• Regeneron

    Over on the main page, Dennis has mentioned the Regeneron cert petition. The CAFC found a patent unenforceable because of a sanction for litigation misconduct.

    Maybe, but what I find troubling about the case is that the Federal Circuit’s opinion — which is literally in many respects a cut-and-paste job of the district court’s opinion — makes factual statements about specific lawyers and their intent.  But, as part of the sanction for litigation misconduct, the trial court precluded those lawyers from testifying about why they had not disclosed certain information to the USPTO.

    Think about that.

    There is a published opinion stating a lawyer had bad intent, knew certain things, etc., when the trial court denied them the right to testify because lawyers — who did not represent them — did bad things years after they had prosecuted the applications to issuance.

    Regeneron is a horrible opinion. I don’t know if the result is correct, or not, but I do know that the opinion makes false statements of fact about real people that will have real consequences for their careers.

    And the consequences for prosecution attorneys are enormous:  if you are deposed in a case, you may need your own lawyer.

    Continue reading Regeneron at Patently-O.

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  • Regeneron

    Over on the main page, Dennis has mentioned the Regeneron cert petition. The CAFC found a patent unenforceable because of a sanction for litigation misconduct.

    Maybe, but what I find troubling about the case is that the Federal Circuit’s opinion — which is literally in many respects a cut-and-paste job of the district court’s opinion — makes factual statements about specific lawyers and their intent.  But, as part of the sanction for litigation misconduct, the trial court precluded those lawyers from testifying about why they had not disclosed certain information to the USPTO.

    Think about that.

    There is a published opinion stating a lawyer had bad intent, knew certain things, etc., when the trial court denied them the right to testify because lawyers — who did not represent them — did bad things years after they had prosecuted the applications to issuance.

    Regeneron is a horrible opinion. I don’t know if the result is correct, or not, but I do know that the opinion makes false statements of fact about real people that will have real consequences for their careers.

    And the consequences for prosecution attorneys are enormous:  if you are deposed in a case, you may need your own lawyer.

    Continue reading Regeneron at Patently-O.

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  • Judge Allows Zorro Copyright Claims to Move Forward Against Original Zorro Copyright Owner

    On Friday, May 11th, U.S. District Judge Edward Davila entered an order deciding motions made in a copyright case involving competing musical productions based on the fictional story of the fictional folk hero Zorro. Judge Davila’s orders allows copyright infringement claims asserted by a writer who developed a Zorro musical in the 1990s to move forward against Zorro Productions, the entity which had licensed the Zorro character to entertainment companies going back to the late 1940s. This case…

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  • CAFC gives guidance on reply briefs in Durance case

    An issue of relevance to prosecution practice is what can be considered in a reply brief:


    In making these findings, however, the Board disregarded Durance’s
    reply-brief arguments by citing 37 C.F.R. § 41.41(b)(2)
    and stating that these arguments were “not responsive to
    an argument raised in the Answer.”6 J.A. 33.
    Durance sought rehearing from the Board. J.A. 51.
    In its rehearing request, Durance averred that the Board
    erroneously ignored its reply-brief arguments on structural
    identity, which it claims were made in direct response
    to the examiner’s answer and provided citations.
    J.A. 53–55. Durance contended that the Board should
    have addressed its arguments that the claimed structure
    is different than the corresponding structure in Burger
    with respect to the features of motors, gears, and the
    divider walls that promote tumbling.

    (…)

    The Board also reiterated that it
    would not consider Durance’s reply-brief arguments,
    stating that Durance “did not provide such a showing or
    indicate where a new argument requiring such response
    was raised in the [examiner’s] Answer.” J.A. 46. However,
    “in the interest of fairness,” the Board decided to
    consider Durance’s argument in its reply brief that the
    amount of material packed into the container affects
    whether the material would tumble. J.A. 46–47. The
    Board, however, did not consider any of Durance’s arguments
    relating to the divider walls within the container
    and their role in the promotion of tumbling.

