Father’s Day 2021

America’s ingenuity for celebrating is well documented in the U.S. patent collection, and technology for celebrating our Fathers is not an exception.

Take, for instance, the Expectant Father System patented by Ashley Svopa on June 1, 1999 as U.S. Patent No. 5,908,108:

Then there’s literally a Father Figure in U.S. Patent No. D803720, patented by Eytan and Irina Silboni on November 28, 2017:

Juneteenth

Congress has passed, and President Biden has now signed, legislation making June 19th — Juneteenth — a national holiday. June 19th is the anniversary of the June 19, 1865, announcement of General Order No. 3 by Union Army general Gordon Granger, proclaiming freedom from slavery in Texas. President Lincoln’s January 1, 1863, Emancipation Proclamation officially outlawed slavery in the rebelling states, but enforcement in remote Texas was spotty at best. Ironically, after June 19th 1865, slavery remained legal in two Union states – Delaware and Kentucky – for another six months until the December 6, 1865, ratification of the Thirteenth Amendment to the Constitution abolished slavery nationwide.

Only one U.S. patent to date references Juneteenth — Ivy Antrinette Marlonia’s U.S. Patent No. 8,136,962, on Remote Controlled Hideaway Holiday and Party Lighting. According to Ivy, her party lighting can be used to celebrate a number of occasions, including Juneteenth:

Flag Day 2021

June 14th is Flag Day, the anniversary of the adoption of the flag of the United States on June 14, 1777, by resolution of the Second Continental Congress. President Woodrow Wilson issued a proclamation that officially established June 14 as Flag Day in 1916, and on August 3, 1949, Congress established June 14 as National Flag Day, although it was not made an official federal holiday. The U.S. patent collection provides a number of suggestions of ways to display your flag:

U.S. Patent No. 1,571,581, issued February 2, 1926 discloses a Holder for Flags or the Like
U.S. Patent No. 1,374,921, issued April 19, 1921, disc;loses a Mechanically Waved Flag
U.S. Patent No. 696597, issued April 8, 1902, discloses a Flag Cane.
U.S> Patent No. D22035, issued December 6, 1892, discloses a Handle for Spoon with a flag motif.

However you decide to display the flag today, have a great day.

The Specification may be Eligible; But the Claims Were Not

In Free Stream Media Corp., dba Samba TV v. Alphonso Inc., [2019-1506, 2019-2133] (May 11, 2021) the Federal Circuit reversed the denial of Alphonso Inc.’s motion to dismiss on the ground that U.S. Patent No. 9,386,356 claims ineligible subject matter under 35 U.S.C. §101.  The ’356 patent is entitled “Targeting with Television Audience Data Across Multiple Screens.”

The district court rejected the argument that the claims were directed to an abstract idea of tailored advertising as argued by Alphonso, but the Federal Circuit agreed with Alonso, finding that the claims were directed to (1) gathering information about television users’ viewing habits; (2) matching the information with other content (i.e., targeted advertisements) based on relevancy to the television viewer; and (3) sending that content to a second device.

The Federal Circuit said that a relevant inquiry at Alice Step 1 is whether the claims in the patent focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.  A claim must have the specificity required to transform the claim from one claiming only a result to one claiming a way of achieving it to avoid ineligibility. As a result, a claim is ineligible if it fails to recite a practical way of applying an underlying idea and instead is drafted in such a result-oriented way that it amounts to encompassing the principle in the abstract no matter how implemented.

The Federal Circuit noted that Samba asserted that its invention allows devices on the same network to communicate where such devices were previously unable to do so. However, the Federal Circuit noted that the asserted claims provide for how that is achieved only by stating that the mechanism used to achieve this communication is by piercing or otherwise overcoming a mobile device’s security sandbox. But the asserted claims do not at all describe how that result is achieved.

The Federal Circuit said that even assuming the specification sufficiently discloses how the sandbox is overcome, the asserted claims nonetheless do not.

There is nothing in the claims that demonstrates an improvement to computer functionality, and even assuming, as Samba argues, that the claimed advance is in the ability to pierce the sandbox of a mobile device, Samba has not demonstrated that this is something more than a mere use of a computer as a tool.  Therefore, the alleged technological improvement does nothing more than implement a computer to achieve the abstract idea of providing targeted advertising to the mobile device user.

