Recent Case Highlights

Patent Defenses turned 20 in 2024

2024 Q4 Patent Defenses Update

Thinning the Orange Book

Teva Branded (Fed. Cir. 12/20/24).

• When a pharmaceutical company lists a patent in the Orange Book, it can block the introduction of competing drug products for 30 months. To be listed, the patent must “claim[] the drug for which the applicant submitted the [NDA] application.” This decision interprets that statutory requirement and is an excellent primer on the ANDA statutory regime including the Orange Book.
• A patent “claims the drug” when it “particularly points out and distinctly claims the drug as the invention,” not merely “if it reads on the approved drug.” Teva Branded (Fed. Cir. 12/20/24) (aff’g judgment delisting patents from Orange Book where NDA product was combination of “albuterol sulfate (the active ingredient) with a propellant, ethanol, and an inhaler device to administer the drug” but the claims were directed to improvements in metered-dose inhalers and did not require the presence of the NDA product’s active ingredient).
• FTC press release: “Removal of junk patent listings is critical to ensuring drugmakers can fairly compete to offer generic drugs at a lower price for consumers. This decision is important not only for lowering asthma inhaler costs, it also sets the stage for removal of junk listings on a range of other critical medications where junk device listings impede competition.”

U.S. Court May Enjoin Patent Owner from Enforcing Foreign Court’s Patent-Infringement Injunction on Patents Subject to FRAND Obligation if U.S. Lawsuit Presents an Issue That Might Bar the Patent Owner from Seeking Such a Patent-Infringement Injunction

Telefonaktiebolaget LM Ericsson (Fed. Cir. 10/24/24).

• After Ericsson-Lenovo negotiations to cross-license their standard-essential 5G patents [SEPs] failed, Ericsson filed patent infringement suits in Brazil and Columbia and obtained preliminary injunctions within weeks. Lenovo then (in Ericsson’s pending U.S. patent litigation) moved for an injunction against Ericsson enforcing these foreign-court injunctions on the ground that Ericsson had violated its FRAND obligation by failing to negotiate in good faith.
• The district court denied Lenovo’s motion on the ground that the U.S. lawsuit would not necessarily result in a global cross-license and therefore would not necessarily resolve the foreign actions. The Federal Circuit vacated the district court’s denial as misinterpreting the governing Microsoft (Motorola) (9th Cir. 07/30/15) FRAND antisuit injunction framework.
  • “[T]he ‘dispositive’ requirement [of this framework] can be met even though a foreign antisuit injunction would resolve only a foreign injunction (and not the entire foreign proceeding), and even though the relevant resolution depends on the potential that one party’s view of the facts or law prevails in the domestic suit.”
  • The “dispositive” requirement is met here because as a matter of contract interpretation “Ericsson’s [ETSI] FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs,” and Lenovo might show that Ericsson failed to negotiate in good faith.

Does a Vendor or Customer “Use” a Claimed Distributed System? Is a Vendor Vicariously Liable for a Customer’s Use?

Patent nerds reading these questions will think of Centillion Data (Fed. Cir. 01/20/11) (“We hold that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”) and Akamai Tech. IV (Fed. Cir. 08/13/15) (en banc) (a party is liable for another’s performance of a method step if [other paths omitted] it “contracts with another to perform one or more steps of a claimed method”). This new decision addresses both of these rules.

CloudofChange (Fed. Cir. 12/18/24)

• Merchants, not defendant supplier (NCR) offering Web-based POS [point-of-sale]-builder system, used the system.
  • Merchants “initiate at the POS terminal a demand for service (for example, building or editing a POS) and benefit from the back end providing that service.”
  • While the defendant system-supplier benefitted financially, it did not receive as a benefit the patent-recited purpose of the use of the POS-builder system.
• Defendant system-supplier was not vicariously liable for the merchants’ use.
  • It did not “direct or control its merchants to subscribe to the [POS-builder] system, download the [POS-builder] app on their POS terminals, or put the [POS-builder] system into use by initiating action at the POS terminals to cause the [POS-builder] software to modify its POS terminals,” despite the defendant system-supplier requiring merchants to get own Internet connection.
  • Distinguishing Akamai as directed to method claim where supplier performed all but one step of claimed method and controlled performance of that one step.
• At our January 9 Patent Defenses presentation, we’ll explain the patent drafting mistake that partly led to this result.

