July 4, 2022

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It’s the Fourth of July, 2022, and time to celebrate the holiday, as this blog always does, with patents.

We begin with the appropriately named Fourth of July Echinacea, the subject of PP26075, issued November 10, 2015:

U.S. Patent No. PP2605, Fig. 2.

Edward Driscol, Jr. was issued U.S. Patent No. 250507 on December 6, 1881, for a Toy Whip that used caps to make a cracking sound.

U.S. Patent No. 250507, Fig. 1

according to Mr. Driscol:

U.S. Patent No. 250507, Col. 2, ll. 41-46.

Inventor Louis Schuetz of Newark, New Jersey, was also concerned with entertaining the children on the Fourth of July, and received U.S.Patent No. 370,356 for his Toy on September 20, 1887.

U.S. Patent No. 370,356, Col. 1, ll, 16-26.

Miniature cannons and fire crackers — what a blast.

U.S. Patent No. 370356

Another inventor perhaps focus more on Fourth of July fun, rather than safety, was Edwin H Cady, of Gardner, Massachusetts. He received U.S. Patent No. 423215 on March 11, 1890, for a Toy Detonator:

U.S. Patent No. 423215

Lastly, inventor William G. Spiegel, of New York, N.Y, invented a Time-Lock for Savings-Banks, which received U.S. Patent No. 474870 on May 17, 1892.

U.S. Patent No. 474870

The bank was specifically designed to help children save for the Fourth of July — likely to fund the purchase of fireworks and perhaps Mr. Schuetz’ and Mr. Cady’s inventions:

U.S. Patent No. 474870, Col. 1 ll. 23-28.

Juneteenth 2022

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Juneteenth is actually June 19th, but this most recent Federal Holiday, is celebrated this year on June 20th. Although the federal holiday is new, first recognized in 2021, it had been recognized ever since the June 19, 1865, event it commemorates.

Juneteenth has only be mentioned in two patents: U.S Patent No. 8,136,962, and 11,281,738. However, on the trademark side, things have been more active — particularly recently. There are 36 pending applications and issued registrations on marks including the term JUNETEENTH, 33 of which were filed in the last three years. Trademark filings remain a good indicator of what’s on peoples’ minds — and right now its Juneteenth.

Happy Fathers’ Day!

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There aren’t very many patents that mention Father’s Day, so the patent of the day is actually a patent application (US20160026974), which display an appropriate sentiment. Happy Father’s Day to all the fathers out there, and thanks!

June 14, 2022 — Flag Day 2022

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Flag Day is celebrated on June 14, the anniversary of the 1777 adoption of the first “American” flag by the Continental Congress. In 1916, President Woodrow Wilson issued a proclamation that officially established June 14 as Flag Day; on August 3, 1949, National Flag Day was established by an Act of Congress, although Flag Day is not an official federal holiday.

There are plenty of patents with patriotic themes, including flag displays, but only a handful expressly mention “flag day.” One of these is U.S. Patent No. 4,872,794 on a Flagstaff with Protective Housing, which provides a protective cover for a flag when it is not on display:

Happy Flag Day. Go celebrate its 245th birthday.

June 6, 2022 Patent of the Day

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June 6, 2022, is the 78th anniversary of the D-Day landing at Normandy. Among the thousands of people who contributed to is success was inventor Andrew Higgins. Higgins was a boat builder and his low draft boat hull design — patented in 1939 (U.S. Patent No. 2,144,111) was well suited for landing on shallow beaches without damaging the propeller.

Higgins later design — for a landing craft with a deployable ramp (U.S. Patent No. 2,341,866) was adopted by the U.S. Navy. Higgins filed this patent application on the day after the attack on Pearl Harbor, and in issued four months before the D-Day landing It has been estimated that at one point during WWII, 90% of the Navy’s fleet were boats designed by Higgins.

On D-Day, more than 4,000 Allied soldiers lost their lives, and many more were wound or went missing, However, many more owe their lives — and the success of the landing — to Louisiana boat builder and inventor, Andrew Higgins.

Memorial Day 2022

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Memorial Day was originally known as Decoration Day, holiday started by the Grand Army of the Republic, an organization of Union Veterans of the Civil War to remember their deceased comrades in arms by decorating their graves. The first Decoration Day was celebrated May 30, 1868, and by 1890, the holiday had been adopted by all of the former Union States.

The earliest mention of Decoration Day in the patent literature is US489218 from 1893 on a Floral Figure, which can be placed on graves “on Decoration Day or other occasions.”

As time passed “Memorial Day” began to replace “Decoration Day” as the day became a day to honor all fallen American soldiers, and not just those from the Civil War. In 1949, Plant Patent 875 used the terms interchangeably, noting that the subject Geranium plant would bloom “a hundred percent prerectly for Memorial Day” and later that it “easily comes into bloom for Decoration Day.”.

