U.S. Patent No. 1,792,572 discloses a container for use in on one of the “nineteen or more recognized holidays, which are featured by retailers dealing in candy, flowers, favors, etc.,” including Mother’s Day, as is clear from the above image,
On September 14, 2021, U.S. Patent No. D930702, on a Display Screen Portion with Animated Graphical User Interface, issued to Wepay Global Payments LLC. The design patent covers two embodiments: The first embodiment consists of Figs. 1 and 2:
The second embodiment consists of Figs. 3 – 5:
Within weeks of the patent issuance Wepay sued PNC Bank NA. A month later Wepay sued PayPal Inc. and Samsung Electronics Co. Last month Wepay sued JPMorgan Chase Bank NA and Bank of America NA. Then last week, Wepay sued Apple (6:22-cv-00223 in W.D.Texas), Amazon (1:22-cv-01061 in N.D. Ill), Tesla (W.D. Texas), Walmart Stores Inc (1:22-cv-01062 in N.D. Ill.))., and McDonald’s Corp. (1:22-cv-01064 in N.D. Ill.)
With the patent’s liberal use of dashed lines, it appears that Figs. 1 and 3 cover any screen with the a QR code finder pattern – the three black squares in three corners of the QR code. Figs. 2 and 5 cover any screen with the figure “$0.00.” Fig. 4, oddly enough, covers any screen, with or without content.. Since QR codes have been around since 1994, and dollar signs even longer — since the late 18th century, it seems unlikely that this pattern did not appear on an apps display before the September 3, 2020, filing date of the ‘702 patent.
Wepay is asserting the ‘702 to its broadest extent. Looking, for example at the complaint against Apple,
It is hard to fathom what is ornamental about the three squares of a QR code, or the dollar sign or zeros. It is also hard to imagine that if the defendants are infringing now, that they were not infringing before the patent was filed, thus invalidating the patent.
Give the tremendous resources of the defendants, it is difficult to imagine that this patent will be found valid and infringe, we can only hope they don’t destroy the design patent system in the process.
February is Black History Month, honoring the triumphs and struggles of African Americans throughout U.S. history. Among these triumphs are the inventions black inventors have contributed, many of which were not recognized with a patent because the Patent Acts of 1793 and 1836 barred slaves from obtaining patents because they were not considered citizens. It was not until the Patent Act of 1870 that “any person or persons” having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter could apply for and obtain a patent. The breadth and importance of inventions contributed by black inventors is one of the best examples of the value of diversity:
Dry Cleaning
Most historians agree that the first U.S. patent that issued to a black inventor was U.S. Patent No. X3306, issued to Thomas L. Jennings over two hundred years ago on March 3, 1821, on dry scouring — a method of dry cleaning.
Planter
The second patent that issued to a black inventor was U.S. Patent No. 8447X, issued to Henry Blair (inventor) – Wikipedia on a (Corn) Seed Planter. He also received U.S. Patent No. 15 on a Corn Planter.
Locomotive Lubricators
Elijah McCoy, was a prolific inventor. Among his 57 U.S. patents was U.S. Patent No. 129843 for Improvements in Lubricators for Steam-Engines, on July 28, 1872. It is reputed that his invention was so often duplicated, that people began asking for the “real McCoy.”
Uses for Peanuts
George Washington Carver was a famous scientist and prolific inventors, although he only patented two of his inventions, U.S. Patent 1,522,176, on Cosmetic and Process of Producing the Same, and U.S. Patent 1,632,365, on Process of Producing Paints and Stains.
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In Nature Simulation Systems Inc. v. Autodesk, Inc., [2020-2257](January 27, 2022), the Federal Circuit reversed the district court’s judgement that U.S. Patent Nos. 10,120,961 and 10,109,105, both entitled
“Method for Immediate Boolean Operations Using Geometric Facets” were not invalid for indefiniteness.
