There has been a nagging question regarding the status of the on-sale bar ever since passage of the AIA in 2011. The Supreme Court has unanimously answered the question in the negative in the slip opinion in Helsinn Healthcare v. Teva No. 17–1229. Argued December 4, 2018—Decided January 22, 2019. See opinion here: https://www.supremecourt.gov/opinions/18pdf/17-1229_2co3.pdf
Justice Thomas wrote for the unanimous court to affirm the Federal Circuit ruling and the summary of same is here. Even a “secret sale” can trigger the bar. The Court framed the issue:
“We granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. 585 U. S. ___ (2018). We conclude that such a sale can qualify as prior art.”
“Held: A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA included an on-sale bar. This Court’s precedent interpreting that provision supports the view that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. See, e.g., Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67. The Federal Circuit had made explicit what was implicit in this Court’s pre-AIA precedent, holding that “secret sales” could invalidate a patent. Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357. Given this settled pre-AIA precedent, the Court applies the presumption that when Congress reenacted the same “on sale” language in the AIA, it adopted the earlier judicial construction of that phrase. The addition of the catchall phrase “or otherwise available to the public” is not enough of a change for the Court to conclude that Congress intended to alter the meaning of “on sale.” Paroline v. United States, 572 U. S. 434, and Federal Maritime Comm’n v. Seatrain Lines, Inc., 411 U. S. 726, distinguished. Pp. 5–9. 855 F. 3d 1356, affirmed.”
Posted by Henry M. Sneath, EsquireCo-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law. Please contact Mr. Sneath at 412-288-4013 firstname.lastname@example.org.
Pullback from Alice? In February, the Federal Circuit issued its decision in Berkheimer v. Hp, Inc. ( February decision) and seemed to pull back from what some would say is the overuse and early use of the Alice decision to invalidate patents. Key holding is that the question of whether a patent contains ineligible subject matter may involve factual questions and that Motions to Dismiss and even Summary Judgment Motions may not be the proper forum for such invalidation decisions. Law 360 reports however, that there is still apparent division on the CAFC with regard to Alice and its progeny.
Reinforcement of TC Heartland: In BigCommerce, Inc. v Beyond, the CAFC once again answered the simple question of how many districts can have proper venue for a case. Answer = 1. “Principal place of business” or “state where defendant is registered to do business.” See (” overturned “). CAFC overturned Texas District Court Judge Rodney Gilstrap in this decision and the erosion of seemingly automatic jurisdiction in the Eastern District of Texas continues. See other key decisions here from Law 360
The US Supreme Court overturned the Federal Circuit’s decision in TC Heartland v. Kraft Foods and its longstanding interpretation of the patent venue statute and has reaffirmed that a corporation is a resident of the state in which it is incorporated. It had decided that question a long time ago, but the Federal Circuit and statutory changes to the general (non-patent) venue statutes had undermined the original decision of the Supreme Court in 1957 in Fourco Glass. The court provided this analysis in TC Heartland:
“The patent venue statute,28 U. S. C. §1400(b), provides that ‘[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.’ In Fourco Glass Co. v. Transmirra Products Corp., 353 U. S. 222, 226 (1957), this Court concluded that for purposes of §1400(b) a domestic corporation “resides” only in its State of incorporation.”
In overturning the Fed. Cir. decision, the Court rejected the argument that 28 U.S.C. §1400 (patent venue statute) incorporates the broader definition of corporate “residence” contained in the general venue statute 28 U.S.C. 1391 as has been allowed by the Federal Circuit for years. This changes the longstanding practice of the Federal Circuit to interpret “residence” as being any state in which a defendant corporation simply conducts business. This interpretation has allowed unfettered forum shopping which generally results in shopping and filing in the Eastern District of Texas.
“We conclude that the amendments to §1391 did not modify the meaning of §1400(b) as interpreted by Fourco. We therefore hold that a domestic corporation “resides” only in its State of incorporation for purposes of the patent venue statute.” Justice Thomas authored the court’s opinion.