False Assertion that a Product Feature Is Patented in Manner Misleading Consumers About Nature, Characteristics, or Qualities of Product, Supports a Lanham Act Counterclaim

• “A cause of action arises from Section 43(a)(1)(B) where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product.” Crocs (Fed. Cir. 10/03/24) (rev’g Summ. J. against counterclaim, distinguishing precedents that false patent assertions which mislead about inventorship or authorship do not support Lanham Act cause of action).

Showing that Unpatented Features Were Conventional Does Not Suffice to Support Using the Entire Market Value Rule

• Provisur (Fed. Cir. 10/02/24) (rev’g denial of new trial on damages: “use of the entire market value rule was impermissible because [plaintiff] failed to present sufficient evidence demonstrating the patented features drove the demand for the entire slicing line,” and instead showed only that unpatented features were conventional).

Several Vehicles Exist for Sanctioning a Patent Owner Who Brings a Bad-Faith Patent Infringement Action

• A district court “can impose sanctions under its inherent power in addition to awarding attorney fees and costs under § 285.” PS Products (Fed. Cir. 12/06/24) (aff’g award of $25K in “deterrence sanctions” payable to district court, under inherent power, in addition to award of attorney fees for bad-faith design patent infringement complaint, where venue plainly was lacking, there was no plausible argument for infringement, plaintiff had filed 25 lawsuits in district, each citing wrong venue statute, and many dismissed voluntarily in response to motions to dismiss, and plaintiff dismissed this action before defendant could file Rule 11 motion, but declining to award fees on the appeal as it was meritless but not quite frivolous).

2024 Q3 Patent Defenses Update

Fed. Cir. Grants En Banc Review on Damages Expert Gatekeeping

The Federal Circuit granted Google’s petition for rehearing en banc to address a district court’s gatekeeping of patent damages experts, here an expert assigning a per-unit royalty rate to the patent owner’s allegedly comparable past lump-sum portfolio license agreements. Klarquist submitted a brief on behalf of seven amici supporting en banc review.

EcoFactor (Fed. Cir. 06/03/24) (2-1) (aff’g damages award and admission of patent-owner expert testimony on royalty rate), vacated and en banc review granted (Fed. Cir. 09/25/24) (briefing “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert[,] in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case”).

Whiplash! Obviousness-Type Double Patenting

August 2023: A year ago, the talk of the (patent-practitioner) town was In re Cellect, holding that patent term adjustment (PTA) affects the date of patent expiration for obviousness-type double patenting (ODP) purposes, and affirming the ODP rejection of a (’369) patent expiring later (due to PTA) over a later-filed, later-issued, but earlier-expiring (’036) patent in same family having a common priority date. In re Cellect (Fed. Cir. 08/28/23). Patent practitioners were aghast, and a cert. petition was filed. (The Supreme Court was scheduled to consider this petition at its “long conference” this Monday, September 30.)

August 2024: But now the Federal Circuit, while standing by its holding on the impact of PTA, has declared that the result in In re Cellect will not be repeated.

“A first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date,” in view of “the purpose of the ODP doctrine, which is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter,” and because ruling otherwise would “effectively abrogate the benefit Congress intended to bestow on patentees when codifying PTA.” Allergan (Fed. Cir. 08/13/24) (distinguishing In re Cellect as not addressing this question of law at least in part because no party had presented it).

The Patent Office cited Allergan in opposing the In re Cellect cert. petition.

The New “On Sale” Bar (for First-Inventor-to-File Patents) Is Much Like the Old “On Sale” Bar

An applicant’s commercialization of an invention (e.g., through sale of a product of a claimed process) starts the one-year grace period for the applicant to file a patent application, even if it does not publicly disclose the invention.

Celanese (Fed. Cir. 08/12/24) (aff’g ITC that patent applicant’s pre-critical date sales of product made outside U.S. in secret by patented process invalidates the claims under AIA section 102(a)(1): “for patented processes, the on-sale bar applies when one commercially exploits the process by seeking compensation from the public for carrying out that process before the critical date”).

But it does not defeat the prior art status of a third-party “disclosure” before the application was filed, unless the applicant’s commercialization publicly disclosed the invention.

