Brrr!

With temperatures in parts of the U.S. lower than we have seen in decades, it seems appropriate to recognize the inventors whose work help us brave this weather weather.

First and foremost is Chester Greenwood, inventor of ear muffs, whose U.S. Patent No. 188,292, issued March 13, 1877:

Chester Greenwood’s patent in ear muffs.

Our thanks should also go to Joel Craddick, whose U.S. Patent No. 1,394,810, issued October 1921, on an “Electrothermal Garment” — among the earliest electrically heated clothing.

Joel Craddick’s patent on an electrothermal garment.

However, inventors’ work on protecting us from the cold continues to this day, and John Elson, Kerrie Gath, Clay Maranville, and Victoria Schein, were issued U.S. Patent No. 10,143,043 on a “Heated Seat Belt.” While when I am backing out of my driveway at 1° F I will be wearing a jacket so thick that I won’t be able to tell whether or not the seat belt is warm, I can still appreciate their thinking of us.


John Elson, Kerrie Gath, Clay Maranville, and
Victoria Schein’s U.S. Patent on a Heated Seat Belt.

Our Own Oddities

For fifty years between 1940 and 1990, The St. Louis Post Dispatch had a section in its comics pages titled Our Own Oddities, featuring unusual things from around the St. Louis metropolitan area. There are a number of patent “oddities,” and while they may not be as astounding as a Nixon-shaped potato they are nonetheless cataloged below.

The First Patent

The first patent, as most patent attorneys know, was issued to Samuel Hopkins on July 31, 1790, on a method of making potash and pearlash. However U.S. Patent No. 1 issued to J. Ruggles on July 13, 1836, when it finally occurred to someone in the Patent Office to start numbering these things. Approximated 10,000 unnumbered patents, often call the X-series of patents were issued prior to U.S. Patent No. 1.

U.S. Patent No. 1, issued July 13, 1836

First Patent to a Female Inventor

The first patent to issue to a female inventors is believed to be one of the aforementioned X-series patents, No. 1041X on Weaving Straw with Silk Thread, issued to Mary Kies on May 5, 1809.

First Patent to an African-American Inventor

The first patent to issue to an African-American is believed to be one of the aforementioned X-series patents, No. 3306X on Dry Scouring of Clothes, issued to Thomas L. Jennings on March 3, 1821.

Only Patent to a President

The only patent issued to a president is U.S. Patent No. 6,469 on a Manner of Bouying Vessels, issued to Abraham Lincoln on May 22, 1849.

U.S. Patent No. 6,469, issued to Abraham Lincoln

Shortest Patent Claim

The scope of a patent is defined by its claims, and there are a number of two-word patent claims, including Glenn Seaborg’s U.S. Patent No. 3,156,523, issued November 10, 1964, claiming: “1.  Element 95,” and his U.S. Patent No. 3,164,462, issued December 15, 1964, claiming “1.  Element 96.”

However there are in fact several patents with a one-word claim, including Lloyd H. Conover’s U.S. Patent No. 2,699,054, issued January 11, 1955, whose claim 2 simply recites “Tetracycline.” For another example, check out claims 12-19 of U.S. Patent No. 3,775,489.

Longest Patent Claim

Among the longest patent claims is one found in U.S. Patent No. 6,953,802, Beta-Amino Acid Derivatives-Inhibitors of Leukocyte Adhesion Mediated by VLA-4, it contains over 17,000 words, spanning from column 59, line 27 to column 101, line 30.

Most Claims in an Application

The record for most claims in an application is US Published Application No. 20030173072 for Forming Openings in a Hydrocarbon Containing Formation Using Magnetic Tracking. As published it contained 8,958 claims, issuing as U.S. Patent No. 6,991,045 with a more modest but still impressive 90 claims.

Most Claims in a Patent

The record for most claims in a patent is U.S. Patent No. 6,684,189 Apparatus and Method Using Front-end Network Gateways and Search Criteria for Efficient Quoting at a Remote Location, with 887. Runners up are U.S. Patent No. 5,095,054 for Polymer Compositions Containing Destructurized Starch, with just 868 claims, and U.S. Patent No. 7,096,160 System and Method for Measuring and Monitoring Wireless Network Performance in Campus and Indoor Environments, with a paltry 803 claims.

Longest Patent Application

The longest patent application is U.S. Patent Application No. US20070224201A1 for Compositions and Methods for the Diagnosis and Treatment of Tumor with 7,154 pages.

