The Court of Appeals for the Federal Circuit (“CAFC”) recently affirmed standing to challenge a competitor’s patent based on significant investment into and likely use of a potentially infringing product.  The CAFC also vacated a decision of the Patent Trial and Appeal Board (“the Board”), affirming that the standard for whether a prior art reference teaches away requires more than a general preference for a certain design.

Raytheon Technologies Corporation (“Raytheon”) applied for and obtained U.S. Pat. No. 8,695,920 (“the ’920 Patent”), directed to a configuration for a jet turbine engine.  Traditionally, turbine engines contain high- and low-pressure spools, each with a compressor and a turbine.  Conventionally, the engine fan is connected to the same shaft as the low-pressure spool, and thus rotates at the same speed as the low-pressure compressor and turbine.  The ’920 Patent claims a configuration in which a gearbox is mounted on the shaft containing the fan and low-pressure spool, such that the gearbox reduces the rotational speed of the fan compared to the compressor and turbine.  The claims also required the high-pressure turbine to include “at least two stages.”

General Electric Company (“GE”) petitioned for inter partes review of certain claims of the ’920 patent.  GE asserted the challenged claims were unpatentable as obvious over Wendus in view Moxon.  The Board found that Wendus disclosed all of the elements of the challenged claims except the “at least two stages” of the high-pressure turbine, and that Moxon disclosed this remaining element.  The Board ultimately concluded the challenged claims were nonobvious, however, finding that Wendus discussed the tradeoffs between one-stage and two-stage turbines but “specifically chose the one-stage option.”  To the Board, this taught away from the combination of Wendus and Moxon.  GE requested a motion for rehearing, which was denied, and a timely appealed ensued.

Raytheon challenged GE’s standing, arguing it never sued or threatened to sue GE, and that GE failed to establish a concrete and substantial risk of infringement.  The CAFC noted “[w]hen an appellant ‘relies on potential infringement liability as a basis for [standing], but is not currently engaging in infringing activity, it must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or would likely cause the patentee to assert a claim of infringement.’”[1]  This requires the appellant show that it “has engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit.”  The CAFC found GE met this standard based on allegations that it invested $10–12 million in development of a geared turbofan, preferred this design for future sales, and had an informal offer for this engine in an ongoing bidding process, as well as a declaration that it “fully expects” Raytheon to accuse its engine of infringing.

The CAFC next considered the merits of the appeal, first noting “‘[a] reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.’”[2]  The CAFC found the Board lacked substantial evidence to find Wendus taught away from a two-staged turbine, because Wendus merely displayed a general preference for a one-stage turbine and failed to make “a single negative statement about the use of a two-stage high-pressure turbine.”  Similarly, the CAFC found the Board lacked substantial evidence for its findings of no motivation to combine and GE’s failure to establish obviousness as a whole.  Accordingly, the CAFC vacated and remanded.

[1] Quoting JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018), cert. denied, ––– U.S. ––––, 139 S. Ct. 2713, 204 L.Ed.2d 1110 (2019).

[2] Quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056 (Fed. Cir. 2018).

The Court of Appeals for the Federal Circuit (“CAFC”) recently issued a decision providing guidance for analyzing patent eligibility under 35 U.S.C. § 101 when a claim includes limitations directed to “printed matter.”

C.R. Bard., and Bard Peripheral Vascular, Inc. (collectively, “Bard”), and AngioDynamics, Inc. (“AD”) are manufacturers of vascular access ports, which are devices implanted underneath a patient’s skin that allow medical providers to regularly inject fluid into the patient’s veins without needing to start an intravenous line each time. As of 2005, the FDA warned that such devices are approved only when labeled. Bard developed such a label for its ports, described as “… a radiographic marker … etched in titanium foil on the device and a triangular shape and small bumps that were palpable through the skin,” and obtained FDA approval.

AD then sought and obtained FDA approval to market its own ports. Bard sued AD, alleging infringement of several patents containing limitations drawn to the identification label. After trial, the District Court granted AD’s judgment as a matter of law finding the asserted claims invalid under the “printed matter doctrine.” Bard appealed.

