U.S. Patent No. 5,288,076 turns presidential election into a game (funny how patents imitate life):

U.S. Patent No. 2536 protects the appearance of an Andrew Jackson medal:

U.S. Patent No. 3274 protects the appearance of a Design for a Clock Case, featuring Abraham Lincoln.

U.S. Patent No. 2983 protects the appearance of a sculpture of Abraham Lincoln and his Council of War:

U.S. Patent No. 6071 protects the appearance of a medal featuring President Grant (and Senator H. Wilson:

U.S. Patent No. 8581 protects the design of a medal featuring a tree with eighteen
branches representing the eighteen administrations, which are indicated by the names of the
Presidents of the United States:

U.S. Patent No. D8593 protects the appearance of a flag with the names of the first eighteen presidents:

U.S. Patent No. 169085 protects a Revolving Game Apparatus, featuring the first eighteen presidents:

U.S. Patent No. D9239 protects the appearance of a badge with the images of George Washington and Ulysses Grant.

U.S. Patent No. 9418 protects the design for a charm, medal, or badge that features the image of Rutherford B. Hayes, and William A. Wheeler:

U.S. Patent No. D9482 protects the design of a shirt with the images of Rutherford B. Hayes and William A, Wheeler.

The Commissioner exercises supervisory authority over the Patent and Trademark Office, and decides a variety of kinds of petitions.  These decisions are collected on the USPTO website:

• Accelerated Examination
• Maintenance Fee
• Revival
• Patent Term Extension or Adjustment under 35 USC 154
• Patent Term Extension (Restoration) under 35 USC 156
• Reexamination
• Filing Date
  • Section 1.10
  • Section 1.53
• Disclaimers
• Refunds
• Eighteen Month Publication
• Other

In Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. — (2016), the Supreme Court rejected the Federal Circuit’s two-step Seagate test for the award of enhanced damages under 35 USC 284, holding that the aware of enhanced damages was within the discretion of the trial court, subject to review for abuse of that discretion.

The award of enhanced damages under Section 284 has had ups and downs under the Federal Circuit’s supervision.  Shortly after the Federal Circuit was created, in Underwater Devices, the Federal Circuit announced an “affirmative duty to exercise due care.”  Three years later in Kloster Speedsteel,  the Federal Circuit created an adverse inference from not introducing an opinion of counsel to demonstrate a lack of willfulness.  This adverse inference persisted until 2004, when the Federal Circuit recognized the gamesmanship surrounding opinions of counsel, and eliminated the adverse inference in Knorr-Bremse.  Then in 2007 the Federal Circuit raised the bar higher in Seagate establishing a two part, objective/subjective test.

Under Seagate, a patent owner must first show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. Second, the patentee must demonstrate, again by clear and convincing evidence, that the risk of infringement was either known or so obvious that it should have been known to the accused infringer.  The Supreme Court said that this test is not consistent with 35 USC 284.

§284 provides simply that “the court may increase the damages up to three times the amount found or assessed.”  The Supreme Court noted that the statute contains no explicit limit or condition, and that the word “may” clearly connotes discretion.  However discretion is not without limits: a motion to a court’s discretion is a motion, not to its inclination, but to its judgment; and its judgment is to be guided by sound legal principles.

The Supreme Court instructed that awards of enhanced damages under the Patent Act over the past 180 years establish that they are not to be meted out in a typical infringement case, but are instead designed as a “punitive” or “vindictive” sanction for egregious infringement behavior. The Court said that:

The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate.

Seagate reflects a sound recognition that enhanced damages are generally appropriate under §284 only in egregious cases, but the Supreme Court found the test “unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”  In particular, the court was critical of the requirement of a showing of objective recklessness, finding no reason for the requirement in the context of deliberate wrongdoing.  The Federal Circuit said that the requirement of objective recklessness insulates an infringer from enhanced damages, so long has he or she can mount a reasonable defense, even if he did not act on the basis of a  defense or was even aware of it. The Supreme Court complaint that:

Under that standard, someone who plunders a patent—in- fringing it without any reason to suppose his conduct is arguably defensible—can nevertheless escape any come- uppance under §284 solely on the strength of his attorney’s ingenuity.

The Supreme Court said that culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.  The Court found no reason to look to facts that the defendant neither knew nor had reason to know at the time he acted.  The Court said that Section 284 allows district courts to punish the full range of culpable behavior, although nothing says they must do so. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Consistent with nearly two centuries of enhanced damages under patent law, however, such punishment should generally be reserved for egregious cases typified by willful misconduct.