    As to standards of review:


    We review Board decisions in accordance with the
    Administrative Procedure Act (“APA”), 5 U.S.C. § 706(2)
    (2012). Dickinson v. Zurko, 527 U.S. 150, 152, 165 (1999).
    Under the APA, we review the Board’s legal conclusions
    de novo and its factual findings for substantial evidence.
    ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365
    (Fed. Cir. 2016). Substantial evidence is “such relevant
    evidence as a reasonable mind might accept as adequate
    to support a conclusion.” In re Gartside, 203 F.3d 1305,
    1312 (Fed. Cir. 2000) (quoting Consol. Edison Co. of N.Y.
    v. NLRB, 305 U.S. 197, 229 (1938)).
    We review the Board’s application of its procedural
    rules for abuse of discretion. Eli Lilly & Co. v. Bd. of
    Regents of Univ. of Wash., 334 F.3d 1264, 1266–67 (Fed.
    Cir. 2003). An abuse of discretion occurs if the decision is
    clearly unreasonable, arbitrary, or fanciful; is based on an
    erroneous conclusion of law; rests on clearly erroneous
    fact findings; or involves a record that contains no evidence
    on which the Board could base its decision.
    Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir.
    1994).

    The CAFC found a lack of clarity in the Board’s position:

    Under these circumstances of multiple shifting articulations,
    this Court is not confident in the Patent Office’s
    reasoning for its rejection of the Application, specifically
    as to which embodiment of Burger the Board relied on,
    and whether the Board relied on inherency as a basis for
    the tumbling function.

    The examiner and Board’s shifting reliance on Burger
    and on inherency obfuscated the issues before Durance,
    particularly regarding the issue of structural identity. As
    error, Durance points to the Board’s failure to consider
    arguments in Durance’s reply brief made in response to
    the examiner’s answer. Appellants’ Br. 24. Specifically,
    Durance argues that the Board should have considered its
    arguments that claim 1 of the ’989 application “included
    the tumbling feature in means-plus-function language
    that was directed to structure different than the structure
    of Burger.” Id. Durance also argues that the examiner’s
    and Board’s structural-identity findings cannot be applied
    to the method claims “because even the identical structure
    would not perform all the steps unless operated in
    the correct manner and used with a partially filled container.”
    Id. We agree with Durance.

    As to the contents of a reply brief:


    The Board relied on 37 C.F.R. § 41.41(b) to find waiver.
    Section 41.41(b)(2) outlines what content cannot be
    included in an applicant’s reply brief. It provides in
    relevant part:

