The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional

By Dennis Crouch

This case would be great for a 2L law review note.

Back in May 2024, the Federal Circuit issued an important decision holding that a patentee’s use of Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state – despite no direct contacts with that state.  SnapRays, LLC v. Lighting Defense Group, LLC, No. 2023-1184 (Fed. Cir. 2024). The patentee has now petitioned for en banc rehearing, arguing that the opinion conflicts with prior Federal Circuit precedent and makes a holding that the Supreme Court at least implicitly rejected in Walden.  The case is important as APEX and other similar private sales-channel enforcement processes become increasingly popular. SnapRays En Banc Petition.

My view: The Federal Circuit erred here. While initiating the APEX action would certainly open the patentee up to a declaratory judgment lawsuit, that lawsuit must be filed in a jurisdiction where the patentee has sufficient minimum contacts, not simply wherever the accused infringer happens to be located, even if (as here) the patentee knew of the accused infringer’s location.

Continue reading The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional at Patently-O.

The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional

By Dennis Crouch

This case would be great for a 2L law review note.

Back in May 2024, the Federal Circuit issued an important decision holding that a patentee’s use of Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state – despite no direct contacts with that state.  SnapRays, LLC v. Lighting Defense Group, LLC, No. 2023-1184 (Fed. Cir. 2024). The patentee has now petitioned for en banc rehearing, arguing that the opinion conflicts with prior Federal Circuit precedent and makes a holding that the Supreme Court at least implicitly rejected in Walden.  The case is important as APEX and other similar private sales-channel enforcement processes become increasingly popular. SnapRays En Banc Petition.

My view: The Federal Circuit erred here. While initiating the APEX action would certainly open the patentee up to a declaratory judgment lawsuit, that lawsuit must be filed in a jurisdiction where the patentee has sufficient minimum contacts, not simply wherever the accused infringer happens to be located, even if (as here) the patentee knew of the accused infringer’s location.

Continue reading The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional at Patently-O.

The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional

By Dennis Crouch

This case would be great for a 2L law review note.

Back in May 2024, the Federal Circuit issued an important decision holding that a patentee’s use of Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state – despite no direct contacts with that state.  SnapRays, LLC v. Lighting Defense Group, LLC, No. 2023-1184 (Fed. Cir. 2024). The patentee has now petitioned for en banc rehearing, arguing that the opinion conflicts with prior Federal Circuit precedent and makes a holding that the Supreme Court at least implicitly rejected in Walden.  The case is important as APEX and other similar private sales-channel enforcement processes become increasingly popular. SnapRays En Banc Petition.

My view: The Federal Circuit erred here. While initiating the APEX action would certainly open the patentee up to a declaratory judgment lawsuit, that lawsuit must be filed in a jurisdiction where the patentee has sufficient minimum contacts, not simply wherever the accused infringer happens to be located, even if (as here) the patentee knew of the accused infringer’s location.

Continue reading The Long Arm of APEX: When (and Where) does Amazon’s Private Enforcement Mechanism Create Personal Jurisdictional at Patently-O.

Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting

Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting

Guest post by Professors Mark A. Lemley and Lisa Larrimore Ouellette of Stanford Law School.

Two of the most controversial patent law changes of the past year have involved obviousness-type double patenting, which allows applicants to patent obvious variants of their earlier patents by disclaiming the extra term of the later-expiring patent. First, the Federal Circuit held in In re Cellect that patents tied by double patenting must expire on the same day even if one of the patents has received a patent term adjustment (PTA) giving it a more-than-twenty-year term. The en banc denial and pending cert petition in Cellect have attracted substantial interest from amici and commenters. Second, the USPTO proposed that terminal disclaimers include a commitment to not enforce the patent if any claims in the patent to which it is tied are found to be obvious or not novel. Early commentary on the proposal was “overwhelmingly negative.”

In our new draft article, Fixing Double Patenting, we argue that this outcry is unwarranted.

Continue reading Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting at Patently-O.

Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting

Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting

Guest post by Professors Mark A. Lemley and Lisa Larrimore Ouellette of Stanford Law School.

Two of the most controversial patent law changes of the past year have involved obviousness-type double patenting, which allows applicants to patent obvious variants of their earlier patents by disclaiming the extra term of the later-expiring patent. First, the Federal Circuit held in In re Cellect that patents tied by double patenting must expire on the same day even if one of the patents has received a patent term adjustment (PTA) giving it a more-than-twenty-year term. The en banc denial and pending cert petition in Cellect have attracted substantial interest from amici and commenters. Second, the USPTO proposed that terminal disclaimers include a commitment to not enforce the patent if any claims in the patent to which it is tied are found to be obvious or not novel. Early commentary on the proposal was “overwhelmingly negative.”

In our new draft article, Fixing Double Patenting, we argue that this outcry is unwarranted.

