Is there an Anti-Patent Bias at the Federal Circuit?

The AIPLA 2014 annual meeting is now several weeks ago, but there is a story that I have neglected to write thus far. I have been pondering what to say and how to say. On Friday, October 24, 2014, Judge Ray Chen of the United States Court of Appeals for the Federal Circuit delivered the luncheon address to a packed audience at the Marriott Wardman Park Hotel in Washington, DC. Those who know Judge Chen know he is an excellent speaker, funny, occasionally self deprecating, and always informed and thoughtful. His address to the AIPLA audience was no exception.

Ever since Judge Chen delivered one particular line I have been thinking about what he said, largely missing any other point he raised I’m afraid. Judge Chen said that he did not think it was particularly helpful for some in the patent community to refer to Judges on the Court as being anti-patent. I don’t know that Judge Chen was speaking about me directly, but there is no doubt that over the past several years I have become more vocal about those who hold anti-patent views. I have increasingly pointing out that the United States Supreme Court is openly hostile to patent owner rights. I have also increasingly pointed to what I refer to as anti-patent decisions from the Federal Circuit and noticing that there appears to be a clear philosophical and ideological split between the Judges, with some Judges routinely issuing or joining rulings that are adverse to the patent owner, while other Judges routinely issuing or joining rulings that favor the patent owner.

The label “anti-patent” is not meant as a criticism or insult. Instead I mean it is a purely descriptive way that recognizes a distinct and very real viewpoint; one that we have seen periodically throughout history but which is inconsistent with what the Framers believed. Therefore, I disagree with Judge Chen that it is not helpful to recognize that there are Judges on the Federal Circuit who, based on their written decisions, show a tendency to eschew a pro-patent viewpoint.

Perhaps there is a better way to articulate it than simply saying there are Judges who hold anti-patent views, perhaps I could say that certain Judges on the Federal Circuit seem uncomfortable with new technologies, or that certain Judges are uncomfortable with the nature of a patent, which is to exclude. I suppose I could say that there are some Judges on the Federal Circuit who believe less should be patentable, despite what the statute says. Regardless of whether there may be more nuanced ways to characterize what is transpiring at the Federal Circuit, the reality does not change. There is a growing body of case law form the Federal Circuit clearly shows a wing of the Court that holds views and opinions that are simply inconsistent with any fair understanding of the concept of a strong patent grant, and inconsistent with the rights of innovators who spend vast amounts of time and energy creating. Contrary to popular myth inventions don’t invent themselves, and no second year engineering student can code up software over a weekend. These truths should be self evident, but they seem lost on some.

Indeed, there are Judges on the Federal Circuit who would significantly restrict what innovations are patent eligible, doing so even before the Supreme Court’s most recent decision in Alice v. CLS Bank. There are also Judges on the Federal Circuit that have a peculiar understanding of obviousness. For at the last decade, probably longer, the Federal Circuit has also been increasingly enamored with de novo review, providing district court judges and juries absolutely no deference even with respect to findings of fact. The fact that a patent has been through multiple rounds of reexamination at the Patent Office and emerged unscathed seems completely irrelevant to some. I am not making this up, although the truth no doubt does sound harsh.

[Varsity-1]

Gone are the days when you could count on the Federal Circuit to fulfill their original mandate, which was to infuse certainty into the patent laws of the United States and recognize that patents can actually contain valid claims. There is increased bickering between the Judges in numerous opinions, concurrences, dissents, concurrences in part, and dissents in part. There is no uniformity, decisions are panel dependent, and the volume of dissents and separate opinions is clear proof that there are factions within the Court. Why then would it be unhelpful and unproductive for the bar to recognize the discontent and philosophical/ideological differences if the Judges themselves do that very thing in written decision after written decision?

The very reason for the Federal Circuit was because the Regional Circuits and the Supreme Court had never seen a patent claim that was valid. Sadly, we seem to be reliving that history as each year passes. Increasingly the Federal Circuit seems to see fewer and fewer patents that contain valid claims. Is that anti-patent? I think “anti-patent” is a fair characterization of what we can see and read. It seems undeniable that there is a philosophical and ideological division over patents. Not speaking the truth will not accomplish anything productive. Patents are a business asset, a tool. In the business world certainty is a prerequisite to achievement. Without certainty paralysis sets in, risk aversion rules, and advancement is stalled.

