While there were certainly inventors who were slaves, the patent system was unavailable to them. In an interesting case from 1857, a slave named Ned invented a “double plow and scraper,” which enabled a farmer to plow and scrape both sides of a row of cotton simultaneously. Ned was “owned” by Oscar J.E. Stuart, a lawyer and planter from Mississippi. Stuart tried to patent the invention first in Ned’s name and then in his own, but was denied by the Commissioner of Patents because Ned, as a slave, could not execute the required oath, and neither could Stuart, because he was not the inventor. Stuart, apparently having no sense or irony, complained that it would violate “equal protection” if slave owners could not patent the inventions of their slaves. Read more about this in Frye, Invention of a Slave, 68 Syracuse Law Review 181 (2018)

According to the Report of the Commissioner of Patents for the Year 1857, the invention of a slave could not be patented because a slave inventor could not take the patent oath, and in any event could not receive, own, or transfer a property right. This latter point was actually consistent with the laws in some states (e.g., Louisiana) that prohibited slaves from owner property, even if they could obtain it.

The Confederate States patent laws express permitted the owner to apply to patent the invention of slave, although it is not clear whether any slave owner took advantage of this during the short tenure of the Confederate States Patent Office. This provision may have been initiated by Confederate President’s Jefferson Davis, who, with his older brother Joseph Emory Davis, previously unsuccessfully attempted to get a U.S. patent on an improved propeller invented by Benjamin Thornton Montgomery, then a slave owned by Joseph.

155 years ago today, on June 19th, 1865, Major General Gordon Granger, landed at Galveston, Texas, and with his General Order 3, completed the elimination of slavery in the United States begun by Republican President Abraham Lincoln’s September 22, 1862, Emancipation Proclamation. The inability to get a patent seems trivial in comparison with the injustice of slavery; but this embarrassment of the patent system ended 155 years today.

In In re Personalweb Technologies LLC, [2019-1918] (June 17, 2020), the Federal Circuit affirmed the dismissal of Personalweb’s suits against Amazon’s customers, because they were barred as a result of a prior lawsuit brought by PersonalWeb against Amazon, which was dismissed with prejudice.

The district court held that claim preclusion barred PersonalWeb’s claims regarding acts of infringement occurring prior to the final judgment in the Amazon action, and that the Kessler Doctrine, first adopted by the Supreme Court in Kessler v. Eldred, 206 U.S. 285 (1907), barred PersonalWeb’s claims of infringement after the final judgment in the Amazon action.

The Kessler Doctrine resulted from the Supreme Court’s decision in Kessler v. Eldred, 206 U.S. 285 (1907), to fill the gap left by claim preclusion and issue preclusion. Claim preclusion does not apply to acts of alleged infringement that occur after a final judgment in an earlier suit. Issue preclusion does not apply unless there is (1) a final judgment on the merits, (2) privity of parties, and (3) identity of issues. When neither claim preclusion nor issue preclusion apply, the Kessler doctrine may protect an adjudged non-infringer from repeated harassment for continuing its business.

The Kessler Doctrine had previously only been applied to issues that were actually litigated, but the Federal Circuit expanded the doctrine to include an earlier dismissal with prejudice, which it termed an abandonment of PersonalWeb’s claims without reservation and therefore stands as an adjudication that Amazon was not liable for infringement: “The scope of that right is not limited to cases involving a finding of non-infringement that was necessary to the resolution of an earlier lawsuit, but extends to protect any products as to which the manufacturer established a right not to be sued for infringement.”

In Thryv, Inc., v. Click-To-Call Technologies, LP, [18-916] (April 20, 2020), the Supreme Court vacated the Federal Circuit’s decision vacating the PTAB’s Final Written Decision invalidating claims of U.S. Patent No. 5,818,836 relating to a technology for anonymous telephone calls.

