Sunday, June 17, 2018

CBS Sunday Morning on June 17, 2018 forecasts US Patent 10,000,000

The CALENDAR feature of "CBS Sunday Morning" on 17 June 2018 stated that the USPTO will issue US Patent Number
10,000,000 on Tuesday, 19 June 2018.

Although there was no ALMANAC feature, artist M.C. Escher was featured on the anniversary of his birth
(17 June 1898). There is an exhibition of Escher's work at Brooklyn's Industry City. His drawings are used to illustrate group theory.

There were various features related to Father's Day, including ones related to fathers who had connection to CBS (Gavin Boyle, Senior Producer; Lane Venardos, former CBS News executive).

There was a "history lesson" by Steve Hartman, who discussed work by Sarah Haycox on Edwin T. Pratt. Although the viewer might have come away with the impression that Pratt had been a forgotten man, there is both a park and a cultural center in Seattle named in his honor. Further, at the time in January 1969, when Pratt was murdered at age 38, there was significant news coverage, and the FBI was involved in the investigation of his death.

There was a piece by David Martin on Seymour Hersh, who has a new book "Reporter: A Memoir" (Knopf). Hersh has a history degree from the University of Chicago, and was admitted to the Law School at the University of Chicago, but did not graduate. There has been some discussion of his work, including the book on Kennedy, The Dark Side of Camelot.

The moment of nature was at Komodo National Park in Indonesia, which video featured a sharp shift from dragons to turtles and fish. The photography was more dramatic than the usual moment of nature.

Friday, June 15, 2018

Judge Newman's dissent on en banc in XITRONIX CORPORATION

Judge Newman's dissent:

I write because of the importance of this decision to
the judicial structure of patent adjudication, and the
future of a nationally consistent United States patent law.
In this case, the complaint states that the asserted violation
of patent law may support violation of antitrust
law—a Walker Process pleading based on charges of fraud
or inequitable conduct in prosecution of the patent appli-
cation in the Patent and Trademark Office.1 The threejudge
panel assigned to this appeal held that the Federal
Circuit does not have jurisdiction, did not reach the
merits, and transferred the appeal to the Fifth Circuit.2
This jurisdictional ruling is contrary to the statute governing
the Federal Circuit, and contrary to decades of
precedent and experience. Nonetheless, the en banc court
now declines to review this panel ruling.
I write in concern for the conflicts and uncertainties
created by this unprecedented change in jurisdiction of
the Federal Circuit and of the regional courts of appeal.
With the panel’s unsupported ruling that the Supreme
Court now places patent appeals within the exclusive
jurisdiction of the regional circuits when the pleading
alleges that the patent issue may lead to a non-patent law
violation, we should consider this change en banc.


As applied to the case at bar, it is not disputed that
patent law is a “necessary element” of the antitrust claim,
for without determination that a patent was obtained by
fraud or inequitable conduct, there can be no antitrust
violation. While “a claim supported by alternative theories
in the complaint may not form the basis for § 1338(a)
jurisdiction unless patent law is essential to each of those
theories,” id. at 810, Xitronix alleged a theory of antitrust
violation based solely on patent law. And, as Xitronix
states, its purpose is to invalidate the patent or render it
unenforceable. However, the panel rules that in Gunn v.
Minton, 568 U.S. 251 (2013), the Supreme Court changed
Federal Circuit jurisdiction such that only the regional
circuits now have jurisdiction over Walker Process appeals.
Gunn did not make the jurisdictional change ascribed
to it. In Gunn the Court held that the appeal of a state
law attorney malpractice case was properly in the state
court, although the malpractice charge related to a patent
issue. The Court observed that the patent had been
invalidated ten years earlier, and described the patent
aspect as “hypothetical” because whatever the attorney’s
malfeasance, there could be no rights in this long-dead
patent. Id. at 261 (“No matter how the state courts
resolve that hypothetical ‘case within a case,’ it will not
change the real-world result of the prior federal patent
litigation. Minton’s patent will remain invalid.”).


The panel’s ruling directly contradicts the court’s prior
holdings. A contradictory ruling by the panel is improper,
for “[t]his court has adopted the rule that prior
decisions of a panel of the court are binding precedent on
subsequent panels unless and until overturned in banc.”
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.
Cir. 1988). In the vast number of cases that have raised
non-patent issues along with patent issues, no precedent
of the Supreme Court or the Federal Circuit supports the
panel’s ruling on the panel’s facts.


Until today, there has been stability in the jurisdictional
path of Walker Process appeals. No precedent
deprives the Federal Circuit of jurisdiction of appeals that
turn on issues of fraud or inequitable conduct in patent
prosecution. These issues are not only substantial, but
because they determine patent enforceability and validity,
they are fundamental.

Wednesday, June 13, 2018

Cutting and pasting to create legal briefs?

Years ago, in defending Laurence Tribe from charges of plagiarism, Alan Dershowitz spoke of cultural differences between law and
other disciplines. See, for example, Lawyers copying other lawyers: plus ça change, plus c'est la même chose , which contains the text:

. As recounted on Dean Velvel's blog in September 2004:


According to The Crimson, Dershowitz said that there is a "‘cultural difference’" between sourcing in the legal profession and in other academic disciplines. With the rest of the sentence being The Crimson’s words, albeit reflecting Dershowitz’s ideas, The Crimson wrote that "He said that judges frequently rely on lawyers’ briefs and clerks’ memoranda in drafting opinions. This results in a ‘cultural difference’ between sourcing in the legal profession and other academic disciplines, Dershowitz said."

Flash forward to the year 2018, and note a post in the Northwest Herald

The $400-an-hour attorney representing Algonquin Township Highway Commissioner Andrew Gasser has had accusations of plagiarism leveled against him.

The charges stem from an April 25 brief Woodstock attorney Robert Hanlon filed in a lawsuit against Clerk Karen Lukasik, former Highway Commissioner Bob Miller and his wife, Anna May Miller.

Lawyers on the other side of the case flipped to page 4 and – under the title "INJUNCTIVE RELIEF" – notice some irregularities in Hanlon's writing. A Google search revealed it actually wasn't Hanlon's writing at all.

It was an uncited word-for-word copy of an April 2011 Chicago Daily Law Bulletin article.

Later in Hanlon's document – on page 7 and spanning paragraph 7 until the conclusion of the brief – the lawyers discover more language lifted from another source without an attribution or citation. This time, the words came from page 4 of a “Practice Series” primer on temporary restraining orders from Chicago-based firm Jenner & Block.


And yes there is a 2018 story linking Harvard and plagiarism

Princeton Graduate wins Harvard Thesis Prize, kind of. Plagiarism hits the Ivy Leagues.

Different points of view are reflected in the comments. One that interested IPBiz:

the GSD dude is citing last semesters mike hayes and andrew holder talk 'architecture before speech', which tells you something about the academic rigor by which his thesis work was produced: in that talk both KMH and Andrew Holder admit that they 'dont have to be correct' in citing a text--they simply have to use it in a way that supports their argument. by their own admission they barely rise to the level of cultural criticism--which is fine, btw, we need more intelligent cultural discussion of architecture. but to cite that for a masters thesis? it barely rises to minimum academic standards we learn in childhood.

