Audio bites of the day

July 14th, 2023

There were some fun audio bites in the oral argument of CR BARD, INC. v. Medical Components, Inc., No. 2022-1136 (Fed. Cir. Feb. 17, 2023).

Judge Hughes had some frank comments about the court injecting printed matter into patent eligibility determinations:

You can listen to the entire oral argument here:

Oral argument of the day: Ill-gotten gains and the Fifth Circuit

July 11th, 2023

I saw a blurb yesterday in IPLaw360 that highlighted an appeal from a Fifth Circuit case that will be heard by the Supreme Court next term. The case is Jarkesy v. SEC, 34 F.4th 446 (5th Cir. 2022).

Some of the issues raised in the oral argument at the Fifth Circuit are somewhat related to those that were raised in the Arthrex and Oil States decisions. The Oil States decision is also discussed in the briefing to the Supreme Court, as well as in the dissenting opinion at the Fifth Circuit.

You can listen to the Fifth Circuit oral argument here:

The issues presented in the appeal to the Supreme Court are:

QUESTIONS PRESENTED

  1. Whether statutory provisions that empower the
    Securities and Exchange Commission (SEC) to initiate
    and adjudicate administrative enforcement proceedings
    seeking civil penalties violate the Seventh Amendment.
  2. Whether statutory provisions that authorize the
    SEC to choose to enforce the securities laws through an
    agency adjudication instead of filing a district court ac-
    tion violate the nondelegation doctrine.
  3. Whether Congress violated Article II by granting
    for-cause removal protection to administrative law
    judges in agencies whose heads enjoy for-cause removal
    protection.

Oral argument of the day: LKQ Corp. v. GM Global Tech. Operations, LLC

July 9th, 2023

The oral argument of the day is from LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC, No. 2021-2348 (Fed. Cir. Jan. 20, 2023). The Federal Circuit recently granted en banc review in this case.

I am listing a second oral argument, as well, as there was a companion case argued immediately following the 2021-2348 oral argument. I thought some people might find it interesting.

When argued, the en banc argument should feature Judge Clevenger. While he is a senior judge, he was part of the original panel. So, he is entitled to participate in the en banc decision with the full-time members of the court — although, I believe the Federal Circuit changed its procedures in recent years so that senior judges on the original panel are no longer allowed to vote in determining whether to take a case en banc. Judge Clevenger authored the “Durling” decision in 1996. In the original 2021-2348 panel decision, the “Rosen” and “Durling” tests are discussed.

2021-2348 Oral argument
2022-1253 Oral Argument

Chaotic bricolage

June 20th, 2023

We all have probably encountered an obviousness argument that cobbled together references in an unconvincing manner. In this earlier post, such a combination was aptly described as a Frankenstein combination.

I was trying to think of some other phrases that the Federal Circuit could use in future opinions to describe such combinations of features/elements/limitations/references. Here are a few suggestions:

a chaotic bricolage

an omnium gatherum

a wishful patchwork

a cacophonous medley

an unpalatable goulash

a conglomeration abomination

an unfettered quilt

a motley melange

a concocted Chimera

a chimeric concoction

a synthetic snarl

an incongruous union

a monster mishmash

Quote for the day

May 20th, 2023

That society should protect, and thereby stimulate, investment in innovation—not just invention—has been held by many; but few were as consistent in their conclusions as Joseph A. Schumpeter, who on these grounds favored permitting monopolistic practices of various sorts. He argued that temporary security from competition, through cartels, patents, or other restraints, would encourage firms to put more venture capital into innovating investment. Schumpeter, Capitalism, Socialism, and Democracy (New York: Harper, 1942), pp. 81-106.

“An Economic Review of the Patent System,” Fritz Machlup, United States Government Printing Office 1958, page 9, footnote 44.

Article suggestion: What would be the most significant impacts to patent law if Chevron deference is removed by the Supreme Court?

May 4th, 2023

The Supreme Court has granted cert. in Loper Bright Enterprises v. Raimondo. The issue in that case is:

Whether the court should overrule Chevron v. Natural Resources Defense Council, or at least clarify that statutory silence concerning controversial powers expressly but narrowly granted elsewhere in the statute does not constitute an ambiguity requiring deference to the agency.

An interesting article would be one that considers how overruling of Chevron would impact patent law. Would the current make-up of the Federal Circuit be a better or worse choice in deciding historically Chevron issues, as opposed to deference to administrative officials at the USPTO?

