On the Record with Rudy Telscher
Rudy Telscher, a partner with Harness Dickey, represented Octane Fitness in one of the most important patent cases decided by the United States Supreme Court over the last decade. The Supreme Court’s decision in Octane Fitness v. Icon Health & Fitness granted district court judges broad discretion to award attorneys’ fees as they see fit in patent litigation. This decision, and a decision in a companion case (i.e., Highmark, Inc. v. Allcare Health Management System, Inc.) derailed patent reform during the 113th Congress. (more…)
The United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) have recently announced an implementation agreement under which the JPO will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for certain international applications filed with the USPTO as the Receiving Office, under the Patent Cooperation Treaty (PCT). The USPTO and JPO are two of the intellectual property offices authorized to conduct international searches and international preliminary examinations in the PCT system.
The PCT is an international agreement that simplifies the filing of patent applications in its contracting countries. A PCT application has the effect of a national application for a patent in any of the designated PCT countries. International applicants receive an International Search Report and an International Preliminary Report on Patentability to help them determine if an application meets basic patentability criteria before committing to the high cost of translating and entering the national stage in one or more PCT countries.
The agreement took effect on July 1, 2015. The agreement is intended to end on June 30, 2018, but as is typical with these types of bilateral agreements, the USPTO says that it may be continued by mutual written consent.
The addition of JPO as an available ISA and IPEA will allow applicants additional flexibility in choosing an international authority based on the technology disclosed in the international application.
“This latest collaboration between USPTO and JPO exemplifies the cooperative spirit between our Offices and benefits applicants by providing an additional option for examination of their international applications directed to green technology,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle Lee.
Under the agreement, JPO may act as an available searching authority and preliminary examining authority, provided that:
- The applications are submitted in the English language.
- The claims of the application are directed to the field of green technology as defined by certain International Patent Classification classes.
- The JPO has not received more than 5,000 international applications from the USPTO during the three-year period from July 1, 2015 to June 30, 2018, and not more than 300 applications per quarter during the first year, and not more than 475 application per quarter during the second and third years.
- The JPO is chosen as a competent authority by the applicants.
Further details on the use of JPO as an ISA/IPEA for applications filed in the US receiving office, including the International Patent Classification classes which define the field of green technology according to this agreement, will be made available on the USPTO Web site.
While 5,000 international applications seems like a small number, the USPTO has in recent years overestimated the popularity of this type of program. Thus, bandwidth to participate shouldn’t be an issue, at least if past history is any guide.
In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts a practitioner’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that allows users to continue to use a Java plug-in to continue to log into EFS-Web and Private PAIR. This temporary workaround will not last for long, so the United States Patent and Trademark Office (USPTO) has recently advised practitioners that they need to come up with a Plan B if they use Chrome to access EFS-Web and Private PAIR.
According to Google, this temporary workaround will only work through September 2015, when Google Chrome plans to completely end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users who will be using version 45 and above will no longer be able to use the temporary workaround and thus will not be able to log into EFS-Web or Private PAIR after that date.
Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit: How do I use Java with the Google Chrome browser?
Although Firefox, Internet Explorer, and Safari browsers should continue to work with EFS-Web and Private PAIR, the USPTO says that there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. Thus, the USPTO is closely monitoring announcements on upcoming releases of new browsers for any changes. The USPTO has said they will keep the IP Community informed of any news related to this issue. Furthermore, the USPTO says they are investigating whether there are possible strategies to mitigate the impact on practitioners. The Office is also working on a longer-term plan to improve the overall authentication process without compromising privacy and security.
With the end of the Supreme Court’s October 2014 term at hand, I thought it might be interesting to take a journey back to look at two of the biggest patent decisions in recent memory. Today we will focus on obviousness and KSR v. Teleflex.
There is absolutely no doubt that the Supreme Court’s decision in KSR largely took away objectivity, instead supplanting it with a subjective test. Ever since, the Federal Circuit and the Patent Office have struggled to get objectivity back into the test. The Federal Circuit has largely been successful, with at least several notable exceptions. With over 8,500 patent examiners, most of whom are not lawyers, the Patent Office has not been quite so successful, despite their best efforts: Many patent examiners continue to provide conclusory obviousness rejections.
It is hard to oversell the Supreme Court’s decision in KSR International v. Teleflex, simply because the question presented called into question one of the most well-established aspects of United States patent law. The question the Supreme Court invited briefing and argument on was this: “Whether the Federal Circuit has erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. §103(a), in the absence of some proven ‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
Obviousness today is about predictability of results. This is true because, in addressing the foregoing question, the Supreme Court did away with the so-called teaching, suggestion or motivation test. Prior to KSR, if there was no teaching, suggestion or motivation to combine references, the patent examiner could not reject the claimed invention. Today, however, there are other rationales available to the examiner:
- If the invention is a product of combining prior art elements according to known methods to yield predictable results, the invention is obvious.
