Patent Attorneys Face Multiple-Jeopardy

Earlier in the week, I wrote about the issue of “multiple-jeopardy“.

This week, the patent-world has also faced “Double Jeopardy” with two patent attorneys competing and winning their rounds on the television show Jeopardy.

Congratulations to Patent Attorney and Blogger Ryan Alley (Ryan Alley IP) on his Jeopardy win this week! Alley made it a “true daily double” by questioning the following answer:

White House counsels John Dean & Kathryn Ruemmler went to this law school not far from Pennsylvania Ave.

His two-day total is $39,800 and he will go again on Friday.

FJ Results: 10-29-14

Also this week, Patnet Neeraj Joshi (the Business Method Man) competed and won on Sports Jeopardy. Watch Joshi’s round here.

jeopard

Software Patenting: Are you Smarter than a Fourth Grader

by Dennis Crouch

This morning I mentioned one bit of the ongoing software-patent debate to my 9-year-old daughter.  I told her that some people argue that the computer is a different machine when it is running Microsoft Word than when it is running her WarriorCat game.  As an old Newtonian mechanical engineer, that argument never sits well with me. (I think software is patent-eligible on other grounds).  I was surprised that she bought-in to the different-machine argument.

Robin explains:

Sure, the box is the same in both situations. But, Microsoft Word obeys me and the the game thwarts my moves. I see them as very different.  Its brain changes.

Robin did something here that comes naturally for children — to think about the issue from her perspective as a participant in the activity.  The two programs offer very different experiences – and that is what matters to her.  It will be interesting to see whether the court’s approach is the same.

In any event, Happy Halloween from my Woodland Elf & Forest Gnome!

DSCF6474

Rise of Computer Patents

It is fairly difficult to nail-down which patents are “software” patents.  For the chart below, I parsed through all utility patents issued since 1976 and looked for any of the following keywords within an independent claim: computer; processor; software; machine.readable; information; memory; data; virtual; or storage.media.

ComputerClaims

More Engineers => More Patents

In a new article, Economist John Winters (OSU) looked at the link between collegiate STEM training (university degree) and innovation-intensity (per capita patenting). The findings are not surprising — locations with more STEM graduates have a higher per capita rate of patenting.  Of importance, Winters found this to be true regardless of whether the graduates were US-native or foreign trained.

STEMGraduatesPatentRate

 

Figure 1 above charts the per-capita patenting (log) against the population-share of STEM-graduates.  Each point represents one of the 300+ U.S. metropolitan area in the study.  The outlier at the right is Silicon Valley which has both the highest per-capita patenting rate and the highest population-share of STEM graduates. You’ll note that the per-capita patenting rate is on a log axis and that the SV patenting rate is much greater the chart suggests if thinking linearly.  Winters does not report on the identity of the low-end regions.

Although the paper does not delve into this, the phenomenon here is almost certainly not one of straight causation.  Silicon Valley and Boulder (No. 2 on the list) have both learned how to invest in research and investment likely leads to more local STEM graduates.  In that sense, the solution of ‘getting more STEM graduates’ is unlikely to be a success on its own.

A second problem with the paper is that it talks about ‘innovation’ but simply uses a patent-count measure as a proxy for innovation.  Although innovation is a legally necessary element of a patent, many important innovations are not patented. Further, although per-capita patenting provides a simple and easy to explain measure, it avoids the reality that some inventions are highly innovative and important while others are not.

Bucking the Trend: Security Software Patent Not Yet Ruled Ineligible

ScreenShot142Card Verification v. Citigroup (N.D. Ill. 2014)

A growing number district court decision have followed the Supreme Court’s Alice Corp. decision by finding the asserted patent claims to be patent-ineligible as unduly encompassing an abstract idea.

In one recent decision, N.D. Ill. Judge Kendall has tepidly bucked the trend by denying a Fed R. Civ. Proc. R. 12(b)(6) motion for failure to state a claim — instead finding the asserted claims plausibly eligible.

The asserted patent claims cover a transaction verification method and the Judge agreed with defendant-Citygroup the general idea of verifying a transaction is an unpatentable abstract idea.  (Claim 1 is pasted below. See Patent No. 5,826,245).

Moving to the second step of Alice, Judge Kendall found that the claims plausibly avoid the mental steps doctrine by requiring “pseudorandom tag generating software” and also plausibly requires a sufficiently concrete transformation so as to ground the abstract idea to a particular inventive implementation.  Notably, for the second step, Judge Kendall did not draw the law from Alice, which seemingly required novelty in the ‘something more’ but instead quoted from the Federal Circuit’s 2013 holding that “additional substantive limitations [are required that] narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.” Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013).  Applying that law to the case, the court ruled that the claimed process of adding random number tags to data in the computer could be seen as “fundamentally altering the original confidential information.”  With this analysis in hand, Judge Kendall denied the defendants’ motion to dismiss for failure to state a claim without prejudice.

The decision here is probably most important for its procedural stance. First, the defendants’ bold move was to file its motion to dismiss as a R. 12(b)(6) motion even before filing its answer to the complaint that would include defenses and counterclaims.  Under Iqbal and Twombly, the complaint must state a claim that is ‘plausible on its face.’  Here, all that the court held was that the claim is plausible.

Although the outcome favored the patentee, the case is also a break from the tradition that a patent’s presumption of validity is generally sufficient to survive such a motion to dismiss. In Ultramercial, the Federal Circuit addressed a similar finding and held that dismissal at such an early stage is only appropriate when “the only plausible reading of the patent [is] that there is clear and convincing evidence of ineligibility.”  Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013) vacated on other grounds 132 S. Ct. 24131 (2012). Of course, the clear-and-convincing standard is with regard to questions of fact while the eligibility inquiry is a question of law that depends upon few (if any) questions of fact.

= = = = =

Read the decision here: Kendall101

Claim 1:

A method for giving verification information for a transaction between an initiating party and a verification-seeking party, the verification information being given by a third, verifying party, based on confidential information in the possession of the initiating party, the method comprising:

on behalf of the initiating party, generating first and second tokens each of which represents some but not all of the confidential information,

sending the first token electronically via a nonsecure communication network from the initiating party to the verification-seeking party,

sending the second token electronically via a nonsecure communication network from the initiating party to the verifying party,

sending the first token electronically via a nonsecure communication network from the verification-seeking party to the verifying party,

verifying the confidential information at the verifying party based on the first and second tokens, and sending the verification information electronically via a nonsecure communication network from the verifying party to the verification-seeking party.

Economics: Explaining Reverse Payments in ANDA Litigation

Guest Post by Ruben Jacobo-Rubio.  I asked Jacobo-Rubio to write a guest post on his recent article (along with John Turner and Jonathan Williams) on estimating the valuation of Paragraph IV patent litigation.  The basic results here are that brand firms value deterring entry by an order of magnitude more than generic firms value the right to entry.  That economic result helps to explain the incentive for reverse payments. The full paper is available here: http://ssrn.com/abstract=2481908

The 1984 Hatch-Waxman Act attempts to strike a balance between promoting innovation of new brand drugs and facilitating generic entry. One of its key provisions, the Paragraph (iv) Abbreviated New Drug Application (ANDA) certification process, creates a specific role for patent litigation in striking this balance. Specifically, the US Food and Drug Administration (FDA) permits generic firms to rely on brand-firm data on safety and efficacy in seeking approval to sell copies of brand drugs, but does not grant entry unless the generic firm successfully challenges all relevant brand-firm patents. As a reward, the first successful generic challenger receives a 180-day marketing exclusivity upon approval of its ANDA (iv). Effectively, the Paragraph (iv) ANDA process seeks an average level of competition, where early entry occurs against weaker patents that do not hold up in court and later entry occurs against stronger patents (Hemphill 2006).

