India Patent Act Changes

By Julie Shursky

Behind South Africa, India is managing the world’s second largest HIV treatment program.  In 2015, more than 900,000 patients received antiretroviral treatment in India.[1]  Despite the enactment of various government-funded health insurance programs and organizations to combat infectious and chronic diseases such as HIV/AIDS, the Indian government continues to struggle in financing adequate healthcare facilities for its citizens, causing a significant number of Indian citizens to “fund their health needs through out-of-pocket expenses.”[2]  In an effort to protect and manage its market, India enacted Section 3(d) and established patent laws that allow its government to grant compulsory licenses for pharmaceutical products.

In an effort to increase the availability of low-cost drugs, the Indian Patent Act of 1970 (“1970 Act”) prohibited the patentability of pharmaceutical products.[3]  The 1970 Act, however, permitted patents on the manufacturing process of said products,[4] which led to the booming of India’s generic drug sector through capitalizing on innovation by multinational companies that were unable to obtain patents under Indian law.  As a direct result of this legislation, India earned the nickname “pharmacy of the world” for its burgeoning production and exportation of generic pharmaceutical products.[5]

India’s fast-emerging pharmaceutical sector is broadly divided into two major groups: multinational pharmaceutical corporations or pharmaceutical MNCs, and domestic pharmaceutical corporations.[6]  The rivalry between brand-name drug makers, who seek patent protection and generic manufacturers, who sell lower-cost, copycat versions of medicines, has grown over the years.

The United States, for example, has expressed its concern with recent developments in India’s patentability standards and grants for compulsory licenses.[7]  In a report by the United States Trade Representative, the United States expressed particular concern with “[t]he unpredictable application of Section 3(d)” and “the lack of clarity on standards for Sections 85 and 92 compulsory licenses.”[8]  Unlike the United States, India’s patent laws limit evergreening[9] strategies and ensure that companies are receiving only a one-time price premium for their innovative products, rather than extending patent protection for minor enhancements.  As such, India’s patent laws do not support the extension of patent terms on current products, but rather require “enhancement of the known efficacy” for protection.[10]  Section 3(d), therefore, is only intended to prevent evergreening – it does not prevent the patenting of new, innovative drugs within the pharmaceutical industry.[11]


[1] SPOTLIGHT: Catalysing change for an AIDS-free generation in India, World Health Organization (July 25, 2016, 11:58 AM),

[2] Madhavi Chopra, Of the Big Daddy, the Underdog, the Mother Hen, and the Scapegoats: Balancing Pharmaceutical Innovation and Access to Healthcare in the Enforcement of Compulsory Patent Licensing in India, its Compliance with TRIPS, and Bayer v. Natco, 13 Santa Clara J. Int’l L. 333, 335 (2015).

[3] The Patents Act, No. 39 of 1970, INDIA CODE §5(a)-5 (2005), vol. 15, available at

[4] Id. at §53.

[5] Janice M. Mueller, The Tiger Awakens: The Tumultuous Transformation of India’s Patent System and the Rise of Indian Pharmaceutical Innovation, 68 U. Pitt. L. Rev. 491, 536-37 (2007) (“India has been a net exporter of drugs since 1988-89 . . . .”).

[6] Id. at 532-42.

[7] Office of the U.S. Trade Rep., 2016 Special 301 Report 38-39 (2016).

[8] Id. at 39.

[9] Evergreening “is when a company manufactures a product for which it secures a patent.  Shortly before the expiration of that patent, the company files a new patent that revises or extends the terms of protection . . . . [Evergreening] is a method by which technology producers keep their products updated, with the intent of maintaining patent protection for longer periods of time than would normally be permissible under the law.”  Uttam K. Shukla, ‘Ever Greening’ Patents, SCI. REP., Aug. 2011, at 31.

[10] Patents Act, 1970, § 3(d), amended by Patents (Amendment) Act, 2005.

[11] Javier Esparza, Indian Patent Law: Working Within the TRIPS Agreement Flexibilities to Provide Pharmaceutical Patent Protection While Protecting Public Health, 24 J. Transnat’l L. & Pol’y 205, 221 (2014-15).


In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015)

By Samantha Leiner

Facts:  In 2002, Giuseppe A. Cuozzo applied for a patent covering a speedometer that shows a driver when he is driving above the speed limit.  Essentially, the invention encompasses a white speedometer needle that turns red when it passes under a translucent piece of red glass (or equivalent, say red cellophane).  If you attach the piece of red material to a speedometer beginning at 65 mph, then the white needle will look red when it passes that speed.  The invention includes attaching the red glass to a rotating plate, attaching the plate to the speedometer, connecting the plate to a GPS receiver, and entering onto a chip or a disk all the speed limits on all the US roads.  Thus, the GPS receiver can signal where the car is, the chip or disk can signal the speed limit at that location, and the plate can rotate to the right number turning the white needle to red, signaling to the driver that he or she is going over the speed limit.  The PTO granted the patent in 2004.  Giuseppe assigned the patent to the current petitioner, Cuozzo Speed Technologies, LLC.

In 2012, Garmin filed a petition seeking inter partes review (IPR) of the Cuozzo Patent’s 20 claims.  Garmin alleged claim 17 was obvious in light of 3 major patents (the Aumayer patent, Patent No. 6,633,811; the Evans patent, Patent No. 3,980,041; and Wendt patent, Patent No. 2,711,153).  The Board agreed to reexamine claim 17, as well as claims 10 and 14 because, even though Garmin did not expressly challenge claims 10 and 14 on the same obviousness ground as claim 17, the Board believed “claim 17 depends on claim 14 which depends on claim 10,” and therefore, Garmin had “implicitly” challenged claims 10 and 14 on the same prior art. The Board reasoned that anyone with more than an “ordinary skill” and “ordinary creativity” – could have taken the approach in the Aumayer patent and applied it to the Evans and Wendt patents.  The Board denied Cuozzo’s proposed amendments to the claims because it believed the amendments would not cure the obviousness issue.  The Board canceled claims 10, 14, and 17.

Cuozzo appealed to the Fed. Cir. and argued the PTO improperly instituted the IPR because Garmin had not challenged claims 10 and 14 “with particularity” as the statute requires for petitions. § 312(a)(3).  Cuozzo further argued the Board improperly used the “broadest reasonable construction” standard set forth in the PTO’s regulations (37 C.F.R. § 42.100(b)), when it should have applied the standard courts normally use when judging a patent’s validity (the “ordinary meaning [of the claims] . . . as understood by a person of skill in the art”). Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).  A divided panel of the Fed. Cir. rejected both arguments.  First, the majority pointed out that § 314(d) made the decision to institute an IPR “nonappealable.”  Second, the majority affirmed the application of the “broadest reasonable construction” standard because the regulation is reasonable, and a lawful, exercise of the PTO’s statutorily granted rulemaking authority.

Issues:  The Court looked at two of the issues presented the Fed. Cir.: (1) Whether § 314(d) precludes a court from reviewing if the PTO wrongly decided to institute IPR, when it did so on grounds not mentioned by the third party’s request for review; and (2) Whether § 316(a)(4) authorizes the PTO to issue a regulation that states the Board, in an IPR, must use a “broadest reasonable construction” standard to determine the validity of the reviewed patent’s claims.

Holding: The Court affirmed the Fed. Cir.’s opinion that the PTO’s decision to institute IPR is nonappealable based on § 314(d), and that § 316(a)(4) authorizes the PTO to use the regulation declaring the Board must use a “broadest reasonable construction” standard when determining validity of patents in IPR.

Analysis:  The Supreme Court majority rejected Cuozzo’s argument that the PTO’s decision to institute the IPR is appealable because the PTO unlawfully reviewed claims that were not stated “with particularity.”  First, the Court rejected the above argument because the statute states “determination by the [PTO] whether to institute [IPR] under this section shall be final and nonappealable.” § 314(d).  Second, the Court rejected Cuozzo’s above argument because, even though § 312 states a petition must be plead with particularity, § 314(d)’s language “must, at the least, forbid an appeal that attacks a ‘determination . . . whether to institute’ review by raising [the] kind of legal question” if the PTO should have only heard the claims that were plead with particularity or can hear any claims that “rise and fall” with a pleaded claim.   Third, the Court rejected the above argument because holding otherwise would be contrary to congressional intent of passing § 314(d).  The Court stated Congress specifically gave the PTO power to revisit earlier patent grants.  The Court doubted Congress intended to grant the PTO this power if it thought the PTO’s final decision could be undone by a minor statutory technicality related to the decision to institute IPR.   Further, the Court determined the existence of similar provisions in this, and related patent statutes reinforces its conclusion.  See §319 (limiting appellate review to the “final written decision”); §312(c) (2006 ed.) (repealed) (the “determination” that a petition for IPR “raise[s]” a “substantial new question of patentability” is “final and non-appealable”); see also §303(c) (2012 ed.); In re Hiniker Co., 150 F. 3d 1362, 1367 (Fed. Cir. 1998).

