by Dennis Crouch

The USPTO is maintaining an updated set of “select eligibility cases” (xlsx file) that the Office sees as useful guidance for its examiners.  Of these, the only 19th Century case is Tilghman v. Proctor, 102 U.S. 707 (1881).

In Tilghman, the Supreme Court sided with the patentee — holding that that the claimed process of obtaining free fatty acids and glycerine from fatty bodies to be patent eligible.

Claim:

I claim, as of my invention, the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

U.S. Patent No. 11,766.

The patent first came before the Supreme Court in 1873 in Mitchell v. Tilghman, 86 U.S. 287 (1873).  In that decision, the Supreme Court limited the claim scope to be confined to the particular method described in the specification that used very high heat (612° Fah) for a short time (10 minutes) and thus, a process operating at a lower temperature (only 400° Fah) for much longer (several hours) did not infringe.

Seven years later, the Supreme Court changed course — holding that the claim is directed to a process, “and not for any specific mechanism for carrying such process into effect.”  The court explained:

What did Tilghman discover? And what did he, in terms, claim by his patent? He discovered that fat can be dissolved into its constituent elements by the use of water alone under a high degree of heat and pressure; and he patented the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.’ Had the process been known and used before, and not been Tilghman’s invention, he could not then have claimed anything more than the  particular apparatus described in his patent; but being the inventor of the process, as we are satisfied was the fact, he was entitled to claim it in the manner he did.

Id.

At that time, the patent act did not use the term “process” but instead the word “art”, which the Supreme Court interpreted to include processes that are “usually the result of a discovery [made] irrespective of any particular form of machinery or mechanical device.”  As such, the court allowed the patent to be enforced.

In contrasting somewhat parallel language found in the “great case” of O’Reilly v. Morse, Court noted that there is a difference between a patent for a process (patentable) and a patent for a mere principle (unpatentable).

The eighth claim of Morse’s patent was held to be invalid, because it was regarded by the court as being not for a process, but for a mere principle. It amounted to this, namely, a claim of the exclusive right to the use of electro-magnetism as a motive power for making intelligible marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for a particular purpose. It was not a claim of any particular machinery, nor a claim of any particular process for utilizing the power; but a claim of the power itself,—a claim put forward on the ground that the patentee was the first to discover that it could be thus employed. This claim the court held could not be sustained.

The court then contrasted Tilghman’s invention:

The claim of the [Tilghman] patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. . . . He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam. This is most certainly a process. . . .

It is our opinion that the patent is for a process, that it is a valid patent, and that the defendants infringe it.

Id.

I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.

• 43. Treating Kidney Disease
• 44. Denveric Acid
• 45. Controller For Injection Mold
• 46. Livestock Management

Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO.  Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims.  The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.

Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality.  What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow.  Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top.  This is the right approach — examiner expertise is prior art and claim definiteness, not whether an invention would be unduly preemptive of freedoms held by all humanity.  Now, we can debate on whether the bridge should be veering right vs left — this one certainly favors patentees. But, there is a lot to be said for a clear-pathway even if it leads a bit off center.

Speaking of swamp-walking.  I do want examiners to get dirty with their work — but expertise is the swamp known as finding and analyzing the best prior art, not answering amorphous questions of law.

[Read the Examples]

USPTO Eligibility Examination Practice

If you have a trademark deadline coming up in the next two weeks, I’d advise that you plan ahead just a bit to ensure that you have enough time to make it through the new USPTO security. The new system will require two-step authentication both for TEAS and TEASi (international version).

• You’ll need a USPTO.gov account: https://my.uspto.gov/
• More info here: https://www.uspto.gov/about-us/news-updates/teas-login-requirement

by Dennis Crouch

Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. 2019) (Campbell Soup II) (non-precedential).

This is the second appellate decision this month involving these two parties and Gamon’s  patented rack for displaying and dispensing cans. As in Campbell Soup I, this decision stems from an IPR challenge filed by Campbell Soup against a Gamon patent. The difference – while Campbell Soup I involved design patents; Campbell Soup II focuses on the related utility patent.

These patents are all part of a big patent family that started with a 2002 provisional application followed by a non-provisional in 2003, then the utility patent at issue here (US Patent 8,827,111), followed later by the design patents at issue in Campbell Soup I. The design patents do not appear to claim priority to the provisional (since that is not allowed under the law).