The district court did not reach Alice Step 2, because it did not find the claims were directed to an abstract idea.  The Federal Circuit determined that the claims simply recite the use of generic features, as well as routine functions, to implement the underlying idea.  The claims here simply recite that the abstract idea will be implemented using conventional components and functions generic to the technology.

Picture This: An Improved Camera is a Abstract Idea

In You v. Apple, Inc., [2020-1760, 2020-1803] (June 11, 2021), the Federal Circuit affirmed the district court dismissal pursuant to FRCP Rule 12(b)(6) on the grounds that the asserted claims of U.S. Patent No. 6, 611,289, on Digital Cameras Using Multiple Sensors with Multiple Lenses, were invalid under 35 U.S.C. § 101.

The district court held that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The district court further concluded that the asserted claims lack an inventive concept, noting the complete absence of any facts showing that the claimed elements were not well-known, routine, and conventional.”

The Federal Circuit concluded that given the claim language and the specification, that claim 1 is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery” rather than “a specific means or method that improves the relevant technology.” The Federal Circuit further observed that “[o]nly conventional camera components are recited to effectuate the resulting “enhanced” image—two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor. These conventional components perform only their basic functions and are set forth at a high degree of generality.

The Federal Circuit, perhaps unfairly used the patent drafter’s words to seal the fate of the claims, noting that the specification identified a “great need for a generic solution that makes digital cameras capable of producing high resolution images without [high] cost,” and concluding that “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea.

The Federal Circuit also dispatched the concern that the claim was to an improved machine, noting in a footnote that “whether a device is ‘a tangible system (in § 101 terms, a “machine”)’ is not dispositive. See Alice, 573 U.S. at 224; In re TLI Commc’ns, 823 F.3d at 611 (‘[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.’). As discussed herein, the focus of claim 1 is the abstract idea.”

The Federal Circuit also noted the disparity between the broad scope of the claim, and the particular configuration described in the specfication:

In these circumstances, the mismatch between the specification statements that Yu points to and the breadth of claim 1 underscores that the focus of the claimed advance is the abstract idea and not the particular configuration discussed in the specification that allegedly departs from the prior art.

At step two, the Federal Circuit concluded that claim 1 does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention, because claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea identified above. The Federal Circuit rejected Yu’s argument about the unconventional architecture, saying that even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility.

The Federal Circuit affirmed the judgment of the district court.

Posted in 101

Antitrust Law is Not Appealing to the Federal Circuit

In Chandler v. Phoenix Services LLC, [2020-1848] (June 10, 2021), the Federal Circuit transferred the appeal of a Walker Process antitrust case to the Court of Appeals for the Fifth Circuit.

Appellants were asserting antitrust claims based on the attempted enforcement of U.S. Patent No. 8,171,993, which had been held unenforceable due to in-equitable conduct.

The Federal Circuit concluded that it did not have jurisdiction over the appeal. The Federal Circuit has jurisdiction over the appeal of a final decision of a district court “in any civil action arising under . . . any Act of Congress relating to patents.” 28 U.S.C. § 1295(a)(1). However, the Federal Circuit noted, “while Walker Process antitrust claims may relate to patents in the colloquial use of the term, our jurisdiction extends ‘only to those cases in which a well-pleaded com-plaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” Because appellant’s cause of action arises under the Sherman Act rather than under patent law, and because the claims do not depend on resolution of a substantial question of patent law, the Federal Circuit lacked subject matter jurisdiction.

The Disclaimer Doctrine Prevents Patent Owners from Construing the Claims Differently in Court than in the PTO

In Speedtrack, Inc. v. Amazon.com, Inc., [2020-1573, 2020-1660] (June 3, 2021), the Federal Circuit affirmed the district court’s final judgment of noninfringement of U.S. Patent No. 5,544,360, on a computer filing system.

At issue was the meaning of the claim term category descriptions. The district court concluded that category descriptions based on predefined hierarchical field-and-value relationships were disclaimed.

