Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

 

Snow Brakes

We have snow on the ground here in Missouri. That makes me think of Gary Reinert’s new patent entitled “method and apparatus for rapid stopping of a motor vehicle particularly on snow or ice.” U.S. Pat. No. 11,091,154.  The image below from the patent tells the story.  Conventional brakes are awful. Antilock Brakes are much better, but the Reinert Snow Brakes take the cake.  Rather than just stopping the wheels, the Reinert Snow Brakes actually shift the car into reverse and spin the tires backward to slow-down the car.  I feel like I saw this in Cannonball Run II, but I’m probably misremembering.

Here is claim 1:

A method for emergency stopping of a motor vehicle comprising the steps of:

activating the emergency stopping of the motor vehicle;

stopping the forward rotation of each wheel immediately following the activation of the emergency stopping of the motor vehicle;

activating a transmission of the vehicle, which shifts an engine of the motor vehicle between driving the wheels in the forward rotation direction, a neutral park position and a reverse rotation direction, immediately after the forward rotation motion of each wheel has ceased such that each wheel maybe driven in the reverse rotation direction;

rotating each driven wheel in the reverse rotation direction until the vehicle is stopped;

activating the transmission of the vehicle once the vehicle is stopped to place the transmission into the original forward rotation position or into the park position,

wherein the step of activating the transmission includes using an on board electronic control unit whereby the method for emergency stopping of a motor vehicle is controlled by an on board electronic control unit, and

wherein the step of activating the transmission includes using sensors on each ground engaging wheel.

The examiner found several on-point references, including US5492512A – Brake system with wheel-reversing means for an automobile (Wu). Reinert distinguished those references by requiring a particular shifting through “neutral park position” before heading to reverse, and also requiring sensors on the wheels that are used to activate the emergency stop.

Admitted Prior art in 1886

Field v. De Comeau, 116 U.S. 187 (1886)

Field’s patent uses a spring to make it easier to slip on tight-fitting gloves.  The case reached the Supreme Court in 1886, but the court sided with the accused infringer.  The case involved admitted-prior-art.  In particular, the patent specification admitted “that springs had been combined before with the wrists of gloves” in the past. That admission assured the court that the patent cannot cover “the combination of springs in every form with the wrists of gloves to close them.”  The accused infringer was also using a spring-glove combination, but a different form than that claimed. As such, no infringement.

In this case, the court primarily used the admitted-prior-art to limit the scope of the patent in the infringement context, after recognizing that a broader interpretation would render the patent invalid.  That approach is common of the era.  Today, courts rarely rely upon the prior art when interpreting claim scope.  Still, admitted prior art would seemingly be quite relevant as part of the intrinsic analysis of claim scope.

 

 

Supreme Court Patent Decisions

by Dennis Crouch

The chart below shows the number of Supreme Court patent decisions broken-up by decade. The ramp-up in the late 1800s is tied to the “second industrial revolution” in the US.  The drop in cases after 1890 is largely procedural. Congress created the regional circuit courts of appeals as a buffer between the trial courts & Supreme  Court.  Subsequently, the Court limited the number of patent cases it heard via the certiorari process.  Read more about this transition in my Kessler Cat paper (with Homayoon Rafatijo).

We are 2 years into the 2020s and have 5 decisions thus far (counting Google v. Oracle, which discusses substantive patent issues).  If that trend continues, then the  final figures for the 2020s would be similar to that of the 2010s.  Of course, thus far in the 2021-22 term, the Supreme Court has not yet granted certiorari in any patent cases.

To get this data, I used Westlaw’s case search and limited the results to Supreme Court decisions identified as “patent” decisions by Westlaw and that have a patent law related WL KeyCite headnote.  Reasonable minds will differ on what counts as a “patent case.”

Overruling the First Patent Case

The Patent Act permits a patent to be divided up regionally within the United States.

The applicant, patentee, or his assigns [may] grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

35 U.S.C. 261.  The allowance for geographic division was added as part of the Patent Act of 1836 and overruled the very first Supreme Court patent law decision, Tyler v. Tuel, 10 U.S. 324 (1810).  In Tyler, the Supreme Court found that a patent assignment excepting a few specific counties was not a “true assignment” and therefore the purported assignees had no right to sue on the case.  The court suggested that exceptions might be found in equity.

If you are curious, the assignment excluded the counties of “Chittenden, Addison, Rutland and Windham, in the state of Vermont.”

