Rule 36 Affirmances at the Federal Circuit – Week of October 8, 2018

By Steve Brachmann & Gene Quinn
October 16, 2018

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.

Tuesday, October 9th

Endotach LLC v. Cook Medical LLC

Endotach appealed this case from the Southern District of Indiana after U.S. District Judge Larry J. McKinney granted a motion on summary judgment made by defendant Cook Medical. In that order, Judge McKinney had denied motions made by Cook Medical that its endovascular graft material didn’t infringe upon Endotach’s U.S. Patent No. 5122154, titled Endovascular Bypass Graft. However, the district court determined that the ‘154 patent was invalid as anticipated by prior art submitted by Cook Medical on 35 U.S.C. § 102(e) and § 102(g) grounds. The district court also struck down a motion for reconsideration filed by Endotach in which the plaintiff argued that the patentee was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to practice. The Federal Circuit’s Rule 36 affirmance was issued by Circuit Judges Timothy Dyk, Jimmie Reyna and Todd Hughes.

Mantis Communications, LLC v. Edible Arrangements, LLC, et. al.

Mantis Communications filed this appeal from a series of patent infringement suits filed in the Eastern District of Texas against Edible Arrangements, Culver Franchising, Regal Cinemas, Baskin-Robbins and Papa Murphy’s. Last November, U.S. District Judge Rodney Gilstrap entered a final judgment in all these cases finding seven patents asserted by Mantis Communications and covering mobile data communications invalid under 35 U.S.C. § 101 for subject matter eligibility. Defendants had argued that the asserted patent claims related to the abstract idea of sending, receiving, and redeeming or validating marketing offers, and that the claims failed to add significantly more to the abstract idea to result in an inventive concept. The Federal Circuit’s Rule 36 affirmance was issued by Circuit Judges Dyk, Evan Wallach and Richard Taranto.

Wednesday, October 10th

In re: James Patterson, Nathan Moody

Patent applicants James Patterson and Nathan Moody appealed the rejection of U.S. Patent Application No. 20120221936, titled Electronic Book Extension Systems and Methods and assigned to Google. The claimed invention covered an electronic book system that allows third parties to make available to users extensions or add-ons that provide additional features or functions relating to a book. In May 2017, the Patent Trial and Appeal Board (PTAB) issued a decision affirming an examiner’s final rejection of all 27 claims of the ‘936 patent application. The examiner had rejected claims as anticipated by a 2011 patent application (“Ho”) covering an electronic book reader in which audio files play automatically, while the remaining claims were rejected as obvious in light of a combination of Ho and other patent applications covering e-book readers. The Federal Circuit’s Rule 36 affirmance was issued by Chief Judge Sharon Prost along with Circuit Judges Kimberly Moore and Todd Hughes.

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company

German drugmaker Erfindergemeinschaft UroPep filed a patent infringement suit against Eli Lilly in the Eastern District of Texas back in May 2015, asserting a patent covering a method of administering inhibitors of phosphordiesterase to treat prostate diseases. After a trial, Eli Lilly was found to infringe the patent through its sale of Cialis for the treatment of benign prostatic hyperplasia (BPH); Eli Lilly also didn’t prevail in its argument that the patent was invalid for indefiniteness. A jury verdict entered last April awarded $20 million in reasonable royalties to UroPep and, in a judgment on the merits, U.S. District Judge William Bryson awarded an ongoing royalty rate of 5.68 percent of all Cialis five milligram sales for treating BPH during the post-verdict period. Eli Lilly appealed to the Federal Circuit and a Rule 36 affirmance was issued by Chief Judge Prost and Circuit Judges Moore and Hughes.

In re: Baxter Corporation Englewood

Baxter Corporation Englewood appealed the final rejection affirmed by the PTAB relating to claims from U.S. Patent Application No. 20120185277, titled Centralized Sterile Drug Products Distribution and Automated Management of Sterile Compounding Stations. The PTAB issued a decision on request for rehearing last August after the patent applicant argued that the claims, which were rejected on 35 U.S.C. § 101 grounds for being directed to non-statutory subject matter, were patent-eligible in light of the Federal Circuit’s 2016 decision in BASCOM Global Internet v. AT&T Mobility LLC. However, the PTAB held that BASCOM didn’t alter the determination and found that the claims don’t include an inventive concept for the purposes of the Alice patent-eligibility test. This Rule 36 affirmance was issued by Chief Judge Prost and Circuit Judges Moore and Hughes.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Steve Brachmann

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 11 Comments comments. Join the discussion.

  1. Jeff October 17, 2018 3:29 am

    We could save a lot of money on judicial salaries if we just wrote a small app that randomly selected numerous cases for automatic Rule 36 affirmations, just enough to not trigger huge backlash, while channeling the other cases to humans. Or to slightly larger AI programs trained to mimic most of the perplexing things that real judges do. This would not be any less frustrating to inventors and entrepreneurs, but at least wouldn’t waste as much money.

