Supreme Court End of Term Updates

by Dennis Crouch

The Supreme Court decided only two patent cases this term.  Helsinn is somewhat important for many patentees and certainly the PTO; while Return Mail more narrowly focuses on the role of Federal Government agencies in challenging patents:

  • Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628 (2019) (non-public sales are still “on sale” under the America Invents Act (AIA) rewriting of 35 U.S.C. 102).
  • Return Mail, Inc. v. United States Postal Service, et al., 139 S.Ct. 397 (2019) (IPR statute does not provide for petitions filed by the Federal Gov’t.).

Certiorari has been granted in only one additional patent case: Peter v. NantKwest. That case asks whether the USPTO is permitted by statute to recover attorney fees associated with § 145 civil actions.

An applicant dissatisfied with the decision of the [PTAB] . . . may . . . have remedy by civil action. . . . The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims. . . . All the expenses of the proceedings shall be paid by the applicant.

35 U.S.C. § 145. In this case Laura Peter, USPTO Deputy Director, is the named petitioner on behalf of the Government, standing in for Dir. Iancu who has a conflict of interest in the case. (Irell & Manella represents NantKwest, and Iancu was managing partner at Irell when the representation began.)

In many other countries, litigation losers commonly pay the attorney fees of the victor.  One argument against that approach is an access-to-justice problem — parties without much money will not be able to find representation if there is a good chance that they’ll have to pay the other-side’s attorney fees upon losing.  In its amicus brief supporting the Government, R Street (Charles Duan) argued that only rich pharmaceutical companies are bringing these cases. “There is thus little reason to believe that those additional expenses will greatly affect the strategic calculus of those patent applicants likely to make legitimate use of § 145.”

As R Street‘s brief outlines, § 145 are used rarely — usually for the most potentially valuable pharmaceutical patents – with top lawyers handling the case (such as Irell & Manella).  The real shift from the outcome may come from the USPTO — if it knows someone else is footing the bill, the USPTO may fight these cases harder.

Upcoming Soon: The Supreme Court has one final conference set this term (June 20) and is slated to rule on a number of pending petitions for certiorari:

  • InvestPic, LLC v. SAP America, Inc., No. 18-1199  (physicality requirement for eligibility);
  • Romag Fasteners, Inc. v. Fossil, Inc., et al., No. 18-1233 (profit disgorgement under the Lanham Act);
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (prior art date for unclaimed disclosures in a provisional filing);
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (infringement associated with and “offer” made in the US to actually “sell” a product in a foreign country);
  • Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18-916 (Is the 315(d) time-bar triggered by prior lawsuits that were dismissed without prejudice?); Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same); Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same). .

Rather than guessing at the court’s potential decisions as to whether or not to grant certiorari, I’ll just wait a few days on these to know the outcome.

We also have the beginnings of a heap of new cases for consideration next term:

  • HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer, No. 18-415 (fact-law divide in eligibility);
  • Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (threshold of a natural phenomenon);
  • Google LLC v. Oracle America, Inc., No. 18-956 (copyright for software interfaces).
  • Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., et al., No. 18-1280 (obviousness and blocking patents)
  • Hyatt v. Iancu, No. 18-1285 (reopening prosecution after successful appeal; “Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.”);
  • Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418  (R.36 judgments; holistic approach to obviousness)
  • Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (eligibility on the pleadings; Berkheimer question);
  • Enplas Display Device Corporation v. Seoul Semiconductor Company, Ltd., No. 18-1530 (can foreign sales qualify as induced infringement of a U.S. patent — if defendant knew that “the components might be incorporated by third parties into infringing products that might be sold by other third parties in the United States.”)
  • Zimmer, Inc., et al. v. Stryker Corporation, et al., No. 18-1549 (more on treble damages — is negligence enough?)

This last set of cases won’t see any light until at least October 2019 when the Court returns from its summer break.

Using a Technique in a Known Way is Usually Obvious

Samsung Electroncs v. UUSI (Fed. Cir. 2019)

In the inter partes review (IPR), the PTAB sided with the patentee UUSI — finding that Samsung had failed to prove the obviousness of UUSI’s U.S. Patent No. 5,796,183.  On appeal, however, the Federal Circuit has vacated that decision — holding that the Board’s findings of no motivation-to-combine or reasonable-expectation-of-success were not supported by the evidence.

The patent is directed to multi-point capacitive sensing circuity – the type used for the multi-billion dollar touchscreen market. It’s 1996 priority date situates the invention before a substantial amount of prior art.  However, Samsung identified several key prior art references, including U.S. Patent Nos. 5,565,658 (Gerpheide), 5,087,825 (Ingraham), and 5,594,222 (Caldwell).