Halo Leather, appealing from TTAB to CAFC, loses

As to basically identical trademarks used to mark related products, the decision in
In re Halo Leather, Limited is instructive:

In this trademark case, Halo Leather Limited seeks to
register the mark “AQUAPEL” and an associated design
for leather or imitation leather home goods, including
beds, curtain rails, curtain hooks, curtain rings, mattresses,
and tables. The examining attorney in the Patent and
Trademark Office rejected Halo’s application on the
ground that the mark is likely to be confused with a
registered mark “AQUAPEL” for home goods including
bed blankets, comforters, curtain fabric, curtains of textile,
mattress covers and pads, table linen, textile fabrics,
and textile place mats. The Trademark Trial and Appeal
Board upheld the examining attorney’s rejection based on
its findings that the two marks are similar in terms of
their appearance, sound, connotation, and commercial
impression, and that consumers would likely identify
goods covered under the marks to emanate from a single
source. We affirm.
In finding of likelihood of
confusion, there is no requirement that the goods be
identical so long as one of the goods in the application is
sufficiently related to one of the goods in the registration
such that consumers would be likely to think they were
offered by the same source. See, e.g., Hewlett-Packard
Co., 281 F.3d at 1267 (“Even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin.”). Here, the likelihood of confusion is
caused by the high degree of relatedness of the parties’
goods, not by their being identical.

This is not a case like In re Coors Brewing Co., 343
F.3d 1340, 1346–47 (Fed. Cir. 2003), in which the court
found that the Board’s evidence was insufficient to support
the finding that two marks sharing the term “BLUE
MOON” are related. In Coors, one mark was for restaurant
services, and the other mark was for beer. Id.
Although the court found that the two marks were similar,
their applications were different: one was for services
and the other for goods. See id. (holding that it is not true
that “any time a brand of [food or beverage] has a trademark
that is similar to the registered trademark of some
restaurant, consumers are likely to assume that the [food
or beverage] is associated with that restaurant”). Unlike
Coors, both Halo’s application and Nanotex’s mark concern
similar goods, and substantial evidence supports the
Board’s finding that a consumer would likely view the
goods under Halo’s mark and Nanotex’s mark emanating
from a single source.

Tuesday, June 12, 2018

Mobileeye loses appeal at CAFC of PTAB decision. Velocity vs. displacement.

MobileEye lost:

Mobileye Vision Technologies Ltd. (“Mobileye”) appeals
from the final written decision of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (“the Board”) in an inter partes reexamination
affirming the examiner’s rejection of claims 1–7 of U.S.
Patent 7,113,867 (“the ’867 patent”) as obvious. See
iOnRoad, Ltd. v. Mobileye Techs. Ltd., No. 2015-7925,
2016 WL 949027, at *8 (P.T.A.B. Mar. 11, 2016) (“Decision”).
On appeal, Mobileye only challenges the Board’s
decision with respect to claim 6. Because the Board did
not err in its decision, we affirm.

The scope of the appeal was narrow:

Only claim 6 is before us. Mobileye argues that the
Board’s claim construction of the “substantially uniformly
approaches zero” limitation to “merely mean[] that the
obstacle is closing in on the vehicle, and that they will
intersect,” see Decision, 2016 WL 949027, at *7 (internal
quotation marks omitted), reads out the “substantially
uniformly” part of the limitation. It further contends that
the “substantially uniformly” language in the claim
describes how the lateral displacement approaches zero,
not just whether it approaches zero. Goodrich, as Mobileye
characterizes it, does not base its collision determination
on how the lateral displacement changes, because
it assumes a constant velocity. Mobileye argues that it
therefore does not teach the “substantially uniformly”
limitation in claim 6. Mobileye does not challenge the
Board’s findings with respect to the other prior art references.

Note the reasoning:

We agree with iOnRoad that the Board’s finding that
Goodrich teaches the “substantially uniformly approaches
zero” limitation is supported by substantial evidence.
Mobileye’s arguments depend on distinguishing claim 6 of
the ’867 patent, which teaches estimating a time to collision
using a lateral displacement, from Goodrich, which
teaches collision avoidance based on a lateral velocity.
Compare ’867 patent col. 8 ll. 12–21, col. 10 ll. 36–39, with
Goodrich col. 5 ll. 4–9. However, that is a distinction
without a difference


At oral argument, Mobileye argued that a key feature
of the ’867 patent is that it exclusively relies on the lateral
displacement to estimate the time of contact, which is
not directly related to the velocity of the obstacle. See
Oral Arg. at 11:55–12:33. This feature makes a difference,
Mobileye contended, because an object could be
moving at a constant velocity, but the changes in its
lateral displacement with respect to the vehicle could still
decrease or increase in a non-constant manner. See id.;
see also ’867 patent fig. 2B. But Goodrich’s collision
avoidance system does not depend on a constant velocity;
it depends on a constant “lateral velocity.” Goodrich col. 5
l. 6 (emphasis added). Therefore, the record does not
support Mobileye’s attempt to distinguish the prior art.

Monday, June 11, 2018

CAFC fine-tunes SAS Institute Inc. v. Iancu in Nestle Purina PetCare?

The CAFC noted: We agree with the parties that remand is necessary
and appropriate in light of SAS and Polaris.

CAFC examines 285/exceptional case in Stone Basket Innovations

The case concerned attorneys fees under 285, which were denied in this case:

Appellee Stone Basket Innovations, LLC (“Stone”)
sued Appellant Cook Medical LLC (“Cook”) in the U.S.
District Court for the Southern District of Indiana (“District
Court”), alleging infringement of U.S. Patent
No. 6,551,327 (“the ’327 patent”). Following a dismissal
with prejudice, see Stone Basket Innovations, LLC v. Cook
Med. LLC (Stone Basket I), No. 1:16-cv-00858-LJM-TAB
(S.D. Ind. Jan. 11, 2017) (J.A. 1157), Cook filed, inter
alia, a motion for attorney fees pursuant to 35 U.S.C.
§ 285 (2012) (“the § 285 Motion”). The District Court
issued an order denying the § 285 Motion. Stone Basket
Innovations, LLC v. Cook Med. LLC (Stone Basket II), No.
1:16-cv-00858-LJM-TAB, 2017 WL 2655612, at *1 (S.D.
Ind. June 20, 2017).

Cook appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.


This appeal involves two main issues, namely, whether
the District Court erred in its assessment of: (1) the
substantive strength of Stone’s litigating position, and
(2) the alleged pattern of vexatious litigation by Stone.
We address these issues in turn

Deference to the examiner is mentioned:

Moreover, Leslie is listed on the face of the ’327 patent,
see ’327 patent, References Cited, and when prior art
“is listed on the face” of a patent, “the examiner is presumed
to have considered it,” Shire LLC v. Amneal
Pharm., LLC, 802 F.3d 1301, 1307 (Fed. Cir. 2015). We
have explained that, where a party only relies on prior art
considered by an examiner in its invalidity contentions,
that party has the burden to “overcome[e] the deference
that is due to a qualified government agency presumed to
have properly done its job, which includes one or more
examiners who are assumed to have some expertise in
interpreting the references and . . . whose duty it is to
issue only valid patents.” PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (internal
quotation marks and citation omitted). Having been
issued a valid patent, Stone was entitled to a presumption
of good faith in asserting its patent rights against Cook in
the form of a suit for infringement. See Checkpoint Sys.,
Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir.
2017) (stating there is a “presumption that an assertion of
infringement of a duly granted patent is made in good
faith” (internal quotation marks and citation omitted)).
Cook’s invalidity contentions, based on prior art already
considered by the Examiner and with no further explanation,
do not make the substantive strength of Stone’s
position exceptional.

