Tag Archives: patent

Supreme Court Rules That Government is Not a “Person” Under the America Invents Act

ByCarissa T. Howard of Counsel at Houston Harbaugh

Federal law has allowed for third party requests for reexamination of an issued patent on the basis on prior art since the 1980s. Under the America Invents Act of 2011 (AIA), three review processes replaced what was then known as “inter partes reexamination.” These three review proceedings enable a “person” other than the patent owner to challenge the validity of a patent post-issuance: (1) “inter partes review,” §311; (2) “post-grant review,” §321; and (3) “covered-business-method review” (CBM review). As an alternative to or in connection with a patent litigation, an interested third party, an accused infringer, or any “person,” can request one of these types of reviews.

In Return Mail v. Postal Service, the Supreme Court held that “[t]he Government is not a “person” capable of instituting the three AIA review proceedings.” https://www.supremecourt.gov/opinions/18pdf/17-1594_1an2.pdf (June 10, 2019)

Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its mail processing patent and Postal Service petitioned for CBM review under the AIA.  The PTO agreed that the patent claimed ineligible subject matter, and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government. The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at howardct@hh-law.com or 412-288-2213

Supreme Court Holds: AIA Does NOT Change Patent “On – Sale Bar” Doctrine

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, Esquire Co-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.  401 Liberty Avenue, Pittsburgh, Pa. 15222Sneath 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 or sneathhm@hh-law.com

From Relecura: Semiconductor Sensors. Building the Wave in IoT Development

As the Internet of Things (IoT) develops, there is an increasing need to “sense” changes in the atmospherics which surround semiconductors. In other words, the working chips must get smarter and smarter and have feel! Some of that AI feel in chips is being supplied by sensing chips – the layered structure of wafers of semiconductor material which can “sense” changes in the environment it is measuring or into which it is placed. Gas sensors are particularly important and patent applications for these devices are on the upswing internationally, with Sony and Samsung leading the way. See Relecura article at http://tinyurl.com/ybrojuq2
Edaphic Scientific describes a gas sensor’s performance as follows:  “Semiconductor gas sensors rely on a gas coming into contact with a metal oxide surface and then undergoing either oxidation or reduction. The absorption or desorption of the gas on the metal oxide changes either the conductivity or resistivity from a known baseline value. This change in conductivity or resistivity can be measured with electronic circuitry. Usually the change in conductivity or resistivity is a linear and proportional relationship with gas concentration. Therefore, a simple calibration equation can be established between resistivity/conductivity change and gas concentration.” http://tinyurl.com/y6ufz7vx
The IoT relies on smarter and smarter technology as it governs many things around us. Products will have this smarter and smarter technology and converting “sensing” into electronic circuitry will likely have a positive impact on performance, but will present new challenges as products fail and cause damage to person or property. How deep a dive will be required in products liability litigation for example when a “sensor chip” fails to sense. Sensor chips have been around for a while, but they are becoming tremendously sophisticated and integral to the virtual world in which we operate.

Posted by Henry M. Sneath, Esquire Co-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C., 401 Liberty Avenue, Pittsburgh, Pa. 15222. Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com

 

 

 

 

 

Top Patent Decisions in 2018 per Law 360

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

Posted by Henry M. Sneath, Esq.                                             Shareholder and Director;                                                                                      Co-Chair of the Litigation Department;                                                    Chair of the IP Department;                                                                         Houston Harbaugh, P.C.  (www.hh-law.com)                                                    Pittsburgh, Pa.                                                                                                              Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com

Confession: I Have a Blackberry (Blackberry Files Patent Suit!)

Blackberry is still in the hunt. I have one. I need the keyboard. Can’t  seem to make even my skinny fingers hit the virtual keyboard letters and numbers on an iPhone. I get teased by my kids. People on airplanes pull out their Blackberrys and say “Hey – you’re a dinosaur too.” However, look at Blackberry now flexing their patent muscles and suing Facebook, WhatsApp and Instagram. Take that big boys. Thanks to Steve Brachmann and IPWatchdog for bringing us the story at this link: http://tinyurl.com/y9drr6hk . Blackberry pleads pre-emptory claims that seek to avoid dismissal per §101 “Alice” defenses. This “getting ahead of 101” in pleading is becoming the rage in patent suits. Great article. Thanks IPWatchdog.