Obvious by Combination of References: Most often, obviousness is proven with a combination of references that collectively teach the claimed elements.  In addition to providing the set of prior art references, the patent challenger must also show that a person of skill in the art (POSITA) would have a “motivation to combine” the references in the way claimed and that such a combination would have a “reasonable expectation of success.”

In KSR v. Teleflex, the Supreme Court explained that the motivation to combine analysis is flexible and not bound to rigid limitations or requirements. The High Court explained: “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR.

Here, the PTAB decided to exclude Gerpheide from the analysis because its approach was directed toward single-point capacitive sensing rather the multi-point approach of the patentee.  On appeal, the Federal Circuit vacated that holding:

The Board’s categorical rejection of the teachings from a single input device to those of a multi input device is not supportable. . . . Samsung presented uncontested evidence that the combination of Ingraham and Caldwell would experience electrical interference, and Gerpheide taught a way to address electrical interference in capacitive touch devices. The fact that Gerpheide and Ingraham/Caldwell involved different types of capacitive touch devices (single versus multi input) does not undermine the motivation to combine the teachings of Gerpheide with Ingraham/Caldwell since
both devices can experience electrical interference. Gerpheide recognized this as a problem and provided a solution to reduce such interference. Thus, a person of skill in the art would have been motivated to include such a feature from analogous prior art in a multi input capacitive touch pad device (i.e., the device of the Ingraham/Caldwell combination). The Board’s contrary conclusion is not supportable.

With regard to reasonable expectation of success, the Federal Circuit also vacated — primarily holding “that the Board’s implicit claim construction was erroneous.”  Here, the Federal Circuit found that the PTAB had unduly narrowed the claim scope and that under the broader scope there may indeed be a reasonable expectation.

Patently-O Bits and Bytes by Juvan Bonni

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State Sovereign Immunity does Not Apply in Inter Partes Review proceedings.

University of Minnesota v. LSI Corp. (Fed. Cir. 2019)

As expected based upon the Federal Circuit’s prior rulings on tribal immunity, the court has now also ruled that 11th Amendment Sovereign Immunity does not protect patents owned by individual states (such as Minnesota) from being cancelled via inter partes review (IPR).

We conclude that state sovereign immunity does not apply to [IPR] proceedings.

What does this mean — state owned patents can more easily be challenged.

By its terms, the 11th Amendment prohibits US (Federal ) courts from exercising power over suits “against one of the United States” that are brought by Citizens of another State or a Foreign State.

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

Note, that the 11th Amendments does not prohibit actions against one State brought on behalf of another States or by the Federal Gov’t. Note also that the States also have inherent sovereign immunity that “neither derives from nor is limited by, the terms of the Eleventh Amendment.” Alden v. Maine, 527 U.S. 706, 713 (1999).

Although the terms of the 11th amendment appear to be directed to Article III court activities, immunity has also been found in administrative cases that the courts finds to be “similar to court adjudications.”

In its setup for this decision, the Federal Circuit walked through the patenting process — noting the many flaws and high likelihood that non-patentable claims are allowed to be patented.  That foundation then highlights the need for further administrative action in fixing those bad patents — first reexaminations and reissues, and now inter partes review.  Because this deeper look is costly, it makes sense to only target cases under dispute — fix the important patents and don’t worry about the rest. In other words, IPR proceedings should be seen as an extension of the examination process, not a court proceeding. The court explains briefly that “IPR represents the sovereign’s reconsideration of the initial patent grant.”

In the Allergan case, the Federal Circuit previously held that Native American tribal immunity does not protect tribal-owned patents from IPR challenges. Here, the court concluded that “the differences between state and tribal sovereign immunity do not warrant a different result than in Saint Regis. We therefore conclude that state sovereign immunity does not apply to IPR proceedings.”

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In an interesting statement, the three judges on the panel – Judges Dyk, Wallach, and Hughes — added a non-binding set of “additional views” to their main opinion that identify am IPR proceeding as “an in rem proceeding to which sovereign immunity does not apply.”  The court does not explain why it chose to include this unanimous statement as “additional views” rather than as the holding.

Pre-Institution Merger Foils Inter Partes Review Challenge

by Dennis Crouch

Power Integrations, Inc. v. Semiconductor Components (ON Semiconductor) (Fed. Cir. 2019)

The Federal Circuit has ordered dismissal of On Semiconductor’s IPR petitions against several patents owned by Power Integrations.  The basic issue on appeal was interpretation of the time-bar under 35 U.S.C. 315(b)

(b) An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

The statute here is clearly drafted, with the basic ambiguity questions being (1) what counts as a “real party in interest or privy of the petitioner” and (2) whether “served with a complaint” requires a summons under FRCP R. 4 – and what if service is waived?  This case focuses on a third question — (3) real party in interest as of when?