As to inventor testimony:

Moreover, contrary to Cook’s argument, an inventor’s
testimony that “there is nothing novel about [the sheath
movement],” J.A. 1510, taken alone, neither “establishe[s]
the invalidity of the patent on obviousness grounds” nor
constitutes a “material false statement[] to the [US]PTO,”
Appellant’s Br. 27, 28. A post-issuance statement regarding
a single element of a claimed invention does not
establish invalidity because “[w]e must consider the
subject matter sought to be patented taken as a whole.”
Graham v. John Deere Co., 383 U.S. 1, 32 (1966). During
prosecution, the USPTO found that the inventor’s
amendment adding the “handle portion comprising a
sheath movement element, . . . as proposed, would overcome
the rejection.” J.A. 1446. Indeed, duly issued
patents are presumed valid. See 35 U.S.C. § 282(a);
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
It was not necessarily unreasonable for Stone to continue
to rely on the ’327 patent’s presumption of validity despite
the ’327 patent’s inventor testimony. See Q-Pharma, Inc.
v. Andrew Jergens Co., 360 F.3d 1295, 1303 (Fed. Cir.
2004) (concluding, in an appeal from a denial of a fee
award, that a party’s decision to proceed with a lawsuit
was not frivolous “in light of the statutory presumption of

As to litigation conduct:

The District Court was well within its discretion to
factor in Cook’s litigation conduct, because “the conduct of
the parties is a relevant factor under Octane’s totality-ofthe-circumstances
inquiry, including the conduct of the
movant.” Gaymar Indus., Inc. v. Cincinnati Sub-Zero
Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (footnote
omitted) (considering conduct of the movant in assessing
exceptionality). Such conduct includes Cook’s failure to
send any communication to Stone that highlighted and
set out with precision the specific invalidity argument on
which Cook now relies for its assertion that Stone should
have known its conduct was “clearly unreasonable,”
Appellant’s Br. 17, or “objectively baseless,” id. at 25, so
as to merit an award of attorney fees.

Further, Cook’s failure to provide early, focused, and
supported notice of its belief that it was being subjected to
exceptional litigation behavior further supports the
District Court’s determination that Stone’s litigating
position did not “stand[] out” from others. Octane, 134 S.
Ct. at 1756. Absent any evidence that Stone’s litigating
position was frivolous when filed or at any point before it
filed for dismissal, we are not persuaded the District
Court abused its discretion in determining Stone’s case
did not meet the standard for an award of attorney fees.
Cf. Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine,
Inc., 676 F. App’x 967, 973 (Fed. Cir. 2017) (affirming
award of attorney fees where a party was “on notice” of its
potentially frivolous litigating position based on information
provided by the opposing party, yet took no action
to remedy its position).


Moreover, a “party cannot simply hide under a rock,
quietly documenting all the ways it’s been wronged, so
that it can march out its ‘parade of horribles’ after all is
said and done.” Aten Int’l Co. v. Uniclass Tech., No. CV
15-04424-AG (AJWx), slip op. at 5 (C.D. Cal. Mar. 30,
2018). We find this reasoning both persuasive and appli-
cable to this case. Cook waited until October 2016, nearly
a year after service of its invalidity contentions, and nine
months after the inventor’s statements regarding the
sheath’s novelty, before informing Stone that, if Stone
refused to drop its case, “Cook intend[ed] to file . . . a
motion for attorneys’ fees against [Stone], its principals
and its attorneys.” J.A. 1717. During oral argument,
counsel for Cook could not explain why it did not make its
assertion of frivolousness of the claims known to Stone
sooner. See Oral Arg. at 11:37–12:19, http://
2330.mp3 (Q: “That [October 2016] email is . . . the kind
of communication I am talking about, that is, it
says . . . that if you don’t accept our settlement, then [we
will file for attorney fees].” A: “I recognize that . . . .”
Q: “It’s just that [the September 2016 letter] came very
late, . . . and the proceedings ended . . . six weeks later.”
A: “Yes . . . .” Q: “Why didn’t you send something like
that [September 2016 settlement email] before?” A: “I
didn’t think it would produce the result we were likely to
see . . . .” (emphasis added)).


We are further unpersuaded by Cook’s counterargument
that this case is similar to Rothschild, see Appellant’s
Br. 27 (citing 858 F.3d at 1388), in which we
reversed a district court’s denial of a § 285 motion because
the district court failed to consider plaintiff’s “willful
ignorance of the prior art” given counsel for plaintiff
admitted that counsel had “not conducted an analysis of
any of the prior art asserted in [the cross-motion] to form
a belief as to whether that prior art would invalidate” the
patent. Rothschild, 858 F.3d at 1388. In Rothschild, the
defendant also provided notice that the patent was invalid
under 35 U.S.C. §§ 101 and 102, and filed a motion for
judgment on the pleadings. See id. at 1385–86. The
defendant further served plaintiff with a Rule 11 letter
and appended both a draft Rule 11(b) motion and copies of
anticipatory prior art. Id. at 1386. Here, by contrast,
Cook failed to file any Rule 11 motion or motions for
summary judgment, and has not set forth any concrete
evidence that the District Court failed to consider Stone’s
evaluation of its case in light of the evidence of record.

Note footnote 2:

While we affirm the District Court’s ultimate exceptionality
determination, which considered evidence
that Messrs. Mitry and Salmon are in the business of
forming shell entities to extract nuisance settlements, see
Stone Basket II, 2017 WL 2655612, at *6 & n.3, we note
that Messrs. Mitry and Salmon appear to be patent
attorneys who have been authorized to practice law, see
J.A. 60; see also Oral Arg. at 19:05–11 (confirming the
same by Stone’s counsel). Alternative means exist for
punishing activities by licensed attorneys that might
demonstrate unethical conduct. See Oral Arg. at 33:01–18
(agreeing, by counsel, that “there are plenty of remedies
that are available” if a party has been subject to improper

CAFC addresses "videos as prior art" in the precedential Medtronic v. Barry

From the beginning of the decision:

This is a consolidated appeal from two related decisions
of the U.S. Patent and Trademark Office’s Patent
Trial and Appeals Board (Board) in inter partes review
(IPR) proceedings. The Board concluded that the petitioner,
Medtronic, Inc., had not proven that the challenged
patent claims are unpatentable.
We affirm-in-part and vacate-in-part. Substantial evidence
supports the Board’s determination that the challenged
claims would not have been obvious over two
references: 1) U.S. Patent Application No. 2005/0245928
(the ’928 Application); and (2) a book chapter which
appears in Masters Techniques in Orthopaedic Surgery:
The Spine (2d ed.) (MTOS). However, we vacate the
Board’s conclusion that certain other references, i.e., a
video entitled “Thoracic Pedicle Screws for Idiopathic
Scoliosis” and slides entitled “Free Hand Thoracic Screw
Placement and Clinical Use in Scoliosis and Kyphosis
Surgery” (Video and Slides), were not prior art because
the Board did not fully consider all the factors for determining
whether the Video and Slides were publicly accessible.
We thus remand for further proceedings.