Longest Patent

The longest patent is U.S. Patent No. 6,314,440 for Pseudo Random Number Generator, with 3333 pages, 3272 of which are drawings). Slightly shorter, but much wordier is U.S. Patent No. 5,146,591 has more than one million words on 3071 pages.

Shortest Patent

U.S. Patent No. 5,081,154 for Metroprolol Succinate is one half page long (about 70 lines).

Most Drawings in an Application

U.S. Patent Application No. 20070224201A1 has 6881 sheets of drawings.

Shortest Patent Term

U.S. Patent Nos. 6,211,625; 6,211,619; 6,198,228;  6,144,445; 7,604,811 (and others) had a term of “0” — each expired before it issued!

Longest Patent Term

U.S. Patent No. 6,436,135, was filed in 1974, and issued in 2002, and thus won’t expire until this year (2019), 45 years after it was filed.

Most Co-Inventors

U.S. Patent Nos. 7,013,469 and 7,017,162 for Application Program Interface for Network Software Platform have 51 coinventors. 

Strangest Patent Number

The U.S. has issued several “fractional” patents, including U.S. Patent No. 126 ½ on February 11, 1837, and U.S. Patent No. 3,262,124 ½ on July 19, 1966.

Most Popular

U.S. Patent No. 4,723,129 has been cited in 2,372 subsequent patents.

Most Prior Art

U.S. Patent No. 9.535,563 cites 7800 references; U.S. Patent No. 8,612,159 on Analyte Monitoring Device and Methods of Use cites 3,594 items of prior art on 32 pages.

Largest Patent Family

U.S. Patent No. 5,095,054 has 380 family members.

Longest Inventor Name

U.S. Patent No. 7,531,342 names Osterhaus Albertus Dominicus Marcellinus Erasmus as inventor with 44 characters in his name.

Most Enigmatic Title

U.S. Application 20020174863 is entitled “Unknown”

Simplest Drawing

U.S. Patent No. 448,647 issued March 24, 1891, on a Tooth Pick.

Federal Circuit Remands WesternGeco’s Damaged Damages Case

In WesternGeco L.L.C., v. Ion Geophysical Corporation, [2013-1527, 2014-1121, 2014-1526, 2014-1528](January 11, 2019), the Federal Circuit, on remand from the Supreme Court, remanded to the district court.

The Supreme Court held that WesternGeco’s damages award for lost profits was a permissible domestic application of 35 U.S.C. § 284,” reversing the Federal Circuit.

But the Supreme Court did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four of the five

asserted patent claims that could support the lost profits award, the Federal Circuit remanded the case to the district court.

Collateral Estoppel Exposes the Failure to have Legitimate Plan B

In Virtnex Inc. v. Apple, Inc., [2017-2490, 2017-2494] (December 10, 2018) the Federal Circuit affirmed the PTAB that claims 1–11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 were unpatentable as obvious., noting that VirnetX was collaterally estopped from relitigating the threshold issue of whether prior art reference was a printed publication and because VirnetX did not preserve the only remaining issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act.

During the pendency of VirnetX’s appeal, the Federal Circuit summarily affirmed seven final written decisions between VirnetX Inc. and Apple in which the Board found that RFC 2401 was a printed publication.  The Federal Circuit said that Rule 36 summary dispositions could be the basis collateral estoppel, and that the only issue was whether the printed publication issue was necessary or essential to the judgment in the prior cases.  The Federal Circuit held that it was.

VirnetX also argued that it preserved in its opening brief the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA, pointing to a single paragraph in its Opening Brief, filed prior to the Supreme Court’s decision in Oil States.  The Federal Circuit said that this paragraph raised the specific question later decided in Oil States, and under a very generous reading, the paragraph also arguably raises a general challenge under the Seventh Amendment, but it in no way provides any arguments specifically preserving the retroactivity issue.

The Federal Circuit concluded that VirnetX did not preserve the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA and that, therefore, the conclusion that VirnetX was collaterally estopped from raising the printed
publication issue resolved all other issues in the appeal.  The Federal Circuit affirmed.

The lesson, of course, is to correctly predict the future and simply preserve the issues you will need.  Virtnex can hardly be faulted for not preserving the issue, when they had a more substantive issue before it, buy it always pays to have a legitimate Plan B.

Normal Double Patenting Rules Don’t Apply When the Patents Straddle the URAA

In Novaritis Pharmaceuticals Corporation v. Breckenridge Pharmaceutical Inc., [2017-2173, 2017-2175, 2017-2176, 2017-2178, 2017-2179, 2017-2180, 2017-2182, 2017-2183, 2017-2184] (December 7, 2018), the Federal Circuit reversed the district court, determining that the law of obviousness-type double patenting does not require a patent owner to cut down the earlier-filed, but later expiring, patent’s statutorily-granted 17-year term so that it expires at the same time as the later-filed, but earlier expiring patent, whose patent term is governed under an intervening statutory scheme of 20 years from that patent’s earliest effective filing date.

