AIA Did Not Change Years of Precedent

 

Ten years ago, when the American Invents Act (AIA) was passed and became effective in 2011, there was a debate among intellectual property experts about the meaning of AIA 35 U.S.C. § 102. (See, e.g., Did the AIA Eliminate Secret Prior Art? | Patently-O (patentlyo.com), Crouch, Dennis, October 10, 2012). One of the questions on most intellectual property experts' minds was, 'Did AIA 35 U.S.C. § 102, which in many respects mirrored the old provision, change the on sale and public use statutory bars?' In this regard, AIA 35 U.S.C. § 102(a) states, "A person shall be entitled to a patent unless--(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." The additional language "or otherwise available to the public" (i.e., "catchall phrase") called into question the current meaning of the preceding language "in public use" or "on sale".

The question regarding anticipated judicial interpretation was emphasized by the many years of precedent that were necessary to conclude what was meant by the pre-AIA 35 U.S.C. § 102 statutory language. For example, in 1946, Judge Learned Hand explained in Metallizing Engineering that a commercial use of an invention (even if done in secret) could count as a “public use” that would invalidate a later-filed patent application. Metallizing Eng‟g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520 (2d Cir. 1946), cert. denied, 328 U.S. 840 (1946). More recently, in 1998, the Supreme Court determined that an invention can be considered to be "on sale" within the meaning of pre-AIA § 102 when it is (1) the subject of a commercial offer for sale, and (2) ready for patenting. Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998).

As many readers will know, part of this question of judicial interpretation was answered by the Supreme Court in 2019 by Helsinn Healthcare. See, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S.Ct. 628, 202 L.Ed.2d 551 (2019). The Supreme Court in dicta stated that "Given that the phrase 'on sale' had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent." Helsinn Healthcare, 139 S.Ct. at 634. After this statement, the Supreme Court held "that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under § 102(a)..." Id. Therefore, the answer to at least the "on sale" portion of the long-debated question is that even secret and confidential sales of a patent can disqualify a patent from patentability or invalidate a patented invention that is under subsequent scrutiny.

It seems that the Supreme Court's holding in Helsinn Healthcare perpetuates one of the suggested reasons for the AIA, which was to encourage early filings. If this is the case, then it can be assumed that the "public use" statutory bar will be similarly construed relative to the "on sale" patent statutory bar if the issue is presented to the Supreme Court.

#patent #onsalebar #AIA

"Lofty batting"... Numerical Precision Not Required under §112

 

Statutory requirements for claim definiteness are found in 35 U.S.C. § 112(b), which states, "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention." Not long ago, the Court of Appeals for the Federal Circuit (CAFC) decided Guangdong Alison Hi-Tech Co., v. Int'l Trade Comm'n, offering a reminder that mathematical precision is not required to satisfy the definiteness requirement of 35 U.S.C. § 112.

The invention at issue is an aerogel insulation, claimed in U.S. Pat. No. 7,078,359 as comprising "lofty . . . batting". These terms were argued as indefinite by a foreign manufacturer, Alison Hi-Tech Co. The International Trade Commission (ITC) decided the claims at issue are definite, despite the use of "lofty . . . batting", and the CAFC affirmed that decision.

The current judicial standard for definiteness under 35 U.S.C. § 112 is found in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Nautilus states that patent applications are only indefinite if the specification fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

The specification of the '359 patent includes multiple examples of commercial products that qualify or further develop the meaning of "lofty . . . batting", including products like Nomex, Kevlar, Spectra, Kynol, Primaloft, Holofil, Thinsulate Lite Loft, and Quartzel. The specification includes a portion that distinguishes the prior art fibrous mats from a lofty batting by describing the minimal open space, higher density, and lack of resilience found in prior art mats as compared to lofty batting. The specification describes the orientation of fibers within lofty batting as being oriented in directions along all three axes, but with only enough fibers along the z-axis to provide resiliency and simultaneously maintain beneficial insulating properties. The specification includes seven examples and test results of aerogel composites manufactured in accordance with the claimed invention. Furthermore, when further scrutinized at the ITC, the claim terms "loft" and "batting" were each found in technical dictionaries to have meanings consistent with their contextual use in the '359 patent.

Alison argued that the specification provides no objective boundary between "some resilience" in the loft batting, which would infringe, and "little [to no] resilience", which would not infringe. Addressing this argument, the CAFC reminds Alison that numerical precision is not required of terms of degree. Furthermore, a person of skill does not need a mathematical formula or definition to determine when a material has negligible resilience.