Sanho (Fed. Cir. 07/31/24) (aff’g PTAB obviousness despite inventor having privately (but without confidentiality obligation) sold device embodying claimed invention (and delivered one sample to buyer) before effective filing date of lead prior art reference, in part because “publicly disclosed” is not the same as “public use” (which encompasses a private commercial use), and expressly not deciding “whether to apply the prevailing standard for when a printed publication is sufficiently publicly accessible to qualify as prior art”).

Preliminary Injunction Against a Cancer-Relapse Test in a Two-Supplier Market

Patent preliminary injunctions remain rare, but a new precedential decision may encourage more non-NPE patent owners to seek a preliminary injunction even where that results in a one-supplier market.

Natera (Fed. Cir. 07/12/24) (aff’g preliminary injunction against competing tumor-informed molecular residual disease tests for detecting cancer relapse in two-product market, with carve-out for patients who had already started use with accused product, where direct competitors in two-competitor market, unwillingness to license the patent, potential loss of business relationships, obstacles to customers switching between providers, sufficient causal nexus, and the patentee showed it is more likely than not to prevail over an invalidity challenge, and rejecting argument that accused infringer needed to show “mere vulnerability” of the patent to an invalidity challenge to defeat an injunction).

An Issue Preclusion Profusion

The principles and elements of issue and claim preclusion are well established. For example, under issue preclusion, when an issue of fact or law is actually litigated and determined by a final judgment, the losing party had a full and fair chance to litigate the issue, and the determination is essential to the judgment, the determination (with certain equitable exceptions) is conclusive in a separate, second action between the parties. But the patent-case “fact patterns” to which these principles are applied are quite varied. And panels sometimes seem to disregard the well-settled principles.

• Doctrine of Equivalents Is “Same Issue” as Literal Infringement

Wisconsin Alumni II (Fed. Cir. 08/28/24) (aff’g that later versions of Apple chips accused in second action were “essentially the same” as those accused in first action, and that “doctrine of equivalents” infringement theory in second action is “same issue” as literal infringement issue that plaintiff lost in first action, as they involve same statute, have been treated as same issue by S. Ct., and evidence would be substantially the same).

• Sec. 101 Interlocutory Dismissal Order Became Final for All Dismissed Patent Claims Upon Stipulated Dismissal with Prejudice Despite Amended Complaint Having Dropped Some Claims

Koss (Fed. Cir. 07/19/24) (aff’g that stipulated dismissal of action with prejudice made final the district court’s previously interlocutory order on a motion to dismiss that all claims of three patents were invalid under Section 101 where amended complaint then asserted only limited claims of two of the patents, because order merged with the non-appealed stipulated dismissal, and therefore final order had issue preclusive effect).

• Invalidity-Related Fact Finding Against Patent Owner in IPR Does Not Preclude Patent Owner on That Fact Question in District Court

Due to different standards of proof, “a finding underlying an unpatentability decision in an IPR proceeding [does not] collaterally estop[] a patentee from making validity arguments regarding separate, related claims in district court litigation.” ParkerVision (Fed. Cir. 09/06/24) (rev’g Daubert ruling excluding patent owner expert testimony; the defendant-petitioner proving the capabilities of a prior art apparatus by a preponderance of the evidence (in an IPR proceeding on different patent claims) does not preclude the patent owner on that factual issue where it must be proven by clear and convincing evidence).

• Panel Disregards “Separate, Second Proceeding” Requirement for Issue and Claim Preclusion

Zyxel (Fed. Cir. 07/22/24) (rev’g PTAB non-obviousness as to one original claim and remanding to PTAB to consider whether this creates “collateral estoppel” as to patentability of amended claims with same elements; not forfeited for failure to raise collateral estoppel prior to appeal because not available until Fed. Cir. ruled original claim unpatentable).

101: No “How,” No Way!

Alice in a nutshell: No “how” in the claim, no way it’s valid.

The Federal Circuit insists on what we call “how claims,” i.e., claims that recite as the alleged advance a physical-realm particular way (particular structures, materials, and/or acts) of how to perform a function or achieve a result. Particularity in the mental realm of information and information manipulation, however, does not suffice because even narrow and specific abstract ideas are patent ineligible. Below are excerpts from three of this quarter’s seven Federal Circuit opinions finding claims patent ineligible under these principles:

“Claim 1 does not disclose how to maintain a usage history database, track viewer consumption, or generate a program guide. Instead, the claims recite functions in the abstract.” Broadband (Fed. Cir. 09/03/24).

