Thursday, March 15, 2018

CAFC reverses ED Pa in DOMINION ENERGY case; expert witness skewered

The appellant Alstom prevailed.

This is an appeal from a final judgment following a
jury trial in a patent infringement case. Alstom Grid LLC
(“Alstom Grid”) appeals the district court’s (1) denial of
judgment as a matter of law (“JMOL”) of noninfringement,
(2) denial of its motion to vacate or remit the jury’s
reasonable royalty damages award, (3) denial of JMOL of
no willful infringement and grant of enhanced damages,
and (4) grant of a permanent injunction. For the reasons
explained below, we reverse the district court’s denial of
JMOL of noninfringement based on an absence of substantial
evidence to support the jury verdict
. For that
reason, we vacate the damages award, judgment of willful
infringement, enhanced damages award, and permanent
injunction. We remand for further proceedings consistent
with this opinion.

At issue

The question before us is whether substantial evidence
supports the jury’s finding that the accused system
includes every limitation of the asserted claims. We
conclude that it does not. As discussed above, the asserted
claims require “generat[ing] an energy delivery parameter
based on a comparison of the measurement data
received from the subset to a controller target voltage
band.” See ’883 patent claims 1, 15. The claims require a
comparison of two specific things. Evidence of a comparison
of something other than those two things does not
support a finding of literal infringement.
We conclude that no reasonable juror could find that
the accused product compares the measured data to a
controller target voltage band. The evidence presented to
the jury shows that the accused system compares the
measured data to a single calculated voltage, as opposed
to a voltage band as required by the claims.

The expert witness did not fare well:

Dominion relies heavily on the testimony of
Dr. Brown, its technical expert. Dr. Brown’s testimony,
however, does not provide substantial evidence to support
the jury’s verdict because his testimony was conclusory,
unsupported, contrary to the evidence in the case, or not
directed to the claim limitation at issue. We address the
problems with his testimony below.


Beyond his conclusory testimony, Dr. Brown made
several critical admissions. First, Dr. Brown agreed that
the accused system compares the calculated voltage—not
the measured voltage—to a target band:
[Alstom Grid] compare[s] the calculated voltage to
the measured voltage to determine the error. And
then they use that error to adjust the limits. And
then they compare the calculated voltage to the
adjusted limits in their software.
J.A. 10562–63. Dr. Brown also admitted that the limitadjustment
algorithm code, which is the key algorithm in
the accused system, does not compare the measured
voltage and a target voltage band. Dr. Brown further
admitted that the accused function “operates on calculated
voltages” and “never uses measured voltage to generate
an energy delivery plan.” J.A. 10489–90, 10493. These
admissions further support our conclusion that a reasonable
jury would not have a legally sufficient evidentiary
basis to find for Dominion on the issue of direct infringement.

Intellectual Ventures [IV] loses at CAFC in appeal of decision by Judge Stark in SYMANTEC CORP case

From the case at D. Delaware, IV v. SYMANTEC CORP :

We have considered IV’s other arguments and find
them without merit. For the foregoing reasons, and for
those expressed in more detail in the district court’s
thorough and carefully considered orders, we affirm the
district court’s judgment.

Appeals from the United States District Court for the
District of Delaware in No. 1:13-cv-00440-LPS, Chief
Judge Leonard P. Stark.

***Separately, on blawgsearch on 15 March 2018:

Wednesday, March 14, 2018

The significance of the finding "patents with higher reverse citation counts are less likely to survive review "?

Within s post titled Which Patents Get Instituted During Inter Partes Review ? , Michael Risch discusses a paper on SSRN titled Determinants of Patent Quality: Evidence from Inter Partes Review Proceedings, with a reference to an observation:

•Patents with more backward citations are more likely to be instituted (this is counterintuitive, but consistent with my own study of the patent litigation)

The abstract of the SSRN paper actually states:

patents with higher reverse citation counts are less likely to survive review

and from the body of the SSRN paper

Patents with more reverse citations and patents with more reverse citations added by the examiner are both more likely to be instituted, with an additional 10 reverse citations associated with a 0.15 percent increase in the chance of institution, and an additional 10 reverse citations added by the examiner associated with an impressive 1.8 percent increase in the chance of institution


We next identified all prior art references that were cited during the patent’s prosecution (often referred to as “reverse citations”). In addition to determining the overall count of such citations, we also determined the number of reverse citations to foreign patents, as well as the number and type of reverse citations to “non-patent literature” (NPL) such as academic articles, books, and websites. Finally, for all patents issued in 2001 or thereafter, we were additionally able to determine whether reverse citations to patents and applications were disclosed by the applicant or, instead, were identified and cited by the examiner in an office action.185

As to terminology, a "reverse" citation is a reference in the patent to a document in existence BEFORE patent issue. A "forward" citation is a reference TO the issued patent by a document coming later in time.