But let’s not talk in generalities. To justifiably say that there is a bias against strong patent rights at the Federal Circuit, or that there is a preference for fewer innovations being patented, there must be proof of that in the Court’s decisions. Frankly, it would take a treatise to address all of the decisions I could point to as evidencing some anti-patent bias at the Federal Circuit. This article is not meant to be exhaustive, but here are a three instances that support the proposition that there is indeed a philosophical and ideological viewpoint that disfavors a patent protection. These all deal with obviousness.

1.   Bristol-Myers Squibb v. Teva Pharmaceuticals USA (October 20, 2014)

On October 20, 2014, the Federal Circuit refused to reconsider a panel decision en banc. Generally this is hardly a newsworthy matter, but the refusal to take the case en banc was accompanied by 41 pages of concurring and dissenting opinions. The panel in this case explained that “an unexpected result or property does not by itself support a finding of nonobviousness.” The panel decision could easily be read to have further refused to consider evidence of unexpected results that were created after the time of conception.

Simply stated, obviousness is all about unexpected results. If you take the time to review the so-called KSR rationales for finding an invention obvious, you will notice that 6 of the 7 rationales that can be employed to find an invention obvious relate to expected results. The remaining rationale is the familiar teaching, suggestion or motivation test. Thus, before ever getting to secondary considerations, the way to demonstrate that a claimed invention is nonobvious is to argue that there is no teaching, suggestion or motivation to combine the references and that there is some unexpected result associated with the claimed invention.

As Judge Taranto explained in his dissent from the denial of the petition for rehearing en banc, although it is uncertain exactly what the panel decided when it affirmed invalidity based on obviousness, it could be inferred that the panel had done so by dismissing “post-filing discoveries of prior-art compounds’ true properties as categorically irrelevant to the statutory inquiry.” Thus, the panel decision can appropriately be characterized as requiring evidence of unexpected results at the critical time for determining obviousness, which under pre-AIA law was the time of invention, but now under the AIA is at the time of filing the patent application.

It is, of course, well established that evidence of unexpected results does not need to exist at the time of invention or at the time of filing. Later conducted test results have long been relied upon by the Federal Circuit, as thoroughly pointed out in Judge Newman’s dissent, and even in Judge O’Malley’s concurrence. Therefore, by refusing to consider proof of unexpected results created after the critical time (in this case the time of invention) the panel seems to have ignored binding precedent at best and at worst set a course forward that overrules the long standing law of the Federal Circuit and upsets the long standing practices of the United States Patent and Trademark Office. For example, why would you ever have the opportunity to suspend prosecution of a patent application to engage in experiments to submit on the record for consideration by the examiner?

If there are panels at the Federal Circuit that will refuse tests and evidence created after the critical time then we really aren’t concerned with factual reality. If there were unexpected results later then there would have to have been unexpected results earlier. Scientific reality doesn’t change even though the critical time may vary or the time the inquiry is considered is later.

Finally, I’m not sure what further proof there needs to be that there are extreme opposite viewpoints on the Federal Circuit. Judge Taranto is exactly right to point out that at least one fair reading of what the panel did was clearly inconsistent with the law of the Circuit. The Federal Circuit can say that it doesn’t matter because that reading is clearly contradicted by the law of the Circuit, but the fact remains that something that patent owners have taken for granted for decades is now questionable depending upon the panel.

[Varsity-4]

2.   I/P Engine, Inc. v. AOL, Inc. (August 15, 2014)

I/P Engine, Inc. brought an action against AOL Inc., Google Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation (collectively, the “Defendants”) alleging infringement of U.S. Patent Nos. 6,314,420 (the “’420 patent”) and 6,775,664 (the “’664 patent”). The ’420 and ’664 patents both claim priority to the same parent patent, U.S. Patent No. 5,867,799. They relate to a method for filtering Internet search results that utilizes both content-based and collaborative filtering. The asserted patents describe a system “wherein a search engine operates with collaborative and content-based filtering to provide better search responses to user queries.” The asserted claims describe a filter system that combines content and collaborative data in filtering each “informon”—or information item—for relevance to a user’s query.

