We have moved to a somewhat steady state of 7%, with the bulk of these being US originated applications. That figure may further drop because the $300 publication fee has now been eliminated.
We have moved to a somewhat steady state of 7%, with the bulk of these being US originated applications. That figure may further drop because the $300 publication fee has now been eliminated.
By Dennis Crouch
50-years on, we still don't have the answer as to whether computer programs are patentable.
The Supreme Court has granted a writ of certiorari in the software patent case of ALICE CORPORATION PTY. LTD. V. CLS BANK INTERNATIONAL, ET AL., Docket No. 13-298 (Supreme Court 2013). The Australian patent holder Alice Corp presented the following question:
Issue: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
In a highly fractured en banc decision, the Federal Circuit determined that Alice Corp's claims lacked eligibility. Because none of the opinions in the decision carried a majority, the result was that the Federal Circuit only added confusion to the area.
Alice Corp's Patent No. 7,725,375 covers software for managing the risk associated with an online transaction essentially by using an electronic escrow service. Claim 26 recites how the system would work:
26. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a communications controller,
a first party device, coupled to said communications controller,
a data storage unit having stored therein (a) information about a first account for a first party, independent from a second account maintained by a first exchange institution, and (b) information about a third account for a second party, independent from a fourth account maintained by a second exchange institution; and
a computer, coupled to said data storage unit and said communications controller, that is configured to (a) receive a transaction from said first party device via said communications controller; (b) electronically adjust said first account and said third account in order to effect an exchange obligation arising from said transaction between said first party and said second party after ensuring that said first party and/or said second party have adequate value in said first account and/or said third account, respectively; and (c) generate an instruction to said first exchange institution and/or said second exchange institution to adjust said second account and/or said fourth account in accordance with the adjustment of said first account and/or said third account, wherein said instruction being an irrevocable, time invariant obligation placed on said first exchange institution and/or said second exchange institution.
The patent also claims "a computer program" for accomplishing the same result.
by Dennis Crouch
Downstream users have been increasingly subject to patent infringement lawsuits even when the product manufacturer would seemingly have been a more natural and focused target. Many assign nefarious intent to these downstream user lawsuits, but it turns out there is a good faith economic reason why the lawsuits make sense for a patentee. The basic insight here is that lawsuits against parties further downstream in the market chain allow the patentee to capture a portion of the economic consumer surplus that is not available at manufacturer-level lawsuits.
A U.S. patent provides its owner with the right to exclude others from making, using, selling offering-to-sell, importing or exporting the patented invention. 35 U.S.C. § 271. The statute is broad enough to allow a patentee to target any point along the supply chain.* However, the rules on exhaustion and multiple recovery prevent a patentee from collecting duplicative royalties at from different points along the supply chain.
In a market economy, consumers typically purchase goods when the prices of those goods are less than what the consumers are willing to pay. Consumer surplus is defined as the difference between that highest price that they would be willing to pay and the price that they actually did pay. Because of pricing difficulties for producers and market competition, almost all goods and services are associated with some consumer surplus. This consumer surplus is a spillover benefit that simply cannot be fully captured by the manufacturer. Each step along a supply chain also typically involves consumer surplus, with the result being that the end-user places a substantially higher value on the good than did the original manufacturer.
This notion of consumer surplus ties back into the patent laws at the point of collecting damages. Under the patent laws, a patentee is due at least "a reasonable royalty for the use made of the invention by the infringer." And, because downstream users place a higher value on the goods than do upstream manufacturers and distributers, it makes sense that the reasonable royalty award will also be relatively higher.
A typical patent scenario might involve a software developer who made check-processing software that was then sold through a vender to banks around the country. The developer, vender, and banks are all potentially liable for infringement and the patentee wanting to enforce its patent would then need to choose whom to sue for infringement. Here, the banks likely paid the vender significantly less than the actual value they receive from using the software. Similarly, a successful vender would have paid the software developer significantly less than the resale price. These differences in valuation offer fuel for the 'hypothetical negotiation' that serves as the fundamental basis for reasonable royalty damages. Simply stated, a party who values the invention more would tend to pay more for use of the invention.
A difficulty with customer-lawsuits is the large number of lawsuits and negotiations. Rather than dealing with a single manufacturer that may result in a single large payout, the patentee is working through dozens or even hundreds or thousands of customers who each pay their bit. In addition, patentees whose preference is to stop infringing use rather than collect royalties will likely prefer to cut focus on the manufacturer level as a better chokepoint.
Now, taking a step back toward reality: It is unlikely that these differences in valuation are driving the current preference for customer lawsuits. Rather, the settlement value of most of the customer lawsuits are driven by the cost-of-defense rather than the merits of the patent at issue or its value to the user. This means that my reasonable royalty calculation from above, even if mathematically correct, is largely irrelevant in the current climate. I should note that there are at least several legitimate criticisms to my analysis and underlying assumptions above, but I'll save those for a later post.
= = = = =
* With method-of-use claims, the end users end users are the only likely direct infringers, but even there, the suppliers may be liable for inducement or contributory infringement. (Recent cases tightening the mens rea requirement limit this somewhat).
By Dennis Crouch
With the passage of the Goodlatte Innovation Act (H.R. 3309), attention now moves to the Senate to consider a a roughly parallel bill. Several amendments passed during today's debate and we'll address those in a later post.
In the Senate, Senators Leahy (D-VT), Lee (R-UT), Whitehouse (D-RI), and Klobuchar (D-MN) have proposed the Patent Transparency and Improvements Act of 2013 (S. 1720). In a prior essay, I called the Leahy-Lee proposal "more measured and limited" than the Goodlatte bill and "much more narrowly focused on egregious patent enforcement abuses."
