Patently-O Law Blog
- I am enjoying Carl Oppedahl’s new blog here: http://blog.oppedahl.com/.
- Professors Chisum and Mueller are putting on their top patent law CLE: The Chisum Patent Accademy. This time in Cincinnati in March 2014: Chisum Patent Academy. If you care about your depth of knowledge in of patent law then this will be $2,000 well spent.
Job postings from the past week:
- GTT Group in Portland Oregon is looking for EE / Computer Science Patent Professionals
- Withrow & Terranova in Triangle Park North Carolina is looking for EE / Computer Science Patent Professionals
- PatentBar International in Boston is seeking patent law professionals with English-Russian language skills
- Hanley, Flight and Zimmerman of Chicago is seeking experienced patent attorneys for its growing practice
- Godfrey & Kahn of Milwaukee is looking for experienced EE/MechE patent attorneys
- Winstead PC of Dallas is looking for a variety of patent law professionals here and here
- Schwegman, Lundberg & Woessner, P.A. is looking for qualified patent attorneys across the country
- Hickman Palermo Truong Becker Bingham Wong LLP is seeking an associate attorney in the Silicon Valley area with experience in computer science related patent prosecution
- Rutan & Tucker has an employment opportunity available for a Patent Agent with a minimum 4 years patent prosecution experience and a background in electrical engineering
- Schaeffler, a global automotive and industrial supplier, is seeking a Patent Paralegal in Wooster, Ohio
By Dennis Crouch
In Lighting Ballast, the en banc Federal Circuit once again held that claim construction should be seen as a question of law that is reviewed de novo on appeal. In the end, this is probably a good result for the patent system – but not for any of the reasons given by the court.
Over the years, the high-rate of claim construction reversal has repeatedly been highlighted as a symbolic of problems with the patent system. Some thought that the problem lay in district court failures to conduct proper analyses, but over time, most of us have come to reject that explanation. Rather, my view is that claim construction is a difficult task and it is not surprising that, out of the myriad possible definitions that a term could be given, two courts would disagree on which definition is best. I actually see this issue pointing a spotlight toward a major problem with the patent system – perhaps the largest problem – that patents often fail to provide clear notice of what is and what is not covered by the various claims.
Deference would have only masked the problem. The reversal rate would have gone down and from that high level that traditional off-kilter signal would be missing. The real difference with deference would be that patent scope would be understood as of the district court decision rather than having to wait for an appeal. That may help some litigants, but still it is a fairly ridiculous patent system where the scope of claims are not well understood until determined by a judge.
Rather, the problem has to be addressed by the US Patent Office with a renewed focus on clarity of claim scope. President Obama’s administration has recognized this with their call to “ensure claims are clear and can be consistently enforced.” The rub is that the administration’s approach of (1) encouraging glossaries and (2) providing additional examiner training are unlikely to have any meaningful impact. The good thing then is that the Federal Circuit’s continued power means that these systemic problems won’t be buried.
By Dennis Crouch
Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. (Fed. Cir. 2014) (En banc)
In a long awaited decision, an en banc Federal Circuit has reconfirmed the longstanding rule that claim construction is an issue of law reviewed de novo on appeal.
Writing for the majority, Judge Newman summarizes:
For the reasons we shall discuss, we apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims. The totality of experience has confirmed that Cybor is an effective implementation of Markman II, and that the criteria for departure from stare decisis are not met.
Because of the importance of this issue and the divided court, Supreme Court review is fairly likely. The decision also guarantees that the Court will continue to be the central patent law authority.
The majority decision filed by Judge Newman was joined by five other judges (Judges Lourie, Dyk, Prost, Moore, and Taranto). Judge Lourie wrote a concurring opinion providing “additional reasons” for confirming Cybor. Judge O’Malley filed a dissenting opinion that was joined by Chief Judge Rader and Judges Reyna and Wallach. The six-member opinion carried the day as majority because Judges Hughes and Chen chose not to participate. Even then, a 6-6 tie would have confirmed Cybor but without any clear further precedent.
The majority opinion takes a Socratic approach of poking holes in every argument for changing the rule and in the end concluded that “deferential review does not promise either improved consistency or increased clarity.” And, without some clear reason to change, the default in law should be stare decisis – follow longstanding precedent that, in this case, involves hundreds of appellate claim construction decisions over the past 15 years creating a large body of precedent. The majority writes:
We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of claim construction. The proponents of overruling Cybor have not met the demanding standards of the doctrine of stare decisis. They have not shown that Cybor is inconsistent with any law or precedent, or that greater deference will produce any greater public or private benefit. We conclude that there is neither “grave necessity” nor “special justification” for departing from Cybor.
The court also walked through post-Cybor policymaking by Congress as well as Supreme Court decisions and found nothing that would undermine Cybor.
[W]e have reviewed the arguments for changing the Cybor procedure of de novo review of claim construction. First, we have looked for post- Cybor developments, whether from the Supreme Court, from Congress, or from this court, that may have undermined the reasoning of Cybor. None has been found, or brought to our attention. There has been no legislative adjustment of the Cybor procedure, despite extensive patent-related legislative activity during the entire period of Cybor‘s existence.
In the end, the Court did not address the particular facts of the case – whether the “voltage source means” should be interpreted under §112p6. The district court said no but the original appellate panel said yes (on de novo review). That appellate panel will carry the day here and the plaintiff loses because the specification did not disclose sufficient structural embodiments of the claimed voltage source means.