Applying  Gilead Sciences, Inc. v. Natco Pharma Ltd., which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found U.S. Patent No. 6,440,990 to be a proper double patenting reference for the earlier filed U.S. Patent No. 5,665,772, which had a longer term because of a change in the statutory term.

The Federal Circuit said that Gilead addressed a question that was not applicable in the present case — in Gilead, the Federal Circuit concluded that, where both patents are post- URAA, a patent that issues after but expires before another patent can qualify as a double patenting reference
against the earlier-issuing, but later-expiring patent.  In contrast, in the present case Novartis owns one pre-URAA patent (the ’772 patent) and one post-URAA patent (the ’990 patent), and the 17-year term granted to the ’772 patent does not pose the unjustified time extension problem that was the case for the invalidated patent in Gilead.


[T]he present facts do not give rise to similar patent prosecution gamesmanship because the ’772 patent expires after the ’990 patent only due to happenstance of an intervening change in patent term law. Both the ’772 and the ’990 patents share the same effective filing date of
September 24, 1993. If they had been both pre-URAA patents, the ’990 patent would have expired on the same day as the ’772 patent by operation of the terminal disclaimer Novartis filed on the ’990 patent, tying its expiration date to that of the ’772 patent. And if they had been
both post-URAA patents, then they would have also both expired on the same day. Thus, the current situation does not raise any of the problems identified in our prior obviousness-type double patenting cases. At the time the ’772 patent issued, it cannot be said that Novartis improperly
captured unjustified patent term. The ’990 patent had not yet issued, and the ’772 patent, as a pre-URAA patent, was confined to a 17-year patent term.

The Federal Circuit concluded that in this particular situation where we have an earlier filed, earlier-issued, pre-URAA patent that expires after
the later-filed, later-issued, post-URAA patent due to a change in statutory patent term law, it would not invalidate the challenged pre-URAA patent by finding the post-URAA patent to be a proper obviousness-type double
patenting reference.

Software Can Make Non-Abstract Improvements to Computer Technology

In Ancora Technologies, Inc., v. HTC America, Inc., [2018-1404](November 16, 2018), the Federal Circuit reversed the district court’s dismissal of Ancora’s complaint for infringement of its U.S. Patent No. 6,411,941 is entitled Method of Restricting Software Operation Within a License Limitation, finding that the claims are directed to, and ultimately claim no more than, an abstract idea.

The Federal Circuit said that under Enfish and related authorities, we conclude,the claims at issue here are not directed to ineligible subject matter. Rather, it held that the claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security, and this claimed improvement in computer functionality is eligible for patenting. As a result, the claims are not invalid under §101.

A two-step analysis determines whether claim 1 of the ’941 patent falls outside § 101: (1) whether the claim, as a whole, is “directed to”patent-ineligible matter—here, an abstract idea—and (2) if so, whether the elements of the claim, considered individually or as an ordered combination“‘transform the nature of the claim’ into a patent-eligible application.”  The Federal Circuit concluded that claim 1 is not directed to an abstract idea, and therefore it did not reach the second step.  In cases involving software innovations,this inquiry often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.

Computers are improved not only through changes in hardware; software can make non-abstract improvements to computer technology.  The Federal Circuit has several times held claims to pass muster under Alice step one when sufficiently focused on such improvements:  In Enfish, the claimed self-referential tables improved the way that computers operated and handled data.  In Visual Memory LLC v. NVIDIA Corp., the claims were directed to an improved computer memory system.  In Finjan,the claims were to a “behavior-based virus scan” that was a specific improvement in computer functionality. In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,the claims were directed to a method for making websites easier to navigate on a small-screen devices, using a specific type of index for a specific type of user.  In Data Engine Technologies LLC v. Google LLC, the claims were directed to a specific method for navigating through three-dimensional electronic spreadsheets.In accordance with these precedents, the Federal Circuit concluded that claim 1 of the ’941 patent was not directed to an abstract idea. The Federal Circuit said that improving security against a computer’s unauthorized use of a program—can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.  The Federal Circuit explained that the claimed method here specifically identifies how that functionality improvement is effectuated in an assertedly unexpected way: a structure containing a license record is stored in a particular, modifiable, non-volatile, portion of the computer’s BIOS, and the structure in that memory location is used for verification by interacting with the distinct computer memory that contains the program to be verified. In this way, the claim addresses a technological problem with computers: vulnerability of license-authorization software to hacking.  In short, claim 1 of the ’941 patent is directed to a solution to a computer-functionality problem: an improvement in computer functionality that has the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it, and it therefore passes muster under Alice step one, as it is not directed to patent ineligible subject matter.