During a twelve-day trial, the Defendants continually argued that the claims of the ’420 and ’664 patents were invalid because they were obvious. However, the jury found that the asserted claims were infringed, the jury found that the asserted claims remained non-obvious because the defendants’ evidence did not establish obviousness with clear and convincing evidence, and the plaintiff won a verdict of over $30 million with an ongoing royalty rate of 3.5%. The district court judge reviewed the jury determinations, particularly with respect to obviousness, and found that the jury was correct. The Federal Circuit, in a split panel decision, found that no reasonable person could have ever determined that the patent claims were non-obvious. By issuing this ruling the Federal Circuit completely ignored the jury, showed no deference to the district court, and went about finding their own facts as if they were a super district court.

This case shows a very disturbing trend whereby the Federal Circuit considers everything de novo, including what are supposed to be questions of fact. While this is bad enough when a District Court Judge is overruled, it is another thing altogether when a jury is nullified. Disregard of the jury rises the matter to one of Constitutional importance and raises the question about what, if any, role a jury has in patent infringement litigation so long as the Federal Circuit can re-litigate the entire case.

In a press release distributed to coincide with I/P Engine’s filing of a request for rehearing and en banc review, attorney David Boies explained:

The appellate court’s conclusion that these patents aren’t valid cannot be reconciled with the fact that eight different examiners at the U.S. Patent and Trademark Office, the jury that heard evidence in this case for over two weeks, the U.S. District Court judge who presided over the trial, and the dissenting judge at the Federal Circuit all concluded that the patents are valid and should be upheld. The panel’s split decision raises important issues about the role of juries in patent cases that are worthy of further review by an en banc panel of the Federal Circuit.

It is difficult to understand why we have juries, or district courts, any more in patent cases. They are so often ignored. The way the Federal Circuit treats district court proceedings is anathema to the way the Federal Circuit treated juries and district courts while Chief Judge Markey ran the court, and in direct opposition to what the United States Supreme Court has said about the trial on the merits. For example, in Fromson v. Citiplate, Inc. (CAFC 1989), Chief Judge Markey wrote:

The present appellants, disregarding much of what the district court said and did, should take heed of the Supreme Court’s admonition: “the trial on the merits should be ‘the main event rather than a tryout on the road.'” Anderson v. City of Bessemer City, 470 U.S. 564, 575, 105 S.Ct. 1504, 1512, 84 L.Ed.2d 518 (1985).

It is hard to see how the trial on the merits today in a patent litigation is anything but an opening act at best.

Furthermore, in his concurring opinion in I/P Engine, Judge Mayer wrote: “Alice thus made clear that abstract ideas untethered to any significant advance in science and technology are ineligible for patent protection…” Recently in The California Institute of Technology v. Hughes Communications (Case No. 2:13-cv-07245-MRP-JEM), Judge Mariana Pfaelzer of the United States Federal District Court for the Central District of California, Western Division, pointed out that the Supreme Court Alice decision said nothing of the kind. Judge Pfaelzer correctly wrote:

[Judge Mayer’s] view overstates Alice’s holding. Alice held that an abstract business method remains abstract even if it is implemented on a generic computer performing generic functions. But Bilksi refused to hold that business method patents are ineligible, and a technological requirement seems to contradict [the Bilski] holding. At the very least, reading a technological requirement into § 101 is inconsistent with the section’s plain language.

Indeed, if one actually takes the time to read Bilski, the Supreme Court explained that the bright-line machine-or-transformation test articulated by the Federal Circuit was not the only test for determining patent eligibility of a business method. The Supreme Court specifically left open the possibility that a business method that did not satisfy the machine-or-transformation test could still be patent eligible. This is significant because the transformation prong dealt with real-world tangible methods, which could not be applicable to business methods. Thus, the Supreme Court quite clearly explained that a business method may be patent eligible even if not tethered to a machine. Thus, Judge Mayer is simply incorrect when he says the Supreme Court has required a technological requirement.