The Court majority then looked at and rebutted Alito’s dissent, as well as the Fed. Cir. dissent.  The dissent would limit the “No Appeal” provision to interlocutory appeals, making the court free to review the decision to institute an IPR in the context of the PTO’s final decision.  Post, at 1, 5 (ALITO, J., concurring in part and dissenting in part); In re Cuozzo Speed Tech., LLC, 793 F. 3d, at 1291 (Newman, J., dissenting).  The majority rejected this interpretation of § 314(d) because the Administrative Procedure Act already limits review to final agency decisions (5 U.S.C. § 704) and the decision to institute an IPR is a “preliminary” decision, not a final one.  Additionally, the PTO’s decision to deny a petition to institute IPR is discretionary.  See § 701(a)(2); §314(a) (no mandate to institute review).  The dissent argued it’s approach is “familiar practice,” and is consistent with other areas of law.  However, the majority reasoned the kind of initial determination here – “that there is a ‘reasonable likelihood’ that the claims are unpatentable on the grounds asserted” – are similar to decisions in other contexts where the Court has held to be unreviewable.    The Court majority then argued even though there is a strong presumption in favor of judicial review, the presumption may be overcome by “‘‘clear and convincing’’ indications, drawn from ‘specific language,’ ‘specific legislative history,’ and ‘inferences of intent drawn from the statutory scheme as a whole,’ that Congress intended to bar review.” Block v. Community Nutrition Institute, 467 U. S. 340, 349–350 (1984).  The majority believes the standard from Block is met here.  The dissent disagreed and pointed to Lindahl v. Office of Personnel Management, 470 U. S. 768 (1985) to support its view that, in light of this presumption, § 314(d) should be read to permit judicial review of any issue bearing on the PTO’s preliminary decision to institute IPR.  The Supreme Court in Lindhal held that a statute that makes decisions from an agency “final,” “conclusive,” and “not subject to review,” barred a court from revisiting the factual underlay of the determinations but allowed review when the agency “substantially depart[ed] from important procedural rights.”  The majority rejected the argument saying their interpretation is in accords with Lindhal because the statute states the decision is final and nonappealable.

The Court limited its interpretation of § 314(d) so it applies “where the grounds for attacking the decision to institute [IPR] consist of questions that are closely tied to the application and interpretation of statutes related to the [PTO’s] decision to initiate [IPR].” See §314(d).  The Court emphasized it is not, and does not, “decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’” Cf. Johnson v. Robison, 415 U. S. 361, 367 (1974); Traynor v. Turnage, 485 U. S. 535, 544–545 (1988).

The Court majority rejected Cuozzo’s argument that the PTO lacked the “legal authority” to issue a regulation requiring the PTO, when conducting an IPR, to give a patent claim “its broadest reasonable construction in light of the specification of the patent in which it appears,” for many reasons. 37 CFR §42.100(b).  Section 316(a)(2) grants the PTO authority to issue “regulations . . . establishing and governing [IPR] under this chapter.” §316(a)(4).

First, the Court majority interpreted Congress’ grant of rulemaking authority to the PTO in light of Chevron U.S.A., Inc. v. natural Resources Defense Council, Inc., 467 U.S. 837 (1984).  The Court in Chevron U.S.A. held when a statute is clear, the agency must follow the statute.  Id. at 842-843.  However, where a statute leaves “gaps” or is “ambiguous,” the court typically interprets it as granting the agency leeway in enacting rules and regulations that are reasonable in light of the text, nature, and purpose of the statute.  United States v. Mead Corp., 533 U.S. 218, 229 (2001); Chevron U.S.A., Inc., 467 U.S. at 843.  Here, the statue creates such a gap because the statute does not contain a rule regarding what standard the PTO must use.  Additionally, the statute even expressly grants the PTO the authority to issue rules and regulations “governing [IPR].” § 316(a)(2).  The dissent in the Fed. Cir. and Cuozzo both believed other “tools of statutory interpretation,” such as INS v. Cardoza-Fonesca, 480 U.S. 421, 432, and n. 12 (1987), lead to a conclusion Congress did not intend to impart rulemaking authority to the PTO.  The Court majority held § 2(b)(2)(A) does not contain the Circuit’s claimed limitation to proceedings, nor is its language the same at § 316(a)(2).  Section 2(b)(2)(A) grants the PTO the authority to issue regulations, “which . . . shall govern . . . proceedings in the Office,” but the statute before us, §316(a)(4), does not refer to “proceedings” but more broadly to regulations “establishing and governing [IPR].” 

Next, Cuozzo argued the Court must review the purpose of IPR, which, in Cuozzo’s view, is to modify the previous reexamination procedures and to replace them with a “’trial, adjudicatory in nature.’”  Cuozzo pointed out a decision to cancel a patent normally has the same effect as a district court’s determination of a patent’s invalidity.   Therefore, according to Cuozzo, Congress’ intended that IPR was designed as a “surrogate for court proceedings,” therefore it would also be Congress’ intent that the agency use the same claim construction standard as the district courts.   The Court majority reasoned the problem with Cuozzo’s argument is that an IPR is more like a specialized agency proceeding, and less like judicial proceedings because parties who initiate the IPR need not have a concrete stake in the outcome nor constitutional standing to bring a petition.  Additionally, challengers do not need to remain in the proceedings.  Further, the PTO may intervene in judicial proceedings regarding its final IPR decision to defend it position.  The burden of proof is different in an IPR than in district courts: in an IPR, the challenger (or the PTO) must establish unpatentability “by a preponderance of the evidence”; in district court, a challenger must prove invalidity by “clear and convincing evidence.”  These features combined, as well as the predecessors to IPR, show the purpose of an IPR is not the same as the purpose of district court litigation.  The purpose behind an IPR is reexamination, even though the phrase reexamination was changed to review.  The Court further considered that no statutory language, purpose, or history shows Congress intended to consider what standard the PTO must use during the reexamination of a patent.

The majority concluded the PTO’s regulation, 37 C.F.R. § 42.100(b), is a reasonable exercise of the PTO’s rulemaking authority granted by Congress.   The Court held using the “broadest reasonable construction” standard is reasonable because it helps to ensure the PTO is not granting patent exclusive rights to overly broad claims and the use of the standard encourages an applicant to draft the patent narrowly.    Additionally, past practice shows the “broadest reasonable construction” standard has been used by the PTO for more than 100 years.

Cuozzo made two arguments in response to the Court’s view that the standard is reasonable.  First, Cuozzo contended there is a difference between the PTO’s initial examination of an application to determine if a patent should issue, and an IPR, where the agency reviews an already issues patent.  In the initial examination of the application, the patent examiner uses the broadest reasonable construction standard and may reject the claims for being overly broad, then the applicant may present amendments to narrow the claims.  Cuozzo pointed out that examination both protects the public from overly broad claims and gives the applicant a fair chance to draft an amendment to the claims so the application will qualify for protection.  In an IPR, the broadest reasonable construction standard may help protect public interests, but there is no absolute right to amend any of the challenged claims.  Cuozzo stated an IPR is unfair to the patent holder.  The Court rejected Cuozzo’s argument that an IPR is unfair to patent holders because in an IPR, the patent holder may make a motion to amend the claims at least once in the process, just like he or she would in the original examination process.  Cuozzo then argued only 5 out of 86 motions to amend have been granted.  However, the Court rejected the argument stating the low numbers “may reflect the fact that no amendment could save the inventions at issue.”  The PTO rejected Cuozzo’s motion to amend because the proposed amendments “enlarge[d],” rather than narrowed the challenged claims.

Second, Cuozzo argued the use of the broadest reasonable construction standard in an IPR and the use of the ordinary meaning standard in the district court may cause inconsistent results and added confusion because a district court may find a patent valid, and then the PTO can later find the patent invalid under a different standard.  The Court rejected the argument because, even if it is correct that a district court can find the patent valid and the PTO find it invalid later on, this possibility has been present for a long time in the patent system, which provides different tracks for the review and adjudication of patent claims – one in the PTO and one in the courts.