Back in 2009, Power Integrations sued Fairchild Semiconductor for infringing the patents at issue and has won two separate $100+ million jury verdicts (both of which have been rejected).  A third trial on damages is now likely for later this year (since the patent claims are no longer cancelled).

In 2015, ON (petitioner here) agreed to purchase Fairchild (in a confidential agreement). Prior to completion of the acquisition, ON filed the IPR petitions. On September 19, 2016, ON Semiconductor completed the acquisition.  Then, later that week, September 23, 2016, the USPTO issued its institution decision and ultimately held the challenged claims unpatentable as obvious. [Final Written Decision]

Throughout the institution phase, the patentee challenged institution on time-bar grounds — arguing that Fairchild was served with a complaint more than one-year before the IPR petition filing; and that Fairchild is a Privy of petitioner ON.  Q.E.D.

The Board, however, sided with petitioner holding (1) the focal point is the status of the parties at the time the petition was filed (thus the subsequent merger does not deny institution); and (2) that “there was insufficient evidence of record to establish control and therefore insufficient evidence to establish privity between Fairchild and ON at the time the petition was filed.”  The Board also denied additional discovery into the admittedly confidential relationship.

On appeal, the Federal Circuit has reversed that decision holding that privy relationships developed post-petition but pre-institution should be considered. Thus, the merger (clearly creating privity and Real Party in Interest (RPI)) pre-institution with a time-barred company prevents the IPR from being instituted.   For its decision, the court looked particularly to the language of the statute which focuses on institution – “may not be instituted if . . . ”

The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner. In other words, the statute specifically precludes institution, not filing.
When the Board finds that an IPR is barred under § 315(b), it denies institution. It does not reject the petitioner’s filing. The focus of § 315(b) is on institution. The language of the statute, in our view, makes privity and RPI relationships that may arise after filing but before institution relevant to the § 315(b) time-bar analysis. . . .

In light of the foregoing, we hold that this IPR was time-barred by § 315(b) because Fairchild was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed.

Result here is that the claims are no longer cancelled – and so the new trial on damages against Fairchild should move forward (barring a settlement).

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*** Save this for another day: the case includes important and interesting discussions of issue preclusion and agency deference.

Patently-O Software Law Bits & Bytes: Data Privacy by Grant Harrison

by Grant Harrison (

Data Privacy: Data Privacy or Information Privacy Law is, in short, a way to regulate how companies, individuals, and governments access, use, and collect public information, usually via online. Contemporaneous information privacy law has been around since the 1970’s when the FTC (Federal Trade Commission) first released the Fair Information Practice Principles or the FIPPs, which then served as a foundation for subsequent Data Privacy laws. The principles primarily give the people the right to know when, where, what, and how our data is used and collected. It gives the people substantial transparency with the company regarding our private data and treats our data as our property so that companies must ask before doing anything with our private information. This has been huge news in the last few years because the United States is one of the only highly developed countries that has not enacted comprehensive Data Privacy regulations.

Recent Articles and Editorials:

The State of Patent Eligibility in America: Part III

The Senate Judiciary Committee’s Subcommittee on Intellectual Property is holding its third day of testimony on patent eligibility today, June 11, 2019. The State of Patent Eligibility in America: Part III.  Hearing begin at 2:30 EST.

[Watch Here]

Today’s witnesses are primarily business leaders and in-house attorneys for large IP-focused businesses:

Panel I

  • Manny Schecter, Chief Patent Counsel at IBM
  • Laurie Self, Senior Vice-President and Counsel at Qualcomm
  • Byron Holz, Senior Counsel at Nokia
  • Kim Chotkowski, VP at InterDigital
  • Sean Reilly, Associate General Counsel at The Clearing House Payments Company

Panel II

  • Laurie Hill, VP for IP at Genentech
  • Sean George, CEO at Invitae
  • Gonzalo Merino, Chief IP Counsel at Regeneron Pharmaceuticals
  • Peter O’Neill, Executive Director at Cleveland Clinic Innovations
  • David Spetzler, President and Chief Scientific Officer at Caris Life Sciences

Panel III

  • Michael Blankstein, Deputy GC at Scientific Games
  • Corey Salsberg, Global Head IP Affairs at Novartis
  • Nicolas Dupont CEO at Cyborg Inc.
  • Robert Deberadine, Chief IP Counsel at Johnson & Johnson
  • John D. Vandenberg, Partner at Klarquist Sparkman

Easy Ineligibility Decisions for the Court

by Dennis Crouch

The Federal Circuit released two non-precedential decisions today affirming lower court holdings of ineligibility.