The Federal Circuit began by noting that claim terms “must be read in view of the specification.” Further, “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. The Federal Circuit said that “[a] patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope to which he would otherwise have an exclusive right by virtue of the claim language.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009).

The Federal Circuit noted that during prosecution argued that the claims were not directed to a hierarchical system:

“Unlike prior art hierarchical filing systems,” the applicants explained, “the present invention does not require the 2-part hierarchical relationship between fields or attributes, and associated values for such fields or attributes.

The applicants continued: “At the most basic level, the present invention is a non-hierarchical filing system that allows essentially ‘free-form’ association of category descriptions to files without regard to rigid definitions of distinct fields containing values.”

The Federal Circuit further noted that in contrast, the applicants observed, the prior art was a hierarchical system that uses predefined field-and-value relationships.

The Federal Circuit said that “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). In the instant case the Federal Circuit found both. The Federal Circuit that “[i]n no uncertain terms” the applicant[]s argued that the prior art had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims.

The patentee argued that it distinguished the prior art on other grounds as well but the Federal Circuit said “that changes nothing.” The Federal Circuit said “[a]n applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007).

Ultimately, the doctrine of prosecution disclaimer ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers. That is what the patentee was attempting to do.

Complying with All Rules and Paying $7 Million in Fees Can Still Constitute Prosecution Laches

In Hyatt v Hirshfeld, [2018-2390, 2018-2391, 2018-2392, 2019-1038, 2019-1039, 2019-1049, 2019-1070] (June 1, 2021), the Federal Circuit vacated and remanded the district courts determination that the Patent and Trademark Office failed to prove prosecution laches, retaining jurisdiction over anticipation and written description issues.

Appellant Hyatt is the named inventor on 399 patent applications, 381 of which he filed during the “GATT Bubble” the period before the changes in law changed the term of a patent from 17 years from issuance to 20 years from filing. At issue were four of Hyatt’s applications relating to various computer technologies, and claiming priority to applications filed in the 1970s and 1980s. On October 24, 1995, about five months after Hyatt filed his GATT Bubble applications, PTO group Director Nicholas Godici met with Hyatt to discuss the applications. Director Godici asked Hyatt, and Hyatt agreed, to focus each application’s claims on distinct subject matter. As a result. Hyatt’s the number of claims in Hyatt’s application grew to 115,000, including approximately 45,000 independent claims. The four specific applications at issue included a total of 1,592 claims (an average of 398 claims per application). From 2003 to 2012, the PTO stayed the examination of many of Hyatt’s applications pending litigation. In 2013, the PTO resumed examination of Hyatt’s applications, and created an art unit, comprised originally of 12 experienced examiners dedicated to examining Hyatt’s applications.

To facilitate the examination process, from August to October 2013, the PTO issued 11 notifications to Hyatt called “Requirements,” one for each of the 11 parent applications of Hyatt’s Gatt Bubble applications. The PTO instructed Hyatt to (i) select no more than 600 total claims to pursue for each of the 11 specifications; (ii) identify the priority date and support for that date with respect to each chosen claim; and (iii) submit a clean copy of the claims. The applications were eventually finally rejected, Hyatt appealed to the PTAB, making some progress, and in 2005 initiated actions under 35 USC 145 in the U.S. District Court for the District of Columbia on some of the applications, and additional 145 actions on the remaining applications in 2009. After cross motions for summary judgement, the USPTO filed motions to dismiss for prosecution laches. The PTO argued that Hyatt had engaged in a “pattern of delay in prosecuting his nearly 400 patent applications from 1969 through the present day — even disregarding the 9 years when the USPTO stayed Hyatt’s applications.

The PTO argued that Hyatt forfeited his patent rights by, for example, claiming priority to ap-plications more than 45 years old; bulk-filing about 400 photocopies of 11 applications in the days before the U.S.’s patent term changed on June 8, 1995; and agreeing to focus each application on a different invention but not doing so and later revealing that he never had a “master plan” for demarcating the applications.

