UPDATED 5/12/2013 at 3:31pm

In what can only fairly be characterized as utterly ridiculous, 5 of the 10 judges on the Federal Circuit to hear CLS Bank v. Alice Corporation en banc would find that claims that satisfy the machine-or-transformation test are not patentable. While I think it is inappropriate to find the systems claims patent ineligible that isn’t what makes the decision utterly ridiculous. The decision is an embarrassment because 5 other judges would have found the systems claims patent eligible. Thus, we have an even split of opinion at the Federal Circuit.

The Federal Circuit decision in CLS Bank v. Alice Corp. is now being horribly mischaracterized in the media, which will now only further complicate the matter in the court of public opinion. This decision offers no precedent whatsoever regarding systems claims because it was a tie. Alice Corporation loses the systems claims not because that is the law of the land announced by the Federal Circuit, but rather because a single district court judge determined that the systems claims were patent ineligible. Had that same district court judge found the systems claims patent eligible then Alice would have prevailed.

In other words, the Federal Circuit is essentially abdicating its authority relative to whether systems claims are patentable to the district courts and presumably also to the Patent Trial and Appeals Board at the United States Patent and Trademark Office. Whatever the district court or PTAB does is just fine. Well, not quite.

On Friday, December 7, 2012, the United States Court of Appeals for the Federal Circuit issued a precedential opinion in Raylon v. Complus Data that gives hope to defendants everywhere who face objectively baseless patent infringement claims. For a very long time I have preached that the tools to deal with the bad actors in the patent community (i.e., patent trolls) exist if only the Federal Circuit and the district courts would stand up to the challenge. Rule 11 of the Federal Rules of Civil Procedure give district courts the ability to sanction litigants for frivolous court filings. Unfortunately, Rule 11 is almost never used. Today, however, the Federal Circuit determined that the district court abused its discretion when it denied the defendants’ Rule 11 motions.

At the conclusion of the decision Judge Prost, writing for the majority, wrote:

We reverse the district court’s holding that there was no Rule 11 violation and remand to the district court to determine, in the first instance, a proper sanction. Because the court’s evaluation of § 285 relied on its Rule 11 analysis, we vacate the district court’s denial of attorneys’ fees and costs, and remand for the court to reconsider defendants’ motions in light of our decision.

Of particular note, however, is that Judge Reyna only joined in the decision, but chose to file a separate concurring opinion. Judge Reyna explained that he differed only slightly with his colleges (Judges Prost and Moore). Judge Reyna would not have preferred not to remand the issue for further consideration on the merits of the defendants’ request for attorneys fees, but rather would have found this case exceptional and remanded only on the issue of what sanctions would be appropriate pursuant to 35 U.S.C. § 285.

The annual meeting of the American Intellectual Property Law Association (AIPLA) was held last week in Washington, DC at the Marriott Wardman Park Hotel. The event was attended by well in excess of 2,000 attorneys predominantly from the United States, but with a strong contingency of attorneys from foreign firms. I personally had the opportunity to meet with attorneys from Canada, Japan, Korea and the United Kingdom.

One of the presentations I attended was the panel moderated by Todd Dickinson, who is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office. Also on this panel were Judge Sharon Prost of the United States Court of Appeals for the Federal Circuit, USPTO Director David Kappos, Eli Lilly General Counsel Bob Armitage, Senior Counsel to the Senate Judiciary Committee Aaron Cooper and Oblon Spivak attorney W. Todd Baker.

Dickinson led an informative question and answer session centering on the expectations and early results from the various changes to the patent system implemented by the America Invents Act. The title of the panel discussion was simply – AIA – Will the New System Work? Not surprisingly, everyone was in agreement that the system will work, even if only because it has to work since now it is the law.

Those who have been following comments on the split decision in CLS Bank v. Alice Corp. case will be unsurprised to learn that yesterday the Federal Circuit ordered a rehearing en banc in the matter, vacating the panel decision originally decided on July 9, 2012.

The questions to be addressed on appeal are:

1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The parties have been invited to file new briefs on these questions, and the case will be heard based on the original briefs and any new briefs filed.

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.”

The decision of the Supreme Court in Prometheus has been predicted to have implications for business method patentability, but the decision in what will surely become known as the Alice case provides an early indication that the CAFC may endeavour to limit its scope. Whether the claimed subject matter lies in the reality of patent-eligible subject-matter or is more correctly located in the Wonderland of abstract ideas is an issue that has been debated on both sides of the Pond, and on which the Dodo or the King of Hearts in his judicial capacity would surely have had an opinion if it had been brought to their attention. In the US there appears to be ample scope for further debate.

The patentees Alice Corporation are based in Australia and are a joint venture between a private company and National Australia Bank Limited. Their website [1] explains that they were established in Melbourne in 1995 and have applied for and obtained patents on their financial market innovations worldwide, including in the US, UK and other major financial centres. The patented innovations cover the trading of risk, investment, lending, exchanging and similar products. Alice exploits its inventions by licensing selected entities. Neither Alice nor Ian Shepherd who was the inventor has a significant web presence, and in contrast to the situation in Prometheus there appears to be no back-story that throws light on the merits or otherwise of the alleged invention.