The big question is whether this will indeed reduce or eliminate the monopoly held by Texas on patent cases and whether it will simply shift it to Delaware where many corporations are incorporated. The court may take additional action or so too may the US Congress to prevent that simple shifting of venues from Texas to Delaware.
Inventors often use generalized language in patent claims when they are dealing with concepts that are not easy to quantify. This generalized language can create issues in litigation, when a defendant argues that the claims are so imprecise as to be indefinite. The Federal Circuit recently addressed such an issue in Sonic Technologies Co., Ltd. v. Publications International, Ltd. (Case No. 2016-1449). In that decision, the Court, in a unanimous opinion written by Judge Lourie, held that the trial court erred when it concluded that the term “visually negligible” rendered the claim indefinite.
Sonic Technologies owned a patent that described a system and method for using a “graphical indicator” to encode information on the surface of an object that could be read by an “optical device.” Sonic recognized that such a general concept was not new–for example bar code readers have been in existence for decades–but the novel twist was that the “graphical indicator” was essentially imperceptible to the naked eye. The claims required that the “graphical indicator” be “visually negligible.”
Defendants argued that the term “visually negligible” was too subjective and did not provide reasonable guidance on its meaning. Sonix argued that the term was sufficiently definite in light of the specification, which discussed how the “graphical indicator” did not interfere with an observer’s view of item, in contrast with a bar code, which obscures the content below it.
The trial court agreed with defendants and found that the term “visually negligible” was indefinite and the claims were invalid. Sonic appealed to the Federal Circuit, which reversed, finding that the term was sufficiently definite.
Under 35 U.S.C. § 112, ¶ 2, the claims of a patent must particularly point out and distinctly claim the subject matter of the invention. Supreme Court precedent requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” (citing Nautilus v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)) Because, absolute precision is not required to meet this standard, courts frequently have allowed more generalized language, especially where the specification provides guidance in interpreting the language.
The Federal Circuit looked at the prior cases and concluded that “visually negligible” was not so uncertain as to render the claims indefinite. It contrasted other cases that dealt with terms that were purely subjective, such as “aesthetically pleasing,” with this one. The specification indicated that an indicator was “visually negligible” when it could not readily be seen by the naked eye and provided examples of such indicators. This specificity was sufficient in the Federal Circuit eyes. Moreover, the Court looked to the extension prosecution history (with multiple reexaminations), which indicated that the Patent Office was able to determine the meaning and scope of the term without issue.
The Court ultimately concluded:
Our holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty. Neither does the fact that an expert has applied a contested claim term without difficulty render a claim immune from an indefiniteness challenge. As always, whether a claim is indefinite must be judged “in light of the specification and prosecution history” of the patent in which it appears. . . . We simply hold that “visually negligible” is not a purely subjective term and that, on this record, the written description and prosecution history provide sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention. The examiner’s knowing allowance of claims based on the term that is now questioned, plus the acceptance of the term by both parties’ experts, force us to the conclusion that the term “visually negligible” is not indefinite. Accordingly, we reverse the district court’s conclusion that the asserted claims are invalid as indefinite.
In The Medicines Co. v. Hospira, Inc. (Nos. 2014-1469 and 2014-1504), the Federal Circuit issued an en banc decision clarifying when a product made pursuant to a “product-by-process” claim is on sale for purposes of 35 U.S.C. § 102(b) under the pre-AIA standards. In a decision written by Judge O’Malley, the Court held that to be on-sale, the product must have been the subject of a commercial sale or offer for sale that bears the “general hallmarks” of a sale under § 2-106 of the UCC.
The case involved an Abbreviated New Drug Application in which Hospira sought FDA approval to sell a generic drug before expiration of two of the patents-in-suit, which claim pH-adjusted pharmaceutical batches of a drug product used to prevent blood from clotting. The patents arose out research involving a similar drug not covered by the patents.