Reese v. Spring Nextel (Fed. Cir. 2019). Mr. Reese’s patent claims a “method for sending a call waiting tone . . .” U.S. Patent No. 6,868,150. The problem for Reese is that the asserted claims are drafted in substantially functional form without reciting the particular technological solution.  The court explains:

The claims are directed to the abstract idea of receiving information (a calling phone number flagged as private) and sending an indication (an audible tone) to a party already engaged in a call. The claims do not recite any particular method of receiving the information and sending the indicating tone in response. . . . Although Reese argues that the claims require specific telephone features, merely limiting claims to a particular technological environment does not render the claims any
less abstract. . . .

[Regarding step two:] [B]y the ’150 patent’s own terms, the claims do not recite any non-conventional equipment.  Further, the claims recite functional language lacking “any requirements for how the desired result is achieved.” Elec. Power Grp. Nothing in the claims requires anything other than conventional telephone network equipment to perform the generic functions of receiving and sending information. Reciting an abstract idea and applying it on telephone network equipment is not enough for patent eligibility. Accordingly,
the claims do not contain an inventive concept.

Read Reese.

In re Greenstein (Fed. Cir. 2019) involves a “method for allocation of investment returns” when a single asset is collaboratively owned.  The key step in the invention appears to involve using a “computer to assign an investment return to the investor.”  According to the inventor, the beneficial focus of the invention is to be able to allocate risk between parties without having to actually buy or sell any additional securities.

On appeal, the Federal Circuit agreed with the USPTO that Greenstein’s claims are directed to ineligible subject matter.

[T]he claims are directed to the abstract idea of allocating returns to different investors in an investment fund, a fundamental business practice that long predates computer technology.  Claim 1 involves storing information about each investor in a database, changing the investment returns assigned to at least two of them, and using the computer to keep track of the transfers between investors in the fund. This is simply the “automation of the fundamental economic concept,” OIP
Techs., of allocating investment returns to different investors within a common investment fund. We have long held that such basic management of business information is an abstract idea. As a result, we conclude that the Board correctly held that the claims are directed to the abstract idea of allocating returns in an investment fund.

Nor do the claims recite any further inventive concept. The claims only invoke a computer as a generic tool to store information and record transactions; in times past, these activities could have been performed with pen and paper. As the PTO points out, Alice clearly held that “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”

Read Greenstein.

Return Mail: Government is Not a “Person” and Therefore Cannot File AIA Review Petitions

Return Mail, Inc. v. United States Postal Service (Supreme Court 2019) [Return Mail, Inc. v. Postal Service]

In a 6-3 decision, the Supreme Court has decided the U.S. Government is not a “person” capable of petitioning for institution of AIA review proceedings.

Under the statute, a “person” other than the patent owner may petition for AIA Review (IPR, PRG, or CBM). See 35 U.S.C. 311 (for IPR).

In the case, Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its address processing patent and USPS petitioned for CBM review.   The PTO agreed that the patent claimed ineligible subject matter and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

The overall outcome here is that the Federal Government is more likely to have to pay royalty fees when it uses someone’s patented invention. 

The decision does not address an important background issue of the status of state and foreign governments. Also Companies are still people; but not monkeys.

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Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. See Rules are For Other People.  Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government.   The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

The dissent’s policy argument is hard to follow:

[T]he statutes help maintain a robust patent system in another way: They allow B, a patent holder who might be sued for infringing A’s (related) patent, to protect B’s own patent by more easily proving the invalidity of A’s patent. Insofar as this objective underlies the statutes at issue here, it applies to the same extent whether B is a private person or a Government agency.

Can someone help me out here on this one.

Patently-O Bits and Bytes by Juvan Bonni

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A Functionally Claimed One-Step Method

by Dennis Crouch

Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR, SCT Docket No. 18-1515 (Supreme Court 2019)

Lilly’s new petition for writ of certiorari asks an easy question:

Whether a single-step patent claim that describes its point of novelty solely in functional terms violates the rule against functional claiming set forth in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

The question as posed is easy to answer.  Any patent claim that describes its point of novelty solely in functional terms is invalid violates the rule set forth in Halliburton.  Of course, Halliburton was abrogated by the 1952 Patent Act with the adoption of what is now known as 35 U.S.C. 112(f):

Element in Claim for a Combination. — An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Note here that the 1952 patent act only discussed the treatment of functionally claimed elements in “a claim for a combination.”  The real question here is whether Halliburton is still good law for “single-step patent claims.”  I’m betting the Supreme Court would say yes — A claim with a single element would be invalid if that element was claimed solely in functional terms.