Guest post by Jeffrey A. Lefstin, Professor of Law, University of California, Hastings College of Law
As the Supreme Court prepares to take up Alice Corp. v. CLS Bank, a major question the Court may confront is to what extent an “inventive concept” is necessary for patent eligibility under § 101. In Mayo v. Prometheus, the Court suggested that “conventional and obvious” activity cannot transform a law of nature or abstract idea into a patent-eligible invention. The Court seemingly revived Parker v. Flook, which held that only “inventive applications” of abstract ideas are patent-eligible. But when the Federal Circuit heard CLS Bank, divided as the court was, both Judge Rader and Judge Lourie emphatically rejected the idea that Mayo demands “inventiveness” for patent-eligibility.
In both Flook and Mayo, the Supreme Court anchored the requirement for inventive application in Neilson v. Harford, the famous English case on James Neilson’s hot-blast smelting process. The Court in Flook and Mayo focused on this passage appearing in Baron Parke’s opinion for the Court of Exchequer:
We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this—by interposing a receptacle for heated air between the blowing apparatus and the furnace.
Flook took this language to mean that an underlying idea or discovery should be treated as part of the prior art; Mayo took it to mean that a claim is patent-eligible only if the application of a discovery or idea is inventive or unconventional.
However, a reading of the Exchequer’s full opinion tells the opposite story. Neilson’s patent was sustained because his application was entirely conventional and obvious. The defendant’s challenge in Neilson was primarily a scope of enablement argument: Neilson had disclosed that the blast should be heated before introducing it into the furnace, but disclosed next to nothing about the heating means. In refuting the defendant’s challenge, both the patentee and the judges of the Exchequer emphasized that the mode and apparatus for heating air were old and well known in the field, and represented no invention by Neilson.
So why did Baron Parke write that Neilson’s discovery – his ‘principle’ – should be regarded as “well known”? The court was wrestling with the question of whether Neilson had claimed a patentable manufacture, or the abstract principle that hot air was superior to cold. And if a manufacture, was Neilson entitled to reach the accused blast furnace, which employed a different heating apparatus? The Exchequer had faced the same questions seven years earlier in Minter v. Wells, involving a patent to an adjustable chair. The defendant in Minter had argued that the patentee was trying to claim a well-known principle of mechanics: the self-adjusting lever. Alternatively, if the claim was to the chair rather than the principle, the patent should be restricted to the inventor’s particular embodiment. Baron Parke concluded instead that the patentee had claimed the application of the self-adjusting leverage to an adjustable chair. Therefore, the patent was not drawn to an abstract principle, and might extend to other chairs embodying the same application but with a different arrangement.
Minter thereby established that a patent might claim the application of a well-known principle to new ends, and might extend beyond the exact machinery employed by the patentee. In the famous passage from Neilson, Parke was applying the same doctrine to Neilson’s patent – except that Neilson’s ‘principle’ was new rather than well-known. Neilson was a more difficult case because, given Neilson’s minimal disclosure, the scope of enablement was more dubious than in Minter. But a special jury verdict on that point ultimately carried the day for Neilson.
Neilson was only one of some twenty cases asserted by Neilson in England and Scotland. Other decisions following and interpreting Neilson leave no doubt that the case stood not for inventive application, but for the distinction between principles in the abstract and patentable applications. For example, in a case litigated the next year, Househill v. Neilson, the Court of Sessions stated:
The main merit, the most important part of the invention, may consist in the conception of the original idea—in the discovery of the principle in science, or of the law of nature, stated in the patent, and little or no pains may have been taken in working out the best manner and mode of the application of the principle to the purpose set forth in the patent.
Neilson was understood the same way in the Supreme Court’s landmark 19th-century opinions that discussed Neilson extensively, such as Le Roy, Morse, and Tilghman. Further, in late 19th-century and early 20th-century American cases and treatises, it was black-letter law that while abstract principles and discoveries could not be patented, a practical application was patent-eligible without the need for inventive application – subject to certain exclusions such as the ‘mental steps’ rule.
As I wrote about last year, the actual origin of the inventive application test was Justice Douglas’s opinion in Funk Brothers, in 1948. The dubious history of the inventive application test in the wake of Funk suggests we would have been better served by following Justice Frankfurter instead of Justice Douglas. For it was Frankfurter’s concurrence that embraced the spirit of Neilson and the historical tradition: the claims to bacterial compositions in Funk were unpatentable not because they added or changed little relative to a law of nature or natural phenomenon, but because the patentee was claiming the idea of compatible strains instead of his practical application.
I write about the hot-blast cases, and the history of the inventive application test, in an article available here.
Spring is the time for IP law conferences…and fortunately, spring is almost here. (I’m trying to be willfully blind to forecasters’ projections that it’s going to be -5 here in Iowa in a few days). Two conferences coming up next week:
Summit on Law in the Global Marketplace:
On Monday, February 24, the University of California Hastings College of the Law, the Berkeley Center for Law and Technology, and Hogan Lovells are hosting a one-day summit on Law in the Global Marketplace: Intellectual Property and Related Issues at UC Hastings. Speakers include Judge Rader, the Hon. Sung-Mei Hsiung, High Court Judge, Taiwan Intellectual Property Court, and Mark Jackson, Senior Patent Counsel for Genentech. Details are available here: [Law and the Global Marketplace Registration]
(I’m told that the event is currently sold-out, but they’re keeping a waitlist. Folks interested in the program can contact Chris Mammen at firstname.lastname@example.org for more details.).
Northwestern Journal of Technology & Intellectual Property Symposium 2014
Next Thursday and Friday, the Northwestern Journal of Technology & Intellectual Property is hosting its annual symposium. They have a great lineup of speakers, including F. Scott Kieff of the International Trade Commission, Michael Friedman of Ocean Tomo, Kevin Noonan of MBHB (and one of the coauthors of PatentDocs, Jane Ginsburg of Columbia Law School, and many others. The Friday program will provide 3.75 CLE credits. More information is available here: http://scholarlycommons.law.northwestern.edu/njtip_symposium/SCHEDULE/Schedule_2014/
By Dennis Crouch
1. Joe (the inventor / patent applicant) knows that Mathilda (a third party) has information material to the question of patentability of his pending patent application. However, Joe does not have the underlying material information. Is Joe under a duty to disclose Mathilda’s identity?