Continue reading Guest Post by Profs. Lemley & Ouellette: Fixing Double Patenting at Patently-O.

Fixing Double Patenting: The Procrustean Solution?

Fixing Double Patenting: The Procrustean Solution?

by Dennis Crouch

I recently provided a set of interesting data on the large number of patents that are “at risk” of being invalidated based on the Federal Circuit’s Cellect decision. This post follows up with a discussion of a recent article titled “Fixing Double Patenting” released in draft form by Stanford Professors Mark Lemley and Lisa Larrimore Ouellette. The article takes a critical look at the practice of obviousness-type double patenting in the U.S. patent system.

The current system allows patent applicants to obtain multiple patents on obvious variants of the same invention, so long as the applicant stays within the rules by providing (1) providing a terminal disclaimer, agreeing that all the patents will expire simultaneously; and (2) ensuring that the patents do not qualify as statutory prior art against one-another under Sections 102 or 103 of the Patent Act.  The article shows the growing prevalence of double patenting, with terminal disclaimers now being filed for over 15% of all patents, over 50% of litigated patents, and 60% of Orange Book patents covering FDA-approved drugs.  This report aligns with my data shown in the chart above for all utility patents.

Continue reading Fixing Double Patenting: The Procrustean Solution? at Patently-O.

Cellect: Unveiling the Potential Impact on Patent Term Adjustment

Cellect: Unveiling the Potential Impact on Patent Term Adjustment

by Dennis Crouch

Many have been thinking of the potentially large impact of Cellect v. Vidal, which is now pending before the Supreme Court.  This week I uncovered striking data that a very large number of patents have been impacted.

Some background: Many patentees divide their patents into multiple filings all based on the same original priority application.  This strategy has a number of reasons, but the basic idea is that the USPTO fee structure strongly encourages smaller claim-sets, and many applicants have found it to be both cost-effective and a quality improvement to sequentially obtain these bite-size patents.  Historically, this sequential approach was seen as problematic (inequitable) by courts because the later issued claim sets would also extend the patent-term beyond the 17-years per invention promised at the time.  The judge-made doctrine of obviousness-type-double-patenting (ODP) took care of this type of patent misuse by nullifying later-expiring patents absent a “terminal disclaimer” filed by the patentee that disclaims any extra patent term.   Historically though patent term was measured from the issue date. In 1995, this was changed so that the patent term starts running as of the priority filing date (not counting provisional or original foreign filings). 

Continue reading Cellect: Unveiling the Potential Impact on Patent Term Adjustment at Patently-O.

The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law

The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law

by Dennis Crouch

The Federal Circuit’s practice of issuing no-opinion affirmances under Rule 36 is facing renewed scrutiny in two recent petitions for rehearing en banc. In UNM Rainforest Innovations v. ZyXEL Communications Corp. and Island Intellectual Property LLC v. TD Ameritrade, Inc., the petitioners argue that the court’s use of one-word Rule 36 judgments allowed it to sidestep key legal and factual issues raised on appeal. These petitions highlight ongoing concerns about the Federal Circuit’s frequent use of Rule 36 and its impact on patent law development.  The failure to provide an explanatory opinion is an appellate-procedure issue – the two patentees also argue that the lower tribunal made substantive legal errors.

I don’t see the court as having a truly nefarious reason for its common no-opinion judgments, but the situation does call to mind the ancient fable about the emperor’s new clothes adapted and popularized by Hans Christian Andersen.  In the story, two swindlers convince an emperor they can weave the finest, most beautiful cloth which is invisible to anyone unfit for their position or hopelessly stupid.  The emperor and his officials, not wanting to appear unfit or stupid, pretend to see the nonexistent cloth.

Continue reading The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law at Patently-O.

The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law

The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law

by Dennis Crouch

The Federal Circuit’s practice of issuing no-opinion affirmances under Rule 36 is facing renewed scrutiny in two recent petitions for rehearing en banc. In UNM Rainforest Innovations v. ZyXEL Communications Corp. and Island Intellectual Property LLC v. TD Ameritrade, Inc., the petitioners argue that the court’s use of one-word Rule 36 judgments allowed it to sidestep key legal and factual issues raised on appeal. These petitions highlight ongoing concerns about the Federal Circuit’s frequent use of Rule 36 and its impact on patent law development.  The failure to provide an explanatory opinion is an appellate-procedure issue – the two patentees also argue that the lower tribunal made substantive legal errors.

I don’t see the court as having a truly nefarious reason for its common no-opinion judgments, but the situation does call to mind the ancient fable about the emperor’s new clothes adapted and popularized by Hans Christian Andersen.  In the story, two swindlers convince an emperor they can weave the finest, most beautiful cloth which is invisible to anyone unfit for their position or hopelessly stupid.  The emperor and his officials, not wanting to appear unfit or stupid, pretend to see the nonexistent cloth.

Continue reading The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law at Patently-O.