Finally, Cuozzo presented various policy arguments in favor of an ordinary meaning standard.  However, the PTO is legally free to accept or reject policy arguments based on its own analysis.  Because the PTO clearly decided the best policy was to adopt the broadest reasonable construction standard, the issue of a better alternative standard is one Congress left to the PTO to decide.

Dissent:  Justice Alito wrote the dissenting opinion, in which Justice Sotomayor joins.  Alito and Sotomayor concur with the majority’s position on the “broadest reasonable construction” standard, but disagreed on the appealability of the PTO’s decision to institute IPR. The dissent does not think Congress intended to shield the PTO from compliance or noncompliance with the limits of strict scrutiny.  Because there is a strong presumption favoring judicial review, the dissent believed Congress required that judicial review, including of issues bearing on the institution of patent review proceedings, be channeled through an appeal from the agency’s final decision.

The dissent disagreed that the decision is nonappealable because the statute says so.  The dissent argued “Congress rarely intends to prevent courts from enforcing its directives to federal agencies. For that reason, this Court applies a ‘strong presumption’ favoring judicial review of administrative action.” Mach Mining, LLC v. EEOC, 575 U. S. ___, ___ (2015) (slip op., at 4) (quoting Bowen v. Michigan Academy of Family Physicians, 476 U. S. 667, 670 (1986)).  The dissent claimed that, even though the strong presumption of judicial review is rebuttable, “the agency bears a ‘heavy burden’ in attempting to show that Congress ‘prohibit[ed] all judicial review’ of the agency’s compliance with a legislative mandate.” Mach Mining, supra, at ___ (slip op., at 4–5) (quoting Dunlop v. Bachowski, 421 U. S. 560, 567 (1975)).  Essentially, the dissent believed if a provision can be reasonably read to permit judicial review, it should be.  The dissent took the view that the courts cannot stop the proceeding (IPR) from going forward, the issue of whether it was lawful to institute review will not escape judicial scrutiny.

The dissent further disagreed that allowing judicial review “would undercut one important congressional objective, namely, giving the [PTO] significant power to revisit and revise earlier patent grants.” The reasoning is that this would give the government cause to do away with judicial review whenever the government thinks review makes it harder for an agency to carry out important work.  The dissent believed § 319 is not limited to the PTO’s final written decision because the statute does not restrict what issues may be raised on appeal.  The dissent argued a party may be dissatisfied with the final written decision because the PTO lacked authority to institute an IPR in the first place.

The dissent explained that because the decision to institute an IPR is appealable (by their beliefs), that does not mean that courts must (or should) throw out an IPR decision whenever there is some technical deficiency in the challenger’s petition or in the PTO’s institution decision.  Additionally, normal limits on judicial review still apply such as prejudicial error.  The dissent then revealed doubts on whether Cuozzo would even prevail at the Court of Appeals because claim 17 rises and falls with claims 10 and 14, but this does not mean that his arguments are not worthy

Prior Use Rights v. Patent Protection

By Julie Shursky

Before the enactment of the Leahy-Smith America Invents Act (“AIA”), the prior user rights defense was limited to business method patents.  35 U.S.C. § 273 (2006) (restricting the defense to patent claims for “a method of doing or conducting business”), amended by Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 5(a), 125 Stat. at 297.  The AIA, however, amended the language of Section 273, such that the defense is now applicable to any “process” or any “machine, manufacture, or composition of matter used in manufacturing or other commercial process.”  35 U.S.C. § 273(a) (2011).  Further, Section 273 states that an accused infringer must prove, by clear and convincing evidence, that the patented subject matter was “commercially used” in the United States at least a year prior to the effective filing date of the claimed invention.  35 U.S.C. § 273(a)(2).  This expanded prior user rights defense under the AIA applies to any patent issued on or after September 16, 2011.  Pub. L. No. 112-29, sec. 5(c), 125 Stat. 284, 299 (2011).  To qualify for the defense, the accused infringer must establish strict requirements that limit the defense’s applicability to very rare situations:

  • The use must be a good faith commercial use in the United States. Since the commercial use must be in the United States, some foreign commercial activity will not qualify.
  • The use must occur at least one year before the earlier of (1) the effective filing date of the asserted patent; or (2) the date on which the claimed invention was disclosed to the public in a manner that qualified for the prior art exception from under AIA. 35 U.S.C. 102(b); 35 U.S.C. 273(a), (e)(2) & (4).
  • The use must be in connection with (i) an “internal commercial use” or (ii) an arm’s length sale or transfer of a useful end result of the internal commercial use. 35 U.S.C. § 273(a)(1).

The AIA also sets forth several important limitations to the defense:

  • The prior commercial use defense is “personal,” which means it cannot be separately licensed, transferred, or assigned to a third party, except that the defense can be transferred as part of a good faith transfer of an entire business or relevant line of business.
  • In the event that the defense is transferred as part of such a good faith transfer, the defense may only be asserted for use at sites where the use occurred prior to the later of the date of the transfer or the effective filing date of the claimed invention. If the purchaser begins practicing the commercial use at the new sites after the effective filing date and after the transfer takes place, those uses will not qualify for the defense.
  • The defense is not a “general license,” which means that it does not provide a general license to all the claims of the asserted patent. For example, if a party qualifies for the defense, but only has practiced claims 1-5 of a patent, that does not mean the party can also practice claims 6-10 of the same patent without being liable for infringement.
  • The defense is not available if the commercial use is derived from the patentee or persons in privity with the patentee.
  • If the commercial use is abandoned, the defense may not be relied upon with respect to activities that occur before the abandonment. Certain legislative history, however, suggests that processes that are used periodically or seasonally may still qualify for the defense (i.e., the periodic or seasonal use does not render them abandoned), even though they are not continuous.

Although the prior user rights defense under the AIA is a powerful tool to defend against patent infringement claims, there is a caveat to the defense, which is that the accused infringer must maintain sufficient records of its prior use.  The records should be detailed enough to preserve the defense with respect to each claim that may be asserted.


Since the law is new, there is a lack of clarity on limitations, such as the ability of the prior user to expand the capacity of the use, the ability to implement improvements, the requirements of the continuousness of the use, and what constitutes a “commercial use” as required under the statute.  The intention behind the prior user defense, however, is not only to provide for fairness to a prior inventor, but also to boost the rights of a trade secret holder against the rights of a later patent holder.  See 157 Cong. Rec. S5319 (daily ed. Sept. 16, 2011) (statement of Rep. Smith).  Specifically, the sponsors of the AIA intended to broaden the amendment in order to insulate businesses from having to disclose their internal processes or manufacturing materials.  See, e.g., 157 Cong. Rec. H4483 (daily ed. June 23, 2011) (statement of Rep. Smith) (“The prior-use defense is not overly expansive and will protect American manufacturers from having to patent the hundreds or thousands of processes they already use in their plants.”); 157 Cong. Rec. S5426 (daily ed. Sept. 8, 2011) (statements of Sen. Blunt and Sen. Leahy) (discussing that “the prior user rights provided under section 5 of H.R. 1249 will allow developers of innovative technologies to keep internally used technologies in-house without publication in a patent”).  Therefore, a major driving factor behind broadening the prior-user defense was to shield manufacturers who owned trade secrets from subsequent patent-infringement claims.



Summary on the Supreme Court’s Recent Kirtsaeng Decision

By Samantha Leiner

The Supreme Court released its decision regarding the case Kirtsaeng v. John Wiley & Sons, Inc., 579 U. S. ____ (2016, in June.  This case deals with what factors a district court is supposed to look at when awarding or rejecting attorneys’ fee under the Copyright Act Section 505. 17 U.S.C. § 505.  The original infringement issue was decided by the Supreme Court in 2013.  See Kirtsaeng v. John Wiley & Sons, Inc., 568 U. S. ___ (2013).