2. Competitor sends Joe a package of prior art and an explanation of why the prior art renders Joe’s pending application unpatentable. What are joe’s disclosure duties here?
By Dennis Crouch
The following is the White House meme on its progress to fight “Patent Trolls” and “Abusive Litigation Tactics.”
THE WHITE HOUSE
Office of the Press Secretary
FOR IMMEDIATE RELEASE
February 20, 2014
Year of Action: Making Progress Through Executive Action
In his State of the Union address, President Obama set an ambitious agenda to make 2014 a year of action. As part of that commitment, and recognizing that innovation is the lifeblood of our economy, the Administration today is announcing major progress on a series of initiatives designed to combat patent trolls and further strengthen our patent system and foster innovation; issuing new executive actions to build on these efforts; and renewing its call on Congress to finish the job by passing common-sense patent reform legislation.
Since last June, when the White House pledged to protect innovators from frivolous litigation, the Administration has been working to implement a series of executive actions to improve the U.S. patent system. Today the White House is announcing delivery on these commitments:
Promoting Transparency — The United States Patent and Trademark Office (USPTO) recently published a draft rule to ensure patent owners accurately record and regularly update ownership information when they are involved in proceedings before the USPTO. This effort is aimed at improving the quality of patents issued, enhancing competition, facilitating technology transfer, and making it harder to hide abusive litigation tactics behind shell companies. After receiving input from the public, the USPTO aims to issue a final rule in the coming months.
Making Patents Clear — The USPTO has developed and implemented a training program to help its examiners rigorously examine so-called “functional claims” to ensure claims are clear and can be consistently enforced. In the coming weeks, the USPTO will launch a pilot program that uses glossaries in patent specifications to promote patent clarity.
Protecting Main Street from Abuse — To help ensure consumers and main-street retailers know their rights before entering into costly litigation or settlements, the USPTO is today launching an online toolkit aimed at empowering consumers with answers to common questions, information about patent suits, and details about specific patents. The toolkit will include information and links to services and websites that can help consumers understand the risks and benefits of litigation or settlement, and pick their best course of action.
Expanding Outreach & Focused Study — Today, the USPTO is announcing the expansion of its Edison Scholars Program, which brings distinguished academic experts to the USPTO to develop and make available to the public more robust data and research on issues bearing on abusive litigation. USPTO will also continue to expand its engagement with stakeholders—including patent holders, researchers, advocates, and others—and build on the successful roundtables the agency hosted across the country over the past year on high-tech patent issues.
Strengthening Exclusion Order Enforcement — To make the enforcement of exclusion orders issued by the International Trade Commission more transparent, effective, and efficient, the Office of the U.S. Intellectual Property Enforcement Coordinator launched an interagency review and will, in the coming months, deliver its recommendations on refining that process.
Innovation For Global Development — In addition, today, the Administration is committing to sustain, going forward, the Patents for Humanity Program, which creates business incentives for using patented technology to address global humanitarian needs.
Today, the White House is also announcing three new executive actions to encourage innovation and further strengthen the quality and accessibility of the patent system:
Crowdsourcing Prior Art — To help ensure that U.S. patents are of the highest quality, the USPTO is announcing a new initiative focused on expanding ways for companies, experts, and the general public to help patent examiners, holders, and applicants find relevant “prior art”—that is, the technical information patent examiners need to make a determination of whether an invention is truly novel.
More Robust Technical Training — The USPTO is expanding its Patent Examiner Technical Training Program to help patent examiners keep up with fast-changing technological fields by making it easier for technologists, engineers, and other experts to provide relevant technical training and guidance to patent examiners. To make the most of these changes, the Administration is calling on innovators to volunteer their time and expertise to help ensure that USPTO training is robust and reflects the state of the art.
Pro Bono and Pro Se Assistance — To increase the accessibility of the patent system, the USPTO will dedicate educational and practical resources to assist inventors who lack legal representation, appoint a full-time Pro Bono Coordinator, and help expand the existing America Invents Act pro bono program to cover all 50 states. The Administration is calling on members of the patent bar to participate in the program.
Renewing the Call for Meaningful Legislation to Combat Patent Trolls: In his State of the Union address President Obama renewed his call for Congress to pass patent reform legislation, which enjoys strong bipartisan support. The Administration looks forward to continuing to work with Congress to deliver focused and effective patent reform legislation to the American people in the coming months.
Year of Action: Making Progress Through Executive Action
Further Detail on Answering the President’s Call to
Improve our Patent System and Foster Innovation, not Litigation
A strong intellectual property system supports and enables the innovation that is the lifeblood of our economy. Our patent system is enshrined in our Constitution to encourage invention and to reward Americans for their hard work and risk-taking. But in recent years, that system has also seen the growth of abusive patent litigation designed not to reward innovation but to threaten inventors and companies based on questionable claims. That’s why President Obama has made it a priority to reform that system to ensure it encourages innovation and invention and provides the right incentives to drive investment, inspire and reward creativity, and spur job creation.
In 2011, the President signed the Leahy-Smith America Invents Act (AIA), a landmark piece of legislation designed to help make our patent system more efficient and responsive to innovators. The United States Patent and Trademark Office (USPTO) has now successfully implemented that law, enabling many reforms that are leading to higher patent quality, including post-grant patent review proceedings at the USPTO that offer faster and less expensive alternatives to litigation in Federal courts. Yet many innovators have continued to face challenges by patent-assertion entities or patent “trolls”– entities that have, over the past decade, increasingly used patents to extract settlements based on the high cost of defense.