“[P]rinted matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is ‘functionally related’ to its ‘substrate,’ which encompasses the structural elements of the claimed invention.” Here, it was undisputed that the asserted claims included printed matter. Thus, the CAFC solely evaluated whether the printed matter was functionally related to the remaining claimed elements. To support its position, Bard contended that “the information conveyed by the markers provides new functionality to the port because it makes the port self-identifying.” The CAFC disagreed, finding that such a position would “eviscerate” the doctrine and holding that the content conveyed by the markers was not entitled to patentable weight. 

In a matter of first impression, the CAFC addressed the applicability of the printed matter doctrine to 35 U.S.C. § 101.[1] A two-step Alice evaluation governs the § 101 analysis: (1) whether the challenged claims are directed to a patent ineligible concept, and if so; (2) whether the challenged claims add an inventive concept sufficient to transform the claims into a patent-eligible application.[2] The CAFC explained that a claim may be found patent ineligible if “directed solely to non-functional printed matter” and the claim lacks an inventive concept.

The CAFC found the claims were not solely directed to printed matter, because “the focus of the claimed advance is not solely on the content of the information conveyed, but also on the means by which that information is conveyed”—specifically, “allow[ing] the implanted device to be readily and reliably identified via x-ray … .” Further, the CAFC found the evidence was insufficient to establish the claims lacked an inventive concept because the “evidence did not establish that radiographic claimed marking was routine and conventional … .” Thus, the CAFC found the asserted claims patent eligible.

Given the printed matter doctrine’s focus on conveying information, the CAFC compared Bard’s claims to those assessed in several recent cases dealing with data transmission patents. Thus, the CAFC may be suggesting an approach for practitioners to conquer Alice by focusing claims on the nonroutine method by which information is transmitted and highlighting the ways in which that method improves the functionality of the claimed technology.  

[1] Historically, the printed matter doctrine was used to conclude that certain limitations were not entitled to patentable weight in assessing novelty and obviousness under 35 U.S.C. §§ 102 and 103.

[2] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 218–221 (2014).

The Eastern District of Michigan granted a preliminary injunction against dental instrument supplier UL Amins Industries and Hammad Ashiq (“Defendants”) for allegedly selling counterfeit dental bur kits that infringe plaintiffs’, Versah LLC’s (“Versah”) and Huwais IP holding’s (“Huwais”), copyrights and trademarks.[1]  The court decided the Plaintiffs were able to demonstrate a likelihood of success on the merits of their copyright and trademark claims (but not their trade dress claim), irreparable harm absent an injunction, and that the public interest would be served by an injunction.  The court also granted an asset restraining order preventing Defendants from accessing any assets in the PayPal account associated with the infringing activity, as well as expedited discovery to determine if any additional PayPal accounts were linked to the infringing activity.

Huwais is the owner, and Versah the exclusive licensee, of the “DENSAH” trademark, two registered copyrights, and the claimed trade dress for a dental bur kit, which are a set medical tools which help dentists prepare bones for the insertion of dental implants during oral surgery.  Plaintiffs asserted claims of copyright and trademark infringement, state and federal unfair competition, and an unfair competition claim based on its trade dress against the Defendants along with a motion seeking injunctive relief.  Versah alleged Defendants sold and offered to sell “copycat and counterfeit products” which were “low quality” products that posed health risks to customers, used Plaintiffs’ copyrighted images, and that these products caused brand confusion.

A preliminary injunction hearing was held, but Defendants neither attended nor otherwise opposed the motion.  In addressing the four factors of a preliminary injunction request, the court first noted that it was undisputed the Plaintiffs owned copyrights related to instructions for using the bur kit and the bur kit’s silhouette.  Further, the evidence showed that the Defendants copied verbatim whole sentences from Plaintiffs’ work, and only changing the font, thus showing a likelihood to succeed on the copyright claims.  The trademark and general unfair competition claims were likely to succeed based on the Defendants’ continued unauthorized use of the mark and an email indicating actual confusion had occurred.  The court did not find a likelihood to succeed on the trade dress claims because Plaintiffs failed to identify with particularly the discrete elements of their trade dress, and did not provide any evidence the packaging was distinctive, nonfunctional, or confusing similar.  

