ALERT: Don’t be Fooled by Bogus Operators Claiming You Need to Take Action on Your Trademarks or Patents
There are a growing number of bogus operators who send misleading communications to patent and trademark owners. These operators often pose as a government agency, or an ostensibly legitimate-looking company. They may use company names that resemble official patent and trademark offices and agencies, like U.S. Trademark Compliance Office, International Register of Patents & Trademarks, and World Intelligent Property Office (WIPO).
One of their primary tactics is to send an official looking communication or “notice” informing you that you must take action (oftentimes pay money) to preserve your rights. The solicitations may refer to upcoming deadlines concerning your registration or application.
The operators use information from public databases to contact legitimate intellectual property owners with “urgent” solicitations for legal services, monitoring services, U.S. Customs trademark recordation services, and registration in the operator’s own private registry. Oftentimes, these services are unnecessary or do not have an immediate deadline. Both the USPTO and WIPO (the legitimate WIPO) have lengthy lists of these fraudulent operators on their websites. A sample solicitation is attached.
Don’t be fooled.
We are your intellectual property attorneys. In general, if you receive an official government notice, you will receive it through us. If you are receiving such types of communications from companies other than Briggs, chances are they are not legitimate. Or, if they are legitimate, we can confirm it for you after a brief review.
If you have received such a notice and have a concern about its legitimacy, please bring it to our attention. Above all, don’t send money without first understanding what the notice is and whether it is legitimate.
There is a case pending before the U.S. Supreme Court currently on this issue. Oral argument is scheduled for March 27, 2017.
The case is In re TC Heartland.
The law for nearly the last 30 years (since VE Holding, 1990), has been that an infringer is subject to suit any place in which it is subject to personal jurisdiction. Selling infringing product into a district generally is sufficient to find personal jurisdiction. So, for example, an accused infringer who has nationwide sales can generally be sued in any state in the country.
A patentee has typically chosen one of two routes: a) suing in the patentee’s home district (e.g., 3M suing in District of Minnesota court), or b) suing in what is seen as a favorable location – known as “forum shopping.” Forum-shopping has created certain pockets of high density for patent litigation, most notably, the Eastern District of Texas, where jury verdicts in favor of plaintiffs have historically been higher than the national average.
The TC Heartland case could change all that. The question before the Supreme Court is whether the current view is correct, or whether it should be restricted to a rule that accused infringers may only be sued in a district (state) where they are more traditionally doing business (such as where their headquarters are located).
In TC Heartland, the district court (in Delaware) and the appeals court (the Federal Circuit) held that the accused infringer could be sued in Delaware, a district in which the accused infringer’s presence essentially amounted to shipping infringing product totaling about 2% of its total sales for that year.
If the Supreme Court disagrees, the practice that has been in effect for nearly the past 30 years may change. And if it does disagree, this won’t be the first time the Supreme Court has disagreed with the Federal Circuit.
One wonders if this is all still in (over)reaction to patent trolls?
The Federal Circuit, in a three-judge panel, recently decided a medical diagnostics patent case that has an unusual concurrence written by one of the three judges, Judge Linn. In Ariosa Diagnostics, Inc. et.al. v. Sequenom, Inc. et.al. (Fed. Cir. June 12, 2015), (“Sequenom”) the Court affirmed a district court summary judgment holding that U.S. Patent No. 6,258,540 (“the ‘540 patent”) is invalid under 35 U.S.C. § 101 as not directed to patent eligible subject matter.
The Court based its holding on Mayo Collaborative Services v. Prometheous Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) (“Mayo”).
The ‘540 patent claims a method for detecting cell-free fetal DNA (“cffDNA”) in maternal blood samples. A sample claim of the ‘540 patent is:
- A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises: amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.
The Court followed the two step Mayo method of determining subject matter eligibility for processes claiming the use of laws of nature, natural phenomena, and abstract ideas.
In the first step, the Court determines whether the claims at issue are “directed to” a patent-ineligible concept. Here, the Court held that the claims are directed to a natural phenomenon because the method “begins and ends with a natural phenomenon.”