One important element coming through this process is a clear lack of leadership from the PTO. Although former director David Kappos testified against the Goodlatte proposal, his golden air of credibility and executive authority has shifted since joining the Cravath firm. The PTO has been without a Senate-approved director February 1, 2013 and any new (yet unnamed) PTO director is weeks or months away.
By Dennis Crouch
Although the parties are ostensibly focused on whether WARF's "replicating in vitro cell culture of human embryonic stem cells" constitutes patentable subject matter, the Federal Circuit is instead directing its attention to the issue of whether the patent challenger – Consumer Watchdog – has standing to file its patent appeal.
Consumer Watchdog v. Wisconsin Alumni Research Foundation (WARF) (Fed. Cir. 2013)
The Patent Act allows any party to file a post-grant administrative challenge and, if "dissatisfied" the results of the change, to appeal an adverse PTO ruling. Despite the statutory promise of appeal-rights, in Part I, I raised a concern as to whether a third-party challenger who loses at the PTO would necessarily have Article III standing. Within days, of that posting, the Federal Circuit ordered that Consumer Watchdog and WARF brief the issue of whether Consumer Watchdog has standing under Article III.
In Monday's oral arguments, the court focused entirely on the issue of standing and would hear no arguments regarding the substantive appeal. Dan Ravicher (for Consumer Watchdog) and Kara Stoll (for WARF) both handled themselves very well, but Ravicher noted that the PTO should be at the table since Consumer Watchdog's complaint is with the PTO for wrongfully issuing the patent and then wrongfully confirming patentability in the reexamination. Chief Judge Rader, Judge Prost and newly enrobed Judge Hughes participated fully in the questioning, although each of indicated some difficulty buying into Ravicher's argument that Congress created a potential injury-in-fact with its "dissatisfied" language and that the injury was realized when the PTO rejected Watchdog's case.
However, following Ravicher's suggestion, the Court has now requested that "the United States Patent and Trademark Office and the United States" provide briefs in the case and particularly brief "whether Consumer Watchdog has standing to pursue its appeal to this court." Recognizing the recent tension in briefing between the USPTO and the DOJ, the court wrote that "The PTO and the United States may submit a joint brief, if they so choose."
Although the court does not explicitly welcome other amicus briefs, I am confident that several will be forthcoming. Briefs are due January 6, 2014.
The following list comes from a search of 264 patent-related opinions by the Federal Circuit issued this year. The following are the most frequently cited cases found therein:
At some point this term, the Federal Circuit will decide Lighting Ballast Control v. Philips Electronics and that decision is expected to serve as a replacement for Cybor.
The USPTO has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) program that basically gives examiners credit for considering responses filed after a final rejection.
To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. . . . If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.
The program was scheduled to end on December 14, 2013, but has been extended until September 30, 2014.
While design patents for generated images are commonly portrayed as the newest thing in design patent law, they've actually been around for some time. The USPTO implemented a relevant set of guidelines almost 20 years ago, and today well over 3500 design patents on generated images have been granted.
Nevertheless, scholars have paid relatively little attention to many of the core legal questions these design patents present, and no one has systematically studied how the PTO examines applications that claim these designs. In our recent article, Virtual Designs*, available here, we attempt to fill this vacuum. We analyze the core questions of design patent doctrine, and we provide the first rigorous empirical look at patenting in this sector.
Among the findings are three key points:
Virtual designs are akin to surface treatments. While some design patents protect the shapes of articles of manufacture, others protect surface treatments for articles of manufacture (wallpaper patterns, textile prints, etc.). Surface treatments are eligible subject matter, and always have been, starting with the first design patent provisions in 1842.
Like other surface treatments, virtual designs (e.g., icons on a phone GUI) are eligible subject matter independent of the appearance of the associated article of manufacture (e.g., the phone).This is not a terribly exotic legal proposition. It's merely a manifestation of the concept thata protectable design may reside in some part of the article; it need not extend to the entirety of the article. Standard design patent claiming practice permits applicants to implement this concept by rendering the unclaimed portions of the article in broken lines.
While virtual designs may be transient, design patent law has previously dealt with this question, too. The CCPA reversed the PTO's rejection in In re Hruby, involving a design for a spray pattern for a water fountain. The design patent eligibility analysis should not turn on whether the design is too ephemeral, whether the subject matter is a water spray pattern or a virtual design.
We studied all available design patents granted for virtual designs and their prosecution histories. We adapted empirical techniques developed for studying utility patents, and extended the traditional proxies used by economists for measuring the quality and private value of utility patents.
Our analysis indicates that virtual designs are at least on par with design patents from other sectors when assessed by these traditional measures. And, if anything, an argument can be made that they might actually be more heavily scrutinized than others. They not only garner more rejections, but they also receive more prior art citations from examiners, and greater numbers of forward self-citations.
We expect that design patents for virtual designs will present some challenges for existing rules of design patent anticipation, obviousness, infringement, and remedies. Ultimately, we propose a series of guidelines that seek to account for the transferability of the design among different mediums, and for the need to provide adequate public notice and room to engage in non-traditional, expressive uses of designs.
* We use virtual designs as a generic term that covers everything from GUIs to isolated icons and arrows grouped in classes D14/485 to 495 by the USPTO.
** Read the full article here: http://ssrn.com/abstract=2265733.
Jury Orders Newegg To Pay $2.3 Million To TQP Development
No Patent Trolls in Nebraska!