Next, the court noted that in the Sixth Circuit, when a plaintiff makes a strong showing of likelihood of confusion, irreparable harm follows as a matter of course.  It further held that Plaintiffs presented “ample” evidence of irreparable harm, including that Defendants’ products were unsafe and confusion had already occurred.  The court also found that any harm to the Defendants would be limited since they were not being forced to cease all business operations, merely made to stop selling the products at issue.  The court found that an injunction served the public’s interest as well, especially in light of the evidence that the Defendants’ products included manufacturing defects that could cause harm to the public’s health and safety.  In weighing all four factors, the court found a preliminary injunction was warranted.  Finally, the court found sufficient evidence existed to grant an asset restraining order and expedited discovery into additional PayPal accounts associated with the infringement.

[1] Versah, LLC, & Huwais IP Holding LLC, v. UL Amin Indus., & Hammad Ashiq., No. 220CV12657TGBRSW, 2020 WL 7241053, at *1 (E.D. Mich. Dec. 9, 2020).

On December 7, 2020, Japanese-based Hamamatsu was ordered by the Court of Appeals for the Federal Circuit (“CAFC”) to transfer ownership of their U.S. and foreign patents to Harvard University-backed SiOnyx. In light of the terms of the parties’ nondisclosure agreement (NDA), the Federal Circuit held that the lower court erred by not awarding SiOnyx sole ownership of foreign patents for “black silicon” technology at the same time that SiOnyx was awarded sole ownership of related U.S. patents.

On January 7, 2007, SiOnyx entered into the NDA with Hamamatsu, which makes silicon-based photodetector devices, and shared confidential information about joint development opportunities for pulsed laser process doped photonic devices.  The NDA included a provision that the disclosing party claims ownership of the information and all patent rights “in or arising from” the information.  After the nondisclosure agreement ended, on January 12, 2008, Hamamatsu worked independently to develop a “black silicon” photodiode. While doing so, Hamamatsu referred to prototype work done with SiOnyx in an internal report. On February 24, 2009, Hamamatsu filed several patent applications relating to photodetector devices in Japan and several other countries, including the United States.

Among other things, SiOnyx sued Hamamatsu to contest ownership of the U.S. and foreign patents and to seek a judgment that Hamamatsu had breached the NDA. In the District Court of Massachusetts, the jury found that Hamamatsu breached the NDA when it referred to SiOnyx’s confidential information in the internal report and that SiOnyx co-invented the material claimed in the disputed U.S. patents.  In post-trial motions, SiOnyx asked the district court to grant SiOnyx ownership of all disputed patents as a remedy for Hamamatsu’s NDA breach. The court granted SiOnyx’s motion for the U.S. patents but denied the motion for the foreign patents.

On appeal, SiOnyx contended that the district court erred because the same evidence that established its ownership right in the U.S. patents established its ownership right in the foreign patents; further, the court had authority to compel the transfer of ownership. The CAFC agreed with SiOnyx that the evidence that established SiOnyx’s right to sole ownership applied to both the disputed U.S. and foreign patents.  As the CAFC noted, “it is elementary that inventorship and ownership are separate issues.” Despite Hamamatsu being the primary inventor of the claimed device, the NDA provided that ownership of patents arising from confidential information exchanged under the NDA would be claimed by the disclosing party. Without evidence that Hamamatsu had contributed confidential information under the NDA, Hamamatsu was not entitled to co-ownership of the patents.

Thus, the CAFC affirmed the district court’s decision granting sole ownership of the disputed U.S. Patents and reversed the district court’s decision denying SiOnyx sole ownership of the disputed foreign patents.  As this case makes clear, execution of and adherence to the terms of NDAs can have a profound effect far into the future.  The importance and impact of NDA terms on subsequent intellectual property rights should not be underestimated and should be considered carefully when engaging in confidential discussions with others that involve one or both parties disclosing potentially patentable information and technologies.