“These claims consist solely of result-orientated, functional language and omit any specific requirements as to how these steps of information manipulation are performed.” Mobile Acuity (Fed. Cir. 08/06/24).

The claim’s “steps demonstrate that the claims are directed to receiving, storing, transmitting, determining, selecting, and generating information, which place them in the ‘familiar class of claims directed to a patent-ineligible concept.’” Miller Mendel (Fed. Cir. 07/18/24).

The Court also reversed a patent ineligibility judgment this quarter emphasizing that the claims were limited to a particular way of performing the claim-recited functions:

Contour IP (Fed. Cir. 09/09/24) (rev’g Summ. J. ineligibility: claims “require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a [point-of-view] camera’s recordings on a remote device.” The “claims do not cover other ways that a camera processor might generate multiple video streams of varying quality for wireless transmission, such as streams created ‘in sequence.’”).

2024 Q2 Patent Defenses Update

Highlights and Strategies from April – June S. Ct.’s decisions on substantive Patent Law.

The End of Chevron Deference: Impact on Substantive Patent Law

1984 Chevron Deference Rule: Where a statute administered by a federal agency is silent or ambiguous on a point, a court must defer to that agency’s reasonable interpretation thereof, even if the court otherwise would have interpreted the statute differently.

S. Ct.’s Final Application of Chevron Deference Was in Cuozzo, a Patent Case: “This Court, for its part, has not deferred to an agency in­terpretation under Chevron since 2016. See Cuozzo, 579 U.S. at 280 (most recent occasion).” Loper Bright (U.S. 06/28/2024) (6-3). Cuozzo approved USPTO’s use of “broadest reasonable interpretation” claim construction standard in IPRs (which USPTO since has abandoned).

The End of Chevron Deference:

• Loper Bright (U.S. 06/28/2024) (overruling Chevron; under the APA, “agency interpretations of statutes—like agency interpreta­tions of the Constitution—are not entitled to deference,” although courts may “seek aid from the interpretations of those responsible for imple­menting particular statutes,” “interpretations issued contemporaneously with the statute at issue, and which have remained consistent over time, may be especially useful in determining the statute’s mean­ing,” and “an agency’s interpretation of a statute … may be especially in­formative ‘to the extent it rests on factual premises within [the agency’s] expertise.’”).

Impact on Patent Cases:

• Existing and future USPTO and ITC statutory interpretations (not already approved by a reviewing court) now are more open to challenge.
• But USPTO and ITC statutory interpretations already approved by the Supreme Court or, to a lesser extent, the Federal Circuit, are unlikely to be overturned, due to the statutory stare decisis “[W]e do not call into question prior cases that relied on the Chevron framework. The holdings of those cases that specific agency actions are lawful … are still subject to statutory stare decisis despite our change in interpretive methodology.” Loper Bright (U.S. 06/28/2024).
  • For example, the en banc Suprema II (Fed. Cir. 08/10/15) ruling that Section 337 bars importation of goods that when imported do not infringe but after importation are used by the importer to directly infringe at the inducement of the goods’ seller, was based on Chevron deference to ITC interpretation of ambiguous statute.

Loper Bright’s Lesson for a Party Asserting “Indefiniteness” Under Nautilus

The Supreme Court emphasized that even the most impenetrable statute has a best meaning: “Courts instead under­stand that such statutes, no matter how impenetrable, do—in fact, must—have a single, best meaning. That is the whole point of having written statutes; ‘every statute’s meaning is fixed at the time of enactment.’” Loper Bright (U.S. 06/28/2024). The same applies to patent claims. Even ambiguous (indefinite) patent claims have a best meaning and therefore there is nothing inconsistent with a defendant both asserting a (best) construction for a claim term and also arguing that the claim term is “indefinite.”

Silence in a Specification Speaks Volumes

On several patentability issues, a patent specification’s failure to explain something often is treated as admitting that that something already was known to a skilled artisan. This includes Alice step two.