Kirtsaeng, a citizen of Thailand, came to the US to go to school at Cornell University.  He realized the same textbooks required for his class in the US were sold for a significantly cheaper amount back home in Thailand.  Kirtsaeng had family and friends buy the textbooks in Thailand and then sent the books to him in the U.S., where he sold them for a nice profit.  Wiley & Sons, the publishing company for the textbooks, sued Kirtsaeng for copyright infringement, claiming his activities violated the exclusive right to distribute under the Copyright Act.  Kirtsaeng’s defense was the “first-sale doctrine,” which allows for the lawful owner of a copyrighted book to resell “or otherwise dispose of” the product as he wishes.  Wiley’s counter to Kirtsaeng’s defense is the “first-sale doctrine” does not apply when the book was manufactured abroad.   While this case was taking place, multiple courts were in conflict as to whether the “first-sale doctrine” applied to products manufactured abroad.  Even the Supreme Court in a previous decision was undecided on this issue in a 4-to-4 split of the Court. See Costco Wholesale Corp. v. Omega, S. A., 562 U. S. 40 (2010) (per curiam). Here, the district court sided with Wiley, as did a divided Second Circuit court.  However, the Supreme Court reversed in a 6-to-3 decision and determined the first-sale doctrine allows the resale of foreign-made books, just like domestic books.   Being victorious, Kirtsaeng went back to the district court to seek more than $2 million in attorneys’ fees from Wiley.  The district court denied the motion based on the reasoning that Wiley’s infringement claim was objectively reasonable, which the district court argued was in line with the Copyright Act’s purpose.  The Second Circuit affirmed the district court’s holding that attorneys’ fees would not be awarded due to the objective reasonableness of Wiley’s position in bringing the infringement suit.


The major issue presented to the Supreme Court was whether a court, in exercising its authority to award or deny attorney’s fees to the winning party, should give substantial weight to the objective reasonableness of the losing party’s position.


The Supreme Court found that a court, specifically a district court, should give substantial weight to the objective reasonableness of the losing party’s position.  However, the Court also held that district courts, when determining whether attorneys’ fees should be awarded, should also give weight to all other factors relevant in granting the motion for attorney’s fees, such as a party’s litigation misconduct or if the infringer has repeated offenses of infringement.  The Supreme Court further held that it is in a court’s discretion to order or deny attorneys’ fees based on these relevant factors.  Therefore, the Supreme Court vacated the decision and remanded back to the district court because the Justices were not sure whether the district court understood the full scope the discretion it holds.


The Supreme Court started its analysis by citing to Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), a Supreme Court case where it decided two restrictions or limitations for courts to follow when determining whether attorneys’ fees should be awarded under the Copyright Act § 505.   The two restrictions/limitations on district courts are: (1) when a district court is determining whether to award attorney’s fees it may not “award [] attorney’s fees as a matter of court,” but on a case-by-case, more particularized basis, Fogerty, 510 U.S. at 533; and (2) the district court shall treat prevailing plaintiffs and prevailing defendants equally when determining a motion for attorneys’ fees, Id. at 527.   The Supreme Court in Fogerty noted with approval “several nonexclusive factors” to help a district court in deciding whether to award attorneys’ fees, while leaving open the possibility of additional guidance in determining attorneys’ fees: “frivolousness, motivation, objective unreasonableness[,] and the need in particular circumstances to advance considerations of compensation and deterrence.”  Id. at 534, n. 19.    Here, Kirtsaeng and Wiley disagree as to “what else [the Court] should say to district courts” about what to consider when awarding attorneys’ fees.  Kirtsaeng, 579 U.S. at 4.  Both Kirtsaeng and Wiley argue that the Supreme Court should hold that the district court should put “substantial weight” on certain factors in determining whether attorneys’ fees should be awarded, but Kirtsaeng and Wiley differ on what factors should be given substantial weight.  Wiley argues that the district court, in deciding whether to award the prevailing party attorneys’ fees, should put substantial weight on the objective reasonableness of a losing party’s position in bringing or defending the infringement case.  In contrast, Kirtsaeng’s position was that the court should give “special consideration to whether a lawsuit resolved an important and close legal issue and thus ‘meaningfully clarifie[d]’ copyright law.” Kirtsaeng, 579 U.S. at 5 (quoting Brief for Petitioner 36).


The Supreme Court agrees that there is a need for additional guidance surrounding an application of § 505.  The Court states that, even when a fee-shifting law does not state any explicit limits or conditions, the Supreme Court has “found limits” in the laws in order to give individuals a predictor as to how a fee-shifting decision will result.  Kirtsaeng, 579 U.S. at 6.


The Court explains that to find the right guidance for a determination of attorneys’ fees under § 505, it must look at whether Wiley’s position above or Kirtsaeng’s position above advances the Copyright Act’s goals.  The Supreme Court in Fogerty explained, “copyright law ultimately serves the purpose of enriching the general public through access to creative works.”  510 U.S. at 527.  Section 505 achieves that purpose “by striking a balance between wo subsidiary aims: encouraging and rewarding authors’ creation while also enabling other to build on that work.”  Kirtsaeng, 579 U.S. at 6 (citing Forgery, 510 U.S. at 526.  Therefore, attorneys’ fees should “encourage the types of lawsuits that promote the purposes of the Copyright Act.” Id.


The Supreme Court sided with Wiley because Wiley’s argument falls within the purpose of the Copyright Act, while Kirtsaeng’s argument does not “produce any sure benefits.” Kirtsaeng, 579 U. S. at 7.   The Supreme Court’s reasoning on rejecting Kirtsaeng’s argument is even if the case advances public interest, fee shifting does not always encourage possible litigation, but will most likely have a chilling effect on people bringing suits, especially those of public interest, based on the punishment of attorney’s fees.  Further accepting Wiley’s argument, the Supreme Court found putting substantial weight on reasonableness discourages a copyright holder from bringing a suit with no reasonable infringement claim or an infringer from bringing a defense with no reasonableness.  Discouraging infringement claims or defenses with no merit saves the courts and the parties time and money.  Additionally, Wiley’s argument supports Forgery because it does not discriminate between plaintiffs and defendants.


However, the Supreme Court decided reasonableness is only a “substantial factor” in determining whether attorney’s fees shall be awarded, not a controlling one.  The Court found other factors may be considered by the district court to determine whether attorneys’ fees should be awarded, such as a party’s litigation misconduct, “to deter repeated instances of copyright infringement,” or “overaggressive assertions of copyright claims.”  A party’s litigation misconduct can mean unduly delaying the case through discovery, filing unneeded motions, failing to produce important documents, etc. This means the victor may be awarded attorney’s fees even if the losing party’s position was reasonable.




The Supreme Court found that a court, specifically a district court, should give substantial weight to the objective reasonableness of the losing party’s position.  However, the Court also held that district courts, when determining whether attorneys’ fees should be awarded, should also give weight to all other factors relevant in granting the motion for attorney’s fees, such as a party’s litigation misconduct or the repeated offenses by the infringer.  The Court further held that it is in a court’s discretion to order or deny attorneys’ fees based on these relevant factors.  Therefore, the Court vacated the decision and remanded back to the district court because the Justices were not sure whether the district court understood the full scope the discretion it holds.

New Post-Registration Pilot Program (P3)

By Samantha Leiner

Purpose and Implementation of Post-Prosecution Pilot Program (P3):

The USPTO created the new pilot program, Post-Prosecution Pilot Program (P3), in response to stakeholder input gathered during various public forums to support the USPTO’s Enhanced Patent Quality Initiative.  The purpose of the new P3 Pilot Program is to see if the USPTO can improve patent practice between a final rejection from the USPTO and a notice of appeal by the applicant.

Under the P3, a panel of examiners, including the examiner on record for the application, will hold a conference with the applicant to review the applicant’s response of the final rejection given by the USPTO.  According to the Federal Register’s summary of the new P3 program, the purpose of the program was to “increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision.”  United States Patent and Trademark Office; Post Prosecution Pilot Program, 81 Fed. Reg. 44,845 (July 11, 2016).   The applicant will also “have the option of including in the response a proposed non-broadening amendment to a claim(s).” Id.

The program is also designed to help ease the load of appeals cases the Patent Trial and Appeals Board (PTAB) hears and to “reduce the number of Requests for Continued Examination (RCE).”  Id.

The P3 program will begin accepting applications on July 11, 2016, until the first of two dates has occurred: (1) January 12, 2017 or (2) when the Office has accepted a total of 1,600 complaint requests to participate under the P3.  Id.  Each technology center may accept no more than 200 complaint requests, which means that one technology center may stop accepting requests before another technology center.   Id. at 44,846.

Background of Pilot Programs:

There has been two other Pilot Programs administered at the USPTO within the last 11 years: the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal program), which was first administered in 2005, and the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which was first administered in 2013.