The art in question:

Medtronic distributed a video demonstration and a related
slide presentation to spinal surgeons at various
industry meetings and conferences in 2003. J.A. 1719–57.
These video and slide sets depict derotation surgeries that
use pedicle screws and other instrumentation to correct
scoliosis. J.A. 1467–72. The Video consists of a narrated
derotation surgery performed in 2001 by Dr. Lenke, who
testified as Medtronic’s expert in this case. J.A. 1467–70.
The Slides include information about the use of pedicle
screws in derotation surgeries, including numerous pictures
from surgeries performed and x-rays of preoperative
and post-operative spines. J.A. 1735–49. The
Board found that the Video and Slides, although presented
at three different meetings in 2003, were not publicly
accessible and therefore were not “printed publications,”
in accordance with 35 U.S.C. § 102.2 As a result, the
Board, in its final decisions, refused to consider these
materials as prior art in its evaluation of the ’358 and ’072


A CD containing the Video was distributed at three
separate programs in 2003: (1) a meeting of the “Spinal
Deformity Study Group” (SDSG) in Scottsdale, Arizona,
on April 10–13, 2003 (the Scottsdale program); (2) the
Advanced Concepts in Spinal Deformity Surgery meeting
in Colorado Springs, Colorado, on May 18–19, 2003 (the
Colorado Springs program); and (3) the Spinal Deformity
Study Symposium meeting in St. Louis, Missouri, on
November 13–15, 2003 (the St. Louis program). J.A.
2651–52, 2667–67. Binders containing relevant portions
of the Slides were also distributed at the Colorado Springs
and St. Louis programs. J.A. 2667, 4633.
The earliest of the three 2003 programs, the Scottsdale
program, was limited to SDSG members. J.A. 5904–
09. Medtronic’s witness, David Poley, described SDSG as
“a gathering of experts within the field of spinal deformity.”
J.A. 5904. About 20 SDSG members attended the
Scottsdale program. J.A. 2651. The other two programs
were open to other surgeons. J.A. 2668. Medtronic sponsored
these programs as medical education courses. J.A.
2666. Approximately 20 and 55 surgeons attended the
Colorado Springs and St. Louis programs, respectively.
J.A. 2667–68, 4633.

Medtronic argues that the Board committed legal error
in concluding that the Video and Slides were not
sufficiently accessible to the public. According to Medtronic,
the Board’s sole basis for this conclusion rested on
its faulty assumption that the materials were distributed
only to members of the SDSG. See J.A. 12–13. Medtronic
points out two problems with this assumption. First, it
argues that the Board improperly ignored evidence that
the Video and Slides were distributed at programs that
were not limited to SDSG members. Second, Medtronic
contends that, even if the assumption were correct, a
reference need only be accessible to the “interested public”
to satisfy the public accessibility requirement, and that,
members of the SDSG fall squarely within that category.
According to Barry, the Board correctly found that
“members of the Spinal Deformity Study Group, who
received the Video and Slides, were experts voted into
membership by an executive board based on their qualifications
and ability to conduct research.” J.A. 12. Because
the slides were only available to experts who are part of a
group limited to members only, and not those of ordinary
skill, Barry argues that the Video and Slides were not
publicly accessible to ordinarily skilled artisans.
Whether a reference qualifies as a “printed publication”
is a legal conclusion based on underlying factual
determinations. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted).

Note footnote 2:

Because the claims at issue in this case have effective
filing dates before March 16, 2013, we apply the
pre-AIA § 102

The CAFC observed:

The determination of whether a document is a “printed
publication” under 35 U.S.C. § 102(b) “involves a caseby-case
inquiry into the facts and circumstances surrounding
the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). “Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
bar under 35 U.S.C. § 102(b).” Blue Calypso, 815 F.3d at
1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
1986)). “A reference will be considered publicly accessible
if it was ‘disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence[]
can locate it.’” Id. (quoting Kyocera Wireless Corp. v. Int’l
Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

The issue of a reference’s public accessibility often
arises in the context of references stored in libraries. In
such cases, we generally inquire whether the reference
was sufficiently indexed or cataloged. Id. Here, we
encounter a different question: whether the distribution of
certain materials to groups of people at one or more
meetings renders such materials printed publications
under § 102(b). We have stated that a printed publication
“need not be easily searchable after publication if it was
sufficiently disseminated at the time of its publication.”
Suffolk Techs., 752 F.3d at 1365 (concluding that an
electronic newsgroup post was sufficiently disseminated
where the newsgroup was populated by those of ordinary
skill in the art and “dialogue with the intended audience
was the entire purpose of the newsgroup postings,” even
though the post was non-indexed and non-searchable).
The parties here do not allege that the Video and Slides
were stored somewhere for public access after the conferences.
Thus, the question becomes whether such materials
were sufficiently disseminated at the time of their
distribution at the conferences. A survey of previous
cases involving distribution of materials at meetings
provides factors relevant to this case.
For example, in Massachusetts Institute of Technology
v. AB Fortia (MIT), a paper that was orally presented at a
conference to a group of cell culturists interested in the
subject matter was considered a “printed publication.”
774 F.2d 1104, 1109 (Fed. Cir. 1985). In that case, between
50 and 500 persons having ordinary skill in the art
were told of the existence of the paper and informed of its
contents by the oral presentation. Id. at 1109. We took
note that the document itself was disseminated without
restriction to at least six persons. Id. at 1108–09. Thus,
whether the copies were freely distributed to interested
members of the public was a key consideration in our

The CAFC found the Board's analysis incomplete:

The record does not show that the Board fully considered
all of the relevant factors. As a threshold matter, the
Board did not address the potentially-critical difference
between the SDSG meeting in Arizona and the programs
in Colorado Springs and St. Louis, which were not limited
to members of the SDSG but instead were attended by at
least 75 other surgeons, collectively. J.A. 2668. Also,
Medtronic’s expert, Dr. Lenke, testified that the materials
were distributed without restrictions at the Colorado
Springs and St. Louis programs. J.A. 1467–68, 3002.
Although the Board found that disclosure to a small group
of experts in the members-only SDSG meeting was insufficient
to compel a finding that the Video and Slides were
publicly available, its analysis was silent on the distribution
that occurred in the two non-SDSG programs.

Further, even if the Board were correct in its assumption
that Medtronic only gave the Video and Slides to the
SDSG members, it did not address whether the disclosures
would remain confidential. The Board found that
SDSG members were experts voted into membership by
an executive board based on their qualifications and
research, but the relatively exclusive nature of the SDSG
membership is only one factor in the public accessibility
analysis. It may be relevant, for example, to consider the
purpose of the meetings and to determine whether the
SDSG members were expected to maintain the confidentiality
of received materials or would be permitted to
share or even publicize the insights gained and materials
collected at the meetings. See, e.g., J.A. 4153 (stating that
the materials were distributed at the SDSG meeting
without restriction or obligation of confidentiality).

