​Rabicoff Law has filed an Amicus Brief in support of Patent Owners, Practitioners, and a Northwestern Professor of Engineering.

An excerpt is provided below, along with a link to the filed brief.

More than three years since the Supreme Court’s decision in Alice,  determining patent-eligible subject matter remains a “difficult exercise” and the “requirements of the Alice analysis” are “still difficult-to-discern.” District courts continue to struggle mightily. In spite of the caselaw applying § 101 developed by this Court, one district court has recently noted that “even post-Enfish, the Mayo/Alice test provides limited practical guidance for distinguishing software and computer patents that are valid under § 101 from those that are not.” This case presents the Court with an opportunity to clarify two areas of confusion among district courts forced to grapple with this “complex and developing area of law.”

The first is a procedural issue dividing district courts: whether a court may decide the subject matter eligibility of multiple claims (and multiple patents) on the basis of one or more “representative claims,” and if so, under what circumstances. This issue has spawned several approaches among district courts, which “have interpreted” this Court’s decision in Content Extraction—which seems to permit the “representative claim” approach under some circumstances—in “numerous ways.” According to one summary of the increasingly heterogeneous approaches to this issue, “[o]ne line of authority” (1) “allows courts to use representative claims only if the parties have agreed on them in advance,” while another (2) approach “place[s] the burden on the patentee to point out flaws in proposed representative claims.”   Still another (3) approach “place[s] the burden on the movant, declining to designate representative claims where the movant has not discussed any non-designated claims in detail,” while a contrasting reading of Content Extraction interprets it to (4) allow courts “to designate representative claims, even absent the parties’ agreement and in the face of the patentee’s specific objections.”   

This brief will argue that the statutory presumption of validity in 35 U.S.C. § 282, read together with 35 U.S.C. § 253 as well as Alice itself, forecloses the use of representative claims to decide eligibility, at least where the patentee objects and points to specific non-representative claims.  Patent-eligible subject matter “must be analyzed on a claim-by-claim basis…like other grounds of invalidity.”  MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264 (Fed. Cir. 2013) (citing Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 942 (Fed. Cir. 1992) (concluding that all grounds of invalidity must be evaluated against individual claims, as required by the plain language of 35 U.S.C. § 282)).  To do otherwise—particularly here where, unlike Content Extraction, the patentee specifically objected to the use of a “representative claim” and pointed to specific, non-representative claims—not only “flies in the face of the presumption of validity” but risks invalidating otherwise patent-eligible claims through a cavalier, once-size-fits-all analysis.  Shelcore, Inc v. Durham Industries, Inc., 745 F.2d 621, 624 (Fed. Cir. 1984).  Such a practice also raises serious due process concerns, as argued infra.    Neither Content Extraction nor this Court’s recent decision in The Cleveland Clinic Foundation v. True Health Diagnostics LLC, 2017 WL 2603137, at *5 (Fed. Cir. Jun. 16, 2017) permit the use of representative claims to analyze eligibility where the patentee identifies specific non-representative claims. To the extent that Content Extraction and Cleveland Clinic can be read to permit such an approach, they may be in conflict with Shelcore, which is the earlier and controlling precedent—and with § 282, which is at the foundation of Shelcore and this Court’s repeated admonitions that validity is to be decided on a claim-by-claim basis.

Second, this case presents this Court with the opportunity to clarify the role of facts in determining whether claims recite an “inventive concept” or merely “conventional” activity at Step Two of Alice.  While Mayo “recognize[d] that “the § 101 patent-eligibility inquiry and” the “§ 102 novelty inquiry might sometimes overlap,” there is significant confusion among district courts as to when evidence supporting novelty “might” be relevant to the eligibility analysis.   For example, district courts are divided on the relevance of post-grant fact-findings to eligibility.  Compare Sophos Inc. v. RPost Holdings, Inc., 2016 WL 3149649, at *12 n. 6 (D. Mass. Jun. 3, 2016) (holding that the PTAB’s finding that patents were “technological inventions” and its denial of CBM review “tends to support [the] conclusion” that the patents were eligible under Step Two of Alice), with Papst, 2016 WL 3196657, at *20 n. 11 (refusing to give weight to a PTAB decision declining to institute IPR because “[n]either a Section 101 challenge generally nor the more specific question articulated by the U.S. Supreme Court [at] the second step of the Alice framework was before the PTAB”); Virginia Innovation Sciences Inc. v. Amazon.com, Inc., 2017 WL 64147, at *11 (E.D. Va. Jan. 5, 2017) (“Although there is some caselaw to suggest that obviousness, novelty, and eligibility inquiries overlap, the most recent persuasive opinions conduct the eligibility inquiry in isolation.”).  And here, contrary to Mayo’s recognition of “overlap,” the district court held that “the question of novelty . . . stands in direct contrast to . . . the question presented before this Court concerning patent eligibility.”  Appx10.  Moreover, it confused whether Appellant’s evidence was submitted in support of eligibility at Step One, when Appellant in fact submitted this evidence with reference to Step Two and raised sufficient factual questions precluding resolution at the Rule 12 stage.  Compare Appx11 (rejecting relevance of evidence to the “question of abstractness” at Step One), with Appx1276-77 (argument by Appellant that evidence from the PTAB and prosecution history was relevant to “conventionality” at Step Two of Mayo/Alice, not Step One).  

