Oral Arguments: (Word Transcript)
The Federal Circuit, en banc, held oral arguments in Ecofactor v. Google LLC. The case hinges on whether Ecofactor's damages expert, David Kennedy, relied on sufficient facts to support his conclusion of an “$X” “reasonable royalty rate,” based on lump-sum payment amounts cited in prior license deals. The prior license deals, in recitals, specified that the lump sum is based on a royalty rate, while in the body of the licenses, which relate to terms to which both parties agreed, states the opposite – i.e., that the lump sum is not related to a reasonable royalty rate.
In her arguments, Google's attorney summed it as follows: the approach challenged here allows experts to transform unilateral assertions in the recitals (which the licensee has little incentive to challenge) into authoritative expert testimony that the licensee actually agreed to a particular rate and that this “undermines the jury's ability to reach a fair apportionment verdicts.”
On this record, it’s impossible to establish that these lump-sum payments were calculated using any royalty rate, let alone the specific $X rate. The self-serving recitals reflect only EcoFactor’s transparent attempt to manufacture a royalty rate using its “belief.”
Blogs:
Kyle W. Kellar of Womble Bond Dickinson surveyed recent PTAB decisions post the rescission of Vidal's “Interim Guidelines” memorandum by the PTO regarding discretionary denials of IPR petitions. “In short, recission of the Interim Guidelines has had no impact, yet” according to Kellar.
Of the four discretionary denial decisions since the Interim Guidelines memo was rescinded, Kellar found the following results:
Name | Result | Rationale |
---|---|---|
Savant Technologies LLC v. Feit Electric Co., Inc. | IPR instituted | No trial date set, median time-to-trial statistics suggested a trial would likely occur well after a final written decision would issue. |
Mobileye Global, Inc. v. Facet Technology Corp. | IPR instituted | Fintiv factors considered without mention of Interim Guidelines |
Adobe Inc. v. Jaffe | IPR instituted | No trial date set |
Toyota Motor Corp. v. Emerging Automotive LLC | IPR denied | Petitioner failed to establish a reasonable likelihood that it would prevail. |
Kellar notes that the board “at least facially considered median time-to-trial statistics provided by the parties.”
In C. R. Bard Inc. v. Atrium Medical Corp.,1) the 9th Circuit found that a provision of a patent license, which requires a $3.75M minimum royalty payment until expiry of the last licensed patent, was not a violation of the Brulotte Rule. The Brulotte rule originates in the Supreme Court ruling Brulotte v. Thys Co., 379 U.S. 29 (1964), and held that patent holders may not contract for royalties on any use of a patented invention that occurs after the patent has expired.
Here, the 9th Circuit determined that the license agreement terms did not violate because the minimum royalty, which was the provision in dispute, was effectively creating a minimum royalty payment for the period that at least one of the U.S. and Canadian patents were in force. The Court explained that the Brulotte rule only concerns royalties for post-expiration use of a U.S. patent–it does not prohibit royalties that are for 'something other than the use of hte expired U.S. patent“ which, in this case, is the still-unexpired Canadian patent.
In Fujifilm Corp. v. Kodak GmbH, before the Düsseldorf Local Division of the UPC, the court held that it has jurisdiction to render infringement and enforcement decisions implicating the UK, which is not a UPC or EU member state, because:
In Novartis Pharma. v. Torrent Pharma, the Fed. Cir. reversed the District of Delaware court's finding that the patent at issue failed to meet the written description requirement because it fails to describe the accused product which, while within the scope of the claims, includes improvements not mentioned in the patent. The court reasoned that, “A specification adequately describes an invention when it reasonably conveys . . . that the inventor had possession of the claimed subject matter as of the filing date.” The Fed. Cir. also uphold the lower court's finding that the claims were enabled because “enablement is judged as of the priority date.”
In Omni Medsci, Inc. v. Apple Inc. (Aug. 2, 2021), the Federal Circuit held that an employment agreement stating “Patents . . . acquired as a result of or in connection with . . . research, or other educational activities conducted by members of the University staff . . . shall be the property of the University.” The majority opinion (with J. Newman dissenting) concluded that the language “is most naturally read as a statement of intended disposition and promise of a potential future assignment, not as a present automatic transfer.
In J. Newman's dissent, she finds:
This ruling is not correct as a matter of contract interpretation, and overturns decades of unchallenged understanding and implementation of the University's employment agreement and policy documents. Omni does not own these patents and does not have standing to sue for infringement.
J. Newman notes that “the plain meaning of 'shall be the property of the University' is that the inventions made during employment and patents thereon shall belong to the University. [. . .] According to my colleagues, this fatal flaw . . . could have been avoided simply by using the present tense 'is the property of the University' instead of the future tense 'shall be the property of the University.' However, these documents necessarily apply only to future inventions, for which the future tense is appropriate.”
