action of non-infringement in the Northern District of California for all patents asserted by PerDiemCo in January 2019. Id. Trimble and ISE asserted that PerDiemCo was subject to specific personal jurisdiction in the Northern District of California. Id. While the district court (and later the Federal Circuit) held that the minimum contacts standard was satisfied, the district court dismissed the action, and Trimble and ISE appealed. Id. at *3, *7.

PerDiemCo argued that specific personal jurisdiction would be unreasonable, citing the five “fairness” factors outlined in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985).[2] In Burger King, the Court had to decide whether exercising personal jurisdiction over two out-of-state Burger King franchisees would be fair. Id. at 466, 476. The Court ultimately concluded, after weighing the fairness factors (see footnote 2), that the exercise of personal jurisdiction, in that case, did not offend due process, as the franchisees had fair notice of the danger of suit in Florida. Id. at 487. The franchisees did not show the Court that it would be fundamentally unfair to exercise jurisdiction. Id.

Factor 1 – the burden on the defendant: PerDiemCo argued that litigating anywhere other than the Eastern District of Texas would impose an undue burden. Trimble Inc., WL at *7. However, the district court found that PerDiemCo’s office in Texas was essentially for show since PerDiemCo’s sole employee lived and worked in Washington D.C. Id. Since PerDiemCo filed lawsuits very far away from Washington D.C. and litigating patents away from D.C. is the main operation of PerDiemCo’s business, the Federal Circuit found no burden. Id.

Factor 2 – the forum State’s interest in adjudicating the dispute: The Federal Circuit found that California had an interest in litigating the suit as Tremble resided in California, and the State desires to protect its residents from any frivolous claims of patent infringement. Id. at *8.

Factor 3 – the plaintiff’s interest in obtaining convenient and effective relief: Here, the Federal Circuit found that Trimble had an obvious interest in getting relief from a court in its home forum, where principal employees and documents are. Id.

Factor 4 – the interstate judicial system’s interest in obtaining the most effective resolution of controversies: The Federal Circuit found that even if, as PerDiemCo asserted, a settlement would be the most efficient conflict resolution, both parties could reach a settlement pending litigation in the Northern District of California. Id.

Factor 5 – the shared interest of the several states in furthering fundamental substantive social policies: Given that the same patent laws govern all states, there is no conflict in litigating in the Northern District of California. Id.

Upon the Federal Circuit’s factor weighing, they ultimately decided that PerDiemCo did not show that jurisdiction was unreasonable and reversed the district court’s dismissal, remanding for further proceedings. Id.

Here, PerDiemCo couldn’t “have it their way.” Nothing short of jurisdictional rules so unfair that make litigation so tricky that the party would be severely disadvantaged will defeat asserting personal jurisdiction. Burger King, 471 U.S. at 477. Burger King makes it abundantly clear – if it’s fair, personal jurisdiction is lawful!

[1] U.S. Patent Nos. 8,149,113, 9,319,471, 9,485,314, 9,621,661, 9,680,941, 9,871,874, 9,954,961, 10,021,198, 10,104,189, 10,148,774, 10,171,950.

[2] The factors are: (1) “the burden on the defendant,” (2) “the forum State’s interest in adjudicating the dispute,” (3) “the plaintiff’s interest in obtaining convenient and effective relief,” (4) “the interstate judicial system’s interest in obtaining the most efficient resolution of controversies,” and (5) the “shared interest of the several States in furthering fundamental substantive social policies.” Burger King, 471 U.S. at 477 (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980).

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Classic Prosecution Disclaimer

by Dennis Crouch

SpeedTrack v. Amazon (Fed. Cir. 2021)

This claim construction decision focuses on prosecution disclaimer.  During prosecution, the patentee amended its claims and made statements distinguishing their claimed invention from the prior art.  Those actions created a disclaimer — meaning that the claim limitation cannot be interpreted to cover what was found in that distinguished reference. 

SpeedTrack’s U.S. Patent No. 5,544,360 covers a three-step method of searching-by-category.

  1. Creating a table of category descriptions without any “predefined hierarchical relationship”;
  2. Creating a directory of files that includes a set of category descriptions for each file.
  3. Creating a search filter, that allows a user to pick a set of categories, but only allows selection when there is at least one file that matches the selection.