In late 2006 MedCo paid a company (Ben Venue) to manufacture three batches of the drug according to the patented process. The three batches were manufactured by the end of 2006 and had a value of over $20 million (even though it cost substantially less to manufacture them). The three batches were placed in quarantine pending FDA approval. The batches were finally released from quarantine in August 2007, which was after the July 27, 2007 critical date.
Hospira claimed that the patents were invalid under § 102(b) for being on-sale prior to the critical date because of the contract between MedCo and Ben Venue to manufacture the three batches. The district court disagreed, finding that the MedCo-Ben Venue sale was a contract for manufacturing services, and not a commercial sale under § 102(b).
The three-judge panel of the Federal Circuit reversed, finding that the contract did trigger the on-sale bar. The entire Federal Circuit then took up the issue en banc to clarify the on-sale bar standard. The en banc Federal Circuit determined that there was no invalidating prior sale for purposes of § 102(b).
Federal Circuit Clarifies On-Sale Bar Standard
Whether the on-sale bar applies is a question of law based on factual findings, so the lower court’s factual findings were reviewed with deference, but the ultimate legal question was reviewed de novo by the Federal Circuit.
The Court traced the history of the on-sale bar and how it was first codified in the Patent Act of 1836, before its final incarnation (for purposes of these patents) in the Patent Act of 1952. Under § 102(b) an inventor is not entitled to a patent if the invention was on sale in the United States more than one year prior to the date of the patent application.
In Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), the Supreme Court clarified the proper analysis of the on-sale bar, and held that courts should employ a two-part test: (1) was the claimed invention the subject of a commercial offer for sale, and (2) was it ready for patenting at that time? Ready for patenting means either it was reduced to practice or there were sufficient drawings or descriptions to allow one or ordinary skill in the art to practice the invention.
The en banc Federal Circuit focused on the first prong of the Pfaff test–was the invention the subject of a commercial offer for sale? The Court determined that it must answer this question by looking what those in the commercial community would understand as being a sale or offer for sale, and that the UCC was a good resource for answering that question.
Under the UCC, “[a] sale is a contract between parties to give and to pass rights of property for consideration which the buyer pays or promises to pay the seller for the thing bought or sold.” Under this standard, the Federal Circuit did not consider MedCo’s contract with Ben Venue to be a commercial sale because (1) only manufacturing services were sold to MedCo, not the invention, (2) the inventor retained title to the invention and Ben Venue was not entitled to sell the product to others, and (3) stockpiling standing alone does not trigger the on-sale bar.
Here, the patents claimed a product by process, not the process itself. So, the contract to manufacturing the drug was not a contract to purchase the product itself. The Court also found meaningful that Ben Venue lacked title to the batches–MedCo always maintained title in them. Without a transfer a title, the Court was disinclined to find that a sale of a product had occurred. In addition, MedCo and Ben Venue had a confidentiality agreement. While not conclusive, this factor also weighed in favor of the Court finding that a sale had not occurred. Finally, the Court did not find that stockpiling a product was sufficient activity to trigger the on-sale bar because that activity fell into the category of actions that amount to preparations for sales.
Taken together, the Federal Circuit found that there was no commercial offer for sale or sale for purposes of § 102(b) under the pre-AIA standard. This decision will provide some additional clarity and direction for what constitutes a potentially invalidating sale of goods.
In a continuing trend of rejecting bright-line rules and multi-faceted tests created by the Federal Circuit, the Supreme Court last week issued an opinion in Halo Electronics, Inc. v. Pulse Electronics, Inc., (No. 14-1513) in which the Court unanimously vacated and remanded the Federal Circuit’s decision affirming the District Court’s decision not to award enhanced damages under the Federal Circuit’s precedent in In re Seagate Technology, LLC, 497 F.ed 1360 (Fed. Cir. 2007) (en banc). The Court found that the Seagate test was too rigid and did not give trial courts sufficient discretion to award enhanced damages under 35 U.S.C. § 284. Chief Justice Roberts wrote the decision for the Court.