Accordingly, whether dissemination of the Video and
Slides to a set of supremely-skilled experts in a technical
field precludes finding such materials to be printed publications
warrants further development in the record. The
expertise of the target audience can be a factor in determining
public accessibility. See In re Klopfenstein, 380
F.3d at 1350–51 (“The expertise of the intended audience
can help determine how easily those who viewed it could
retain the displayed material.”). But this factor alone is
not dispositive of the inquiry. Distributing materials to a
group of experts, does not, without further basis, render
those materials publicly accessible or inaccessible, simply
by virtue of the relative expertise of the recipients. The
nature of those meetings, as well as any restrictions on
public disclosures, expectations of confidentiality, or,
alternatively, expectations of sharing the information
gained, can bear important weight in the overall inquiry.
For these reasons, we vacate the Board’s finding that
the Video and Slides are not printed publications and
remand for further proceedings consistent with this

Saturday, June 09, 2018

YouTube videos and comments to blogs as prior art used by the USPTO?

There is a 8 June 2018 post on the Duets Blog titled Can a YouTube Video Invalidate a Patent? It’s Certainly Possible which contains the text

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public
Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more

As to the USPTO position on YouTube videos as prior art, Patricia E. Campbell wrote in 18 N.C. J.L. & Tech. 187 (2016):

Similarly, in the training materials it distributes to its examiners, the
USPTO states that "otherwise available to the public" is a new catch-all
provision that has no counterpart in pre-AIA law. n122 The types of things that
may qualify as prior art under the AIA include "an oral presentation at a
scientific meeting," "a demonstration at a trade show," "a lecture or speech,"
"a statement made on a radio talk show," and "a YouTube video, Web site, or
other on-line material." n123 Thus, the USPTO apparently believes that, while
these types of disclosures may have been close calls at best under pre-AIA law,
they now constitute prior art if the subject matter is available to the public
in some way.

Note BRADLEY v. Applied Marine, 2014 U.S. Dist. LEXIS 56701 (April 23, 2014) with text

[Applied Marine] contends that Bradley or his attorneys knowingly
and intentionally failed to disclose to the PTO material prior art while applying for the '520 Patent. (Id. ¶ 26.) This
material prior art is a video posted to YouTube (the "Video") showing a sonar mount that includes a mechanism
for preventing and allowing the cross beam to rotate. (Id. ¶ 24.)


For purposes of Bradley's motion, the Court assumes that the YouTube Video constitutes a public use of the claimed invention, that is,
claims 1 through 5 of the '520 Patent. Thus, if the "effective filing date" of the claimed invention is more than a year
after September 9, 2009--the date the Video was posted--the Video is potentially invalidating prior art that should have
been disclosed to the PTO.

As background for the court in Bradley:

In general, a person is not entitled to a patent for a new invention if
the claimed invention was in public use before the effective filing date
of the claimed invention. 35 U.S.C. § 102(a)(1). Section 102(b) provides an
exception for public use by the inventor not more than one year prior to the
applicable filing date. 35 U.S.C. § 102(b)(1).

Of the use of YouTube (and blog comments) as prior art, see DODOCASE VR, INC. v. MERCHSOURCE, LLC, 2018 U.S. Dist. LEXIS 48654 (March 23, 2018):

Defendants then filed three separate PTAB Petitions, challenging each of the three Dodocase Patents, on January 15,
2018. Dkt. No. 23, Am. Compl., ¶ 52. The PTAB Petitions rely on the same three "primary references": (1) U.S. Patent
Publication No. 2013/0141360, which issued as [*8] U.S. Patent 9,423,827 ("Compton"); (2) a comment posted on a
blog entitled, "Why Google Cardboard is Actually a Huge Boost for Virtual Reality" ("Gigaom"); and (3) a YouTube
video entitled, "Use Google Cardboard without Magentometer (Enabling Magnetic Ring Support to Every Device)"
("Tech#"). Id., ¶ 52.
Plaintiff alleges that none of these alleged prior art references invalidate the Dodocase Patents. Id.,
¶¶ 54-62.

On February 2, 2018, Defendants answered the complaint and filed a counterclaim against Plaintiff. Dkt. No. 22. The
counterclaim sought declaratory judgment that each of the three Dodocase Patents is invalid for at least the reasons set
forth in the PTAB Petitions. Id., Counterclaim, ¶¶ 6-26

Of the HVLPO2, LLC controversy, see

2017 U.S. Dist. LEXIS 213978

187 F. Supp. 3d 1097; 2016 U.S. Dist. LEXIS 66758

***An issue to contemplate is the enablement of "prior art" such as YouTube videos. The Antor court holding applied to non-patent printed publications cited by the examiner [689 F.3d 1282; 2012 U.S. App. LEXIS 15637; 103 U.S.P.Q.2D 1555]:

We first address Antor's argument that the Board erred by holding that prior art publications cited by an examiner are
presumptively enabling during prosecution. A prior art reference cannot anticipate a claimed invention "if the allegedly
anticipatory disclosures cited as prior art are not enabled." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1354 (Fed. Cir. 2003). As we stated in Amgen, both claimed and unclaimed materials disclosed in a patent are
presumptively enabling:

In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an
inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed
disclosures) in that [**9] patent that are at issue. In re [page 1288] Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A. 1980)
("[W]hen the PTO cited a disclosure which expressly anticipated the present invention . . . the burden was shifted to the applicant.
He had to rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence." (citation omitted)).
The applicant, however, can then overcome that rejection by proving that the relevant disclosures of the prior art patent are not
enabled. Id.

Id. at 1355 (footnote omitted). We then indicated that that presumption applies in the district court as well as the PTO,
placing the burden on the patentee to show that unclaimed disclosures in a prior art patent are not enabling. Id. That
case, however, did not decide whether a prior art printed publication, as distinguished from a patent, is presumptively
enabling during patent prosecution. Id. at 1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today."). As
the issue regarding non-patent publications is squarely before the court today, we now hold that a prior
art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent
applicant or patentee.

As to unusual evidence, recall the story of Ányos István Jedlik , who did not disclose his work on the dynamo until 1861 when he mentioned it in writing in a list of inventory of the university.

Separately, one wonders if posts on Facebook, as prior art, will "cut into" the "first inventor to file" rule.
Recall, way back in the aluminum patent interference, that personal letters were used as evidence:

The same day and the day after, he [ Hall]wrote two letters to his brother George, explaining the theoretical and experimental conditions of his invention, and already putting some questions about filing a patent and then getting up a company.  In July 1886, he and George made the trip to Washington and filed an application at the Patent Office. But he was astounded to learn that the French Paul Héroult had already applied for a US patent for the electrolysis of aluminium in April 1886. This was the beginning of a three years long litigation between the two young inventors. Thanks to the letters to his brother and the testimonies of Julia and Professor Jewett, Hall was finally able to establish that his invention predated Paul Héroult’s application. On April 2, 1889, he was granted the patent he had filed in July 1886, as well as three other patents he had applied for in the meantime

Separately, as IPBiz noted as to the "Sikahema effect," posts on the internet can come and go. Will screenshots become prior art, even when the original has vanished?

"But nothing can ever truly be deleted on the Internet"

Separately, things on the internet can be quite malleable, with changes made after the "posting date."