• Beteiro (Fed. Cir. 06/21/24) (“That only 15 lines out of a [98-column Spec.] are addressed to what Beteiro now insists is unconventional technology greatly undermines the plausibility of Beteiro’s allegations. The inventors do not in the specification purport to have advanced GPS or mobile device technology; they provide no description whatsoever of any hardware or software for equipping GPS on a mobile device. In context, this can only plausibly mean that the patent applicant drafted the specification understanding that a person of ordinary skill in the art knew what GPS was, how to include it on a mobile device, and that using it for the purposes disclosed in the patent was routine, conventional, and well-understood.”).

The More You Claim the More You Must Explain

This non-precedential decision is a routine application of full-scope enablement law to a claimed polymer, but it does pen a catchy slogan:

• In re The Pen (Fed. Cir. 06/12/24) (non-precedential) (aff’g rejection of ex parte application claims for lack of full-scope enablement where full scope of the claims encompassed “polymers with any “R” group and an “n” (number of conjugated repeating units) of more than 8, at least 50, or at least 1000,” but closest prior art achieved an “n” to only 8. “In short, the more you claim, the more you must explain.”).

Parallel Proceedings in District Court and PTAB

When a parallel PTAB proceeding is pending, a patent owner win in district court is at risk even, sometimes, after the Federal Circuit affirms a district court finding of infringement liability.

• “We apply a ‘yes/no’ analysis: is there, post-mandate, anything left to do other than execute the judgment? If the answer is ‘yes,’ then the case as a whole is not ‘final’ and is not, therefore, immune to the impact of subsequent developments with respect to the validity of the patents on which its infringement and invalidity claims are based.” Packet Intelligence (Fed. Cir. 05/02/24) (vacating judgment and damages award for patent owner based on Fed. Cir. affirmance of PTAB IPR unpatentability finding even though Fed. Cir.’s earlier mandate had affirmed liability and remanded on damages only).

But the successful patent challenger in an IPR cannot recover its attorney fees.

• Dragon II (Fed. Cir. 05/20/24) (2-1) (aff’g grant of attorney fees for work in litigation but denial of fees for work in successful IPR petition, initiated in response to district court action and leading to stay of the district court action, leading to cancellation of asserted claims, because IPRs are not “cases” under section 285, distinguishing PPG because here defendant voluntarily initiated IPR proceeding).

Value of an Octane Fitness Letter

When receiving a cease and desist letter or complaint asserting patent infringement, one should consider responding with an “Octane Fitness letter,” explaining at least one clear reason why the accused activity does not infringe any claim. The delivery of such a letter later can be a factor supporting an award of attorney fees against the patent owner (and be evidence of no inducement intent).

• Dragon II (Fed. Cir. 05/20/24) (aff’g award of fees where exceptionality based on “clear prosecution history disclaimer, which precluded a finding of infringement by any of the accused products; public availability of information demonstrating noninfringement by the accused products before Dragon filed the infringement suits; notice of noninfringement sent by Appellants to Dragon after the complaints were filed; and Dragon’s continued litigation after being put on notice of the objective baselessness of its infringement allegations.”).

Apportionment Mandate Muddied

Patent-infringement damages should not encompass the value of conventional or non-infringing acts, structures, or materials in the accused method or product. The Federal Circuit often applies this “apportionment” mandate strictly, but not always.

This decision concerns so-called “built-in apportionment,” where a patent owner argues that comparable existing license agreements set a royalty rate that was tied to the contribution of the infringed patent or comparable technology. Here, the allegedly comparable license agreements were three lump-sum portfolio licenses and the defendant, Google, argued that these did not account for apportionment to the single patent asserted against it. The panel disagreed, essentially treating apportionment as a talking point in the hypothetical negotiation rather than a strict mandate. A petition for rehearing en banc is likely.

• EcoFactor (Fed. Cir. 06/03/24) (2-1) (where single patent found infringed, aff’g denial of new trial and admission of patent-owner expert reliance on three existing patent-owner lump-sum portfolio licenses, in part because expert testified this difference would be offset in hypothetical negotiation by those earlier licenses being settlements putting downward pressure on royalty rate).

2024 Q1 Patent Defenses Update

Highlights and Strategies from January–March Fed. Cir. decisions on substantive patent law

This was a busy quarter for the Federal Circuit with precedential decisions on the nature of CRM claims, the section 271(e)(1) safe harbor, the importance of instructing a jury on each individual indicia of non-obviousness, written description of a claimed range in mechanical arts, and reasonable-royalty damages based foreign activities, plus nine more written decisions finding claims directed to an abstract idea, and a pre-argument remand to allow the USPTO to further consider means-plus-function claiming of antibodies.