In 1958, U.S. Patent No. 2,857,507,disclosed an Electric Lawn Ornament that could be used on Decoration Day:

In 1968 the Uniform Monday Holiday Act codified the name “Memorial Day” into law, and he first Memorial Day was celebrated in 1971.

U.S. Patent No. 5,435,099 coveres a Memorial-Stone-Attached Container useful for

U.S. Patent No. 7,059,082 covers a Memorial Vase Insert Artificial Flower and Helium Balloon Holder that can be used to celebrate Memorial Day.

“AND” Can Mean “OR” Depending on the Context

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In Kaufman v. Microsoft Corp., [2021-1634, 2021-1691] (May 20, 2022) the Federal Circuit affirmed the district court’s denial of Microsoft’s post-judgment challenges to a $7 million damage award for infringement of U.S. Patent No. 7,885,981, and reversed the district court’s denial of prejudgment interest.

The ’981 patent addresses the creation of user interfaces that permit users to interact with data in relational databases. One of the issues was whether the claim required the automatic generation of an end user interface. The word automatic did not appear on the body of the claim, but the preamble stated that the method involved a “processor for automatically generating and end-user interface.”

Microsoft moved for summary judgment, arguing that that the phrase “automatically
generating” found in the preamble of claim 1 is limiting, and means that “no human labor required,” and thus Microsoft product does not infringe. Microsoft argued that the district court erred in failing to clarify the reach of the “automatically” requirement for the jury, warranting a new trial under O2 Micro because a clarification could reasonably have led the jury to a different verdict. However, the Federal Circuit held that Microsoft failed to preserve its O2 Micro challenge.

The Federal Circuit noted that in the original Markman proceeding, the parties did
not request a construction of the word “automatically” or raise an issue of the scope of the “automatically generating” requirement. During the motion for summary judgment
briefing, Microsoft described the “human labor” involved in use of Dynamic Data, and it
asserted a need for a claim construction under O2 Micro, but it said only that there was “a fundamental legal dispute as to the meaning of “automatic” in the claims, it never clearly said that, apart from what “automatic” means, a construction was needed specifying what functions had to be automatic, i.e., the scope of the “automatically generating” requirement. Further, Microsoft never offered the district court a formulation of such a claim construction resolving that scope issue, including at the at the pre-trial hearing.

The Federal Circuit also rejected Microsoft’s argument, presented for the first time on appeal, that “automatically generating” should be construed broadly to require some defined set of steps beyond those recited by the claims in (a), (b), and (c) to be performed automatically. Microsoft never proposed such a construction to the district court.

Microsoft’s final argument was that there was insufficient evidence to support the jury’s finding infringement, but the Federal Circuit agreed with the district court correctly explained, the jury reasonably that the manual step identified by Microsoft were not part of the claim requirement that were required to be performed automatically.

Finding that Microsoft failed to establish that the district court erred in its claim construction or that the jury’s verdict was not supported by substantial evidence, the Federal Circuit affirmed the jury’s finding that the accused processes come within the “automatically generating” limitation.

Microsoft also argued that the district court erred in the post-trial ruling when it concluded that “and” means “and/or,” contending that the phrase should be given the conjunctive
meaning, so that the client application (constituting the end-user interface) must integrate into each of the individual mode displays (for creating, retrieving, updating, and deleting) all three of the “processes for representing, navigating, and managing said relationships across tables.” The Federal Circuit agreed with the district court’s construction, noting that a claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support. The Federal Circuit noted that in the sole embodiment in the patent, a “retrieve” display lacks a “managing” process. The the Federal Circuit said that “and” must be construed as “and/or” so that the claim would cover the only disclosed embodiment.

The Federal Circuit recognized that it cannot redraft claims whether to make them operable or to sustain their validity, or to cause them to encompass the sole described embodiment, it said that that is not what it was doing here. The Court said where there is “only one reasonable construction,” it has recognized that, in certain contexts, the word “and” can reasonably be understood to denote alternatives, rather than conjunctive requirements.

Finally, the Federal Circuit addressed the denial of prejudgment interest. The district court provided two rationales for denying prejudgment interest to Kaufman: first, that the jury
verdict “subsumed interest,” and second, that Mr. Kaufman was responsible for “undue delay” in bringing the lawsuit, causing prejudice to Microsoft. The Federal Circuit said that the jury verdict cannot reasonably be understood to include interest, noting there was no testimony about how the interest would be calculated. The Federal Circuit also said that the district court also erred in finding Kaufman was responsible for undue delay justifying the denial of prejudgment interest. The Federal Circuit said that the fact that Mr. Kaufman
did not sue for five years after he became aware of Microsoft’s potential infringement does not alone justify a finding of undue delay. The Federal Circuit said that Microsoft presented
no evidence as to why Kaufman’s delay was undue.