In recent years, however, brand and generic firms have settled Paragraph (iv) litigations out of court with increasing frequency (FTC 2010). Such settlements often involve delayed generic entry and some form of payment from the brand firm to the generic. Economic theory suggests such settlements may be anti-competitive.

In order to inform the courts and stakeholders at large, we study such patent challenges. Counting only the first challenge, and restricting further attention to cases where first-time entry in the entire molecule market is at stake, we collect a sample of 93 cases litigated during 1988-2012. We begin our data capture by using all patents ever listed for approved drugs in the FDA Orange Book since the beginning of the Act. Next, we do an extensive search for lawsuits, first by using all of these patents, a second search using drug names, and a last search using firm names.

After our extensive data capture, we also develop a novel framework, using an event study of Paragraph (iv) litigation decisions and the probabilistic nature of such decisions, to identify key aspects of the distribution of surplus in the US pharmaceutical industry during the Hatch-Waxman era. We assume that the Efficient Market Hypothesis holds; that is, the stock prices of pharmaceutical firms incorporate all available information about firm value. Thus, when there is a decision in a Paragraph (iv) case, investors price the effect of that decision into their valuation of the firm. For example, the two figures below show the raw effects of decisions on brand and generic firm values. The effects are large, timed just after district-court decisions, and move in predicted directions. This gives us confidence in the event-study approach. We use standard event-study techniques to identify cumulative abnormal returns (CARs) from these decisions.

rubio1rubio2

The CARs and other firm information are insufficient for identifying firms’ stakes in the case, for two reasons. First, investors expect Paragraph (iv) challenges to succeed with some probability. Second, district-court decisions are sometimes reversed on appeal. Hence, the change in market value from a district-court decision reflects a change in the probability of an ultimately successful Paragraph (iv) challenge. It does not pin down the difference in firm value between an ultimate win and an ultimate loss. To identify this latter difference—the value of deterrence for the brand and the value of entry for the generic—we weight the estimated change in the firm’s stock-market value from the event study, using formulas incorporating estimates of the probabilities of brand wins and of the probabilities of appellate reversals.

We find that brand firms value deterring entry, on average, at $4.6 billion. In contrast, generic firms value the right to enter at $236.8 million dollars (all values in 2010 dollars). Hence, the value of entry is only five percent of the value of deterrence. This gap suggests that, by settling their disputes, firms would realize sizable additional surpluses. Indeed, we estimate the average bargaining surplus to be about $2 billion per Paragraph (iv) case. This estimate represents a lower bound for the additional consumer surplus realized by permitting patent challenges under the Paragraph (iv) ANDA process, versus blocking entry for the life of the brand firm’s patents.

Next, we study the effect of a more permissive environment for “pay-for-delay” settlements. On June 27, 2002, an Administrative Law Judge ruled in favor of such a settlement in the closely-watched case Schering-Plough vs. FTC (40 LEXIS 244 [FTC 2002]). Since this decision, eventually upheld by the 11th Circuit Court of Appeals (402 F.3d 1056 [11th Cir. 2005]), there had been a surge in Paragraph (iv) settlements (FTC 2010).

When we divide our sample into cases before and after the 2002 Schering-Plough decision, our estimates show that for cases decided after Schering-Plough, the ex ante probability of an ultimate brand victory is 60%, versus just 40% for earlier cases. In addition, the average value of deterrence falls 60% after Schering-Plough, from about $8.8 billion to about $3.5 billion, while the average value of entry falls nearly 67%, from $532.0 million to $173.5 million. The average bargaining surplus falls from about $4.9 billion to about $1.3 billion, a 73% decrease.

Hence, since 2002 it has become increasingly rare for big-dollar Paragraph (iv) cases to complete patent litigation. They more typically settle. These settlements strongly reduce the (per-case) average consumer surplus delivered by Paragraph (iv) litigation.

The courts have yet to clearly delineate the antitrust implications of reverse payments, but the Supreme Court has made an important step. In a 5-to-3 decision on June 17, 2013 in FTC vs. Actavis et al. (133 US 2223 [2013]), the Court instituted a “rule of reason” for courts to apply to such cases (Hovenkamp). They instructed the 11th Circuit Court of Appeals to hear Federal Trade Commission (FTC) antitrust arguments in the Actavis case, and paved the way for the FTC to make such arguments in other cases.

We hope our study sheds light on the economics of these cases.

 

 

The Patentee’s Risk of Multiple-Jeopardy

In Blonder-Tongue Labs., Inc. v. Univ. of Ill., 402 U.S. 313 (1971), the Supreme Court precluded a patentee from re-asserting a patent that had been found invalid in a separate suit.  Prior to that case, a patentee who lost on validity against one party was not generally precluded from asserting the same patent against another party.  The doctrinal hook in Blonder-Tongue is known as non-mutual collateral estoppel and it allows a new-challenger to take advantage of the success of a prior-challenger. In a new decision, Judge Bryson has applied the doctrine mid-stream to quickly conclude a pending lawsuit by simply precluding the patentee from continuing to assert the patent after another court has ruled it invalid.  DietGoal v. Chipotle, 12-cv-764 (E.D.Tex. 2014).

Risk of Multiple Jeopardy: The case here highlights the difficulty faced by patent assertion entities seeking to enforce their patents against multiple parties.  Each accused infringer has the right to independently challenge a patent’s validity. But, if the patentee loses even one of those challenges, then the patentee will be estopped from further asserting the patent.  Importantly, an invalidity finding in one case operates to shut down both pending and future assertions of the patent.  Prior to the America Invents Act of 2011 (AIA), many patent enforcers had begun joining multiple defendants into single lawsuits and that setup-at least procedurally-helped patentees avoid the multiple-jeopardy risk.  However, the AIA has forced a separation of these lawsuits in a way that again highlights the one-way risk.  Under this new system, parallel infringement actions (same patent, different defendants) are now more likely to be heard in different venues and before different judges in a way that makes alternative outcomes more likely.  And, the rise in post-issuance challenges further removes the risk-decision from the patent holder’s discretion.

Here: Federal Circuit Judge Bryson is sitting by designation in DietGoal v. Chipotle.  The infringement litigation was filed in back in 2012 and involves U.S. Patent No. 6,585,516 that covers a computerized meal planning tool. Claim 2 of the patent is listed below:

2. A system of computerized meal planning, comprising:
a User Interface;
a Database of food objects; and
a Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.

The same patent has been asserted in 60 other recent infringement lawsuits.  Importantly, in one-such-case – DietGoal v. Bravo Media – the district court judge found all claims of the patent invalid as impermissibly claiming an abstract idea.  In that decision, Judge Engelmayer (S.D.N.Y.) wrote:

[T]he claims of the ’516 Patent recite nothing more than the abstract concept of selecting meals for the day, according to one’s particular dietary goals and food preferences.

Following that decision in favor of Bravo, the defendants here (Chipotle) asked Judge Bryson to apply issue preclusion to end its case as well.