Fractional Patents

No, a fractional patent is not what you have left over after the PTAB gets a hold of your patent. Fractional patents are actually patents with fractional numbers.  The practice started back when the USPTO was trying to reassemble the collection of patents issued before the Office numbered patents.  These pre-number era patents are known as the “X” patents, and as the Office was assigning these patents numbers, they would occasionally come across patents whose issue  dates were between already numbered patents.  In order to keep the chronological sequence, the USPTO needed to issue fractional numbers.

In fact the USPTO even created a letter code system to identify the fractions:

The surprising thing is that the fractional number scheme continued from time to time even after the USPTO began numbering patents.  126½, 1400½, RE1217½, RE1242½, D1093½, 2712152½, 3262124½, 

and D90793½. 

Federal Circuit Vacates Another IPR as Time-Barred

Luminara Worldwide, LLC v. Iancu, [2017-1629, 2017-1631, 2017-1633] (August 16, 2018), the Federal Circuit affirmed the PTAB’s invalidation of claims of two of Luminara’s patent, and as to the third, it vacated the Final Written Decision, and remanding for dismissal of that IPR, because of the section §315(b) time-bar.

In instituting the IPR, the Board rejected the argument was untimely under §315(b) because the first action had been voluntarily dismissed without prejudice.  Because the section 315(b) time-bar applies when the underlying complaint alleging infringement has
been voluntarily dismissed without prejudice, the Federal Circuit said the Board erred in instituting the IPR challenging the ’319 patent, vacating the Board’s final written decision as to the ’319 IPR and remand for dismissal of that IPR.

As to the obviousness in the other two IPRs, the Federal Circuit found that these were supported by substantial evidence.

There Must be at least Some “Causal Connection” Between the Misconduct and the Fee Award

In In re Rembrandt Technologies LP Patent Litigation, [2017-1784] (August 15, 2018), the Federal Circuit held that the district court did not abuse its discretion in deeming this case exceptional, but that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct, and vacated the district court’s fee award, and remanded for further proceedings.

Rembrandt asserted two patents that were revived improperly; allowed spoliation of evidence; improperly gave consultants an interest contingent on the litigation outcome; and threatened AOPs with a baseless injunction demand.  The district court determined that the case was “indeed exceptional” for three reasons. First, the court found that “the evidence shows that Rembrandt improperly compensated its fact witnesses, in violation of ethical rules of conduct.” Second, the court was “convinced that Rembrandt engaged in (or failed to prevent) widespread document spoliation over a number of years.”  Finally, the court found that “Rembrandt should have known that the ‘revived patents’ were unenforceable.”  The district court ultimately ordered Rembrandt to pay more than $51 million in fees to all Appellees.

On the exceptionality finding, The Federal Circuit said that Rembrandt raised strong arguments with respect to the district court’s factual findings. The Federal Circuit said that the district  court’s remarkably terse orders (four pages) shed little light on its justifications for its decisions on these fact-intensive issues. But abuse of discretion is a deferential standard. On the record before it, the Federal Circuit could not say that any of the district court’s findings was based “on an erroneous view of the law or on a clearly erroneous assessment of the evidence.”

On the issue of the amount of the award, Rembrandt raised no specific objections to Appellees’ tabulations of the hours they expended; nor did Rembrandt contend that
Appellees should have calculated fees using a lower hourly rate. Rembrandt instead argued that the fee award is excessive and unreasonable because the district
court failed to establish a causal connection between the claimed misconduct and the fees awarded, and the Federal Circuit agreed.  The district court did not explain why
an award of almost all fees was warranted or whether it had accepted appellee’s argument that the pervasive misconduct justified an award of all fees.  The district court, by and large, did not even attempt to assess which issues the claimed misconduct affected.

Even if Rembrandt’s misconduct, taken as a whole, rendered the case exceptional, the district court was required to establish at least some “causal connection” between the misconduct and the fee award.  What the district court did —award all fees with
no explanation whatsoever of such a causal connection—was not enough.  The Federal Circuit thus vacated the district court’s fee award and remanded for the district court to conduct the appropriate analysis in the first instance.