Appeal Board Denies Livestock Patents, First of Its Kind


On Monday, June 13, 2016, the Patent Trial and Appeal Board issued its first ever post-grant review decision under the America Invents Act.  The Board invalidated two patents challenged by Husch Blackwell client American Simmental Association, a national cattle breed association representing the interests of Simmental cattle breeders in the United States. The ASA successfully argued that two previously issued patents which sought to protect a method of determining the relative market value of feeder cattle based upon genetic merit and physical traits of the animals constituted non-patentable subject matter. The Board agreed and stated that the challenged patents’ methodology were “fundamental concepts” that were “long prevalent in our system of commerce” and that some of the patents’ claims would have been obvious to a person familiar with the relevant technology based on previous inventions.

More information on the first-of-its-kind ruling, Husch Blackwell’s involvement and a link to the Law360 article can be found on our website.


TTAB Proposes Sweeping Changes to Practice Rules –Time To Be Heard

Business man shout on the building rooftopThe U.S. Patent and Trademark Office recently published a notice of proposed changes to the rules of practice before the Trademark Trial and Appeal Board (TTAB), particularly to trademark application oppositions and registration cancellation proceedings. These proposed rule revisions, the first proposed by the PTO in the past decade, could have significant impact on practice before the TTAB.  Although this Blog is dedicated to local rules at the district court level, we nonetheless thought it appropriate to address the TTAB’s proposed rule changes and remind you of the opportunity to be heard on the subject.  Public comment on these proposed changes are due by June 3, 2016, so if you have thoughts or input on the proposed rule changes, do not delay.

The proposed amendments to TTAB practice are all the more significant as they come just a year after the Supreme Court’s B&B Hardware decision, providing that TTAB findings can have preclusive effect in later federal court litigation. The PTO suggests that its proposed amendments, the highlights of which are outlined below, are intended to provide more efficiency in TTAB proceedings and to harmonize the TTAB’s rules to current practice and technological advances over the past several years.

A full copy of the PTO’s proposed rules changes can be found here. Continue Reading

New Rules For AIA Review Proceedings Intended to Provide More Federal Court Style PTAB Trial Practice


The U.S. Patent and Trademark Office (“PTO”) this week published its highly anticipated Notice of Amendments to the Rules of Practice for Trials before the Patent Trial and Appeal Board (“PTAB”). 81 FR 18750. Although directed solely to proceedings before the PTAB, we thought the rules changes worthy of mention in this blog. The amendments take effect May 2, 2106, and will apply to all AIA petitions filed on or thereafter. However, the amended rules also apply to “any ongoing AIA preliminary proceeding or trial” currently before the Office, meaning that each of the amended rules will apply to any filing in a pending PTAB matter on or after May 2. Below we have identified some of the more significant aspects of the rules amendments.  Practitioners should take note of how these amendments will begin impacting their pending PTAB cases in less than a month.

Briefs Move to Word Count Instead of Page Limit

In a move that should benefit both the parties and the PTAB, the amended rules change many of the limitations for paper submission in AIA proceedings from a page count to a word count. Under the amended rules inter partes petitions and responses may now be 14,000 words rather than the previous 60 pages. Post-grant review petitions and responses may contain 18,700 words (instead of 80 pages) and replies may be as many as 5,600 words instead of 25 pages. The amended rule also excludes from the word count the grounds for standing and mandatory notices under 37 CFR 42.8. Briefs for other motions, however, remain governed by page limit.

The PTO believes this change will allow for administrative efficiencies, particularly because use of word count will no longer necessitate administrative review to determine whether claims charts improperly contain argument. This change should also promote better advocacy as it will allow parties to make more use of figures and provide more flexibility to petitioners and patentees in how they want to brief their claims.

Patentee Testimony Allowed at Preliminary Stage

In keeping with an issue raised in its initial notice, the amended rules now allow a patentee to file testimonial evidence with its preliminary response. An important caveat, however, is that even where the patentee has done so, the PTAB will institute the proceeding if there is any factual conflict between the patentee’s testimony and the petition. The PTO believes that this move will ensure that the petitioner has the opportunity to cross-examine the patentee’s declarant at trial.