 

Texas Two-Step Cannot Avoid Licensee Liability

by Dennis Crouch

Plastronics Socket Partners v. Hwang (Fed. Cir. 2022) (non-precedential).

There is a lot going in this decision, but the crux of the appeal is a license interpretation question.  Here are the rough facts:

  • Hwang licensed its patent rights to Plastronics Socket.
  • Plastronics Socket split into two companies: Plastronics Socket and Plastronics H-Pin under Texas “divisive merger” statute.   (It is odd, but under Texas law, a division in this way is legally defined as a merger).
  • As part of that split, Plastronics H-Pin took on sole responsibility for the license. Plastronics H-Pin made the licensed products (h-pins) and sold them its sole customer Plastronics Socket at a very low rate — thus greatly reducing the royalties owed.
  • Plastronics Socket resold the product, but argued that it was no longer bound by the contract because the contract liabilities had been shifted to Plastronics H-Pin.

In the appeal, the Federal Circuit confirmed that the “divisive merger” cannot be used to escape from contract obligations.  Thus, Plastronics Socket still owes the 3% that it agreed to pay for its own sales.

= = =

Statute of Limitations: Plastronics also had a counterclaim. In particular, Hwang had a right to further license the patent, but only with approval from Plastronics. Hwang admitted that he had licensed the patent, but that the license occurred 9 years before the lawsuit began and thus was outside of the 4-year statute of limitations under Texas law.  The Texas allowed the claim — since it was an ongoing license.  On appeal, however, the Federal Circuit reversed — holding that the “breach of contract … arose from a single, unauthorized license grant … almost ten years before Plaintiffs filed suit.”  As such, the case was beyond the statute of limitations.  The court distinguished other situations regarding periodic payments of royalties, where each missed payment is seen as another breach and thus can restart the statute of limitations. See Hooks v. Samson Lone Star, LP, 457 S.W.3d 52, 68 (Tex. 2015).

= = = =

These little H-pins are tiny, but have been important to the semiconductor industry:

= = = =

Top 10 Patent Cases: 1891 to 1951

by Dennis Crouch

Prior to 1891, appeals in patent cases went directly to the Supreme Court, and the Court decided lots of patent cases.  In 1891, Congress created the regional circuit courts of appeals as a buffer between the trial courts and the Supreme Court and the number of high-court patent cases began to fall.  The court decided a number of big  patent cases during the period of 1891-1952, although many of them have been rejected or are no longer followed.  Many are also primarily anti-trust cases involving the use (or misuse) of patent rights.

The following are the most cited Supreme Court patent cases during this period:

  1. U.S. v. U.S. Gypsum Co., 333 U.S. 364 (1948).  U.S. Gypsum is an antitrust minimum-price-fixing case. The U.S. Gov’t wanted to show that the patent covering the products was invalid, and therefore that the price fixing was improper. The district court prohibited the Gov’t argument, but the Supreme Court reversed.  The case is primarily cited for its explanation of the “clearly erroneous” standard for reviewing factual findings by a judge. A finding can be clearly erroneous even if based on some evidence if the reviewing court “is left with definite and firm conviction that mistake has been committed.”
  2. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950).  Graver Tank is generally cited for its statement of the function-way-result test for the doctrine of equivalents. “A patentee may invoke [DOE] against … a device if it performs substantially the same function in substantially the same way to obtain same result as patentee’s device.”
  3. Precision Instrument Mfg. Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806 (1945).  Precision describes inequitable conduct as form of unclean hands — holding that the patentee had committed fraud and thus lost access to the court of equity — “closing doors of equity court to one tainted with inequitableness or bad faith relative to matter in which he seeks relief.”
  4. Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944). Hazel-Atlas is another fraud case. The lower court found that the defendant had not done enough to fully uncover the fraud. However, the Supreme Court found that patents are special because they implicate a great public interest. “The public welfare demands that the agencies of public justice be not so impotent that they must always be mute and helpless victims of deception and fraud.”
  5. Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). The A&P case is a precursor to KSR v. Teleflex (2007). The Supreme Court explained that a collection of known elements cannot be patented unless “the whole in some way exceeds the sum of its parts” — something that is usually not the case in mechanics.
  6. The Fair v. Kohler Die & Specialty Co., 228 U.S. 22 (1913).  This short decision by Justice Holmes was cited hundreds of times for the principle that a patent infringement lawsuit has proper jurisdiction in Federal Court despite a lack of diversity between the parties, and that the party making the claim decides what law is being asserted.
  7. American Well Works Co. v. Layne & Bowler Co., 241 U.S. 257 (1916). The defendant had been telling people that plaintiff was an infringer; plaintiff sued for defamation.  The Supreme Court confirmed that the patent laws did not create Federal Jurisdiction for the case.
  8. Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933). In this case, the court explained that the inequitable conduct (unclean hands) only applies when the unconscionable act has “immediate and necessary relation to the equity that he seeks in respect of the matter in litigation.”  In the case, the court found that bad acts with regard to two patents in-suit did not tarnish three other asserted patents (despite being from the same “family”).
  9. Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275 (1892). This famous case is most cited for the Supreme Court’s rejection of oral evidence as sufficient to invalidate an issued patent.  Rather, proof must be “clear, satisfactory, and beyond a reasonable doubt.”
  10. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). In Eibel, the court found that a continuous-sheet paper machine invention did not rise to the level of a “pioneer patent, creating a new art.”  However, the court determined that the improvement was of such merit that it was still “entitled to liberal treatment.”  The court also held that the invention’s “immediate and successful use” across the industry was “convincing proof” that the specification was sufficiently detailed and precise.