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The petition reads a bit like a mystery novel.

A few months [after Lilly obtained FDA approval to market tadalfil for BPH treatment], respondent—a shadowy non-practicing entity based in Germany—filed the patent application that ultimately became the patent at issue here,
claiming priority to an application from 1997.

Here, UroPep’s patent covers a one step method of treatment/prophylaxis claim for BPH.  The one step is as follows:

administering to a person in need thereof an effective amount of an inhibitor of phosphodiesterase (PDE) V [excluding eight particular compounds].

Back in 1997, PDE V inhibitors where already known, and tadalafil in particular was known to be a PDE V inhibitor.  The 1997 priority document mentions ten different PDE V compounds, but does not mention tadalafil, and the claim excludes eight of those ten.

= = = = =

Lilly’s question presented includes an important and disputed presumption — that the claim “describes its point of novelty solely in functional terms.”  In its decision, the district court held that the claimed step of administering a PDE V inhibitor was not wholly functional.

Even if means-plus-function analysis would apply to a product claim to “an inhibitor of PDE V,” it does not apply to a method claim reciting a method of administering that substance to a patient.

District Court Decision. The jury then awarded $20 million in damages. On appeal, the Federal Circuit affirmed without opinion (R.36) — setting up this current petition.


To be clear, the district court analysis here asks whether this fits under 112(6), not whether it comports with Halliburton.  That case states that a claim which “describes [its] most crucial element … in terms of what it will do, rather than in terms of its own physical characteristics … is invalid as a violation of Rev.Stat. § 4888 [indefiniteness].”  In General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938), the court similarly wrote invalidated claims where the inventor “uses conveniently functional language at the exact point of novelty.”

There are several ways that these cases could be applied here.  Example: (A) Since PDE V inhibitors were already known, their existence was not the point of novelty.  Rather, the point of novelty is administering those known drugs in order to treat a particular condition — and that “administering” portion of the claim was not described functionally. (B) Another way of thinking here is that the novelty of the claim is administering a particular drug — but we don’t know the details of that particular drug is because it is described functionally.

Farmer-controlled Seeds

From today’s NYTimes Opinion Piece:

The knockout punch for farmer-controlled seed was the utility patent. In a landmark (and utterly bananas) decision in 1980, the Supreme Court ruled in favor of allowing patents on living organisms. It wasn’t long before the same protections were extended to crops. New advances in genetic engineering supported the argument, with companies claiming seeds as propriety inventions rather than part of our shared commons. Utility patents restricted farmers’ freedom to save and exchange seed and breeders’ right to use the germplasm for research. . . .

On his Oregon farm, Frank Morton produces 146 varieties of organic lettuce, 88 of which he created. His lettuces … are coveted by top chefs for their distinct colors, flavors, crispiness and butteriness. In three decades of breeding, he has never filed for a patent on his lettuce varieties, because he wants others to build on his work. “Patents are completely unethical. We all need access to traits. My varieties are probably being used to create new varieties right now. I love that.”

Dan Barber, Save Our Food. Free the Seed (June 7, 2019).

Plant Patents: This week, the USPTO issued a number of plant patents, which cover new varieties of asexually reproduced plants.

Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 161.  Like utility patents, plant patents last for 20 years from the filing date.  Plant patents are examined under the same provisions as utility patents: patentable subject matter, utility, novelty, obviousness, and disclosure (35 U.S.C. 101, 102, 103, and 112) with a bit of leeway definiteness (like design patents, the claims are generally directed to the plant as “shown and described”).

It is a bit tricky here to understand how self-injury prior art works with plant patents. Most new varieties take several years to cultivate to ensure that the the variety is distinct through successive generations of asexual propagation.  Growing of the crops (and presumably selling the fruit) would have the look of prior art on sale and public use activity (as well as being “otherwise available to the public).

Take PP30,551, covering a new apple variety that issued this past week. The patent states that the new variety was first observed in 2009 as a “spontaneous limb mutation” in an commercial orchard and then cultivated (by grafting) from 2011 until the application Australian priority filing date in 2016.

During examination, the examiner did require the applicant to provide any evidence that regarding the public nature of the invention from 2009-2011.