Collateral estoppel – also known as issue preclusion – applies to bar a party from re-litigating certain issues.  There are typically four elements that must be met before estoppel will attach:

  1. The issue sought to be precluded from relitigation is identical to the issue decided in the earlier proceeding;
  2. The issue was actually litigated in the former proceeding;
  3. The determination on the issue in the prior action was necessary to the resulting judgment in that case; and
  4. The person against whom collateral estoppel is asserted had a full and fair opportunity to litigate the issue in the prior action.

Here, Judge Bryson found that all four of those elements had been met with regard to patent-ineligibility as decided in the prior Bravo case.

In Blonder-Tongue, the Supreme Court noted that estoppel might not apply in “those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit.” DietGoal here argued, that this was one of those relatively rare instances — especially since the district court in Bravo failed to conduct a claim construction before making its determination. However, according to Judge Bryson, DietGoal failed to indicate how claim construction would have been important to the 101 analysis.  Judge Bryson also cited the several Federal Circuit decisions that

On Appeal: The Bravo decision is on appeal. That said, an important element of collateral estoppel is that it applies after the original district court final judgment – even if an appeal is pending and even if the “later” case was well underway at the time of the prior decision.  Now, assuming that DietGoal can keep this case alive (likely via appeal) until the Bravo appeal is decided, and assuming that DietGoal wins on appeal (which I suspect is unlikely), then Judge Bryson would be forced to reconsider the case on its merits.

Software as an Abstract Idea

Amdocs v. Openet Telecom (E.D.Va. 2014)

In yet another case, a district court has invalidated a set of software patents as unduly abstract under Alice Corp., Mayo, and 35 U.S.C. 101.  In this case, E.D. Va. Judge Brinkema issued a judgment-on-the-pleadings that all of the asserted claims of the four Amdocs patents were invalid as patent-ineligible. The Decision.

In Alice Corp., the Supreme Court outlined a two step process for determining eligibility: (1) determine whether the claim encompasses excluded subject matter and then (2) determine whether the claim includes “something more” sufficient to “transform the nature of the claim into a patent-eligible application.”  As it turns out, neither of these tests are straightforward.

The patents-in-suit here relate to computer software designed for reporting network usage. Claim 16 of Amdocs Patent No. 6,836,797 is on point:

16. A computer program product stored in a computer readable medium for reporting on a collection of network usage information from a plurality of network devices, comprising:

computer code for collecting network communications usage information in real-time from a plurality of network devices at a plurality of layers;

computer code for filtering and aggregating the network communications usage information;

computer code for completing a plurality of data records from the filtered and aggregated network communications usage information, the plurality of data records corresponding to network usage by a plurality of users;

computer code for storing the plurality of data records in a database;

computer code for submitting queries to the database utilizing predetermined reports for retrieving information on the collection of the network usage information from the network devices; and

computer code for outputting a report based on the queries;

wherein resource consumption queries are submitted to the database utilizing the reports for retrieving information on resource consumption in a network; and

wherein a resource consumption report is outputted based on the resource consumption queries.

In applying Alice, Judge Brinkema first examined the claim to determine whether it is directed to an abstract idea.  Brinkema’s particular approach here follows the “gist approach” used by other post-Alice district court decisions.  Notably, to find the abstract idea, Brinkema “look[ed] past the mere claim language” to determine that the claim is “directed to the abstract idea of using a database to compile and report on network usage.”  It is probably important to pause here to consider what considerations make us think that a network usage database creation and report tool is abstract.  Unfortunately, Judge Brinkema does not.

At step two, Judge Brinkema looked for “something more” but found instead that “the claim does not add much” beyond the stated abstract idea.

In claim 16, a generic computer collects, filters, aggregates, and completes network communications information.  The generic computer then stores the information in a database, and queries the database to retrieve reports. Collecting, filtering, aggregating, and completing network information amounts to “electronic recordkeeping,” which is “one of the most basic functions of a computer.” (quoting Alice).  Similarly, storing and querying information in a database, and building reports based on that information, is one of the most basic functions of a database system. Accordingly, claim 16 is directed to a computer functioning in a conventional way, and a database functioning in a conventional way. The claim does not add any specific implementation beyond the abstract idea that information is collected and stored, and reports are generated.

The result then is that the claim is ineligible and thus invalid. The opinion similarly walks through other challenged claims and rejects them.  Throughout the opinion, the Judge’s largest concern appears to be that the claims lack “specific hardware” as well as “any detail” regarding how the claimed functions actually operate.

The Judge was also clear that overall novelty is irrelevant to patent eligibility. “That argument misses the point. The concern of § 101 is not novelty, but preemption.”

A person may have invented an entirely new and useful advance, but if the patent claims sweep too broadly, or only claim the idea that was achieved rather than implementation of the idea, § 101 directs that the patent is invalid. Amdocs’s asserted claims recite such conventional operation, in such a general way, that even if the inventor had developed an actual working system, the patent claims could foreclose fields of research beyond the actual invention. Accordingly, all asserted claims are invalid as patent-ineligible.

= = = = =

Notes:

Software?: Although the court made a few pushes for “hardware” in its analysis, it did not make any express statements that software is problematic from an eligibility standpoint. An open question following Alice Corp., is whether any claimed invention would be patent eligible if beginning with the preamble: “A computer program product stored in a computer readable medium…”

Reduced Average Patent Life

AveragePatentLife

The chart above shows a time series for the average “life” of US utility patents.

Prior to 1980, the term of U.S. patents was fairly standard at 17-years from the issue date. The primary caveat related to terminal disclaimers used to avoid double-patenting rejections.  In 1980, Congress added maintenance fees that created a market incentive for patentees to reduce their patent term when the cost of the fees-due was more than the patent value.  After issuance, three additional maintenance fees are due.  Today, those fees are set at: $1,600 at 3.5 years after issue; $3,600 at 7.5 years after issue; and $7,400 at 11.5 years after issue.  In 1995, Congress again changed the patent term by eliminating the 17-year-from-issue calculation and replacing it with a term running for 20-years-from-priority-filing (not counting foreign-national or provisional priority).  In 2000, patent-term-adjustments began that now add substantial term to most issued patents (this replaced the largely ineffective extension regime).

The chart above look groups all the patents according to their year of expiration and then reports the average patent term for each group of expired patents.

The drop in term in this chart is largely due to implementation of maintenance fees. Going forward, the shape of the chart will largely depend upon the fee structure (higher fees => lower terms).

 

 

US Government Volunteers to Pay for Infringement by Japan Airlines

by Dennis Crouch

The US Federal Government does not get a free-pass on patent infringement.  Rather, the Government’s unlicensed use of a privately held patent constitutes infringement and is actionable. However, Congress created a special court to hear the cases (the Court of Federal Claims), and implemented a number of restrictions on both the adjudication process and the substantive rights that all tend to favor the government as defendant.  See 28 U.S.C. § 1498.  Generally, patentees would prefer to litigate in Federal District court.

Further, Congress created a special indemnity that bars lawsuits against government contractors and others doing the work of the Government. Under the statutory indemnity, when a patented invention “is used or manufactured . . . for the United States [Government] . . . the owner’s [only] remedy shall be by action against the United States in the [US] Court of Federal Claims.” 28 U.S.C. § 1498(a).

