Todd Dickinson (right) escorts Judge Newman off stage after receiving the AIPLA Excellence Award.
On Friday, October 26, 2012, at the Gala dinner event at the Annual Meeting of the American Intellectual Property Law Association (AIPLA), Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit received the 2012 AIPLA Excellence Award.
The Program for the event explained that the Excellence Award was presented to Judge Newman “in recognition of extraordinary leadership and service to the Intellectual Property Community, which is representative of a distinguished career marked by intellect, integrity, and an unwavering commitment to the administration of justice.”
The AIPLA has honored a number of excellent and worthy winners in the past including Chief Judge Howard T. Markey, Chief Judge Paul Michel, Judge Rich and Donald Dunner to name but a few. Judge Pauline Newman is now a recipient of this top industry recognition, and if you ask me she is deserving of being on the Mount Rushmore of this exclusive club.
On Sunday, September 30, 2012, Timothy Lee of Ars Technica wrote a terribly researched and demonstrably erroneous article attacking the Federal Circuit titled How a rogue appeals court wrecked the patent system. The article is a cheap shot, factually inaccurate and just plain embarrassing. Lee concludes the Federal Circuit is at the heart of all problems in the patent system, which is, itself, simply not true. Of course, conclusions are not evidence and if he could have backed up what he was saying with any kind of factual, true information then it would have been a matter of opinion. Instead, he was wrong about pretty much everything he wrote.
If most reporters knew anything about patents they would be embarrassed to have their names professionally associated with the drivel they try and pass off as news. But media ignorance of patents specifically and intellectual property generally is nothing new. Errors are so easy to document that it is virtually impossible to take them seriously. But then every once in a while an article crosses the line even for a know-nothing anti-patent zealot masquerading as a journalist.
Indeed, few articles have struck a nerve in me quite the way that a recent Ars Technica article did. The article is titled How a rogue appeals court wrecked the patent system. It is a cheap shot, factually inaccurate and embarrassingly incorrect “news” story that concludes the Federal Circuit is at the heart of all the problems in the patent system. A real Pinocchio tale.
How did the media get to such a low place, where sensationalism means more than truth? Once upon a time the media was viewed as a bastion of truth and integrity. They were viewed by the Founding Fathers as the virtual fourth branch of government. A free media would offer checks and balances against the three co-equal branches of the federal government, and by keeping the people informed would keep government in check. Oh how the mighty have fallen. There is hardly any such thing any more as a fair and objective media outlet. Simply put, truth doesn’t matter to the media. That which passes for news is full of errors, inaccuracies and outright lies. The public is being deceived, and in our little space the deception seems to be part of a coordinated effort to destroy the patent system as we know it.
Litigation involving incorrect claims of small entity status is very rare. In the 1998 case of DH Technology, Inc. v. Synergystex International, Inc., the small entity issue fee was paid for the asserted patent, even though it was later discovered that the patentee had over 500 employees (i.e., was now a “large entity”) at the time this issue fee was paid. Even so, the Federal Circuit overturned a district court ruling that the asserted patent had lapsed and was therefore unenforceable because the patentee had “incorrectly paid the small entity issue fee and because the statutorily-permitted time for correcting the error had passed.” Instead, the Federal Circuit held that 37 CFR § 1.28(c) (allowing an erroneous claim of small entity status and the erroneous payment of the small entity issue fee to be excused by paying the deficiency owed) controlled so that the patentee could still rectify this error (and underpayment of the issue fee), even though well outside the 1 year and 3 month “after the date of the notice of allowance” period specified in 37 CFR § 1.317(c) for correcting a good-faith error in claiming small entity status, as well as making up the deficiency for incorrectly paying the small entity issue fee.
DH Technology is the “easy case” where small entity status is lost due to a change in size of the patentee. But small entity status under 37 CFR §§ 1.27(a)(1) (person) or 1.27(a)(2) (small business concern) may also be lost if the rights in the invention are assigned, granted, conveyed, or licensed (or are subject to an obligation under contract or law to assign, grant, convey, or license, any rights in the invention) to someone other than a small entity (e.g., an entity having more than 500 employees). That was the situation in the recent case of Outside The Box Innovations. L.L.C. v. Travel Caddy, Inc. where an agreement between the patentee (Travel Caddy) and its distributor/seller (The Rooster Group, a large entity of greater than 500 employees) of the patented tool cases was deemed by the district court to contain a patent license clause for the purposes of 37 CFR § 1.27(a)(2). Even worse, the district court held that Travel Caddy had “committed inequitable conduct by claiming small entity status and paying reduced PTO fees, and that this conduct rendered both the ‘992 and ‘104 patents permanently unenforceable.”