Note here, I ranked these according to the number of citations by courts.  We would get a different sorting if ranked by law review citations — a case such as Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), would rise up toward the top of the list and the Barbed Wire case would fall off.

 

Federal Circuit Dataset & Stats: 2021 Update

By Jason Rantanen

Happy 2022! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, which contains information on all Federal Circuit decisions posted to the court’s website and and the court’s dockets.

Figure 1

Figure 1

Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. Once again, the highest number of merits terminations arose from the PTO. The most notable change for 2021 was a drop in the number of decisions arising from the district courts: from 197 in 2020 to 142 in 2021. These represent individual documents (i.e.: a single opinion or Rule 36), not docket numbers, but there’s also a 25% drop when looking at the data on a per-docket number basis.  Overall, the Federal Circuit issued 653 merits decisions in regular appeals in 2021 as compared with 690 in 2020.

Figure 2

 

Figure 2  shows the number of opinions versus Rule 36 summary affirmances arising from the District Courts and PTO. Relative to recent years, the portion of appeals that were summarily affirmed was substantially lower. Thirty-five percent of appeals arising from the PTO were summarily affirmed—much less than 2019, when almost half of the appeals arising from the PTO were Rule 36’d.

You’ll also notice that the number of written opinions that the Federal Circuit issued in appeals arising from the district courts was the lowest it’s been at least since 2010, while the number of written opinions arising from the PTO was the highest. The type of opinion paints a different picture, however: as Figure 3 shows, while around half of the opinions arising from the district courts were designated as “precedential,” only 25% of the opinions arising from the PTO were. To me, Figure 3 suggests that the Federal Circuit perceives that it has addressed many of the novel questions created by the AIA and inter partes review, and sees its jurisprudence as more settled than it was a few years ago.

Figure 3

Figure 3

Interestingly, this does not seem to mean that affirmance rates in appeals arising from the PTO are increasing. For one thing, they’re already quite high: over the past decade, the Federal Circuit has affirmed the PTO about 80% of the time.  Nor did they increase in 2021. Last year, the Federal Circuit affirmed the PTO in 78% of its decisions. Another observation is that even though the court’s use of Rule 36’s in appeals arising from the PTO has dropped over the past two years, its affirmance rate has remained about the same.

Figure 4

Figure 4

The Federal Circuit did, however, affirm district courts more frequently last year than any previous year.  The average rate at which the court affirmed-in-full district courts from 2010-2021 was 69% (indicated by the purple line); last year its affirmance rate in these appeals was 79%.

I didn’t create a separate graph for dissents and concurrences, but overall Federal Circuit judges wrote about the same number of dissents in 2021 as in 2020 (35 in 2021 versus 37 in 2022), but wrote a lot more concurring opinions (23 in 2021 versus 10 in 2020).

Figure 5

Figure 5

A new addition this year is a dataset of all Federal Circuit dockets since 2000 based on data from PACER. Figure 5 shows the number of appeals docketed at the Federal Circuit by origin. For the past few years, the court has received well over a thousand appeals per year. That number fell a lot in 2021—especially appeals arising from the PTO and the MSPB. (The MSPB has not had a quorum since 2017, and has not had any sitting members since 2019.)  The downstream consequence of this is that we can expect to see fewer Federal Circuit decisions in appeals arising from the PTO in 2022.

