by Dennis Crouch

The bench was an active inquisitor in the Thryv v. Click-to-Call oral arguments held Dec. 9, 2020 before the U.S. Supreme Court.  This is the third post-AIA Supreme Court case focusing on the no-appeal provision of 35 U.8.C. § 314(d) (“determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”).   [TRANSCRIPT]

Oral arguments focused on two major issues: (1) the extent that SAS limited Cuozzo; and (2) the importance of the time-bar since there are alternative fora for judging patentability and the patent is invalid anyway.

The first point — SAS limiting Cuozzo: In SAS (2018), Justice Gorsuch explained the holding in Cuozzo (2018) as follows:

Cuozzo concluded that § 314(d) precludes judicial review only of the Director’s “initial determination” under § 314(a) that “there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted.

SAS. To be clear, if the no-appeal statute’s sole function is to block appeal of the reasonable-likelihood decision, then the decision is foreclosed in favor of the patentee (allowing appeal of the time-bar question).  However, as I suggested in a prior essay, I believe that Justice Gorsuch SAS opinion overstated Cuozzo’s holding. I suspect this was an intentional shading of Cuozzo made possible because of 5-4 split.  A smaller majority allows for a more extreme opinion.

This issue was ripe for discussion in the oral arguments with Thryv’s counsel Adam Charnes attempting to explain that Gorsuch’s SAS statement isn’t “wrong” per se, it just isn’t complete.  Charnes would obviously rather not require overturning of the Supreme Court’s most recent case on the subject in order to win.

JUSTICE GINSBURG: What do you do with the sentence in this Court’s SAS decision that says 314(d) precludes judicial review only of the Board’s initial determination under 314(a) that there is a reasonable likelihood that the claims are unpatentable?

MR. CHARNES: We think that that’s not a complete description of Cuozzo . . . .

JUSTICE GINSBURG: So you think that that was just a wrong sentence?

MR. CHARNES: I wouldn’t say it was wrong. . . . What I’d say is that the Court had no need to describe Cuozzo more broadly … because that was not the factual circumstance of SAS. …

JUSTICE KAVANAUGH: I think you are saying “it’s wrong,” to pick up on Justice Ginsburg’s question, at least the use of the word “only.”

MR. CHARNES: I think it’s not a complete description. I think that’s not the only basis that this Court explained in Cuozzo. I think that’s — that’s a fair point.

Justice Kavanaugh is the only new member of the court since SAS and his vote is likely critical to the outcome in this case. However, the most likely swing vote is Chief Justice Roberts.

The Gov’t attorney, supporting Thryv in its no-appeal argument and agreed that the SAS statement is wrong.

MR. ELLIS: (Representing the U.S. Gov’t and supporting the no-appeal argument)I do think that sentence is wrong, and I think it’s incomplete. . . . Cuozzo concluded more than that. And I think, if you look at the decision, you’ll see that.

The wrongness of Justice Gorsuch’s statement is potentially twofold: (1) it is clearly an unduly narrow statement of the holding in Cuozzo; and (2) it might also be an incorrect interpretation of the statute.  For me, this raises the interesting esoteric question about precedent and primary sources.  What is the precedential and stare decisis role of the Supreme Court’s (mis)description of its prior precedent.  Is the (mis)description now the leading precedent, or is it merely a secondary source helpful in interpreting the original decision.

Mr. Geyser has the easier case on these points — arguing that the patentee clearly wins under SAS, and should also win under Cuozzo.

MR. GEYSER: (Arguing for the patentee) We’re simply reading 314(d) to say exactly what this Court in SAS said it meant, which is it is limited to only the initial patentability threshold in 314(a).

My friend from the government now concedes that they think that [SAS] was wrong. I don’t believe they’ve asked this Court to overturn SAS. We don’t think that the Court was wrong.

JUSTICE KAGAN: Well, it’s not a question of overturning. It’s just — I think what they were saying is that SAS dealt with one issue in which it was unnecessary to recite Cuozzo’s full test, but Cuozzo has a broader test than SAS quoted.

MR. GEYSER: Well, to be very clear, I think that we win under Cuozzo as well, but I don’t think that the reasoning in that statement, which is a very plain statement in SAS, can be limited in that way.