Five years ago, on Thursday, September 20, 2007, the United States Court of Appeals for the Federal Circuit issued two decisions that provoked much debate, and which deserve to be remembered. One the Court got right and, sadly, one the Court got excruciatingly wrong.
The first case, In re Comiskey, seemed rather straight forward and certainly not earth shattering, except perhaps for one issue – namely that the Federal Circuit issued its decision on patentable subject matter grounds without patentable subject matter ever being an issue during prosecution or on appeal.
In Comiskey, one set of claims were directed to the purely mental process of arbitrating a matter and deciding the outcome. The Federal Circuit did not waste time pointing out that arbitration is extremely well known and could hardly be considered patentably new or nonobvious, rather they cut to the chase and explained that the law does not allow patents to be issued on particular business systems that depend entirely on the use of mental processes, deciding that “the application of human intelligence to the solution of practical problems is not in and of itself patentable.”
The America Invents Act (my how I hate that title!) has caused much change and rethinking about how patent law will be practiced in the future, especially patent prosecution in the USPTO. A slew of new (and in some cases, recast) procedures will be instituted to permit validity challenges, both pre-grant and post-grant. One of those new procedures is post-grant review which permits (under new 35 U.S.C. § 321(b)) a “request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraphs (2) or (3) of section 282 (relating to invalidity of the patent or any claim).” As those familiar with patent infringement litigation recognize, section 282 (aka, 35 U.S.C. § 282) referred to by new 35 U.S.C. § 321(b) also defines what defenses in may be raised in patent litigation “involving the validity or infringement of a patent”:
(1) Noninfringement, absence of liability for infringement, or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,
(4) Any other fact or act made a defense by this title.
In step with these new procedures authorized by the AIA, the USPTO has promulgated corresponding rule packages at a “fast and furious” pace. As part of the post-grant review rules package, the USPTO has interpreted what new 35 U.S.C. § 321(b) means in terms “grounds” that may be raised. See Ken Nigon’s Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents. Interestingly, the USPTO post-grant review rules package has interpreted new 35 U.S.C. § 321(b), and more specifically 35 U.S.C. § 282(2), to mean that not only are 35 U.S.C. § 102 (novelty) and 35 U.S.C. § 102 (obviousness) proper grounds for a post-grant review request, but so is 35 U.S.C. § 101 (inventions patentable).
Some have said is seems bizarre that the panel decision in Mirror Worlds did not mention or cite Akamai, and while that is perhaps a fair point at first glance, the cases are quite different. It seems to me that people are putting to much emphasis and question where it doesn’t belong. At the end of the day in Mirror Worlds the panel simply agreed with the district court that the plaintiff did not offer evidence sufficient to allow a reasonably jury to find in their favor. While a passing reference to Akamai might have been nice, it seems to me as if it was hardly required given the procedurally dispositive issues associated with a JMOL due to failure to offer required proof. See Apple Operating System Does Not Infringe.
On Tuesday, September 4, 2012, Apple scored a big victory at the United States Court of Appeals in their patent infringement dispute with Mirror Worlds, LLC. The Federal Circuit, in an opinion written by Judge Lourie and joined by Judge Newman, upheld the district court’s entry of judgment as a matter of law, which erased a $208.5 million damages award given by the jury. See Mirror Worlds, LLC v. Apple, Inc. (Fed. Cir., Sept. 4, 2012).
Before you start to wonder whether little Mirror Worlds was out lawyered at the CAFC you can rest assured they were MORE than adequately represented. David Boies, one of the most prominent appellate attorneys in the United States, represented Mirror Worlds. Boies was also joined by Don Dunner, who is regarded as the Dean of appellate advocates at the Federal Circuit. Of course, Apple was also capably represented by William Lee of Wilmer Cutler Pickering Hale and Dorr LLP, himself no stranger to high stakes patent litigation and appellate practice before the Federal Circuit.
Before diving into the particulars of the case, it is worth noting that the presence of Boies, who is an accomplished Supreme Court advocate, suggests that there will be an appeal to the United States Supreme Court. Dunner is no stranger to successful appellate practice before the Federal Circuit and he and his team would easily be considered the A-Team. But there is an art associated with presenting a case so that it offers maximal opportunity to achieve one of the coveted spots on the Supreme Court’s calendar, which I suspect is why Boies joined Dunner in representing Mirror Worlds. Thus, stay tuned for the next chapter!