§ 287(a): ”[. . .] In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
In Lighting Defense Group LLC v. Shanghai Sensi Electronic Engineering Co. Ltd. et al. 2), the failure of a licensed third party to mark products as patented triggered 35 U.S.C. § 287. LDG licensed its patent in May of 2020 and argued that opposing party SANSI was liable for infringement prior to that date, i.e., prior any legal requirement to mark. Based on the plain meaning of the statute, the court disagreed.
Stated the court:
Generally, a patentee who never makes ore sells a patented article does not trigger § 287's requirements. However, the federal Circuit has expounded, '[. . .] If, however, a patentee makes or sells a patented article and fails to mark in accordance with § 287, the patentee cannot collect damages until it either begins providing notice or sues the alleged infringer . . . and then only for the period after notification or suit has occurred.' SANSI asks the Court to join its sister court in holding that failure to comply with the marking requirements after attachment cuts off all pre-notice damages, not just those arising after, as consistent with Arctic Cat II. LDG asks the Court to reject those cases and follow Arendi's, where the Delaware district court concluded Arctic Cat II does not preclude recovery of damages for periods before the marking obligation attached.
[. . .]
Under a plain reading, § 287(a) precludes recovery after the requirement to mark is triggered until actual notice is given, after which that date then ccontrols the starting date for recovery. Although this is a harsh result, the plain language controls.
In 2024, the Federal Circuit issued eighteen opinions labeled “precedential” that were related to patent law. Quotations below omit citations and internal quotation marks. Here is a break-down:
Cytiva Bioprocess R&D AB v. JSR Corp.: Non-obviousness of novel compounds
Holdings:
Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al.: Motivation to combine (Patent challenger appeals from unsuccessful IPR.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Optimization of result-effective variables (Patent owner Pfizer challenges IPR holding of invalidity.)
Holdings:
Virtek Vision Internat'l ULC v. Assembly Guidance Systems, Inc.: Motivation (Patent owner Virtek and patent challenger Aligned Vision cross-appeals IPR findings of a subset of challenged claims invalid.)
Holdings:
Sanho Corp. v. Kaijet Tech. Int'l Ltd.: Excluding prior art under § 102(b)(2)(B) (Patent owner Sanho appeals invalidity finding by PTAB.)
35 U.S.C. § 102(b)(2): A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Holdings:
Weber v. Provisur Tech.: Printed publication requirement. (Patent challenger Weber appeals PTAB holding that Provisur's patents were not invalid.)
Holdings:
LKQ Corp. v. GM Global Tech. Operations, LLC: Design Patent Nonobviousness (Patent challenger LKQ appeals PTAB decision upholding GM's design patent on a vehicle front fender.)
Holdings: “We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.”
IOENGINE, LLC v. Ingenico Inc.: Printed matter doctrine (Fed. Cir. reversed PTAB's invalidation of claims related to portable data processing devices.)
Exemplary claim:
Claim 2: Code . . . configured to cause a communication to be transmitted to the . . . node
Claim 4: Wherein the communication caused to be transmitted to the . . . node facilitates transmission of encrypted communications from the . . . node to the terminal.”
Holdings:
Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.: “For identifying a single biomolecule”
Claim 1. An apparatus for identifying a single biomolecule, comprising:
a substrate having a light detector; and
a linker site formed over the light detector, the linker site being treated to affix the biomolecule to the linker site;
wherein the linker site is proximate to the light detector and is spaced apart from the light detector by a distance of less than or equal to 100 micrometers.
Holdings:
RAI Strategic Holdings v. Philip Morris Products: Claimed ranges (Appeal by patent owner RAI of post-grant review finding invalidity.)
ZyXEL Communications v. Unm Rainforest Innovations: Motion to Amend [MTA] Pilot Program. (ZyXEL appeals PTAB's grant to UNMRI's motion to amend and finding claim 8 nonobvious; UNMRI cross-appeals on other findings.)
37 C.F.R. § 42.121(b): A motion to amend claims must include a claim listing . . . and set forth: (1) The support in the original disclosure of the patent for each claim that is added or amended; and (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
SoftView LLC v. Apple Inc.: Estoppel (Patent owner SoftView appeals PTAB invalidation of all claims based on estoppel)
37 C.F.R. § 42.73(d)(3): A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.
Holdings:
Cywee Group Ltd. v. ZTE (USA), Inc.: Joint IPR petitioners (Patent owner Cywee appeals IPR decision holding original and proposed amended claims unpatentable.)
Holdings:
Koss Corp. v. Bose Corp.: Mootness/Issue Preclusion
Holdings:
Platinum Optics Tech. v. Viavi Solutions: Standing (Patent challenger PTOT appeals a final written decision from IPR.)
