The US Supreme Court’s October 2023 term will come to a close later this month.  The patent side has not seen much action in terms of new cases. 27 IP-related petitions for writ of certiorari have been filed during this time. Of those 23 have been denied. Four recently filed petitions are still pending. In each of the remaining cases, respondent has indicated that it will be filing a brief.

• Cellect, LLC v. Vidal (23-1231): Whether a patent procured in good faith can be invalidated for obviousness-type double patenting when the improper term extension is due to Patent Term Adjustment.  NYIPLA amicus in support; USPTO responsive brief due: July 22, 2024.
• Chestek PLLC v. Vidal (23-1217): Whether the USPTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2). USPTO responsive brief due: July 15, 2024.
• Eolas Technologies Inc. v. Amazon.com, Inc. (23-1184): Patent eligibility issues. Responsive brief due: July 31, 2024.
• Surti v. Fleet Engineers, Inc. (23-1142): Pro se patent owner focused on DoE as well as tortious interference. Responsive brief due: July 22, 2024.

I’ve listed these in what I see as the most to least likely grant.  Cellect is of particular interest as debates over double patenting continue. Based upon the timing of the briefs, a certiorari decision won’t come until the Fall.

USPTO Patent News:

• Patent number 12 million issued on Tuesday, June 4, 2024, to Pacific Biosciences of California.  The patent covers particular labeled nucleotide analogs that include an avidin protein for use in analyzing enzymatic reactions and molecular recognition events, such as single-molecule real-time nucleic acid sequencing. From the file history, it looks like David Roise was the lead attorney on the case.
• Derris Banks has been appointed as the Regional Director of the USPTO’s Elijah J. McCoy Midwest Regional Office (Detroit), where he will oversee outreach efforts while serving inventors and entrepreneurs in the Midwest region.  Banks has been at the USPTO since joining as an examiner in 1994, rising to various leadership positions.  Damian Porcari, who led the office for five solid years, retired in 2023.
• Several comment periods are still open at Regulations.Gov. Yesterday the period for comments closed on upcoming USPTO fee increases. At least 30 comments were submitted, including those from the AIPLA who “objects to the major policy shift wherein front-end fees are being added not only to recover aggregate costs, but change applicant behavior and implement significant policy changes, including large fee increases for claiming benefits of earlier effective filing dates, filing of Requests for Continued Examinations (“RCEs”), terminal disclaimer submissions, and for filing of large Information Disclosure Statements (“IDSs”).”  [This sentence was almost certainly written by a patent attorney.]

Recent Job Postings on Patently-O Jobs:

• Van Pelt, Yi & James LLP is seeking local or remote patent engineers to prepare, file, and prosecute patent applications in the fields of computer science and electrical engineering. [Link]
• Withrow + Terranova, PLLC is looking for an Associate Patent Attorney to work in Apex, NC (open to hybrid and remote arrangements) for patent application preparation and prosecution, client counseling, opinion work, and other related IP matters. [Link]
• Epstein Becker & Green is seeking an intellectual property associate with at least three years of experience in patent prosecution within the life sciences industry to join their Columbus, Nashville, Pittsburgh, Portland, or Princeton office. [Link]
• Viering, Jentschura & Partner mbB is seeking a U.S. patent attorney in either their Dresden or Munich office to draft and prosecute patent applications in the United States for various companies. [Link]
• Dority & Manning is looking for an EE/CS Patent Attorney or Agent to draft and prosecute patent applications in their Raleigh-Durham, NC or Greenville, SC office. [Link]
• Suiter Swantz IP has an immediate opening for a Patent Attorney or Patent Agent with 2-5 years of experience in their Omaha, NE office (remote considered). [Link]
• Harrity & Harrity, LLP is seeking a patent professional to draft patent applications for leading global technology companies in software, computer, and electrical technology areas. The position is 100% remote. [Link]
• The Marbury Law Group is seeking a highly motivated individual to join their Life Sciences team as a Pharma Associate in their Reston, VA, Boston, MA office or remote. [Link]
• Ballard Spahr LLP is seeking an Electrical/Computer Engineering Patent Prosecution Associate with 2-4 years of experience to work in their Atlanta, Denver, Minneapolis or Phoenix office. [Link]
• Ballard Spahr LLP is seeking a patent agent with 5+ years of patent prosecution experience to assist in prosecution, IP diligence, IP-transfer commercial transactions, and strategic IP business counseling in their Atlanta, New York, or Philadelphia office. [Link]
• McNeill Baur is seeking experienced attorneys and agents with advanced degrees in Chemistry and at least 3 years of relevant experience in patent prosecution and/or patent counseling or patent litigation to work remotely. [Link]