[The “only” language in SAS] is an absolute part of the core holding of the case in rejecting what the government eventually framed as their primary submission in SAS.

The substantive issue on appeal in Thryv was the PTO’s interpretation of the time bar in § 315(b).  Although a lawsuit had been filed and served, the PTAB found that the time-bar was not triggered because that lawsuit had been dismissed without prejudice.  On appeal, the Federal Circuit found that the PTAB had misinterpreted the statute — holding that dismissal does not annul the time-bar.

The Patent Challenger and Government both argue that the a time-bar decision by the PTAB is not appealable. Justice Gorsuch pushed that question in an extreme example, and Charnes held his ground on no appeal:

JUSTICE GORSUCH: Let’s just hypothesize that someone has tried to undo this patent four times or maybe even more in a court of law, failed for various reasons every single time, and then comes to the director of patents, who has a political mission, perhaps, to kill patents, let’s just say. And it is clearly time-barred under the statute. Let’s just hypothesize that. And yet, the director goes ahead and does it anyway. Under your submission to the Court, I believe you’re saying that is a shenanigan this Court cannot review.

MR. CHARNES: It is correct that our submission is that’s not reviewable. The time bar is not reviewable.

JUSTICE GORSUCH: All right. The hypothesis, there’s no good faith, okay? The director of patent has a political desire for whatever reason to destroy this patent and many others. . . . In your circumstance, you’re telling the Court there’s no review of that decision, I believe, or maybe it’s not a shenanigan even in your — your view perhaps.

MR. CHARNES: Well, I think there is
— there is no review under — under 314(d). It may be that it’s an appropriate case for mandamus relief if the circumstances are as egregious as you suggest in your hypothetical. . . .

JUSTICE GORSUCH: So we’re going to just channel all these cases to mandamus? Is that — is that the upshot of your position?

MR. CHARNES: No, because mandamus is a rare relief. I mean, it would only be reserved for really egregious circumstances like your hypothetical.

JUSTICE GORSUCH: If the institution decision is not reviewable at all, how would it be mandamus-able? . . .

Mr. Ellis from the SG’s office added his two-cents with an argument along the lines of “you shouldn’t care about privacy if you have nothing to hide.”  In this case, his argument was that we shouldn’t worry since “you’re going to get review, judicial review of the patentability” question.

MR. ELLIS: What was open for review was that patentability analysis. Now Respondent opted not to challenge that patentability analysis. But, if it had merit, that would be judicially reviewable and then the patent wouldn’t be canceled.

This discussion takes us to the second general topic for discussion — is the time-bar a big deal.  In Cuozzo and in oral arguments here, the justices appeared reluctant to bar appeals of important issues such as due process violations and statutes of limitations.

CHIEF JUSTICE ROBERTS: Well, but, I mean, I don’t think it’s what we were fighting over at Yorktown. I mean, it’s just a question of whether — (Laughter.)

CHIEF JUSTICE ROBERTS: — as you said, the ultimate question, the ultimate issue that affects the property rights in a patent, it’s going to be reached. It’s just a question of whether you use one procedure or another. . . .

CHIEF JUSTICE ROBERTS: As I understand [Mr. Charnes] answer, at least part of it is more or less that this is small potatoes. It’s just about timing for — for the institution of the matter and that the basic issue of the patent validity is something you’re going to get to. You have a number of avenues to get to it.

The basic idea here is that even if the petition is time-barred, patentability could be raised in an ex parte reexamination or in a district court declaratory judgment challenge, or by a separate petitioner who was not time-barred:

CHIEF JUSTICE ROBERTS: [speaking about ex parte reexam] Well, it’s different, I’ll give you that, but, I mean, it’s focused on the same ultimate question. . . .

JUSTICE KAGAN: But if it’s not with
this Petitioner, it can be another Petitioner. . . And, indeed, even when a petitioner drops out under this statute, the Board can keep the proceeding going without the petitioner. So the fact that it is this Petitioner seems utterly unimportant under this statute.

Justice Ginsburg appeared to recognize that the time-bar is important:

JUSTICE GINSBURG: In Cuozzo, it was a particularity requirement, and that was described as a minor statutory technicality. But, here, we’re not dealing with a minor statutory technicality; we’re dealing with a time bar.