Entities associated with Thryv, Inc. sought inter partes review of the ‘836 patent, and patent owner Click-to-Call argued that the petition was untimely under §315(b). The PTAB disagreed and instituted review, eventually issuing a final written decision reiterating its §315(b) decision and finding 13 of the patent’s claims unpatentable. Click-to-Call appealed the Board’s §315(b) determination. Treating the Board’s application of §315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely, vacated the Board’s decision, and remanded with instructions to dismiss.

The Supreme Court held that 35 USC §314(d), which precludes judicial review of the USPTO’s institution decision, applies to §315(b)’s time prescription, and vacated the Federal Circuit’s decision and remanded.

The issue was whether a challenge based on §315(b) ranks as an appeal of the agency’s decision “to institute an inter partes review.” §314(d). The Supreme Court found no need to venture beyond Cuozzo’s holding that §314(d) bars review at least of matters “closely tied to the application and interpretation of statutes related to” the institution decision, because a §315(b) challenge easily meets that measurement. Section 315(b), sets forth a circumstance in which “[a]n interpartes review may not be instituted,” expressly governs institution and nothing more.

The Supreme Court said that this conclusion is strongly reinforced by the statute’s purpose and design. Congress designed inter partes review to weed out bad patent claims efficiently. Allowing §315(b) appeals, however, would unwind agency proceedings determining patentability and leave bad patents enforceable.

The Supreme Court rejected Click-to-Call’s argument that §314(d)’s bar on judicial review was limited to the USPTO’s threshold determination under §314(a) of whether the petitioner has a reasonable likelihood of prevailing. Finding Cuozzo is “fatal” to that interpretation.

Justice Gorsuch and Sotomayor dissented, with a persuasive explanation of not just how the majority got it wrong, but also why they are wrong, noting: “No matter how wrong or even purposefully evasive, the Director’s assessment of a petition’s timeliness is always immune from review.” According to Gorsuch and Sotomayor it was only the initial determination of a reasonable likelihood of success that was insulated from review, since this would necessarily be reviewed as part of the review of the Final Written Decision.

There just seems to be something wrong in allowing an administrative agency to determine an issue of law outside of its expertise (the significance of service of a complaint), and then barring the courts from reviewing it. It is bad policy to insulate the patent office from review, and bad precedent to insulate any administrative agency from review.

Here are a few older patents on Easter-related inventions to mark the Easter 2020.

In Valeant Pharmaceuticals International, Inc. v. Mylan Phamaceuticals Inc., [2018-2097] (April 8, 2020) the Federal Circuit reversed and remanded that district court’s grant of summary judgment that claim 8 of U.S. 8,552,025 is not invalid.

The ‘025 claims stable methylnaltrexone pharmaceutical preparations. Claim 8 recites “[t]he pharmaceutical preparation of claim 1, wherein the preparation is stable to storage for 24 months at about room temperature.”

Mylan argued that the district court erred in at least two respects: (1) by failing to hold that Mylan established a prima facie case that claim 8 would have been obvious because the pH range in the claim overlaps with pH ranges in the prior art for similar compounds and (2) by resolving disputed fact issues at summary judgment.

The Federal Circuit agreed with Mylan that the record supports a prima facie case of obviousness. Here, the pH range recited in claim 8 clearly overlaps with the pH range in the record art, but none of the references disclose the same drug as the one claimed. The qestion was whether prior art ranges for solutions of structurally and functionally similar compounds that overlap with a claimed range can establish a prima facie case of obviousness. The Federal Circuit conclude that they can and, in this case, do. The Federal Circuit noted that its case law reflects an understanding that skilled artisans can expect structurally similar compounds to have similar properties, and that that an obviousness analysis can rely on prior art compounds with similar pharmacological utility in addition to structural similarity.

Because these three molecules bear significant struc-tural and functionality similarity, and because the prior art of record teaches pH ranges that overlap with the pH range recited in claim 8, Mylan has at least raised a prima facie case of obviousness sufficient to survive summary judgment.