The takeaway in this case is that taking time to flesh out the specification and ensure claim terms are fully and adequately described pays off down the road. Additionally, although inventors may question the use of terms of degree in claim language, practitioners should remember they are the expert when it comes to claim drafting--and these terms can be highly beneficial if fully supported by the specification.

Chamberlain v. Techtronic: Obviousness in §101 (Alice) Clothing

 

35 U.S.C. § 101 states, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

Recently, the interpretation of this statute has been a highly debated subject. (See, e.g., Congress’ Section 101 Fix Would Create a 112(f) Problem, Legislative Changes to Eligibility, and also As Stakeholders Await New 101 Bill, Responses to Tillis Underscore Need for Movement). Despite the debates, a framework does exist for determining when an innovation encompasses patent eligible subject matter. The Patent Office summarizes this framework in a flowchart available in MPEP § 2106(III). Nevertheless, courts are not required to follow these guidelines. Thus, without a legislative reformatting of 35 U.S.C. § 101, these guidelines may be abused, ignored, or sidestepped. For example, courts might effectively invalidate patents under a simplified 'wolf in sheep's clothing' subject matter analysis, while sidestepping key portions of the framework or a full-scale obviousness analysis.

In Chamberlain Group, Inc., v. Techtronic Industries Co., No. 2018-2103 (Fed. Cir. Aug. 21, 2019), the Federal Circuit does just this, and makes an obviousness decision under the guise of the subject matter eligibility framework. The claimed invention in the case is for a moveable barrier, such as a garage door, fitted with a wireless transmitter for communicating an operational status and unique identifier to an operator. The premise of the § 101 portion of the decision is that the subject matter of the patent is ineligible for protection because "...communicating information wirelessly, without more, is an abstract idea." (Chamberlin Group, Inc., No. 2018-2103 at 6). I think Alexander Graham Bell and Samuel F.B. Morse are turning in their graves.

For example, while not exactly scholarly support, Wikipedia says that wireless communication is "...the transfer of information or power between two or more points that are not connected by an electrical conductor." If you add in the electrical conductor, what you get is a type of communication that is nearly identical to the patentable communication created and occurring in The Telephone Cases (Dolbear v. American Bell Telephone Company, 126 U.S. 1 (1888)) and in O'Reilly v. Morse, 56 U.S. 62 (1854). The Federal Circuit's determination that wireless communication is an abstract idea appears to be wholly unsupported, and the subject matter is likely more closely related to transmitting symbols or vocal sounds telegraphically.

To be fair, the decision that wireless communication is an abstract idea may be an attempt by the Federal Circuit to pay homage to In re Nuijten, 500 F.3d 1346, 1357 (2007), which held that a transitory, propogating signal is patent ineligible subject matter. However, it is significant to note that the subject matter claimed in In re Nuijten was directed to a "signal". Wireless communication, especially when integrated with the practical application of communicating an operational status of a garage door, encompasses more than merely a transitory signal. Furthermore, whether or not claim elements are tangible or intangible is supposed to be immaterial to subject matter eligibility determinations. (See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2358-59 (2014), and also, ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)). Hence, the subject matter of this case was not ineligible subject matter, however obvious it may have been.

The Federal Circuit more clearly indicates that this decision should have been decided under an obviousness analysis when it states, "The specification admits the act of transmitting data wirelessly is 'well understood in the art,' and no other changes to the generically claimed moveable barrier operator are recited in the asserted claims or described in the specification." (Chamberlin Group, Inc., No. 2018-2103 at 7). In other words, the Federal Circuit is saying that nothing new is presented in the specification, and therefore the subject matter is ineligible. The better conclusion for this line of reasoning is that the specification includes nothing new in the art, so the invention is obvious. The problem with the Federal Circuit's conclusion is that innovators wanting to further improve wireless communication will have a much more difficult time achieving that goal if the entire technical field is preempted as ineligible subject matter.

Not only does the Federal Circuit abuse the § 101 framework in order to sidestep an obviousness analysis, it ignores a key aspect of the second step of that framework. The second step of the "Alice two-step" is determining whether an inventive concept is present in the claims. (See, Step 2B and pathway (C) in the flowchart in MPEP § 2106(III)). In considering the alleged ordered combination in its Step 2B analysis, the Federal Circuit states that one of the proper inquiries is "whether all of the steps 'as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately.'" (Chamberlin Group, Inc., No. 2018-2103 at 9-10). The Federal Circuit fails to say whether or not its inquiry looked at the steps of the alleged ordered combination "as a whole". Looking at the steps as a whole as opposed to looking at the steps separately is critical because even known process steps may be arranged in a unique way to represent patentable subject matter. (See, Rapid Litigation Management Ltd. v. CellzDirect, 827 F.3d 1042, 1051 (Fed. Cir. 2016), stating in dicta, "That each of the claims' individual steps (freezing, thawing, and separating) were known independently in the art does not make the claim unpatentable.").