This brief will argue that eligibility is best characterized as a question of law based on underlying determinations of fact and, as such, cannot be resolved based on conclusory findings regarding what is or is not “conventional.”  District courts may not substitute their opinion for the perspective of the skilled artisan or decide “conventionality” without evidence of the state of the art at the time of filing.   To ignore that “the concern of hindsight bias has as much relevance to a § 101 challenge as it does a § 103 challenge…would provide a ‘blank check to all those who challenge patents without sufficient legal or evidentiary basis.”   Evidence of novelty during prosecution or post-grant determinations by the PTAB may well support a finding of inventiveness or non-conventionality at Mayo/Alice Step Two, as this Court has recognized.  See Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (evidence of novelty over the prior art during prosecution supported eligibility at Mayo/Alice Step Two). 
​
To a great extent, both these issues were settled by this Court’s opinion in Ultramercial, which was later vacated by the Supreme Court for further consideration in light of Alice.  See Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, (Fed. Cir. 2013), vacated by WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014).  The opinion in Ultramercial made clear that eligibility “must be determined on a claim by claim basis,” that “the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues,” and that “[a]lmost by definition, analyzing whether something was ‘conventional’ or routine’ involves analyzing facts.”  Id. at 1339.  None of these things were contradicted by Alice.  Thus, while this Court read the Supreme Court’s vacatur in Ultramercial to cast doubt on the result in that case, it should not be read to cast doubt on the requirement for claim-by-claim analysis or for the proposition that the “inventive concept” inquiry at Step Two has factual underpinnings.  Indeed, this Court has relied on the “relevant and detailed analysis” of its prior opinions where they were vacated “without explanation,” and their reasoning “has been neither supplanted nor questioned.”   It should do so with Ultramercial here.

Thus, this Court can restore certainty on the issues raised in this case by reiterating the principles stated in Ultramercial, which are fully compatible with the test set forth in Alice.

Download the as-filed Federal Circuit Amicus Brief below.

Recently, the Federal Circuit clarified the injury in fact element necessary to show standing under Article III in Phigenix v. ImmunoGen, No. 2016-1544, 2017 U.S. App. LEXIS 323 (Fed. Cir. 2017). 

Generally, courts have “an obligation to assure [themselves] of litigants’ standing under Article III . . . including when a party appeals from a final agency action.”  In order to bring a case in federal court, parties must meet the three elements for standing: 1) the [appellant] suffered an injury in fact, 2) that is fairly traceable to the challenged conduct of the [appellee] and 3) that is likely to be redressed by a favorable judicial decision. Specifically, the first element, injury in fact, requires an appellant to have an injury that  actually exists or will imminently cause harm.

While Article III standing is not necessary to appear before an administrative agency such as the Patent Trial and Appeal Board (“PTAB”) under 35 U.S.C. § 6(a), appellants must have an injury in fact when seeking review of an agency’s final action in federal court. 

Download a reprint of the full article below. Originally Published in the ISBA IP Newsletter, June 2017, Vol 56 No. 5.

The Supreme Court has granted certiorari in TC Heartland LLC v. Kraft Foods Group Brands LLC, and depending on how the court interprets sections of the Patent Venue Statute and the general venue statute, the number of available venues in patent litigation cases could dramatically decrease.

The case is significant because the Supreme Court must define where a defendant resides under the Patent Venue Statute.

​Depending on the Supreme Court’s interpretation of the Patent Venue Statute, plaintiffs could be prevented from bringing patent infringement cases to district courts commonly known as “rocket dockets,” such as the U.S. District Courts for the Eastern District of Virginia and Eastern District of Texas.

View a reprint of the full Chicago Daily Law Bulletin article below.

The U.S. Court of Appeals for the Federal Circuit recently rejected the Patent Trial and Appeal Board’s understanding of what patents are eligible for “covered business method” review, suggesting that the appeal board had disregarded the standard set by statute.

Only two infectious diseases have been globally eradicated: smallpox and rinderpest. While both diseases caused people to suffer incredibly different symptoms, the diseases had one element in common. Patents protected the vaccines used to treat smallpox and rinderpest. Intellectual property protection has been crucial for several advances in the medical field, due to the high product development costs and chances of competitors copying the developing technologies. As of 2006, the cost of medical devices in the global marketplace exceeded $260 billion, and has only continued to rise.

However, because the production costs of these medical devices and pharmaceuticals are so high, millions of people around the world are unable to obtain necessary healthcare. For example, as of 2014, close to seventy percent of all cardiac pacemaker sales occurred in the United States and Europe, while several countries in Africa and Asia have absolutely no access to pacemakers. In order to respond to this problem, research scientists have begun developing low-cost medical technologies and using intellectual property rights to give people in developing countries access to adequate healthcare.