Hyatt responded that his prosecution of applications other than the four at issue was legally irrelevant; that the PTO itself engaged in extensive delays in administering his applications; that the PTO did not warn him, as allegedly required, that he was in jeopardy of losing his patent rights; and that the PTO failed to prove intervening rights as necessary to establish prosecution laches. Hyatt also argued that his delays were explainable be-cause, for example, PTO rules permitted Hyatt to add and amend claims, and Hyatt did so to correctly capture his inventions and steer clear of prior art.

The Prosecution laches defense originates from two Supreme Court cases: In Woodbridge v. United States, 263 U.S. 50 (1923), the PTO agreed with Woodbridge’s request to delay the issuance of his patent for one year, but at the end of the year, the PTO neglected to issue the patent. Woodbridge waited an additional eight-and-a-half years before sending a letter to the PTO calling attention to the application and explaining that he had waited because the delay enabled him to best avail himself of the patent’s value. Woodbridge then sought to amend the specification and claims to capture related innovations that arose during the course of the delay. The Court held that, by delaying to make the term of the monopoly square with the period when the commercial profit from it would have been highest, Woodbridge forfeited the right to a patent by designed delay. The Court said:

[a]ny practice by the inventor and applicant for a patent through which he deliberately and without excuse postpones beyond the date of the actual invention, the beginning of the term of his monopoly, and thus puts off the free public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.

In Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924), the applicant filed a patent application in 1910. In 1915, to provoke an interference against a separate, recently issued patent, the applicant filed a divisional application copying the patent’s claims. The applicant lost the interference but then amended the divisional application by adding two new claims, claims 7 and 8, which issued in 1918 and were the subject of the litigation. The Court held claims 7 and 8 unenforceable, noting it had “no hesitation in saying that the delay was unreasonable, and, under the circumstances shown by the record, constitutes laches, by which the petitioner lost whatever rights it might other-wise have been entitled to.”

The Federal Circuit recognized the doctrine of prosecution laches in Symbol Techs., 277 F.3d at 1363, 1366–68, and applied it for the first time in In re Bogese, 303 F.3d 1362, 1363 (Fed. Cir. 2002), where the patent owner had engaged in “deliberate and consistent course of conduct that has resulted in an exceptional delay in advancing the prosecution and the issuance of a patent,” filing twelve continuation applications without amendment or addressing the reasons for the rejection and each time abandoned the previous application.

The Federal Circuit concluded that the district court misapplied the legal standard for prosecution laches in several respects. First, the Federal Circuit said that the district court failed to properly consider the totality of the circumstances. The district court stated that the totality principle does not apply in a manner as to require this Court to account for the entirety of the prosecution history of each related application from its inception to final disposition. In addition, the district court then focused predominantly on the PTO’s role in the prosecution of Hyatt’s four applications at issue and repeatedly discounted or ignored evidence showing that Hyatt’s conduct caused unreasonable and unexplained delay.

Second the Federal Circuit said that rather than analyze the evidence to determine whether Hyatt’s conduct warrants a finding of prosecution laches, the court repeatedly placed blame on the PTO for the slowness with which Hyatt’s applications were prosecuted. The Federal Circuit has said that “a delay by the PTO cannot excuse the appellant’s own delay. The Federal Circuit concluded that the district court erred by improperly focusing the analysis on the PTO’s conduct rather than Hyatt’s conduct.

The Federal Circuit concluded that the PTO’s prosecution laches evidence and arguments presented at trial are enough to shift the burden to Hyatt. Beyond merely the magnitude of Hyatt’s delay in filing his claims, The Federal Circuit found that Hyatt adopted an approach to prosecution that all but guaranteed indefinite prosecution delay. The Federal Circuit thus remanded the case to the district court for the limited purpose of affording Hyatt the opportunity to present evidence on the issue of prosecution laches, consistent with the standards set forth in this opinion.

The Federal Circuit added that to carry his burden, Hyatt must show by preponderance of evidence that Hyatt had a legitimate, affirmative reason for his delay, and quipped that it could “divine no reason in the record currently before the court that would suffice, but Hyatt is entitled as a matter of fairness to present evidence and be heard on this issue.”