The Pre-Appeal program “provides an avenue for a patent applicant to request a review of the basis of a rejection(s) in a patent application prior to the filing of an appeal brief.”  Id.  A difference between the Pre-Appeal program and the P3 is that the Pre-Appeal program allows for the request to be filed in conjunction with a notice of appeal, while the P3 program requires the request be submitted before a notice of appeal.  When the request for the Pre-Appeal program is filed with a notice of appeal, “a panel of examiners (including the examiner of record) formally reviewed the rejections of record in light of the remarks provided in the request.”

The AFCP 2.0 allows “examiners [to] consider a response filed after a final rejection pursuant to 37 CFR 1.116 that includes remarks and amendments that may require further search and consideration, provided that at least one independent claim includes a nonbroadening amendment.”  Id.  Additionally, “the examiner also may conduct an interview with the applicant when the response does not place the application in condition for allowance.”  Id.

The P3 combines the effective features of both the Pre-Appeal program and the AFCP 2.0, while adding new features as well.  The P3 takes the consideration of an after final response by a panel from the Pre-Appeal program, takes the optional proposed amendment included in the after final response, and adds “an opportunity for the applicant to make an oral presentation to the panel of examiners.”  Id.

Requirements for New Pilot Program:

For an applicant to be eligible to participate in P3, “an application must contain an outstanding final rejection and be (i) an original utility non-provisional application filed under 35 U.S.C. 111(a), or (ii) an international utility application that has entered the national stage in compliance with 35 U.S.C. 371 (see 37 CFR 1.491).”  Id.   A continuing application is filed under 35 U.S.C. § 111(a) and is allowed to participate in the P3.  “Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.”  Id.  A request for response under 37 C.F.R. § 1.116 for consideration under the P3 must include:

  1. Transmittal Form. While an applicant may submit their own transmittal form, the USPTO suggest using its provided transmittal form, PTO/SB/444, because it will help the PTO to “quickly identify P3 requests and facilitate timely processing.” at 44,847.
  2. The response required for the P3 must be separate from the transmittal form and cannot be more than 5 pages of arguments.  Additionally, the arguments are limited to appealable, not petitionable, matters.  The PTO considers conclusions, definitions, claim charts, and diagrams as part of the argument in the response.  Therefore, those elements are limited to the 5-page limit as well.  Arguments in the response may be directed to the patentability of the proposed amendment if one is included.  The pages containing the actual proposed amendment will not count towards the 5-page limit.  If the applicant submits an affidavit or other evidence, that affidavit or other evidence will be counted towards the 5-page limit.  The transmittal form, if it does not include any arguments, will not count towards the 5-page limit.  If a page of the response consists solely of a signature, then that page will not count towards the 5-page limit.  The applicant will not be able to circumvent the 5-page limit by including arguments in different documents.  The response may be single-spaced, but must comply with the requirements under 37 C.F.R. § 1.52(a).  In order to stay within the 5-page limit, the response can refer to an argument already on the record rather than repeating the argument “by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date.”  Id.  Simply stating “the arguments of record” or “the paper dated X” without a pinpoint citation, will not be accepted for consideration of the P3.
  3. Statement that Applicant is Willing and Available to Participate in the Conference with the Panel of Examiners. The applicant must submit a statement verifying that he/she is “willing and available to participate in the conference with the panel of examiners.”  This can be done simply if the applicant uses the for PTO/SB/444 for the transmittal form as well.  Once the PTO has determined the request for the P3 is timely and compliant, the PTO will contact the applicant about scheduling the conference.  If after 10 days, the PTO and the applicant cannot agree on a scheduled conference or the applicant declines to participate in the conference, the request for the P3 will be deemed improper and declined.  The applicant can participate in the conference in person, by telephone, or by video conferencing tool set up by the PTO.  The applicant is able to present to the panel in the conference “in a manner similar to how an applicant presents an argument in an ex parte appeal before the PTAB.” Id.  the applicant’s presentation may take up to 20 minutes.
  4. Proposed Amendment (Optional). Any entry of a proposed amendment is governed by 37 C.F.R. § 1.116. See MPEP 714.12.  The biggest concern with the proposed amendment is that they may not broaden the scope of a claim in any aspect.  The analysis for whether a propose amendment broadens a claim impermissibly is similar to the guidance set forth ins MPEP § 1412.03 for determining whether a reissue claim has been broadened.  Proposed amendments that focuses on a single independent claims are the amendments more likely place the application into condition for allowance.  If a proposed amendment contains extensive amendments (either in terms o the nature of the amendment or to the claims to be amended), it will require a more extensive consideration and would likely not place the application in condition for allowance.

Only one P3 request will be filed per final rejection by the USPTO.   Additionally, there is no fee required to request consideration under the P3 and all papers to be filed for the P3 must be filed using the USPTO’s Electronic Filing System-Web (EFS-Web).  Further, to be eligible for the P3, an applicant must not have previously filed for the Pre-Appeal program or the AFCP 2.0.

An applicant must have filed a P3 request “within two months from the mailing date of a final rejection and prior to filing a notice of appeal.”  Id.  A request for P3 will be seen as untimely “if it is filed (i) more than two months from the mailing date of the final rejection, (ii) in an application that does not contain an outstanding final rejection (e.g., a P3 request will not be accepted in response to a second action non-final rejection), (iii) in response to a final rejection for which a proper AFCP 2.0 request has been filed, (iv) on or after the date a RCE or notice of appeal is filed in response to the same outstanding rejection, or (v) on or after the date an express abandonment is filed.”  Id. at 44,846-44,847.

USPTO’s Procedures on Requests for New Pilot Program:

After a request is submitted to the PTO for the P3, the PTO determines if the request if timely and compliant with the requirements.  If the request is timely and compliant, the PTO will contact the applicant to schedule the conference.  If the request is untimely and/or non-compliant, a conference will not be held.  If untimely and non-compliant, the PTO will communicate the reason the request was found to be untimely or non-compliant. If the request is timely and compliant, but the technology center has reached its 200 request limits, a conference will not be held.

An important note is that the filing of a P3 request will not toll the six-month statute of limitations on replying to the final rejection.  To avoid abandonment of appealing the final rejection, further action, such as a notice of appeal or RCE, will have to be done within the six-month statutory period.

The panel of examiners will most likely consist of the examiner of record, the SPE, and a primary examiner, who is usually the signing primary examiner for the examiner of record fi the examiner of record is a junior examiner.

Any materials used in the presentation by the applicant “will be placed in the file and will not count against the 5-page limit on arguments.” Id. at 44,848.

After the conference, the applicant will be informed of the panel’s decision.  The decision may indicate one of the following:

  • Final Rejection Upheld. The notice if the final rejection is upheld “will not contain any additional grounds for rejection or any restatement of previously made rejection.”  The notice will simply summarize the status of the claim and will communicate any reasoning for rejection of the proposed amendments.  …  The time period for any other action on the final rejection expires on “(1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later.” Id. at 44,849.   A notice of decision indicating “final rejection upheld” is not petitionable, but is subject to appeal.
  • Allowable Application. The notice of decision will be mailed with a notice of allowance, and the notice will state that the rejection(s) is/are withdrawn.
  • Reopen Prosecution. The notice of decision will state the rejection(s) are withdrawn, and a new Office Action is sent to the applicant.  It will also state that no further action is required by the applicant until notified.

If the applicant files any of the following after the date of filing a P3, but prior to a notice of decision from the panel, the request for the P3 will be terminated on the merits: “a notice of appeal, a RCE, an express abandonment under 37 C.F.R. § 1.138, a request for the declaration of interference; or a petition requesting the institution of a derivation proceeding.” Id.   The office will communicate with the applicant the reason for the termination of the P3 proceeding, “the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment filed with the request, and the time period for the applicant to take any further action that may be required as dictated by the facts.


Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)

By Julie Shursky


  • Proxyconn, Inc. (“Proxyconn”) filed suit against Microsoft Corporation (“Microsoft”), accusing Microsoft of infringing its U.S. Patent No. 6,757,717 (“the ’717 patent.”) Microsoft, 789 F.3d at 1295.  This appeal arises from the inter partes review (“IPR”) of the ’717 patent.  Id.
    • The ’717 patent “relates to a system for increasing the speed of data access in a packet switched network.” at 1295.
  • The United States Patent and Trademark Office, Patent Trial and Appeal Board (“Board”) issued a final written decision, finding all but one of the instituted claims (claim 24) to be unpatentable under 35 U.S.C. § 102 and additionally under 35 U.S.C. § 103.  Id. (citing to Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109, Paper No. 73 (PTAB Feb. 19, 2014).  The Board further denied Proxyconn’s motion to amend.  Id.
  • Microsoft appeals the Board’s determination that claim 24 is patentable. Proxyconn cross-appeals, “challenging the Board’s use of the broadest reasonable interpretation (“BRI”) standard of claim construction during IPRs, its unpatentability determinations, and its denial of Proxyconn’s motion to amend.”  Id.