Teaching Fellow for Stanford Law School LLM Program in Law, Science and Technology
Candidates for this position are expected to have strong academic records and references. Professional experience in the area is also valuable. This position is intended primarily for people who expect to pursue an academic career in a field that is reasonably related to the specialization and who hold a JD, JSD or LLM from a U.S. law school. Applicants are expected to commit to this position in one year increments, starting in August 2014, with a two-year commitment preferred.
Those interested should apply by letter, summarizing their complete educational qualifications and experience, as well as any other information that might help us in making selections. Each applicant should also send us an official law school transcript, a resume, copies of any publications, and three letters of recommendation (at least two from law professors) commenting on the applicant's suitability for the position in terms of teaching ability, analytic capability, interpersonal skills, and writing ability.
Apply by January 15, 2014! Your application package should be sent to: firstname.lastname@example.org
The Academy applies for 18 CLE credits in each state where seminars are held. [Link]
By Dennis Crouch
Consumer Watchdog v. Wisconsin Alumni Research Foundation (WARF) (Fed. Cir. 2013)
A major limitation on judicial power comes from the doctrine of standing. A U.S. court has no power to hear a dispute between parties unless the plaintiff has or imminently will suffer injury-in-fact caused by the challenged action of the defendant that is redressable by a favorable court decision. This limitation has been derived from Article III of the U.S. Constitution that states "The Judicial Power shall extend to all Cases . . .[and] to Controversies . . ." To be clear, this limitation on power is placed on Article III courts at the district, appellate, and supreme court level. However, the limitation has not been applied to adjudicative processes that take place within administrative agencies since the government's authority to perform those activities is not seated in Article III. The conflicting approach to standing between these two adjudicative regimes regularly comes into conflict when parties appeal adverse agency decisions to an Article III court. The general rule for resolving this conflict is Constitutional supremacy – i.e., an Article III court cannot hear a case unless the standing requirement is met.
In the patent world, this issue is most focused in the area of post-issuance administrative patent challenges, particularly including inter partes review, post-grant review, covered-business-method review, and inter partes reexamination. In those regimes, any third party can administratively challenge a patent. Under the statute, the third-party then has a right to appeal an adverse decision to the Court of Appeals for the Federal Circuit. One question on appeal in the Consumer Watchdog case is whether there is standing for the appeal. Here, Consumer Watchdog is a public interest group that has not claimed any direct impact due to the WARF stem-cell patent, but certainly had standing to file its inter partes reexamination. I discussed this issue in some detail here:
The parties have now briefed the issue of standing and the court holds oral arguments on Monday, December 2.
Consumer Watchdog's brief does a nice job of drawing a parallel between the post-issuance challenges and Freedom-of-Information-Act (FOIA) requests. In each case, the relevant statute has no standing requirement but authorizes appeal to Federal Courts.
The Supreme Court has described FOIA as a "judicially enforceable public right" (EPA v. Mink, 410 U.S. 73, 80 (1973)) and made clear that no injury is required of a person who seeks to enforce that right. NLRB v. Robbins Tire & Rubber Co., 437 U.S. 214, 221 (1978).
The essential idea here that the statute goes a long way toward creating standing by (1) creating a right to petition and then (2) granting a right to appeal to unsuccessful petitioners. And then, the injury-in-fact or "concrete injury" is completed at least when the PTO finds against the petitioner. At that point, the only party with a right of appeal is the petitioner. This particularization before getting to court helps to distinguish the present case from the leading Supreme Court case of Lujan where a statute provided that "any person" could file suit in federal court.
Idea of a patent challenge as a "judicially enforceable public right" also has precedential support. See Lear v. Adkins, 395 U.S. 653 (1969)
Consumer Watchdog also makes an important point here, that the PTO should be a party to the appeal and that the Federal Circuit should at least invite briefing from the US Government on the issue of standing.
For its part WARF relies heavily on Lujan:
To satisfy Article III standing, Watchdog, a nonprofit taxpayer and consumer-rights organization, must establish an injury in fact—i.e., an actual and imminent, concrete and particularized invasion of a legally protected interest—caused by WARF. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992). But Watchdog does not and has not claimed to make, use, or sell the patented invention; has not and could not be threatened with suit; and has not named another real party in interest, either in this appeal or before the PTO. Watchdog therefore cannot establish standing, and Watchdog's appeal should be dismissed.
The result then is that WARF here is inherently arguing that the statute providing for a right to appeal is unconstitutionally broad. The question then is the extent that this crumbles the regime even further. [Updated to clarify that WARF does not explicitly argue the statute is unconstitutional.]
By Dennis Crouch
A group of sixty US intellectual property law professors have signed a letter to Congress supporting anti-troll patent reform legislation. This effort was driven by Professor Love of Santa Clara and is also signed by Professors Bessen, Goldman, Ghosh, Lemley, Meurer, Samuelson, Sprigman, and others. [Download ProfessorsLetterOnTrolls].
A key introductory line from the letter:
Despite our differences, we all share concern that an increasing number of patent owners are taking advantage of weaknesses in the system to exploit their rights in ways that on net deter, rather than encourage, the development of new technology.
The basic argument is that patent litigation is expensive and frontloaded in such a way that "creates an opportunity for abuse" because early-state settlement is focused more on the cost of litigation rather than the value of the patent or its underlying technology. And, it is the recent "rise of patent assertion entities" that has "disrupted [the] delicate balance" of the patent system.