Justice Gorsuch provided a softball for the patentee’s counsel to answer:

JUSTICE GORSUCH: Well, I guess the question, though, that we’re struggling with is so what’s the big deal? If you’re stuck going to ex parte review anyway, why should we care? What’s your answer to that?

MR. GEYSER: … because inter partes review is a very different process than ex parte reexamination.

JUSTICE GORSUCH: Spell that out. Spell that out. Why?

MR. GEYSER: It’s because instead of having an opportunity for a single response, truncated discovery, you’re in an adversarial proceeding. You’re before a panel of three PTAB judges who might give you an hour oral hearing.

You get a long, iterative process with a talented patent examiner who can say this is what I think is wrong, and then you have lots of opportunities to show them exactly why
that concern is unfounded.

And, again, the PTAB is reversed a fourth of the time. It’s not like this process … is perfect or without error. . . .

JUSTICE KAGAN: It just doesn’t seem as though this petitioner makes all that much difference.

MR. GEYSER: Well, Congress felt otherwise in this heavily negotiated process that produced 315(b) as a fundamental safeguard for patents.

JUSTICE GORSUCH:  Why does it matter whether it’s one petitioner or another petitioner?

MR. GEYSER: To make sure that you don’t have someone gaming the system . . .

MR. GEYSER: And [Congress] understood that this [time-bar] is a significant protection for patent owners. And it’s a significant way to divide the authority between the courts on the one hand and the agency on the other.

There is a more detailed statutory interpretation question here — The no-appeal provision is directed to institution determinations “under this section” — i.e., Section 314, and the time-bar is found under Section 315 of the Code.  Under this “chapter”

JUSTICE KAVANAUGH: But “under this chapter” is used in the same provision [314(b)]. If we had “under this chapter” here [in 314(d)], that would solve your problem.

The petitioners here do a nice job of overcoming that argument and so I don’t see it as the basis for the decision, although the court may throw it in as an ancillary matter.

In the end, the case comes down to a strong presumption that agency decisions are subject to appeal in Federal Court. And, the question is whether congress did enough in the statute to overcome that presumption in this case.  Patentee’s counsel (who is aware of many cases) ended his arguments with an appeal to precedent and history:

MR. GEYSER:I would submit that I’m not aware of any case that this Court has ever decided that would find Article III review cut off entirely based on language as indirect as this.

We can look for a decision in this case in the Spring of 2020.  I am expecting a split opinion with the majority affirming — holding that the no-appeal provision has no force in this particular case.

In re Greenstein (Fed. Cir. 2019) (nonprecedential)

An obvious “problem” with tax-deferral schemes (such as a retirement plan) is that Government officials would like to spend the money already.  Mark Greenstein has the solution – monetizing the taxes-owed.  Essentially the government could sell the right to collect the future taxes just like you might sell-off accounts receivables or unpaid invoices.  Because the state has powerful collection mechanisms, the particular approach here is that the Gov’t still collects the taxes and then forwards the money to the investors.

Greenstein’s pending patent application claims this approach.  Although the claims are a bit unclear, it looks like he intends to roll-up the future taxes into a couple of different funds with “which provide rates of return based on factors which are different from each other.”

Claims were rejected on eligibility – abstract idea. The PTAB explained:

Exchanging consideration for a right to receive future payments, as well as managing the amounts of those future payments, is a fundamental business practice, long prevalent in our system of commerce.

On appeal, the Federal Circuit has affirmed –agreeing that the claims use of technology is too abstract — simply using “generic computer elements to perform generic computer functions.”  Greenstein argued that his methodology new, complex, and specific.  However, the PTAB and Federal Circuit agreed that neither the novelty nor complexity solve “the problem of abstractness. . . . [T]he complexity of this known method does not impart patentability to computer-implementation of the method.”

Rejection affirmed.