Although Judge Newman’s dissenting opinion came next in the en banc decision, I’m going to discuss Judge Linn’s dissenting opinion first. That Judge Linn was the author of this dissenting opinion is unsurprising, given that he had authored the now overruled BMC Resources opinion, as well as the panel opinion in McKesson Technologies. What is somewhat surprising is the strident tone that Judge Linn used to characterize the per curiam majority opinion: “this court assumes the mantle of policy maker.” Not satisfied with applying that moniker alone, Judge Linn also accused the per curiam majority of “effectively rewrite[ing]” 35 U.S.C § 271(a) and 35 U.S.C § 271(b). (In that regard, I think Judge Linn’s accusation goes a bit overboard).
In challenging the correctness of the per curiam majority ruling, Judge Linn’s dissenting opinion makes four points. Point No. 1 is that the per curiam majority’s approach “is contrary to both the Patent Act and the Supreme Court’s longstanding precedent that “if there is no direct infringement of a patent there can be no contributory infringement,” citing Aro Manufacturing and Deepsouth Packing, as well as the Federal Circuit’s Joy Technologies. But as discussed above, none these cases specifically holds that direct infringement of the claimed method for the purposes of liability for indirect infringement requires that all steps of the claimed method must be performed by a single actor. Judge Linn’s further assertion that, in enacting 35 U.S.C §§ 271(e)(2), (f), and (g), “Congress did not give the courts blanket authority to take it upon themselves to make further policy choices or to define ‘infringement’” still doesn’t address why direct infringement for the purposes of indirect infringement liability requires all infringing acts to be performed by a single actor. (As I discuss below, enactment of 35 U.S.C §§ 271 (f) and (g) also reflects Congress’ intent to close “loopholes” in the primary infringement statute, 35 U.S.C §§ 271 (a)). Judge Linn also makes the comment that Congress “removed joint-actor patent infringement liability from the discretion of the courts” in 1952, but cites to absolutely no legislative history to support this comment.
I’ve already commented on the conundrum created by the Federal Circuit’s joint infringement doctrine, and especially its impact on protecting interactive computer-based technologies. See The Impact of the CAFC’s Joint Infringement Conundrum on Protecting Interactive Technologies. Two cases involving such joint infringement (sometimes referred to as “divided infringement”) issues were accepted by the Federal Circuit for en banc review. The first was the 2010 case ofAkamai Technologies, Inc. v. Limelight Networks, Inc., which held there was no joint infringement of a patented method for content delivery service where the customer and the provider of the service each performed some but not all steps. The other was the 2011 case of McKesson Technologies, Inc. v. Epic Systems Corp., which held there was no joint infringement of a patented interactive electronic method for communicating between healthcare providers and patients about personalized web pages for doctors because the initial step of the patented method was performed by the patient while the remaining steps were performed by the software provided by the healthcare provider.
In a collective decision of almost 100 pages total, the en banc Federal Circuit has now spoken with an extremely discordant and fragmented voice on this joint infringement issue (or as an exasperated dissenting Judge Newman characterized the majority opinion, dodged this issue) in Akamai Technologies and McKesson Technologies(August 31, 2012). In an opinion over 30 pages long, a bare six judge per curiam majority (Chief Judge Rader and Judges Lourie, Bryson, Moore, Reyna, and Wallach) found it unnecessary to resolve the joint infringement issue. Instead, the per curiam majority ruled that the Akamai Technologies and McKesson Technologies cases should be resolved by applying the doctrine of inducing (indirect) infringement under 35 U.S.C § 271(b). The majority also ruled that such indirect infringement could occur as long as all steps of the a claimed method are performed, but didn’t requiring that all steps be performed by a single actor, expressly overruling the 2007 case of BMC Resources v. Paymentech, and at least implicitly overruling the 2008 case of Muniauction, Inc. v. Thomson Corp. (no joint infringement of patented electronic method for conducting auctions of financial instruments where auctioneer and bidder each perform some but not all of the steps).
For at least the past 15 years, the legal, technical and academic communities have been debating the patentability of business methods and software. Despite much negative press ink, talk, legislative activity and court opinions, the answer with respect to patent eligibility is still a resounding and categorical “yes.” That’s the easy part. What types of business methods and software exactly are patentable? That is the difficult question to answer.
What is Patentable?
U.S. Patent Law recognizes four broad categories of inventions eligible for patent protection: processes; machines; article of manufacture; and compositions of matter. 35 U.S.C. Section 101. Despite the oft-quoted recognition that the patent laws were made to cover “anything under the sun that is made by man,” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong. 2d. Sess., 5 (1952)), the U.S. Supreme Court, has long recognized that there are three exceptions to these four broad patent-eligibility categories: laws of nature; physical phenomena; and abstract ideas. Id. These three exceptions are necessary because “[s]uch discoveries are manifestations of … nature, free to all men and reserved exclusively to none.” Id. (citations omitted). Yet, “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm,” and “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Dr. Triantafyllos Tafas at Jefferson Medal Award Dinner, June 4, 2010.