    Any argument raised in the reply brief which was
    not raised in the appeal brief, or is not responsive
    to an argument raised in the examiner’s answer,
    including any designated new ground of rejection,
    will not be considered by the Board for purposes of
    the present appeal, unless good cause is shown.
    Section 41.41(b)(2) permits a reply brief to respond to “an
    argument raised in the examiner’s answer.” In particular,
    nothing in this provision bars a reply brief from
    addressing new arguments raised in the examiner’s
    answer that are not articulated in the Final Office Action,
    regardless of whether the examiner designated that new
    argument as a “new ground of rejection.”7 To be clear, 37
    C.F.R. § 41.39(a)(1) provides that “[a]n examiner’s answer
    is deemed to incorporate all of the grounds of rejection set
    forth in the Office action from which the appeal is taken.”
    Since the examiner’s answer is deemed to incorporate all
    grounds in the Final Office Action, an applicant’s reply
    may not respond to grounds or arguments raised in the
    examiner’s answer if they were part of the Final Office
    Action and the applicant did not address them in the
    initial appeal brief. If an examiner’s answer includes
    arguments raised for the first time, i.e., not in the Final
    Office Action, an applicant may address those arguments
    in the reply. 37 C.F.R. §§ 41.39, 41.41.
    Here, the examiner’s first clear representation that
    she was relying on structural identity, and not inherency,
    appeared in the examiner’s answer. See J.A. 85. We
    agree with the Patent Office that there need not be talismanic
    words to indicate a ground of rejection. Appellee’s
    Br. 28–29. But in this case, there is no mention of structural
    identity with Figure 8 of Burger before the examiner’s
    answer. And the equivocal nature of the examiner’s
    and Board’s remarks throughout the examination of the
    ’989 application, including whether inherency was the
    basis for the rejection, clouded the issues before Durance.
    Accordingly, Durance had no notice, prior to the examin-
    argument as a “new ground of rejection.”7 To be clear, 37
    C.F.R. § 41.39(a)(1) provides that “[a]n examiner’s answer
    is deemed to incorporate all of the grounds of rejection set
    forth in the Office action from which the appeal is taken.”
    Since the examiner’s answer is deemed to incorporate all
    grounds in the Final Office Action, an applicant’s reply
    may not respond to grounds or arguments raised in the
    examiner’s answer if they were part of the Final Office
    Action and the applicant did not address them in the
    initial appeal brief. If an examiner’s answer includes
    arguments raised for the first time, i.e., not in the Final
    Office Action, an applicant may address those arguments
    in the reply. 37 C.F.R. §§ 41.39, 41.41.
    Here, the examiner’s first clear representation that
    she was relying on structural identity, and not inherency,
    appeared in the examiner’s answer. See J.A. 85. We
    agree with the Patent Office that there need not be talismanic
    words to indicate a ground of rejection. Appellee’s
    Br. 28–29. But in this case, there is no mention of structural
    identity with Figure 8 of Burger before the examiner’s
    answer. And the equivocal nature of the examiner’s
    and Board’s remarks throughout the examination of the
    ’989 application, including whether inherency was the
    basis for the rejection, clouded the issues before Durance.
    Accordingly, Durance had no notice, prior to the examin-
    argument as a “new ground of rejection.”7 To be clear, 37
    C.F.R. § 41.39(a)(1) provides that “[a]n examiner’s answer
    is deemed to incorporate all of the grounds of rejection set
    forth in the Office action from which the appeal is taken.”
    Since the examiner’s answer is deemed to incorporate all
    grounds in the Final Office Action, an applicant’s reply
    may not respond to grounds or arguments raised in the
    examiner’s answer if they were part of the Final Office
    Action and the applicant did not address them in the
    initial appeal brief. If an examiner’s answer includes
    arguments raised for the first time, i.e., not in the Final
    Office Action, an applicant may address those arguments
    in the reply. 37 C.F.R. §§ 41.39, 41.41.
    Here, the examiner’s first clear representation that
    she was relying on structural identity, and not inherency,
    appeared in the examiner’s answer. See J.A. 85. We
    agree with the Patent Office that there need not be talismanic
    words to indicate a ground of rejection. Appellee’s
    Br. 28–29. But in this case, there is no mention of structural
    identity with Figure 8 of Burger before the examiner’s
    answer. And the equivocal nature of the examiner’s
    and Board’s remarks throughout the examination of the
    ’989 application, including whether inherency was the
    basis for the rejection, clouded the issues before Durance.
    Accordingly, Durance had no notice, prior to the examin-
    er’s answer, of this ground on which his application was
    being rejected.8

    It was therefore proper under § 41.41(b)(2) for Durance
    to respond to the structural identity argument
    raised in the examiner’s answer. The Patent Office
    contends that Durance should have petitioned to have the
    examiner’s answer designated as a new ground of rejection,
    relying on the Patent Office’s Manual of Patent
    Examination Procedure (“MPEP”) § 1207.03. But this
    Court does not read MPEP § 1207.03 or 37 C.F.R. § 41.41
    to put such a burden on applicants. Neither contemplates
    that the applicant has to petition to have a new argument
    in an answer designated as a new ground of rejection
    before it can respond to the new argument. Rather,
    § 41.41 states that a showing of good cause is only required
    if the argument is not responsive to an argument
    raised by the examiner. Here, Durance’s reply brief was
    responsive to the examiner’s answer and included citations
    indicating the new arguments to which Durance was
    responding. See J.A. 62–64. It was error for the Board to
    find such argument waived.

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  • CAFC vacates ND Cal decision in Zeroclick matter

    Appellant Zeroclick won at the CAFC:


    Zeroclick, LLC sued Apple Inc. in the U.S. District
    Court for the Northern District of California, asserting
    claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19
    of U.S. Patent No. 8,549,443. The district court found the
    asserted claims invalid for indefiniteness, reasoning that
    the claims recited means-plus-function terms for which
    the specifications do not disclose sufficient structure.
    Because the district court failed to undertake the relevant
    inquiry and make related factual findings to support its
    conclusion that the asserted claims recited means-plusfunction
    terms, we vacate and remand.