The patents are for data structures and algorithms for the claimed method, which is described as a modification of a the Watson method a Boolean operation published in 1981 for analyzing and representing three-dimensional geometric shapes. There were two claim elements that the district court determined made the claims indefinite: “searching neighboring triangles of the last triangle pair that holds the last intersection point”; and “modified Watson method.” The district court held the claims indefinite based on the “unanswered questions” that were suggested by Autodesk’s expert.
In finding the claims indefinite, the district court declined to consider information in the specification that was not included in the claims. The Federal Circuit found that the district court misperceived the function of patent claims. The Federal Circuit also found that the applicant, in consultation with the examiner, amended the claim to add the disputed language. The Federal Circuit noted that the district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. The court did not discuss the Examiner’s Amendment, and held
that since Dr. Aliaga’s questions were not answered, the claims are invalid.
The Federal Circuit said that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” The Federal Circuit added “[t]he subject matter herein is an improvement on the known Watson and Delaunay methods, and partakes of known usages for established technologies. Precedent teaches that when ‘the general approach was sufficiently
well established in the art and referenced in the patent’ this ‘render[ed] the claims not indefinite.’”
The Federal Circuit concluded that ‘[I]ndefiniteness under 35 U.S.C. § 112 was not established as a matter of law,” and reversed the district court.
In Novaritis Pharmaceuticals Corp. v. Accord Healthcare, Inc., [2021-1070](January 3, 2021) the Federal Circuit affirmed the district court’s determination that U.S. Patent No. 9,187,405 on a treatment for relapsing remitting multiple sclerosis (“RRMS”), is not invalid and that HEC’s Abbreviated New Drug Application infringes.
The’405 patent claimed a daily dosage of fingolimod “absent an immediately preceding loading dose,” which HEC challenged as lacking written description. The district court found sufficient written description in the EAE model and the Prophetic Trial, neither of which recited a loading dose.
On appeal, HEC attacked the expert testimony underlying the district court’s determination that the EAE experiment describes a 0.5 mg daily human dose as “undisclosed mathematical sleights of hand.” The Federal Circuit disagreed, noting a disclosure need not recite the claimed invention in haec verba. The disclosure need only clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. The Federal Circuit said that to accept HEC’s argument would require it to ignore the perspective of the person of ordinary skill in the art and require literal description of every limitation, in violation of our precedent. The Federal Circuit found no clear error in the
district court’s reliance on expert testimony in finding description of the 0.5 mg daily human dose in the EAE experiment results.
The Federal Circuit also rejected HEC’s challenge to the negative limitation “absent an immediately preceding loading dose.” The Federal Circuit began by noting that it was well established that there is no “new and heightened standard for negative claim limitations.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015). The Court said that negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Adding that a specification that describes a reason to exclude the relevant negative limitation is but one way in which the written description requirement may be met. The Federal Circuit said that the written description requirement
is satisfied where the essence of the original disclosure conveys the necessary information—regardless
of how it conveys such information, and regardless of whether the disclosure’s words are open to different interpretations.
The Federal Circuit pointed to expert testimony that one of ordinary skill in the art would understand the examples to exclude a loading does, so the specification’s apparent silence provided adequate written description of the negative limitation. The Court concluded that written description in this case, as in all cases, is a factual issue. In deciding that the district court did not clearly err in finding written description for the negative limitation in the ’405 patent, the court said that it was not establishing a new legal
standard that silence is disclosure. The Federal Circuit said that it was merely holding that on the record before it, the district court did not clearly err in finding that a skilled artisan would read the ’405 patent’s disclosure to describe the “absent an immediately preceding loading dose” negative limitation.
In Intel Corp. v. Qualcomm Inc., [2020-1664] (December 28, 2021), the Federal Circuit affirmed the final written decision of the originally challenged claims of U.S. Patent No. 8,229,043, but vacated and remanded as to the substitute claims.