Option to Argue For a Phillips Claim Construction

Under the new rules, the PTAB will continue to use the “broadest reasonable interpretation” standard when construing patent claims. However, in response to comments from stakeholders, the PTO has enacted amendments allowing either party to file a motion requesting use of the standard used during district court claim construction in cases where the patent is set to expire during the pendency of the AIA review. This revision may be much ado about nothing, however, given the Supreme Court’s grant of certiorari in Cuozzo to determine whether the PTAB may construe claims of an issued patent based on their broadest reasonable interpretation rather than according to their plain and ordinary meaning.  

Practitioners Bound to Rule 11-Type Certifications

Finally, the PTO’s amendments also touch on the duty of candor under 37 C.F.R. 42.11. The amended rules implement Rule-11 type certification for any papers filed with the PTAB and outline procedures for imposing sanctions aimed at giving the PTO more robust means for policing misconduct. Akin to Rule 11’s safe-harbor provision, the amended rule also allows a party 21 days to cure an alleged violation after it is served with a proposed motion for sanctions. The Office sees these amendments as preventative and deterrent by design, yet nevertheless necessary to provide greater detail on the expectations of PTAB practitioners and parties.

It remains to be seen how the new PTO rules amendments will play out in AIA review proceedings before the PTAB. Nonetheless, the new PTO rules should inch PTAB proceedings one step closer to the type of proceeding practitioners have come to expect in federal district court patent litigation. We will continue to monitor developments in this area and keep you up to date on any future amendments or PTAB rulings interpreting the amended rules. For more immediate information on this topic, please contact Mike Annis or Andy Gilfoil.

N.D. Cal. Limits Claim Construction To 10 Terms

california_county_mapJudge Beth Freeman.color.small2000px-US_DC_NorCal.svg

Judge Freeman from the Northern District of California reminds us that the court’s local patent rules limit parties to 10 terms for claim construction, in Nortek Air Solutions, LLC, v. DMG Corp., No. 14-CV-02919-BLF, 2015 WL 6674705 (N.D. Cal. Nov. 2, 2015). The case involves HVAC systems for commercial, industrial, and institutional buildings. In a Markman order issued Monday, Nov. 2, 2015, the Court identified 10 terms to be construed, but noted that Defendants had previously identified 31 additional terms (for a total of 41 terms) that it argued required construction. The Court declined, noting:

Rule 4-3(c) of the Patent Local Rules states that the parties shall identify “up to a maximum of 10” claim terms for construction. Patent L.R. 4-3(c). Accordingly, the Court DENIES Defendants’ request to construe an additional 31 terms.


It is worth considering why the court would decline to address questions a party wants to put before it about claim language. The Court did not suggest the asserted issue about the proper construction of those other terms was in any way frivolous, or not genuine. More than likely some room for disagreement existed about the meaning of those other 31 terms that defendants asked the court to construe, and plaintiffs probably were not willing to stipulate to the exact definition that defendants wanted.

The short answer (and the reason for provisions like this in local parent rules limiting terms for construction, or the number of claims the patentee may assert, or the number of prior art references the defendant may cite) is that judicial resources are finite. Doubtless the Court, in general, wants to reach the best decision it can while operating within the constraints on the time and resources available to it on each given matter. But those constraints may necessarily narrow the Court’s focus to only some of the potential issues it could otherwise consider.

US08414251-20130409-D00020One of the concepts described in the patents at issue in the case is constructive and destructive interference of sound waves from multiple fans arranged in a matrix grid. Similarly, when considering the different parts of a case, we have to keep in mind that arguments from one issue may resonate through to the discussion of another, and try to emphasize the points that will amplify, not dampen, the theme of the case overall.

Of course, one step in zealously representing the client’s interest would be analyzing the patents carefully to identify nuances of meaning that can help shade the case in favor of one’s client. Having done so, however, the advocate will also recognize that not every arguable difference is equally important. Focusing more effort and attention on the terms, the claims, and the art that will give the most bang for the buck is also critical to zealous and effective advocacy.

Why local patent rules?

Local patent rules are special.

Local rules, standing orders, and the like are essentially oversight provisions in the interest of sound judicial administration.  For most kinds of litigation, provisions like these reflecting local custom and practice and are subject to the supervisory jurisdiction of the regional circuit court of appeals, which can provide a modicum consistency at least within a circuit.

Patent cases, of course, are not subject to the oversight of the regional court of appeals.  Moreover, the Federal Circuit early on eschewed the exercise of supervisory authority over the district courts. [1] Districts courts already answer to their regional courts of appeal on matters of judicial administration, and the Federal Circuit hesitates to intrude on that relationship.