In Iris Corp. v. Japan Airlines Corp. (Fed. Cir. 2014), the patent at issue basically covers the method of manufacturing an identification document (such as a national Passport) with an in-laminated RFID chip.  US Patent No. 6,111,506.  As required by US Law, Japan Airlines examines passports before allowing its passengers to board international flights leaving the US  The patent holder here is the Malaysian company Iris Corp. who competes in the market for this type of ID technology.

Iris sued in Federal District Court under 271(g) for using the electronic passports that had been made abroad (namely Japan) but in a manner within the scope of the patented claims.  In response, Japan Air and the US Government (as amicus) argue that the indemnity provision of Section 1498 eliminates both (a) the jurisdiction of the District Court and also (b) the liability of Japan Airlines.

Infringement Done for the United States: The legal question on appeal is whether’s Japan Airline’s alleged use of the patented invention was done “for the United States.” The statute spells out a partial definition of “for the United States” as being done “for the Government and with the authorization or consent of the Government.” In its 2009 decision, the Federal Circuit further explained that the infringement must be “for the benefit” of the US and that benefit may not be merely “incidental.”  Advance Software.  The court here finds that, under this framework, Japan Airline’s activities were done for the Government and thus the case falls under Section 1498.

Is Infringement Required?: A critically element of the court’s decision (in my view) was the court’s factual conclusion that “JAL cannot comply with its legal obligations without engaging in the allegedly infringing activities.”

At first this statements appears at odds with the reality that, although the law requires Japan Air to inspect passports, it does not require that the e-chip be used.  Rather, it appears that manual inspection without reliance on the e-chip is also fully acceptable under the law.  The US Government writes: “While there may be some ability for the airline to determine the best way to make the needed comparison, it may not decline to examine the passport.”

One way to reach the court’s conclusion that infringement is required is to recognize that the case is a 271(g) infringement action that would create liability for any use of a product made by the patented process even if the particular-use does not take advantage of the product benefits.  Under that theory, every US-inspection of an e-chipped-passport, regardless of how it is conducted and even if manual, constitutes infringement.

In addition to the fact that infringement was required by federal law in order to participate in the marketplace element, the court here also found it relevant that border security is a core role of the federal government and that Japan Air’s actions here are quasi-governmental. That finding led to the conclusion that the alleged infringement was done for the non-incidental benefit of the US.

Although in this case the US Government agreed that it should be the defendant, and important take-away from this decision is that the company infringing need not have any contractual relationship with the US Government or that the US Government be given any notice of the ongoing infringement.  Rather, under the law, a private company (her Japan Air) is able to decide to conduct its business in a way that infringes a patent but that only creates liability for the Government.

Next stop Court of Federal Claims?: One reason why the patentee sued in district court was that – at the time of the filing – it appeared that 271(g) actions could not be brought against the US under 1498.  The Federal Circuit changed that rule in Zoltek Corp. v. United States, 672 F.3d 1309, 1323 (Fed. Cir. 2012) (en banc).  One question is whether the long delay in filing in the CFC has tripped some statute of limitations for filing suit.

This case would be much more interesting (from my academic perspective) if Japan Air could carry out its required function without infringing, but had made the business decision to inspect the passports in a way that infringed.

The Number of U.S. Patents In Force

[10/25/14 updated to correct minor data collection error] 

by Dennis Crouch

PatentsInForceUpdated

The chart above shows the number of patents in-force at any given point over the past forty years.  Each bar represents a snapshot taken on January 1* of the stated year and totals-up the number of issued but not-yet-expired patents.  The data for each year is divided-up into four groups categorized according to age (years-from-issuance).  You’ll note the growth in young patents and a temporary decrease in older-patents.  The decrease is due to primarily to the establishment of maintenance fees for patents whose applications were filed after December 1980.

There have been a number of studies on the growth of patent enforcement litigation in recent years and some use the number of issued patents in order to calculate a litigation rate.  The problem with that approach is that that the number of patents potentially available for lawsuits in 2014 are not simply the number of patents issued that year, but rather include all patents in-force during the relevant time.

To make the chart, I first found the expected expiration date of each US utility patent going back to the 1950s, taking account of the 1995 changes in patent term calculation and the addition of patent-term-adjustment.  Then, I pulled-in data from the maintenance fee payment system and identified patents that expired early for failure to pay the maintenance fees due. Patent applications filed prior to December 1980 were not required to pay maintenance fees. I also identified patents that were associated with a terminal disclaimer and shortened the term where appropriate.  To do this, I actually guessed at which parent-patent was the likely relevant term — generally using the one with an earlier expiry date — because the actual link is buried in the prosecution history files.  I also did not have data on terminal disclaimers associated with pre-1976 patents. Using an automated process, I went through each of these steps with each patent in order to identify the years where it was in-force.  I should note, however, that I did not account regulatory-approval related patent term extensions or the impact of litigation/reexamination/review/reissue.  Although those processes are very important for particular patent rights, they are very unlikely to impact the general statistics presented here. Mike Brown (Brown & Michaels) has a good overview on his informative website.

* The final bar (2015) is a snapshot for October 23, 2014 (the day that the data was collected).

Upcoming Events and Recent Job Postings

  • HOUSTON: November 5, 2014 – One night only. I will be delivering the University of Houston’s IPIL Annual Fall Lecture at the Four Seasons Hotel in Houston (Sponsored by the Katz Foundation). My talk will be on incentives (current and future) for patent clarity. [LINK]. Thank you to the University of Houston Law Center for hosting this event.
  • AUSTIN: November 6-7, 2014, I will be speaking at the Advanced Patent Law Institute along with Professors Golden (UT Austin), Lemley (Stanford), Wegner (formerly with GWU), and Hricik (Mercer); the Hon. Terry Rea and Randy Rader; Rob Sterne, et al.
  • NEW YORK CITY: November 6-7, 2014, the IP Dealmakers Forum [www.IPDealmakersForum.com] is looking to connect investors with IP monetization experts.  Jay Walker, founder of priceline.com will serve as keynote. Other speakers include dealmakers from Acacia, American Express, Cantor Fitgerald, Evercore, Fortress Investment Group, Interdigital, IP Navigation Group, Qualcomm, Marathon Patent Group, and Vringo . Patently-O readers get a $200 discount with code: PATO200.
  • SILICON VALLEY: December 3-5, 2014, IQPC’s Global Patent Strategies Summit [www.GlobalPatentSummit.com] will focus on patent strategies for litigation, prosecution and portfolio management.  Patently-O readers get a 25% discount with code: GPS_POBD.
  • VAIL: January 7-11, 2015, I will be part of the faculty for the Intellectual Property Program of the National CLE Conference in Vail, Colorado.  [www.CLEandSKI.com].  The Conference include eight different subject-matter tracts and obviously reserves substantial time for enjoying the Colorado Rocky Mountains. Patently-O readers get a $100 discount using the code: FACULTYINSIDER.
  • While you are clicking links, take time to visit the site Patently-O’s longtime sponsor: MBHB and also Juristat.

Job Postings from the past week on Patently-O Jobs:

 

Sorting Out Sections 284 and 285

By Jason Rantanen

Halo Electronics, Inc. v. Pulse Electronics, Inc. (Fed. Cir. 2014) Halo v Pulse
Panel: Lourie (author), O’Malley (concurring opinion), Hughes (joining concurrence)

This opinions contains two important parts: a discussion of 271(a) in the context of multi-national transactions and Judge O’Malley’s concurrence on the issue of willful infringement.  I’ll write more about the 271(a) issue in a separate post, but for now I wanted to focus on the points Judge O’Malley raises.