Building upon the strong foundation of AIA reforms, on February 14, 2013, President Obama stated that “our efforts at patent reform only went about halfway to where we need to go. What we need to do is pull together additional stakeholders and see if we can build some additional consensus on smarter patent laws.”
On June 4, 2013, the White House set forth a series of executive actions and legislative recommendations designed to protect innovators from frivolous litigation and ensure high-quality patents.
During his State of the Union address in January 2014, the President renewed his called for passage of a patent reform bill that would allow businesses to stay focused on innovation, not litigation. To complement this legislative effort, today the White House is highlighting progress to date on the previously announced executive actions, and is announcing three new actions to further respond to the President’s call-to-action to level the playing field for all innovators and increase patent quality.
Progress on the June 2013 Executive Actions
1. Transparency in Patent Ownership. Patent trolls often set up shell companies to hide their activities. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements; keeps innovators from being able to find each other; and undermines companies’ understanding of the competitive landscape. That’s why the USPTO recently proposed a new rule, informed by extensive stakeholder input, requiring the reporting of people or companies with ownership interests in a patent or application, called the “attributable owners.” Attributable owner information will provide the public with more complete information about the competitive landscape; facilitate more efficient technology transfer by making patent ownership information more readily available; and reduce abusive patent litigation by helping the public better defend itself against meritless assertions. The USPTO is currently soliciting and accepting written comments from the public here, and hosting stakeholder engagement events to solicit additional valuable feedback.
2. Enhancing Claim Clarity. The AIA reforms made important improvements to the patent examination process and overall patent quality, but stakeholders remained concerned about patents with overly broad claims in certain high-tech fields. In response, the USPTO has developed an extensive, multi-phased training program for all examiners and judges focused on evaluating functional claims and improving examination consistency and the clarity of the examination record. The agency has also conducted extensive stakeholder outreach and engagement to solicit ideas and collect feedback, experiences, and insights on improving patent quality. In the coming weeks the USPTO will launch a pilot program aimed at encouraging the use of clearer language within patent claims through the use of glossaries in patent specifications.
3. Empowering Consumers and Main Street Retailers. Unsuspecting retailers, consumers, small businesses, and other users of products containing patented technology have increasingly found themselves targeted by letters alleging patent infringement and demanding money—even in instances where a small business is using an off-the-shelf product. To help level the playing field and ensure individuals and businesses know their rights and are aware of available resources before entering into costly litigation or settlements, the USPTO is launching today a robust online toolkit of information, available at www.uspto.gov or www.uspto.gov/patentlitigation. This new portal brings together for the first time in one place a wide-ranging, powerful set of patent-relevant tools and information, including answers to commonly asked questions about patent-demand letters and a catalog of third-party sites that users can access to find out, for example, whether the patent has ever been asserted in litigation.
4. Expanding Outreach and Focused Study. Since last June’s announcement, the USPTO has significantly increased its already extensive public outreach efforts to more actively engage key stakeholders in the high-tech community, trade and bar associations, business and university groups, and advocacy organizations, resulting in a wealth of valuable input on patent clarity, transparency, and high-tech patents. The USPTO has also expanded its Thomas Alva Edison Visiting Scholars Program and has now selected three new scholars who will engage in focused study of various aspects of our patent system, to provide insights on how to further reduce unnecessary litigation and improve the quality of issued patents. This empirical research will help the Administration better understand our current patent system and better inform the development of new ideas and consensus around improvements to patent policies and laws.
5. Strengthening Exclusion Order Enforcement. When patent-infringing products are banned from importation to the United States, U.S. Customs and Border Protection and the U.S. International Trade Commission are responsible for the application of exclusion orders and determining whether imported products fall within the scope of an order. Implementing these orders presents unique challenges, particularly when a technologically sophisticated product has been redesigned to avoid the order. To address this growing challenge, the U.S. Intellectual Property Enforcement Coordinator has launched a review of the processes and standards used during exclusion order enforcement activities and, in the coming months, will issue recommendations and guidance to executive agencies to improve the efficacy, transparency, and efficiency of exclusion order enforcement activities.
In addition, the Administration is today committing to sustain the Patents for Humanity Program, which aims to increase the accessibility of the patent system for innovators who are delivering game-changing technologies to address global humanitarian needs. Past award recipients have used their patent portfolios to decrease the price of HIV and malaria drugs, develop more nutritious food sources, bring solar energy to off-grid villages, combat toxic counterfeit drugs, and purify billions of liters of water using inexpensive chemical packets.
New Executive Actions Announced Today
1. Crowdsourcing Prior Art. To determine whether an invention is novel, examiners in the USPTO must find and apply information about the state-of-the-art in the relevant technology. However, documents reflecting this state of knowledge can sometimes be difficult to find and incorporate into the patent-examination process. Today, the USPTO is announcing that it is exploring a series of measures to make it easier for the public to provide information about relevant prior art in patent applications, including by refining its third-party submission program, exploring other ways for the public to submit prior art to the agency, and updating its guidance and training to empower examiners to more effectively use crowd-sourced prior art. This effort will focus on driving valuable contributions to the patent process and to patent quality, strengthening a process that is vital to innovation and economic growth. The USPTO will seek public input on these efforts, as the Administration calls on the public and expert stakeholders to partner with us to encourage the disclosure and sharing of prior art, particularly hard-to-find references.