As to expectations, the SSRN article wrote:

Moving next to data that proxies the scrutiny each application received from the USPTO, we again find a number of significant correlations with institution. First, as shown below in Table 10, we find a significant correlation between institution and various categories of “reverse citations.” While one might expect institution to be negatively correlated with counts of such citations—e.g., on the theory that more diligent applicants and examiners will tend to find and review more prior art224—we actually find the opposite. We observe that never-instituted patents cited fewer pieces of prior art overall, had fewer prior art citations added by the examiner, and cited to fewer pieces of nonpatent prior.

In the end

To the contrary, as our findings with respect to reverse citations also attest, it may be the case that more unique inventions have less prior art and thus face a speedier path to issuance


All in all, our findings suggest that reverse citations and the frequency of examination events are, at best, noisy proxies for quality.

The SSRN paper did not seem to address the issue that a relatively weak application might flood the examiner with many references in an attempt to "bury" the most relevant references. In some art areas, an applicant might include many prior art references to avoid any possibility of inequitable conduct for withholding references. This might be more likely when the prosecuting attorney is not familiar with the art in question, and has difficulty in assessing relevance.

Hologic loses appeal at CAFC on Pi Day 2018

The outcome

Appellant Hologic, Inc. initiated an inter partes reexamination of U.S. Patent No. 8,061,359, which is owned by Appellees Smith & Nephew, Inc. and Covidien LP (together, “S&N”). S&N’s ’359 patent claims priority to an earlier-filed PCT application by the same inventor with a nearly identical specification. The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board found that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference. Hologic, Inc. v. Smith & Nephew, Inc., No. 2016-006894, 2016 WL 6216657 (P.T.A.B. Oct. 21, 2016) (“Board Decision”). Hologic appeals. We affirm.


The issue before the Board—and before us on appeal—is whether Emanuel PCT, which discloses a “connection to a fibre optics bundle which provides for lighting at the end of lens 13,” provides sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the ’359 patent’s claims. See Emanuel PCT at 4:34–36. If it does, then the ’359 patent properly claims priority based on Emanuel PCT. If it does not, then Emanuel PCT is prior art to the ’359 patent and invalidates it as obvious. The Board, after briefing and review of expert testimony, found that the disclosure in Emanuel PCT provides sufficient written description support for the claimed “light guide,” entitling the ’359 patent to the priority date of Emanuel PCT. Accordingly, the Board reversed the examiner’s rejections of the ’359 patent’s claims.

Of some note, the CAFC brought up extrinsic evidence:

In addition to the intrinsic evidence discussed above, prior patents reflecting the state of the art at the time of the invention and expert testimony regarding that evidence further support the Board’s findings. The ’359 patent on its face lists several pieces of prior art, including U.S. Patent No. 4,606,330 (“Bonnet”) and U.S. Patent No. 4,706,656 (“Kuboto”). Bonnet and Kuboto both describe endoscopes with permanently affixed light guides. S&N’s experts, Dr. Keith B. Isaacson and Mr. Richard J. Apley, each testified that the figures in Emanuel PCT look more like the figures in Bonnet and Kuboto than figures in several prior art patents directed to removable light guides. Specifically, Dr. Isaacson testified that, as of at least September 1998, a person of ordinary skill in the art would have known that there were two types of endoscopic systems generally available for use in surgical procedures: a removable “telescope,” or a unitary integrated device—like Bonnet and Kuboto.


Hologic argues that the Board improperly relied on prior art to supply missing claim elements. We do not agree. The Board simply considered what the specification reasonably conveys to the skilled artisan who has knowledge of the prior art. See Ariad, 598 F.3d at 1351. The Board did not err in this regard.

Thursday, March 08, 2018

Harvard University announces settlement of dispute with Micron over Gordon technology

From a press release by Harvard on 2 March 2018:

Harvard and Micron have settled the litigation regarding the asserted Harvard-owned patents, on confidential terms. The patented technology, which was invented by Professor Roy G. Gordon and members of his Harvard laboratory, relates to the deposition of thin films of metals and other materials onto surfaces.

The case was President and Fellows of Harvard College v. Micron Tech., Inc., Civil Action No. 16-11249-WGY, initially filed in United States District Court for the District of Massachusetts. It was subsequently transferred to the U.S. District Court in Delaware, as Civil Action No. 17-01729-LPS-SRF. Further details regarding the resolution of the case are confidential.

If it's not on the internet, does it not exist?

In a recent post titled "But nothing can ever truly be deleted on the Internet" , IPBiz questioned whether it was true that "nothing" can be deleted from the internet.

On the flip side, a certain travel site recently denied that there was a park called "The Island" located near Santos, Florida, on the basis that it could NOT be found on the internet.

Just to rectify this issue, IPBiz posts the following pictures of the very real park, located south of the Marion County Sheriff sub-station on US 441, between Belleview and Ocala.



In the 1930s, there were plans for a cross-Florida canal, and a bridge was proposed to cross the canal near Santos, Florida. A schematic of the bridge appears at "The Island."


The park "The Island" encloses trestles from the never completed bridge




The CAFC discusses 101 in Exergen v. Kaz

Although Exergen v. Kaz is non-precedential, it tackles a variety of issues, including 101, right to jury trial,
and damages.