In this case, Halo accused Pulse of willfully infringing its patent, thus paving the way for enhanced damages under 35 U.S.C. § 284.  That statute reads in relevant part:

When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154 (d).

The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

Under longstanding Supreme Court precedent, enhancement of damages under this provision requires either willful or bad-faith infringement.

In countering the infringement claim, Pulse argued that the asserted patent was obvious.  Ultimately, the jury rejected Pulse’s argument and found that the “it was highly probably that Pulse’s infringement was willful.”  Slip Op. at 7.  However, both the district judge and the Federal Circuit panel concluded that Pulse’s obviousness defense was not objectively unreasonable, thus precluding a finding of willfulness under In re Seagate‘s two-prong approach (which contains both objective and subjective components).

While concurring as to the panel outcome, Judge O’Malley (joined by Judge Hughes) wrote separately to issue a public call to “the full court to reevaluate our willfuness jurisprudence in light of the Supreme Court’s decisions in Highmark and Octane Fitness.

Judge O’Malley’s concurrence first notes the linking of the standards for exceptional case and willful infringement.  Under Federal Circuit precedent, the test for willful infringement under § 284 parallels that for exceptional case determinations under § 285.  The court has stated this explicitly: “The objective baselessness standard for enhanced damages and attorney’s fees against a non-prevailing plaintiff under Brooks Furniture is identical to the objective recklessness standard for enhanced damages and attorneys’ fees against an accused infringer for § 284 willful infringement actions under [Seagate].”  iLOR, LLC v. Google, Inc., 631 F.3d 1372, 1377 (Fed. Cir. 2011).

This linkage leads Judge O’Malley to three observations:

1) Both the test for willful infringement and the test for exceptional case determinations were based on the Federal Circuit’s interpretation of Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993).  But, in Octane Fitness, the Supreme Court rejected the Federal Circuit’s interpretation of PRE in the exceptional case determination contextIf the two tests are truly in parallel, then the Federal Circuit should revisit the test for willful infringement.

2) The evidentiary standard for willful infringement should also be revisited. “In Octane Fitness, the Supreme Court also rejected the requirement that patent litigants establish their entitlement to attorneys’ fees under § 285 by ‘clear and convincing evidence’.  Id. at 1758.  As we used to do for attorneys’ fees, we currently require patentees to prove willfulness by clear and convincing evidence. See Seagate, 497 F.3d at 1371. As the Supreme Court explained in Octane Fitness, however, the ordinary rule in civil cases, and specifically patent infringement cases, is proof by a preponderance of the evidence.”  Concurrence at 4.

3) The Supreme Court also rejected a de novo standard of review for exceptional case determinations in Highmark.  This is important because, although Judge O’Malley doesn’t directly state it, the “objective” prong of willful infringement is currently treated as a question of law, meaning that it is reviewed under a de novo standard.  If the two standards are truly parallel, this is inconsistent with Highmark.

Finally, under both §§ 284 and 285, “the court” is the entity that makes the determination.  However, the Federal Circuit’s caselaw currently sends some issues of willful infringement to a jury.  In Judge O’Malley’s view, whether this is actually correct as a statutory matter should also be addressed by the court en banc.

***

I’m largely in agreement with Judge O’Malley.  Like the judge, I see a tremendous tension between the existing willful infringement caselaw and Octane Fitness/Highmark that flows from the treatment of §§ 284 and 285 as being in parallel.

I also think the history here is important – and my sense is that much of the mucky precedent in this area actually comes from the just the last decade.   One important piece of context to keep in mind is the totality of the circumstances analysis that comes after the threshold determination.  Attorney’s fees and enhanced damages are not a binary question, but rather a multi-step inquiry where the initial determination is just the first part.

Supreme Court: A Good-Faith-But-Incorrect-Belief that the Patent is Invalid

by Dennis Crouch

Someone who induces infringement is just as liable for infringement as the one who actually commits the underlying act of direct infringement. 35 U.S.C. § 271(b).  However, unlike direct infringement, inducement has a substantial mens rea or scienter requirement that the inducer knew at-the-time that the induced conduct would infringe the particular patent. In Global Tech (2011), the Supreme Court held that the knowledge element can be satisfied by proof that the inducer was willfully blind to the risk of infringement.

In Commil v. Cisco, the Federal Circuit addressed a slightly different question — and that question is now pending before the US Supreme Court:

Does an inducer’s good faith belief that a patent is invalid negate inducement liability?

One way to think about this is to go back to Global Tech and ask what the Supreme Court meant when it said “infringement.”  Was the Court referring only to the elements of proving direct infringement under 271(a) or instead was the Court referring more generally to infringement liability.  While 271(a) is a narrower concept that generally ignores validity issues, the broader concept of infringement liability draws-in defenses that may be available such as invalidity or unenforceability.

An important consideration here is that this good-faith-belief of invalidity is only critical for the discussion if it turns out that the asserted claims are actually valid and enforceable. So, we’re really talking about a good-faith-but-incorrect-belief that the claims are invalid. In this type of situation, I worry about the generation of self serving evidence that fall under the CYA/BS classification.

In any event, the Federal Circuit panel here ruled that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.”  [See Rantanen on Commil]. The patentee (Commil) then petitioned for Supreme Court review and the Court asked for the views of the US Government.

In its newly filed amicus brief, the US Goverment (through the Solicitor General) has agreed with the patentee that the Federal Circuit is wrong and that the accused’s invalidity belief is irrelevant to the question of inducement liability.

This Court should grant Commil’s petition for certiorari (No. 13-896) with respect to the first question presented. The court of appeals erred in holding that a person who knowingly induces another to engage in infringing conduct may avoid liability under Section 271(b) by demonstrating that it had a good-faith belief that the infringed patent was invalid. This Court’s review is warranted to prevent defendants from avoiding inducement liability on a ground that is inconsistent with the text, structure, and purposes of the relevant Patent Act provisions.

In its analysis, the SG basically walks through the statute (that separates the notion of infringement from invalidity defenses) and the key cases of Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (Aro II) and Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).  In particular, with Aro II, the patentee had mailed a pre-suit notice letter to the defendant and the Supreme Court in that case seems to have treated that communication as conclusively satisfying the mens rea requirement.

Commil’s petition included a second question and Cisco also submitted its own question – both of these involved the necessity and propriety of ordering a new trial.  The US Government amicus brief recommend that neither of those questions be reviewed.

Read the USG amicus brief here.

 

Considerations for International Inventions – Foreign Filing Licenses

Guest Post by Brent M. Dougal and Philip M. Nelson.  Dougal and Nelson are IP Attorneys with Knobbe Martens Olson & Bear LLP.

In today’s age of international commerce, product development often takes place on an international scale.  Many companies have design centers in multiple countries, with design teams that span the globe.  What are the patent implications if an invention is developed in China or some other country outside the U.S. and the company wants to obtain international patent protection?

U.S. law requires that inventors obtain a “foreign filing license” before filing foreign patent applications on inventions that occur in the U.S.  This allows the government to assess, for example, whether the technology could threaten U.S. national security.  Some other countries such as Spain (Article 119-122), Italy, and India also require foreign filing licenses for inventions developed domestically but for which foreign patent protection is sought.  In countries that provide foreign filing licenses, these licenses generally do not issue quickly or efficiently.  Thus, it is advisable to file first in the country of invention to avoid the delay and difficulty of obtaining the foreign filing license. (The US and Canada are notable exceptions to this general rule.)