Join us today online for a discussion of design patents after the Federal Circuit’s upheaval in LKQ v. GM. Meanwhile – please answer my 1-minute survey about the electronic door lock design obviousness rejection:

Guest post by Ashton Woods, a JD candidate and member of the Juelsgaard Intellectual Property and Innovation Clinic at Stanford Law School. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. DPI will be hosting its second conference at Emory University Law School in Atlanta on Friday, September 20, 2024. Indicate your interest by signing up here.

On February 21, the USPTO issued a Notice of Proposed Rulemaking for Expanding Opportunities to Appear Before the Patent Trial and Appeal Board (PTAB), and DPI filed one of seven comments on the proposal. DPI’s full comment can be found here.

Currently, parties appearing before the PTAB who are represented by counsel must designate lead and backup counsel. Lead counsel must be a USPTO-registered practitioner, meaning that they have technical training and have passed the registration exam (commonly known as the “patent bar” exam). Backup counsel may be non-registered if they are recognized pro hac vice. Under the Proposed Rule, counsel can switch roles, with a non-registered practitioner acting as lead counsel and a registered practitioner acting as backup counsel. Additionally, parties who can show good cause, including financial hardship, can waive the backup counsel requirement, though the party’s sole counsel must still be a registered practitioner. Finally, the Proposed Rule streamlines the pro hac vice recognition process for non-registered practitioners, though they still must be accompanied by a registered practitioner in the lead or backup role.

As explained in more detail in the full comment, DPI views the Proposed Rule as a modest step toward reducing the accessibility gap for potential patentees, patent practitioners, and patent challengers. The goal of the Proposed Rule is laudable, and it may provide a solid foundation for future efforts to diversify the Patent Bar and the patent system more broadly—if it can effectively expand the pool of eligible practitioners in proceedings before the PTAB, the Proposed Rule may support wider USPTO efforts to increase the participation of underrepresented communities in the innovation ecosystem.

Still, the Proposed Rule does not address all of the structural barriers within the patent system that continue to burden diversification efforts at the USPTO. Existing barriers, such as the technical training requirement and the patent bar exam, substantially narrow the class of patent practitioners. This is particularly troublesome considering that federal courts do not subject litigators to these standards—they impose no registration requirement or backup counsel requirement. Currently, there is no rigorous evidence to support these restrictions as necessary, rather than overly burdensome, in promoting competent, or even fantastic, representation before the PTAB.

DPI urges the USPTO to collect the empirical evidence necessary to ensure that USPTO initiatives are well-suited to promoting the goals of the Proposed Rule and the USPTO more broadly. The comment sets out exemplary data collection methods and key data points on PTAB filings and proceedings for the USPTO’s consideration. The comment urges the USPTO to affirmatively collect this data to rigorously assess the impact of the Proposed Rule, and other diversity initiatives, on inclusivity and accessibility at the USPTO.

DPI’s full comment on the USPTO’s Notice of Proposed Rulemaking for Expanding Opportunities to Appear Before the Patent Trial and Appeal Board can be found here. To stay informed about related work, sign up for DPI research updates by emailing diversitypilots@gmail.com.

Talk about LKQ: I’m looking forward to joining Prof Sarah Burstein and others on Tuesday June 4 for an online panel discussion on the potential aftermath of the Federal Circuit’s major en banc design patent obviousness decision in LKQ v. GM.

In February 2024 we met along with Meredith Lowry (Wright Lindsey Jennings); Darrell Mottley (Howard University); and Laura Sheridan (Google) to give a preview of the case and we’re meeting again now to talk through where the pieces are falling.

Free event via Suffolk University Law School, but you need to register.  Noon Eastern Time, June 4, 2024.

Guest Post by Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2024) (en banc).

In its decision in LKQ v. GM, the en banc Federal Circuit may have raised as many questions as it answered. For now, I’d like to focus on one:  What counts as a proper primary reference under LKQ?