In what seems to be a continuing trend, the United States Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees.  See MarcTec, LLC v. Johnson & Johnson (Jan. 3, 2012).

MarcTec originally filed suit in the Southern District of Illinois against Cordis Corporation and Johnson & Johnson, who is the parent company of Cordis Corporation, but not otherwise involved in making or selling the accused product. MarcTec alleged Cordis infringed U.S. Patent Nos. 7,128,753 and 7,217,290. After claim construction, the district court granted Cordis’s motion for summary judgment of noninfringement. On a prior appeal the Federal Circuit then affirmed the district court’s construction and the judgment of noninfringement based on that construction.  See the non-precedential opinion in MarcTec v. Johnson & Johnson 2009-1457.

The CAFC’s split panel decision this past week – In re Construction Equipment Company – extends the PTO’s authority to reexamine a patent even where its validity has already been adjudicated and confirmed by the courts.  Yet the CAFC once again fails to explain how a PTO reexamination finding that a patent is invalid effects an earlier judicial determination that the same patent is valid and infringed.

In re Swanson

The authority of the PTO to reexamine a patent that has previously been found to be valid by the courts was established by the CAFC’s 2008 decision, In re Swanson.  There, the patent owner sued for infringement.  A jury found that the patent was not infringed, but additionally found that the patent was not invalid over the so-called Duetsch reference.  The trial judge denied the various post-trial motions, confirming the jury’s verdict.  And the CAFC affirmed the trial judge’s judgment regarding validity, explicitly finding that “Deutsch” did not anticipate the patent claims.

In Ultramercial, the patentee (Ultramercial) asserted that U.S. Pat. No. 7,346,545 (the ‘545 patent) was  infringed by Hulu, LLC (“Hulu”), YouTube, LLC (“YouTube”), and WildTangent,  Inc. (“WildTangent”).  The ‘545 patent,relates to a method for distributing copyrighted products (e.g., songs, movies,  books, etc.) over the Internet for free in exchange for viewing an advertisement with the advertiser paying for the copyrighted content.  What is interesting in this case is that Claim 1 of the ‘545 patent that is allegedly infringed by Hulu, YouTube, and  WildTangent recites a method having not one, not two, but eleven total steps.  (Side note:  One might wonder how anyone can infringe an eleven step method.)  WildTangent’s motion to dismiss for failure to state a claim was granted by the district  court based on the claimed method being patent-ineligible under 35 U.S.C. § 101.  (Hulu and YouTube were dismissed from the  case apparently for other reasons.)

The largest patent infringement verdict in U.S. history did not stand the test of time at the United States Court of Appeals for the Federal Circuit, saving Abbot Laboratories the tidy sum of $1.67 billion, at least for now. With a loss such as this one can only expect the inevitable request for reconsideration, request for an en banc hearing in front of the entire Federal Circuit and an appeal to the United States Supreme Court. We haven’t heard the last of this case by a long shot, but for today Abbott has to be extremely pleased while the patent owners, Centocor Ortho Biotech and New York University, have no doubt seen better days.

The patent infringement suit involves pharmaceutical antibodies used to treat arthritis. The patent owners, Centocor Ortho Biotech, Inc. and New York University sued Abbott Laboratories, Abbott Bioresearch Center, Inc., and Abbott Biotechnology Ltd. alleging that Abbott’s Humira® antibody infringed claims 2, 3, 14, and 15 of U.S. Patent No. 7,070,775. After a five-day trial, the jury found Abbott liable for willful infringement. The jury rejected Abbott’s argument that the asserted claims were invalid, and awarded Centocor over $1.67 billion in damages.

On March 10, 2010, District Court Judge Kathleen O’Malley was nominated by President Barack Obama to succeed Alvin Schall, who retired from the United States Court of Appeals for the Federal Circuit. Earlier today, Judge O’Malley was confirmed by the United States Senate, see Senate Confirms Five Judicial Nominees.  O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law.  O’Malley will join 15 other colleagues on the Federal Circuit, 6 of who are on senior status.

Judge O’Malley has served on the the United States District Court for the Northern District of Ohio since being appointed by President William J. Clinton on September 20, 1994 and confirmed by a voice vote of the Senate on October 12, 1994.  See Thomas: Nomination PN1786-103.

Yesterday the United States Court of Appeals for the Federal Circuit issued a precedential opinion in American Medical Systems, Inc. v. Biolitec, Inc. The decision dealt with the scintillating topic of whether a term in the preamble of the claim is limiting.  The district court determined it was, and so did the dissenting Judge on the panel, Judge Dyk.  The majority of the panel (Judges Bryson and Prost), however, determined it was not limiting, and I think correctly reached that decision.  What is of particular interest, however, is the fact that Judge Dyk in dissent came out and said that it was time for the Federal Circuit to en banc decide the appropriate standard for when the preamble is limiting because any fair reading of Federal Circuit “preamble jurisprudence” is difficult to reconcile.  While I disagree with Judge Dyk on this case, I am all for settling of the law and in areas where there are conflicting panel decisions, which is pretty much everywhere.  The Federal Circuit should aspire to certainty wherever possible.  After all, that was why the Court was formed in the first place.