The Court of Appeals for the Federal Circuit (the “CAFC”) held that the Patent Trial and Appeal Board (the “PTAB”) properly considered evidence submitted with the Petitioner’s reply supporting the prior art status of references relied upon in its petition for inter partes review.  Thus, the CAFC upheld the PTAB’s determinations in favor of the petitioner, Twitter, Inc., that the claims of U.S. Patent No. 9,083,997, owned by VidStream LLC, were invalid as obvious.

The challenged patent was filed on May 9, 2012.  The asserted prior art, several pages of a book (the “Bradford reference”) was submitted by Twitter with a copyright notice page indicating that copyright was registered in 2011.  Following institution of inter partes review, Vidstream argued that the copy of the Bradford reference submitted with Twitter’s petition bore a publication date of December 13, 2015.  On reply, Twitter advanced substantial evidence showing that copies of the reference were publicly accessible in 2011. These included a copy of the Bradford reference from the Library of Congress, the testimony of an expert in library cataloguing that it would have been publicly available and indexed no later than December 4, 2011, attorney testimony that the Library of Congress copy was identical in relevant part to that submitted with the petition, and two webpages archived by the Internet Archive’s Wayback Machine in 2011 showing the Bradford reference as available for purchase.

One might have expected this mountain of evidence to resolve the publication date dispute, but VidStream remained unsatisfied.  Relying on the PTAB Trial Practice Guide’s statements that “petitioner’s case-in-chief” must be made in the petition, and that the “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier[,]” VidStream moved to exclude Twitter’s evidence as neither timely submitted nor probative because it did not pertain to the version of the Bradford reference submitted with the Petition.  The PTAB and CAFC both rejected VidStream’s arguments, finding that Twitter was allowed to respond to VidStream’s challenge of its prior art with supporting evidence and that this evidence did properly corroborate the prior art status and public accessibility of the Bradford reference (which Twitter explained was a reprint).

Following in the wake of the PTAB’s precedential decision in Hulu, LLC v. SoundView Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019), which clarified the evidentiary standard for instituting post-grant proceedings on printed publication prior art, the CAFC’s decision in Twitter addresses the next step, confirming that reply evidence of public accessibility should be considered.  It further confirmed that a reference’s prior art date in instituted post-grant proceedings does not depend upon when the specific copy submitted with the petition was published. This alleviates the expense and waste involved in submitting every possible piece of evidence of publication with the petition (before any real dispute materializes).  The decision engenders confidence that post-grant proceedings turn upon the apparent correct answer in view of the totality of the evidence rather than on pedantic over-application of rules, guidelines, and evidentiary defects.

Changing the future of Hatch-Waxman litigation, the Federal Circuit held as a matter of first impression that for purposes of venue under Hatch-Waxman Act claims, acts of infringement occur where actions related to the Abbreviated New Drug Application (ANDA) submission occur. Thus, a plaintiff has only two options to file suit (1) where the pharmaceutical defendant is incorporated or (2) where it performed actions related to its ANDA submission. The Federal Circuit thus affirmed the dismissal of claims based on improper venue.

The Supreme Court’s holding in T.C. Heartland narrowed possible patent venues to two: (1) where a corporation is incorporated and (2) where acts of infringement occur and the corporation has a regular and established place of business. For Hatch-Waxman litigation, the question then arose as to where infringing acts occur under the patent venue statute.

In September of 2018, Valeant filed suit against Mylan in the District of New Jersey due to Mylan’s ANDA submission to market a generic version of the drug “Jublia.” The ANDA submission was sent from Mylan’s West Virginia office to the FDA. Valeant alleged several connections between Mylan and New Jersey. The next day, Valeant also filed suit in the Northern District of West Virginia. Mylan moved to dismiss the New Jersey suit on the basis of improper venue, because no Mylan defendant resided in New Jersey, and the only infringing act—the ANDA submission—did not occur in New Jersey. Valeant argued that an act of infringement under the patent venue statute should not be limited to an ANDA submission—rather, the court should also consider the alleged infringer’s planned future infringing conduct.