The Federal Circuit addressed first considered the phrase “radio frequency input signal” in ’043 patent claims 17, 19, and 21. Intel argued that the term should be given its ordinary meaning, while Qualcomm argued for a more specific construction. The Federal Circuit noted that ‘[e]ven without considering the surrounding claim language or the rest of the patent document, . . .it is not always appropriate to break down a phrase and give it an interpretation that is merely the sum of its parts.” The Federal Circuit said that the surrounding language points in favor of Qualcomm’s construction, adopted by the Board. The Federal Circuit said the linguistic clues suggested that “radio frequency input signal,” to the relevant audience, refers to the signal entering the device as a whole, not (as Intel proposes) to any radio frequency signal entering any component. The Federal Circuit said that the specification provides further support for the Board’s reading.
The Federal Circuit concluded that in sum, while Intel’s interpretation may have superficial appeal, Qualcomm’s better reflects the usage of “radio frequency input signal” in the intrinsic record, and affirmed it.
On the question of obviousness, the Federal Circuit concluded that substantial evidence does not
support the Board’s determination that a skilled artisan would have lacked reason to combine the prior art to achieve substitute claims 27, 28, and 31. The Federal Circuit rejected the Board’s rationale for determining that it would not have been obvious to combine the references. The Federal Circuit noted that a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.
In Celgene Corp. v. Mylan Pharmaceutics Inc., [2021-1154] (November 5, 2021) the Federal Circuit affirmed the dismissal of a patent infringement action against defendants, MPI and Mylan Inc. for improper venue, and against defendant Mylan N.V. for failure to state claim upon which relief can be granted.
After an giving an excellent summary of Hatch-Waxman Act litigation, the Federal Circuit recounted the history of the action. Celgene filed its first case in May 2017. The defendants-
appellees moved to dismiss for improper venue and failure to state a claim in August 2017. That motion was denied in March 2018 without prejudice so that the parties could engage in venue-related discovery.
After two years of that discovery, the defendants renewed their motion to dismiss. The district court concluded that venue was improper. Namely, the thin set of facts that Celgene had gathered after those two years—the presence of affiliated entities and employees in New Jersey—failed to show a “regular and established place of business” of the defendants in the district under 28 U.S.C. § 1400(b).
The Federal Circuit found that neither MPI nor Mylan had “committed acts of infringement” in New Jersey. The court noted that in Valeant, it said that “venue in Hatch-Waxman cases must be predicated on past acts of infringement.” For the purposes of the Hatch-Waxman Act, “it is the submission of the ANDA, and only the submission, that constitutes an act of infringement
in this context.” The question, then is where the submission occurred, and what acts it includes.
The Federal Circuit rejected the argument that the submission extends to whereever the generic drug woudl be marketed and sold. The Federal Circuit also rejected the argument that the submission included the act of sending the mandatory ANDA Notice, reiterating that it is the submission of the ANDA, and only the submission, that constitutes an act of infringement in this context.
The Federal Circuit also found that neither MPI nor Mylan had a regular and established place of business in New Jersey. There are three requirements for a regular and established palace of business: (1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant. The third requirement was the relevant one in this case. The place of business must be “of the defendant, not solely . . . of the defendant’s employee.” Accordingly, “the defendant must establish or ratify the place of business,” and it is “not enough that the employee does so on his or her own.”
As to the third requirement, the Federal Circuit noted that it has discussed four non-exhaustive relvant factors:
(1) “whether the defendant owns or leases the place, or exercises other attributes of possession or control over the place”; (2) “whether the defendant conditioned employment on” “an employee’s continued residence in the district” or “the storing of materials at a place in the district so that they can be distributed or sold from that place”; (3) “a defendant’s representations” about that place, including advertisements; and (4) “the nature and activity of
the alleged place of business of the defendant in the district in comparison with that of other places of business of the defendant in other venues.”