    As to 112/6

    “To determine whether § 112, para. 6 applies to a
    claim limitation, our precedent has long recognized the
    importance of the presence or absence of the word
    ‘means.’” Williamson, 792 F.3d at 1348. The failure to
    use the word “means” creates a rebuttable presumption
    that § 112, ¶ 6 does not apply. Id. But the presumption
    can be overcome, and § 112, ¶ 6 will apply, “if the challenger
    demonstrates that the claim term fails to recite
    sufficiently definite structure or else recites function
    without reciting sufficient structure for performing that
    function.” Id. (emphasis added) (internal quotation
    marks, brackets, and citation omitted); see also Advanced
    Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
    1347 (Fed. Cir. 2016) (“In determining whether this
    presumption has been rebutted, the challenger must
    establish by a preponderance of the evidence that the
    claims are to be governed by § 112, ¶ 6.”); Greenberg v.
    Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
    1996) (noting that the district court relied on evidence
    extrinsic to the patent in reaching its conclusion that a
    term invoked means-plus-function treatment).

    When evaluating whether a claim limitation invokes
    § 112, ¶ 6, the essential inquiry remains “whether the
    words of the claim are understood by persons of ordinary
    skill in the art to have a sufficiently definite meaning as
    the name for structure.” Williamson, 792 F.3d at 1348;
    Greenberg, 91 F.3d at 1583 (“What is important is . . . that
    the term, as the name for structure, has a reasonably well
    understood meaning in the art.”). That determination
    must be made under the traditional claim construction
    principles, on an element-by-element basis, and in light of
    evidence intrinsic and extrinsic to the asserted patents.
    See, e.g., Personalized Media Commc’ns, LLC v. Int’l
    Trade Comm’n, 161 F.3d 696, 702–04 (Fed. Cir. 1998)
    (stating that “[w]hether certain claim language invokes
    35 U.S.C. § 112, ¶ 6 is an exercise in claim construction”
    and that the presumption that § 112, ¶ 6 does not apply
    “can be rebutted if the evidence intrinsic to the patent and
    any relevant extrinsic evidence so warrant”); Cole v.
    Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996)
    (noting that whether § 112, ¶ 6 is invoked involves an
    analysis of the “patent and its prosecution history,” and
    consulting a dictionary definition of “perforation” to
    understand if one of skill in the art would understand the
    term to connote structure). The district court failed to
    undertake that inquiry and make related factual findings.
    Neither of the limitations at issue uses the word
    “means.” Presumptively, therefore, § 112, ¶ 6 does not
    apply to the limitations. Apple argued that the limitations
    must be construed under § 112, ¶ 6, but provided no
    evidentiary support for that position. Accordingly, Apple
    failed to carry its burden, and the presumption against
    the application of § 112, ¶ 6 to the disputed limitations
    remained unrebutted. The district court’s discussion is
    revealing: its determination that the terms must be
    construed as means-plus-function limitations is couched
    in conclusory language. The court relied on Apple’s
    arguments, contrasting them against Zeroclick’s contentions,
    but pointed to no record evidence that supports its
    ultimate conclusion regarding whether § 112, ¶ 6 applies
    to the asserted claims. C

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  • Rendering Patent Unenforceable Due to Litigation Misconduct

    Regeneron Pharmaceuticals, Inc., Petitioner v. Merus N.V., SCT Docket No. No. 17-1616 (On petition for writ of certiorari 2018).

    Question presented:

    Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.

    Petition. The patentee here argues that inequitable conduct should be limited to situations involving “misconduct before the Patent Office in obtaining a patent.”

    In this case, however, a divided panel of the Federal Circuit dramatically expanded the inequitable conduct doctrine. Without ever finding that petitioner intended to deceive the Patent Office, the panel held petitioner’s patent unenforceable under the inequitable conduct doctrine based on purported misconduct by trial attorneys in district court litigation, years after the patent was granted.

    When I originally wrote about the decision, I stated that “[t]he case may be a wake-up-call for some litigators who will read through the list of misconduct and see it as only business-as-usual.”