Continue to IPWatchdog Article

Just recently, the Supreme Court unanimously decided Samsung Electronics Co., Ltd., et al. v. Apple Inc. The case is notable, because it is the first design patent case the Court heard in 120 years.[1] The suit began when Apple sued Samsung for infringing multiple design patents intended to cover the first generation iPhone. The design patents at issue included D618,677, for a black rectangular front face with rounded corners; D593,087, for a rectangular front face with rounded corners and a raised rim; and D604,305, for a grid of sixteen colored icons on a black screen.[2]
 
At the district court, Apple was awarded $399 million dollars in damages for Samsung’s infringement, which was affirmed by the Federal Circuit. The damages calculation was based on the total profit Samsung made from selling its Samsung Galaxy devices as a whole.
 
However, the Supreme Court reversed, finding that an article of manufacture may not be limited to the entire product sold to consumers. The Court opined that under 35 U.S.C. § 289 (“§ 289”), a patent holder recovers the total profit an infringer makes from the corresponding article of manufacture. The analysis for damages under § 289 has two prongs:
 
1) “[I]dentify the ‘article of manufacture’ to which the infringed design has been applied[;]”
 
2) “[C]alculate the infringer’s total profit made on that article of manufacture.”[3]
 
The central issue the Court addressed was whether an article of manufacture “must always be the end product sold to the consumer or whether it can also be a component of that product.”[4]
 
An article of manufacture, according to the Supreme Court, may not only be the final product sold to the consumer, but could also be a component of the final product, to the extent that profits are associated with that component. The Court defined article of manufacture by its dictionary definition: “a thing made by hand or machine.”[5] Accordingly, a component of a final products could be considered an article of manufacture within the meaning of § 289.[6]
 
Finally, the Supreme Court declined to establish a test for identifying the article of manufacture because the parties had not sufficiently briefed that issue.[7] Instead, the Supreme Court left that issue for the Federal Circuit to decide on remand.
 
Until a test is established to determine whether the article of manufacture is either a component of the final product or the final product itself, design patent owners are at risk of being awarded dramatically lower damages under § 289 than before. As a result, design patent prosecution may decrease if clients find their value too low or uncertain.

[1]                   Andrew Chung, U.S. Supreme Court backs Samsung in smartphone fight with Apple, Reuters (Dec. 6, 2016, 1:33 PM), http://www.reuters.com/article/us-usa-court-iphone-idUSKBN13V1XL.

[2]                   Samsung Electronics Co., Ltd., et al. v. Apple Inc., 580 U.S. 3 (2016).

[3]                   35 U.S.C. § 289 (1952).

[4]                   Samsung, 580 U.S. at 5.

[5]                   Id. at 6.

[6]                   Id. at 7-8 (“The Federal Circuit found that components of the infringing smartphones could not be the relevant article of manufacture because consumers could not purchase those components separately from the headphones.”).

[7]                   Id. at 8 (“We decline to lay out a test for the first step of the §289 inquiry in the absence of adequate briefing by the parties. Doing so is not necessary to resolve the question presented in this case . . . .”).

Originally Published in the ISBA IP Newsletter, January 2017, Vol 56 No. 4. Download a PDF of this article below.

Kenneth Matuszewski joins Rabicoff Law LLC as an IP litigation associate and patent attorney. He concentrates his practice on patent and IP litigation.

Before joining the firm, Kenneth was a law clerk and patent agent at Greer, Burns & Crain Ltd., where he worked on all matters of patent prosecution in the life sciences, medical devices, electronics and the mechanical arts. Kenneth also gained experience in patent and IP litigation at Greer, Burns & Crain, and at Innovalaw, P.C. He further worked as an Extern at the Patent Trial & Appeal Board (PTAB) in the United States Patent and Trademark Office (USPTO). While he worked at the PTAB, Kenneth gained valuable insight about the inner workings, processes and procedures of the USPTO.

His many accomplishments include: 

• Best Brief and First Place – Saul Lefkowitz Moot Court Competition 2016(Midwest Region)
• Second Place Overall, Second Best Brief and Second Best Oral Argument– Saul Lefkowitz Moot Court Competition 2016 (National Rounds)
• Winner of the 2016 Ladas Memorial Award – International Trademark Association
• Dolores K. Hanna Trademark Prize, Chicago-Kent College of Law, May 2016
• CALI Excellence for the Future Award: Biotechnology Patent Law, Copyright Law

He has also recently written for a major law journal: Casting Out Confusion: How Exclusive Appellate Jurisdiction in the Federal Circuit Would Clarify Trademark Law, 18.1 W. MICH. U. – COOLEY J. OF PRAC. & CLINICAL L. (Nov. 2016).

Kenneth’s diligence, work ethic, attention to detail and experience in intellectual property inform his practice, and allow him to excel in any situation presented to him.

This is why Kenny's addition bolsters the firm's IP practice, furthers its values, and enhances its ability to obtain positive and cost-effective results for its clients.

Rabicoff Law LLC is an IP and business litigation firm in Chicago. It focuses on representing clients in complex intellectual property disputes, including patent litigation and Patent Trial and Appeal Board trial proceedings. The firm provides flexible fee arrangements to meet clients' unique needs and incentivize best outcomes. The firm has a proven record of success in securing great results for its clients in federal courts and before the U. S. Patent and Trademark Office.