What about petitions for writs of mandamus? Jonas Anderson, Paul Gugliuzza and I are finishing the draft of our paper on those, but it’s no spoiler to say that orders on petitions for writs of mandamus are a big part of the Federal Circuit story for 2021.  Last year the court issued 52 merits orders on petitions for writs of mandamus, as compared with 35 in 2020 and 19 in 2019. For more on those, here’s a link to our series.

You can access the full document dataset here and generate a variety of charts using the widget, or download the data and plug it into your favorite analysis program.  In addition, both the docket and document dataset are archived on the Harvard dataverse, along with the Stata code for generating the tables for the above graphs.  Methodological details are provided in this working paper. Or, if there are specific aspects of the data that you’re curious about, email me or DM me on Twitter and if I’m able to, I’ll take a look.

Thanks to my research assistants for help reading and coding all of the court’s decisions especially Matt Fuentes, Daniel Kieffer, Brenna Kingyon, Lindsay Kriz,  Sara Leibee, Ryan Meger, Madison Murhammer Colon, Charles Neff, Riley Stanton, Connor Williams & Allison Williamson.

Copyright of Software API

This week, the Federal Circuit is hearing oral arguments in an important software copyright case, SAS Institute, Inc. v. World Programming Ltd., Docket No. 21-1542The SAS is an important follow-on to the Supreme Court’s 2021 decision in Google v. Oracle, 141 S. Ct. 1183 (2021).  In Google, the Supreme Court sided with the accused infringer on fair use grounds, but did not decide the broader issue of whether Oracle’s API naming convention was copyrightable.

WPL created a clone version of SAS that allows users to use SAS-style inputs and receive SAS-style outputs.  SAS argues that those input and output formats are protected by copyright. However, the district court (E.D.Tex. Judge Gilstrap) sided with the accused infringer — holding that WPL presented unrebutted evidence that these elements were not protectable by copyright. On appeal, SAS raises four arguments:

  1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
  2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
  3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
  4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

Lots of amicus briefs on both sides:

Supporting SAS: Mathworks & Oracle; Ralph Oman, former Register of Copyrights; Pro-Copyright professors; Copyright Alliance; Computer scientists group; and Creator’s Rights Groups.

Supporting WPL: CCIA; Intellectual Property Law Scholars; another set of Computer Scientists; Github; and EFF.

Arguments set for this Thursday (Jan 13).

 

Deferred Subject Matter Eligibility Response (DSMER) Pilot Program

Back in 2010, I wrote an article with Prof Rob Merges titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.  We suggested that patent examiners often lack capacity to judge metaphysical questions centered around abstractness and laws of nature. In addition, we noted that many eligibility questions substantially overlap with bread-and-butter patent doctrines such as obviousness, enablement, and indefiniteness.  What that means is that delaying eligibility decisions can often result in entirely avoiding eligibility decisions.  In a 2019 article, Professor Chien provided more detailed guidance on how this could be accomplished.

The US Patent Office obviously did not follow our suggestions back in 2010, but did quickly recognize that Supreme Court’s eligibility jurisprudence was not really administrable by patent examiners.  The Office solution was to create its own narrowly tailored eligibility guidelines examiners can actually follow in a predictable way.  It turns out that patent applicants tend to like the PTO solution because the guidelines strategically err on the side of eligibility.  In many ways, the guidelines obviated the need for our ordering approach because the PTO created an administrable mechanism that does not push the boundaries or epistemology of abstractness.

Still, the patent office is going to try something of a deferred approach – and has recently published its Deferred Subject Matter Eligibility Response (DSMER) Pilot Program. To be clear, the examiner will still consider eligibility in the initial office action, but participants in the program permits the applicant to defer responding to the eligibility rejections in the initial office action response.

In a 2021 letter, to the PTO, Senators Tillis and Cotton has suggested a sequencing approach that followed the Crouch+Merges proposal with examiners delaying rejections until later.  The PTO Pilot is obviously different in that examiners are still making the rejections on record, and the Federal Register notice does not explain why the PTO did not follow the Tillis+Cotton or Crouch+Merges proposal.

The program is a test run and requests for participating is only via invitation.