    Regeneron v. Merus: En Banc Chances Rise

    Inequitable Conduct and Regeneron Pharmaceuticals, Inc. v. Merus N.V.: Trouble Waiting to Happen

     

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  • Judge Lourie and Newman: Call for Congress to Act

    by Dennis Crouch

    As part of the court’s en banc denial in Berkheimer v. Hp Inc., 2018 U.S. App. LEXIS 14388 (Fed. Cir. 2018), Judges Lourie and Newman joined together in an interesting concurring opinion that argues for some higher power to revisit the doctrine of patent eligibility to provide clarification and policy guidance.  The opinion is republished below:

    Lourie, Circuit Judge, with whom Newman, Circuit Judge, joins, concurring in the denial of the petition for rehearing en banc.

    I concur in the court’s declining to rehear this case en banc. There is plausibility to the panel holding that there are fact issues potentially involved in this case concerning the abstract idea exception to patent eligibility. And the panel, and the court, are bound to follow the script that the Supreme Court has written for us in § 101 cases.

    However, I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems. Individual cases, whether heard by this court or the Supreme Court, are imperfect vehicles for enunciating broad principles because they are limited to the facts presented.

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  • Some New Papers on SEPs

    1. Jorge Contreras has posted on ssrn his “Comments Submitted to Japan Patent Office on Guide to Licensing Negotiations Involving Standard Essential Patents.”  Here is a link, and here is the abstract:
    These comments were submitted to the Japan Patent Office (JPO) in response to its request for comments on its Guide to Licensing Negotiations Involving Standard Essential Patents (Draft Mar. 9, 2018). These comments relate primarily to:
    (1) assertion of SEPs by Patent Assertion Entities,
    (2) confidentiality of information in SEP negotiations,
    (3) Bottom-up royalty calculations, and
    (4) exclusivity. 

    The comments are only five pages long, and well worth reading; Professor Contreras makes some valuable points.  For more on the JPO’s request for comments, see here.

    2.  Jorge Padilla, Judge Douglas Ginsburg, and Koren Wong-Ervin have posted a paper on ssrn titled Antitrust Analysis Involving Intellectual Property and Standards: Implications from Economics, forthcoming in the George Mason Law Review.  Here is a link to the paper, and here is the abstract:

    There is a significant industrial organization (IO) economics literature on the economics of innovation and intellectual property (IP) protection. As some courts and antitrust agencies have recognized, the IO economics toolkit for business arrangements (e.g., vertical restraints, tying and bundling, etc.) involving IP rights is sufficiently flexible to be applied in high-technology areas involving antitrust and IP. In this Article, the authors explain the economics of innovation and IP protection, licensing, and compulsory licensing, with specific applications to standards development and to standard-essential patents. The authors then propose first-best approaches based on the implications of the economics that courts and agencies can apply at each stage of an antitrust inquiry, from market definition and market power to the assessment of particular business practices. The authors conclude by providing a summary of the approach applied in each major antitrust jurisdiction—China, the European Union, India, Japan, Korea, and the United States.

    3. Christopher Weber and Katharina Brandt have published a paper titled Salomonische Kommission?  Die Mitteilung der EU zu Standaresseziellen Patenten, (“Solomonic Commission?  The EU Communication on Standard-Essential Patents”) in the April 2018 issue of Mitteilungen der deutschen Patentanwälten (pages 153-56).  Here is the abstract (my translation):

    The enforcement of standard-essential patents in the gray area between patent and competition law has occupied courts and authorities for years.  More than two years since the groundbreaking decision of the CJEU in Huawei v. ZTE, the European Commission has now expressed itself on how these patents should be handled.  In its Communication, the Commission not only invites stakeholders to work on improving documentation and declaration practice, but also formulates recommendations for action on the (currently controversial) problems that  result from the handling of standard essential patents.  

    This issue of Mitteilungen der deutschen Patentanwälten also includes a commentary by Dr. Annette Anette Gärtner on the March 30, 2017 decision of the Düsseldorf Oberlandesgericht in a SEP case, No. I-15 U 66/15, previously noted on this blog here.  For my previous post on the European Commission’s November 29, 2017 Communication on SEPs, see here.

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