Judge Mayer also wrote in his I/P Engine concurrence: “Section 101 mandates… that claims disclose an advance in science or technology…” This too is likewise wrong, and almost laughably wrong. Section 101 in totality states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Exactly where Judge Mayer sees a requirement that a patent claim advance science or technology is a real mystery. The word “claim” does not even appear in 101. Likewise, it is well-established, and indeed a foundational precept, that any particular claimed invention does NOT have to represent an advance in science or technology. There are but five requirements to patentability — the invention consist of patent eligible subject matter, it must be useful, the invention must be new, it must be non-obvious, and it must be adequately described. There is no independent requirement that a claimed invention must represent an advance. In fact, in an article to explain this to inventors I pointed to a trio of toilet related patents where the least advanced and least desirable invention of the three had the latest filing date.

The patent system as a whole is set up to encourage advancement, but there is no independent requirement that each patented innovation be an advancement in and of itself. Certainly Judge Mayer must know this. He has been on the Federal Circuit since 1987. So why would Judge Mayer say these things that are provably wrong? I don’t know, which is why I wind up concluding that there is some philosophical or ideological leaning that causes him to believe less should be patented.

[Patent-Search]

3.  Soverain Software v. Newegg (September 4, 2013)

Soverain brought this patent infringement suit against Newegg for infringement of claims of the ‘314 patent, its continuation Patent No. 5,909,492, and Patent No. 7,272,639. The patents relate to electronic commerce, wherein a merchant’s products are offered and purchased online, through computers interconnected by a network. The jury found Newegg liable for infringement of the ’314 and ’492 patents, and awarded Soverain damages of $2.5 million. The jury found that Newegg did not infringe the ’639 patent, but the district court granted Soverain’s motion for JMOL of infringement of the ’639 patent, and ordered a new trial to assess damages for the ’639 patent, to be tried after the completion of appeals. The district court awarded Soverain post-verdict damages and an ongoing royalty. After the close of evidence the district court removed the question of obviousness from the jury, the court stating: “I don’t think there’s sufficient testimony to present an obviousness case to the jury. I think it would be very confusing to them.”  The district court then held that the claims are not invalid on the ground of obviousness. Newegg’s motions for JMOL or a new trial were denied.

On appeal to the Federal Circuit the relief Newegg sought was a remand for a new trial. The Federal Circuit had other ideas and sua sponte found the patent claims at issue invalid because they were obvious despite the fact that Soverain was never afforded the opportunity to brief that issue. So blatant was this lack of due process that in a parallel patent infringement litigation the district court allowed Soverain to continue to sue on the patents and claims lost at the Federal Circuit because there was neither res judicata or collateral estoppel because Soverain had been denied any opportunity to respond, thus the decision of the Federal Circuit was determined to only be binding on Newegg. That district court decision is on appeal to the Federal Circuit presently.

Soverain is much like I/P Engine in that it relates to obviousness. In Soverain’s case, however, there were multiple district court judges and multiple juries who continually found the patent claims to be infringed and non-invalid. Addtionally, the Soverain patents went through lengthy, protracted and repeated reexaminations at the United States Patent and Trademark Office. Here are the facts relating to those reexamination proceedings:

• 5 of Soverain’s patents, out of a portfolio of 60 patents/apps, have been reexamined a total of 8 times.
• Throughout these 8 reexaminations, all of the reexamined claims except one unasserted claim have been confirmed, with none of the other claims ever being amended.
• Throughout these 8 reexamination Soverain managed to add 270 new dependent claims.
• 3 of Soverain’s patents (the ‘314, ‘492 and ‘639, which are the ones asserted in the Newegg litigation) have each been reexamined twice.

Once again, we see that the Federal Circuit steps in to find patent claims obvious where no other decisionmaker, including multiple juries, agreed. The lack of process afforded Soverain should shock everyone, and the disregard for every other decisionmaker in the process is inexplicable. The Federal Circuit complains that they do not have the resources to handle all the cases coming their way as the result of the new proceedings created by the America Invents Act (AIA), but they continue to start from scratch on obviousness and provide district courts and juries no deference. If the judges of the Federal Circuit want to be trial court judges they should seek reassignment. The job of an appellate court is to review, not to start from scratch and do whatever they want.