In the second step, the Court determines whether “additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Here, the Court held that the claims do not pass the second step because “the method steps were well-understood, conventional and routine.”
In its analysis, the Court, citing Alice Corp. v. CLS Bank Int’l, __ U.S. __, 134 S. Ct. 2347, 2354 (2014), (“Alice”) “made clear that the principle of preemption is the basis of the judicial exceptions to patentability.” However, the Court also stated that “[W]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” The Court declined to adopt the appellee’s “distinction among natural phenomena based on whether or not they will interfere signifcantly with innovation in other fields now or in the future.” The Court also stated that the Supreme Court has instructed that a “[g]roundbreaking, innovative or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Assn for Molecular Biology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107, 2117 (2013) (“Myriad”).
Judge Linn wrote a concurring opinion but stated he was doing so “only because I am bound by the sweeping language of the test set out in [Mayo].” He further explained:
“The Supreme Court’s blanket dismissal of conventional post-solution steps leaves no room to distinguish Mayo from this case, even though here no one was amplifying and detecting paternally-inherited cffDNA using the plasma or serum of pregnant mothers.”
Sequenom is notable for the stringent application of the Mayo analysis even in the case of (admittedly) an absence of prior art and the presence of a “new way that revolutionized prenatal care.” This is an indication of the Federal Circuit’s new obeisance to its chastising by the Supreme Court in Alice, Mayo, and Myriad. However, Judge Linn’s concurrence suggests that not all of the members of the Court fully subscribe.
The Patent Trial and Appeal Board (PTAB) has issued a Final Written Decision of the invalidity of an Internet-related patent under the subject matter restrictions of 35 U.S.C. 101.
In Bank of America, N.A., PNC Financial Services Group, Inc. and PNC Bank, N.A, vs. Intellectual Ventures I LLC, the PTAB found claims 1-23 of U.S. Patent No. 7,603,382 B2 (“the ‘382 patent”) to be unpatentable as directed to patent-ineligible subject matter under 35 U.S.C. 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) as being directed to an “abstract idea.”
A sample claim of the challenged patent is as follows:
- A system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user, comprising:an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:a display depicting portions of the web site visited by the user as a function of the web site navigation data; anda display depicting portions of the web site visited by the user as a function of the user’s personal characteristics.
In arriving at its decision, the Board considered the following arguments on the part of the Patent Owner:
- that the claims of the ‘382 patent are not “directed to ‘an idea itself, a mathematical formula or algorithm, a fundamental economic practice long prevalent in our system of commerce, or a method of organizing human activity.'”
- that the claims of the ‘382 patent “do not preempt the alleged abstract idea and are transformed by an inventive concept.” That claims 1-6 and 16-23 user the claimed interactive interface to provide tailored content based upon the user’s personal characteristics and the user’s website navigation data.
- That the ‘382 patent is not a covered business method patent because the claims are directed to a technological invention.
- That Section 101 is not a proper ground upon which a covered business method patent review may be maintained.
The Board based its decision regarding argument 1 on the recent U.S. Supreme Court holding in Alice, setting out a two-step test for patentability of an abstract idea. Key to this step 1 was a statement by the Patent Owner’s expert, who testified that “the patent is described at what may appear to be a fairly high abstract level.” In responding to argument 2, the Board held that the limitations of the claims do not contain an “inventive concept” to “transform” the claimed abstract idea into patentable subject matter. Key to this step was, again, testimony of the Patent Owner’s expert that “the ‘382 patent lacks implementation details because it is written at a ‘fairly high abstract level.’” The Board distinguished the ‘382 patent from the Federal Circuit’s decision in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In responding to argument 3, the Board held that in at least claim 11 “there is no technological feature in that claim that is novel and unobvious.” Finally, in regard to argument 4, the Board held that Section 101 is a proper ground for instituting a Covered Business Method patent proceeding.
A.What is 3D printing and why is it a big deal?
Traditional methods of manufacturing require expensive machinery and molds or casts. The high cost associated with such equipment acts as a barrier to entrance into the market. It also restricts variation and customization. 3D printing (known as “additive manufacturing”) creates or “prints” a desired object “layer by layer” using a variety of raw materials including plastics, metals, clays and even chocolate (Hershey and 3D Systems recently unveiled their new Chocolate 3D printer capable of creating elaborate shapes in dark, milk, or white chocolate.)