By contrast, other countries, such as China (Article 20) and Vietnam, have no provisions for obtaining a foreign filing license. These countries require that patent applications on domestic inventions be filed first domestically.  In China, domestic inventions include all inventions occurring in China, whether or not funded by a foreign company.  Failure to file in China may lead to invalidity of a corresponding Chinese application and criminal penalties if the invention relates to security or other vital state interests.  One way a U.S. or English-language company can deal with this requirement is to file a Patent Cooperation Treaty (PCT) application in English with the Chinese Patent Office as the PCT receiving office.

Canada has one of the most unique foreign filing laws.  There a foreign filing license is only required—and indeed, only available—if the inventor is an employee of the Canadian government. Instead of review by a separate government entity as in the U.S., Canadian government employees must obtain permission of the minister of his or her department.

Other countries, including the U.K. and Germany, have limited restrictions related to national security and military applications (requirements for EPO countries can be found here).  Thus, a foreign filing license is only required for select technologies.

The table below summarizes many of the current restrictions, breaking down the listed countries into four main groups:

 

Foreign Patent Filing Restrictions

None

Limited to National Security and Military Applications

License Required 

First Filing Must be Domestic

Countries

Argentina, Australia, Austria, Brazil, Hong Kong, Indonesia , Ireland, Japan, Liechtenstein, Mexico, Monaco, New Zealand, Philippines, Poland, Portugal, South Africa, Sri Lanka, Switzerland, Taiwan, Thailand, Venezuela

Belgium, Czech Republic, Denmark, Finland, Germany, Israel, Korea, Luxembourg, Netherlands, Slovak Republic, Sweden, United Kingdom

Canada1, France2, India, Italy, Malaysia, Singapore, Spain, United States

Belarus, China, Cyprus3, Greece3, Hungary3, Kazakhstan, Russia, Vietnam4

1 Only required for government employees.

2 Only applies where inventors are French nationals or the company’s principle place of business is France (Article L. 614-18, 614-20). A European patent application can also be filed as the first filing without obtaining a foreign filing license.

3 First filing must be domestic where inventors are nationals (and in some cases permanent residents).

4 Also requires Vietnamese inventors without an obligation to assign to file first in Vietnam.

Though only a limited number of countries have foreign filing restrictions, those that do include many significant markets, not to mention the world’s most populous countries.  As companies continue to expand internationally, their attorneys will need to take an international perspective.  In order to preserve international rights, attorneys should explore inventorship and the foreign filing laws of the country of invention early on in the disclosure and application preparation process.

__________________________

This discussion is provided without guarantees and is not to be considered legal advice. We highly recommend seeking legal counsel in the country of invention.  The information has been compiled with the assistance of foreign associates from various countries, with some independent verification.

Any invention which may have a military application or could be considered important to national security is likely restricted not only by a country’s patent laws, but also by export laws, which are not addressed here.  We highly recommend seeking legal counsel in the country of invention.

Proving Non-Obviousness with Ex-Post Experimental Evidence?

by Dennis Crouch

The Federal Circuit has rejected BMS’s petition for en banc rehearing in its chemical compound obviousness case. However, four additional opinions either concurring or dissenting show that the court does not speak with one-mind on the issue. Obviousness is the central patentability doctrine and thus, even small modifications to the doctrine can have important systemic impacts. En Banc Denial Opinions.  The patent in question – if valid – is worth hundreds of millions of dollars and so we can expect a petition for writ of certiorari to the Supreme Court.

In Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc., the Federal Circuit panel affirmed a lower court finding that BMS’s patent covering the Hep-B drug entecavir is invalid as obvious. Patent No. 5,206,244. Judge Chen drafted the original opinion that was signed by Chief Judge Prost and Judge Plager.  Prof Rantanen covered the original decision here.

The obviousness approach for newly invented chemical compounds typically involves identifying the closest analog compound (lead compound) and then determining whether it would have been obvious to create that new compound based upon the lead prior art.  Here, the basic holdings of the Federal Circuit were: (1) affirming that “those of ordinary skill in the art would have selected 2′-CDG, a carbocyclic analog, as a lead compound for further development efforts;” (2) affirming that the same PHOSITA would have been motivated to modify the lead compound; and (3) holding that the secondary indicia of non-obviousness were insufficient to transform the obviousness determination.

In its petition for rehearing, BMS presented two primary arguments:

  • That the court improperly refused to consider post-invention discoveries regarding the invention and prior art that showed significant differences between the two.  In particular, the appellate panel found it irrelevant that the lead-prior art compound is highly toxic to humans since – at the time of the invention – the compound was generally regarded as safe.
  • With regard to objective indicia of non-obviousness – that the court improperly separated the analysis on a property-by-property basis (finding each merely difference-in-degree) rather than looking at the alleged dramatic (difference-in-kind) impact of the drug when considered as a whole.

In his opinion discussed below, Judge Taranto sets the stage:

In short, the Bristol-Myers compound, which is a novel molecule, is dramatically different from the prior-art compound in providing practical human benefits: one provides such benefits, the other does not. But that difference was identified only after Bristol-Myers filed for its patent, because the prior-art compound, not having been tested in animals or humans, was not then known to be toxic.

A number of Amici supported the petition, including BIO, Pfizer, Eli Lilly, PhRMA, IPO, and Merck.

The basic issue here is that pharmaceutical companies regularly perform tests to compare their newly-invented drug treatment to the prior art in order to prove that the two are quite different.  However, as a general matter, those tests are performed after the invention and application is already on file.  The companies then have a major concern that this decision will deny the relevancy of those objective but ex post results.

The trouble for the patentee in this case is the statute — that expressly calls for considering what was known by PHOSITA at the time of the invention (pre-AIA; in future we the time is at the effective filing date of the patent application).  Under the statute it seems that post-filing information should only be relevant to showing what PHOSITA would have been thinking back at the critical date.

Although the entire court did not explain its reasons for denying the rehearing, Judges Dyk (joined by Judge Wallach) and Judge O’Malley wrote separate opinions concurring in the denial.

Judge Dyk:

This case presents a question of obviousness, in particular whether evidence postdating the invention can be used to establish unexpected results. The panel holds that it cannot be considered in the circumstances of this case. That position is correct. It is mandated by the statute, which provides that an invention is not patentable if it “would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103 (emphasis added).

The patent applicant’s discovery of unexpected results at the time of the invention can help to establish that the invention would not have been obvious to another skilled person. But hindsight bias must be avoided in determining obviousness. And under longstanding Supreme Court authority, the pertinent knowledge is that possessed at
the time of the invention.

You will note that Judge Dyk cites the new-103 rather than pre-AIA 103(a), but that does not significantly change the point he is making here.

Judge O’Malley:

I write to assuage Bristol-Myers Squibb Co.’s (“BMS”) and the amici’s1 fears that this panel decision has rewritten the test for obviousness for pharmaceutical patents. In my view, the concerns expressed are unjustified and mischaracterize the opinion. This case does not forge new ground or set down immutable principles. It simply decides that, on the record before it, the district court did not err in finding the asserted claim of the ’244 Patent invalid as obvious. . . .