The Patent Act provides that the Court “the court may increase the damages up to three times the amount found or assessed.” 35 U.S.C. § 284. In response to this language, the Federal Circuit has created various tests for courts and litigants to following, culminating with its most recent pronouncement in Seagate. Under the Seagate test, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent,”without regard to “[t]he state of mind of the accused infringer.” This objective prong is not satisfied if the accused infringer later developed a reasonably defense at trial, even if that defense was not known or relied on during the time of the infringing conduct.
If the patentee can demonstrate objective recklessness, it must show by clear and convincing evidence that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” If the patentee meets this subjective prong, the court is entitled to award enhanced damages.
The Supreme Court Rejects this 2-step Process
While initially recognizing that “[t]he Seagate test reflects, in many respects, a sound recognition that enhanced damages are generally appropriate under § 284 only in egregious cases,” it found that the test “is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”
In particular, the Court was troubled by the fact that an accused infringer could avoid enhanced damages in cases where it intentionally ignored the patentee’s patent if its lawyers could later develop a reasonable defense during litigation that was never relied on previously. Under the Seagate test, a patentee could never get past the first objective prong.
Having said that, the Court also stressed that enhanced damages should still be the exception, and not the rule. It traced the history of enhanced damages and noted that they were typically reserved for egregious cases and were “vindictive or punitive” in nature. The Court cautioned that a trial court’s discretion to grant enhanced damages is not boundless and that the Federal Circuit is in a unique position to evaluate the exercise of that discretion based on its long history of dealing with patent cases.
Finally, the Court rejected a clear and convincing evidentiary standard for proving entitlement to enhanced damages. Under § 284, only a preponderance of the evidence is necessary to obtain enhanced damages.
The Court concluded by stating:
Section 284 gives district courts the discretion to award enhanced damages against those guilty of patent infringement. In applying this discretion, district courts are “to be guided by [the] sound legal principles” developed over nearly two centuries of application and interpretation of the Patent Act. . . . Those principles channel the exercise of discretion, limiting the award of enhanced damages to egregious cases of misconduct beyond typical infringement. The Seagate test, in contrast, unduly confines the ability of district courts to exercise the discretion conferred on them. Because both cases before us were decided under the Seagate framework, we vacate the judgments of the Federal Circuit and remand the cases for proceedings consistent with this opinion.
Justice Breyer’s Concurrence
While agreeing with the majority’s opinion, Justice Breyer wrote separately to caution that awards of enhanced damages should be made only in egregious circumstances.
He also noted that an award of enhanced damages requires conduct beyond simple knowledge of a patent by the infringer. Justice Breyer explained that there are several legitimate reasons why an infringer may be aware of a patent that do not rise to the level of willful misconduct required. He also noted that opinions of counsel of non-infringement or invalidity are not required to defeat a claim for enhanced damages. For one thing, they can be extremely expensive and can deter legitimate innovation or otherwise upset the proper balance between the patent laws and promoting the progress of the science and useful arts.
Finally, he noted that enhanced damages are not a mechanism for compensating patentees for litigation expenses or other infringement-related costs. There are difference statutory provisions that address those concerns.
This is yet another case in which the Supreme Court has struck down a bright-line rule or multi-faceted test developed by the Federal Circuit. The Federal Circuit has tended to create these rules and tests in an effort to provide more clarity and certainty in the patent arena, even if these rules and tests lack a strong statutory basis. In contrast, the Supreme Court seems less concerned about clarity and certainty, and is more concerned in treating the patent laws like any other area of the law. It has repeatedly rejected efforts by the Federal Circuit to treat the patent laws as somehow different than other laws or not bound by the same rules and procedures. The Halo decision is another decision that brings the patent laws closer to the rest of the law.