2. More Robust Technical Training and Expertise. Patent examiners must be skilled in determining whether a particular application should be granted based upon the state of the art. Building upon its existing “Patent Examiner Technical Training Program,” the USPTO will take steps to make it easier for technologists and engineers from industry and academia to provide relevant, technical training and expertise to patent examiners regarding the state of the art. The Administration is calling upon volunteers to assist in this training effort and ensure that training is systematic, robust, and covers all disciplines. In addition the USPTO is making permanent each of its four regional satellite offices, which will make it even easier for stakeholders to contribute in-person or virtually from these locations nationwide.
3. Patent Pro Bono and Pro Se Assistance. Due to a lack of resources, independent inventors and small businesses sometimes struggle with how to file and prosecute a patent application to protect their invention. The USPTO will be providing dedicated educational and practical resources to those who lack legal representation (i.e., pro se applicants) and will work with the AIA Pro Bono Advisory Council—and through a newly appointed full-time Pro Bono Coordinator—to expand the existing pro bono program established under the AIA to cover all 50 states. The Administration is calling on members of the patent bar to participate in the program.
Renewing the President’s State of the Union Call for Legislation to Combat Patent Trolling
The Administration stands ready to work with Congress on these issues, which are crucial to our economy, American jobs, and the Nation’s engine of innovation. Building upon the President’s State of the Union remarks, the Administration urges Congress to pass a bipartisan law designed to curtail abusive patent litigation and improve transparency in the patent system. We are encouraged by Congress’s strong, bipartisan attention to these issues and look forward to working with the Congress and stakeholders to bring this important bipartisan legislation to the President’s desk this year.
Ring & Pinion Service Inc. v. ARB Corporation Ltd. (Fed. Cir. 2014) Opinion
Panel: Moore (author), Clevenger, Reyna
One of the main justifications for the doctrine of equivalents is that it prevents patents from becoming worthless as a result of unforeseeable changes in technology. As Judge Rader observed in his concurrence in Festo:
A primary justification for the doctrine of equivalents is to accommodate after-arising technology. Without a doctrine of equivalents, any claim drafted in current technological terms could be easily circumvented after the advent of an advance in technology. A claim using the terms “anode” and “cathode” from tube technology would lack the “collectors” and “emitters” of transistor technology that emerged in 1948. Thus, without a doctrine of equivalents, infringers in 1949 would have unfettered license to appropriate all patented technology using the out-dated terms “cathode” and “anode”.
This case deals with the inverse: whether the doctrine of equivalents can apply when a technology was foreseeable at the time of patenting.
R&P sought a declaratory judgment that its product did not infringe ARB’s patent. The parties agreed that R&P’s product literally met all of the limitations of claim 1 of the patent except for one, which they agreed was present as an equivalent in R&P’s product. However, they disagreed over whether the doctrine of equivalents could apply since the equivalent would have been foreseeable to a person having ordinary skill in the art at the time the application was filed. The parties thus stipulated that infringement in this case turned on the legal question of whether “foreseeability of an equivalent at the time of application prevents use of the doctrine of equivalents.” The district court ruled that foreseeability did not preclude application of the doctrine of equivalents, but granted summary judgment to R&P on a vitiation theory.
On appeal, the Federal Circuit agreed with the district court that forseeability is not a limitation on the DOE:
There is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents. It has long been clear that known interchangeability weighs in favor of finding infringement under the doctrine of equivalents. [the CAFC cites a number of cases discussing interchangeability, including Warner-Jenkinson and Graver Tank]. Excluding equivalents that were foreseeable at the time of patenting would directly conflict with these holdings that “known interchangeability” supports infringement under the doctrine of equivalents. We conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.
Slip Op. at 4-5.
Nor did it matter that the claim element involved was drafted in means-plus-function terms. The doctrine of equivalents applies equally to these types of claim terms, and there is no “partial” foreseeability limitation here. “Nothing in Chiuminatta or in any other case cited by R&P supports its assertion that there exists a foreseeability exception to the doctrine of equivalents that applies to means-plus-function or any other claim terms.” Slip Op. at 7.
The defendant here thus lost on infringement because there is no foreseeability limitation on the use of the doctrine of equivalents. Furthermore, the stipulation that the parties entered into precluded consideration of other potential issues: the district court erred by not enforcing that stipulation.
Policy rationale: Given that a primary rationale for the doctrine of equivalents is to address the problem of after-arising technology, what is the basis for concluding that the DOE also extends to foreseeable technologies, i.e.: those that the patent drafter could have included in the patent. While Ring & Pinion v. ARB does not offer an explanation, the Supreme Court’s opinion in Festo does:“The language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty. If patents were always interpreted by their literal terms, their value would be greatly diminished. Unimportant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying. For this reason, the clearest rule of patent interpretation, literalism, may conserve judicial resources but is not necessarily the most efficient rule. The scope of a patent is not limited to its literal terms but instead embraces all equivalents to the claims described.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731-32 (2002).
In other words, patent drafters are not omniscient; they are human beings who are using an imperfect tool (language) to describe an intangible concept. In addition, patent drafters are only one person or a few people, whereas competitors seeking to design around the patent may be numerous (the game show 1 vs. 100 was premised on a concept like this). Under this view, the doctrine of equivalents tries to level the playing field.
Furthermore, although not discussed by the court, foreseeability remains an important component of the prosecution history estoppel analysis. Under Festo, the presumption arising from a narrowing amendment can be rebutted if the patentee can show that the equivalent was unforeseeable at the time of amendment. 535 U.S. at 741. But Ring & Pinion did not assert that there was a narrowing amendment, so this application of foreseeability was irrelevant.
By Dennis Crouch
The White House is expected to announce today (February 20) a round of new patent reform initiatives. This comes eight months after the President announced a set patent reforms via executive action in June of 2013 along with a set of suggested legislative reforms. Today’s announcements are expected to fit within the guidelines outlined in 2013 but will include more particular action items – with special focus on transparency of ownership and clarity of claim scope. President Obama also called for further reforms in his 2014 State of the Union Address.