= = = =

1. A [computerized] method … to manage the sale of taxes received by reason of removal of amounts from tax-deferred vehicles, the method including a specification of the measure of the taxes which are sold;

using one or more computers to track amounts contributed to and withdrawn from such tax-deferred vehicles;

specifying adjustments to the measure of amounts owed to purchasers of taxes sold and owed to purchasers of taxes sold based on removal of amounts from tax-deferred vehicles;

adjusting the amount owed to purchasers of taxes received by reason of removal from tax-deferred vehicles to take account of subsequent withdrawals and contributions to the tax deferred vehicles;

adjusting the amount payable of taxes which are sold to take account of subsequent withdrawals
from and contributions to the tax-deferred vehicles;

specifying an adjustment to take account of a change in tax rates;

adjusting the amount owed to purchasers of such taxes to take account of any specified adjustment in tax rates;

using one or more computers to divide the rights to receive the adjusted amount payable of such taxes sold into qualitatively different interests which provide rates of return based on factors which are different from each other;

tracking the ownership of such different interests;

receiving amounts payable of such taxes which amounts are adjusted to take account of withdrawals from and contributions to the tax deferred vehicles;

transferring the amounts due to the owners of the qualitatively different interests which provide rates of return based on factors which are different from each other.

by Dennis Crouch

Todd C. Bank v. Al Johnson’s Swedish Restaurant (Fed. Cir. 2019)

Al Johnson’s registered trade dress “consists of goats on a roof of grass.”

In the case, Mr. Bank petitioned to cancel the mark registration.  Bank is not a competitor or customer. Rather, Mr. Bank is offended by the way that the mark demeans goats — denigrating the value that he (and society) places on the “dignity and worth of animals.”  On the merits, Bank argued that the mark is functional and also disparaging to animal lovers. This second theory is no longer viable (if it ever were) under Matal v. Tam.

The patent statute allows for any person to raise an inter partes review (IPR) challenge of an issued patent.  Trademark cancellation petitions are more limited — requiring the petitioner to “believe[] that he is or will be damaged” by the mark.  Although the “belief” requirement appears quite broad and subjective, the court has created objective standards of reasonableness — requiring (1) a “real,” “legitimate,” and “personal” interest in the proceedings and (2) a “reasonable basis” for the belief of damage.

Here, the TTAB and CAFC agreed that Mr. Bank lacks standing. The court held that Mr. Bank provided neither a real interest nor a reasonable basis for his belief of damage.

Mr. Bank failed to plead a real interest in the cancellation proceedings. To make such a pleading, an “opposer must have a direct and personal stake in the outcome of the opposition.” . . . Mr. Bank failed to provide any reason other than to allege that the Goats on the Roof Registration is “demeaning to goats” and that the “respect, dignity, and worth of animals” were affected by that alleged demeaning. . . . Mr. Bank provided no other basis to suggest he maintained a direct and personal stake in the outcome and so we conclude that Mr. Bank failed to plead to a real interest.

Regarding reasonable basis, the court noted that being offended by a mark is unlikely to count as a recognized damage under Tam.

While Mr. Bank asserted that the trade dress “is offensive to numerous persons,” including himself, because it was demeaning to goats, he failed to articulate how this reason survives Tam.

Id.

AJ Johnson also asked for its cost and attorney fees for defending the appeal.  In response to that request, Bank also requested that AJ Johnson be required to pay his costs.  On appeal, the court sided with the mark holder — finding the appeal (and Bank’s request for fees) to be frivolous and awarded fees under Fed. R. App. P. 38 (“If a court of appeals determines that an appeal is frivolous, it may, after a separately filed motion or notice from the court and reasonable opportunity to respond, award just damages and single or double costs to the appellee.”).

Swedish Restaurant explains that because Mr. Bank petitioned the TTAB three times on this matter, all of which were dismissed for lack of standing, and appealed the final decision to this court, where the case was “frivolous as filed and frivolous as argued[,]” damages are warranted. . . . We conclude that this appeal and Mr. Bank’s motion for sanctions are frivolous. Mr. Bank filed multiple petitions with the TTAB regarding the Goats on the Roof Registration, all of which were dismissed for, inter alia, standing. Mr. Bank was afforded the opportunity to revise his petition and remedy the standing defect, which he did not do. Despite the fact that Mr. Bank was informed by the TTAB that his disparagement claim was based on an unconstitutional and stricken section of the Lanham Act, he raises it again before this court. Based on these facts and our analysis, Mr. Bank’s appeal is frivolous. . . . Even though Mr. Bank appears pro se before us, he is an attorney and bears the commensurate obligations. Id. at 1583 (concluding that, even when an attorney appears pro se, he or she is “chargeable with knowledge of . . . our rules”).