3D printers utilize a blueprint in the form of a Computer Aided Design (“CAD”) file. The CAD file can be created manually or via sophisticated 3D scanners capable of “scanning” three dimensional objects.
3D printing has already been widely utilized in major industries such as automotive (auto design and parts); aerospace (NASA sends 3D printers into space for emergency replacement parts and tools); healthcare (custom implants and orthotics); and military (3D printers provide on demand replacement parts in the field). Small business and consumer use is expected to increase dramatically as 3D printers become more affordable. (A steep increase in 2015 has been predicted due to the recent expiration of several key patents.) For those who think 3D printers are too big, clumsy and cost prohibitive for widespread consumer use – recall the early stages of the computer revolution. (“I think there is a world market for maybe five computers.” Thomas Watson, President of IBM, 1943).
Because 3D printers copy and create replicas of existing 3D objects, they raise a host of intellectual property concerns. Many fear the erosion of non-legal deterrents to infringement (i.e. high capital costs) will result in widespread infringement rendering traditional legal enforcement useless and devaluing intellectual property.
The music industry is frequently cited for comparison. Leading commentators argue 3D printing will effect change in the manufacturing industry in much the same way digitization altered the music industry:
3D printing will unleash the power of digitized things on manufacturers. The PC and the Internet put digitization into consumers’ hands, slashed copying and distribution costs, and weakened entry barriers to economic sectors that provided certain nonrivalrous goods. Nonrivalrous goods are like an idea; once created, their capacity is infinite as “there is no additional marginal cost in allowing others to use [them].”. . . Once digitization hit the copyright industry, it felt the full force of nonrivalry. . . [A]nyone could make and distribute copyrighted goods. To date, companies relying on patent to protect nonrivalrous goods have not had to face potential broad-based copying. 3D printing will challenge those companies. Lower costs, the ability to make specialized and just-in-time parts, and a return to local manufacturing are all positive developments that should be embraced. Yet these advances will threaten, if not destroy, many firms and jobs that live off rents from intellectual property.
Devan Desai and Garard Magliocca, Patents Meet Napster: 3D Printing and Digitization of Things, 102 Geo. L.J. 1691 (2014). As with digital music, the coming years will see a host of intellectual property cases, issues and legislative activity involving 3D Printing.
B. Forms of Intellectual Property Protection
a. “Pictorial, Graphic and Sculptural Works”
U.S. copyright law protects original “pictorial, graphic, and sculptural works.” 17 U.S.C. §102(a)(5). This includes three-dimensional works of art. Examples of such works include artificial flowers and plants, dolls, toys, jewelry designs, models, sculptures and figurines. Traditional copyright laws will afford protection to copyright protected work duplicated by a 3D printer. Several variations merit discussion.
b. “Useful Articles”
Copyright protection is generally not available to articles which have a utilitarian function. Copyright protection for such “useful articles” extends only to “features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” “Useful articles” are defined as those goods “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. §101.
Determining the scope of copyright protection for useful articles is fact intensive and indefinite at best. However, the exclusion of “useful articles” leaves open the ability of 3D printers to supply objects used in our everyday lives without necessarily implicating copyright law.
c. Computer Software
Computer programs are protected as “literary works” under the Copyright Act. 17 U.S.C. §102(a)(1). Both source code and object code are considered “literary works” because they are original works of authorship “expressed in words, numbers, or other verbal or numerical symbols or indicia.” 17 U.S.C. §101.
The underlying CAD files which facilitate 3D printing constitute computer software eligible for copyright protection. Accordingly, U.S. copyright law will prohibit the unauthorized distribution of copyright protected CAD files for use with 3D printers.
(1) Originality Requirement for CAD Files
In order to be eligible for copyright protection, the subject CAD file must meet the requisite “originality” requirement. The U.S. Supreme Court set a low bar for meeting the originality requirement in Feist Publications, Inc. v. Rural Telephone Service, 499 U.S. 340 (1991). In order to qualify, a work must: 1) be independently created by the author (as opposed to copied from other works); and 2) possess at least some minimal degree of creativity.