The meeting is expected to be led by Secretary of Commerce Penny Pritzker who will be joined by the USPTO’s Michelle Lee (Head of the USPTO) and the leading White House patent reformers: Gene Sperling (Director of the National Economic Council), Todd Park (U.S. Chief Technology Officer), and Colleen Chien (White House Senior Advisor for Intellectual Property and Innovation in the OSTP).
The proposed executive actions from 2013 include:
- Making “Real Party-in-Interest” the New Default. Patent trolls often set up shell companies to hide their activities and enable their abusive litigation and extraction of settlements. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements, or even knowing connections between multiple trolls. The PTO will begin a rulemaking process to require patent applicants and owners to regularly update ownership information when they are involved in proceedings before the PTO, specifically designating the “ultimate parent entity” in control of the patent or application.
- Tightening Functional Claiming. The AIA made important improvements to the examination process and overall patent quality, but stakeholders remain concerned about patents with overly broad claims — particularly in the context of software. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.
- Empowering Downstream Users. Patent trolls are increasingly targeting Main Street retailers, consumers and other end-users of products containing patented technology — for instance, for using point-of-sale software or a particular business method. End-users should not be subject to lawsuits for simply using a product as intended, and need an easier way to know their rights before entering into costly litigation or settlement. The PTO will publish new education and outreach materials, including an accessible, plain-English web site offering answers to common questions by those facing demands from a possible troll.
- Expanding Dedicated Outreach and Study. Challenges to U.S. innovation using tools available in the patent space are particularly dynamic, and require both dedicated attention and meaningful data. Engagement with stakeholders — including patent holders, research institutions, consumer advocates, public interest groups, and the general public — is also an important part of our work moving forward. Roundtables and workshops that the PTO, DOJ, and FTC have held in 2012 have offered invaluable input to this process. We are announcing an expansion of our outreach efforts, including six months of high-profile events across the country to develop new ideas and consensus around updates to patent policies and laws. We are also announcing an expansion of the PTO Edison Scholars Program, which will bring distinguished academic experts to the PTO to develop — and make available to the public — more robust data and research on the issues bearing on abusive litigation.
- Strengthen Enforcement Process of Exclusion Orders. Once the U.S. International Trade Commission (ITC) finds a violation of Section 337 and issues an exclusion order barring the importation of infringing goods, Customs and Border Protection (CBP) and the ITC are responsible for determining whether imported articles fall within the scope of the exclusion order. Implementing these orders present unique challenges given these shared responsibilities and the complexity of making this determination, particularly in cases in which a technologically sophisticated product such as a smartphone has been successfully redesigned to not fall within the scope of the exclusion order. To address this concern, the U.S. Intellectual Property Enforcement Coordinator will launch an interagency review of existing procedures that CBP and the ITC use to evaluate the scope of exclusion orders and work to ensure the process and standards utilized during exclusion order enforcement activities are transparent, effective, and efficient.
Guest Post by Christopher A. Cotropia, Professor of Law and Austin Owen Research Fellow, University of Richmond School of Law; Jay P. Kesan, Professor and H. Ross & Helen Workman Research Scholar, University of Illinois College of Law; and David L. Schwartz, Associate Professor and co-Director of the Center for Empirical Studies of Intellectual Property at Chicago-Kent College of Law
Harlan Krumholz, one of the nation’s leading medical researchers, recently wrote an important New York Times Op-Ed piece called Give the Data to the People. Dr. Krumholz praised Johnson & Johnson for making all of its clinical trial data available to scientists around the world. This included not only the conclusions in published articles, but also unpublished raw data. Companies are often reluctant to share raw data because their competitors may benefit. In the medical field, there are also patient privacy concerns. But releasing the raw data permits other researchers to learn from and build upon existing data. It also offers other researchers the ability to replicate and verify the findings of important medical studies. Dr. Krumholz concludes: “For the good of society, this is a breakthrough that should be replicated throughout the research world.”
We believe that Dr. Kumholz’s call for more publicly available data is applicable to empirical legal studies. It is especially critical, in our view, to the study of patent assertion entities (“PAEs,” which some refer to as patent trolls). There is an important public policy debate underway about the role of PAEs within patent law. There have been reports in the press about PAEs – including a high profile report by the President’s Council of Economic Advisors
– that relied upon confidential data. In his State of the Union address, President Obama called on Congress to enact patent reform legislation. The main basis for the reform is alleged abuses by “patent trolls.” Unfortunately, much of the raw data about patent litigation is not publicly available.
As academic researchers, we are interested in data about PAEs. We have previously studied and written an article about patent infringement lawsuits filed in 2010 and 2012. Because of the importance of the debate about PAEs, we released the raw data from our study to the public (here) to permit others to evaluate and study. Others have downloaded and commented on our data to us, and we have gone back and verified particular classifications in some instances. We believe more publicly available data is necessary.
Why is more information about PAE litigation not public? After all, the underlying data relates to litigation in the federal courts, and thus does not implicate privacy concerns like in the medical context. However, most of the raw data has been gathered and coded by private companies. For-profit businesses legitimately desire to use the information within their business and to prevent competitors and others from using commercially valuable information. That said, we believe corporate owners should release as much of the raw data (not merely descriptive statistics) as they can. To the extent that the raw data is not released or shared, society should be extremely cautious before relying upon it to make important public policy decisions.
Perhaps more importantly, we call upon academic researchers to gather and release more data. The data should be gathered and released in a form most useful to others. For instance, there is a debate about the definition of a PAE. Some believe that it excludes original owners – for instance, universities and individual inventors – while others believe PAEs include any non-operating company. Ideally, the raw data should be coded and released on a granular level. That way, future researchers can analyze the data relying upon different definitions, rather than only the definition used by the original researcher.