Going back up to the NYTimes article and the Lettuce farmer.  There are no plant patents on lettuce because lettuce is sexually propagated.  Lettuce can still be protected under the USDA administered Plant Variety Protection Act (PVPA) — also for 20 years.  So far in 2019, the USDA has issued 222 PVPA certificates — 5 of which cover new varieties of lettuce.  (Most of the new certificates have been issued to Monsanto).


Solicitor General Weighs-In on Prior Art Date of Provisional Applications

The pending petition in Ariosa v. Illumina focuses on a narrow but important issue of prior-art status of a provisional patent application.  Really, the question is: what is the “prior art date” of a provisional patent application?

Whether disclosures in a published application that refers back to an earlier filed provisional application are prior art as of the filing date of the provisional application.

The basic answer that we received from the Federal Circuit is “sometimes.” A provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).

This impacts a large number of US patents: Although I have not recently measured, I my expectation is that most non-provisional patent applications add some amount of new matter beyond their provisional priority documents.  If that new information makes it into some of the claims — the result is that the provisional filing date will be immaterial with regard to prior art (under current Federal Circuit precedent).

CVSG: The petition for certiorari is well written, and the Supreme Court called for the views of the Solicitor General. The SG has now submitted his brief — joined by the USPTO — suggesting denial of cert.

In its brief, the US Gov’t argues that the Federal Circuit is totally wrong in its analysis, but that this case is not a good vehicle for reviewing its approach because petitioner’s argument is also mistaken.

The government brief follows my approach outlined in my 2015 Dynamic Drinkware post:

Anyone who works with prior art knows that this [priority requirement] setup is an oddball way to address the situation.  A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed.  My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

The government brief agrees that interpretation of proper priority claim under “119(e) has no bearing on the date on which a patent application qualifies as prior art under Section 102(e). There is no textual basis for using that provision’s priority rules to backdate patent applications sought to be relied on as prior art.”

Rather, the Government argues that, under the statute, all provisional applications count as prior art as of their filing dates once relied upon for priority by a published non-provisional application. According to the government brief, publication of the underlying application also lays-upon the file history and effectively publishes the provisional as well.  Thus, at that point, the provisional counts as “‘an application * * * published under section 122(b)’ and therefore constitutes prior art as of its own filing date.”

The Government brief acknowledges that Section 122(b) states flatly that a provisional application “shall not be published.”  Although this appears to contradict their statement that the PTO is publishing those applications, the Government brief argues that the statement only refers to provisional applications abandoned without being relied upon for priority.

Where, as here, a provisional application has been incorporated by reference into a later non-provisional application, the referenced provisional application effectively becomes part of the non-provisional application. Under those circumstances, the USPTO’s obligation to publish the non-provisional application encompasses the contents of the provisional application.

In its Brief, the Government explains that “the Federal Circuit has not directly addressed the question whether a provisional application may itself qualify as prior art under Section 102(e)(1), without recourse to Section 119(e).”

The brief here suggests a GVR (Grant-Vacate-Remand) order from the Supreme Court to address this particular issue on remand.

Solicitor General Brief

Interesting to read this particular brief for style.  Although this is certainly a complicated area, the SG brief did not really attempt to simplify it in any way — perhaps to further discourage the Supreme Court from taking up the issue.

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Note here that this particular case focuses on “old” pre-AIA Section 102(e).  Although the AIA substantially altered Section 102, I don’t believe that the alterations will change the outcome in this case.  As such, the case is important.

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Ariosa Diagnostics v. Illumina: Prior Art Date of a Provisional Patent Application

Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result


Software Law Bits & Bytes: GNU and MIT Licensing by Grant Harrison

Editor’s Note – Grant Harrison is a new Bits-and-Bytes author for Patently-O focusing on rising software law issues. Welcome Grant! – DC

by Grant Harrison

GNU Licensing: GNU licensing serves to keep software developed and maintained by open source developers free and open to the public. If an entity takes software that is licensed with a GNU and then they modify it, they must re-release the modified software back to the public.

Recent Articles:

MIT Licensing: MIT licensing for software is perhaps the most common permissive license due to the fact that it has very few restrictions on reuse as long as developers include the MIT license terms and copyright notice. If an entity takes open source software and then adds to it, they do not need to re-release their version of the software back to the public.  The extreme permissiveness of MIT licensing means that we rarely see lawsuits arise.

Recent Articles:

A lawsuit named DodoCase: Contractual Bars to Challenging Patents

DODOcase recently petitioned the Federal Circuit for en banc rehearing on patent licensing law.  The petition raises two questions – paraphrased below:

  1. Should a general forum selection clause (“disputes shall be litigated before . . . California [Courts]”) be interpreted to exclude AIA trials brought by the licensee?
  2. What is the enforceability of a license term that prevents a licensee from filing an AIA trial petition (inter partes review of post grant review).