2021 Patent Grants

Total utility patent grants are down about 7% for calendar year 2021. Still the total ranks as the third highest of all time.  The Office has almost eliminated unwanted delay in examination.  Right now the delay is about 17 months from filing to first office-action. They really don’t want that to go below 14 months in order to capture 102(a)(2) prior art (former 102(e)).

Patent Law’s Fifth Column: Motivation to Combine with Reasonable Expectation to Success

by Dennis Crouch

Apotex Inc. v. Cephalon, Inc. (Supreme Court 2022)

In its petition for writ of certiorari, Apotex asks the Supreme Court to revisit motivation to combineobvious to try and whether the non-obvious contribution needs to be an improvement over the prior art.   The petition argues that KSR v. Teleflex (2007) requires a flexible analysis, but that “over the ensuing decade-and-a-half, the Federal Circuit has … reverted to its old rigid ways.”  The petition also complains that the Federal Circuit has again masked its jurisprudence via Summary Affirmance without opinion.

The accused infringers here were seeking to market a drug treatment for chronic lymphocytic leukemia covered by several Cephalon patents and sold as Bendeka.  The defendants challenged the patent claims as obvious, but the district court sided with the patentee — finding a lack of motivation to combine the references with a reasonable expectation of success.  This test has become the sina non quo of post-KSR Federal Circuit obviousness decisions.  See, for example, Accorda Therap. v. Roxane Labs., 903 F.3d 1310 1328 (Fed. Cir. 2018) (“motivation to modify or combine with a reasonable expectation of success”);  In re Stepan, 868 F.3d 1342, 1345-46 (Fed. Cir. 2017) (“requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so.”), etc. Apotex’s petition explains this as follows:

[T]he Federal Circuit seems to believe that if there is any uncertainty about whether an obvious-to-try approach will succeed, that potentially compromises the motivation to try an obvious solution to a pressing problem, and therefore produces patent monopolies for what is obvious to try. Indeed, so ingrained has the motive-to-try-what-is-likely-to-succeed test now become in the Federal Circuit’s obviousness psyche, that the Federal Circuit now sometimes includes motivation as a fifth Graham factor.

I also write about this same issue in the Federal Circuit’s recent decision in Teva v. Corcept (Fed. Cir. 2021). Cephalon’s response is due in about 2 weeks.

Federal Circuit Draws a Hard Line Against “Obvious to Try” Analysis

 

Timing of CVSG Briefs: American Axle Coming Soon

by Dennis Crouch

Although patents are a form of private property, they are also expressly a tool of public policy.  When a private patent lawsuit of interest reaches the Supreme Court,  the Court regularly turns to the President’s administration for its views on how a decision may impact patent law and innovation writ large. That request for an amicus brief from the government is termed a CVSG – Call for the Views of the Solicitor General.   One problem with CVSGs is that they typically add several months to the certiorari process because the DOJ spends substantial time collecting input from various government branches and outside interests before drafting and filing its brief.  In patent cases, a Gov’t amicus brief is often the most important at the certiorari stage — or at least the most predictive of the outcome.

We are currently waiting CVSG amicus briefs in two patent cases pending before the Supreme Court:

  • American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (patent eligibility); and
  • PersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (res judicata)

Of these, the Personal Web request is fairly recent, but American Axle has been spinning since May 3, 2021 – just over 8 months.

To get a sense of timing, I looked back at the past 30 CVSG requests – this stretches back to 2019 and calculated the number of months the USDOJ took to file its brief.  The median timing was 5 months, and all the briefs were submitted in less than 9 months.  What this means is that the DOJ still has a few more weeks to complete its task and still be within these historic guideposts.

I truly do not know what the DOJ is going to say in its American Axle brief.  Back in 2019, the Solicitor General filed a powerful brief in Hikma v. Vanda arguing that Mayo and Alice led to substantial confusion, especially when attempting to reconcile prior cases such as Diehr.  But, the Gov’t brief in Hikma was filed by President Trump’s SG (Noel Francisco) and the big question is whether President Biden’s Solicitor Elizabeth Prelogar (and the Biden Admin generally) will follow the same course.  Although the top-signatories have changed, the folks actually researching and writing the brief are largely the same, including Thomas Krause who was PTO Solicitor and is now the PTO’s Acting GC.  In addition, Malcolm Stewart remains the Deputy SG at the Department of Justice (as do others).