In the wake of the Apple v. Samsung cases, the importance of design patents has become more visible. Whether a product infringes a design patent can sometimes be difficult to determine because design patents only protect the ornamental aspects of a design, and not the functional aspects. The Federal Circuit, in Sport Dimension, Inc. v. The Coleman Company, Inc. (No. 2015-1553) recently considered the interplay between ornamentation and functionality in a design patent.
Coleman sells a variety of outdoor sporting equipment, including personal flotation devices. One of its products, a flotation device with two arm bands and a torso piece, is protected by US Design Patent No. D623,714.
Sport Dimension also sells personal flotation devices, including its line of Body Glove products that also have two armbands and a torso section.
Coleman brought suit against Sport Dimension, alleging infringement of the ‘714 patent.
The trial court adopted Sport Dimension’s claim construction, which expressly excluded the arm bands and side torso tapering as elements of the claim, because functional elements not protected by the patent. Coleman then moved for entry of a judgment of non-infringement in favor of Sport Dimension so that it could appeal the claim construction ruling.
The Federal Circuit reversed the claim construction, vacated the judgment of non-infringement, and remanded.
The Federal Circuit began by noting that it is often difficult to use words to describe a design, which is why illustrations are an important part of design patents. Despite the limitations of words, the Court noted that it is often constructive for courts to construe design patents in order to guide the fact finder in determining infringement.
The Court then noted the law of infringement of design patents–a design patent cannot protect purely functional designs, but it can protect designs that are not primarily functional even if certain elements have functional purposes. Thus, design patents can be used with products that have elements that are both functional and non-functional, but the design patent will only protect the non-functional elements that are shown in the patent. Of particular interest to design patent litigators, the Court reviewed the key cases in the design patent arena.
In analyzing the patent in dispute and the trial court’s claim construction, the Federal Circuit found that the trial court went too far in excluding entirely the arm bands and tapered side torso from the scope of the patent. The Court agreed that these elements had functional aspects, but concluded it was improper to entirely exclude these elements. The test for infringement of a design patent is not an element-by-element comparison. Instead, infringement is to be assessed based on the overall design, excluding the functional aspects of certain elements (as opposed to excluding the elements entirely).
Based on this faulty claim construction, the Federal Circuit vacated and remanded.
This case highlights the difficulty that design patents present for courts and fact finders. Sometimes, the functional/ornamental aspects are difficult to distinguish and apply. Nonetheless, design patents are still an important piece of intellectual property for many companies and should not be discounted lightly.
Posted onMarch 12, 2016byHenry Sneath|Comments Off on VENUE: Will Texas Lose its Dominance as a Patent Venue? Fed. Circuit Tackles Venue in the “Heartland” Case
FEDERAL CIRCUIT HEARS ORAL ARGUMENT IN “HEARTLAND” CASE ON MAJOR VENUE ISSUE
Posted by Henry M. Sneath, Esq. – Chair of the Intellectual Property Group at Picadio Sneath Miller & Norton, P.C. (PSMN® and PSMNLaw®) in Pittsburgh, Pa. He may be contacted at email@example.com or 412-288-4013. Website www.psmn.com or www.psmn.law
Yesterday the Federal Circuit heard oral argument on the mandamus petition filed by TC Heartland in an underlying case lodged in the District Court of Delaware ( The underlying case is Kraft Foods Group Brands LLC v. TC Heartland LLC, case number 1:14-cv-00028, in the U.S. District Court for the District of Delaware). The outcome could either keep the status quo where Texas is the venue of choice for an inordinately large number of patent infringement filings, or force courts to adopt a different standard for evaluating proper venue. Texas, Delaware and the Northern District of California receive the majority of patent case filings, but Texas gets over 40% of all filings alone. Heartland, as sued by Kraft Foods, is headquartered in Indiana and believes that the case should be lodged in their home jurisdiction and not where they have little or no business contact in Delaware – beyond sales of product. On a challenge to venue, the District Court used the currently applied standard finding “venue is appropriate for a defendant in a patent infringement case where personal jurisdiction exists.” Heartland argues that the Federal Courts Jurisdiction and Venue Clarification Act of 2011 effectively repealed the Federal Circuit’s 1990 ruling in VE Holding v. Johnson Gas Appliance that patent suits can be brought anywhere a defendant makes sales. In other words, that personal jurisdiction and venue are essentially the same. Heartland, in its mandamus petition ( https://www.eff.org/files/2015/10/28/in_re_tc_heartland.pdf ) has asked the Federal Circuit to reevaluate the VE Holding case along with certain Congressional venue legislation and the overall venue issue.