Not so fast — Letters to Customers + Customer Litigation Required More Analysis Before Dismissing a DJ Action

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In Mitek Systems, Inc., v. United States Automobile Association, [2021-1989] (May 20, 2022), the Federal Circuit affirmed a California district court decision transferring Mitek’s DJ action to Texas, and vacated the Texas District Court’s dismissal of the DJ action, and remanded.

USAA owns U.S. Patent Nos. 8,699,779, 9,336,517, 8,977,571, and 9,818,090, all of which address the use of a mobile device to capture an image of a bank check and to transmit it for deposit. After more than 1000 notice letters to its clients, and an infringement trial against one of its customers, Mitek filed a declaratory judgment action against USAA in the Northern District of California.

USAA moved for dismissal under Rule 12(b)(1) for lack of subject-matter jurisdiction, or for dismissal based on the discretion granted to the district court by the Declaratory Judgment Act. In the alternative, USAA sought transfer to the Eastern District of Texas. The California district court granted USAA’s motion to transfer the declaratory-judgment action to the Eastern District of Texas, without ruling on the motion to dismiss, After transfer of the case, the Texas court took up the motion to dismiss, granting it because there was
no case or controversy between the parties. The Court determined the neither the customer litigation, nor the cease and desist letters were sufficient to support jurisdiction, and even if they did, the court would exercise its discretion to decline jurisdiction.

The Federal Circuit found the district court’s analysis incomplete, among other things no considering contributory and inducement of infringement. The Federal Circuit also found that the district courts analysis under 12(b)(1) failed to distinguish between a facial or a factual challenge.

The Federal Circuit said that on remand the district court’s primary task regarding Mitek’s first asserted basis for establishing a case or controversy will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. Making those core determinations, and considering any other pertinent issues, will supply a fuller basis for the bottom-line assessment of Mitek’s first theory of Article III jurisdiction.

With respect to Mitek’s alternative basis for jurisdiction the USAA’s letters to Mitek customers combined with subsequent indemnification demands — the Federal Circuit also found the district court analysis inadequate. The district court observed that Mitek had submitted only one letter with the Complaint — a letter that came from USAA’s licensing counsel and that did not threaten litigation, include claim charts for the patents-in-suit,
or identify Mitek or particular products as infringing. The Federal Circuit concluded that
the allegations in Mitek’s complaint concerning USAA’s letter campaign and the attached example letter, viewed in light of the Wells Fargo litigation, were sufficient to show a controversy between USAA and Mitek’s customers who received letters.

The Federal Circuit said that a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, does not suffice, but the Court said that here, there is just enough “more.” Given the additional detail in the claim and the customer suit against Wells Fargo, the Federal Circuit said under the totality of the circumstances, there is enough for Mitek’s other customers to reasonably interpret USAA’s actions as an implicit assertion of infringement based on incorporation of Mitek technology. As to the showing of a demand for an indemnity, the Federal Circuit said that this was met too, and that it was not necessary that Mitek further concede liability under the indemnity obligation.

On remand, the Federal Circuit instructed the district court should first determine which Rule
12(b)(1) framework to apply, i.e., determine whether USAA mounted a factual attack on the indemnity allegations of Mitek’s complaint. If it finds that USAA has not mounted a factual attack, the court must closely analyze the relevant indemnity allegations, to determine whether they suffice. If it finds that USAA has mounted a factual attack, the district court must decide how to proceed, including whether the parties should have the opportunity to present additional evidence, and to address issues concerning post-complaint events.

Regarding the discretionary decision to dismiss, the Federal Circuit said that where a discretionary decision rests on an inadequate explanation and might well be different without the deficiencies, it may vacate the decision and remand for reconsideration. In any event, there must be well-founded reasons for declining to entertain a declaratory judgment action. The Federal Circuit said that the district court did not give reasons independent of its reasons for its jurisdictional dismissal, which it held to be deficient in various respects, and cannot stand. The Federal Circuit vacated the discretionary dismissal.

PTAB Should Have Resolved Dispute Among Authors of a Reference to Determine Whether They All Made Contributions to the Ultimately Claimed Subject Matter

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In Google LLC, v. IPA Technologies Inc, [2021-1179, 2021-1180, 2021-1185] (May 19, 2022), the Federal Circuit vacated the PTAB decision that Google had not shown the challenged claims in U.S. Patent Nos. 6,851,115 and 7,069,560 to be unpatentable.