In a case involving contact to a website, New Jersey, and copyright, note from a post about -- The Adventures of Buckaroo Banzai Across the 8th Dimension --

MGM contends that the services of Rauch and Richter were provided on a "work-made-for-hire" basis," or alternatively, that it was assigned "all exclusive rights under copyright to the screenplay and motion picture, and the characters, plots, themes, dialogue, mood, settings, pace, sequence of events, and other protected elements therein."

The lawsuit adds that MGM and its predecessors had creative control over the Buckaroo Banzai project and contributed copyrightable elements.

MGM also is asserting that Richter violated a publicity provision of his contract by talking to one film website about MGM's lack of rights to the property. Additionally, Richter and Rauch are said to be in breach of this provision via statements made on Facebook.


Sort of reminds one of a line in The Other End of the Line between an Indian call center worker working New Jersey calls and her supervisor:

Worker: "May I please move out of New Jersey? Everyone keeps swearing at me."

"You know the rules. Everyone starts in New Jersey and works their way out."

***UPDATE. June 10, 2018

A further issue is accuracy of items posted on the internet.

CBS Sunday Morning reported:

And now a page from our "Sunday Morning" Almanac: June 10, 1905, 113 years ago today – the day America's first forest fire lookout tower went into operation on top of Squaw Mountain in Maine, with 19-year-old William Hilton as its watchman.



The first fire lookout strictly for protection of American forests was built in 1902 at Bertha Hill near Headquarters, Idaho.



Originally named Thunder Mountain, Bertha Hill has the distinction of being the first forest fire lookout in the Western U.S., in 1902.


Thursday, June 07, 2018

Brain atrophy in multiple sclerosis

Rebecca Spain has been studying lipoic acid as an agent to reduce the rate of brain shrinkage in MS patients. From a report to the
US Dept of Veterans Affairs:

Despite all the breakthroughs in MS research, treatments for secondary progressive MS (SPMS) are still lacking. With the help of many colleagues, I (Dr. Rebecca Spain) conducted a pilot trial at the VA Portland Health Care System to see if the over-the counter supplement, lipoic acid, would help people with SPMS. Lipoic acid is a substance naturally made by our bodies. It has a number of useful actions such as boosting energy production of cells, keeping the immune system from over-reacting, and fighting damaging and aging forces (free radicals) in the body. Although we don’t fully understand what happens to cause SPMS, we do know that a loss of energy, altered immune system, and free radicals may all make SPMS worse. Therefore, it made sense to see if lipoic acid could help slow the worsening of disability in SPMS.


Why is brain atrophy important? Brain atrophy is a normal part of aging that happens to all of us, starting in our mid-20’s. However, in MS this atrophy can happen faster than the normal pace. The increased brain atrophy goes hand in hand with greater MS disability. Therefore, we believe that by slowing the rate of atrophy, we may slow the rate of worsening disability from MS.


MutlipleSclerosisNewsToday discusses the significance of a specific atrophy measure, the shrinkage of previously existent lesions:

However, researchers now suggest that the disappearance of lesions may indicate pathological change, such as atrophy, as well as beneficial alterations, including resolution or repair of myelin (the protective layer of nerve fibers which is typically damaged in MS patients).

Focusing on pathological changes in brain lesions, the scientists examined lesions observed in prior scans, but later replaced by cerebrospinal fluid (the liquid filling the brain and spinal cord). This opposed the traditional approach of examining new lesions, they noted.

“The big news here is that we did the opposite of what has been done in the last 40 years,” Michael G. Dwyer, PhD, first author of the five-year study, said in a press release. “Instead of looking at new brain lesions, we looked at the phenomenon of brain lesions disappearing into the cerebrospinal fluid.

Specifically, investigators compared the rate of lesion loss due to atrophy to the appearance or enlargement of lesions both at the start of the study and at five or 10 years of follow-up.

Conducted at the University at Buffalo (UB) in New York, the five-year study included 192 patients with either the most common form of MS, relapsing-remitting MS (126 patients), progressive MS (48), or clinically isolated syndrome — the first episode of inflammation and loss of myelin, but not yet meeting the criteria for MS.


“We didn’t find a correlation between people who developed more or larger lesions and developed increased disability,” Dwyer said, “but we did find that atrophy of lesion volume predicted the development of more physical disability.”

When dividing the analysis by MS types, the scientists found that patients with relapsing-remitting MS had the highest number of new lesions, while those with progressive MS (the most severe subtype of the disease) had the most pronounced atrophy of brain lesions.

“Atrophied lesion volume is a unique and clinically relevant imaging marker in MS, with particular promise in progressive MS,” the researchers wrote.

“Paradoxically, we see that lesion volume goes up in the initial phases of the disease and then plateaus in the later stages,” said Robert Zivadinov, MD, PhD. Zivadinov is senior author of the five-year study and first author of the 10-year research. “When the lesions decrease over time, it’s not because the patients’ lesions are healing but because many of these lesions are disappearing, turning into cerebrospinal fluid.”


The Buffalo work is not inconsistent with that of Rebecca Spain, and tends to support Spain's strategy.

See also
Lipoic acid and secondary progressive multiple sclerosis

Is Gabibbo a knock-off of "Big Red" of Western Kentucky University?

See the post
Italian court affirms merits of plagiarism suit filed by creator of Western Kentucky's Big Red

Gabibbo is a symbol of a satirical news show Mediaset airs in Italy. Big Red is a red, furry blob created by WKU student Ralph Carey in 1979 [the school sports teams are named Hilltoppers.] For a likeness of Big Red, see SBNation:

As to trademark issues, an animal likeness can be claimed in different use areas (e.g. Tony the Tiger for cereals vs. the Exxon tiger). Can one copy a non-real animal likeness? Must the copying be exact?

As to copyright issues, how exact must the copying be of an otherwise not-preexisting "creature"?


See also

Secondary meaning issue in the Converse case

On 7 June 2018, the CAFC ordered briefing in the Converse v. ITC case:

No later than June 27, 2018, the parties shall file
simultaneous letter briefs, not to exceed 15 double-spaced
pages, addressing the following. Under Aromatique, Inc.
v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir. 1994), and
related cases, the presumption of secondary meaning
applies only from the date of registration forward.


1. Was Converse required to show priority in the
mark (i.e., secondary meaning at the time of first
infringement) without regard to the presumption of
validity that would exist if its trademark registration
is valid?
2. What significance does the registration of the mark
or its validity have in these proceedings?
3. Was it necessary or appropriate for the ITC to address
the validity of the registered mark?

CAFC addresses "SAS Institute" issues in PGS Geophysical

PGS Geophysical AS owns U.S. Patent No. 6,906,981, which describes and claims methods and systems for performing “marine seismic surveying” to determine the structure of earth formations below the seabed. WesternGeco, L.L.C., a competitor of PGS’s, filed three petitions requesting inter partes reviews (IPRs) of claims 1– 38 of the ’981 patent. The Patent Trial and Appeal Board of the Patent and Trademark Office (PTO), acting as the PTO Director’s delegate, instituted three IPRs, but it specified for review only some of the claims WesternGeco challenged and only some of the grounds for WesternGeco’s challenges, not all claims or all grounds. In its final written decisions in the IPRs, the Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. Both PGS and WesternGeco appealed, but WesternGeco then settled with PGS and withdrew, leaving only PGS’s appeals as to certain claims of the ’981 patent that the Board ruled unpatentable for obviousness. The Director intervened to defend the Board’s decisions. 35 U.S.C. § 143.