The professors propose the following six general reforms:
Without a doubt, there is merit to the professors' case, although I bristle at the letter's broad-brush statements and overt stance that is pro-large-corporate-entity. I have a few thoughts regarding the specific suggestions:
(1): Anti-plaintiff fee shifting will have the obvious impact of altering the availability of contingency-fee counsel which may be the motivation of the suggestion. One problem is that almost every patent in litigation is amenable to a good-faith challenge on either invalidity or non-infringement grounds. Predicting winners and losers is a difficult prospect and this gives me little faith that the fee-shifting proposal will primarily target low-quality claims but instead will target risk-averse plaintiffs. The professors' suggestion here to reward non-settlement does not provide me with any confidence that overall litigation costs will be reduced. On the other hand, this proposal (especially if focused on invalidating patents) could serve as something like a bounty for attorneys to challenge bad patents and, as a consequence, would lessen the free-rider problem associated with a single company challenging a patent that is also being asserted against competitors.
(2) & (4): I agree that there is plenty room for reducing discovery costs and for raising pleading requirements without substantially harming patentee rights. However, one problem for both software and method patents is that some forms of infringement are difficult to truly pin-down absent discovery. Some work must be done on any particular proposals to ensure that the result is not a clear pathway unactionable infringement.
(3) Regarding customer lawsuits, we have a difficulty in line drawing because, for the most part, these are not simply customer lawsuits. Rather, the patents being asserted cover particular methods or systems that take advantage of a particular device on-the-market (such as a wireless router or flat-panel television). In this situation, the differences are such that the manufacturer and retailer typically refuse to honor their implied warrantee that the good is "free of the rightful claim … of infringement or the like." UCC 2-312(3). And so, the question is whether these use cases will fit within the definition. One reason for the downstream lawsuits is that downstreamers typically value the technology more than upstreamers with the result of greater damage award. (We know the downstreamers valued it more because they purchased it from the upstreamers). Since the exhaustion doctrine only allows a patentee to recoup at one point in the stream-of-commerce, it makes sense that they would focus on the highest valued user.
= = = = =
Text of the letter:
To Members of the United States Congress:
We, the undersigned, are 60 professors from 26 states and the District of Columbia who teach and write about intellectual property law and policy. We write to you today to express our support for ongoing efforts to pass patent reform legislation that, we believe, will improve our nation's patent system and accelerate the pace of innovation in our country.
As a group we hold a diversity of views on the ideal structure and scope of our nation's intellectual property laws. Despite our differences, we all share concern that an increasing number of patent owners are taking advantage of weaknesses in the system to exploit their rights in ways that on net deter, rather than encourage, the development of new technology.
Several trends, each unmistakable and well supported by empirical evidence, fuel our concern. First, the cost of defending against patent infringement allegations is high and rising. The American Intellectual Property Law Association estimates that the median cost of litigating a moderately-sized patent suit is now $2.6 million, an amount that has increased over 70% since 2001. These and other surveys suggest that the expense of defending even a low-stakes patent suit will generally exceed $600,000. Moreover, the bulk of these expenses are incurred during the discovery phase of litigation, before the party accused of infringement has an opportunity to test the merits of the claims made against it in front of a judge or jury.
The magnitude and front-loaded nature of patent litigation expenses creates an opportunity for abuse. Patent holders can file suit and quickly impose large discovery costs on their opponents regardless of the validity of their patent rights and the merits of their infringement allegations. Companies accused of infringement, thus, have a strong incentive to fold and settle patent suits early, even when they believe the claims against them are meritless.
Historically, this problem has largely been a self-correcting one. In suits between product-producing technology companies, the party accused of infringement can file a counterclaim and impose a roughly equal amount of discovery costs on the plaintiff. The costs, though high, are symmetrical and, as a result, tend to encourage technology companies to compete in the marketplace with their products and prices, rather than in the courtroom with their patents.
In recent years, however, a second trend – the rise of "patent assertion entities" (PAEs) – has disrupted this delicate balance, making the high cost of patent litigation even more problematic. PAEs are businesses that do not make or sell products, but rather specialize in enforcing patent rights. Because PAEs do not make or sell any products of their own, they cannot be countersued for infringement. As a result, PAEs can use the high cost of patent litigation to their advantage. They can sue, threaten to impose large discovery costs that overwhelmingly fall on the accused infringer, and thereby extract settlements from their targets that primarily reflect a desire to avoid the cost of fighting, rather than the chance and consequences of actually losing the suit.
To be sure, PAEs can in theory play a beneficial role in the market for innovation and some undoubtedly do. However, empirical evidence strongly suggests that many PAEs have a net negative impact on innovation. Technology companies – which, themselves, are innovators – spend tens of billions of dollars every year litigating and settling lawsuits filed by PAEs, funds that these tech companies might otherwise spend on additional research and design. Surveys also reveal that a large percentage of these suits settle for less than the cost of fighting, and multiple empirical studies conclude that PAEs lose about nine out of every ten times when their claims are actually adjudicated on their merits before a judge or jury.
The impact of these suits is made more troubling by the fact that PAE activity appears to be on the rise. Empirical studies suggest that at least 40%, and perhaps as high as 59% or more, of all companies sued for patent infringement in recent years were sued by PAEs. PAE suits were relatively rare more than a decade ago, and they remain relatively rare today elsewhere in the world.
More worrisome than these bare statistics is the fact that PAEs are increasingly targeting not large tech firms, but rather small business well outside the tech sector. Studies suggest that the majority of companies targeted by PAEs in recent years earn less than $10 million in annual revenue.