Accordingly, we grant Swedish Restaurant’s motion for costs and attorney fees, including the costs and fees incurred in relation to the parties’ sanctions motions, and deny Mr. Bank’s motion for sanctions.

Dismissed.

Back in 2009, the Swedish Restaurant sued Georgia based Goats on the Roof.  The case settled, and according to a WSJ article, the Georgia facility agreed to pay a licensing fee. The article goes on to say:

Al Johnson’s is on constant lookout for other cloven-hooved intellectual-property violations.

Lars Johnson Has Goats on His Roof and a Stable of Lawyers to Prove It. Apparently Goats on the Roof of the Smokies also has a licensing agreement.

Todd Bank is interesting. He self identifies as “the annoyance lawyer.” If Bank wants to try for Round 4, he should probably find folks who have received the cease-and-desist letter and represent them.

I have been impressed with the USPTO’s training programs, although I have not yet attended one of their Virtual Instructor Led Training (vILT) courses that essentially repeat the training delivered to patent examiners.  I am signed up for the next event — Examination of Ranges — that will be held Feb 11, 12, or 13, 2020 (2-hour free event).

Sign up here.

The USPTO also does a good job of posting many of its Examiner Guidance and Training Materials that are available here.  Two of the most useful are (1) the claim interpretation material from May 2019 [claim_interpretation_2019] and (2) the 102/103 workshop material from 2018 [102103_workshop_slides].

Recent Headlines in the IP World:

• Colum Lynch: China Bids to Lead World Agency Protecting Intellectual Property (Source: Foreign Policy)
• Andrew Hard: New Notice of U.S. Patent Allowance Granted to Axim® Biotechnologies for Suppository Formulations Comprising Cannabinoids (Source: Associated Press)
• Jan Wolfe: VirnetX Patent Win Against Apple Vacated by U.S. Appeals Court (Source: Reuters)
• Jonathon Ramsey: Ford Patent Application Shows New ‘Skateboard’ EV Truck Chassis Design (Source: Auto Blog)

 Source: USPTO

Commentary and Journal Articles:

• Daniel F. Runde: To Compete and Win, the US Needs to Get into the Game (Source: The Hill)
• Malathi Nayak: Apple Must Fight Credit Card Tech Patent Lawsuit in Texas (1) (Source: Bloomberg Law)
• Prof. Xuan-Thao Nguyen and Prof. Jeffrey A. Maine: Attacking Innovation (Source: SSRN)

New Job Postings on Patently-O:

• Klintworth & Rozenblat IP
• RPX Corporation–Senior Analyst
• Eckert Seamans
• Faegre Baker Daniels
• Schwegman Lundberg & Woessner, P.A.
• Daly, Crowley, Mofford & Durkee, LLP
• Faegre Baker Daniels LLP
• RPX Corporation–Senior Patent Engineer

Congress is moving on Trademark Legislation with a number of different potential proposals circling. Today, the Senate IP Subcommittee (Judiciary) held hearings on trademark law:

Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses

Testimony came from:

• Prof. Professor Barton Beebe (NYU) (trademark depletion; 2/3 of recent registrations from China on apparel include fraudulent specimens; supporting ex parte reexamination of registered marks and expungement);
• Douglas Rettew (Finnegan Henderson) (arguing that eBay should not apply in trademark cases, but rather that mark holders should have a presumption of injunction)
• Megan Bannigan (Debevoise & Plimpton) (clutter due to fraudulent registration and renewal
• Prof. Thomas Williams (Duke) (the system should be one that is fair and reasonable and support small business activity)
• Stephen Lee (Target) (it was Lee’s team at Target’s team that may have first identified the problem of fraudulent registrations)

The USPTO and Congress are working with various interest groups to develop legislation in this area.  However, the legislation is not yet out for primetime.

by Dennis Crouch

On December 2, 2019, the Supreme Court is set to hear oral arguments in Georgia v. Public.Resource.org, Inc. 18-1150 on the question of whether the state of Georgia can obtain and protect a copyright on the “Official Code of Georgia Annotated.”  Or, is copyright protection prohibited by the government edicts doctrine as the 11th Circuit held.