In sum, we ask that other researchers release more raw data on PAEs, which will permit both robustness checks on the results, as well as future empirical research on the topic. The time for more transparency has come.
By Dennis Crouch
In the last four months of 2012 about 4,000 intellectual property lawsuits were filed in federal courts. Of these, about 2,000 were patent cases along with 1,000 copyright and 1,000 trademark cases. Patent litigators are well aware of the ongoing popularity of the Eastern District of Texas and the rising popularity of the Delaware court. I wanted to look at how that concentration is different on the copyright and trademark side. It is easy to draw two quick conclusions from the case filings. First, I note that the most popular patent infringement jurisdictions are among the least popular jurisdictions in the other two areas. Very few copyright or trademark cases are filed in EDTX or DDEL. Second, I can conclude that the patent litigation cases are much more highly concentrated in a smaller number of jurisdictions than that of either copyright or trademark. (One measure of this is that the top three patent jurisdictions have 59% of the patent cases while the top three copyright and trademark jurisdictions have 32% and 28% respectively). Part of the explanation for the high concentration of patent cases is the clustering of NPE cases that involve a single plaintiff against multiple defendants filed before a single court. However, I would suggest that the driving explanation is simply the popularity of EDTX and DDEL. The appellate courts provide even more disjunction between the IP regimes since almost all of the patent litigation appeals are heard by the Court of Appeals for the Federal Circuit whereas that court sees very few copyright or trademark infringement actions. Likewise, the appellate courts that hear the most copyright and trademark appeals never hear patent appeals. As I have written previously, the bulk of governmental money spent on administering intellectual property rights goes through the US Patent & Trademark Office (PTO) — an executive agency housed within the Department of Commerce. The US Copyright Office, however, is not part of the administration but rather is housed within the Library of Congress, which itself is managed by Congress rather than the President. Thus the US Copyright Office does not officially represent the Administration or shape Administration policy.
All of this is an odd setup – especially with the rising and overlapping market role for intellectual property rights. From a theoretical standpoint, it is unclear whether the fractured structure leads to rights that are either too strong or too weak. What we can tell is that the structure leads to a lack of coordination of the various IP systems within the US.
For its part, the US Supreme Court has an almost regular practice of doing a comparative analysis in its intellectual property cases that considers how a particular issue is handled in other areas of IP law. Harmony in these areas is part of what the court calls a ‘carefully crafted balance.’ To this end, the court has recognized that the scope and coverage offered by patent law is relevant to the relevant scope and coverage of copyright and trademark protection. Likewise, in the upcoming fee-shifting cases, we can expect that the court will use copyright and trademark precedent as a guide. Perhaps unfortunately, few lower courts have the cross-IP-jurisdictional experience of the US Supreme Court that would be necessary to reasonably draw the same types of parallels.
The chart below shows the most-popular 25 jurisdictions for case filings in the final four months of 2012.
Thanks to LexMachina for this data.
By Dennis Crouch
Butamax v. Gevo (Fed. Cir. 2014)
Butamax is a joint venture between BP and DuPont that focuses on creating butanol from corn and sugarcane. The company’s Patent No. 7,993,889 covers isobutanol production using a recombinant yeast. The claims particularly call-out the “engineered” pathway beginning with the raw biologic, passing through the various intermediaries, and resulting in butanol.
Now, the claims are interesting. Claim 1 is directed to a “method for producing isobutanol” that uses the “recombinant yeast microorganism.” Claim 12 is directed to “The recombinant yeast microorganism of claim 1.” Patent professionals will recognize the unusuality of this claim structure. Usually, a dependent claim is narrower than its referenced independent parentage. However, Butamax’s dependent claim 12 here is broader (in some ways) than the referenced claim 1. That is clear here since infringement of claim 1 (a method claim) requires practicing the method, but infringement of claim 12 (a composition claim) can be infringed merely by possession or potentially any use of that microorganism. In the software context, this type of claim structure is somewhat common and typically involves an independent algorithmic method claim followed by a dependent claim directed to a non-transitory computer readable memory storing instructions for causing a processor to complete
Dependent claims are authorized by the Patent Act. 35 U.S.C. § 112(d) states that:
(d) Reference in Dependent Forms. — [A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
In my mind, the Butamax claim structure does not fit within the structure authorized by §112(d) because the full effect of the “method” limitation is not included in the dependent composition claim. The result then, could be invalidity either as indefinite or for failure to comply with §112(d). See Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284 (Fed. Cir. 2006) (claim invalid for failure to properly structure the dependent claim).
Now, this claim form is similar to that used in product-by-process claims where a dependent product-by-process claim references the process described in a process claim. That type of claim has been accepted by the Federal Circuit on several occasions See Scripps Clinic & Research Found. v. Genentec, Inc. (Fed. Cir. 1991) (“product by process claims are not limited to product prepared by the process set forth in the claims”), overruled by Abbott Labs v. Sandoz (Fed. Cir. 2009) (en banc)
Here, the Butamax claim is not directed to a resulting process but instead to a component used in the method, but perhaps that is not a worthwhile distinction. The appeal here arises from a district court finding that the claims were invalid on other grounds. On appeal, the Federal Circuit vacated that decision and remanded for reconsideration by the district court. Perhaps we’ll see the 112(d) issue briefed next time around.
Once an independent claim is found patentable, examiners often give short consideration to the subsequent dependent claims. That time-saving measure makes follows some logic since the dependent claims are supposed to be narrower than the allowed claim and thus should also be patentable over the prior art. Of course, this is one situation where that logic fails.