When PAEs target the numerous small companies downstream in the supply chain, rather than large technology manufacturers upstream, they benefit in two ways. First, for every product manufacturer, there may be dozens or hundreds of retailers who sell the product, and hundreds or thousands of customers who purchase and use the technology. Patent law allows patent owners to sue makers, sellers, or users. Suing sellers or users means more individual targets; some PAEs have sued hundreds of individual companies. And, more targets means more lawyers, more case filings, more discovery, and thus more litigation costs overall to induce a larger total settlement amount.
Second, compared to large manufacturers, small companies like retailers are less familiar with patent law, are less familiar with the accused technology, have smaller litigation budgets, and thus are more likely to settle instead of fight. In fact, many small businesses fear patent litigation to such an extent that they are willing to pay to settle vague infringement allegations made in lawyers' letters sent from unknown companies. Like spammers, some patent owners have indiscriminately sent thousands of demand letters to small businesses, with little or no intent of actually filing suit but instead with hopes that at least a few will pay to avoid the risk.
This egregious practice in particular, but also all abusive patent enforcement to some extent, thrives due to a lack of reliable information about patent rights. Brazen patent owners have been known to assert patents they actually do not own or, conversely, to go to great lengths to hide the fact that they actually do own patents being used in abusive ways. Some patent owners have also sought double recovery by accusing companies selling or using products made by manufacturers that already paid to license the asserted patent. Still others have threatened or initiated litigation without first disclosing any specific information about how, if at all, their targets arguably infringe the asserted patents.
In short, high litigation costs and a widespread lack of transparency in the patent system together make abusive patent enforcement a common occurrence both in and outside the technology sector. As a result, billions of dollars that might otherwise be used to hire and retain employees, to improve existing products, and to launch new products are, instead, diverted to socially wasteful litigation.
Accordingly, we believe that the U.S. patent system would benefit from at least the following six reforms, which together will help reduce the cost of patent litigation and expose abusive practices without degrading inventors' ability to protect genuine, valuable innovations:
And finally, to increase transparency and confidence in the market for patent licensing, we recommend:
In closing, we also wish to stress that as scholars and researchers we have no direct financial stake in the outcome of legislative efforts to reform our patent laws. We do not write on behalf of any specific industry or trade association. Rather, we are motivated solely by our own convictions informed by years of study and research that the above proposals will on net advance the best interests of our country as a whole. We urge you to enact them.
John R. Allison (Texas); Clark D. Asay (Penn State); Jonathan Askin (Brooklyn); Gaia Bernstein (Seton Hall); James E. Bessen (BU); Jeremy W. Bock (Memphis); Annemarie Bridy (Idaho); Irene Calboli (Marquette); Michael A. Carrier (Rutgers); Bernard Chao (Denver); Andrew Chin (UNC); Ralph D. Clifford (UMass); Jorge L. Contreras (American); Rebecca Curtin (Suffolk); Samuel F. Ernst (Chapman); Robin Feldman (Hastings); William T. Gallagher (Golden Gate); Jon M. Garon (Northern Kentucky); Shubha Ghosh (Wisconsin); Eric Goldman (Santa Clara); Leah Chan Grinvald (Suffolk); Debora J. Halbert (Hawaii); Bronwyn H. Hall (Berkeley); Yaniv Heled (Georgia State); Christian Helmers (Santa Clara School of Business); Sapna Kumar (Houston); Mary LaFrance (UNLV); Peter Lee (Davis); Mark A. Lemley (Stanford); Yvette Joy Liebesman (SLU); Lee Ann W. Lockridge (LSU); Brian J. Love (Santa Clara); Glynn S. Lunney, Jr. (Tulane); Phil Malone (Stanford); Mark P. McKenna (Notre Dame); Michael J. Meurer (BU); Joseph Scott Miller (Georgia); Fiona M. Scott Morton (Yale); Lateef Mtima (Howard); Ira Steven Nathenson (St. Thomas); Laura Lee Norris (Santa Clara); Tyler T. Ochoa (Santa Clara); Sean A. Pager (Michigan State); Cheryl B. Preston (BYU); Jorge R. Roig (Charleston); Jacob H. Rooksby (Duquesne); Brian Rowe (Seattle); Matthew Sag (Loyola Chicago); Pamela Samuelson (Berkeley); Jason Schultz (NYU); Christopher B. Seaman (W&L); Carl Shapiro (Berkeley); Lea Shaver (Indiana); Jessica Silbey (Suffolk); Christopher Jon Sprigman (NYU); Madhavi Sunder (Davis); Toshiko Takenaka (Washington); Sarah Tran (SMU); Jennifer M. Urban (Berkeley); Samson Vermont (Charlotte)
In September 2013, USPTO Acting Director Teresa Stanek Rea gave notice that she would step down from the agency in the near future. She has now acted-on that notice and has left the agency. Rea has been Acting Director since January 2013 when David Kappos left to take at the NY Corporate firm of Cravath. Congratulations to Director Rea on her successful tenure that will largely be seen as working toward practical goals of implementing the first-to-file and post-issuance review provisions of the America Invents Act (AIA) in a time of budget cuts and Washington contention. Prior to joining the USPTO in 2011, Rea was a partner at Crowell & Morning.
Peggy Focarino, the commissioner of patents, has now stepped in with the duties of acting director. The PTO's closest link with the White House now is through its Chief of Staff Andrew Byrnes. Unfortunately, Mr. Byrnes has only been in the role since September 2013. Prior to that Byrnes was a litigator at Covington & Burling.
Under the patent statute, the USPTO Director "shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law." 35 U.S.C. § 3. The Deputy is then chosen by the Secretary of Commerce upon nomination by the PTO Director. The next director is expected to be a PTO outsider, but no names are forthcoming at this point.
In an email this morning, Hal Wegner distributed the above screen-shot with the caption: Whither Administration Leadership in Patents?