During the prosecution of the ’115 patent, various claims were rejected based on the Martin reference, which the examiner identified as being prior art. In response, SRI contested the prior art status of the reference by submitting inventor declarations by Martin and Cheyer under 37 C.F.R. §1.132, asserting that Dr. Moran was “not a co-inventor of the subject matter described in the subject matter disclosed and claimed in the instant application[s].”
If Dr. Moran was not a co-inventor of the Martin reference, the Martin reference was not prior art because it was made by the same inventive entity as the ’115 and ’560 patents and not “by others.” 35 U.S.C. § 102(a) (pre-AIA).1 After receiving the declarations, the examiner withdrew the rejections based on the Martin reference and continued examining the applications. The patents were granted and ultimately assigned to appellee IPA
Technologies, Inc. (“IPA”).

Google petitioned the Board for inter partes review of various claims of the ’115 and ’560 patents, relying the same Martin reference, and contending that the Martin reference was prior art as work “by others” because it described the work of an inventive entity (Martin,
Cheyer and Dr. Moran) different from the inventive entity of the challenged patents (Martin and Cheyer). The Board instituted IPR, but concluded that Google had not provided sufficient support that Moran was a co-inventor, and dismissed the Petition. On appeal, Google argued that the Board improperly put the burden on Google to provide that the Martin reference had a different inventive entity than the challenged patents.

The Federal Circuit noted that the term “burden of proof” has been used to describe two distinct concepts: the burden of persuasion and the burden of production. The burden of persuasion is “the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” In an IPR, “the burden of persuasion is on the petitioner
to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee.” In contrast, the burden of production, or “going forward with evidence,” is a shifting one, “the allocation of which depends on where in the process of trial the issue arises.” The burden of production may be met either by “producing additional evidence” or by “presenting persuasive argument based on new evidence or evidence already of record.”

The Federal Circuit said that Google, as the petitioner, had the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence and this burden never shifted. It found no error with the Board’s requiring that Google establish the Martin reference was prior art “by another” by showing that Dr. Moran made a significant enough contribution to the portions relied on to invalidate the challenged patents to qualify as a joint inventor of those portions.

Turning to the question of whether Google satisfied its burden, the Federal Circuit said that it is evident that Dr. Moran made general technical contributions to the project, but that that was not the relevant inquiry. To be a joint inventor of the Martin reference, Dr. Moran must have made an inventive contribution to the portions of the reference relied upon and relevant to establishing obviousness. The Federal Circuit said that the testimony of Dr. Moran, if credited, might well establish that he was a co-inventor of the particular portions of the Martin reference relied on by Google. The Federal Circuit found, however, that the Board
did not complete the full Duncan analysis. Instead, it appeared to the Federal Circuit that the Board concluded that Dr. Moran’s testimony was insufficiently corroborated.

The Federal Circuit found that although coauthorship does not presumptively make a co-author a coinventor, it is significant corroborating evidence that a co-author contributed to the invention. Thus, the Federal Circuit said, the issue was not lack of corroboration for
Dr. Moran’s testimony, but rather whether his testimony should ultimately be credited over Cheyer and Martin’s conflicting testimony during the IPR proceedings. The Federal Circuit said that instead of resolving the conflicts, the Board stated that it found the testimony of Dr. Moran, Mr. Martin, and Mr. Cheyer credible. The Federal Circuit thus vacated the Board’s decision, and remanded,

Administrative Economy in Action: IPR that Found Patent Invalid is Retroactively Terminated

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In Atlanta Gas Light Company v, Bennett Regulator Guards, Inc, [2021-1759] (May 13, 2022) the Federal Circuit dismissed Atlanta Gas’ appeal for lack of jurisdiction.

This was the third time this case made it to the Federal Circuit from the PTAB, In its final written decision, the Board, in the underlying inter partes review proceeding, rejected patent owner Bennett Regulator Guards, Inc.’s argument that petitioner Atlanta Gas Light Company was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b). It then determined that the challenged claims were unpatentable over the prior art. Bennett appealed,and in the first appeal, the Federal Circuit disagreed with the Board’s time-bar determination, holding that Atlanta Gas should have been barred; vacated the Board’s unpatentability determination; and remanded with directions to dismiss the IPR (and to further consider a sanctions order that the Board had not yet finalized.)

Before the Board acted on this mandate, however, the Supreme Court held that time-bar determinations were unreviewable in Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), and vacated the Federal Circuit’s decision overruling the Board’s time-bar determination.

On remand from the Supreme Court, the Federal Circuit affirmed the Board’s unpatentability
determination on the merits (while saying nothing about the time bar) and again remanded for the Board to reconsider and finalize its order regarding sanctions. On remand from the Federal Circuit, the Board terminated the proceeding due in part to its reconsideration of its decision on the time bar.

Atlanta Gas appealed, but the Federal Circuit concluded that it lacked jurisdiction to review the Board’s decision to vacate its institution decision, a decision it made based in part on
its evaluation of the time bar and changed Patent and Trademark Office policy. Accordingly, the Federal Circuit dismissed Atlanta Gas’s appeal for lack of jurisdiction.

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