BRI Standard for Claim Construction:

  • At issue was the Board’s construction of the phrase “a gateway . . . connected to said packet-switched network in such a way that network packets sent between at least two other computers” recited in claim 6. Id. at 1298 (citing to ’717 patent, col. 10 l. 64-col. 11. l. 12) (emphasis in original).
  • Before the Board, Proxyconn argued that the term “two other computers” referred only to the sender and receiver computers, while Microsoft contended that the term “two other computers” could represent any two computers that are connected on the network to a gateway, including a caching computer. Id. at 1298.  The Board agreed with Microsoft’s interpretation, finding that “the ‘two other computers’ were not limited just to the sender/computer and the receiver/computer,” and therefore concluded that the reviewed claims were not patentable.  Id.
  • Upon review, the Federal Circuit disagreed with the Board’s conclusion, finding that the phrase “two other computers” could not include the caching computer. Id. at 1299.  First, the panel noted that claim 6 of the ’717 patent separately recited the “two other computers” and the caching computer.  Id. (citing to ’717 patent, col. 10 l.54- col. 11 l. 12).  Specifically, the panel reasoned that, “[n]ot only are the ‘two other computers’ recited independently from, and in addition to, the gateway and caching computers, the word ‘other’ denotes a further level of distinction between those two computers and the specific gateway and caching computers recited separately in the claim.”  Id.  The Federal Circuit further found that “in each instance where [two other computers] is used, the phrase . . . describes components that are separate and distinct from the gateway and the caching computer.”  Id.
  • Accordingly, the court found that the specification clearly identified that caching computer and the “two other computers” to be “separate and distinct components of the overall system.” Id.  To expand “two other computers” to include the separately identified caching computer unreasonably broadens the language in the claims and specification.  Id.  Therefore, the Court “vacate[d] the Board’s findings of unpatentability of claims 6, 7, and 9 and remand[ed] for proceedings consistent with [the] opinion.”  Id.
  • For similar reasons, the panel disagreed with the Board’s conclusion “that the terms ‘sender/computer’ and receiver/computer’ were broad enough to include the intermediary gateway and caching computers.” Id. at 1300.  Rather, the Court concluded that such an interpretation “does not reasonably reflect the language and disclosure of the ’717 patent.”  Id.  Accordingly, the Court also vacated the Board’s findings of unpatentability of claims 1, 3, 10, 22, and 23 and remanded back to the district court.

Claim 24 is Patentable:

  • Ultimately at issue in claim 24 is whether the term “comparing” is the same as the term “searching. Id. at 1301-02.  The Federal Circuit concluded that the two terms were not identical, and thus agreed with the Board.  Id. at 1302 (“Based on the clear language of the specification, the Board was correct in concluding that the broadest reasonable interpretation of ‘searching for data with the same digital in said network cache memory’ includes searching in a set of potentially many data objects.”).


  • The Court also agreed with the Board that “the download requests that DRP’s client sends to the server after receiving the index from the server and comparing it to the local index meets the ‘receiving a response signal’ limitation of claim 11,” and thus concluded that DRP anticipates claims 11, 12, and 14 of the ’717 patent. Id. at 1303.

Board’s Denial of Proxyconn’s Motion to Amend Claims 1 and 3:

  • Proxyconn also challenged “the Board’s denial of its motion to amend claims 1 and 3.” Id. at 1303.  Proxyconn argued that the Board exceeded its own authority “by imposing the additional requirements of [a prior Board opinion] and by relying on the DRP reference” rather than exclusively relying on statutes and regulations governing motions to amend.  Id. at 1305-06.
  • Proxyconn sought to substitute claims 35 and 36 with claims 1 and 3 respectively. Microsoft argued that the substituted claims were not patentable for anticipation by the DRP reference.  Id. at 1305.  Proxyconn made several other arguments, but failed to argue that substitute claims 35 and 36 were patentable over the DRP reference.  Id.
  • Prior to addressing the arguments on either side, the Federal Circuit reviewed the legal framework governing amendments during IPR proceedings. Id. at 1303.
    • Under the America Invents Act (“AIA”), Congress granted specific authority to the Board in relation to IPR proceedings. Id. 1303-04.  Specifically, the Board promulgated two regulations under the AIA that are relevant to this case: (1) “37 C.F.R. § 42.20, which applies generally to motions practice,” and (2) “37 C.F.R. § 42.121, which imposes specific requirements on the amendment process.”  Id. at 1304.
    • In addition to the two regulations, the Board also issued a six-member panel decision in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR012-00027, 2013 WL 5947697 (PTAB June 11, 2013), where it provided further recitation of several important requirements for a patent owner’s motion to amend. Id. at 1304.  According to Idle Free, the Board requires a patentee to show that the substitute claim is patentable over prior art that is “known to the patent holder.”  Id.  Although the Idle Free decision is not binding, the Board frequently relies on that decision in denying motion to amend.  Id.
  • First, the Federal Circuit agreed with the Board that “§ 42.121(a)(2) is not an exhaustive list of grounds upon which the Board can deny a motion to amend.” Id. at 1306.  Next, the Court determined that it is in the Board’s discretion to choose between rulemaking and adjudication.  Id. at 1307.  Given the Board’s lack of experience with motions to amend, the Federal Circuit agreed that the Board should retain the ability to deal with such motions on a case-by-case basis to ensure an effective administrative process.  Id.   As such, the Court recognized that “there is merit to [the Board’s] arguments,” in not creating a black letter rule on motions to amend, and thus held that the Board has not “abused its discretion in choosing adjudication over rulemaking.”  Id. at 1307.
  • Finally, since the Board’s reliance on the DRP reference “was front and center throughout the course of the proceedings” and Proxyconn “was [not] taken by surprise,” the Federal Circuit found that “the Board acted permissibly in requiring Proxyconn to establish the patentability of substitute claims 35 and 36 over the DRP reference.” Id. at 1308.

Lessons Learned:

  • In this decision, the Federal Circuit provides guidance on how the BRI standard should apply during IPR proceedings. Further, by affirming the Board’s denial of a patentee’s motion to amend, the Federal Circuit resolved the issue of whether the patentee bears the burden of proving patentability of proposed claim amendments during an IPR proceeding.  Specifically, the Federal Circuit determined that the Board has discretion in adjudicating that a patentee must show that its proposed substitute claims are patentable over prior art.

SCOTUS grants Certiorari for Apple Inc. v. Samsung Elecs. Co.

Written by  Chitakone Arounlangsy


On January 2007, Apple Inc. patented the iPhone design which set forth subsequent litigation based on alleged utility and design patent infringement.  Apple Inc. sued Samsung Electronics Co., on April 2011, for alleged infringement of patents based on user interface, and the Galaxy S and Infuse phones’ similarity in appearance to Apple’s iPhone line. Id. Apple Inc.’s lawsuit has caught the attention of the United States Supreme Court, and the appeal from Samsung has been officially put on hold while SCOTUS examines the merits of the case. Samsung was ordered to pay $548 million in damages last year, which was the basis of the appeal.

Apple Inc. filed suit on April 2011, alleging that Samsung infringed upon its D618,677, D593,087, D504,889, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011).  Apple Inc. requested a preliminary injunction against Samsung’s Galaxy S 4G and Infuse 4G smartphones. Id. The district court used four factors in determining whether an injunction would be appropriate. The factors were: whether the movant is likely to succeed on the merits; whether the movant is likely to suffer irreparable harm in the absence of an injunction; whether the balance of the equities favors the movant; and whether the public interest would be served by the grant of injunctive relief. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012). The design and utility patents that Apple alleged Samsung infringed upon are as follows:

The D593,087 design patent claims a bezel surrounding the perimeter of the phone’s front face and extending from the front of the phone partway down the phone’s side. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1317 (Fed. Cir. 2012). The parts of the side beyond the bezel, as well as the phone’s back, are disclaimed, as indicated by the use of broken lines in the patent figures. Id.

The D618,677 design patent is substantially the same as the D593,087 patent, and discloses an additional element of a transparent and glass-like front surface. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011). The D618,677 patent disclaims the sides and back of the device. Id.