Joe Mullin is probably the country's leading out-of-the-beltway journalist who regularly covers patent law issues. He writes for ArsTechnica and tends to take favor defendants (accused infringers) in his stories, although not as much as his colleague Timothy B. Lee.
Mullin's recent story on the Newegg patent trial and Erich Spangenberg is a really interesting read.
By Dennis Crouch
Jake Lee v. Mike's Novelties (Fed. Cir. 2013)
Jake Lee's patent No. 6,419,936 is directed to a novelty pipe whose bowl looks like a revolver cylinder and is actually rotatable so that there is more than one chamber for holding "tobacco."
The accused device a knockoff version. In the infringement case, the jury awarded $40,000 in lost profits and the district court enhanced damages to $70,000 for willful infringement. The court also awarded $230,000 in attorney fees after finding an exceptional case.
On appeal, the Federal Circuit affirmed the infringement award but reversed on willfulness – finding that the defendant's non-infringement arguments were "not objectively unreasonable." Because the exceptional-case attorney fee award was partially based upon the finding of willful infringement (and also litigation misconduct), the court remanded for a determination as to whether the litigation misconduct alone was sufficient to warrant the exceptional case finding.
Technical experts testify in almost every patent case and explain to the jury how the accused product does (or does not) meet the limitations as construed by the court. In a low-value case such as this, an expert would have blown the budget wide open and so the patentee did not present expert testimony. On appeal, the Federal Circuit affirmed that expert testimony is not required to win a patent case – especially where the technology is "easily understandable" Quoting Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004).
Enhanced Damages: The text of the patent statute seemingly provides courts with broad discretion to award up-to treble damages. Under 35 U.S.C. § 284, "the court may increase the damages up to three times the amount found or assessed." Despite the seeming broad discretion offered by the statute, the Federal Circuit tightly controls enhanced damage awards and requires that any award be based upon "willful patent infringement." The willful component is further defined as requiring both (1) clear-and-convincing evidence that the infringer took steps to infringe the patent despite an objectively high likelihood that its actions constituted infringement of a valid patent and (2) that the accused infringer subjectively knew of the "objectively-defined risk" or should have known because the risk was so obvious. In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007). Further, this willfulness determination is not given to the discretion of the district court but instead reviewed de novo on appeal. Finally, a correct finding of willfulness permits the award of enhanced damages but does not require such an award.
In this case, the defendant had survived summary judgment based upon a "genuine issue of material fact" as to whether the accused turret met the weight limitation found in the claims. And, in oral arguments at the Federal Circuit, plaintiffs' counsel admitted that the defendants' argument was reasonable. One thing that is unclear from the case is when the defendant recognized its reasonable-but-wrong defense to infringement. Was there some time-period when the defendant continued to infringe prior to concocting its defense? And, would the infringement during that period constitute willful infringement?
Litigation Misconduct: The district court found several instances of litigation misconduct by the defendant and defendant's counsel, including bad-faith settlement offers, bad faith conduct during discovery, and unacted-upon threats to report Lee's counsel to state bar associations. However, the exceptional case award was based both on that misconduct and the willfulness finding. On remand, the district court will need to determine whether the misconduct alone is sufficient to make an exceptional case finding and award attorney fees. Depending upon the circumstances, the plaintiff in this case may do well to ask the district court to delay its determination until after the Supreme Court decides the two pending attorney-fee-award cases later this term.
By Dennis Crouch
In many ways, a patent infringement demand letter is akin to a debt collection action. And, we know that debt collection is highly regulated under both Federal and State consumer protection laws. The current mood in Congress and amongst the state attorneys general is that patent demand letters should also be regulated to control their negative impact on the marketplace. The particular focus is on patentees who threaten litigation against the users of off-the-shelf technology (such as WiFi technology or Flat-Panel Screens) with little or no due diligence or pre-threat investigations. In some cases, patentees are threating litigation with no intention of actually filing suit and are hoping to use the high cost of patent litigation to drive settlement value rather than the underlying value of the patented invention.
Senators Leahy and Lee have proposed the Patent Transparency and Improvements Act (PTIA) of 2013 (S. 1720) as a quite weak form of regulation that would only address the most egregious cases of threats that operate as an unfair competition.
Now, Representatives Jared Polis (D-Co) and Tom Marino (R-Pa) have proposed their own legislation that would have more teeth. See the Demand Letter Transparency Act of 2013 (H.R.3540). Download HR3540
H.R. 3540 includes a number of interesting features:
While the Leahy-Lee proposal is likely under-inclusive, H.R. 3540 is over-inclusive and would serve as a trap for unwary business leaders looking to license their company's technology. Two tweaks would bring focus: (1) only apply the demand letter requirements to instances where more than 20-demand letters have been sent-out; and (2) narrow the definition of demand letters so that some amount of written technology license negotiations can occur without raising the threat of abandonment (perhaps this could be done through some sort of safe-harbor).
Senators Leahy (D-VT), Lee (R-UT), and Whitehouse (D-RI) have proposed their own patent reform bill titled the Patent Transparency and Improvements Act (PTIA) of 2013 –this one much more narrowly focused on egregious patent enforcement abuses. As compared with the Goodlatte proposal, the Leahy-Lee proposal is much more measured and limited in its action. Democratic leaders on the House Judiciary Committee (Representatives Conyers and Watt) have announced their support of the Leahy-Lee approach over Goodlatte's that would include "far ranging changes to the litigation system, such as limits on pleadings and discovery, and intrusive mandates on the court system."