The patent document explains the benefits of this system: It avoids the problem of typos in searches; and avoids the time-waste of searching for data that cannot be matched.  OK – it is surprising to me that there is not clear prior art, even though the application has a 1985 priority filing date.

The infringement lawsuit was filed back in 2009 in N.D.Cal. In 2010, Judge White stayed the lawsuit pending outcome a parallel lawsuit against Wal-Mart and an ex parte reexamination of the patent at issue.  The reexamination concluded in 2011 — confirming the patentability of the above claim (as well as others); the Wal-Mart action ended with non-infringement finding. And, another parallel action against Home Depot also ended with a finding that the “Kessler doctrine precludes SpeedTrack’s infringement claims.”  At that point, Judge White picked up this case again and started working through the remaining issues.

Claim Construction: The focal point of claim construction was the negative claim limitation prohibiting a preexisting hierarchical relationship between the various categories: “the category descriptions having no predefined hierarchical relationship.”  Claim 1.  The accused systems all include some genus-species or field-value relationships within their categories.  Here, a field-and-value is something like “Language-and-French.”  The district court held that these genus-species relationships were prohibited under the no-preexisting hierarchy limitation because of prosecution disclaimer.

Interpretive Construction versus Disclaimer: The entire prosecution history is relevant to determining the meaning of the various claim limitations. As the Supreme Court wrote in Graham v. John Deere Co., 383 U.S. 1 (1966), “an invention is construed not only in light of the  laims, but also with reference to the file wrapper or prosecution history in the Patent Office.” See also Crawford v. Heysinger, 123 U.S. 589, 602 (1887) (“file-wrapper and contents in the matter of the reissue are part of the evidence in the case, and throw light upon what should be the proper construction of claims 1 and 2.”).  In extreme cases, the prosecution history serves as a disclaimer effectively showing abandonment of claim scope.  Disclaimer only applies when the patentee acts to disavow claim scope in a way that is “both clear and unmistakable to one of ordinary skill in the art.” Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366 (Fed. Cir. 2007); Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009).

Often Implicit: Sometimes patent applicants expressly state that they are disclaiming scope. But most of the time the disclaimer is impliedly understood by the patentee’s statements and actions.  We typically look toward statements in the prosecution history and amendments made to the claims, either of which can create disclaimer.

In SpeedTrack, the hierarchical limitation had been added during prosecution to distinguish the invention from a prior art patent that included a field-and-value hierarchy. (Snippet below).

On appeal, SpeedTrack argued that the prior art’s use of field-and-value was not a hierarchy and so not captured by the claim limitation.  The problem though is that (1) the patentee had, during patent prosecution, added the limitation specifically to avoid the prior art reference and (2) had particularly distinguished the prior art reference as requiring a “2-part hierarchical relationship between fields or attributes, and associated values for such fields or attributes.”

In the end we have classic disclaimer: amendment to avoid prior art + statements explaining aspect of the prior art being avoided by the amendment. SpeedTrack admitted that there would be no infringement on this construction.  As such, the prior judgment of non-infringement was affirmed.

= = = =

As discussed above, the doctrine of prosecution disclaimer is a rule of claim construction that then applies to limit the literal claim scope.   The courts have separately ruled on the prosecution history estoppel that similarly limits patentees ability to expand the literal scope to cover equivalents.  I would argue that the doctrine of equivalents could not be used to recover scope disavowed by disclaimer (even absent a narrowing amendment).

In addition, although I termed the doctrine “classic disclaimer” it was only in 2003 that the Federal Circuit first used the phrase “doctrine of prosecution disclaimer” — writing that the doctrine “is well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Engr., Inc, v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003).  It was in Omega that the court also made clear that any disavowal be “clear and unmistakable.”  Truthfully, at this point the Supreme Court precedent  was not (and is not) entirely clear and unmistakable.

= = = =

Some older cases on point:

  • Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222 (1880) (express disclaimer added to the specification during prosecution confirmed a narrow construction);
  • Sutter v. Robinson, 119 U.S. 530 (1886) (The patentee “is not at liberty now to insist upon a construction of his patent which will include what he was expressly required to abandon and disavow as a condition of the grant.”)
  • Schriber–Schroth Co. v. Cleveland Trust Co., 311 U.S. 211 (1940) (“It is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected, and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent.”);
  • Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) (“claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent”).