Federal Statute provides that works by the U.S. Gov’t are not copyrightable. 17 U.S.C. 105.  However, that provision does not apply to state governments. Here, Georgia hired LexisNexis to annotate and then publish its code.  The contract included a work-made-for-hire agreement and so the state is legally the author and copyright holder (if copyright persists). 17 U.S.C. § 201(b).  Note here that Georgia is (no longer) claiming copyright in the statutes themselves, but is claiming that the annotations are protectable.

A leading case is Callaghan v. Myers, 128 U.S. 617 (1888) that allowed the official reporter to enforce copyright based upon materials added to state court decisions (head-notes, indices, arrangement of cases, and errors).

Even though a reporter may be a sworn public officer, appointed by the authority of the government which creates the court of which he is made the reporter, and even though he may be paid a fixed salary for his labors, yet, in the absence of any inhibition forbidding him to take a copyright for that which is the lawful subject of copyright in him, or reserving a copyright to the government as the assignee of his work, he is not deprived of the privilege of taking out a copyright which would otherwise exist.

Id.  The alleged infringer here argues, inter alia, that the “Official” gov’t sanctioned nature of the annotations distinguish this case from Callaghan.

Callaghan is the U.S. Supreme Court’s last entry into the government edicts doctrine until now. Since that case the copyright statute has been overhauled in several major ways, including creation of the work-made-for-hire doctrine (prior to that an employer was not seen as an “author”) as well as the aforementioned statutory prohibition on copyright where the U.S. Gov’t is the author.

Oral arguments are divided with Georgia splitting time with the U.S. Gov’t who also argues that copyright protects the annotated code.

In Ajinomoto Co., Inc. v. Intl. Trade Commn., 932 F.3d 1342 (Fed. Cir. 2019), the Federal Circuit affirmed an equivalents determination by the USITC. When I wrote about the case back in August, I coined the catchy acronym: DoEPHETAN.

DoEPHETAN: the Doctrine of Equivalents limited by Prosecution History Estoppel unless the narrowing amendment is “merely tangential” to the equivalent in question.

Yes – this is awful.  Its not me; Lets blame the courts who wanted to empower patentees with the doctrine of equivalents but then became afraid that they had gone too far.

In Ajinomoto, the Federal Circuit found that the patentee had found its way through the DoEPHETAN maze.  As originally filed, the patent claims covered the accused genetically engineered E. coli.  During prosecution the claims were narrowed to avoid a particular prior art references.  However, the accused bacteria is also different from the amended-around prior art and so the Federal Circuit found the amendment merely tangential to the equivalent and therefore did not bar the patentee from relying upon the Doctrine of Equivalents. In the original decision, the majority (Judges MOORE and TARANTO) sided with the patentee while Judge DYK dissented in part.

In recent filings, the adjudged infringer (CheilJedang) asked for rehearing — arguing that the majority “applied an expansive approach” the “merely tangential” exception rather than the proscribed “very narrow” application.

The new approach, moreover, accepts post hoc “prosecution-remorse” arguments and threatens to vitiate PHE by expanding the exception well beyond its historical application.

Despite a well written brief, the Federal Circuit has now denied the en banc petition without opinion — leaving this discussion for another day.

I do think that the petition is correct — the majority opinion here appears to be a signal of a slight expansion of DoE. Time will tell whether patentees take advantage.

[Read the Petition Here]

= = = =

I though this list (below) was interesting from the brief. In the litigation, 15 Ropes & Gray attorneys have represented the accused infringer (CJ). Of those, 9 are no longer at the firm.

The petition was filed by Steven Pepe & Matthew J. Rizzolo at Ropes & Gray along with  James Haley from Haley Guiliano. The list below are attorneys not on this brief, but who have represented CJ in the case that was filed in 2016.

by Dennis Crouch

The chart below  provides a small bit of information – the annual number of Federal Circuit decisions discussing the Doctrine of Equivalents.