The Leahy-Lee PTIA includes a number of interesting provisions. Most of the provisions are replicas of those already proposed in other bills. One new provision here is a statement authorizing the FTC to act against unfair and deceptive practices associated with the sending of fraudulent or materially misleading demand letters in connection with the assertion of a patent. Although not stated, the new law would also be tangentially useful for both state attorneys general and for private class-action plaintiffs to seek compensation against egregious actions.
A key element of the proposal would be to require that any demand letters include a statement of (A) patent asserter's identity; (B) the patent being asserted; and (C) the reasons for the assertion.
Under the proposal, the new statute would state that:
It shall be an unfair or deceptive act … for a person, in connection with the assertion of a US patent, to engage in the widespread sending of written communications that state that the intended recipients or any affiliated persons are infringing or have infringed the patent and bear liability or owe compensation if –
(1) the communications falsely threaten that administrative or judicial relief will be sought if compensation is not paid or the infringement issue is not otherwise resolved;
(2) the assertions contained in the communications lack a reasonable basis in fact or law, including, for example, because—
(A) the person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipients or any affiliated persons; or
(B) the communications seek compensation on account of activities undertaken after the patent has expired; or
(3) the content of the written communications is likely to materially mislead a reasonable recipient, including, for example, because the content fails to include such facts reasonably necessary to inform the recipient of—
(A) the identity of the person asserting a right to license the patent to, or enforce the patent against, the intended recipient or any affiliated person;
(B) the patent issued by the USPTO alleged to have been infringed; and
(C) the reasons for the assertion that the patent may be or may have been infringed.
The Senators will readily admit that this statute is only directed toward the worst offenders and would not serve the goal of generally weakening the ability of a patent holder to assert its rights.
In addition to the bad faith demand letter rules, the proposal would also improving post-issuance review procedures to require that the PTO apply the same claim construction as used in court rather than the “broadest reasonable interpretation.” In my view, this change should be implemented across the board so that all interpretations made on the record at the PTO will have a direct and foreseeable impact on the scope actually given to claims during litigation. At the same time, the PTO should be able to maintain wide authority to object to claim terms that are indefinite or poorly defined.
By Jason Rantanen
The Ohio Willow Wood Company v. Alps South, LLC (Fed. Cir. 2013) Download 12-1642.Opinion.11-13-2013.1
Panel: Dyk, Bryson, and Reyna (author)
There are three main isues addressed in this opinion:
1) Collateral Estoppel based on similar claims in a different patent;
2) Obviousness involving the addition of numerical limitations in dependent claims; and
3) Inequitable conduct: reversal of SJ of no IC.
Background: The Ohio Willow Wood Company (OWW) asserted Patent No. 5,820,237 against Alps South. The '237 patent relates to directed to cushioning devices that go over the residual stumps of amputated limbs to make the use of prosthetics more comfortable. The district court granted summary judgment that OWW was collaterally estopped from challenging the invalidity of set of claims in the '237 patent, that the second set of asserted claims was invalid for obviousness, and that there was no inequitable conduct. OWW appealed the collateral estoppel and obviousness issues while Alps cross-appealed the inequitable conduct issue.
Collateral Estoppel: The collateral estoppel issue in this case is notable because it involves a separate (albeit related) patent. OWW sued Thermo-Ply, Inc. for infringement of Patent No. 7,291,182, which issued from a continuation of the '237 patent, in a separate proceeding. The court in that litigation held the claims of the '182 patent invalid for obviousness, a ruling that was affirmed on appeal. Based on this previous disposition, the district court in the OWW v. Alps litigation ruled that a set of claims from the '237 were invalid due to collateral estoppel.
The Federal Circuit affirmed, holding that collateral estoppel can apply across patents. "Our precedent does not limit collateral estoppel to patent claims that are identical. Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel should apply....If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies." Slip Op. at 11.
Here, the differences between the patent claims did not materially alter the question of invalidity:
As reflected in the claim language above, these patents use slightly different language to describe substantially the same invention. For example, where the ’237 patent recites a “tube sock-shaped covering,” an “amputation stump being a residual limb,” and “fabric in the shape of a tube sock,” the ’182 patent analogously recites the same claim scope in the form of a “cushion liner for enclosing an amputation stump, said liner comprising a fabric covering having an open end for introduction of said stump and a closed end opposite said open end.” Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.
Id. at 12.
Obviousness - Exercise of Ordinary Skill: OWW also challenged the district court's summary determination that a second set of claims was invalid for obviousness. The crux of OWW's argument was based on the addition of numerical limits on certain characteristics of the "gel composition" and "fabric" elements in dependent claims. The CAFC agreed with the district court that the addition of these numerical limits was nothing more than the exercise of ordinary skill in the art:
[N]othing in the record indicates that confining the otherwise obvious “gel composition” and “fabric” limitations to the recited numerical limits in the disputed dependent claims was anything other than the exercise of routine skill. Each of these features were well-known in the prior art and their use would have been predictable by one of ordinary skill in the art.
Slip Op. at 15. Nor did the analysis fo secondary indicia of non-obviousness change the outcome. OWW failed to show the requisite nexus between the secondary indicia and the patented invention (which in this case was specifically the claimed invention with the numerical limitations as distinguished from the invention minus the numerical limitations). Furthermore, "where a claimed invention represents no more than the predictable use of prior art elements according to established functions, as here, evidence of secondary indicia are frequently deemed inadequate to establish non-obviousness."
Inequitable Conduct: While the litigation was pending, Alps initiated two ex parte reexaminations of the '237 patent. Alps supported its second ex parte reexam request with the testimony of a Mr. Comtesse, who had been affiliated with the company that produced the prior art product that Alps relied upon. The examiner accepted this testimony as evidence that the prior art possessed certain characteristics, resulting in the rejection of all of the claims of the '237 patent.