The landscape for local patent rules

District Court Map

But despite the frequent admonition that the trial of a patent case should proceed like any other [2], patent cases are stubbornly different. The cases include special purpose proceedings like Markman hearings for claim construction. The Administrative Office of Courts and Federal Judicial Center offer special judicial training and resources for patent cases. Pleadings in patent cases have been a topic of intense discussion, and were one of the factors in the decision to do away with the forms from the rules effective December 1, 2015. These special requirements and procedures give rise to the need for special rules applicable to such cases.

Local patent rules, and the cases interpreting them, deserve special attention in the national conversation.  It is where the rubber meets the road in the practical world of patent litigation. If patents matter for your business, insight into how litigation plays out at the local level is critical.

[1] See C.P.C. v. Nosco Plastics, Inc., 719 F.2d 400, 401 (Fed. Cir. 1983) (“The Federal Court Improvements Act, Pub. Law 97–164, provided jurisdiction in this court over appeals from district court judgments in certain cases. It provided no supervisory authority over any district court, such as might justify a writ of mandamus under certain circumstances.”).

[2] E.g., SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (“The Federal Rules of Civil and Appellate Procedure and of Evidence are and should be applied in patent cases no differently from their application in any other type of case.”).

Court Finds That Adverse Markman Ruling Does Not Automatically Establish Good Cause to Amend Contentions

            A key objective of many local patent rules is to encourage parties to solidify their legal theories regarding infringement and invalidity at the outset of litigation.  These rules save litigant and court resources by preventing the ‘shifting sands’ approach to claim construction, i.e., it discourages parties from subsequently amending their claim charts throughout the lawsuit, thereby making the opposition respond to a moving target of contentions.  To this end, under their local patent rules, some courts will only allow for amendment of contentions when these amendments are made for good cause and when the moving party acts diligently in amending based on newly discovered information.

          Some districts have already held that good cause is lacking where a party moves to amend contentions based on a Markman ruling in their favor.  See, e.g., Thermapure v. Just Right Cleaning, No. CV–11–0431–RHW, 2013 WL 3340494 (E.D. Was. Nov. 7, 2012).  In Silver State Intellectual Technologies, Inc. v. Garmin International, Inc. (.pdf), No. 2:11-CV-01578-PMP, 2014 WL 3687245 (D.Nev. July 24, 2014), Judge Pro took a similarly narrow view of what constitutes good cause in deciding that a Markman ruling adopting the opposing party’s claim construction does not necessarily give rise to good cause to amend.

       Following the court’s Markman ruling adopting plaintiff’s claim construction, the accused infringer amended its contentions to include new invalidity arguments based on newly identified prior art in light of the court’s construction.  The defendant argued that the good cause requirement was met due to the court’s adoption of claim construction other than defendant’s.  Indeed, the District of Nevada’s Local Patent Rules identifies a court’s claim construction different from that proposed by a party as an example of a circumstance that may support a finding of good cause for that party to amend its contentions. D. Nev. R. 16.1-12.  However, Judge Pro noted that such a finding is not automatic, “particularly where the Court adopts the construction proposed by the other party, as such a construction would not come as a surprise to the party seeking to amend.” Id. at *4.  Judge Pro granted plaintiff’s motion to strike for lack of good cause those portions of defendant’s amended contentions that were added based on the court’s claim construction.  This order was based in part on the fact that the defendant had sufficient notice that the court might construe the claims as it did, because that construction was proposed by the plaintiff in its initial claim construction brief filed nearly a year before the court’s construction order.  Thus, according to the court, the defendant was aware of the risk of such a construction being adopted and should have prepared accordingly, and that its subsequent adoption did not constitute good cause for the amended contentions.

     The court’s order was also based in part on the defendant’s lack of diligence in amending its contentions following the Markman ruling.  The defendant filed its amendments on the final day of fact discovery, nearly two months after the construction order.  Therefore, the court held, the plaintiff would be unfairly prejudiced by having to extend discovery and expend resources to respond to the new contentions. Key Takeaway:

    Litigants should not assume that they will have automatic leave to amend their contentions following an adverse claim construction.  They should anticipate the possibility that the court will adopt the opposing party’s proposed claim construction and should act diligently to conduct discovery and amend their contentions as necessary.