In the utility case, the PTAB partially instituted Campbell’s requested IPR but declined to institute as to some of the claims and some of the grounds.  Under SAS, that partial institution was improper and thus the case is remanded “to address the non-instituted claims and grounds in Campbell’s petition.”  SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018) (all claims challenged) as expanded by Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. 2018) (all grounds challenged).  As discussed below, the court also addressed the PTAB’s holding in favor of the patentee as to the instituted claims (particularly claim 27).

The claimed dispenser has a few interesting features — the most important is that its design that allows a customer to replace a can that had been removed. The basic approach is to have two chutes of cans that snake their way down the structure.  At the bottom, the lower chute and upper chute each have a flange to stop cans from rolling off, with the upper stopper offset rearwardly to leave a space for replacing a can. “This feature allows the customer to replace a product that they decide not to purchase.”  The prior art had two-chutes with an offset upper chute, but apparently was not offset enough to create a stable pocket for replacement.  (Prior art shown in drawing below)

Campbell noted that the replacement feature would work if someone used smaller cans — noting the prior art statement that “[o]bviously, the device may be made … in any desired size to accommodate varying sizes of cans to facilitate the dispensing thereof.”  Note Campbell’s argument:

The dispenser claimed in Weichselbaum—without any modification to the structure of the device—is capable of the functionality described in limitation [9] when Weichselbaum is used with cans smaller than those shown for illustrative purposes in its figures.

Appellants’ Br. 31 (emphasis in original). In other words, Campbell argues that the stopper location of the prior art works by changing the size of the cans relative to the dispenser (or by increasing the dispenser size relative to the cans).

On appeal, the Federal Circuit sided with the patentee — holding that the cans are part of the prior art design.  Thus, “changing the [relative] size of the cans . . . is a modification” of the prior art reference. In referencing the “obviously” quote from the patent (recited above), the Federal Circuit held that the statement could be interpreted as indicating a change in can size could be accommodated by a change in dispenser size.   Thus, “substantial evidence” supported the PTAB’s findings regarding the differences between the prior art and the claimed invention that served as a foundational fact for the PTAB’s obviousness conclusion.

As a separate reason for affirmance, the Federal Circuit concluded that the patentee’s objective indicia of nonobviousness are “sufficient to affirm” the not-proven-invalid conclusion.  The Federal Circuit did not review these findings in particular, but the PTAB held particularly:

1. Commercial Success: Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent.  (Query how this relates to the parallel patents that are all part of the same family.)
2. Copying: Patent Owner has established that Petitioner copied Patent Owner’s
   display racks.

Note here that the commercial success element is a bit interesting and unusual.  The “success” identified by the PTAB is not that the patented device is a huge commercial success, but instead that it led to more sales of cans — i.e., it worked well for its purpose.

Design Patent Obviousness: How to Pick a Primary Reference

In the US, we are still celebrating Columbus Day at the Federal Level. So, USPTO and the Courts are closed. (The Law School is still in operation and I’m teaching today.)

U.S. Patent 4,915,391 claims:

1. A board game comprising:

a. a game board having an endless path of contiguous blocks, some of the blocks representing property which is purchasable and a plurality of the blocks each displaying two alternative directions,

b. a plurality of destiny cards, each card describing an event,

c. a plurality of ownership cards, each card describing commercial transactions for a different piece of property,

d. a device operable by the players for determining randomly between said two directions,

e. a plurality of tokens, one for each player,

f. a plurality of property markers for identifying ownership of property, and

g. means for determining a numerical value.

Recent Headlines in the IP World:

• Andrew Chung: U.S. Supreme Court snubs University of Wisconsin appeal in patent fight with Apple (Source: Reuters)
• Stephanie Russell-Kraft: Akin Gump Grows IP Team with Two Washington Patent Lawyers (1) (Source: Bloomberg Law)
• Stephen Mayhew: Chutian Dragon Licenses Idex On-Card Biometric Enrollment Intellectual Property (Source: Biometric)
• Mihir Maddireddy: Ford Patent Sheds Light on 2021 Bronco’s Removable Doors (Source: Car and Driver)

Source: USPTO

Commentary and Journal Articles:

• Christina Petersson: Why You Shouldn’t Believe Everything You Read About 5G Patents (Source: Ericsson)
• Jared Council: Can an AI System Be Given a Patent? (Source: The Wall Street Journal)
• Prof. Erik Stallman and Prof. Jennifer M. Urban: Brief on Behalf of Amicus Curiae Open Source Hardware Association in Curver Luxembourg, SARL v. Home Expressions Inc., No. 18-2214 (Fed. Cir.) (Source: SSRN)

New Job Postings on Patently-O:

• Scripps Research
• Cedar White Bradley (CWB)
• Steptoe–Patent Agent
• Steptoe–Junior Prosecution Associate

by Dennis Crouch

In this new series, I’m looking back to 19th Century Supreme Court patent cases; looking for their wisdom; and considering their ongoing importance.