The References are not the Only Sources a Person of Ordinary Skill Would Consider

In Becton, Dickinson and Company v. Baxter Corporation Englewood, [2020-1937] (May 28, 2021), the Federal Circuit reversed that PTAB determination that certain claims of U.S. Patent No. 8,554,579 were not invalid as obvious. The’579 Patent is directed to systems for preparing patient-specific doses and a telepharmacy method in which data captured while following a protocol associated with each received drug order and specifying a set of steps to fill the drug order are provided to a remote site for review and approval by a pharmacist.

At issue was whether the art disclosed a verification step. Baxter successfully argued to the PTAB that the art taught that there may be a verification step, but not that there must be a verification step. The Federal Circuit concluded that the Board’s determination was not supported by substantial evidence. The Federal Circuit said that in the context of the prior art, “may” does not mean “occasionally,” but rather that one “may” choose to systematically check each step. Examining the reference, the Federal Circuit concluded that the purpose was to provide verification, and thus it satisfied the verification step.

Also at issue was whether the art diclosed the highlighting limitation, which requires “an interactive screen that includes prompts that can be highlighted by an operator to receive additional information relative to one particular step.” The Federal Circuit found that one of the references teaches highlighting in the pharmacy context, and said that the Board erred in looking to the reference as the only source a person of ordinary skill would consider for what “additional information might be relevant. A person of ordinary skill is also a person of ordinary creativity, not an automaton.

Finally, the Federal Circuit said that Baxter does not meaningfully argue that the weak showing of secondary considerations here could overcome the showing of obviousness based on the prior art.

Don’t Forget to Claim What the Device Is, Not Just What the Device Does

In Bio-Rad Laboratories, Inc. v. ITC, [2020-1475, 2020-1605] (May 28, 2021), the Federal Circuit affirmed the Com-mission’s determination that 10X did not infringe the claims of U.S. Patent No. 9,500,664, and that 10X infringed the claims of U.S. Patent Nos. 9,636,682 and 9,649,635.

The relate generally to the field of microfluidics, and specifically to the generation of microscopic droplets, and in particular to systems and methods for generating microscopic droplets by using a micro-fluidic device commonly referred to as a “chip.”

Regarding the ‘664 patent, the ALJ determined that because the accused Chip GB does not involve a “sample,” it “does not include a ‘sample well,’ a sample channel, sample-containing droplets, or the claimed ‘droplet generation region.’” The Federal Circuit found that the patent distinguished between samples and reagents, and that the accused product was used with reagents and not samples as required by the claims. 10X and the ITC argued that the ALJ applied the exact construction of “sample” to which the parties agreed, and that Bio-Rad’s challenge is really directed at the ALJ’s factual application of that construction to the accused Chip GB, which the Federal Circuit found was supported by substantial evidence.

Bio-Rad also contended that, regardless whether the monomer solution in the accused Chip GB is a “sample,” the claims recite structural limitations all of which are included in the accused Chip GB. The Federal Circuit rejected the argument for several reasons. First, it was not clear that Bio-Rad raised this argument before the Commission. Second, the argument is premised on rewriting the claims in an oversimplified form and removing all limitations that differentiate the recited structures from each other. The Federal Circuit noted that the inventors did not seek patent protection for a broad claim to “a chip with three wells and interconnecting channels.” Nor did the inventors choose to differentiate the wells and channels from each other based on physical characteristics (e.g., shape, size, depth, location, etc.). Instead, the inventors chose to characterize the wells and channels based on the material contained within them. “Bio-Rad cannot escape that choice by pointing to the general proposition of law that “apparatus claims cover what a device is, not what a device does.”

With respect to the appeal of the finding infringement of the ‘682 and ‘635 patents, 10X argued error with respect to the ITC construction of “droplet-generation region.” However, the Federal Circuit found that the ALJ’s construction of the term “droplet-generation region” was consistent with the intrinsic evidence, and like the ITC, the Federal Circuit rejected 10X’s attempt to impose an unclaimed limitation that requires a channel to extend directly from the sample well to the droplet-generation region. The Federal Circuit found that under the ALJ’s correct construction, substantial evidence supported the Commission’s finding that the use of 10X’s accused chips directly infringes the asserted claims of the ’664, ’682, and ’635 patents.

On the issues of contributory infringement and inducement of infringement, the Federal Circuit concluded there was substantial evidence to support the ALJ’s findings.