Recent decisions:

• Pharma Tech v. Lifescan, Inc. 2019 WL 6222860 (Fed. Cir. Nov. 22, 2019) (prosecution history estoppel bars the claims for infringement under the doctrine of equivalents)
• Metricolor LLC v. L’Oreal S.A., 2019 WL 5588874 (Fed. Cir. Oct. 30, 2019) (granting plaintiff leave to amend complaint to add DOE allegation).
• UCP Intl. Co. Ltd. v. Balsam Brands Inc.,2019 WL 4955052 (Fed. Cir. Oct. 7, 2019) (vacating summary judgment of literal infringement and DOE based upon faulty claim construction).
• Eli Lilly and Co. v. Hospira, Inc., 933 F.3d 1320 (Fed. Cir. 2019) (narrowing amendment did not create prosecution history estoppel; no disclosure-dedication; district court did not err in finding insubstantial differences)
• Ajinomoto Co., Inc. v. Intl. Trade Commn., 932 F.3d 1342 (Fed. Cir. 2019) (affirming equivalents determination)
• VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019) (discussing the court’s prior reversal of a jury DOE verdict)
• Amgen Inc. v. Coherus BioSciences Inc., 931 F.3d 1154 (Fed. Cir. 2019) (prosecution history estoppel barred patentees claiming doctrine of equivalents infringement)

See John R. Allison & Mark A. Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59 Stan. L. Rev. 955 (2007) (DOE used to be important, but not anymore); Lee Petherbridge, On the Decline of the Doctrine of Equivalents, 31 Cardozo L. Rev. 1371 (2010) (confirming the demise and remarking that the result “is the culmination of a concerted and prolonged court-driven effort to make [DOE’s] favorable application the exception, not the rule.”); and David L. Schwartz, Explaining the Demise of the Doctrine of Equivalents, 26 Berkeley Tech. L.J. 1157, 1159 (2011).

by Dennis Crouch

In re Extreme Technologies, LLC (Fed. Cir. 2019)

In a short opinion, the Federal Circuit has denied Extreme Tech’s petition for writ of mandamus directing transfer of its case before S.D.Tex Judge Hughes to S.D.Tex Judge Bennett. (Note, this case is about District Court Judge Lynn Hughes, not Federal Circuit Judge Todd Hughes).

Extreme first sued Stabil Drill for patent infringement in S.D. Tex. accusing Stabil’s eccentric reamer of infringing three of Extreme’s patents. Within a week, Extreme filed a notice of dismissal and refiled the same complaint in W.D. Louisiana.  The S.D. Tex. had been assigned to Judge Hughes who terminated the case.  Judge Hughes order included the statement that “If refiled in or removed to this district, the case will be assigned to Judge Lynn N. Hughes.”

I’ll note here that the Fed. Rules of Civil Procedure provide for dismissal by a plaintiff “without a court order” if filed prior to the defendant’s answer (or summary judgment motion).  Rule 41(a)(1)(A)(i).  Thus, under the rules the plaintiff’s notice of dismissal ended the case and there was no need for Judge Hughes to file the termination papers ex post. 

Now in Louisiana: Stabil filed a motion for venue transfer and the Louisiana agreed to send the case back to Texas.  Although venue was “proper” in Louisiana, the court concluded that Extreme Tech was engaged in “Judge Shopping” and that factor weighed in favor of shifting venue.

When the case arrived back in S.D.Tex., it was randomly assigned to Judge Bennett who, noting the prior statement in the case file, transferred the case back over to Judge Hughes. Judge Hughes accepted the case and refused to send it back to Judge Bennett.

Extreme Tech then filed a petition for writ of mandamus to keep the case before Judge Bennett. The basic argument is that Judge Hughes post-dismissal order to return the case to him was improper. 

One obvious quirk is that the petition was filed with the 5th Circuit Court of Appeals and not the Federal Circuit.  The 5th Circuit has some good law for the patentee — having previously told Judge Hughes that “he cannot enter an order after a Rule 41(a)(1)(A)(i) dismissal.” (quoting from patentee’s brief). In Bechuck v. Home Depot U.S.A., Inc., 814 F.3d 287, 291 (5th Cir. 2016), Judge Hughes had similarly issued a post-dismissal order that “If Bechuck sues Advantage (ASM) for the same cause of action, he must do so before this court.”  The 5th Circuit ruled that statement ineffective — rather the plaintiff’s dismissal under “Rule 41(a)(1)(A)(i) necessarily allows him to choose his forum anew.”