We affirm. We first conclude that, although SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board’s final written decisions and that we need not, and will not, sua sponte revive the “non-instituted” claims and grounds.

We first consider whether we have jurisdiction to address PGS’s appeals and whether, if so, we may and should decide those appeals and do so without sua sponte remanding for the Board to address the claims and grounds that WesternGeco included in its petitions but
that the Board excluded from the IPRs. Both PGS and the Director answer yes to those questions. So do we. The issue arises because of the Supreme Court’s recent decision in SAS, which held that the IPR statute does not permit a partial institution on an IPR petition of the sort presented here. 138 S. Ct. at 1352–54. Neither PGS nor the Director asks for any SAS-based action— whether to block our deciding the appeal on the instituted claims and grounds or to revive the “non-instituted” claims or grounds. Nor has a request for SAS-based relief been filed by WesternGeco, which settled with PGS and withdrew from the appeals long ago.

We will treat claims and grounds the same in considering the SAS issues currently before us. In light of SAS, the PTO issued a “Guidance” declaring that the Board will now institute on all claims and all grounds included in a petition if it institutes at all. PTO, Guidance on the impact of SAS on AIA trial proceedings (Apr. 26, 2018).2 The cases currently in this court, which emerged from the Board under pre-SAS practice, raise certain transition issues. We will address those issues without distinguishing non-instituted claims from non-instituted grounds. Equal treatment of claims and grounds for institution purposes has pervasive support in SAS. Although 35 U.S.C. § 318(a), the primary statutory ground of decision, speaks only of deciding all challenged and added “claim[s],” the Supreme Court spoke more broadly when considering other aspects of the statutory regime, and it did so repeatedly.


We read those and other similar portions of the SAS opinion as interpreting the statute to require a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition, and we have seen no basis for a contrary understanding of the statute in light of SAS. We note that it is a distinct question (not presented here) whether, after instituting on the entire petition, the Board, in a final written decision, may decide the merits of certain challenges and then find others moot, the latter subject to revival if appellate review of the decided challenges renders the undecided ones no longer moot.


Finality is also seen by drawing on the analogy to civil litigation the Court invoked in SAS. What the Board did here is analogous to a situation in which a district court, upon receipt of a two-count complaint, incorrectly dismisses one count early in the case (without prejudice to refiling in that forum or elsewhere) and proceeds to a merits judgment on the second count. Once the second count is finally resolved, there would be a final judgment in that situation, with both counts subject to appeal. The early dismissal would be final as to that claim, see United States v. Wallace & Tiernan Co., 336 U.S. 793, 794 n.1 (1949) (involuntary dismissal without prejudice is reviewable final judgment if it stands alone); H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1383 (Fed. Cir. 2002) (same); Cyprus Amax Coal Co. v. United States, 205 F.3d 1369, 1372 (Fed. Cir. 2000) (same), though not immediately reviewable. Under broadly recognized principles addressing review of partial dispositions once the rest of the case is resolved, see 15A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure §§ 3914.7, 3914.9 (2d ed. 2018), the early dismissal would become reviewable upon “the entry of a judgment adjudicating all the claims,” Fed. R. Civ. P. 54(b).


Having found jurisdiction, we readily conclude that we may decide PGS’s appeals of the Board decisions and that we need not reopen the non-instituted claims and grounds. In this case, no party seeks SAS-based relief. We do not rule on whether a different conclusion might be warranted in a case in which a party has sought SASbased relief from us. We have uncovered no legal authority that requires us sua sponte to treat the Board’s incorrect denial of institution as to some claims and grounds either as a basis for disturbing or declining to review the Board’s rulings on the instituted claims and grounds or as a basis for reopening the IPRs to embrace the non-instituted claims and grounds. Even if the Board could be said to have acted “ultra vires” in refusing to institute reviews of some claims and grounds—and then proceeding to merits decisions concerning the claims and grounds included in the instituted reviews—the Board’s error is waivable, not one we are required to notice and act on in the absence of an appropriate request for relief on that basis. See CBS Broad., Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 520 n.27 (11th Cir. 2006) (finding challenge to FCC action as ultra vires waived). S

**As to the obviousness issue-->

As relevant here, “[t]he obviousness inquiry entails consideration of whether a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and . . . would have had a reasonable expectation of success in doing so.” Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed. Cir. 2015) (internal quotation marks and citation omitted). Such a motivation and reasonable expectation may be present where the claimed invention is the “combination of familiar elements according to known methods” that “does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415–16 (2007). Whether there would have been such a motivation on the relevant priority date is an issue of fact, and we review the Board’s finding on the issue for substantial-evidence support. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1021 (Fed. Cir. 2017), cert. denied, 2018 WL 1994802 (U.S. Apr. 30, 2018) (No. 17-349). “Substantial evidence . . . means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938); Skky, Inc., 859 F.3d at 1021.
PGS contends that the Board did not really make the needed motivation finding. It cites decisions in which we have explained that the finder of fact in a case like this must go beyond the question of whether one of ordinary skill in the art could have combined the references at issue (in the way claimed) to answer the question of whether such an artisan would have been motivated to do so. See, e.g., Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Although the questions are related, clarity in distinguishing them is important, and its absence has sometimes justified a remand. E.g., Personal Web, 848 F.3d at 994. Nevertheless, while “we may not supply a reasoned basis for the agency’s action that the agency itself has not given, we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.” Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 286 (1974) (citing SEC v. Chenery Corp., 332 U.S. 194, 196–97 (1947)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016). And in this case, we think that, in the end, the Board did not fail to address the motivation question. We understand the Board to have answered that question. Immediately after stating that PGS “does not dispute Petitioner’s assertion that the combination of Beasley and Edington describes each element of independent claim 1, but merely asserts that an ordinarily skilled artisan would not have combined Beasley and Edington,” it concluded: “Accordingly, upon reviewing the record developed during trial, we are persuaded by Petitioner’s position regarding the relevant teachings of Beasley and Edington and address in detail only the disputed issues relating to the combinability of Beasley and Edington.” 309 Final Decision, 2016 WL 3193820, at *11. The Board also affirmatively focused on the “other types of encoding” language of Beasley as an affirmative suggestion to look elsewhere, especially to a time-delay reference, in light of Beasley’s contemplation of small time delays between firing seismic sources, as we have discussed.

“[T]he motivation to modify a reference can come from the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). We are left with no meaningful doubt about the Board’s motivation finding and its basis.


Federal employees as inventors

In a 5 June 2018 post, printingimpressions discussed a patent to an employee of the U.S. Government Publishing Office:

U.S. Government Publishing Office (GPO) Senior Chemist Mary Kombolias, of Rockville, Md., has been granted a patent from the U.S. Patent and Trademark Office for inventing a new method of adhesive testing on secure documents produced by the GPO. Some of those include U.S. Passports and visa documents. Her invention will be used to help prevent forgery, counterfeiting, identity theft, unauthorized duplication, and immigration fraud.


Kombolias filed the non-provisional application for the patent in July 2015 and was issued US Patent number 9,927,337 on March 27, 2018. It is the first patent granted to a GPO employee since the World War II-era.