The Federal Circuit recently decided an interesting case about whether there should be a patent agent-client privilege. In In re: Queen’s University at Kingston (Case No. 14-145), the Federal Circuit concluded that there should be such a privilege in a 2-1 decision written by Judge O’Malley (Judge Lourie joined the decision, and Judge Reyna dissented).
Queen’s University in Kingston, Ontario, Canada filed a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the Eastern District of Texas. During discovery, Samsung sought to discovery certain communications between Queen’s University employees and its registered patent agents. The district court granted a motion to compel, finding, in part, that there was no patent agent privilege. Queen’s University filed a petition for writ of mandamus with the Federal Circuit challenging the order.
The Federal Circuit first determined that its law, and not the law of the regional circuits or state law should apply to determine whether a patent agent privilege might exist because the issue relates to patent-specific subject matter. It also noted that the issue was one of first impression at the Federal Circuit, but was one where there is conflicting authority at the district court level.
The Court then decided that it was appropriate to consider the writ given that once the documents were produced, there would be no easy way to undo the damage if a privilege existed. The Court also noted that the district court split on the subject favored it providing some clarity on the issue. The Federal Circuit then turned to the issue of whether it should recognize a patent agent privilege.
The Court found that Rule 501 of the Federal Rules of Evidence authorizes federal courts, in appropriate circumstances, to recognize new privileges. It further noted that it did so with some caution, as privileges restrict the flow of information and should not be created lightly.
The Court then looked to the Supreme Court’s decision in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), in which the Supreme Court recognized that patent agents perform acts that constitute the practice of law and that the regulation of patent agents is solely governed by the US Patent and Trademark Office.
In looking at the Supreme Court’s analysis in that case, the Court traced the history of patent agents and the nature of their work before concluding that a limited patent agent privilege is appropriate.
The Court next turned to what the scope of that privilege should be. Not all communications with a patent agent can be privileged.
Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” receive the benefit of the patent-agent privilege.
Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”
Based on the recognition of this new privilege, the Court grant the petition for a writ of mandamus, vacated the district court’s order on the motion to compel, and remanded for further consideration.
Posted by Henry M. Sneath, Esq. – Chair of the Intellectual Property Group at Picadio Sneath Miller & Norton, P.C. (PSMN® and PSMNLaw®) in Pittsburgh, Pa. He may be contacted at firstname.lastname@example.org or 412-288-4013. Website www.psmn.com or www.psmn.law
From “ars technica“* publication: One of the largest patent verdict cases ever was obtained by Carnegie Mellon University (CMU) in Pittsburgh Federal District Court in 2012 in the courtroom of the Hon. Nora Barry Fischer as presiding judge. CMU won a $1.17 billion jury verdict in 2012 and the court enhanced the verdict to $1.54 Billion. The Federal Circuit cut the win significantly, by reducing the damages and eliminating the enhanced damages award, but kept the main verdict intact. The case was just settled here in Pittsburgh for $750 Million. It will allegedly be the second largest payment ever in a technology patent case. A thorough article on the matter with good links to the case history appears at web publication ars technica*(http://tinyurl.com/zwb26wg ).