The district court agreed with Mylan. Because the ANDA was submitted from West Virginia, proper venue was in West Virginia. Further, planned future acts are not relevant to unambiguous wording of the patent venue statute. On appeal, the Federal Circuit considered past district court decisions grappling with the question. Under the Hatch-Waxman Act, an act of infringement is defined as submitting an ANDA for a drug claimed in a patent if the purpose of the ANDA is to get approval to manufacture, use, and sell the drug. Thus, the only act of infringement in the Hatch-Waxman context is the ANDA submission, and the litigation does not “turn potential future acts into past infringement.”

With the Federal Circuit further narrowing potential venue choices under the Hatch-Waxman Act, pharmaceutical companies will be forced to bring their claims in only two possible locations: where the alleged generic infringer is incorporated or where the submitter commits actions related to its ANDA submission. Previously, the majority of such litigations were instituted in New Jersey and Delaware, where most giant pharmaceutical companies are located. Now, however, this case provides generic companies the opportunity to control venue of a possible lawsuit by deliberately and thoughtfully choosing where they engage in any ANDA-related activities. As such, this case potentially opens the door for more and varied law to be created by the new courts that likely will be asked to weigh in on Hatch-Waxman issues.

The U.S. Court of Appeals for the Federal Circuit (the “Court”) recently reaffirmed the standard for determining whether cited prior art is “analogous.”  Donner Technology, LLC (“Donner”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 6,459,023 (“the ’023 patent”), challenging various claims as obvious under 35 U.S.C. § 103.  The ’023 patent involved guitar effects pedals, which are electronic devices that affect the amplified sound of a guitar.  Donner’s challenge hinged on the teachings of Mullen,[1] which was directed to electric relays.  Mullen provided “an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various control circuits.”  The Patent Trial and Appeal Board (the “Board”) rejected Donner’s challenge, finding Mullens non-analogous.  Donner appealed.

On appeal, the Court explained that two tests exist to define the scope of analogous prior art: (1) “whether the art is from the same field of endeavor, regardless of the problem addressed;” and (2) “whether the reference … is reasonably pertinent to the particular problem with which the inventor is involved.”[2]  If either inquiry is answered in the affirmative, then the reference is analogous.  It was undisputed that the two patents were from unrelated fields.  Thus, the Court’s sole inquiry was whether Mullen was pertinent to the particular problem of the ’023 patent. The Court found that the Board erred in its analysis of whether Mullen is analogous art.  The Court noted that, despite the Board’s findings to the contrary, Donner submitted expert testimony explaining “what would have compelled the pedalboard inventor in 1999 or 2000 to consider potential solutions arising from early 1970s-era relay technologies.”  This oversight led the Court to question “whether the Board meaningfully considered all … arguments and evidence.”

Furthermore, the Court found that even if such evidence was considered, the Board misapplied the legal standard.  Specifically, “the Board’s articulation of the purpose of or problem to be solved … is so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field.”  The Court explained that the analysis “must be carried out from the vantage point of the PHOSITA[3] who is considering turning to the teachings of references outside her field of endeavor.”  The Court noted the Board’s finding notwithstanding the Board’s acknowledgement that “pertinent similarities” may exist between Mullen and the ’023 patent.  The Court took issue with the Board’s finding, explaining that “if the two references have ‘pertinent similarities’ such that Mullen is reasonably pertinent to one or more problems to which ’023 patent pertains, then Mullen is analogous art.”  Accordingly, the Court vacated and remanded for consideration of the proper analogous art standard.

As this case makes clear, it is permissible to reach beyond a patent’s field of endeavor when searching for invalidating prior art; however, doing so comes with inherent risks.  When doing so, it is important to submit supporting evidence (e.g., expert testimony) detailing why a prior art reference is analogous art if there is any question whether the prior art is from the same field as the patent being challenged.

[1]  U.S. Patent No. 3,504,311

[2]  In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

[3]  The acronym PHOSITA is short for a “person having ordinary skill in the art.”

Floyd Mayweather, the infamously elusive twelve-time world champion boxer, caught a stiff jab from the Trademark Trial and Appeal Board (“Board” or “TTAB”)’s rejection of his “PAST PRESENT FUTURE” (“the Mark”) on grounds that it could not function as a source identifier.  The Board found that the Mark failed to function as a trademark because it would be perceived by the public not as an indicator of source, but rather as a commonplace term or phrase used by a variety of sources to convey a concept. 