Resorbing Patent Law’s Kessler Cat – Request for Comments

I have a new draft article on the Kessler Doctrine co-authored with my former student Homayoon Rafatijo and welcome comments and suggestions before it is formally published later this month.

Kessler is a 1907 Supreme Court decision that we argue should be seen as simply implementing defensive issue preclusion. At the time, the case involved some additional novelties having to do with confusion over both the new appellate federal court structure and the scope of potential anti-suit injunctions. Meanwhile, the scope of issue and claim preclusion have expanded with the merger of law & equity, creation of the Federal Rules Rules of Civil Procedure, as well as the expansion of Declaratory Judgment jurisdiction.

As issue and claim preclusion expanded, Kessler fell from fashion and was basically unneeded and unused for several decades. But, since 2014, the Federal Circuit has steadily expanded Kessler as a patent law specific form of preclusion that is separate and distinct from the traditions of claim and issue preclusion.  We argue argue this approach is wrong.

The cat: We parallel our article alongside a short parable from Paulo Coelho titled the “Importance of the Cat in Meditation.”  The basic punchline is that once people started thinking the cat was an important element of mediation, it was easier for them to scientifically explain the importance rather than let go of the meaningless attachment.  We argue that the Kessler Doctrine is following the same pathway, the Federal Circuit’s explanations do not make sense, and that it is time to resorb the doctrine into the general law of preclusion.

Thanks! Dennis Crouch

Supreme Court and Judicial Conference Considering Judge Albright’s Problematic Patent Court

The following comes from Chief Justice John Roberts’ end-of-year Report on the Federal Judiciary for 2021.

The third agenda topic I would like to highlight is an arcane but important matter of judicial administration: judicial assignment and venue for patent cases in federal trial court. Senators from both sides of the aisle have expressed concern that case assignment procedures allowing the party filing a case to select a division of a district court might, in effect, enable the plaintiff to select a particular judge to hear a case. Two important and sometimes competing values are at issue. First, the Judicial Conference has long supported the random assignment of cases and fostered the role of district judges as generalists capable of handling the full range of legal issues. But the Conference is also mindful that Congress has intentionally shaped the lower courts into districts and divisions codified by law so that litigants are served by federal judges tied to their communities. Reconciling these values is important to public confidence in the courts, and I have asked the Director of the Administrative Office, who serves as Secretary of the Judicial Conference, to put the issue before the Conference. The Committee on Court Administration and Case Management is reviewing this matter and will report back to the full Conference. This issue of judicial administration provides another good example of a matter that self-governing bodies of judges from the front lines are in the best position to study and solve—and to work in partnership with Congress in the event change in the law is necessary.

https://www.supremecourt.gov/publicinfo/year-end/2021year-endreport.pdf

 

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Update on Supreme Court Patent Cases: Fact Law Divide

by Dennis Crouch

Olaf Sööt Design’s pending petition for certiorari centers on the age-old division between issues-of-fact and issues-of-law.  The U.S. Constitution generally requires due process, and particularly protects litigants’ rights to a jury trial in common law cases.  One quirk–the right to a trial by jury does not cover issues-of-law, and only extends to some issues-of-fact.

This bifurcated system results in an odd dynamic in patent law — regularly seen with regard to infringement and claim construction:

  • Patent infringement is an issue-of-fact tried by a jury under the Seventh Amendment.  Typically, a jury is asked to decide whether the evidence shows that the defendant is performing the claimed invention.
  • Claim construction is treated as a question of law (or mixed question of fact and law), decided by a judge.  In contemporary patent litigation, a judge will typically be asked to decide whether the legal scope of the claims extend to cover the defendant’s actions.

With this setup, the whole case can be decided at either stage, but claim construction typically comes first and so often steals-the-show.  One problem though, is the potential of unduly undermining the Constitutionally protected jury system.

One case pending before the Supreme Court focuses-in on these issues: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (Petition).  Sööt asks the following question:

In Markman v. Westview Instruments, Inc., 517 US 370 (1996), this Court held that the meaning of terms in a patent “claim” stands as a question of law and must be construed by the court. Under the Seventh Amendment, if requested by the patent owner, the jury must make the factual determination as to whether the defendant infringed the patent in light of the court’s claim construction. Consistent with the Seventh Amendment, the Markman decision leaves to the jury all factual determinations beyond the court’s construction of the claim. The question presented by this petition for writ of
certiorari is:

Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question,  previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.