In Rosebud LMS Inc. v. Adobe systems Inc., [2015-1428] (February 9, 2016), the Federal Circuit affirmed the grant of summary judgment that Adobe Systems Inc. was not liable for pre-issuance damages under 35 U.S.C. §154(d) because it had no actual notice of the published patent application that led to asserted U.S. Patent No. 8,578,280.

35 USC 154(d) provides that:

a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b) . . .and ending on the date the patent is issued (A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; . . . and (B) had actual notice of the published patent application

The Rosebud argued that Adobe had actual notice of its patents because it had previously sued Adobe on the grandparent of the patent in suit, that Adobe followed Rosebud and its product and sought to emulate some of its product’s features; and that it would have been standard practice in the industry for Adobe’s counsel to search for related patents.  Adobe, without conceding knowledge, argued that some affirmative action on the part of Rosebud was required to put Adobe on “actual notice” of the patent.

In a case of first impression, the Federal Circuit rejected the argument that some action on the part of patent owner is required for actual notice, but agreed that constructive notice is not sufficient to give “actual notice.”  Adobe presented a compelling argument based upon the legislative history of 154(d), but the Fedearl Circuit noted that the language enacted by Congress was not consistent with Adobe’s interpretation.  The Federal Circuit also distinguished the interpretation of 287(a) requiring an affirmative act to put an infringer on notice to be entitled to damages, noting the difference in the language of the two sections and noting that Congress could have used similar language in 154(d), but did not.

Noting several good reasons why some affirmative action on the part of the patent owner might make good policy sense, the Federal Circuit invited Congress to amend the statute if it wants a different result.

Even under this lesser standard for actual notice, the Federal Circuit agreed that Rosebud failed to show that Adobe had actual notice of the patent.  The Federal Circuit did not find that the earlier litigation on the grandparent of the current patent necessarily put Adobe on notice of the published application, it rejected the argument Adobe “followed” Rosebud and its products, is insufficient, and lastly rejected the argument that Adobe’s outside counsel would have discovered the publication preparing for the earlier litigation, noting that it never reached the claim construction stage because Rosebud missed all of its court-ordered deadlines.

Companies should rethink their competition monitoring programs.  Acquiring actual knowledge of a published application increases the company’s exposure to pre-issuance damages.  If the company actually uses its knowledge of the published application to reduce its liability — for example by designing around the claims or finding invalidating prior art — then this increased exposure is probably worth it.  However, if the knowledge of the published application is not going to be put to good use, the increased exposure comes with no benefit.

,

Most are familiar with a U.S. utility patent, have a seven digit number followed by a “B”:

Beginning in March 2001, applications have been published (unless the applicant requests non-publication at the time of filing.  Publications are readily distinguished by the eleven digit number — four digits representing the year, and the seven digits representing a running count for the year:

Design patents have a six digit number prefaced with a “D” and followed by an “S”:

Plant patents have a five digit number prefaced with a “PP” and followed by a “P”:
Reissue patents have a five digit number prefaced with an “RE” and followed by an “E”:

In addition to patents, there are other patent related documents that patent professionals occasionally stumble upon.  Defensive Publications were offered between April 1968 and May 8, 1985, and were replaced by Statutory Invention Registrations.  They have up to a  six digit number prefaced with a “T”:

Statutory Invention Registration is a registration of an invention pursuant to 35 USC §157, and replaced Defensive Publications.  SIRs were eliminated by the AIA in 2011. An SIR has up to a four digit number, prefaced by an “H” and followed by an “H”:

In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not err in finding the claims obvious.

The Federal Circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination, rejecting Ethicon’s challenge that this process raises “serious due process concerns.”  The Federal Circuit said that combining the decision to institute with the final decision in a single panel is less problematic than other procedures approved by the Supreme Court. The Federal Circuit said that both the decision to institute and the final decision are adjudicatory decisions that do not involve combining investigative and/or prosecutorial functions with an adjudicatory function, and found the procedure directly analogous to a district court determining whether there is “a likelihood of success on the merits” and then later deciding the merits of a case.

Even if not Constitutionally infirm, a procedure that requires a panel of the Board to decide to institute without receiving evidence from the patent owner, and then deciding whether they were wrong does seem to be biased against the Patent Owner.  The USPTO proposed a pilot program, under which an IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR.  The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on the proposed pilot program, and the comment deadline was later extended to November 18, 2015.  The AIPLA weighed-in in favor of the change, noting that it would remove the actual or perceived bias in the process.