While the Federal Circuit overruled the Rosen requirement that a primary reference look “basically the same” as the claimed design, the court did not overrule the requirement that there be a primary reference.

According to the Federal Circuit “In applying Graham factor one, the scope and content of the prior art, a primary reference must be identified.” And, as required by Rosen, that primary reference must still be “something in existence,” not “something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” But for this last point, the Federal Circuit doesn’t cite Rosen. Instead, it cites the decision that Rosen cited for that point, In re Jennings, 182 F.2d 207, 208 (CCPA 1950).

So what does Jennings tell us about references and § 103? Not much. Here is the entirety of the CCPA’s discussion of the issue:

In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held that by selecting features taken from five different patents, that is, none feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.

We feel constrained to disagree with the concurring conclusions reached by the tribunals of the Patent Office.

In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence—not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.

182 F.2d 207 at 208. The Jennings court lists the cited references but does not say—let alone show—which “features seem to have been selected” from each or how they were “compared with features shown in appellant’s drawings.” Nonetheless, the CCPA did helpfully emphasize that, in analyzing whether a design is obvious, the design must be considered as a whole.

Going back to LKQ, the en banc Federal Circuit further tells us that “[t]he primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design” and that “[t]he primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”

So what to make of all of this?

First, and perhaps most importantly, the Federal Circuit’s decision in LKQ is a clear repudiation of the Frankenart approach to design patent obviousness. A challenger (or an examiner) can’t just slice and dice a design claim into “limitations,” find those in the prior art, and then stitch them together into an invalidating reference. That’s a good thing.

Second, we know that a proper primary reference no longer has to look “basically the same” as a claimed design, as that phrase was applied by the Federal Circuit. (For a few examples of the extremely high degree of visual similarity required by the Federal Circuit prior to LKQ, see here and here.)

Nonetheless, the court’s citation to and reaffirmation of the Jennings rule suggests that, even after LKQ, a primary reference must still have at least some quantum of overall visual similarity. If no reference looks at least somewhat similar to the claimed design, then are we not simply “selecting individual features from prior art and combining them” to invalidate the design?

So what about Whitman Saddle? The LKQ court tells us that it doesn’t matter that Whitman Saddle predated the enactment of § 103 and spoke about “invention,” not obviousness. They tell us, without any citation or explanation, that “[t]he reasoning of Whitman Saddle carries over to the modern § 103 standard of obviousness.” (I suspect that Judge Rich would have disagreed.) Perhaps some patent challengers will attempt to argue that, following LKQ, “half is enough”—i.e., that if half of the claimed design can be found in a piece of prior art, that constitutes a proper primary reference. I don’t think that’s right. Whitman Saddle was a case with unusual facts and, in its discussion, the Supreme Court expressly relied on the existence of a “mix and match” custom in the field of saddle design. In that case, the Supreme Court tells us, the issue wasn’t that the different parts of the claimed saddle design could be found in the prior art and hypothetically could have combined but rather because, the Supreme Court tells us, it was “customary” to do so. Without that custom, then the reference combining in Whitman Saddle would seem to be nothing more than the Frankenart approach rejected in Jennings—and now in LKQ. In cases without evidence of a similar type of custom, Whitman Saddle may have limited precedential value.

Third, the LKQ court left open the possibility that the primary reference could be both the “most visually similar to the claimed design” but not the type of reference that could anticipate the claimed design under § 102. That’s because the primary reference need not disclose a design for the same type of article, as required for anticipation. It merely needs to be “analogous art.” Thus, the Federal Circuit has indicated that, for designs, the universe of § 103 prior art is broader than the universe of § 102 prior art. That’s the opposite of how it works in utility patents. That’s not a problem, though. Or even a bad thing. (Indeed, I’ve argued that this is how it should be.) But it’s still notable.

One more point: The LKQ court justified its retention of a primary reference requirement as being necessary to avoid “hindsight.” That may be true in some sense. But, as I’ve written before, requiring a primary reference does more than that—it focuses the inquiry, quite properly and as required by Jennings, on the design as a whole. It recognizes that design patents are fundamentally different than utility patents. They protect fundamentally different innovations (visual designs) in a fundamentally different way (central claiming using images). The Frankenart approach rejected by Jennings—and now by the en banc Federal Circuit in LKQ—essentially asks whether it would have been technically possible to combine preexisting design elements. It tells us nothing about whether it would have been visually obvious to do so. Exactly how this new primary reference requirement will develop remains to be seen. But the Federal Circuit’s renewed and reemphasized focus on the fact that a design must be emphasized as a whole is extremely important and a point not to be missed.