The editor thanks Cameron Clawson, a soon-to-be associate at Husch Blackwell, for his assistance in writing this post.

U.S. District Court for Colorado Adopts New Local Patent Rules

The United States District Court for the District of Colorado has become the second court in the Tenth Circuit and joined 31 other federal courts by implementing their own local patent rules last month. The adoption of these rules was announced on June 11, 2014 as a Pilot Program Implementing Proposed Local Patent Rules. The court announcement (.pdf) states that the local patent rules will apply to all patent cases filed in the District of Colorado on or after August 1, 2014, so the rules were adopted in time for the official opening of the Regional Patent Office in Denver. The District of Colorado’s Local Patent Rules (.pdf) are similar to those of other jurisdictions, but contain some key idiosyncrasies. Like most other jurisdictions, prior to commencement of a case, the parties are required to propose a Patent Scheduling Order that sets forth deadlines for each of the filings required by the rules. (Colo. LPR 2) Also, “a party claiming patent infringement shall serve Infringement Contentions identifying with specificity each accused product or process (the “Accused Instrumentality”).” (Colo. LPR  4(a))  The following features of the Court’s new Local Patent Rules differentiate them from those of other jurisdictions:

  • Claim Charts: Parties who serve Infringement Contentions must also serve a claim chart for each Accused Instrumentality, but “if two or more Accused Instrumentalities have the same relevant characteristics, they may be grouped together in one claim chart.” (Colo. LPR  4)
  • Response to Infringement Contentions: A party opposing an infringement claim is required to serve a Response to Infringement Contentions identifying the limitations of each asserted claim alleged not to be present in the Accused Instrumentality. (Colo.LPR  6).
  • Response to Invalidity Contentions: if Invalidity Contentions are filed, a party claiming infringement is required to serve a Response to Invalidity Contentions. (Colo. LPR  10).
  • Claim Construction Briefs: Claim construction briefs have a word limit of 10,000 words. (Colo. LPR  17(a))  If a party files both a supporting brief and a reply brief,” the two briefs together shall not exceed 10,000 words.” (Colo. LPR  17(b)).

  Key Takeaway: The new local patent rules for the District court of Colorado are designed to bring uniformity and efficiency to patent litigation. Practitioners will be expected to work cooperatively to develop a cost effective pretrial discovery schedule and clearly respond to the other party’s contentions. The editor thanks Bill Johnson, a law student at the University of Chicago, for his assistance in writing this post.

Court Uses Local Patent Rules to Deny a Contradictory Amended Infringement Contention

In patent litigation governed by local patent rules, a party claiming infringement must usually serve a “Disclosure of Asserted Claims and Infringement Contentions.” This disclosure must sufficiently identify each claim and the infringing product or process of the opposing party. Jurisdictions, however, have different standards for sufficient disclosures and courts have substantial discretion in determining the disclosing party’s obligations. In Times Three Clothier, LLC v. Spanx, Inc. (pdf), 2014 WL 1795210, *4 (S.D.N.Y. May 6, 2014), Judge Cote denied an amended infringement contention that directly contradicted a prior contention because there was no longer an inference of infringement. On October 29, 2013 Times Three received a patent describing women’s shapewear in which the middle section included a more compressive material than the upper or lower sections. That same day, Times Three brought an infringement action against two of Spanx’s products claiming that they followed the same design with high compression mid-sections and lower compression outer sections. Times Three incorrectly referred to the waist lining of the Spanx product as the middle (with 64% spandex) and the body section as the top (with 20% spandex). On February 4, 2014, Spanx advised Times Three that the waist lining was actually the lower section of the garment with the body being the middle. In response, Times Three reversed its contention to state by amendment that the body section had more compression material than the waist lining and removed its supporting citations. In light of the reversal, Spanx filed a motion to strike Times Three’s amendment. In its reasoning, the Court determined that “where information is reasonably available to plaintiffs before discovery, infringement contentions must be sufficient ‘to raise a reasonable inference that all accused products infringe’ and to permit the Court to ‘make a principled decision on whether discovery will proceed.’” Because Times Three’s initial contentions now supported a finding of non-infringement, the court stayed the case on the applicable patent and found that more detailed infringement contentions were required before discovery could proceed.” The court noted that this was not an issue of unknown discovery because the products were publicly available at low cost. Key Takeaway: Plaintiffs should be careful when asserting an amendment to an infringement contention that is contrary to their original claim. If new facts create contradictory positions between the original and amended infringement contentions, the amended claims should be sufficiently detailed to justify the contradiction and provide adequate support for their assertions. The author thanks Josh Nosal, a student at the University of Texas School of Law, for his assistance in writing this post.