By Statute, the Federal Circuit has jurisdiction over patent cases appealed from district courts. 28 U.S.C § 1295. However, the statute specifically is directed toward an “appeal from a final decision.”  The statute does not indicate the proper course of appeal of mandamus actions.  However, the Federal Circuit has also ruled that extraordinary writs associated with district court patent cases are also “plainly” within the court’s jurisdiction. In re Princo Corp., 478 F.3d 1345, 1351 (Fed. Cir. 2007);  In re Regents of the Univ. of Cal., 964 F.2d 1128, 1130 (Fed. Cir. 1992).  Although the Federal Circuit has grabbed-power, the 5th Circuit has not clearly relinquished power — in that I’m not aware of a 5th Circuit decision affirming Princo. (I have not done an exhaustive search).

Back to the case: The 5th Circuit apparently (without opinion) sent the whole file to the Federal Circuit who has now ruled on the case — denying mandamus:

Judge Bennett did not violate any clear and indisputable authority in transferring this case to Judge Hughes. To the extent that Extreme believed Judge Hughes exceeded his authority in issuing his initial order, it could have timely appealed from that decision but elected not to do so. Under the circumstances, granting this extraordinary relief would not be appropriate.

Extreme Tech Fed Cir Decision.

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In briefing, the patentee explained its problem with Judge Hughes:

Judge Hughes has been found many times by the Fifth Circuit to have abused his discretion. This particular finding was for exactly the same conduct as in the case at bar. Judge Hughes is, plainly, unconcerned about the Fifth Circuit’s interpretation of the law as it applies to him personally. That is a significant problem. Judge Hughes deprives civil plaintiffs of a fair forum, forcing them to waste money on appeals that should be unnecessary, settle on unfavorable terms, or simply quit. Stabil Drill knows this. That is why it is trying so hard to get the case before Judge Hughes. . . .

Judge Hughes has a History Record of Ignoring the Rules and the Law

Extreme’s counsel has significant experience with Judge Hughes’s approach in handling patent infringement cases. . . . There are over two dozen United States District Court Judges in the Southern District, twelve of which are located in the Houston Division. Somehow, sixty percent of the patent infringement cases filed by Extreme’s counsel have been “randomly” assigned to Judge Hughes. Every lawsuit filed in the Houston Division has a one in twelve chance of being assigned to Judge Hughes, or 8.3%. The odds of being assigned to Judge Hughes for six out of ten cases must be incredibly small. Judge Hughes seems to be requesting patent case assignments. The reason is known only to him. He certainly does not think much of patent plaintiffs, as demonstrated by his
record.

In handling patent cases, Judge Hughes routinely denies plaintiffs Constitutional due process under the 14th Amendment and the right to a civil jury trial under the 7th Amendment, refuses to follow the Federal Rules (by denying basic discovery under Rules 26, 30-31, 33-34, and 36, Fed. R. Civ. P.), and rejects the Southern District’s Local Patent Rules.

Although Judge Hughes has a copy of the U.S. Constitution on his office desk, he does not believe in the Seventh Amendment. He believes, as he once told the undersigned during a hearing, that patent plaintiffs are wrongly “throwing sand in the gears of competition.” None of the six patent cases filed by the undersigned that ended up in Judge Hughes’s court were granted a jury trial. Some cases were dismissed, and others settled after years of Judge Hughes’s one sided rulings on behalf of accused patent infringers. Sadly, this experience is not unique. Attached as Exhibit A is a list of all the patent infringement cases, according to our research, before Judge Hughes during his career on the federal bench. There are a total of 104 cases. Not a single case made it to trial. . . .

ExtremeTech Brief Opposing Transfer

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The defendant’s ads include a statement regarding its “patented spiral cutting design.”  Does that advertising work the “patent” belongs to your competitor? [I’m joking here, the product is just “accused” of infringement.]