  2. Ternary October 17, 2018 11:53 am

    Without a doubt, a rule based AI program as suggested by Jeff running on a general purpose computer, using clear definitions would do a better job (or at least not a worse job) than most Examiners, Judges and Justices in patent cases.

    Jeff’s solution is even simpler. For Rule 36 automation, you only have to install a 3-state pseudo-random number generator (Affirm, Reverse, Remand) and assign the result to a case. The great advantage of Jeff’s solution is that you really don’t have to wait for a decision. You file on-line, pay a $55 fee and get an immediate decision. Under political pressure you can tweak the probability of decisions: business methods (bm) P(bm=reject)=.92; software invention (sw) P(sw=reject)=.79; medical diagnostics (md) P(md=reject)=.67. Huge savings and Affordable random justice for all.

  3. concerned October 17, 2018 1:39 pm

    Guys:

    Great idea, however, you missed the real reason for Rule 36.

    Rule 36 is a cousin to the rule of 72 for investment purposes to determine time for an investment to double (rate of return divided into 72). Rule 36 represents at what time frame will the United States be 36th in the world patent community. Currently, we are 12th or 1/3 there after 4.33 years after Alice. To approximate the time frame to get to 36th in world standings, take the average number of Rule 36 rejections per week, for example 5 as in this article, and divide into 72.

    We will be 36th in the patent world community in approximately 14 years (72/5). Pretty good rule estimator since after 4 years 4 months (Alice) we are at 1/3 of the 14 years time frame there and find the United States 1/3 there in the patent community (12 of 36).

  4. B October 18, 2018 8:33 am

    The only thing scarier than some of these Rule 36 affirmances, are the published opinions that confirm our fears

  5. Night Writer October 19, 2018 11:51 am

    It is just unbelievable that the CAFC thinks it is OK to continue these Rule 36 affirmances.

    Again, what Trump should do –and he is the only one wild enough to do it–is dissolve the CAFC and reform it. That way he could get rid of all these Google appointments who were chosen for their lack of education in science and lack of character.

  6. Patent Investor October 19, 2018 1:43 pm

    You guys are missing the most obvious part of this construct. Potential Rule 36 affirmances will only be fed into the randomization computer for cases unfavorable to the patent owner.

  7. Joachim Martillo October 22, 2018 6:30 am

    The LLC prosecuting the 07/773,161 Application for a patent to my invention, Software Configurable Network Switching Device, was denied standing in the role of plaintiff under 35 USC § 145 even though the USPTO twice determined that this LLC owned the application during the course of prosecution.

    The CAFC upheld Judge Ellis (the Manafort trial judge) in a Rule 36 Affirmance on August 14, 2018.

    On October 12, 2018 I filed a Complaint to Quiet Title in Suffolk Superior Court of the Trial Court of the Commonwealth of Massachusetts.

    This case may of interest because it underscores the distinction between

    1) the quieting of title to a patent or a patent application and

    2) the quieting of validity to a claim within an issued patent.

    The former is possible in state court. At present there is no action to quiet claim validity although one is desperately needed.

    This case may also be of interest because it may be the last case of a patent application prosecuted while it was semi-openly flagged in SAWS.

  8. Joachim Martillo October 22, 2018 3:41 pm

    PatentInvestor@October 19, 2018 1:43 pm

    I have wondered for a while whether there are ever Rule 36 Affirmances favorable to an Applicant (after Decision on Appeal) or to a Patent Owner (after Final Written Decision).

    Does anyone know of such Rule 36 Affirmances?

  9. Joachim Martillo October 22, 2018 3:52 pm

    I should add that the USPTO would be appealing against an Applicant to the CAFC

    1) if the Applicant chose to file a complaint under 35 USC § 145 (as the LLC did, which was prosecuting the application for letters patent to my invention) instead of the alternative, which is filing an appeal under 35 USC § 141, and

    2) if the DCEDVA determined that the Applicant was entitled to letters patent to his invention.

  10. Joachim Martillo October 22, 2018 4:36 pm

    Just to summarize: title validity and claim validity are very different, and the US patent system will be very sick until claim cancellations require due process in an Article III tribunal and compensation for losses just as taking of property requires due process and fair compensation for value.

    The US patent system also needs a quiet claim validity action comparable to a quiet title action.

  11. B October 29, 2018 7:21 pm

    “The PTAB issued a decision on request for rehearing last August after the patent applicant argued that the claims, which were rejected on 35 U.S.C. § 101 grounds for being directed to non-statutory subject matter, were patent-eligible . . . . .”

    Not a single patent application rejected under 101 has survived the CAFC.

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