The Supreme Court will consider the petition next week.

Patent Law at the Supreme Court December 2021

Merry Christmas 2021, your Patent is Invalid

by Dennis Crouch

Bankers’ Serv. Corp. v. Landis Christmas Sav Club Co, 273 F. 722 (3d Cir. 1921) [67_F.2d_904]

This 1921 decision centered on Merrill B. Barkley US Pat. No. 1,202,646, covering stationary for making “Christmas club deposits.”  The specification explains:

There has developed recently in banking circles a wide demand for various kinds of special savings accounts, known generally as Christmas clubs, vacation accounts … and the like.

The claimed invention then is directed to a “deposit book,” with each page having a stub and detachable coupon.  The customers keep the book with all the stubs showing deposits while the coupon goes to the bank to help direct the deposit.

Landis Christmas Sav Club was already selling supplies to banks, but Barkley was able to improve the system.  In particular, with the Landis system, the a book of coupons was held by the bank, and individual sheets given out to the customer with each deposit.  The Barkley reversal allowed the customer to keep the book and give deposit slips to the bank.  Apparently Landis then copied the Barkley approach and an infringement suit followed.  In essence, Barkley’s device is a reversal of the Landis approach.   And, the appellate court recognized that the Barkley approach was and improvement that “could be more easily and conveniently handled.”

Despite the improvement, the courts found that they were of the time that would “naturally follow” from the prior art rather than rising to the level of an invention:

[I]t was the to-be-expected result which would naturally follow the study of men familiar with the banking and stationery business, when they set themselves to study and improve the Christmas Club system, as all bank employees would do. When such a new system was used by the thousands of keen minds, when better detail and further efficiency of such system would be the customary result of the experience that came from use, we would expect improvements, and the ideas such as Barkley worked out are, in our judgment, the steps that would naturally follow use. To take the cleverness of an improver and award the monopoly of an invention thereto would, to our minds, make of the patent law a hindrance, not a help, in the evolution of progress.

Invalidity affirmed.

Although the decision is issued prior to Graham v. John Deere, it offers an example of the level of ordinary skill in the art likely made a difference.  The appellate court reflected that bank clerks are generally quite clever and diligent in their pursuit of efficiency.  The court’s suggestion that the ubiquity of the prior art makes it much more likely that an improvement will naturally follow.  This last bit on ubiquity is not typically used in the obviousness analysis anymore, but it does appear in Alice, step 2.

At the Drop-Bottom: Sanford v. Kepner, 344 U.S. 13 (1952). 

I previously wrote about the most cited Supreme Court patent cases since 1952.  Today, I’ll write about the least-cited decision: Sanford v. Kepner, 344 U.S. 13 (1952).

Kepner filed his patent application in 1943 and Sanford filed his in 1945 — both directed to drop-bottom rail cars used in mining.

The USPTO interference sided with the first-filer Kepner and so Sanford took the case to Federal Court.  Sanford argued (1) that Sanford should have priority as the first-to-invent and thus get the patent; and (2) even if Kepner gets priority, Kepner’s patent should still be invalidated based upon the prior art.   (“Void for lack of invention.”) The Pennsylvania district court sided with the first-filer Kepner on priority grounds, and refused to decide the question of patentability. Sanford v. Kepner, 99 F. Supp. 221, 222 (M.D. Pa. 1951).   On appeal, Sanford argued that the district court should have decided the validity question also, but the appellate court affirmed. Sanford v. Kepner, 195 F.2d 387, 390 (3d Cir. 1952).  In particular, the 3rd Circuit explained that once the priority issues are decided, the plaintiff would need some additional justification to maintain standing: “some manifest threat … or interference with the activities of the petitioner beyond the issuance of a patent to another is required to create a controversy justiciable under the Declaratory Judgment Act.”  Id.   The Supreme Court then took up the case and again affirmed, with Justice Black writing a short opinion for a unanimous court. Sanford v. Kepner, 344 U.S. 13 (1952).

In its decision, the court noted that the odd setup would likely result in a weak validity challenge:

There would be no attack on the patent comparable to that of an infringement action. Here. the very person who claimed an invention now asks to prove that Kepner’s similar device was no invention at all because of patents issued long before either party made claim for his discovery. There is no real issue of invention between the parties here and we see no reason to read into the statute a district court’s compulsory duty to adjudicate validity.

Id. Affirmed.