Where we are with the GATT Bubble of 1995

by Dennis Crouch

The Federal Circuit recently wrote about the GATT-Bubble in Hyatt v. Hirschfeld decision. “[I]n the nine days leading to June 8, 1995, the PTO reported that it received and processed over 50,000 applications—one-quarter of the entire year’s projected filings.”  Pre-GATT applicants had a comparative incentive to keep their patent applications pending longer because patent term was calculated based upon the issue date.* This was especially true in the early days prior to creation and expansion of Patent Term Adjustment.  1995 was 26 years ago — most folks who are patent attorneys today were not yet even in law school at the time. That summer, I was working at a bacon factory in Frontenac Kansas (The $5.15 per hour was substantially above minimum wage of $4.25).


The bulk of pre-GATT applications were processed and issued/abandoned roughly as expected.  However, there has been quite a long tail of pending applications.  By 2010 the number was down to about 600 pre-GATT pending applications.  We know now that about 380 of these were associated with Gil Hyatt; the remaining 220 were associated with other applicants.**   By 2016, the number was down to 20 non-Hyatt pre-GATT pending applications, and now in 2021 there are only 2 non-Hyatt applications remaining.  There will be a few more years of litigation, but if the PTO’s win on prosecution estoppel holds, this chapter will finally be closed.

= = =

In recent years, all of the pre-GATT patents have issued to Personalized Media Communications (PMC).

  • U.S. Pat. No. 10,715,835 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,616,638 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,609,425 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,523,350 – 2019 Signal processing apparatus and methods
  • U.S. Pat. No. 10,334,292 – 2019 Signal processing apparatus and methods
  • U.S. Pat. No. 9,674,560 – 2017 Signal processing apparatus and methods

In addition, a number of unclassified pre-GATT cases have also moved through.  An interesting one is a patent issued to Lockheed Martin in 2020 on a “method for opening a combination padlock.” U.S. Pat. No. 10,669,742.  Basically, this is a method and apparatus for figuring out the combination on the padlock.  The application was filed back in 1990 and kept secret by order of the Department of Defense until 2018.

= = = = =

* Applicants who beat the 1995 deadline were granted given either a patent term of 17 years from issuance or else 20 years from filing, whichever was longer as calculated at issuance. In that scenario, there were very good reasons to file before the deadline if the invention was ready for patenting.

** Note – for this essay, I’m ignoring old applications that were kept secret and denied issuance by the US Government.

Federal Circuit: a Ziploc is a bag.

SC Johnson & Son v. USA (Fed. Cir. 2021)

This is a tariff (importation tax) case, so you might stop reading here.   But, it also involves Ziploc brand food-grade sandwich bags. SC Johnson manufactures the bags in Thailand for US import.

There is a big (electronic) book known as the Harmonized Tariff Schedule of the United States (“HTSUS”) that is used to classify commercial imports.  Each classification will have its own tariff rate, that will often also depend upon other factors such as the country of origin.

In this case, the Customs (part of Homeland Security) classified the bags under HSTSUS Subheading 3923.21.00, but SCJohnson argues that the proper classification is 3924.90.56, which would reduce the tariff from 3% ad valorem to 0% (duty free).

3923.21.00–Articles for the conveyance or packing of goods, of plastics; stoppers, lids, caps and other closures, of plastics: Sacks and bags (including cones): Of polymers of ethylene.  [3% tariff ad valorem]

3924.90.56–Tableware, kitchenware, other household articles and hygienic or toilet articles, of plastics: Other: Other. [Nominally 3.4% tariff, but duty free under the Generalized System of Preferences]

The United States Court of International Trade found that the bags could be classified under either heading and consequently chose what it deemed to be the more specific–bags made of ethylene.  On appeal, the Federal Circuit has affirmed.

The Federal Circuit follows a similar law/fact divide that it does for patent infringement. “(1) determining the proper meaning of the tariff provisions, which is a question of law; and (2) determining which heading the particular merchandise
falls within, which is a question of fact.”  Slip Op. (Quoting Deckers (Fed. Cir. 2008)).

One of the key questions in the appeal is whether the 3924 heading should be classified as a “use provision” or an “eo nomine” provision.

An eo nomine provision ‘describes an article by a specific name,’ whereas a use provision describes articles according to their principal or actual use.