The Federal Circuit in Happier Times

April 14th, 2023

Quiz — Designating an opinion precedential

March 25th, 2023

This quiz question concerns a situation where one of the three judges of a Federal Circuit panel dissents from the two judge majority opinion. Which of these answers is/are correct for designating the opinion precedential:

  • a). both judges in the majority vote to make the opinion precedential;
  • b). one judge in the majority votes to make the opinion precedential and the other two judges vote against it;
  • c). one judge in the majority votes to make the opinion precedential and the dissenting judge votes to make the opinion precedential;
  • d). neither judge in the majority votes to make the opinion precedential, but the dissenting judge votes to make the opinion precedential;
  • e). all of the judges in the panel vote to make the opinion precedential;
  • f). the Chief Judge can designate the opinion precedential, regardless of whether she is on the panel.
  • Answer(s) below the break:
Read the rest of this entry »

Who is the real party in interest when a membership organization brings an IPR?

February 23rd, 2023

Judges Taranto and Newman pressed an issue during a recent oral argument as to who is the real party in interest when a membership organization brings an IPR. The importance in deciding the issue is that it affects how estoppel applies during future district court litigation (at least) for that patent. Should the estoppel apply just to the membership entity itself or should it also apply to the members of the membership entity? Should it apply to only the members who fund the IPR?

From Judge Newman’s and Judge Taranto’s comments, apparently this is an issue that is percolating now in the courts. So, look for more to come from the courts on this issue.

The oral argument was in the recently decided Rule 36 Judgment in VILOX TECHNOLOGIES, LLC v. UNIFIED PATENTS, LLC, No. 2019-2057 (Fed. Cir. Feb. 14, 2023). [Opinion]. The court ultimately didn’t reach the issue in this case because the patent at issue was affirmed as invalid — thus it won’t be asserted in future litigation and estoppel won’t be an issue.

The entire oral argument is available for download here: [Link]. However, the pertinent discussion concerning who is the real party in interest when a membership organization brings an IPR is available here:

Quote for the day

January 31st, 2023

I was down in Argentina earlier this month and had the opportunity to do some fishing for a fish known as the Golden Dorado (a.k.a., ‘El Tigre del Rio’). While I was a patent attorney literally on a fishing expedition, it was not the same type that the Federal Circuit was referring to in Monarch Assur. PLC v. US, 244 F.3d 1356 (Fed. Cir. 2001):

Having said that, we wish to make clear to plaintiffs and their counsel that the trial court is not expected to, nor should it, simply allow plaintiffs to embark on a wide-ranging fishing expedition in hopes that there may be gold out there somewhere, or worse, in hopes that the Government will get tired of litigating and settle an otherwise unprovable case.

Monarch Assur. PLC v. US, 244 F.3d 1356, 1365 (Fed. Cir. 2001).

Sound bite for the day

January 11th, 2023

Judge Wallach took senior status back in 2021. In the final oral argument over which he presided, he thanked the bar for its courtesy and hard work over the years. You can listen to his sign-off here:

There was another interesting sound bite during that oral argument. In an appeal from Judge Albright’s courtroom, Judge Wallach asked whether a person of skill in the art was a district court judge with twenty years of patent litigation experience:

You can listen to that entire oral argument here:

Quotes of the day

January 9th, 2023

Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 14).

An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). 

In re Google, 2022-2012 (Fed. Cir. January 9, 2023)(slip opinion at 10 citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) and DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). 

Sure sounds like the PTO should be required to provide evidence in a §101 rejection that something is well-understood, routine, and conventional to a skilled artisan at the time of the patent — not mere examiner or APJ opinions — or otherwise the rejection should fail for lack of substantial evidence.

Southeast Regional Patent Office — where will it be?

January 7th, 2023

by Bill Vobach

The recent appropriations Act makes provisions for a new satellite patent office in the Southeast Region of the United States. The new office will be located in one of these states within the next three years: Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas.

So, where will it end up? I suppose the most logical place for the satellite office is the Research Triangle area of North Carolina; but, that’s open to debate. Criteria for assessing where to locate the new office will include:

(A) The number of patent-intensive industries located near the site.

(B) How many research-intensive institutions, including institutions of higher education, are located near the site.

(C) The State and local government legal and business frameworks that support intellectual property-intensive industries located near the site.

At any rate, it will be interesting to see where the ultimate location will be. Personally, I’m pulling for Florida.

Here’s the pertinent text from the Act:

(b) Southeast Regional Office.–

        (1) In general.–Not later than 3 years after the date of 

    enactment of this Act, the Director shall establish a satellite 

    office of the Office in the southeast region of the United States.

        (2) Considerations.–When selecting a site for the office 

    required under paragraph (1), the Director shall consider the 

    following:

            (A) The number of patent-intensive industries located near 

        the site.

            (B) How many research-intensive institutions, including 

        institutions of higher education, are located near the site.

            (C) The State and local government legal and business 

        frameworks that support intellectual property-intensive 

        industries located near the site.

Audio bite of the day

January 4th, 2023

The audio bite of the day comes from Judge Moore during the oral argument of ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022).

I think you may be the only person I’ve ever heard . . . say that we have somehow created bright lines in 101. I can’t think of anything that’s further from the truth.