Leading commentators argue scans of 3D objects in the public domain will not pass the originality test:
There is a solid argument that no originality is involved in [scanned] design[s] at all. A 3D scan that is not modified cannot be compared to a photograph, which is an original (and copyrightable) work that combines reality with the expression of the photographer. A person who uses a scanner to get an exact copy of an object, by contrast, contributes nothing to the result.
Devan Desai and Garard Magliocca, Patents Meet Napster: 3D Printing and Digitization of Things, 102 Geo. L.J. 1691 (2014).
In support of their contention, Desai and Magliocca cite to Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008). In Meshwerks, the 10th Circuit held that a 3D scan using older technology was not sufficiently original to be entitled to copyright protection. Id. The Court explained Meshwerks process as follows:
Meshwerks took copious measurements of Toyota’s vehicles by covering each car, truck, and van with a grid of tape and running an articulated arm tethered to a computer over the vehicle to measure all points of intersection in the grid. Based on these measurements, modeling software then generated a digital image resembling a wire-frame model. In other words, the vehicles’ data points (measurements) were mapped onto a computerized grid and the modeling software connected the dots to create a “wire frame” of each vehicle.
Id. Despite Meshwerks’ painstaking efforts, the Court determined the resulting files were not original and therefore not amenable to copyright protection. According to the court the files were “not so much independent creations as (very good) copies of Toyota’s vehicles” and “depict[ed] nothing more than unadorned Toyota vehicles–the car as car.” Based on this reasoning, a scanned 3D CAD file would presumably likewise not merit copyright protection.
d. Merger Doctrine
The copyright merger doctrine provides that if an idea and the expression of such idea are so tied together such that there is a very limited number of ways to express or embody the idea in a work, the expression of the idea is uncopyrightable. This is akin to the “scenes a faire” doctrine which provides that certain well established story lines, fables, folklore, scenes of nature, and other common visual and cultural references are not copyrightable. Such “scenes a faire” are part of the public domain.
Desai and Magliocca theorize that 3D printing will foster a new debate and potential expansion of the merger doctrine. They reason:
A CAD file may give the merger doctrine more relevance than it has had to date. Consider software that is written to make a statue that looks like one of the giant heads (or moais) from Easter Island. The idea and the expression there could be described as identical–a statue that looks like a giant Easter Island head. The software can only do one thing. Most other software, by contrast, can do multiple things or be described as an expression of some idea (for example, a spreadsheet). The moai program does not present a merger problem if the CAD file is classified at a higher level of generality (making art from indigenous cultures), but it is not clear why the software should be viewed in that way. The design file could also be seen as the specific iteration of a specific trail.
Devan Desai and Garard Magliocca, Patents Meet Napster: 3D Printing and Digitization of Things, 102 Geo. L.J. 1691 (2014).
e. Derivative Works
A derivative work is a work based on or derived from one or more already existing works. 17 U.S.C. § 101. The right to create derivative works is one of the exclusive rights of a copyright holder. 17 U.S.C. § 106(2). At least one commentator has suggested CAD files created using copyrighted protected 3D objects constitute derivative works. Daniel Harris Brean, Asserting Patents to Combat Infringement Via 3D Printing: It’s no “Use” 23 Fordham Intell. Prop. Media & Ent. L.J. 771 (“A CAD file distributor could thus be. . .infringing the copyright in the article itself by having made, copied, and distributed a derivative work of the article.”)
f. DMCA Take-Down Notices
The Digital Millennium Copyright Act (“DMCA”) notice and takedown provisions provide a vehicle for copyright owners to force online service providers to discontinue infringing activity by third parties. Upon proper notification by the copyright holder, online service providers can insulate themselves from liability by removing infringing files. The DMCA’s “safe harbor” provisions may provide an effective tool for copyright owners to combat the online sale or distribution of infringing CAD files and/or 3D printed articles.
a. Direct Infringement
Direct infringement is the unauthorized making, using, selling, offering for sale, or importing of the patented invention. 35 U.S.C. §271. Accordingly, the printing (“making”), sale, or use of patented products will constitute direct infringement.