Slip Op. Quoting Schlumberger (Fed. Cir. 2017) and Aromont (Fed. Cir. 2012).  Use provisions are more narrowly construed – and that would make it more likely that the court would choose SCJohnson’s preferred classification.   On appeal though, the Federal Circuit interpreted it as eo nomine and affirmed.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Knowingly Lying on your Copyright Registration Submission

by Dennis Crouch

The Supreme Court has granted certiorari in the procedural copyright case of Unicolors, Inc. v. H&M Hennes & Mauritz. Anyone who has registered copyrights know that the Copyright Office has a set of seemingly arcane and odd rules that often arise when registering a collection or series of works.  A copyright owner that fits within the rules can save quite a bit on copyright office fees. In this case, the copyright owner seemingly lied to get a lower fee. In particular, during January 2011 Unicolors created 31 different fabric designs.  It published 22 of those together as a collection, but the other 9 were not published by Unicolors.  It then submitted all 31 to the copyright office and indicated that they had all been first published as a bundle.  This saved them a few hundred dollars in governmental fees.  Although I do not know, I believe that many copyright holders have taken similar steps.

Later Unicolors sued H&M for copyright infringement and H&M was found liable.  H&M had unsuccessfully asked the district court to invalidate the copyright registration based upon inaccuracies in the registration. On appeal, the Ninth Circuit reversed — ordering the district court to refer the case to the Copyright Office under 17 U.S.C. § 411(b).  Section 411(b) begins with a statement that a copyright registration is generally valid as a precursor to enforcement except where the registrant knowingly included “inaccurate information” that “would have caused the Register of Copyrights to refuse the registration.”  A district court faced with this situation is instructed by the code to refer the case to the Copyright Office for advice.

In any case in which inaccurate information … is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. § 411(b)(2).

But, as noted above, what have here is a relatively minor, but still knowing inaccuracy in the registration.  And the question for the Supreme Court is basically whether the statutory statement requiring referral “in any case in which inaccurate information” is submitted to the copyright office include some implicit materiality standard? Here is roughly the question presented:

Whether 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration?

[Petition, Granted as to Question 1 only].

Hyatt v. Hirshfeld: A perfect storm that overwhelmed the PTO

by Dennis Crouch

Gil Hyatt v. Hirshfeld (Fed. Cir. 2021).

Patent terms generally last for 20-years from filing.  Since the prosecution process typically takes about three years, the result is roughly 17 years of effective patent term.  That amount can shift somewhat depending upon various factors, including patent-term-adjustment, terminal disclaimers, patent family size, prosecution timing, and payment of maintenance fees.

The 20-year-from-filing rule started on June 8, 1995 (the GATT deadline).  Applications filed prior to that date were treated under the old rule that patent terms last for 17-years from the issue date.

Like many other patent applicants, Gil Hyatt filed a large number of continuation patent applications in the days leading up to the GATT deadline. One difference from most applicants is that Hyatt’s applications were already quite old — claimed priority back to filings from the 1970s and 1980s. The big difference today is that Hyatt’s 300+ cases are STILL PENDING.  Under the rules, if these issue as patents then they will be given 17-year patent terms from the issue date — even on applications claiming priority back to the 1970s.  To be clear, Hyatt’s applications focus on fundamental aspects of microchip and integrated circuit technology and so could be extremely valuable as enforceable patents.

Hyatt was already a known quantity at the PTO, having battled over his integrated circuit patents in the past, and the PTO very quickly began treating Hyatt a bit different than other applicants.  Part of the difference also came as Hyatt amended his applications to add claims — a total of 115,000 (averaging 300 claims per patent application).  From 2003-2012, the PTO stopped examining Hyatt’s applications pending litigation in a couple of the cases that culminated in the Supreme Court’s decision in Kappos v. Hyatt, 566 U.S. 431 (2012).  When it did start examining, the PTO spent extra hours examining Hyatt’s applications and eventually calculated that it would “532 years of examiner time” to process Hyatt’s applications — this is the equivalent of about 40,000 “typical” patent applications.

Things eventually moved forward with some applications. This case involves four applications that were rejected by the examiners and the PTAB.  Hyatt then filed a civil action 35 U.S.C. §145 seeking a court order that the USPTO issue his patents.

The PTO raised an old, but rarely used defense–prosecution laches. See Woodbridge v. United States, 263 U.S. 50 (1923); Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924).