And the USPTO issued misguided guidance for examiners on section 112(f) step-plus-function claim elements.

CRM Claim Covers a Memory-Device Unit with a Copy of Software as Distinct From the Software Itself

In 2007, interpreting 35 U.S.C. § 271(f), the Supreme Court ruled that intangible software information, or “software in the abstract detached from any medium” as distinct from a physical copy of software, is not a “combinable component” under Sec. 271(f). Microsoft v. AT&T (U.S. 04/30/2007). Last week, the Federal Circuit cited that distinction as support for its narrow description of what constitutes “making” infringement for a CRM claim.

• “The Supreme Court has recognized the important distinction between software and a particular copy of it on a CRM.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of damages expert theory seeking reasonable royalty on foreign sales of software, for infringement of a CRM claim, where expert’s report was “not focused on making an individual memory-device unit, whether freestanding (like a memory stick) or a part of a larger physical unit (like a hard drive in a personal computer or server). They have referred, instead, to the TWS BookTrader software itself—’the instructions themselves detached from any medium’ (rather than a ‘tangible ‘copy’’), ‘software in the abstract,’ software ‘[a]bstracted from a usable copy.’” (citing Microsoft v. AT&T)).

Mooring in the Section 271(e)(1) Safe Harbor

• Edwards Lifesciences (Fed. Cir. 03/25/24) (2-1) (aff’g J. of no infringement under 271(e)(1) safe haven where two (allegedly infringing) sample products were imported into U.S. by employee attending medical conference to recruit doctors to conduct clinical trials that would be needed for FDA approval, which products never left employee’s bag, regardless of why defendant imported the samples).

Continuing Development of Functional Claiming in Antibody Art Post Amgen

In Amgen (U.S. 05/18/2023), the Supreme Court ruled invalid for lack of full-scope enablement claims to an entire class of antibodies defined by their function. Some amici had argued that the claims should have been interpreted under the statute enacted to deal with such purely functional claims, namely 35 U.S.C. § 112(f). The Federal Circuit now has remanded an appeal to allow the USPTO to rethink this topic.

• In re Xencor (Fed. Cir. 01/23/24) (non-precedential) (permitting remand at USPTO request “so that the USPTO’s Appeals Review Panel can be convened to ‘clarify the USPTO’s position on the proper analysis of Jepson-format and means-plus function claims in the field of biotechnology, and particularly in the antibody art’”).

USPTO Missteps on Step Plus Function

The Office just gave its examining corps an easy (and incorrect) way to determine whether a limitation in a method claim triggers interpretation under 35 U.S.C. § 112(f):

• Means-plus-function limitations appear much more frequently than step-plus-function limitations, which are rare. In process claims, if the claim element uses the phrase “step for,” § 112(f) is presumed to apply, but the term “step” alone and the phrase “steps of” tend to show that § 112(f) does not apply. A step limitation must not recite an act to be treated under § 112(f), but most process claims include steps with acts described by a verb ending in “-ing” (such as passing, heating, reacting, transferring, determining, etc.), which will avoid § 112(f).

USPTO Memorandum (“Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))”) (03/18/2024) (emphasis added).

So, Patent Office Examiners have been told that any result or function recited as a verb ending in “-ing,” such as “finding a needle in a haystack,” does not trigger interpretation under section 112(f). This is incorrect. The dividing line between a step and an act under this statute is not so simple. See https://klarquist.com/patent-defenses/1126f-claim-language/.

Obviousness: Each Objective Indicia of Non-Obviousness Matters

• Inline Plastics (Fed. Cir. 03/27/24) (granting new trial overturning obviousness verdict where district court committed prejudicial legal error by failing to include in its objective-indicia instructions (limited to long-felt need and commercial success) mention of industry praise, copying, and licensing, despite evidence being presented thereon and defendant preserving request for such instruction).

Written Description of Claimed Range in Mechanical Arts

• RAI Strategic (Fed. Cir. 02/09/24) (rev’g PTAB PGR finding of written description unpatentability where claim recited heating element length of about 75% to about 85% of length of heated substance and Spec. described ranges of 75%–125%, 80%–120%, 85%–115% and 90%–110%, because “no evidence suggesting that the” broader disclosed ranges “disclose a different invention than the claimed range of ‘about 75% to about 85%,’” and noting that mechanical arts are more predictable).