The D504,889 design patent is directed towards the design of a tablet computer. The patent depicts a rectangular tablet with a surface extending to the edge of the front side of the device. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). Within that surface, broken lines delineate a slightly smaller rectangular display area. Id. The front face of the patented design has rounded corners, and a thin bezel surrounds the front surface along its perimeter. Id. The front surface has no ornamentation, buttons, speaker slots, holes, or raised surfaces. Id. The back and sides of the design are also claimed; the figures depict a flat, unadorned back transitioning into the sides through a rounded-over edge. Id. Apple contends that the design patent is embodied by its iPad tablet line. Id.

US 7,469,381 is a utility patent that claims a software feature known as the “bounce-back” feature, which is found on Apple’s smartphones and tablets. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). The bounce-back feature is activated when the user is scrolling through a document displayed on the device. Id. If the user attempts to scroll past the end of the document, an area beyond the edge of the document is displayed to indicate that the user has reached the document’s end. Id. Once the user input ceases, the previously visible part of the document “bounces back” into view. Id.

On the D593,087 patent, the court ruled that it was unlikely to succeed on the merits because questions were raised about the patent’s validity, in it being similar and anticipated by a similar Japanese patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012).

Samsung’s Galaxy S 4G and Infuse 4G smartphones were found to be substantially similar to the claimed D618,677 patent. However, Apple was unable to show that it was likely to suffer irreparable harm from the importation and sale of Samsung’s infringing smartphones while the case was pending in the district court. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1320 (Fed. Cir. 2012).

The same was said about the D504,889 patent for lack of showing irreparable harm, and the court declined to issue an injunction with respect to the D504,889 patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1321 (Fed. Cir. 2012). The court also declined to issue an injunction with respect to the US 7,469,381 patent. Id. The court ruled that it failed to establish a relationship between any alleged loss of market share, customers, or goodwill between the Samsung phones and the claimed design. Id.

Apple appealed the denial of a preliminary injunction, and the Federal Circuit Court affirmed the denial based upon the D593,087, D618,677, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1328 (Fed. Cir. 2012). As for the D504,889 patent, the circuit court vacated and remanded the lower court’s decision for further review because it incorrectly determined the validity of the claimed patent. Id.

The basis of SCOTUS’s decision to grant Certiorari is based on Samsung’s appeal of requiring to pay $548 million in damages. SCOTUS will be answering the question of how damages should be assessed for patent violations when the technology involved is just one of many ingredients that go into a device like an iPhone. SCOTUS will hear the case on its next term beginning in October.

US Trademark Office Ordered to Respond to Petition from the Federal Circuit Regarding Disparaging and Scandalous Marks

 Written By Chitakone Arounlangsy

The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks.  In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va. 2014). In In re Brunetti, applicant Erik Brunetti’s trademark application was denied by TTAB because the mark FUCT comprises of immoral or scandalous matter. In re Brunetti, 2014 WL 4426133 (Trademark Tr. & App. Bd. 2016). Brunetti appealed and the case moved to the Supreme Court for review. Id.

While the constitutionality of the provisions under Section 2(a) are being reviewed, the PTO will be issuing advisory refusals for trademarks that consists or comprises of scandalous, disparaging, or immoral matter. The PTO still uses TMEP § 1203 for refusal on the basis of immoral or scandalous matter; deceptive matter; matter which may disparage, falsely suggest a connection, or bring into contempt or disrepute.

The PTO will be following certain guidelines pending final review of the Supreme Court. Any suspension based on the scandalous provision under Section 2(a), will remain suspended until the Federal Circuit court makes a final decision in In re Brunetti. After which, the PTO will then reevaluate the need for further suspension. For suspensions based on the disparaging provision, the application will remain suspended until one of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in In re Tam expires without a petition being filed (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision. The outcomes in In re Tam and In re Brunetti, will determine what the new standard the PTO will use for disparaging and scandalous trademarks.



Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility? Williamson v. Citrix Online Makes One Wonder: Part 2 of a 2 Part Series – Possible Strategies

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?  Williamson v. Citrix Online Makes One Wonder:  Part 2 of a 2 Part Series – Possible Strategies

By Michael Stein, Stein IP LLC

September 2, 2015


This is part 2 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 explores possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.


So, what is a patent attorney to do when faced with the difficult task of preparing a new patent application, whether from scratch or based upon foreign priority, and hopes to avoid either having limitations interpreted as being means plus function limitations under 112, 6th paragraph or being declared indefinite under 112, 2nd paragraph (remember, for the purposes of this article, the pre-AIA references to the 35 USC are being used for the sake of simplicity, but the same holds true under post-AIA situations since the language of the relevant sections has not changed)?


The following are some tips which I believe will increase the chances of running into problems with 112, 6th paragraph and 112, 2nd paragraph, and also hopefully 101 as well.  One important consideration is that the specification as originally filed be as detailed, complete and definite as possible, since one cannot amend the specification significantly after filing to overcome any claims rejections.  There is no magic language that can be used as a safe harbor, as the USPTO has clearly indicated in their webinars on 101 (and thus by extension to 112).  So here it goes, in no particular order.

  1. In describing the invention, try to avoid using words like “device,” “computing element,” “unit,” “portion,” or even “for …ing”  as examiners and courts are increasingly unpredictable in their applications of § 112, 6th paragraph analysis, more frequently treating such words as “nonce” words.  Instead of saying “processing unit” or “processing module,” simple recite a “processor,” for example
  2. Use “configured to” or “adapted to” if the structure is questionable.  Such language assists in making an argument that the limitation has structure and is not purely functional.
  3. Integrate structural limitations with the functional limitations in the claims.  Sometimes a little more in the claim, to provide some real structure will actually broaden the scope of your claim since the people performing claim construction will not have to go to the specification to determine the breadth and scope of the disclosed structure and its equivalents.  Once a claim constructor goes to the specification, it is very difficult to limit the extent to which the specification is relied upon and the owner of the patent does not want to be limited to only the specific embodiments disclosed in the specification when asserting infringement.
  4. Be careful about language like “determining,” “calculating,” “comparing,” etc., with no explanation as to what parameters are being used and how these activities are being accomplished. Provide specific examples in the specification where possible and practicable to clearly explain the algorithm being used.  See, for example, Ibormeith IP v. Mercedes-Benz,  732 F.3d 1376 (Fed. Cir. 2013) where the court held that there was not sufficient structure for “computational means for weighting the operational model according to the time of deay.. and for deriving, from the weighted mode, driver or operator sleepiness condition and producing an output determined thereby”, when a description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.
  5. For the drawings, do not use simplistic line charts (e.g., a box with a few smaller boxes inside to represent a computer) or flow charts, but use complex and layered charts.  Provide a detailed hardware diagram, and flowcharts showing the specifics of what is happening. Relate the hardware to the functionality, such as what gets passed and from where to where.  For algorithms, consider having separate diagrams showing the distinct operations of each step in the most general flowchart(s), so that even if the most basic algorithm is determined to be a means plus function limitation, one can argue that the more detailed diagrams and corresponding description provide sufficient structure, and one can also argue that the more detailed diagrams and corresponding description are not merely abstract ideas with nothing more should a 101 rejection be raised.


I have no doubt that there are many other techniques to address the growing use of 112, 6ht and 2nd paragraphs, and different people have different viewpoints.  Not even the judges on the en banc Federal Circuit all agreed when 112, 6th should be used, and in what manner, with the dissent indicating that it will be very difficult in the future to assess the scope of claims in the future based upon the majority’s reasoning.  If they cannot agree, then it cannot be so simple for us practitioners.  We can only do what we feel is best for our clients.

If you have any other techniques to avoid limitations being interpreted as means plus function under 112, 6th paragraph, or to ensure that there is sufficient structure in the specification under 112, 2nd paragraph, please let us know.

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?

Williamson v. Citrix Online Makes One Wonder:  Part 1 of a 2 Part Series

By Michael Stein, Stein IP LLC

July 6, 2015

This is part 1 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.

Up until about 2010 or 2011, very few patent applications, such as in the fields of computers,communications and business methods, were at risk of being deemed patent ineligible because of 35 USC 101.  The same held true of patent claims of issued patents, whether under re-examination or during litigation.  Further, patent eligibility under 35 USC 112, 2nd paragraph (112, 2nd paragraph pre-AIA is the same as 112(b) post-AIA, but for the sake of simplicity, only 112, 2nd paragraph will be used in this article since the present patent was a pre-AIA patent) was rarely raised, whether due to the specific language being deemed indefinite directly or because a claim term was deemed to be a means-plus-function term under 35 USC 112, 6th paragraph (112, 6th paragraph pre-AIA is the same as 112(f) post-AIA, but for the sake of simplicity, only 112, 6th paragraph will be used in this article), and then there was insufficient structure in the specification to render the claim term definite.  Times have really changed.