In order to prevent courts from further abusing, ignoring, or sidestepping the 35 U.S.C. § 101 framework for determining patentable subject matter, legislative reform is necessary. Current proposed amendments to § 101 include removing the word "new" from the text of the statute. This may help prevent courts from substituting an in-depth obviousness analysis with the gate-keeping function of the § 101 inquiry.

#subjectmattereligibility

The Newest Double Standard from the CAFC: Relation Back Doctrine

 

Although there is much debate surrounding the current state of our nation's patent system, this piece does not address any possible double standards that may exist in the system as a whole. (See, Comment 6 to "America’s Patent System Favors the Few and Inhibits Innovation—But Change Could Be Coming"). Rather, this piece focuses on one of the newest opinions decided by the CAFC regarding the relation back doctrine.

Yesterday, the CAFC decided Anza Tech., Inc., v. Mushkin., Inc., reversing in part the US District Court for the Eastern District of California's application of the relation back doctrine. The relation back doctrine, at a federal level, may be summarized by Rule 15(c)(1)(B), which states, "An amendment to a pleading relates back to the date of the original pleading when . . . the amendment asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out or attempted to be set out--in the original pleading."

In Anza, the relation back doctrine is significant because Anza filed a first complaint, entered mediation with Mushkin, then filed a second amended complaint. (Anza, No. 2019-1045 at 5). Because the allegedly infringing activity took place more than six years before the filing date of the second amended complaint, the second amended complaint would have to "relate back" to the first complaint in order to avoid dismissal under the six-year statute of limitations found in 35 U.S.C. § 286. (Id. at 10).

Anza's first complaint alleged Mushkin directly infringed claims of a method of bonding integrated circuit chips using a bonding tool having a tip made of a dissipative material to prevent electrostatic discharge that may occur during bonding. (Id. at 4-5). Soon after the first complaint was filed, the parties entered mediation. (Id.at 5). During mediation, Mushkin's president stated Mushkin "did not bond IC chips to boards or modules." (Id.) Anza then amended its first complaint, including two additional patents, omitting ten of the sixteen originally accused products from the list of allegedly infringing products, and adding two new products to the list. (Id. at 6).

The district court decided that the second complaint did not relate back to the first complaint because the patents in the first complaint encompassed a method of using a wire bonding tool, while the two newly added patents involved a flip chip bonding and solder ball placement tool. (Id. at 8). Further, the district court noted that the additional products would not involve substantially the same evidence as the original products listed in the first complaint. (Id. at 9).

The CAFC reversed the California district court in part, finding (1) that the relation back doctrine is similar to a motion to sever in that it is governed by Federal Circuit law as opposed to regional circuit law (id., at 11), (2) that a double standard applies in the CAFC's standard of review of the relation back doctrine (id., at 12-13), and (3) that a determination that a second complaint relates back to the first complaint should include determining whether there is substantial overlap in the facts of the complaints that would place the defendant on notice of allegations it would be required to defend (id., at 21-22). The double standard allows the CAFC to use a de novo standard to determine that claims amended into subsequent complaints "[arise] out of the conduct, transaction, or occurrence" found in the original complaint, and to use a clear error standard for disputed facts material to the relation back issue.

A significant factor in the CAFC's decision was the liberal interpretation of the relation back doctrine by the Supreme Court. (See, Tiller v. Atl. Coast Line R.R. Co., 323 U.S. 574, 580-81 (1945)). (Id., at 13-14). A liberal interpretation of the relation back doctrine seems to support the rationale that notice is the primary concern, meaning that an improper form of a complaint will not outweigh the notice of potential litigation the substance of the complaint provides. Finally, because there was an open question remaining regarding whether the two newly added products were too far afield from the original complaint to put Mushkin on notice, this issue was remanded for further proceedings and review. (Id., at 23).

The takeaway from this case is that broad allegations of infringement may be sufficient to put a potential infringer on notice. These broad complaints may even be amended to more specifically address infringement at a point in litigation that falls after the statute of limitations in 35 U.S.C. § 286 has passed.

(#relation back doctrine statute of limitations)