In its appeal to the BPAI, OWW argued "that the examiner’s rejection was improper because it relied on the uncorroborated testimony of Mr. Comtesse, whom OWW characterized as a highly interested party." Slip Op. at 7. OWW denied the existence of any other evidence that would support the relevant testimonty of Comtesse. The BPAI subsequently reversed the examiner, finding that Comtesse was an interested third party and that his testimony was uncorroborated.
During the district court proceeding, Alps argued that there was contrary evidence that became known to OWW during the course of the litigation and should have disclosed to the PTO. Applying Therasense, however, the district court granted summary judgment in favor of OWW.
On appeal, the Federal Circuit reversed, finding that when viewing the evidence in a light most favorable to Alps, genuine issues of material fact remained. Here, the allegedly material information went to the issue of whether disclosure would have led the BPAI to credit Comtesse's testimony. The CAFC concluded that there was at least a genuine issue of fact. Furthermore, the CAFC concluded that viewing the facts in a light most favorable to Alps, OWW's (allegedly false and unfounded) assertions regarding the interested nature of Mr. Comtesse "would be tantamount to the filing of an unmistakably false affidavit."
By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law
Apple, Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. Nov. 18, 2013) (Apple III) Download 2013-1129
Panel: Prost (author), Bryson, O'Malley
As Dennis reported yesterday, Apple has scored another win at the Federal Circuit. Specifically, the Federal Circuit has vacated and remanded Judge Koh's denial of a permanent injunction with respect to Apple's utility patents.
But it wasn't a complete win. The Federal Circuit affirmed Judge Koh's denial of a permanent injunction with respect to Apple's design patents and product-design trade dress. This post will focus on the design-related portions of the Federal Circuit's decision.
Design patents: Last summer, the jury found Samsung liable for infringing three design patents—U.S. Patent Nos. D618,677 ("the D'677 patent"), D593,087 ("the D'087 patent") and D604,305 ("the D'305 patent").
The D'677 and D'087 patents claim partial designs for smartphone configurations. Here are representative drawings from each of them:
The D'305 patent claims a design for a graphical user interface. Here is one of the claimed embodiments:
(Although the D'305 patent was published in black-and-white, one of the drawings was submitted in—and therefore claims—color. The image shown above is from one of Apple's district court filings.)
Judge Koh denied Apple's request for a permanent injunction with respect to these design patents. In her order, Judge Koh concluded that Apple "simply [had] not established a sufficient causal nexus between infringement of its design patents and irreparable harm."
On appeal, Apple challenged that conclusion, pointing to: (1) evidence indicating "that design is important [to] consumer choice" in smartphones; and (2) "evidence of quotations from Samsung consumer surveys and from an industry review praising specific elements of both Apple's and Samsung's phone designs, including some elements of Apple's patented designs." According to Apple, this evidence was sufficient to establish a causal nexus.
The Federal Circuit did not exactly disagree. The court took some pains to point out that it "might not reverse the entry of an injunction based on [that] evidence." But, emphasizing the deferential standard of review, the Federal Circuit decided that Judge Koh had not abused her discretion in denying an injunction.
According to the Federal Circuit, Judge Koh "correctly noted . . . that evidence showing the importance of a general feature of the type covered by a patent is typically insufficient to establish a causal nexus." She "was also correct that isolated, anecdotal statements about single design elements do not establish that Apple's broader patented designs are drivers of consumer demand." Therefore, the Federal Circuit affirmed the denial of a permanent injunction with respect to the design patents.
Comment: This decision could make it more difficult for patent owners to get injunctions for partial designs—that is, when they assert design patents that claim portions (instead of all or most) of a product's design. The Federal Circuit specifically distinguished this case from Apple I, which involved a design patent that claimed the entire configuration of a tablet computer.
Trade dress: The jury also found that Samsung infringed Apple's unregistered iPhone 3G trade dress and registered iPhone trade dress (Reg. No. 3,470,983). Here is the illustration from the trade dress registration certificate:
Judge Koh denied Apple's motion for injunctive relief on its trade dress claims, based on "Samsung's cessation of its diluting conduct."
On appeal, the Federal Circuit looked to the controlling regional circuit law—in this case, the law of the Ninth Circuit. The Federal Circuit noted that, under Ninth Circuit precedent, "ongoing diluting behavior is not necessary to obtain an injunction." But, according to the Federal Circuit, that does not mean "that a court commits legal error if . . . it considers a defendant's voluntary cessation of diluting behavior as a reason to deny injunctive relief."
In this case, the undisputed evidence showed that Samsung stopped selling the offending products. And there was no evidence that it would sell them in the future. In light of that evidence, the Federal Circuit concluded that Judge Koh did not abuse her discretion in denying an injunction.
Comment: One particularly interesting issue raised by Judge Koh's order remains unresolved. In ruling on Apple's motion for a permanent injunction, Judge Koh concluded that Apple did not have to make a "showing of irreparable harm beyond the harm of dilution itself." She based this conclusion on the text of 15 U.S.C. § 1125(c)(1). The Federal Circuit did not reach this issue in Apple III. But it might not be able to avoid it for long. Many plaintiffs assert trade dress claims along with their design patent claims. And, as readers of this blog no doubt are aware, those cases are within the Federal Circuit's exclusive appellate jurisdiction. So the Federal Circuit will likely be confronted with this issue again—quite possibly before the regional circuits have a chance to weigh in.