Our case law clearly allows the consideration of later discovered differences between the prior art and the invention. . . . These differences inform the obviousness analysis and thus can be considered when assessing what was understood by one of skill in the art at the time of the invention and what expectations may have been reasonable. . . . Like all evidence of objective indicia, the point of considering later-understood evidence regarding the properties
of the invention is to guard against hindsight bias by assessing claims of a motivation to combine as of the time of invention in light of later surprises or developments.

Judge Newman dissented from the denial with an opinion joined by Judges Lourie and Reyna.  Judge Newman, inter alia, walks through the lengthy list of cases that where ex post evidence was relied upon to prove non-obviousness and sees the panel decision here as a major departure.

Judge Taranto’s dissent basically argues that the panel decision was sloppy and, because it can be read in the extreme way suggested by the petitioner, that it should be modified.

The Vast Middle Ground of Hybrid Functional Claim Elements

FunctionalClaimsby Dennis Crouch

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has held that two different claim elements “lack sufficiently definite structure” that must be interpreted under 35 U.S.C. 112(f) as means-plus-function elements and, because corresponding structures were not sufficiently disclosed in the patent document (as required by 112(f)), the associated claims were held invalid as indefinite.  Here the claim elements in question are a ‘program recognition device’ that plugs into a car motor to see if its control software is out of date and also a ‘program loading device’ that updates the control software if necessary.  U.S. Patent No. 6,782,313.

Functional claim limitations are in vogue.  Part of the reason is that the current generation of computer-focused engineers have been trained in an object oriented approach that discusses solutions more in terms of results than in detailed algorithmic steps.  That approach makes it easier to create new tools and devices by relying upon the building blocks created by others.  But, the carryover to patent law remains somewhat tenuous.

Functional claim terms also offer a mechanism for achieving broader claim coverage and claim coverage that is more aligned with the scope of potential competitor activities and follow-on innovation.  The use of functional language for that purpose has a century-long history in U.S. patent law and has been much debated at all levels, including the U.S. Supreme Court.

When the Supreme Court discussed the topic in its landmark 1946 decision of Halliburton v. Walker, the Court described functional claim terms as those that focus on results – “what it will do” – and not on the actual physical implementation.  In Halliburton, the court held:

A claim which describes the most crucial element in a “new” combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid.

Id. The result in Halliburton was that the claim was found invalid under as indefinite because the functional language there (an “echo receiving means”) did not provide sufficient notice of the scope of patent rights.

The Patent Act of 1952 left intact a strong definiteness requirement but overturned Halliburton by enacting what is now known as 35 U.S.C. 112(f).  That provision expressly allows for an element to be claimed as a “means” for performing a “specified function” but without actually specifying the physical characteristics of how it works.  However, 112(f) has an important and significant limitation that cabins-in the scope of any such means limitation to only cover corresponding embodiments described in the patent document, and their equivalents.

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

A second limitation on 112(f) is the court interpretation that purely functional claim elements that are not physically described in the specification are deemed indefinite and the corresponding claim invalid.

US patent attorneys have taken notice of these legal limits on means-plus-function claiming and have largely abandoned the form. Twenty years ago, most patents included claim terms written in means-plus-function form. Today, that figure is under 5%.  But the strategy for many does not eschew functional claim elements, but rather to integrate functional limitations together with structural limitations with the result being broadly defined claim elements that avoids the limitations of 112(f).

The Big Middle Ground

Partially Functional Elements: The rules are clear for claim elements written in purely functional terms  such as a ‘means for communicating’ without any claimed physicality. However, there exists a vast middle-ground for claim limitations that include some functionality and some physicality.  These might include a ‘circuit for communicating’ or – as in the recent Bosch Case – a ‘program recognition device.’

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has affirmed a lower court determination that two different functional claim elements are indefinite and thus that the associated claims are invalid.  The patents relate a motor vehicle software-update tool.  The claims include a ‘program recognition device’ that plugs into the motor control unit to see if the software is out of date and also a ‘program loading device’ that plugs into the motor control unit to upload new software. Easy enough.    But, the specification includes no diagrams and no real structural detail about these ‘devices.’

The Federal Circuit has a fairly straightforward algorithmic approach to functional claims elements. The first step it to determine whether the element qualifies as “functional” and, if so, interpret the limitation under the rubric of Section 112(f).  For the court, a functional claim element is one recites a functional limitation without “reciting sufficient structure for performing that function” or that fails to “recite sufficiently definite structure.” EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955 (Fed. Cir. 2014). The court also uses a linguistic shortcut — claim elements drafted in the form “means for [performing a specified function]” are also presumed to be functional.   Similarly, elements that do not use the word “means” are presumed to be structural.  Importantly, Federal Circuit precedent indicate that these presumptions are “strong.” See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).

Here, although the terms were not claimed in “means” form, the court found that they lacked structure and therefore were functional.  In walking through its analysis, the court first looked at the claim words ‘program recognition device’ and ‘program loading device’ and found no structure other than the ‘nonce’ word device.  Then, looking at the specification, the court found:

[The] ‘313 patent’s specification does not contain a single reference to the structure of the “program recognition device” itself; all of the proffered citations from the specification merely explain its function. For example, the statement that the external diagnostic tester is “equipped” with the “program recognition device” that “querie[s] and recognize[s]” program versions in the control unit is nothing more than a functional description. This passage is devoid of structure. Likewise, the passage that explains how the external diagnostic tester uses the “program recognition device” to automatically check which program version is currently on the control unit only describes the connection of the external diagnostic tester to the control unit in the vehicle. The specification is, therefore, also silent about any interaction between the “program recognition device” and other components of the system, including the external diagnostic tester. Contrary to what Bosch contends, the specification does not teach how the “program recognition device” receives and processes signals, as the words “signal” and “process” are not even in the specification. . . .

Because the claim terms lack structure, the court determined that they fall under the rules of 112(f) [112p].

The claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art. The claim terms “program recognition device” and “program loading device” invoke § 112, ¶ 6.

The problem for Bosch in this case is that the same analysis of the specification above also supports the conclusion that the claimed function lacks structural description in the specification. And, as a result, the court found the claims invalid as indefinite.

Since we have concluded that both claim terms invoke § 112, ¶ 6, we now must attempt to construe the terms by identifying the “corresponding structure … described in the specification” to which the claim term will be limited. Welker Bearing Co., 550 F.3d at 1097. “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). On this point, however, little needs to be said. Bosch did not argue to this court that, even if the claim language at issue is within § 112, ¶ 6, the language is definite because the specification sufficiently discloses corresponding structure. See Appellant’s Br. 51–52. And we also see no such disclosure.

Indeed, as already discussed in Part III.B, in the limited number of instances that the specification even mentions these claim terms, it offers no further guidance about their structures. Therefore, we conclude that “program recognition device” and “program loading device” are indefinite. Since these terms are found in the only independent claim of the ‘313 patent, we conclude that all claims in the ‘313 patent are invalid.

An important element of the court’s analysis here is that it is all seen as a question of law reviewed de novo on appeal. Thus, although the appellate panel largely agreed with the lower court’s original decision in this case, that decision was given no deference in the analysis. Further, the strong presumption of validity requiring clear and convincing evidence was also entirely ignored here because that evidentiary requirement is directed toward questions of fact not questions of law.

A second important and interesting element of the court’s decision here is that it does not cite the Supreme Court’s most recent foray into indefiniteness – Nautilus v. BioSig (2014) (requiring reasonable certainty).  Likewise, the court did not cite Halliburton. In fact, the court has not cited Halliburton for almost 20 years and it has never cited the case other than to criticize the decision or indicate that it has been legislatively overruled by 112(f).