17 of MPI’s and Mylan’s tens of thousands of employees live in New Jersey, but MPI and Mylan showed that it did not require or instruct those employees to live in New Jersey, or pay for their homes, or require employees to store materials in their homes, or pay for secretarial or support staff. The Court found that a roster of employees who live in the state, a handful of business cards with employee names and New Jersey home addresses, and two LinkedIn
profiles mentioning New Jersey were all too speculative to show ratification of those addresses by MPI and Mylan.
The Federal Circuit also found that two small storage lockers rented by MPI sales or marketing employees to store product samples are not places “of the defendant.” Nor do they bolster that the employees’ homes were such places. Those lockers are rented in the employees’ own names. They are used to intermittently store and access product samples. There is no evidence, in contrast, that they are used like warehouses—for order fulfillment, wholesaling, retail, or the like.
Overall, the Federal Circuit concluded that the employee-associated locations are not
a regular and established place of business of the defendants under § 1400(b).
The district court also concluded that, for Mylan N.V., Celgene had failed to state a claim upon which relief could be granted. That is, the ANDA that Celgene itself included with its complaint sought approval only on behalf of MPI. And Celgene’s pleadings with respect to the involvement of Mylan N.V. in that submission were simply too speculative and conclusory.
The Federal Circuit noted that MPI, not Mylan N.V., was the entity that signed and physically submitted the ANDA. Thus the question was whether Celgene sufficiently plead that (1) Mylan N.V. was actively involved in and directly benefited from the ANDA (including in the agent–principal sense) or (2) MPI acted as Mylan N.V.’s alter ego in derogation of the corporate form.
The Federal Circuit found that Celgene’s pleadings fail under either theory.
As to the denial of leave to amend the Complaint, the Federal Circuit said that Celgene’s allegations in its complaint were conclusory and insufficient. It knew the basis for their deficiency for years, as the district court correctly concluded, yet made no attempt to amend them in a timely manner. Nor has Celgene argued on appeal that it showed good cause. In
our view, then, the district court did not abuse its discretion in denying Celgene’s request for leave to amend its complaint.
What’s scarier than a Section 101 rejection? Some of these patents for celebrating the spookiest holiday?
In Hyatt v. Hirshfeld, [2020-2321, 2020-2323, 2020-2324, 2020-2325] (August 18, 2021), the Federal Circuit affirmed the district court’s denial of an award of the USPTO’s expert witness fees in defending a civil action under 35 USC § 145 brought by patent applicant Hyatt.
In a prior appeal the Federal Circuit held that 35 USC § 145 does not entitle the USPTO to recover its attorneys fees. The Patent Office also sought reimbursement of its expert witness fees under 35 U.S.C. § 145, which provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.” The Patent Office cited a string of district court decisions awarding expert witness fees under the statute, but the district court found that these cases lacked any reasoning regarding the American Rule presumption against fee shifting, and noting recent Supreme Court emphasis of that presumption, the district court denied an award of expert fees.
The Federal Circuit agreed with the district court that 35 USC § 145 was not sufficiently specific to overcome the presumption against fee-shifting. The Federal Circuit said that No magic words are needed to override the American Rule, but the requirement that Congressional intent be specific and explicit is a high bar. The Federal Circuit said that vague terms like “costs” are also not enough.
The Federal Circuit looked to the Supreme Court’s decsion in NantKwest, noting that although the Court’s holding that attorney’s fees are not shifted does not inherently dictate that expert fees cannot be shifted, much of the Court’s reasoning in NantKwest applies equally with respect to expert fees. Tracking that decision, the Federal Circuit found the dictionary definitions of the words in the statute, the language of the statute, and the fact that in other stautes Congress specifically included expert fees, suggested that the central logic of NantKwest is applicable to its decision here, indicating that § 145 does not shift expert witness fees.
The Patent Office emphasized the long string of cases awarding expert witness fees, but the Federal Circuit said that longstanding practice is not enough to overcome the American Rule presumption.
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.