For its part, the Federal Circuit opinion held that the generic forum selection clause did indeed prevent an AIA petition brought by the licensee and assumed that the clause was enforceable – not even considering the impact of Lear.

Two groups have now filed amicus briefs supporting the petition.

Law Professors: A group of 21 law professors signed-on to a brief drafted by Stanford’s IP Clinic run by Phillip Mallone.  The brief explains that Lear, Inc. v. Adkins, 395 U.S. 653 (1969), should apply with equal strength (if not more) to contracts barring AIA Trial Challenges by the licensee.

The panel’s sweeping elevation of boilerplate forum selection clause language is contrary to Congress’s clear intent to allow and even facilitate licensee validity challenges before the PTAB. Lear requires courts to consider the exceptionally important patent policy interests in validity challenges. Because the panel failed to engage in any such consideration and ignored binding precedent, this Court should grant rehearing to correct the error.

An industry brief was also filed by a group of companies, including SAS, Vizio, Zilinix, and Garmin as well as the Consumer Electronics Ass’n and Engine.  This brief argues that the federal circuit misinterpreted the contract — arguing that boilerplate forum selection clauses pre-AIA licenses should not be interpreted to limit AIA trials.  The Brief also explains that the licensing parties already knew and understood at the time of drafting that the terms restricting validity challenges by the licensee were not enforceable.

Read the briefs:

Contracting Around AIA Trials



When Congress Cancelled State Immunity for Copyright Infringement, Did it Violate the U.S. Constitution?

by Dennis Crouch

Allen v. Cooper representing North Carolina (Supreme Court 2019)

The Supreme Court has granted certiorari in a sovereign immunity copyright case.

Issue Presented: Whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act in providing remedies for authors of original expression whose federal copyrights are infringed by states.

Issue Restated in Opposition: The Copyright Remedy Clarification Act purports to abrogate the states’ sovereign immunity for alleged violations of federal copyright law. Did the Court of Appeals correctly hold that the Copyright Remedy Act’s abrogation of state sovereign immunity was invalid?

The case has a few interesting parts.  First off, the underlying issue stems from the discovery of the Blackbeard’s Pirate Ship Queen Anne’s Revenge off the North Carolina Shore where it sank in 1718. Intersal found the wreckage and hired Allen to document the salvage operation.  Allen registered the copyrighted works. Later, the State of North Carolina uploaded the videos online without Allen’s permission.  In order to insulate itself from infringement liability, the state passed Blackbeard’s Law,” which purported to place the uploaded videos in the public domain. (It’s not piracy if legal).

Allen then sued the State for copyright infringement — naming various individuals in their official elected capacity, including ROY A. COOPER, III, as Governor of North Carolina. The question in the case – is whether the State can be sued for copyright infringement.

On one hand is the U.S. Constitution — 11th Amendment to the U.S. Constitution seems quite clear – the Federal Courts have no power over “any suit … against one of the United States” brought by “citizens of another State.”

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

At the same time, Congress attempted to expressly “abrogate” this immunity in the Copyright Remedy Clarification Act with the following language:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person . . . for a violation of any of the exclusive rights of a copyright owner provided by [federal copyright law].

Here the statute is clear in its attempt to contravene the 11th Amendment. The only problem through is that statutes are ordinarily subject to the U.S. Constitution, not vice-versa.  The reality though is more complicated – at times the courts have permitted suits against states and have allowed Congress to abrogate state sovereign immunity by statute.

The basic test was spelled out in Seminole Tribe v. Fla., 517 U.S. 44 (1996):

Was the Act in question passed pursuant to a constitutional provision granting Congress the power to abrogate?

In its decision here, the 4th Circuit held that, although Congress does have power to create a copyright regime, it does not have power to abrogate state sovereign immunity for copyright infringement.  I’ll say that there is a good chance that the court will side with Allen against the State — holding that Congress has power to abrogate here because of the need for a “carefully crafted copyright regime.”

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Upcoming Senate Hearings on Section 101

Subcommittee on Intellectual Property
DATE: Tuesday, June 4-5, 2019 02:30 PM each day.