Chief Judge Moore, Oral Argument in ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022) at 00:34.

Article Suggestion: Revisiting presumption of enablement for an “anticipatory” reference

December 23rd, 2022

During the oral argument of In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) back in 2012, then-Chief Judge Rader expressed a concern about creating a blanket rule that would give any printed publication a presumption of enablement. He said:

My concern with a blanket rule that says a printed publication is presumed enabled is, what if it is really a cursory outline and it may recite each element of the claims but supplies no credible recitation of how that would be done.

Oral argument of In re Antor Media Corp. reported at 689 F.3d 1282 (Fed. Cir. 2012) at 14 minute 23 second mark, recording available at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=2011-1465.mp3

In In re Antor Media, the Federal Circuit was dealing with a situation where during patent reexamination a non-patent reference was presumed enabled by the Board. The applicant was entitled to rebut the presumption of enablement; but, absent such a rebuttal, the non-patent reference was presumed enabled. Part of the Federal Circuit’s reasoning was that the Patent Office does not have the resources to carry out tests or access to experts to prove that a reference is enabling, whenever such an enablement challenge is made. And, that it would be too onerous to do so. See Antor Media at 1289. Therefore, it is best to transfer the cost to the Applicant to rebut the presumption.

An article might wish to explore the recognition in Nantkwest, Inc. v. Iancu, 898 F.3d 1177, 1183 (Fed. Cir. 2018) that the USPTO actually did engage expert witnesses for purposes of that case — thus demonstrating that the USPTO does have access to expert witnesses when it chooses to do so. The article might also explore which is more onerous, (1) asking a patent applicant proceeding as a micro entity in the USPTO or in forma pauperis in federal court to spend money overcoming the presumption of enablement or (2) having the USPTO — an agency currently allotted $4.25 billion dollars for operating expenses in 2023 — provide proof of enablement (or maybe . . . . just find a better reference!).

Perhaps the more important issue is whether the presumption should apply to non-US patents, including non-patent prior art, during litigation or IPR’s. What reason is there for such a presumption in litigation or quasi-litigation between two private parties? Why should the patent owner be put to the cost of showing lack of enablement rather than the patent challenger backing up the challenge with proof of enablement? In last year’s APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021) decision, the Federal Circuit extended the presumption of enablement for AIA proceedings, noting that a published Japanese application (the Konno reference) was presumed enabled:

It is well-established that prior art patents and printed publications like Konno, a Japanese patent publication, are presumed enabling. See, e.g., Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008)Amgen, 314 F.3d at 1354-55Antor, 689 F.3d at 1288-89. We have held in the context of both district court litigation and patent prosecution that the burden of proving that a prior art reference is not enabling is on the patentee/applicant, and that it is error to shift that burden to the patent challenger/examiner. For example, in Impax, we explained that “when an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention.” 545 F.3d at 1316 (citation omitted). There, we relied on our earlier decision in Amgen— where we held that it was error to shift the burden of “proving the prior art reference’s enablement of the claimed invention on the alleged infringer,” id. (citing Amgen, 314 F.3d at 1355-56)—to conclude that “the district court correctly placed the burden of proving non-enablement on the patentee,” id. Likewise, in Antor, we explained that, “during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.” 689 F.3d at 1289. Once the examiner has made a prima facie case of anticipation, we held that “the burden shifts to the applicant to submit rebuttal evidence of nonenablement.” Id.

The Board, citing Antor and Amgen (among others), acknowledged this in its decision, but reasoned that “none of these cases were in the context of AIA trial proceedings.” Final Decision, 2019 WL 6999883, at *9. We disagree with the Board’s reasoning. We do not see a principled distinction between our cases holding that this presumption and burden apply during patent examination and in district court litigation, and AIA trial proceedings. Thus, regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art. It was error for the Board to suggest otherwise.

APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021).

I suppose another point that could be discussed in the article is that Congress knows how to give certain material a presumption of validity, which carries with it a presumption of enablement. Namely, claimed portions of US patents are presumed valid under 35 U.S.C. §282. With that presumption of validity comes a presumption of enablement. Given that Congress knew how to give multi-faceted presumptions (e.g., new, non-obvious, and enabled) to some types of references, should the Federal Circuit bestow presumptions on other types of references that Congress omitted?

Finally, the article might want to discuss what are the implications for prior art submission during patent prosecution. Judges of the Federal Circuit, most notably, Judge Lourie, sometimes complain during oral argument about the number of references that applicants submit during prosecution of patent applications. The current rule arguably expands the scope of “prior art” even further to cover non-enabled references that are presumed enabled. (Ironically, Judge Lourie authored the In re Antor Media opinion mentioned above.) For example, should an inventor of an enhanced submarine be required to cite Jules Verne’s “20,000 Leagues Under the Sea” because it is presumed enabled. Captain Nemo would say “No.”