While traditional direct infringement claims will be effective against large commercial 3D printers and sellers of patented products, this is not the anticipated business model. Rather, the head of the distribution chain will generally sell or distribute CAD files for end use by small businesses and consumers. This poses obstacles to relying on direct infringement theories.
(1) Do CAD Files Constitute the “Patented Invention” Under § 271(a)?
Are sellers of CAD files offering for sale and selling the patented invention under §271(a)? If so, they would be directly liable for patent infringement. At least one commentator makes a compelling argument CAD files are not the equivalent of the underlying infringing product:
The requirement under § 271(a) that the sale be of “any patented invention” implicates the particular claims of the patent, since “[I]t is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” If a patent claims a physical product, that physical product is what must be sold or offered for sale in order to satisfy § 271(a).
Daniel Harris Brean, Asserting Patents to Combat Infringement Via 3D Printing: It’s no “Use” 23 Fordham Intell. Prop. Media & Ent. L.J. 771
If the sale of CAD files does not constitute direct infringement, patent holders are left with a high volume of small value direct infringement claims against end user consumers. The music industry taught us that pursuing such claims is not practical or feasible. Accordingly, patent holders will likely be forced to rely heavily on theories of indirect infringement to attack the head of the distribution chain.
b. Indirect Infringement
(1) Active Inducement
Section 271(b) makes it unlawful to “actively induce infringement of a patent.” Active inducement occurs when one encourages another to engage in infringing activity with “knowledge that the induced acts constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011). The requisite knowledge standard is one of “willful blindness” requiring: 1) subjective belief that there is a high probability infringement exists; and 2) deliberate actions to avoid confirming such infringement. Id. Despite the heightened knowledge standard, active inducement claims are a viable tool for pursuing flagrant sellers of CAD files having as their sole purpose the production of infringing products.
(2) Contributory Infringement
Contributory infringement is defined as the sale, or offer to sell, within the United States or the importation into the United States of “a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use.” 35 U.S.C. §271(c).
In order to establish contributory infringement, a patent owner must show: 1) that there is direct infringement; 2) that the accused infringer knew that the combination for which its components were being made was both patented and infringing; 3) that the component has no substantial noninfringing uses; and 4) that the component is a material part of the invention. Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010)
Commentators question whether a CAD file will be found to constitute a “component” for purposes of contributory infringement. Their concern derives from the narrow interpretation of “component” adopted in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). In Microsoft, the Court construed the meaning of “component” in the context of § 271(f). Section 271(f) makes it an infringement to export unassembled components of a patented invention to induce assembly of the invention outside the United States in a manner that would infringe the patent if such combination occurred within the United States.
AT&T holds a patent on an apparatus for digitally encoding and compressing recorded speech. Microsoft’s Windows software, when installed, rendered the subject computer infringing. Microsoft sent a master version of its Windows software abroad, either on disk or via electronic transmission. Copies of the master were made abroad and installed on computers. Microsoft denied liability for such foreign activities on the grounds the master version of its software did not constitute a “component” within the meaning of § 271(f).
The Court adopted a narrow interpretation of “component” in the software context. According to the Court, software constitutes mere information and detailed instructions akin to “a blueprint. . .schematic, template, or prototype.” Accordingly, software cannot constitute a “component” until such time as it is expressed on a computer readable medium. Commentators opine that CAD files for use with 3D printers are likely to be viewed in the same restrictive fashion under Section 271(c). Daniel Harris Brean, Asserting Patents to Combat Infringement Via 3D Printing: It’s no “Use” 23 Fordham Intell. Prop. Media & Ent. L.J. 771
C. Licensing Models – “If You Can’t Beat ‘Em Join ‘Em”
The inherent difficulties of relying on traditional legal theories when combating infringement in the digital age has caused certain manufacturers to borrow from the iTunes playbook. Observers believe a licensing model can succeed in the 3D printing arena despite the availability of free alternatives:
Although the entertainment industry makes a credible complaint that “it is impossible to compete with free,” there have actually been several documented cases of artists who have successfully competed with those who offered their work for free in violation of copyright law. Of course, individual examples are insufficient to declare a trend. Yet there are studies showing that the availability of content for purchase can decrease file sharing, and the unavailability of legal content for purchase can result in increased peer-to-peer sharing, in violation of copyright law. If given the opportunity, rational consumers will purchase digital content that is appropriately priced, free of viruses, and of high quality. With physical products, consumers will consider printable designs that they know will work and are virus free, if those designs are priced appropriately.