See the 2008 post on IPBiz:
Federal employees as inventors

Blast from the past: the Sibley tent patent litigation

In the 1989 Miami Vice episode "World of Trouble". one has a different take on government funded inventions.
Therein, the character Lawrence Fowler (played by Vincent Schiavelli) was a research scientist at Systex Corporation, a leading defense contractor, who received only $5000 for his invention of HAVOC, an acronym for High Voltage Vehicle Override Capacitor. Disgruntled, Fowler arranges for Salvatore "Sal" Lombard tp steal HAVOC from Systex in exchange for $200,000, so Fowler can set up his own research lab.

Sal is murdered in a hit intended for his father, played by Dennis Farina. The ending of the episode is similar to the ending of the 2008 movie "Gran Torino", with Farina going the way of Eastwood's Kowalski. The IP issues vanish from the episode.

The appearance of HAVOC was similar to that of a railgun. Note US patent on 1 April 1919, which was issued in July 1922 as patent no. 1,421,435 "Electric Apparatus for Propelling Projectiles"

The relation of the USS Indianapolis to present day matters

On June 6, 2018, CBS re-broadcast the episode "Boarding Party" of the show "Seal Team," first seen October 11, 2017. Within the episode is an allusion to the sinking of the USS Indianapolis, and the shark attacks on survivors, in the area in which the Seal Team is operating:

These are the very same waters where the USS Indianapolis sank in 1945.
Hundreds of American crewmen survived the sinking only to end up, sadly, eaten by sharks.

As to this episode of Seal Team, there were no sharks, and the allusion to the Indianapolis was a throw-away line. See for example SEAL Team Season 1 Episode 3 Review: Boarding Party . Further, notwithstanding Robert Shaw's text in the movie Jaws, it is not clear "how many" live survivors (as opposed to dead ones) were consumed by sharks.


** Of relevance in June 2018 is the fate of the commander of the Indianapolis, Charles B. McVay III, who was court-martialed in 1945, and committed suicide in 1968, with his body found by his gardener. As to June 2018, see Designer Kate Spade's death renews conversation about mental health awareness .

** As to schools in Pensacola, Florida, note the efforts of Hunter Scott, supported by then Republican Congressman Joe Scarborough, which contributed to a Congressional resolution exonerating McVay in the year 2000.

**Although the text in "Boarding Party" did not mention issues in the location of the USS Indianapolis, it was a blog post in the year 2015 that led to the locating of the sunken USS Indianapolis:

For Memorial Day 2015, Mackinaw City businessman John Murdick decided to honor the World War II service of his father Francis Murdick on the website of his family business by sharing a story his dad told about his tank landing ship being passed by USS Indianapolis (CA 35) on the cruiser’s final day.

What the younger Murdick couldn’t have known was that his humble tribute would set in motion a series of studies that would change the Navy’s understanding of a 70 year old mystery and a little more than two years later, play a small role in providing closure to the nearly 1,200 families of Indy’s crew and resolve one of the greatest mysteries of World War II naval history.


Indianapolis was one of the “Holy Grails” of ship wreck hunters since the finding of the Titanic, and a number of researchers have approached the Naval History and Heritage Command (NHHC) for historical, navigational and archaeological support over the years including Allen and his director of subsea operations Robert Kraft.

Then Navy historian Richard Hulver, Ph.D., while working to reexamine the history of Indianapolis in preparation for upcoming World War II 75th anniversary commemorations, came across Murdick’s blog post about his dad seeing Indianapolis.

That blog post led Hulver to the deck logs of Murdick’s ship LST-779, which were on file at the National Archives. The deck logs contained an entry noting their gunnery practice in detail which lined up with what Indianapolis’ Captain McVay remembered about the chance passing encounter. While the LST deck logs did not specifically mention passing Indianapolis, the matching narratives of the gunnery practice was enough to use as the basis to get new, reliable coordinates for the ship during her final hours.

See Finding USS Indianapolis – After 70 Years, What Changed?

Also on Hulver's work:

When the archives appeared fruitless, [Hulver] turned to Google.

“It was kind of an act of desperation, really,” Hulver said.

He searched for the identify of the LST using different keywords, hoping some snippet of information would pop up. And then around Christmas of 2015, there it was, six or seven pages into a search: Murdick’s blog.

“I was really trying to find a piece of that puzzle, and that’s where that blog really helped me out,” Hulver said.

It was information that Hulver could take back to National Personnel Records Center to find the name of the LST that Francis Murdick had served on that day. In the records, Hulver found the name of the ship, USS LST-779, and he took that to the National Archives to retrieve a copy of the LST’s deck log. With that, he was able to determine where the encounter took place.


The key blog post Francis G. Murdick – My Father contains the text:

My dad and his buddies lamented about how great it would be to be on a Cruiser like the Indianapolis.

**As to a timeline, the US (with the UK and China) called for unconditional surrender of Japan in the Potsdam Declaration on July 26, 1945. The USS Indianapolis delivered parts and enriched uranium-235 to Tinian Island for the atomic bomb "Little Boy" on July 26, 1945. The USS Indianapolis was sunk July 30, 1945. Seven days after the sinking, the first atomic bomb was dropped on Hiroshima on August 6, 1945. Those who died in the sinking would never learn of the details, or success, of their mission. Recall that the USSR was not at war with Japan on July 26, 1945 (as a result of the neutrality treaty of April 1941) but declared war on Japan on August 9, 1945.

Note a previous post on IPBiz related to the USS Indianapolis:

The cover story [of CBS Sunday Morning on 12 June 2016] titled Remembering the Titanic of Shark Attacks has a New Jersey theme, relating to shark attacks that happened near Matawan 100 years ago.

One might suspect that shark attacks on survivors of the sinking of the Indianapolis might rate higher than those in New Jersey;
as pointed out on wikipedia: a 2007 episode of the Discovery Channel TV documentary series Shark Week, states that the Indianapolis sinking resulted in the most shark attacks on humans in history. And, there is another theme in the Indianapolis sinking related to the Titanic:

The Indianapolis sent distress calls before sinking. Three stations received the signals; however, none acted upon the call. One commander was drunk, another had ordered his men not to disturb him and a third thought it was a Japanese trap. For a long time the Navy denied that a distress call had been sent. The receipt of the call came to light only after the release of declassified records.


link to IPBiz:

Note also that Hulver wrote in 2018:

This entire event shows the inherent difficulties in accounting for casualties in the fog of war and in verifying those figures years after the fact—particularly with an episode as chaotic as the loss of Indianapolis. We can now confirm, 73 years later, that the Navy’s number of survivors in 1945 was correct at 316, and that the final crew list for that tragic voyage has been corrected to show 1,195 men were on board and 879 lives lost.

**Separately, as to a possible "intellectual property" relation to Kate Spade's death, note text at AFP

Designer Kate Spade, who committed suicide in New York this week, had been treated for depression and anxiety for five years, her husband said Wednesday.

"She was actively seeking help for depression and anxiety over the last five years, seeing a doctor on a regular basis and taking medication for both depression and anxiety," her husband Andy Spade said in a statement carried by The New York Times.

It was a blunt rebuke to claims by the designer's sister that Kate Spade needed mental health care but refused treatment over concerns about potentially hurting the light-hearted brand.


As to "Little Boy," note the Wigner effect in graphite.