Mayweather founded Mayweather Promotions, LLC in 2007.  On September 10, 2015, the company applied for the Mark (originally with periods, as “PAST. PRESENT. FUTURE.”) for use on T-shirts, as well as for the mark “PAST, PRESENT & FUTURE OF SPORTS & ENTERTAINMENT” for online retail sales of sports apparel, clothing, and hats.  The Examining Attorney rejected both marks as commonplace expressions frequently used “to refer to describe or recount the general history/background, the current state[,] and the direction/projection of a person, animal, idea, or concept in a lineal fashion based on a timeline.”  As such, consumers would perceive the marks as expressing a message rather than indicating the source of goods.  Although the PTO maintained its rejection of the shorter Mark, it dropped its opposition to the longer-form mark, which was subsequently registered on the Principal Register.

On appeal to the Board, Mayweather argued that the Mark was associated with his boxing career and promotion company; the relevant public consists of sports fans who associate the Mark with Mayweather; his investment of significant resources in promoting goods and services featuring the Mark; and that the Mark has become highly distinctive among the boxing and fans through Mayweather’s use of it.  The Board disagreed, finding that Mayweather Promotions failed to submit evidence supporting any of these assertions (or even any connection between Mayweather Promotions and Floyd Mayweather’s boxing career), the relevant public was not limited to sports fans but rather all potential purchasers of T-shirts, and, regardless, there was too much evidence of third-party use of the phrase for the message it conveyed.

As evidence that such slogans do function as source indicators in the sports industry, Mayweather pointed to the PTO’s prior allowance of trademarks on slogans for other sports-related companies, as well as the PTO’s allowance of Mayweather’s longer-form mark.  However, the Board rejected these arguments as “irrelevant” on the basis that these other marks comprised different wording, “and regardless, the prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the [Board],” as “the Board must decide each case on its own merits.”  Ironically, by designating this decision as “precedential,” the Board made it relevant to any future application similarly seeking registration of a familiar phrase the public may associate with the message. 

The Board’s designation of this decision as “precedential” puts future applicants on notice that marks consisting of familiar phrases may be rejected for failure to function as trademarks.  At the very least, applicants seeking such marks should be prepared to produce evidence that the relevant public understands the mark to be an indicator of source.  All that said, and even though the Board has Mayweather Promotions down for the count, there is still the possibility of appeal.  This bout may not be over just yet.

The Patent Trial and Appeal Board (the “Board”) recently precluded the use of multiple online references in a validity challenge due to poor indexing.  According to the Board, the lack of organization and search capabilities precluded these references from being deemed “publicly accessible” for use as prior art “printed publications.”

Microsoft filed a petition for inter partes review (IPR) seeking to invalidate two challenged claims of a patent owned by Uniloc 2017 LLC.  The patented technology concerns central radio control in the presence of multiple different networks supporting different wireless devices on different wireless protocols.  Microsoft’s obviousness challenge depended on three internet articles on the Institute of Electrical and Electronics Engineers Standards Association’s website as well as a patent from 2005.  For the internet articles to qualify as prior art “printed publications,” Microsoft needed show they were “publicly accessible,” which requires that someone with ordinary skill in the art would have been able to locate it with reasonable diligence.[1]  When a challenger’s evidence is on the internet, it is key that it show that the information was organized, indexed, searchable or otherwise made available for interested persons to have access to it with a reasonable effort.[2]  Microsoft argued the internet references were publicly accessible because they were stored in the website’s index:

If the low resolution snippet of the documents’ online home doesn’t indicate it enough, the “so-called index[,]” per the Board’s not-so affectionate nickname, was not organized by subject matter and was merely an obtuse, chronological list of article titles with no indicated search capabilities.  This, the Board reasoned, doomed all three of the references located on this website from being used as evidence of obviousness because the average interested person would not normally be motivated to search this abstract list by hand and fish out the relevant articles to render the patent obvious. 