Winans v. Denmead, 56 U.S. 330 (1853) is cited as an early doctrine of equivalents (DOE) case, although I see it also as an early claim construction decision. According to Westlaw, is the 10th most cited patent case of the 19th Century.  At the time of the case, Winans was on his way to becoming one of the wealthiest Americans by making and selling railroad equipment.

As shown in the diagram below, the Winans patent covers a railroad car for transporting coal, etc. The car has a cone-shape particularly “the form of a frustum of a cone, substantially as herein described”  The shape allowed the car to carry “more coal in proportion to its own weight than any car previously in use.”  Further, excess load did not distort the shape because it “presses equally in all directions.” Id.

The accused infringer inspected a Winans-made car and then made its own — although using an octagonal shape rather than circular as in the patent (looking down as in fig 1).  The defendants argued this difference in should have resulted in a non-infringement verdict;  Winans argued that this difference was immaterial because the octagonal car was almost the same shape and obtained the same useful results.  Further, after being used for a while, the sheet metal used will shape itself into a circle.

The jury was asked Winans asked for jury instructions akin to the function-way-result test:

whether ‘the form adopted by the defendants accomplished the same result, substantially, with that in view of the plaintiff, and upon substantially the same principle and in the same mode of operation.’

However the lower court took a much narrow stance and effectively instructed the jury that they could only find infringement against conical bodies since the operation of the invention is “due alone to conical vehicles and not to rectilinear bodies.”  With that narrow instruction, the jury could not find infringement.

The Supreme Court reversed course — concluding that the court must not allow form to dictate substance.

[I]t is the duty of courts and juries to look through the form for the substance of the invention—for that which entitled the inventor to his patent, and which the patent was designed to secure; where that is found, there is an infringement; and it is not a defence, that it is embodied in a form not described, and in terms claimed by the patentee. . . .

The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.

In the end, however, I see this case largely about claim construction. The Supreme Court explained that a cone in Euclidean sense is impossible to construct except by imagination.

It may safely be assumed, that neither the patentee nor any other constructer has made, or will make, a car exactly circular. In practice, deviations from a true circle will always occur.

Thus, it is clear to the court that the “cone” limitation in the claim does not require an exact cone.  The court went on to interpret the meaning of the patent as covering a design

“so near to a true circle as substantially to embody the patentee’s mode of operation, and thereby attain the same kind of result as was reached by his invention. . . . It must be the same in kind, and effected by the employment of his mode of operation in substance.”

The court ordered that on remand the jury can consider infringement under this broader view of the patent.

Justice Curtis wrote the 5-4 majority opinion.

The dissent by Justice Campbell began with a suggestion that the substance of the invention is likely obvious (lack of invention).

The merit of the plaintiff seems to consist in the perfection of his design, and his clear statement of the scientific principle it contains. . . . There arises in my mind a strong if not insuperable objection to the admission of the claim, in the patent for ‘the conical form,’ or the form of the frustum of a cone,’ as an invention.

The dissent went on – assuming that the patent is valid — noted that it should be assumed that a patentee will draft claims in a way that reach “exactly the limits of his invention” and that it is improper for the court to “extend, by construction, the scope and operation of his patent, to embrace every form which in practice will yield a result substantially equal or approximate to his own.”

The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only?

The dissent went on to complain that the majority’s approach has little bound —

The claim of today is, that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints does this patent impose in this branch of mechanic art?

The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. Its principle and modes of operation must be explained; and the invention shall particularly ‘specify and point’ out what he claims as his invention. … Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexations demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress. In my judgment, the principles of legal interpretation, as well as the public interest, require, that this language of this statute shall have its full significance and import.

Id.

In Graver Tank, the Supreme Court identified Winans as the origin of the doctrine of equivalents.

The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of Winans v. Denmead, 15 How. 330, 14 L.Ed. 717, it has been consistently applied by this Court and the lower federal courts, and continues today ready and available for utilization when the proper circumstances for its application arise.