The case here is also in tension with those cited above: EnOceanLighting World, and Inventio. however, the court here took steps to distinguish those cases based upon the ‘fact’ that Bosch’s patent application failed to provide structure in the specification to guide one skilled in the art in understanding the ‘device’ limitation.  In the other cited cases, the specification included examples and diagrams sufficient to transform the seeming ‘nonce’ words into ones with structural meaning.

What will be interesting here will be to see whether this case is the beginning of a movement in a new direction.  This case’s path to the Supreme Court is most likely if the Federal Circuit first grants an en banc rehearing request.

Another Prosecution Bar Case, but With a Twist

As I’ve pointed out elsewhere here, the adoption of the AIA has created various issues for existing prosecution bars: if you are using a pre-AIA form, consider whether it applies to the new post-grant proceedings.  Courts are splitting on whether bars that don’t mention them can, or should, apply.  My article on the broad topic of prosecution bars is here.

In this recent case, Voice Domain Techn. LLC v. Apple, Inc. (D. Mass. Oct. 8, 2014), the court faced a couple of unique circumstances, while also addressing whether post-grant proceedings were “competitive decision-making” within the meaning of prosecution bars.  Specifically, the patentee was essentially a one-man company and that one man was also the named inventor on the patents-in-suit.  Apple sought to exclude him from having access to key information, asserting that, no matter his best intentions, he would at least likely inadvertently misuse the information.  Apple asserted that his involvement in licensing, patent acquisition, and prosecution all made inadvertent disclosure possible.

The court agreed, holding that, though not doubting his integrity, “it questions whether it is possible to avoid the subconscious use of Apple’s confidential material in his future endeavors.”  Thus, as a competitive decision-maker he was subject to a bar unless Voice Domain showed that the prejudice to it of a bar outweighed any potential harm.  The court found it did not, concluding that because trial counsel and experts could have access, this outweighed the potential harm.

That aspect of the case — the sole-employee patentee — is fairly rare in my research, and this case discusses a few other similar cases.

The case addresses various other issues, but whether reexamination and other post-grant proceedings should be covered was a key issue. The court held that although courts had usually held reexamination proceedings were not subject to a prosecution bar, “a newer line of cases recognizes that even in a reexamination proceeding, a patent owner can use confidential information to restructure or amend its claims so as to improve its litigation position against alleged infringers.” (citing several cases from 2013 and 2014). The court adopted the approach of these more recent cases, but entered an order that allowed for court permission for counsel to participate.

Takeaways:  (1)  don’t assume post-grant proceedings are covered, or not, by a bar and make it clear; (2) be sure that any of your lawyers who are subject to a bar comply with it and (3) figure out who on the other side needs to be barred.  As my paper points out, with respect to that last point, some courts hold that the party seeking the bar has to show that a lawyer on the other side is likely engaged in competitive decision-making; that is not practicable.  Finally, and again, double-check any old form and be sure you update it, as appropriate.

How is Patent Litigation like Baseball?

By Jason Rantanen

I’m a moderately-dedicated baseball fan*, so I’ve been listening** to quite a few baseball games over the past few weeks.  And as I’ve been listening to the games, it’s struck me that in many ways, patent litigation is a lot like a baseball game well beyond the Cubs reference.  Both are a game of one against many on a field where the participants operate under asymmetric rules.  For both, too, the individual success rate in an active contest isn’t all that high.

One of the most distinguishing aspects of baseball is the challenge an individual batter faces in actually achieving a positive result at the plate.  Most of the time, players don’t actually get a hit; a batting average of over .300 is considered exceptional.  This statistic has sparked the idea that baseball is a game of failure: there are numerous references to even the greatest baseball legends being failures 7 times out of 10.  Even when other measures of success are taken into account (such as drawing a walk), it’s still the case that most of the time a batter will make an unproductive out.

But, as other folks have pointed out, a batter’s performance is not so much a question of the individual triumph (or failure) of the batter; rather, it is a contest between the batter and the pitcher.  When the batter loses, the pitcher wins.

Or more accurately, when the batter loses, the other team wins.  This is a large part of what makes baseball so fascinating to me: it’s a lone batter facing off against a whole squad of nine opponents.  One against many.  Even the best players in the world are still the underdog here: Ted Williams, the all-time leader in getting on base, did so about 48% of the time over his career.

So too in patent law.  A patent holder is only one against many.  True, like a batter, the patent holder has an advantage: the patent, with its presumption of validity.  But there is only one patent holder and there is a whole world of potential infringers.  Including many creative, knowledgeable, and smart players who can develop arguments and theories and ideas that the patent holder could never have anticipated.

The end result is that perhaps we shouldn’t be all that surprised when patent holder success rates in infringement litigation tend to look a lot like batting averages.  Added to the challenge of one patent holder against many possible infringers is the difficulty of actually winning a patent suit: there are a multitude of possible validity challenges that an alleged infringer might raise and the patent holder must win on them all – and prove infringement – in order to prevail.   As in baseball, patent infringement litigation is an asymmetric contest with different rules for the batting team and the fielding team.***

None of this is to discount the very real challenges that our patent system faces, particularly when it comes to anything other than substantive merits determinations by a court.  We don’t really have a good sense from an empirical standpoint about the nature of post-filing settlements, let alone those that occur prior to the filing of the complaint.  And none of this should suggest that patent litigation is working as optimally as it might; it’s still extremely costly, complex litigation and there’s always room for improvement in patent law.  But thinking of patent litigation as akin to a baseball game also might help to put the Allison/Lemley/Schwartz study I posted about earlier this week in some context.

*By which I mean that I watch a fair number of Giants games via MLB TV, listen to many more, and have been to a dozen games or so over the last seven years.  Of course, it’s easy being being a fan when the team you follow makes it to the World Series three times out of the past five years…

**A cost of getting rid of cable tv is that one can only listen to postseason baseball games that are currently being played.  Which is actually my preferred way to follow the game.  Except for the constant repetition of political advertisements directed at a state in which I do not live.

***There are another analogies I could draw, such as the role of money in paying for players in the game.  Of course, that didn’t work out to well for the Dodgers this year…

Also, at some point the analogy stops working; a baseball game in its entirety is not all that asymmetric.  The team that bats will get its turn in the field.  The team that fields will get its turn at bat.  The analogy works best when talking about batting success.

Director Michelle Lee

The White House has announced President Obama’s plans to nominate Michelle Lee for the position of Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  Although Lee is already the de facto Director of the office, this move has important political implications because it will help to better ensure both USPTO autonomy and USPTO influence within the Beltway.  Congratulations to Michelle Lee and the Patent Office on this important move forward.

It was almost one year ago that Michelle Lee was appointed as deputy director and de facto director.  At the time, I praised the selection of Lee, but questioned both the legality and the wisdom of appointing a prominent deputy director while leaving the slot of director still vacant.   Because of legal limitations, Lee has not be identified as the “Acting Director” but only “acting as Director.”

Part of the willingness of the White House to now appoint Lee may have come from the country’s new Chief Technology Office Megan Smith who is a former Google executive. (Lee led Google’s patent strategy for a decade).

Up to now, Lee has largely followed the lead set by former Director Kappos and Acting Director Rea. The unanswered question is whether the new role will now embolden and empower Lee to shift USPTO policies in a new direction.