Requirements for Increasing Reasonable-Royalty Damages Based on Foreign Conduct Related to Domestic Infringing Conduct

In 2018, the Supreme Court opined on the availability of lost profits damages based on foreign conduct related to domestic infringing conduct under 35 U.S.C. § 271(f). WesternGeco III (U.S. 06/22/2018). A Federal Circuit panel now has mostly adopted that WesternGeco framework where the damages sought are a reasonable royalty and the infringement is under section 271(a), with particular guidance when the claim is a CRM claim, but expressly leaving open two questions for future development.

• “The hypothetical negotiation must turn on the amount the hypothetical infringer would agree to pay to be permitted to engage in the domestic acts constituting “the infringement.” 35 U.S.C. § 284. If the patentee seeks to increase that amount by pointing to foreign conduct that is not itself infringing, the patentee must, at the least, show why that foreign conduct increases the value of the domestic infringement itself—because, e.g., the domestic infringement enables and is needed to enable otherwise-unavailable profits from conduct abroad—while respecting the apportionment limit that excludes values beyond that of practicing the patent.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of a damages expert’s theory because it was “legally insufficient, even under the WesternGeco framework,” for failing to focus on “the infringement,” namely making a CRM media by copying software thereon as distinct from the software itself. Characterizing this requirement as “a necessary beginning,” and expressly leaving open questions of (1) “whether the ‘reasonable, objective foreseeability’ presumptive standard for lost profits, is applicable where the damages are for a (non-established) reasonable royalty,” and (2) what, if any, consideration is given to the “general avoidance of extraterritorial reach” when applying the “proximate cause” requirement after WesternGeco).

Inexplicable Supreme Court Disregard for Patent Defenses!

The Supreme Court inexplicably denied certiorari despite the cert. petition citing Patent Defenses commentary in support. This slight may dent the Court’s public popularity.

• See Petition in United Therapeutics (01/23/24) (arguing that Fed. Cir. refusal to give preclusive effect to PTAB decision pending appeal is contrary to S. Ct. and other Circuits; citing Patent Defenses commentary on Fed. Cir. decision).

Nine More Opinions Finding Claims Directed to Abstract Idea

• Directed to Abstract Idea:
  

  Abstract Idea Decision	“Abstract Idea” To Which Claims Directed	Ruling
  Bluebonnet (Fed. Cir. 03/29/24) (non-precedential) (Stark, J.)	“customizing a product according to a customer’s likes and dislikes, applied to the somewhat narrower context of computer-based media playlists.”	aff’g R. 12(c) at least 1 claim
  Rady (Fed. Cir. 03/27/24) (non-precedential) (per curiam)	“gathering and storing data about the unique imperfections of a physical object”	aff’g R. 12(b)(6) at least 1 claim
  Brumfield (Fed. Cir. 03/27/24) (Taranto, J.)	“receipt and display of certain market information (bids and offers) in a manner that newly helps users see the information for use in making trades”	aff’g Summ. J. at least 2 claims
  Savvy Dog (Fed. Cir. 03/21/24) (non-precedential) (Stoll, J.)	“displaying the game field before the player commits to play the game”	aff’g Summ. J. at least 1 claim
  Chewy (Fed. Cir. 03/05/24) (Moore, J.)	“identifying advertisements based on search results”	aff’g Summ. J. 4 claims
  In re Zimmerman (Fed. Cir. 02/09/24) (non-precedential) (per curiam)	“matching combinations of financial instruments through steps of receiving data, storing data, processing data, and executing trades”	aff’g ex parte rejection 73 claims
  Eolas (Fed. Cir. 02/01/24) (non-precedential) (Stoll, J.)	“interacting with data objects on the World Wide Web”	aff’g Summ. J. 6 claims
  Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (Dyk, J.)	“changing the position of components in an image to create the appearance of movement, i.e., animation”	aff’g R. 12(b)(6) at least 5 claims
  Int’l Business Machines (Fed. Cir. 01/09/24) (non-precedential) (2-1) (Hughes, J.)	“[i]dentify[], analyz[e], and present[] certain data to a user” “displaying and organizing information”	aff’g R. 12(b)(6) at least 3 claims