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950).

Still, when I read the case, I see claim construction. Notably, the question presented by the court is whether the word ‘cone’ is properly construed and the court answered that it is nearly a circle, and the purpose of the invention helps to understand the limit of that subjective limitation.

In our judgment, the only answer that can be given to these questions is, that it must be so near to a true circle as substantially to embody the patentee’s mode of operation, and thereby attain the same kind of result as was reached by his invention.

Id. The reason the court felt obliged to consider this construction is its conclusion that “construing the letters-patent” “is a question of law, to be determined by the court.”  The dissent seemed to similarly agree that the focus is about claim construction — arguing that the majority’s “construction” is too broad.

= = = (more…)

@IPWatchdog!!!

2000: When I started law school, I remember finding @IPWatchDog (I’m sure it was via @askjeevesdotcom ). Great insight and explanation of the law. Thanks Gene, and Congratulations on 20 years! pic.twitter.com/VFXmpbmT5x

— Dennis Crouch (@patentlyo) October 10, 2019

Congratulations on 20 years

by Dennis Crouch

B.E. Tech, LLC v. Facebook, Inc. (Fed. Cir. 2019)

In 2012 B.E. Sued Facebook for infringing the claims of its U.S. Patent 6,628,314. In 2013, the district court stayed the litigation pending inter partes review.  The IPR proceedings ended in 2015 with a finding that the claims were unpatentable and the Federal Circuit affirmed that decision on appeal in 2016.

Back at the district court, Facebook requested judgment on the pleadings in its favor and with prejudice while B.E. argued that the case should be dismissed for as moot rather than decided on the merits. The district court agreed with the patentee — once the claims were cancelled the lawsuit was moot and had to be dismissed for lack of jurisdiction.

Costs to Prevailing Party: Under the Rules of Civil Procedure, “costs” are generally awarded to the prevailing party.

 Unless a federal statute, these rules, or a court order provides otherwise, costs—other than attorney’s fees—should be allowed to the prevailing party.

Fed. R. Civ. P. 54(d)(1).  The district court awarded $4,424 in costs to Facebook as the prevailing party.

On appeal B.E. argued that there is no prevailing party when a case is dismissed as moot. The Federal Circuit has rejected that argument:

We agree with Facebook that it is the prevailing party.

Here, it is clear that FB “rebuffed” the patentee’s claims and effectively prevailed in the lawsuit.  However, the patentee has an important Supreme Court case on its side:  Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598 (2001).   In Buckhannon, the Supreme Court explained:

Numerous federal statutes allow courts to award attorney’s fees and costs to the “prevailing party.” The question presented here is whether this term includes a party that has failed to secure a judgment on the merits or a court-ordered consent decree, but has nonetheless achieved the desired result because the lawsuit brought about a voluntary change in the defendant’s conduct. We hold that it does not. . . . [Rather, a] “prevailing party” is one who has been awarded some relief by a court.

Although Buckhannon strongly favor’s the patentee in this case, it is not the only Supreme Court case on the topic — and conflicts fairly directly with the Supreme Court’s later decision in CRST Van Expedited, Inc. v. E.E.O.C., 136 S. Ct. 1642 (2016).  In CRST, the plaintiff’s employment discrimination case was dismissed because the plaintiff (EEOC) had failed to meet presuit obligations of fully investigating claims and attempting to resolve the claims.  In its decision, the Supreme Court held that the defendant could be deemed a “prevailing party” since the defendant “fulfilled its primary objective” of rebuffing the plaintiff’s case. A “defendant may prevail even if the court’s final judgment rejects the plaintiff’s claim for a nonmerits reason.”

Here, the Federal Circuit extended CRST — holding that Facebook is clearly the prevailing party here even though the case was dismissal for mootness:

As the district court held, Facebook obtained the outcome it sought via the mootness dismissal; it rebuffed B.E.’s attempt to alter the parties’ legal relationship in an infringement suit. This is true even though the mootness decision was made possible by a winning a battle on the merits before the PTO.

Here, the Federal Circuit does not appear to be holding that there will always be a prevailing party when a case is dismissed as moot.  Rather, B.E. v. Facebook is a special case involving the parallel inter partes review proceedings.  What the court recognized effectively is that IPR proceedings are now part and parcel of the infringement litigation process and should be treated as such.  This is one further step toward attuning the system so that the various tribunals are all playing by the same rules.