* * *

For more on the history of § 103, design patents, and some thoughts about what types of modifications to a primary reference would be obvious (from a design perspective), see this article.

[I have substantially updated this post – correcting a couple of issues from the original and also added info from the letter from former USPTO leaders. – DC 6/1/24]

by Dennis Crouch

As I have previously discussed on Patently-O, the USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024).  Under the proposed rule, a terminal disclaimer will only be accepted by the USPTO if it includes an agreement that the patent will be unenforceable if tied (directly or indirectly) to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). This proposal has generated significant debate among patent practitioners, with many expressing concerns about its potential impact on innovation and patent rights.  It is a dramatic change in practice because the typical rule required by statute is that the validity of each patent claim must be separately adjudged. See 35 U.S.C. § 282(a).

The comment period is open until early July, but a number of comments have already been submitted. And I looked through them in order to get some early feedback.  You can read the comments here (more…)

by Dennis Crouch

The Federal Circuit’s 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents “questions of exceptional importance.” Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024). (more…)

by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a “two-way test” to determine whether pre-critical date claims and post-critical date claims are “materially different” under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates’ post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates’ pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers (more…)

by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court’s grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW.  Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention “entirely on [his] own time” under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties’ intent.  Judge Mayer dissented.

Although not discussed in the court’s decision, the appellant brief includes a suggestion that the Federal Circuit should “narrow or overrule” the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny (more…)

by Dennis Crouch

The USPTO is seeking nominations for several open positions on its Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC). (more…)

by Dennis Crouch

In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB’s (PTAB) invalidation of Cellect’s four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time.  (more…)

by Dennis Crouch

The Federal Circuit’s recent decision in Dragon Intellectual Property LLC v. DISH Network L.L.C. affirms the district court’s grant of attorneys’ fees to the successful defendants, while denying recovery of fees incurred solely in the IPR proceedings and from plaintiff’s counsel.  The case offers important legal conclusions for attorney fees in cases that involve both district court and IPR litigation.

The district court found the case exceptional under § 285 due to the substantive weakness of Dragon’s infringement position, including clear prosecution history disclaimer precluding infringement by the accused products. A key issue on appeal was whether § 285 allows recovery of fees incurred in parallel IPR proceedings. The majority held that when a defendant voluntarily pursues an invalidity challenge through IPR, the fees incurred solely in the IPR are not recoverable. The court distinguished the facts from its prior decision in PPG Industries v. Celanese Polymer, where the defendant’s participation in reissue proceedings was not optional because the plaintiff had initiated them.

The majority also held that § 285 does not permit prevailing defendants to recover fees from plaintiff’s counsel. The statute’s silence on counsel’s liability, in contrast to other statutes and rules explicitly allowing recovery from attorneys, indicated that Congress did not intend § 285 to extend liability to counsel.

However, Judge Bencivengo, sitting by designation at the Federal Circuit, dissented in part, arguing that in exceptional cases based on the complaint being objectively baseless from the start, district courts should have discretion to award defendants all reasonable fees, including those incurred in an IPR that resolved invalidity defenses asserted in response to the baseless complaint. The dissent viewed the IPR as a substitute for the stayed district court litigation on invalidity, rather than a truly parallel proceeding.

While 35 U.S.C. § 285 does not permit holding plaintiff’s counsel jointly and severally liable for attorneys’ fees, other statutes and rules may allow for the recovery of fees from attorneys in certain circumstances.  In this case the court specifically points to two examples:

1. 28 U.S.C. § 1927, which states that “[a]ny attorney . . . who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.”
2. Federal Rule of Civil Procedure 11, which “expressly allows the court to impose monetary sanctions on attorneys and law firms, which can include ‘all of the reasonable attorney’s fees and other expenses’ incurred as a result of sanctionable conduct.”

The court notes that these statutes and rules “explicitly allow parties to recover costs and fees from counsel” and are “more appropriate vehicles to recover fees from counsel” compared to § 285, which is silent on the issue of counsel’s liability for fee awards.