In Myco Industries, Inc. v. Blephex. LLC, [2019-2374] (April 3, 2020), the Federal Circuit reversed the district court’s preliminary injunction enjoining BlephEx from making allegations of patent infringement and also from threatening litigation against Myco’s potential customers over U.S. Patent No. 9,039,718, entitled “Method and Device for Treating an Ocular Disorder,”

The Federal Circuit said that when a preliminary injunction prevents a patentee from communicating its patent rights, a court applies federal patent law and precedent relating to the giving of notice of patent rights. In such cases, the grant of a preliminary injunction is reviewed in the context of whether, under applicable federal law, the notice of patent rights was properly given. The Federal Circuit further said that federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless, and an asserted claim is objectively baseless if no reasonable litigant could realistically expect success on the merits.

The Federal Circuit concluded that the district court abused its discretion when it granted a preliminary injunction enjoining patentee speech with-out a finding of bad faith. The Federal Circuit said that although a district court’s discretion to enter a preliminary injunction is entitled to substantial deference, the patent laws permit a patentee to inform a potential infringer of the existence of its patent. The Federal Circuit found that the district court neither made a finding of bad faith nor even adverted to the requirement. The Federal Circuit added that to the extent the district court made any factual findings relevant to bad faith, the court expressly declined to find that any of BlephEx’s statements were either false or misleading.

The Federal Circuit rejected Myco’s argument that it would be bad faith to accuse physicians with infringement in view of 35 U.S.C. § 287(c)(1), but the Federal Circuit said the statute did not make physicians “immune from infringement,” it merely prevents the patent owner from seeking a remedy. Further, the District Court found no evidence that any threats were made.

Finally the Federal Circuit vacated the finding that Myco was likely to succeed on the merits, finding several lapses in the district court’s efforts at claim construction.

The Federal Circuit concluded:

Speech is not to be enjoined lightly. Here, there is not even a finding, let alone a finding supported by evidence and a correct view of the law, that the speech restrained was either false or misleading. The district court abused its discretion when it granted a preliminary injunction en-joining BlephEx from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading.

Even though 2020 is a leap year, there will be no leap patents this year because patents only issue on Tuesdays, and February 29 is a Saturday. The last leap patent issued February 29, 2000, and our next opportunity for a leap patent will not occur until February 29, 2028.

Leap patents also issued in 1972, 1944, 1916, and 1876.

In Cheetah Omni LLC v. AT&T Services, Inc., [2019-1264] (February 6, 2020) the Federal Circuit affirmed the dismissal of claims for infringement of U.S. Patent No. 7,522,836.

AT&T (and its supplier Ciena) moved for summary judgment that Cheetah’s infringement claim was barred by agreements settling previous litigation between Cheetah and Ciena involving U.S. Patent No. 7,339,714 the patent-in-suit’s “Aunt”.

To dispose of the previous litigation, Cheetah granted to Ciena “a perpetual, irrevocable, worldwide, non-exclusive, fully paid-up license under the Licensed Patents to make, have made (directly or indirectly and solely for Ciena or its Affiliates), use, offer to sell, sell, and import and export the Licensed Products.” “Licensed Patents” were defined as:

(i) the Patents-in-Suit, and (ii) all parents, provisionals, substitutes, renewals, continuations, continuations-in-part, divisionals, foreign counterparts, reissues, oppositions, continued examinations, reexaminations, and extensions of the Patents-in-Suit owned by, filed by, assigned to or otherwise controlled by or enforceable by Cheetah or any of its Affiliates or its or their respective successors in interest at any time as of, prior to, on or after the Effective Date, whether filed before, on or after the Effective Date.

Relying on General Protecht Group Inc. v. Leviton Manufacturing Co., 651 F.3d 1355, 1361 (Fed. Cir. 2011), the district court determined that the ’836 patent was impliedly licensed as the grandchild of the expressly licensed ’925 patent of the ‘714 patent. The Federal Circuit agreed, noting that the presumption established in General Protecht provided a simple and clear resolution in the case. Because the ’925 patent was expressly licensed, the license also included an implied license to a continuation of its continuation, the ’836 patent-in-suit.

Because the licenses extend to both the ’836 patent and the accused AT&T products the district court properly granted summary judgment for AT&T and Ciena and dismissed the infringement suit.