Patent System. University of Missouri. Dennis Crouch. Professor

Transcription

1 State of the Patent System Dennis Crouch Professor University of Missouri

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3 History O'Reilly v. Morse, 56 U.S. 62 (1854) The Telegraph Patent Case

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6 waves roll over time courts crash volcanos erupt next wave crashes soon?

7 US Utility Patents Granted Per Fiscal Year

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9 Prosecution Timeline

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15 Patent Claims

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18 Seeking Clarity in Patent Claims

19 Incentive for Ambiguity One of the greatest problems of the current patent system is the incentive to write patents and patent claims that obscure the invention and the legal scope of the patent.

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23 Narrower in Appearance but Broader in Construction From: Means for calculating a risk variable To: Instructions for calculating a risk variable

24 Are computer claims using more of these functional claim elements?

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27 Ambiguity Policy Grounds Too Broad Preemption Enablement / WD Justice: Did not invent that breadth Fuzzy Boundaries Impacts risk-averse parties Gums-up market Rewards non-invention Allows use of litigation costs as settlement tool

28 Ambiguity Claim Scope Nautilus v. BioSig (SCT) In re Packard (Fed Cir) Alice Corp v. CLS Bank (SCT) Teva v. Sandoz (SCT Pending)

29 Begin with the Statute R.S (1870) [B]efore any inventor or discoverer shall receive a patent for his invention or discovery, he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.

30 35 U.S.C. 112(b) (2011) Conclusion. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. Used in Practice under Indefiniteness heading: USPTO uses 112(b) to negate patentability during prosecution. Courts apply 112(b) to invalidate already issued patents Begin with the Statute

31 Nautilus v. Biosig

32 Claim 1. A heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising:... an elongate member... comprising a first half and a second half; a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;.... whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode.... Nautilus v. Biosig

33 Spaced Relationship? The Final Frontier

34 Nautilus: Spaced Relationship Claim is indefinite because the term "did not tell [the court] or anyone what precisely the space should be or "even supply 'any parameters' for determining the appropriate spacing. Terms only indefinite if not amenable to construction and insolubly ambiguous. spaced relationship is not indefinite because of the inherent parameters of the claimed apparatus i.e., the space is between two points on a human hand and must be separated so as to get two different electric signals. District Court: Federal Circuit:

35 Nautilus: Supreme Court Holdings Insolubly ambiguous test is too high a standard. A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention..... The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.

36 Must decide whether spaced relationship term is reasonably certain. Query: Meaning of Reasonably Certain Ask: Whether functional limitation at point-of-novelty is sufficiently definite. Halliburton v. Walker, 329 U.S. 1 (1946) Nautilus On Remand

37 Nautilus: Additional Thoughts The Supreme Court notes that patentees have an incentive to intentionally inject ambiguity into their claims. Court did not say construe against the drafter Indefiniteness traditionally a question of law decided by the Court as part of claim construction. Renewed focus on PHOSITA may impact this process. Likewise, this also may impact the presumption of validity (question of law).

38 In re Packard (Fed. Cir. 2014) Holding: We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of 112(b).

39 Indefiniteness Hurdles Insolubly Ambiguous Reasonably Certain PTO Prima Facie Case based on BRI

40 1. Most patent applications to be initially rejected due to indefiniteness concerns. 2. Most asserted patents to be challenged on indefiniteness grounds. Moving Forward: Will patentees shift their behavior to avoid problems? Transitional Results I would expect:

41 Whether a district court s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Federal Rule of Civil Procedure 52(a) requires. Oral Arguments held October 15, Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. Issue:

42 Subject Matter Eligibility Alice Corp presents a two step process asking: (1) Whether the claims are directed to a patent-ineligible concept; (2) If so, whether the claim elements "transform the nature of the claim" into a patent-eligible application by adding something more

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44 More SCT Cases of 2014

45 In exceptional cases [court] may award reasonable attorney fees to prevailing party. Octane Fitness v. ICON Health and Fitness Old Rule: clear and convincing evidence that the case was objectively baseless and brought in subjective bad faith. New Rule: Totality of Circumstances within District Court s Discretion Highmark v. Allcare Health Management System (Deference on appeal) Attorney Fees 35 U.S.C. 285 Legislative Shift?

46 Limelight Networks v. Akamai Technologies Holding: Direct Infringement is a Predicate to finding Inducement under 35 U.S.C. 271(b). Whether definition of direct infringement under 271(a) should be altered. Divided Infringement: Limelight v. Akamai Now pending:

47 Whether a defendant s good faith belief that a patent is invalid may be a defense to induced infringement under 35 U.S.C. 271(b). Promega Corp. v. Life Tech. Corp (Fed. Cir. 2014) 271(f)(1) Component Export to Induce Extraterritorial Combination includes Self- Inducement Willfulness Extension: Halo v. Pulse en banc pending: Whether a unsuccessful but not unreasonable defense developed post-suit bars a willfulness finding even if defendant believed it was infringing? Inducement Redux Commil USA, LLC v. Cisco (certiorari granted 2014)

48 Copyright: Laches cannot shorten copyright statute s three-year rolling statute of limitations (17 U.S.C. 507). However, an unreasonable, prejudicial delay in filing suit may be relevant to awarding equitable relief and lost profit damages. Federal Circuit considering same issue en banc in SCA Hyiene. Petrella v. MGM

49 Burden of Proving Infringement Medtronic v. Mirowski Family Ventures SCT held that patentee always has burden of proving infringement even in situation where patentee is a DJ defendant fighting against a licensee s in-term challenge.

50 LexMark v. Static Control LexMark sent advertisements to Static Control customers claiming that it is unlawful to use the Static Control products (b/c of patent infringement). Holding: Static Control has standing to sue for unfair competition (under the Lanham Act). Broadly important case for elimination of prudential standing doctrine.

51 Legislation

52 Creating presumption of fee shifting and ability to join interested parties to pay fees when a losing-patentee is under-capitalized; Severely limit pre-claim-construction discovery; Partially limiting the availability of pre-suit demand letters for proving willfulness when seeking punitive (willfulness) damages; Narrowing the estoppel provision for Post-Grant Review filings; and Patent Reform 2015 Substantially raising the pleading standards in patent cases well above Iqbal andtwombly; Requiring transparency of ownership; Codifying double patenting.

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54 Patent Prosecution: Ex Parte Appeals

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57 Important Collateral Estoppel Case Collateral estoppel does not bar a patentee from seeking a different claim construction in a parallel but unrelated patent. E.Digital v. Futerwei (Fed. Cir. 2014)

58 Inequitable Conduct

59 Average No. of References Cited Per Patent

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