Microsoft ultimately prevailed, because its remaining evidence of invalidity was a patent and therefore, by its nature, publicly accessible. This case, however, highlights that the mere availability of references on the internet is insufficient if they are not reasonably accessible, as evidenced by searchability, indexing, and organization. 

[1] SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).

[2] Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1381 (Fed. Cir. 2012) (holding that a website with some searchability even without extensive indexing was sufficient for evidence of obviousness to be publicly accessible); But seeAcceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018) (finding that a showing of “meaningful” and “functional” indexing and searchability constituted substantial evidence of a publicly accessible reference).


Despite the splintered, three-opinion decision issued by a Federal Circuit panel in July,[1] the Federal Circuit, on October 20, denied Baylor College of Medicine’s petition for rehearing, either by the panel or en banc.  In the original decision, the Federal Circuit held that due to Eleventh Amendment sovereign immunity, the University of Texas (“UT”) could not be involuntarily joined by its licensee, Gensetix, as a plaintiff to a patent infringement lawsuit.  Nonetheless, despite prior case law finding that a patent owner (or someone with substantially all rights to the patent) is a necessary party, the Federal Circuit reversed the lower court to allow Gensetix to proceed on its own with the patent infringement action against Baylor College of Medicine. 

On the issue of state immunity, Gensetix argued that because the case was not against UT, the text of the Eleventh Amendment provided no barrier to joinder.  Relying on Supreme Court precedent, the Federal Circuit rejected that argument.  The Court explained that the Eleventh Amendment is broader than its terms and that “[i]t is immaterial that there are no claims against UT, or that UT is named an involuntary plaintiff rather than an involuntary defendant.  The Eleventh Amendment serves to prevent ‘the indignity of subjecting a State to the coercive process of judicial tribunals’ against its will.”[2]  In the absence of a state voluntarily availing itself of federal court jurisdiction, or an express waiver of sovereign immunity, Rule 19(a) must yield to the state’s assertion of sovereign immunity.  Accordingly, the Court concluded that Rule 19(a)(2) could not be used to drag an unwilling UT into federal court.[3] 

On the issue of whether the plaintiff could proceed absent a necessary party under Rule 19(b), the Federal Circuit said yes, reversing the lower court’s ruling on that issue.  The lower court abused its discretion by not properly analyzing the four-part Rule 19(b) test to determine whether “in equity and good conscience” the action should proceed or be dismissed.[4]  Instead, the district court reduced those factors to a single dispostive fact—that UT had sovereign status. 

The four factors that should have been addressed were: (1) the extent to which a judgment rendered in the party’s absence might prejudice that party or existing parties; (2) the extent to which any prejudice could be lessened or avoided; (3) whether a judgment rendered in the party’s absence would be adequate; and (4) whether the plaintiff would have an adequate remedy is the action were dismissed for nonjoinder.  In a proper, nuanced inquiry, the factors would lead to the action proceeding without UT.  Gensetix held an exclusive license in every field, making UT’s and Gensetix’s interests identical.  As such, Gensetix’s protection of its own interest would also protect UT’s interest, with any prejudice to UT being minimal.  There was no risk of multiple suits because, under the express terms of the parties’ license, UT may not sue once Gensetix has commenced litigation.  And, as an exclusive licensee with less than all substantial rights in the patents-in-suit, Gensetix could not enforce its patent rights without the court allowing the suit to proceed in UT’s absence.  Because the lower court abused its discretion, the Federal Circuit reversed allowing the suit to proceed in UT’s absence. 

This case underscores the importance of careful license drafting, especially when the licensor is a sovereign entity. 

[1] Judge O’Malley wrote the majority opinion.  Judge Newman agreed with Judge O’Malley that the action could proceed without UT, but disgreed that UT had Eleventh Amendment sovereign immunity from joinder.  Judge Taranto agreed with Judge O’Malley that UT should not have been joined but dissented from the majority opinion that the action should have proceeded in UT’s absence.

[2] Gensetix, at *10.

[3] When it comes to suits between private parties, Gensetix correctly asserted that a patentee who refuses to voluntarily join can be involuntarily joined as a plaintiff under 19(a).  But the same does not hold true for states.

[4] Fed. R. Civ. Pro. 19(b).