- If the invention is created through a substitution of one known element for another to obtain predictable results, the invention is obvious.
- If the invention is achieved by using a known technique to improve a similar device in the same way, the invention is obvious.
- If the invention is created by applying a known improvement technique in a way that would yield predictable results, the invention is obvious.
- If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed, the invention is obvious.
- If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art, the invention is obvious.
As you can see, rationales 3 and 4 are virtually identical. All of these also focus on whether the resulting invention was achieved by combining known references in a way to produce predictable results. Thus, the way you must argue obviousness post-KSR is to say that there is no teaching, suggestion or motivation to combine the references and that the resulting combination of elements would not have been understood to produce predictable results by someone of skill in the art.
Of course, the initial framework used for determining obviousness is stated in Graham v. John Deere Co. The test requires consideration of:
(1) Determining the scope and content of the prior art.
(2) Ascertaining the differences between the claimed invention and the prior art.
(3) Resolving the level of ordinary skill in the pertinent art.
(4) Secondary considerations of non-obviousness.
The big problem I have with obviousness after KSR, at least at the Patent Office, is that it is so unevenly applied. That could have been predicted by the Supreme Court retreating from an objective test and instead embracing a subjective test that requires the decisionmaker to focus on whether they believe the results achieved were predictable. Given the KSR test, there is unfortunately no rational way to guarantee that personal opinions and subjectivity is removed from the analysis. This can be easily confirmed just by looking at what happens with respect to software at the Patent Office. In some areas of the Patent Office that handle software-related inventions, everything is obvious, and in other areas, nothing is ever obvious. For example, if the software deals with any kind of GPS navigation system, you simply will not get the same examination that you would receive if your software powers an e-commerce system.
Time will tell where we go from here, but I am of the belief that we now have a modern-day version of the “flash of creative genius” test relative to obviousness.
On May 26, 2015, the United States Supreme Court decided Commil USA, LLC v. Cisco Systems, Inc., a case that dealt with inducement to infringe. More specifically, the issue considered by the Supreme Court was whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. In a 6-2 decision written by Justice Kennedy, the Supreme Court ruled that belief of invalidity is not a defense to a claim of induced infringement.
Justice Kennedy started his substantive analysis with a discussion of direct infringement, which was joined by Justices Ginsburg, Alito, Sotomayor and Kagan. Justice Thomas, who joined in the majority with respect to Parts II-B and III, did not join the majority relative to the background discussion. Justice Thomas did not write a separate opinion so we can’t know for sure, but it seems that Thomas chose not to join parts of the decision that were historical in nature (Part I) and the part of the decision where the majority discussed substantive legal issues not specifically germane to the issue presented.
Moving beyond direct infringement being a strict liability offense, and inducement requiring direct infringement, Justice Kennedy ultimately reached the question presented, namely whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. Kennedy explained: “[B]ecause infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b).” Kennedy concluded: “Were this Court to interpret §271(b) as permitting a defense of belief in invalidity, it would conflate the issues of infringement and validity.”
Kennedy seemed sympathetic to those who argue that an invalid patent cannot be infringed, which seems to make common sense. But he went on to explain that logic and semantics sometimes must give way to interpretation of an otherwise clear statutory framework:
[T]he questions courts must address when interpreting and implementing the statutory framework require a determination of the procedures and sequences that the parties must follow to prove the act of wrongful inducement and any related issues of patent validity. “Validity and infringement are distinct issues, bearing different burdens, different presumptions, and different evidence.” 720 F. 3d, at 1374 (opinion of Newman, J.). To be sure, if at the end of the day, an act that would have been an infringement or an inducement to infringe pertains to a patent that is shown to be invalid, there is no patent to be infringed. But the allocation of the burden to persuade on these questions, and the timing for the presentations of the relevant arguments, are concerns of central relevance to the orderly administration of the patent system.
In addition to the statutory language that Kennedy found clearly on point, he explained that there were also several practical reasons why a good faith defense should not be allowed. For example, if someone believes that a patent is invalid, they should file a declaratory judgment action (assuming they have standing) or could file a petition for inter partes review with the Patent Trial and Appeal Board (PTAB).
Kennedy also specifically explained that the Court is mindful of abusive litigation tactics employed by so-called patent trolls. Raising the issue seemed wholly out of place and a bit odd given that Kennedy also quickly explained that in this case the parties raised no issue of frivolity. The issue of patent trolls must be weighing on the Court very heavily for it to be inserted by Kennedy in a decision where no one was alleged to have been a patent troll.