Court Uses Local Patent Rule to Reject Expert Testimony on Indefiniteness

The Local Patent Rules have been designed to require parties to solidify their theories in the early stages of litigation and adhere to them as the case progresses. Yet, the rules are not an entirely rigid structure. They retain some flexibility by providing a non-exhaustive list of circumstances that may warrant an amendment to parties’ original contentions. However, this flexibility decreases the predictability of which amendments will be successful under the rules. 

In Depomed Inc. v. Actavis Elizabeth LLC (.pdf), 2014 WL 1877613 (D.N.J. May 8, 2014), Judge Pisano ruled that a defendant, after unreasonable delay, could not amend its Invalidity Contentions without a good cause to permit the amendment. On August 24, 2012, defendant stated in its Invalidity Contentions that the disputed patent was invalid due to an indefinite size claim, which read “is of a size exceeding the pyloric diameter in the fed mode.” On April 11, 2014, the last day of expert discovery, during defendant’s deposition of plaintiff’s expert, the expert admitted that he could not determine what size would satisfy the claim. On April 14, 2014, defendant informed the plaintiff and the court that it would like to amend its invalidity contention by including the expert’s admission. On April 15, 2014, defendant served its amended invalidity contentions on the plaintiff. On April 17, 2014 the plaintiff notified the defendant that it intended to object to the amendment and filed its objection on April 22, 2014. In its reasoning, the Court applied Local Patent Rule 3.7 and denied defendant’s motion to amend its contentions. The Court found that even though defendant had asserted a general indefiniteness in its 2012 contention, it had not raised this specific issue until the eve of trial, which created an unreasonable delay and unduly prejudiced the plaintiff. Additionally, the Court found no good cause to permit the amendment because defendant was aware of the issue of indefiniteness but failed to assert it during either expert discovery or claim construction. Key takeaway: The Local Patent Rules are flexible when it comes to amending invalidity contentions, but contenders should present new issues at the earliest possible time and should continuously maintain important issues in order to preserve their relevance. Otherwise, a court may prevent a party from supplementing its invalidity contention for lack of good cause and unreasonable delay even if the issue has been previously raised. The author thanks Josh Nosal, a student at the University of Texas School of Law, for his assistance in writing this post.

Local Patent Rule Blocks Discovery on Plaintiff’s Own Manufacturing Process

Patent litigators sometimes face issues resembling the age old debate: which came first, the chicken or the egg?   While local patent rules require a plaintiff to assert its infringement contentions on all infringing products, the plaintiff sometimes cannot do so on all products because it lacks the necessary discovery to understand certain non-public products such as software.  At the same time, without first asserting those products in its infringement contentions, courts sometimes deny any discovery on those same non-public products.  Similarly, an accused infringer will sometimes need discovery on prior art, but the court will not allow discovery on that prior art until such time it is asserted in an invalidity contention.  In Nippon Steel v. Posco et al. (.pdf), 2014 WL 1266219, *1 (D.N.J. March 26, 2014), the District Court denied a defendant’s requested discovery on plaintiff’s own prior art manufacturing process.  The Court reasoned that because the defendant did not assert the plaintiff’s manufacturing process as prior art in its invalidity contentions, no further discovery would be permitted on that process.  The Court further relied upon Local Rule 3.3(a) which requires that all prior art be asserted in the invalidity contentions.  The Court further implied that the defendant should have asserted all the potential prior art even if it did not possess all the details required by the local rule. “[Defendant] never sought to assert any contentions, detailed or not, regarding what they now allege is prior art.  If our Local Patent Rules are to have any impact, they cannot create an incentive for parties to evade disclosure of their positions until deadlines have expired.” Key Takeaway: At least according to this Court, a defendant would be well advised to assert all potential prior art in its invalidity contention even if it does not yet possess all relevant details concerning the prior art.  Otherwise, the defendant may well be denied discovery and the ultimate use of the prior art to prove invalidity.