Panel I
The Honorable Paul R. Michel; The Honorable Q. Todd Dickinson;
The Honorable David J. Kappos; Mr. Charles Duan; Professor Jeffrey A. Lefstin

Panel II
Mr. Robert A. Armitage; Professor David O. Taylor; Ms. Sherry M. Knowles, Esq.;
Ms. Alex Moss; Professor Mark A. Lemley

Panel III
Mr. Michael Rosen; Professor Paul R. Gugliuzza; Professor Joshua D. Sarnoff; Mr. Patrick Kilbride; Professor Adam Mossoff

Day 2:

Panel I
Ms. Barbara Fiacco; Mr. Scott Patridge; Mr. Henry Hadad; Mr. David Jones; Ms. Stephanie Martz

Panel II
Mr. Paul Morinville; Mr. Phil Johnson; Dr. William G. Jenks; Mr. Christopher Mohr; Mr. Jeffrey A. Birchak

Panel III
Mr. Jeff Francer; Mr. Hans Sauer; Ms. Natalie M. Derzko; Mr. Rick Brandon; Ms. Kate Ruane


Contracting Around AIA Trials

by Dennis Crouch

Dodocase Vr, Inc. v. Merchsource, LLC (Fed. Cir. 2019) [Non Precedential Decision] [En Banc Petition]

As part of a licensing agreement, MerchSource agreed as follows:

6.4 MerchSource shall not (a) attempt to challenge the validity or enforceability of the Licensed IP; or (b) directly or indirectly, knowingly assist any Third Party in an attempt to challenge the validity or enforceability of the Licensed IP except to comply with any court order or subpoena.

The agreement also includes a forum selection clause — seemingly relegating any disputes to courts located in California:


Later, MerchSource stopped paying the agreed-upon royalties (arguing that the patents are invalid and so no money need be paid); Dodocase subsequently sued for infringement and breach in N.D.Cal. Federal Court.  MerchSource then filed for inter partes review (IPR) and post grant review (PGR) of the patents at issue.  Those proceedings are still pending before the PTAB as is the District Court case.

In response to the IPR/PRG filings, the district court issued a preliminary injunction ordering MerchSource to withdraw the PTAB petitions.  MerchSource did not do that, but rather appealed to the Federal Circuit who affirmed.

A particular question on appeal was whether the forum selection clause applied in this case because it was limited to disputes ” arising out of or under this Agreement.”  On appeal, the Federal Circuit agreed that the invalidity contentions did indeed arise from the contract. Quoting its prior Texas Instruments decision, the court explained: “There may be an issue, as here, of whether … the licensee may elect to challenge the validity of the licensed patents. . . . Thus, the governing law clause in the present case, as in any patent license agreement, necessarily covers disputes concerning patent issues.” Texas Instruments Inc. v. Tessera, Inc., 231 F.3d 1325 (Fed. Cir. 2000).

The decision here by the court is non-precedential and essentially quotes Texas Instruments for its holding. However, the case involves two important transformations of that prior case.  First, as reiterated here, the Federal Circuit appears to make it almost a rule-of-law that validity challenges will be covered by a standard contractual forum selection clause.  Second, and importantly, the cicumstances in the present case are different because of the advent of AIA proceedings.  In TI, a party was prevented from litigating its infringement case in the USITC — here the question is whether the forum selection clause keeps the case out of the PTAB.

Meanwhile, MerchSource has now petitioned for rehearing en banc asking two questions:

1. Are contractual forum selection clauses interpreted under regional circuit law as according to precedent, or are AIA proceedings to review the validity of patents necessarily covered by the forum clause in any patent license agreement regardless of the clause language?

2. Can the Supreme Court’s ruling in Lear, prohibiting contractual obstacles to validity challenges, be overcome in the absence of the countervailing public policy set forth in Flex-Foot? . . . .

The first question is a bit hyperbolic and presents a false dichotomy – but that is now a standard approach for en banc and certiorari petitions.  In any event, the Federal Circuit stated that it was applying California law to the contract interpretation; but then appeared to actually apply its own Federal Circuit law; and petitioner argues that 9th Circuit law should apply here (as it does in diversity cases).

The second question raises two important cases:

  • Lear, Inc. v. Adkins, 395 U.S. 653 (1969) — finding contractual restrictions to validity challenges void on policy grounds that favor challenges to validity.
  • Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362 (Fed. Cir. 2001) — applying regional circuit law, not Federal Circuit or California law, to interpretation of settlement agreement; and identifying res judicata as an exception to Lear.

Although the court and parties are circling around various legal issues, the baseline questions are (a) can someone contractually waive their right to file an IPR petition; and (b) if so, under what circumstances; and (c) if so, what contractual language will be sufficient?

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Here, the patents at issue cover a VR headset.  U.S. Patents 9,420,075; 9,723,117; and 9,811,184.