As set forth in the Mayo v. Prometheus, 132 S. Ct. 1289 (2012), AMP v. Myriad, 132 S. Ct. 2107 (2013) and most recently, the Alice v. CLS Bank,   134 S.Ct. 2347 (2014) US Supreme Court decisions,  it has been held that 101 is a threshold determination as to patent claim eligibility, and then 102, 103 and 112 are to be considered for patentability.  Numerous Federal. Circuit and Inter Partes Review decisions and office actions by examiners have deemed claims to be patent ineligible under 101 in fields like computers, communications, business methods and biotechnology in particular.  New examination guidelines under 101 were issued in 2014 and January 2015 to determine patent eligibility of claims under 101.   Claims that were never previously considered to be at risk of patent eligibility, especially in these fields, are now ripe for attack by examiners or third parties.  But even assuming that your patent claims get through the increased hurdles of 35 USC 101, which is no small feat these days, there is now becoming an increasingly potent alternative attack against the validity of claims using 35 USC 112, 6th paragraph and 2nd paragraph.

How does 112, 6th paragraph, which appears to explicitly provide a path to patent eligibility for means-plus-function claims, come into play with respect to 101 and 112, 2nd paragraph, and is 112, 6th paragraph becoming increasingly used as a hammer to smash the eligibility of patent claims?  To assist in arriving at an answer, one needs to look no further than the en banc Federal Circuit decision of Williamson v. Citrix Online, LLC, 13-1130 (Fed. Cir. 2015) involving US Patent No. 6,155,840 (hereinafter the ‘840 patent).

Analysis of Decision

How does one know if a claim limitation is to be interpreted as a means-plus-function limitation?

Initially, the Federal Circuit pointed out that “to determine whether 112, 6th paragraph applies to a claim limitation, our precedent has long recognized the importance of the presence or absence of the word ‘means’,” citing Personalized Media Comm. V. Int’l Trade Commission, 161 F.3d 696 (Fed. Cir. 1998).

The Federal Circuit continued by saying that “our cases have emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name of the structure.”  The court said that in their opinions in Lighting World 382 F.3d 1354 (Fed Cir. 2004), Inventio AG v. ThyssenKrupp Elevator Americas Corp. 649 F.3d 1350 (Fed. Cir. 2011), Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d (Fed. Cir. 1367), and Apple Inc. v. Motorola, Inc. (757 F.3d 1286), it was established that there was a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to 112, 6th paragraph.

The court then overruled those previous decisions by stating that “such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to 112, 6th paragraph.  The characterization that the presumption of not using the word ‘means’ to indicate that 112, 6th paragraph should not be invoked is strong is overruled, as well as the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”

The new standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name of the structure.”  When a claim term lacks the word “means”, the presumption can be overcome and 112, 6th paragraph will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

Claim 8, which was one of the claims in question, recites:

distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

In its analysis, the court felt that the language was consistent with traditional means-plus-function claim limitations asserting that such phrasing replaces the term “means” with the term “module” and recites three functions performed by the “distributed learning control module.”  Further, the court stated that “module” is a well-known nonce word that can operate as a substitute for “means” in the context of 112, 6th paragraph, as can other generic terms like “mechanism,” “element,””device,” and other nonce words that reflect nothing more than verbal constructs that typically do not connote sufficiently definite structure, citing Mass. Inst. of Tech. v. Abacus Software (Fed Cir. 2006).

Going into further explanation, the court said that the prefix “distributed learning control” does not impart structure into the term “module” and that these words do not describe sufficiently definite structure.  Interestingly, the court then goes to the specification, not initially to determine whether the claim comports with 112, 2nd paragraph, but to determine whether the claim limitation should be construed under 112, 6th paragraph in the first place, even before looking whether the specification provides sufficient structure for the claimed limitation.  The court said that “although the ‘distributed learning control module’ is described in a certain level of detail in the written description, the written description fails to impart any structural significance to the term.  While portions of the claim do describe certain inputs and outputs at a very high level, the claim does not describe how the distributed learning control module interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation in question or otherwise impart structure to the distributed learning control module as recited in the claim.”

The court ignored a declaration by a Dr. Shukri Souri that as one of ordinary skill in the art, he would know exactly how to program a computer to perform the recited function.  The court stated that was not enough, and held that “but the fact that one of ordinary skill in the art could program a computer to perform the recited functions cannot create a structure where none is otherwise disclosed.”  The court said that “we conclude that the ‘distributed learning control module’ limitation fails to recite sufficiently definite structure and that the presumption against the means-plus-function claiming is rebutted,” so this limitation is subject to 112, 6th paragraph. Later, the court indicates that the prohibition against using expert testimony to create structure where none otherwise exists is a direct consequence of the requirement that the specification adequately disclose corresponding structure.

It is very interesting to note that the court went to the specification to determine whether the limitation should be construed under 112, 6th paragraph, particularly in view of the fact that it overturned other claim language interpretations by warning not to read limitations from the specification into the claims and under this analysis, how does one then go on to determine whether the limitation meets 112, 2nd paragraph requirements.  In otherwords, how does the 112, 6th paragraph analysis differ from that of the 112, 2nd paragraph analysis?

To construe a means-plus-function claim term requires a two-step process according to the en banc Federal Circuit.

  1. The court must first identify the claimed function; and
  2. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.

The court agrees with the district court that the specification of the ‘840 patent fails to disclose corresponding structure.  The written description of the ‘840 patent makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer – a general purpose computer programmed to perform particular functions pursuant to instructions from program software, according to the court.

Two issues arise with this analysis.  First, the Federal Circuit, in numerous other cases, goes out of its way to say that many computers, even when performing specific functions, are general purpose computers to invalidate claims under 101.  Now, the court goes to the other end of the spectrum to hold that the claims meet 101, but do not meet 112, 2nd paragraph.  Second, would not every single computer be a special purpose computer under the court’s definition of general vs. special computer?

The court, towards the end of the end of decision asserts “we require that the specification disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, or as a flow chart, or in any other manner that provides sufficient structure.”

The court concludes with “because the ‘840 patent fails to disclose any structure corresponding to the “coordinating” function of the “distributed learning control module,” we affirm the judgment that claims 8-16 are invalid for indefiniteness under 112, 2nd paragraph.

What the Federal Circuit has done is create uncertainty whether any claim limitation invokes 112, 6th paragraph, since the presumption of not using the term “means” is not very strong.  The court has also used the specification to assess whether a claim limitation has sufficient structure in the specification in part 2 of its test for whether 112, 6th paragraph has been invoked, thus seemingly making any analysis whether the claim limitation complies with 112, 2nd paragraph a self-fulfilling prophecy, as the answer has seemingly already been determined in the 112, 6th paragraph analysis.

Still yet further, the court seemingly provides a definition of a special purpose computer so that every computer is a special purpose one, resulting in 101 never being invoked, but from multiple decisions, we know that 101 is very alive and kicking.  It would appear that the aspects that make a claim limitation not be considered 101 ineligible, push the claim limitation straight towards a 112, 6th paragraph interpretation and a 112, 2nd paragraph rejection.

Overcoming these rejections is extremely difficult since the court has used the specification in its analysis and a patent owner is very limited to the extent to which it can amend the specification after filing, unlike amendments that are possible with respect to the claims.

While we hold our breaths and hope that a claim, such as one involving computers, communications or business methods, does not invoke 101, we now must also be concerned that even if we overcome this increasingly higher 101 hurdle, 112, 6th paragraph and 112, 2nd paragraph are coming into play more and more frequently, thereby providing yet additional hurdles thrown in the path of patent applicant and holders to keep their claims valid, and this is even before 102 and 103 are applied. I see more and more office actions where 112, 6th paragraph and 112, 2nd paragraph are cited one after the other, as a basis to reject particular claims of a given application.

It is clear that it is becoming increasingly common for claims to be struck down on issues other than novelty and obviousness and steps should be considered to be taken when drafting patent applications to avoid getting sucked up in the vortices of 101, 112, 6th and 2nd paragraphs, even though the language of these sections of 35 USC has not changed in decades.

So, what is one to do?

Part 2 of this 2 part series of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.