Devan Desai and Garard Magliocca, Patents Meet Napster: 3D Printing and Digitization of Things, 102 Geo. L.J. 1691 (2014).
Consistent with this theory, Hasbro has partnered with 3D printing pioneer Shapeways to make its popular “My Little Pony” brand available to fans online via 3D printing. Nike utilizes 3D printing technology to produce high performance sport cleats. Such cleats will inevitably soon be available for home production — swoosh and all — via licensed CAD files.
Are predictions of the demise of IP due to 3D printing greatly exaggerated? (See VCR and Napster). Or, will 3D printing be the next “internet” and spawn a new industrial revolution with evolving forms of intellectual property? Time will tell.
Briggs and Morgan, P.A. is pleased to invite you to our Intellectual Property Women’s Forum. Come join like-minded professionals for a CLE presentation and engaging discussion in a collaborative environment. A brief networking reception will immediately follow the seminar.
- Practical Tips if Your Company is Approached by a Patent Troll
- The AIA: What it Means for Your Company
- Judges’ Panel on Hot Topics
3:30 – 4:00 PM Registration
4:00 – 5:00 PM Seminar and Panel Discussion
5:00 – 6:00 PM Networking Reception
Please RSVP by February 4 to Dena Edmiston at RSVP@briggs.com or 612-977-8581
Gartner, Inc. touts itself as “the world’s leading information technology research and advisory company.” Accordingly, intellectual property lawyers may want to pay attention to Gartner’s claims that the “escalation of 3D printing capabilities will change retail models and threaten intellectual property.” Gartner’s January 2014 report contains the following predictions:
– 3D printing will result in the loss of more than $100 billion per year in global IP revenue by 2018.
– At least seven of the world’s top 10 multichannel retailers will be using 3D printing technology to generate custom stock orders by 2018.
– The rapid advancement of 3D printing for the production of living tissue and organs (“bioprinting”) will foster major ethical debates.
– There will be an explosion in demand for 3D technology to meet medical needs in underserved emerging markets (i.e. 3D printed prosthetic limbs.)
Several companies have already adopted an “if you can’t beat ‘em join ‘em” mentality. For example, Hasbro partnered with 3D printing pioneer Shapeways to make its popular “My Little Pony” brand available to fans online via 3D printing. Chocolate giant Hershey is developing a licensed 3D printer concept for confections. Nike utilizes 3D printing technology to produce high performance sport cleats. It seems inevitable such cleats will soon be available for home production — swoosh and all — via licensed “blueprints.”
Are predictions of the demise of IP due to 3D printing greatly exaggerated? (See VCR and Napster). Or, will 3D printing be the next “internet” – spawning innovation and whole new industries? Stay tuned.