Two disturbing videos, neither bring good news:
- Video Shines Light On The Disturbing Emotional Toll Of Being Black At UCLA Law School [Video]
- Novelty Shop: Clarence never invented anything; however, he didn’t let that keep him from being one of the most prolific patent litigants ever. The following is a fictional account, based on a true legal system. Any similarity to any actual events is probably inevitable. [Video][Book]
- The USPTO has been named the No. 1 place to work out of all Federal Agencies based up employee satisfaction and commitment. Congratulations! [Link]. And, the USPTO is hiring. Here is the agency’s most recent announcement: The USPTO is hiring in Denver.
- More Patent Law Jobs Here: http://patentlyo.com/jobs
- In 2013, the Job Board had more than 200 patent law job postings and 750,000 page views from interested IP law professionals. Submit a job here: http://patentlyo.com/submit-a-patent-job or contact Ryan with questions (email@example.com)
By Dennis Crouch
I looked at patent litigation complaint filings over the past few years to work on identifying the timing of typical lawsuits. The chart below shows the percentage of lawsuits that are still open (i.e., not terminated) grouped by the complaint filing year. As the chart shows, 99% of the patent lawsuits filed back in 2005 & 2006 have been terminated at the district court level (I should note here that some of these may still be on appeal and thus “live” in that sense.). On the other hand, 99% of the patent lawsuits filed in the past 50 days (2014 calendar year) are still open. For the most part, there simply has not been time to even settle those cases. Important results: more than one third of the lawsuits are terminated within one year and about three quarters are done within two years. I generated the data from a LexMachina search and the results based on cases still open as of February 17, 2013.
By Dennis Crouch
- Exceptional Case Awards: The Supreme Court will be hearing oral arguments on February 26, 2014 in two patent infringement cases that both concern shifting of attorney fees under the “exceptional case” standard of 35 U.S.C. § 285. The Federal Circuit has traditionally been resistant to fee shifting awards – especially in cases where an accused infringer is the prevailing party. In Octane Fitness, petitioner asks the Court to lower the standard for proving an exceptional case. In Highmark, petitioner asks for deference to lower court exceptional case findings. We can expect that the Supreme Court will eliminate the Brooks Furniture test – at least as it is strictly applied.
- Patentable Subject Matter: On March 31, 2014, the Supreme Court will hear oral arguments in the software patent case of Alice v. CLS Bank. The case has the potential of drawing dividing line between what types of software are patentable and what types of software are not patentable. I am quite pessimistic that the result proposed by the Supreme Court will be fairly implementable by the US Patent Office.
- Indefiniteness: On April 28, 2014, the Supreme Court will hear oral arguments in Nautilus v. Biosig. That case questions the standard for challenging issued patents on indefiniteness grounds. We can expect that the Supreme Court will lower the standard for proving indefiniteness – down from “insolubly ambiguous” to a more “reasonable” standard. This has the potential of impacting a substantial number of patents that have issued with claim terms that intentionally flirt with ambiguity. Indefiniteness is regularly confused with over-breadth. Patent attorneys role moving forward will be in finding ways to draft broad but well defined claims
- Divided Infringement: On April 30, 2014, the Supreme Court will hear the joint infringement case of Limelight v. Akamai that posits the question whether the elements of infringement-by-inducement require a single entity who, based upon the inducement, performs all elements of the claimed invention. The Federal Circuit ruled that the single-entity rule of direct infringement should be relaxed for inducement and instead that the relevant question is whether the alleged inducer did indeed induce performance of all elements of the patented claim. Although the Supreme Court may prove some tweaks, I believe that the Federal Circuit approach here should carry the day.
The following quote comes from the joint amicus brief of 3M, GE, and others in the pending Supreme Court case of Octane Fitness v. Icon Health and Fitness.
To be sure, there are instances (some extremely well-publicized) of patent litigation abuse involving non-practicing patent owners who use the courts in an effort to collect large numbers of nuisance settlements. Yet this problem, in the experience of Amici Companies, is no more serious than that created by many infringing defendants who routinely fight off meritorious patent suits by pressing scores of frivolous defenses and counterclaims, and who otherwise rely upon dilatory tactics to force unjust settlements. Accordingly, the focus should be on curbing litigation misconduct wherever it occurs. An evenhanded standard, flexibly applied, allows just that.
Do readers have suggestions for studying whether the sense of amici is correct?
By Dennis Crouch
Intellectual Property Law is really a general term used to describe a host of more particular legal regimes. Parties do not apply for “intellectual property rights” or go to court to enforce “IP rights.” Rather, parties hold and enforce patents, copyrights, trademarks, trade secrets, etc. In writing about the area, legal academics often use the broader term Intellectual Property to suggest that their results and conclusions apply broadly. It turns out though that very often, articles that purport to be directed to Intellectual Property in general are not so broad in their specifics but instead focus on only one or perhaps two particular areas of intellectual property law. To look into this process, I collected set of about 350 law journal articles published 2011-2013 that include the phrase “Intellectual Property” in their title. I then parsed the articles to identify which particular areas of intellectual property law served as the article focal points. I did this simply by counting the usage of words such as “patent”, “copyright,” “trademark,” and “trade secret” in each article.
Results: Of the self-styled “Intellectual Property” articles, a full 1/3 focused almost entirely on one area of intellectual property. The threshold for this result was that >90% of specific references were directed to one particular area of IP law. Another 1/3 of the articles focused almost entirely on two areas of intellectual property. Intellectual Property articles in this sample were most likely to focus on patent law as shown in the chart below. Of the paired-areas, the most common are Patent+Copyright and Copyright+Trademark but not Patent+Trademark.
The White House has pre-announced that it will be making a major announcement on “strengthening the IP system” on February 20, 2014. Speculating, the topic will likely focus on either executive actions (through the PTO) for accomplishing patent reform or perhaps announcement of a USPTO director.