Month: December 2021

by Dennis Crouch

Olaf Sööt Design’s pending petition for certiorari centers on the age-old division between issues-of-fact and issues-of-law.  The U.S. Constitution generally requires due process, and particularly protects litigants’ rights to a jury trial in common law cases.  One quirk–the right to a trial by jury does not cover issues-of-law, and only extends to some issues-of-fact.

This bifurcated system results in an odd dynamic in patent law — regularly seen with regard to infringement and claim construction:

• Patent infringement is an issue-of-fact tried by a jury under the Seventh Amendment.  Typically, a jury is asked to decide whether the evidence shows that the defendant is performing the claimed invention.
• Claim construction is treated as a question of law (or mixed question of fact and law), decided by a judge.  In contemporary patent litigation, a judge will typically be asked to decide whether the legal scope of the claims extend to cover the defendant’s actions.

With this setup, the whole case can be decided at either stage, but claim construction typically comes first and so often steals-the-show.  One problem though, is the potential of unduly undermining the Constitutionally protected jury system.

Continue reading Update on Supreme Court Patent Cases: Fact Law Divide at Patently-O.

by Dennis Crouch

Bankers’ Serv. Corp. v. Landis Christmas Sav Club Co, 273 F. 722 (3d Cir. 1921) [67_F.2d_904]

This 1921 decision centered on Merrill B. Barkley US Pat. No. 1,202,646, covering stationary for making “Christmas club deposits.”  The specification explains:

There has developed recently in banking circles a wide demand for various kinds of special savings accounts, known generally as Christmas clubs, vacation accounts … and the like.

The claimed invention then is directed to a “deposit book,” with each page having a stub and detachable coupon.  The customers keep the book with all the stubs showing deposits while the coupon goes to the bank to help direct the deposit.

Landis Christmas Sav Club was already selling supplies to banks, but Barkley was able to improve the system.  In particular, with the Landis system, the a book of coupons was held by the bank, and individual sheets given out to the customer with each deposit.  The Barkley reversal allowed the customer to keep the book and give deposit slips to the bank.  Apparently Landis then copied the Barkley approach and an infringement suit followed. 

Continue reading Merry Christmas 2021, your Patent is Invalid at Patently-O.

I’m doing a quick 3 minute anonymous survey on perceptions of probability in the legal system. Thanks so much for your input. Dennis Crouch.  Fill out the survey below or use this link:  https://missouri.qualtrics.com/jfe/form/SV_38JcSPmVJRpaPc2.

Continue reading Survey on Perception of Probability at Patently-O.

I previously wrote about the most cited Supreme Court patent cases since 1952.  Today, I’ll write about the least-cited decision: Sanford v. Kepner, 344 U.S. 13 (1952).

Kepner filed his patent application in 1943 and Sanford filed his in 1945 — both directed to drop-bottom rail cars used in mining.

The USPTO interference sided with the first-filer Kepner and so Sanford took the case to Federal Court.  Sanford argued (1) that Sanford should have priority as the first-to-invent and thus get the patent; and (2) even if Kepner gets priority, Kepner’s patent should still be invalidated based upon the prior art.   (“Void for lack of invention.”) The Pennsylvania district court sided with the first-filer Kepner on priority grounds, and refused to decide the question of patentability. Sanford v. Kepner, 99 F. Supp. 221, 222 (M.D. Pa. 1951).   On appeal, Sanford argued that the district court should have decided the validity question also, but the appellate court affirmed. Sanford v. Kepner, 195 F.2d 387, 390 (3d Cir. 1952).  In particular, the 3rd Circuit explained that once the priority issues are decided, the plaintiff would need some additional justification to maintain standing: “some manifest threat … or interference with the activities of the petitioner beyond the issuance of a patent to another is required to create a controversy justiciable under the Declaratory Judgment Act.”  Id.   

Continue reading At the Drop-Bottom: Sanford v. Kepner, 344 U.S. 13 (1952).  at Patently-O.

by Dennis Crouch

Lots of the new learning in patent law over the past decade has focused on patent eligibility.  But, none of the eligibility cases (new or old) show up in my list of the most cited Supreme Court cases.

1. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction);
2. Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (arising under jurisdiction);
3. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunctive relief in accordance with the principles of equity);
4. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (obviousness);
5. Zenith Radio Corp. v. Hazeltine Research, Inc., 401 U.S. 321 (1971) (antitrust – patent pools – waiver of defenses);
6. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (licensee standing for declaratory judgment action);
7. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) (non-mutual issue preclusion in patent cases);
8. Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969) (antitrust – patent pools);
9. Holmes Group, Inc.

Continue reading Most Cited Supreme Court Patent Cases Since 1952 at Patently-O.