Posted by Henry M. Sneath, Esq. at HoustonHarbaugh P.C., Pittsburgh, Pa.    412-288-4013 or sneathhm@hh-law.com

Walmart USPTO Application for “Drone Pollinators” Published

Walmart has applied for a Drone Pollinator presented in the recently published application as “Systems and Methods for Pollinating Crops Via Unmanned Vehicles.” Here is Application # US2018/0065749 A1 at this link from FreshPatents.com:  http://images2.freshpatents.com/pdf/US20180065749A1.pdf
The PTO App abstract describes essentially the same process used by Bees, and scientists at Walmart, Harvard and many other institutions have been working to create an efficient way to pollinate many of the plants from which we get our food during the last two decades of declining bee populations. Here is a good article from Science Alert detailing and linking to some of the efforts to create a drone pollinator:   http://tinyurl.com/y93a7z7y  
Here is a photo of the Harvard latest edition drone “RoboBee” which allegedly cannot yet be remotely controlled. The Walmart patent claims such an ability. We will follow.

Posted by Henry M. Sneath, Esq. at HoustonHarbaugh, P.C. in Pittsburgh, Pa.
  Mr. Sneath can be contacted at 412-288-4013 or at: https://www.hh-law.com/professional/henry-m-sneath/ He chairs the IP Practice group at HoustonHarbaugh and is Co-Chair of the Litigation Practice Group.

Supreme Court Reverses Federal Circuit Interpretation of Patent Venue: TC Heartland Holding Overturned

Posted by:  Henry M. Sneath, Esq. – Chair of the Intellectual Property Practice Group at Pittsburgh, Pa. law firm Houston Harbaugh, P.C. Mr. Sneath is also an Adjunct Professor of Law at the Duquesne University School of Law teaching Trade Secret Law, Trademark Law and the Law of Unfair Competition. He may be contacted at sneathhm@hh-law.com or 412-288-4013. See Website www.hh-law.com .

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.

See the Opinion in TC Heartland v. Kraft Foods here: https://www.supremecourt.gov/opinions/16pdf/16-341_8n59.pdf

Henry Sneath 412-288-4013 and sneathhm@hh-law.com

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 hsneath@psmn.com or 412-288-4013. Website www.psmn.com or www.psmn.law

Federal CircuitYesterday 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.

Here are a couple of resources to assist you in following this case. The great blog at Patently-O has written on Heartland: http://patentlyo.com/patent/2015/10/defendant-jurisdictional-infringement.html

See also a fascinating study of what would happen to patent case filings if the Federal Circuit changed the venue standard: From Patently-O: Guest Post: What Would Happen to Patent Cases if They Couldn’t all be Filed in Texas? March 11, 2016 PatentJasonRantanen by Colleen Chien, Santa Clara University Law School and Michael Risch, Villanova University Charles Widger School of Law

Sneath Headshot  Henry M. Sneath, Esq.

 

                        

 

Huge CMU v. Marvell Patent Infringement Case Settled in Pittsburgh

 

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 hsneath@psmn.com or 412-288-4013. Website www.psmn.com or www.psmn.law

marvell_chipFrom “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 ).

*ars technica is a copyrighted publication and the references and links herein are from the website of ars technica (© Ars Technica 1998-2016)

Henry M. Sneath

Sneath Headshot

Ripple Effect from Alice and Mayo Cases Being Felt in Patent World

shutterstock_26396608By: Henry Sneath, Chair of the Intellectual Property practice at Picadio Sneath Miller & Norton, P.C. in Pittsburgh, Pa.  hsneath@psmn.com or 412-288-4013

Sharing a great post from Dennis Crouch and his tremendous blog: Patently-O

New Section 101 Decisions: Patents Invalid

The Supreme Court’s decisions from Alice and Mayo are beginning to really have their impact. A few examples:

  • Walker Digital v. Google (D. Del. September 2014) (data processing patent invalid under 101 as an abstract idea) (Judge Stark).
  • Genetic Tech v. LabCorp and 23AndMe (D. Del. September 2014) (method of predicting human performance based upon genetic testing invalid under 101 as a law of nature) (report and recommendation from Magistrate Judge to Judge Stark)
  • Ex parte Cote (P.T.A.B. August 2014) (computer method and hardware for ‘phase shifting’ design data invalid under 101)
  • Ex parte Jung (P.T.A.B. August 2014) (diagnostic method associated with epigenetic risk factors invalid under 101).” Patently-O.

To view the entire post – please visit Patently-O at this link: http://tinyurl.com/otj6v6n

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