Any practice by the inventor and applicant for a patent through which he deliberately and without excuse postpones beyond the date of the actual invention, the beginning of the term of his monopoly, and thus puts off the free public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.

Woodbridge. The PTO argued that Hyatt should be estopped from obtaining these patents or presenting further arguments based upon the equitable doctrine.  The district court held a five-day bench trial on laches and eventually concluded that the PTO should have done a better job. Although Hyatt was not easy to work with, substantial aspects of the blame-for-delay rest with the PTO. In particular here, the Judge entered a R.52(c) judgment against the PTO – finding that it had failed to present a prima facie case of prosecution laches. The district court also found some of the claims at issue were patentable and thus issued an order to the PTO to issue those claims.

On appeal, the Federal Circuit has revived the defense and remanded for further consideration–holding that the district court “failed to properly consider the totality of the circumstances.”  Effectively, the PTO’s delay does not excuse Hyatt’s actions.  This is a 40 page opinion filled with various procedural gamesmanship, but the court primarily noted several actions:

  1. Repeated complete rewriting of claims after receiving rejections — often 30+ years after filing, and often in identical form found in one of the other applications.
  2. Claiming priority to a large number of prior applications with a variety of priority dates.
  3. Long specifications.

The appellate court writes that Hyatt’s “patterns of prosecution conduct created
a perfect storm that overwhelmed the PTO.”

On remand, the Judge will now permit Hyatt to present his defensive evidence and then rule on the issue of prosecution laches.  The court also held “in abeyance ” the appeal with respect to the other issues of anticipation and written description.

Know Thyself

Bio-Rad Labs v. ITC and 10X Genomics, 20-1475 (Fed. Cir. May 28 2021).

In April 2021, the Federal Circuit decided a separate ITC appeal between these parties, affirming that Bio-Rad infringed the micro-fluidic chip patents owned by 10X (a company started by Bio-Rad former employees). U.S. Patent Nos. 9,689,024, 9,695,468, and 9,856,530.

Cross-allegation: In this separate ITC action, Bio-Rad accused 10X of infringing its U.S. Patent Nos. 9,500,664, 9,636,682, and 9,649,635 (mechanisms for generating droplets suitable for droplet-based assays).   In this counter lawsuit, the ITC split its decision, finding two of the patents infringed but one not infringed. On appeal here, the Federal Circuit has affirmed.

The most losing argument on appeal centered on the ITC’s judgment that 10X was liable for inducement and contributory infringement. On appeal, 10X argued that it could not be held liable because it did not have knowledge of the patents-in-suit.

  • Inducement requires that the defendant “knew of the patent” and knew that the “induce acts constitute patent infringement” as well as “specific intent to encourage” the infringement.
  • Contributory Infringement also requires that the defendant knew of the patent and the patent infringement.

In an ordinary case, the evidence of knowledge presented by Bio-Rad might have been insufficient.  This case has a kicker — some of named inventors on Bio-Rad’s patents left Bio-Rad to form 10X.

  • Bio-Rad Named Inventor – Ben Hindson – later 10X Chief Science Officer.
  • Bio-Rad Named Inventor – Kevin Ness – later 10X CTO/COO.
  • Bio-Rad Named Inventor – Don Masquelier – later 10X Director of Engineering.

10X admitted that these individuals had knowledge of the patent applications, there was no proof that they had evidence of the issued patents themselves.  On appeal, the Federal Circuit found the argument incredible–not credible–and explained:

10X’s various arguments attempt to distract from the reality of this case: named inventors of the asserted patents sold their company and patent rights to Bio-Rad, worked for Bio-Rad for a short time, left Bio-Rad to start a new company, and launched new products that have been determined to infringe the patents they assigned to Bio-Rad. . . .

Ultimately, 10X fails to persuade us that there is a lack of substantial evidence to support the ALJ’s findings regarding  induced and contributory infringement.


No Escape from the Western District of Texas

Guest post by Paul Gugliuzza and Jonas Anderson. Paul Gugliuzza is Professor of Law at Temple University Beasley School of Law. Jonas Anderson is Associate Dean for Scholarship and Professor of Law at American University Washington College of Law.

We’ve discussed in this space a few times the remarkable lengths Judge Alan Albright has gone to to attract patent cases to his Waco, Texas courtroom. Judge Albright’s efforts have succeeded in large part because his court, the U.S. District Court for the Western District of Texas, assigns cases to judges in a way that allows plaintiffs to know, with absolute certainty, that their case will be assigned to Judge Albright and not one of the fifteen other judges in the district.