Holdings:
Speck v. Bates: Interference - (Junior party Speck appeals PTAB's decision awarding priority to Bates.)
37 C.F.R. § 135(b)(1): A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
Holdings:
Voice Tech v. Unified Patents: Appealing after Request for Rehearing (Patent owner Voice Tech appeals from PTAB finding all challenged claims obvious.)
Google LLC v. EcoFactor, Inc.: Claim construction and APA (Fed. Cir. vacated PTAB's claim construction.)
Pfizer Inc. v. Sanofi Pasteur Inc.: Director Review (Patent owner Pfizer challenges IPR holding of invalidity.)
In Vivint Inc. v. ADT LLC, the Federal Circuit upheld the PTAB's broad interpretation of the term, “predefined.” Claim 1 specifies, “detecting an entity entering a predefined area based at least in part on camera data.” The IPR panel, in finding that certain claims were anticipated and obvious, determined that “predefined” means “defined in advance” and that the “entire field-of-view of a camera” can be a “predefined area.” Stated the court:
Vivint contends that the Board erred by construing 'predefined area' to 'include whatever the camera sees.' It argues that such a broad construction renders 'entering a predefined area' superfluous. That is incorrect. A camera’s entire field-of-view does not automatically or necessarily correspond to a user’s region of interest. Instead, as the Board explained, 'the term “predefined area,” if applied to a camera’s entire field-of-view, would require the user to set up the camera such that the camera’s entire field-of-view would mark a perimeter [to enter] that corresponds to the user’s region of interest,' for example, by zooming in, panning out, or angling.
(Internal citations removed.)
In Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al., the Federal Circuit vacated an IPR opinion for failing to make a finding as to whether there was motivation to combine the references under § 103.
The patent at issue is directed to a method for correlating computer network packets to detect propagation of potentially malicious network traffic. Claim 1 is focused on detecting the correlation and, “responsive to the correlating . . . transmitting . . . [an] indication of the first host.” Palo Alto Networks (PAN) asserts that two references, Paxton, which discloses correlating packets, and Sutton, which describes transmitting a notification related to a potential threat, are combinable under § 103 to arrive at the claimed invention. However, the PTAB panel concluded:
This leaves us with a correlation from Paxton with no specific actions taken post-correlation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.
The Federal Circuit held that:
Where, as here, the grounds for obviousness are based on a specific combination of references, arguments that “attack the disclosures of the two references individually” lack merit. Here, Paxton and Sutton must be read together, not in isolation.
[. . .]
the Board erred by not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of claim 1: transmitting an indication.” In fact, the parties disagreed as to whether the Board found motivation to combine, and the Court determined that the Board, “never made a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton's step of transmitting a notification of malicious activity. [. . .] Relatedly, we cannot discern with any confidence what the Board meant when it said that it was left 'with a correlation from Paxton . . . , and a transmission from Sutton . . . , but without the necessary bridge.'. . . If the Board meant to say that it found no motivation to combine–and we do not know whether it did–it certainly failed to explain why a person of ordinary skill in the art would not have been motivated to modify Paxton to provide the recited notification as taught by Sutton in response to the correlation disclosed in Paxton.
(Emphasis added, citations removed.)
Time to bid a (fond?) farewell to the AFCP program at the Patent Office. IPWatchdog gives us a looking-back and a looking-ahead. Key takeaways include:
After today, applicants will need to revert to prior after-final practice, meaning that typically, only amendments that incorporate allowable subject matter into rejected independent claims (or convert allowable but objected-to dependent claims into independent claims) will be entered.
Christopher W. Quinn, of Quinn IP Law and also professor of IP innovation and strategy at the University of Michigan, posted a thoughtful article on how IP law is relevant, and some controversial reforms. A worthwhile read!
Findings: The claims are eligible because:
Findings: the claims are eligible because:
Dissent:
Rep. claim 7: A fitting method of a golf club, comprising. . . :
creating a hit ball result database . . . . by actual measurement and/or simulation;
measuring a subject's head speed dynamic loft, and blow angle using a reference club;
determining, by a processor, a suitable dynamic loft . . . as a dynamic loft achieving a predetermined hit ball result;
determining a dynamic loft difference from the suitable dynamic loft and the measured dynamic loft; and
determining a recommended loft angle based on a loft angle of the reference club and the dynamic loft difference;
Ex parte Kimizuka et al. 2018-001081
Findings (citations omitted): The claims are ineligible because:
Ex Parte Savescu et al. (PDF)
Findings: the claims are ineligible because:
Findings: The claims are eligible because:
Additional blurbs are accessible in categorized lists by accessing the Index link on the left (or, for small-format screens, below).