Alice Corp. v. CLS Bank Intl (573 U.S. ___ (2014)) held that Petitioner’s method, computer readable media, and system claims are drawn to a patent-ineligible abstract idea. Here, I focus not on the definition of an “abstract idea” (the Court avoided such a definition) but rather on how the Court’s holding appears to affirm the “new hermeneutic of suspicion” that I discussed in my blog post analyzing the per curia Federal Circuit opinion (CLS Bank Intl v. Alice Corp., 717 F.3d 1269, 106 U.S.P.Q.2d 1696 (C.A. Fed. 2013)). In the case at hand, the Court did not distinguish among the ineligibility under 35 U.S.C. 101 of the method, media, and system claims, but rather rejected them all. The Court also did not take into account the dissenting in part opinions of Federal Circuit Judges Rader, Linn, Moore, and O’Malley that the system claims are eligible for patent protection under 35 U.S.C. 101 even though the method claims are not. Rather, in passing the Court stated that “This Court has long ‘warned…against’ interpreting §101 ‘in ways that make patent eligibility depend simply on the draftsman’s art.’” The Court appears to accept Judge Lourie’s opinion in the per curia case that “the asserted method and system claims require performance of the same basic process” and therefore simply adding a computer to the system claims does not save them from ineligibility. 106 U.S.P.Q.2d 1696. The Court’s opinion appears to support the Federal Circuit’s analysis whereby system claims, even though drawn to a computer with hardware, are no more eligible than the method claims because the reviewing court suspects the patent draftsman of “artfully” attempting to avoid the ineligibility of the method claims. As Federal Circuit Judges Moore, Linn, and O”Malley said in their dissenting opinion, such a hermeneutic “may open to ineligibility challenges “hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications systems.” 106 U.S.P.Q.2d ___ (Moore, J; Linn, J; and O’Malley, J. dissenting-in-part). The Supreme Court has not attempted to “delimit the precise contours of the ‘abstract ideas’ category.” In other words, the Court is essentially saying “we will know it when we see it.”
On Wednesday, May 21, Briggs and Morgan’s Intellectual Property group and the University of Minnesota Law School co-presented the Third Annual University of Minnesota Law School Patent Symposium, Non-Practicing Entities: Abusive “Patent Trolls” or Free Enterprise Drivers of Innovation? The symposium covered the following topics:
- Do Patent Assertion Entities Help or Hinder Innovation?
- Issues and Trends in State Actions Against NPEs
- Litigation When Sued by a Patent Assertion Entity
- Litigating Against NPEs – In‐House Strategies
- Pending Legislation Aimed at NPEs
Briggs and Morgan’s top-rated intellectual property attorneys can help you maximize the value of your IP and avoid risk. Briggs’ IP lawyers have been recognized by their peers as “Top 40 Intellectual Property” lawyers, Intellectual Property “Super Lawyers,” and Minnesota Attorneys of the Year. As a result, they possess the knowledge and breadth of experience to understand your business and help you achieve your objectives.
In October, we reported on the Supreme Court’s decision to take on two patent cases addressing the “exceptional case” standards of Section 285. This week, the Court issued its unanimous decisions in Octane Fitness v. Icon Health & Fitness and Highmark v. Allcare Health, abolishing the Federal Circuit’s rigid standards for these types of cases and creating new standards that will make it easier for district courts to award fees to prevailing parties in patent infringement actions.
Prior to this week’s decisions, in order to establish that a case was exceptional, a prevailing party was required to show by clear and convincing evidence that the litigation was both brought in bad faith and objectively baseless. In Octane Fitness, however, the Court found that Section 285 contains no such requirements. Rather, according to the Court, Section 285 “imposes one and only one constraint on district courts’ discretion to award attorney’s fees in patent litigation: The power is reserved for ‘exceptional’ cases.” Similarly, the Court found that “nothing in [Section 285] justifies such a high standard of proof” as clear and convincing evidence. Instead, “Section 285 demands a simple discretionary inquiry; it imposes no specific evidentiary burden, much less a high one.”
Construing the term “exceptional” in accordance with its ordinary meaning, the Court held that an “exceptional” case “is simply one that stands out from others with respect to the substantive strength of a party’s litigating position. . . or the unreasonable manner in which the case was litigated.” Accordingly, under the new framework set forth in Octane Fitness, district courts may determine whether a case is “exceptional” in a “case-by-case exercise of their discretion, considering the totality of the circumstances.”
Piggy backing on the holding of Octane Fitness, the Icon Health decision held that all aspects of an “exceptional case” determination should be reviewed under an abuse of discretion standard rather than the Federal Circuit’s previously exercised de novo review of the “objectively baseless” determination.
While both of these cases had implications relating to the rise of non-practicing entity (“NPE”) litigation, the Court did not specifically address NPE issues. However, with the more flexible standards set forth in these decisions, there is no doubt these holdings will impact not only NPE litigation, but patent litigation in general. “Exceptional case” motions are likely to become more common, and, as one amicus suggested, the new standards will “incentivize patent holders and accused infringers to litigate only legitimate, good-faith disputes over patent infringement and validity.”