Judge Albright’s been back in the news the past couple weeks because he’s granted two motions to transfer cases out of the Western District of Texas—something he’s rarely done in his two-plus years on the bench.

But, at the same time, Judge Albright has been drawing a roadmap for patentees who want to make sure their cases aren’t transferred away from Waco in the future.

The relevant cases all have the same basic facts: the patentee, a North Carolina LLC called Ikorongo Technology, created a Texas LLC and assigned the Texas LLC the right to several patents only in certain counties in Texas, including counties in the Western District. The LLCs jointly filed infringement suits in Waco against Samsung, LG, Lyft, Uber, and Bumble. Each defendant filed a motion to transfer to the Northern District of California.

In a series of orders—including one issued earlier this week—Judge Albright denied the motions. According to Judge Albright, Ikorongo’s assignment to the Texas LLC made transfer out of Texas impossible. Under the transfer of venue statute, the proposed transferee district must be one in which the case “might have been brought.” Because the defendants infringed the Texas LLC’s patent rights only in Texas, Judge Albright reasoned, the case couldn’t have been “brought” anywhere else.

The patentee’s tactic here is a brazen and transparent attempt to manipulate venue. If Judge Albright’s decisions are allowed to stand, patentees will be able to guarantee their cases are never transferred away from the Western District of Texas by simply creating a shell company that has an exclusive license to the patent only in the Western District of Texas. When the companies file suit as co-plaintiffs in Judge Albright’s Waco courtroom, escape will be impossible.

Fortunately, the Federal Circuit has a chance to step in and condemn these machinations in a pair of pending mandamus proceedings challenging orders by Judge Albright denying motions to transfer in cases filed by Ikorongo. [LG Mandamus PetitionSamsung Mandamus Petition].

We’re optimistic the Federal Circuit will grant those petitions. Both the Supreme Court and the Federal Circuit have repeatedly and forcefully condemned the sort of jurisdictional and venue gamesmanship Ikorongo is plainly engaged in. Moreover, there’s a good argument based on the patent venue statute that the question is not whether the plaintiff’s patent rights have been infringed in the proposed transferee district, as Judge Albright ruled, but whether the defendant has committed acts of infringement in the district.

Regardless of what the Federal Circuit rules in these cases, patentees will continue to develop clever strategies to keep their lawsuits in the Western District of Texas. As we discuss in a forthcoming law review article, the stakes surrounding venue choice are just too high and the advantages Judge Albright offers to patentees are just too great. Congress, the Judicial Conference of the United States, or the district courts themselves need to step in and stop the case assignment practices that enable plaintiffs to shop for specific judges, that incentivize judges to favor the parties who choose the forum, and that have repeatedly led to a single judge—whether in the Eastern District of Texas or, now, the Western District of Texas—hearing a quarter or more of all patent cases nationwide.

Judge (Upcoming) Tiffany Cunningham

I wrote previously about Tiffany Cunningham who has been nominated to join the Court of Appeals for the Federal Circuit. Judge Wallach is set to take senior status at the end of May 2021.

Today the Senate Judiciary Committee held its hearing on Cunningham’s nomination.  The Senate is quite busy to day and her nomination is not considered truly controversial as such there were only a few questions and statements.

Sen Durbin (Chair) and Sen Grassley (Ranking Member) both indicated that they would support the nomination (as did all other Senators who spoke).

Sen Booker: It is amazing that we are still doing “firsts.” Congratulations.

Sen Coons: Will you ensure access to independent inventors and small start-up companies?

Sen Grassley: Will you take a hard look at takings jurisprudence and protect personal property in cases from the Court of Federal Claims?


These days there is often not much to learn from the hearing because the nominees are coached to evade and generally answer along the lines of “Thank you for the question, I will endeavor to faithfully apply the law to the facts of the particular cases before me.”  The only real answer of interest telling came in response to a question from Senator Grassley.

Grassley: “Do you think it is appropriate for district judges to actively create favorable patent venues in their courts?”

Cunningham: Federal Judges should not be “really taking into consideration what sorts of cases they might want to appear before them.”

I expect that Cunningham will be confirmed by the Senate within the next few weeks.