On April Fool’s day 2008 the entire patent field released a great sigh of relief (and wondered if the reports of success were only a joke). On that day Dr. Triantafyllos Tafas and GlaxoSmithKline (“GSK”) succeeded in enjoining the U.S. Patent Office from implementing its proposed continuation and claim restriction rules, “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications” (the “Final Rules”), which sought to revise the rules of practice in patent cases relating, in part, to the filing of continuing applications and requests for continued examination.
Although such Final Rules were widely criticized by most companies in the United States, a sole individual, Dr. Triantafyllos Tafas, a co-inventor of a computerized automated microscope, stood alone against the Rules package for nearly three months against the might of the USPTO. Dr. Tafas filed suit because he truly believed the U.S. patent system was being manipulated by a few large entities to the significant detriment of research-intensive entities such as emerging companies, universities, and research institutes, particularly those in the chemical, bioengineering, pharmaceutical, and biotech fields. Dr. Tafas’ beliefs grew from his experience attempting to start his company in Europe where he found few investors willing to invest in small companies whose only major asset was a patent portfolio. However, he found investors in the U.S. to be much more respectful of U.S. patents and willing to invest in companies with a good patent portfolio, irrespective of whether they were owned by a large multinational or the new kid on the block. This cemented Dr. Tafas’ belief in the importance of the U.S. patent system.
Five years ago today, on Monday, August 20, 2007, while many of us were otherwise preoccupied with the impending doom of the claims and continuations rules promulgated by the Patent Office, the United States Court of Appeals for the Federal Circuit unceremoniously changed the law as it applies to the awarding of willful damages. Sitting en banc in In re Seagate Technology, LLC, the majority of the Court determined that the negligence standard for determining whether to award enhanced damages for willful infringement is not the appropriate standard, but rather that a reckless standard should be and now is the law of the land.
Curiously, the Federal Circuit announced this significant change to the law relating to willfulness in a case that related to a discovery dispute. Seagate Technology, LLC petitioned the Federal Circuit for a writ of mandamus directing the United States District Court for the Southern District of New York to vacate Orders compelling disclosure of materials and testimony that Seagate claimed was covered by the attorney-client privilege and work product protection. The Court, per Judge Mayer, would say that this case requires confrontation “the willfulness scheme and its functional relationship to the attorney-client privilege and work product protection.”
When the Supreme Court remanded the Federal Circuit’s original panel decision in AMP v. USPTO for reconsideration in view of Mayo Collaborative Services v. Prometheus Laboratories, Inc., I said that nothing would change in that remand. In particular, I predicted that the same two-to-one majority from that Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) would again rule that the claimed isolated DNA sequences were patent-eligible under 35 U.S.C. § 101. My primary reason for my confidence in that prediction was that the Supreme Court’s 1980 decision in Diamond v. Chakrabarty (man-made living organism is patent-eligible) would control on that claimed subject matter, not Mayo Collaborative Services. See Chakrabarty Controls on Isolated DNA Sequences, not Mayo*.
So guess what happened in the AMP remand of? As I predicted, simply “déjà vu”: the same two-to-one majority ruling for essentially the same reasons, as well as confirming that Chakrabarty (not Mayo Collaborative Services) controlled on the patent-eligibility of the claimed isolated DNA sequences. For the full decision see AMP v. USPTO II (August 16, 2012).
A key provision of the Hatch-Waxman Act resides in 35 U.S.C. § 271(e)(1) which provides immunity from a patent infringement suit where the testing of the patented invention is for the purpose of securing regulatory approval from the FDA. Or to use the specific language of 35 U.S.C. § 271(e)(1), there is no patent infringement if the use of the patented invention is “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.”
This Hatch-Waxman provision, commonly known as the “safe harbor,” has been construed twice by the Supreme Court, and in an expansive manner to immunize alleged infringing activity. First, in the 1990 case of Eli Lilly & Co. v. Medtronic, Inc., the Supreme Court ruled that this “safe harbor” applied to medical devices, not just drugs as was originally believed (including by the respective House and Senate floor managers for the Hatch-Waxman Act). In fact, the basis for the holding in the Medtronic case makes this “safe harbor” essentially applicable to the testing of any patented invention that is for the purpose of securing regulatory approval from the FDA (e.g., food additives, cosmetics, etc.). See Guttag, “The Ever Expanding ‘Safe Harbor’ of Hatch-Waxman: The Merck v. Integra Lifesciences Case,” Cincinnati Bar Association Report, page 16 (August 2005).
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.