Of 101,

What the parties
dispute, however, is whether the additional claimed steps
beyond calculating the temperature present a novel
technique in this computation or add an inventive concept
sufficient to transform the claims into a patent-eligible
The district court reasoned that “while the asserted
claims are based in natural phenomena,” the claims recite
additional steps which, like the claims in Diamond v.
Diehr, 450 U.S. 175 (1981), “transformed the underlying
natural laws into inventive methods and useful devices
that noninvasively and accurately detect human body
temperature.” J.A. 110, 113–14. The court noted that the
asserted claims each recite a subset of three steps: (1)
moving while laterally scanning (’685 patent claims 7, 14,
and 17; ’938 patent claims 17, 24, 33, 60, and 66); (2)
obtaining a peak temperature reading (’685 patent claim
7; ’938 patent claims 60 and 66); and (3) obtaining at least
three readings per second (’938 patent claims 17, 24, 39,
40, 46, and 49). Kaz argued both below and on appeal
that these additional elements were known in the prior
art. The district court held simply being known in the art
did not suffice to establish that the subject matter was not
eligible for patenting. The district court recognized that a
“new combination of steps in a process may be patentable
even though all the constituents of the combination were
well known and in common use before the combination
was made.” J.A. 112 (quoting Diehr, 450 U.S. at 188).


The district court’s conclusion that these claim elements
were not well-understood, routine, and conventional
is a question of fact to which we must give clear error
deference. Like indefiniteness, enablement, or obviousness,
whether a claim is directed to patentable subject
matter is a question of law based on underlying facts.
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1343 (Fed. Cir. 2016)

Wednesday, March 07, 2018

Joe Newman reprised at the writtendescription blog

Michael Risch has a post on the Newman saga titled The Quest to Patent Perpetual Motion .

I tried to write a comment, but because I had logged on from a machine (not my own) I got bounced quickly as an imposter performing
"suspicious activity."

For now, I include a link to an earlier 2007 post on IPBiz, which contains an interesting comment.


LBE actually saw the 1984 CBS Evening News broadcast with Dan Rather, which left viewers with the impression that Newman could be right.

As writes

There was no one on the CBS Evening News to challenge Newman's claim. On the contrary, the report included endorsements from two "experts" who had examined Newman's Energy Machine. Roger Hastings, a boyish-looking Ph.D. physicist with the Sperry Corporation, declared, "It's possible his theory could be correct and that this could revolutionize society." Milton Everett, identified as an engineer with the Mississippi Department of Transportation, told viewers, "Joe's an original thinker. He's gone beyond what you can read in textbooks." Watching the CBS broadcast that evening, most viewers must have been left wondering how the Patent Office could be so certain Joe Newman was wrong.

In 1986, the Orlando Sentinel had an article which included text:

Physicist Roger Hastings, highly respected manager of the Sperry Corp.'s Superconductive Electronics Technology Center was an original skeptic. Not now:

''On Sept. 19, 1985,'' he said in an affidavit, ''the motor was operated at 1,000 and 2,000 volts battery input, with output powers of 50 and 200 watts respectively. Input power in these tests were 7 and 17 watts, yielding efficiencies of 700 percent and 1,400 percent.

''Every experiment that I have performed shows that the energy output of the device is indeed larger than the energy input. The future of the human race may be dramatically uplifted by the large-scale commercial development of this invention.''

Hastings said he thinks Newman's auto engine prototype will succeed. The original power source would be a dry cell battery pack.

''I firmly believe . . . that Mr. Newman's car will consume at least 15 times less energy from the batteries than present commercial electric cars,'' Hastings said. ''This energy savings could be used for any combination of longer running time, higher speed, or larger vehicle compared with present designs. Newman's car motor will operate on high voltage, will have high torque at low current, and will probably consume a fraction of one horsepower.''


An article in the 1985 Los Angeles Times contained the text: "This is not a perpetual motion machine and Joe has never said it was," said Hastings, who agreed that with "intensive development" Newman's machine could "run a home or a car."

Judge Newman on stare decisis in Ottah v. Fiat

In Ottah v. Fiat, Judge Newman had an opportunity to discuss claim construction.

This court had previously reviewed claim construction
of the ’840 Patent, and ruled that several claim limitations
require that the claimed book holder has a “removable
mounting.” VeriFone, 524 F. App’x at 629 (construing
the “removably attached” term). The VeriFone court held
that mounts that cannot be removed without tools do not
literally infringe claim 1, stating that claim 1 “is clear on
its face” and that “nothing in the specification suggests
that the claim language should be interpreted in a way at
variance with its ordinary meaning.” Id.

The ruling on claim scope is a matter of “claim construction,”
which is ultimately a question of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
836–38, 841–42 (2015). The issue was finally decided and
is not subject to collateral review. See Markman v.
Westview Indus., Inc., 517 U.S. 370, 390–91 (1996) (recognizing
the need for “uniformity in the treatment of a given
patent” and noting that “treating interpretive issues as
purely legal will promote (though it will not guarantee)
intrajurisdictional certainty through the application of
stare decisis on those questions not yet subject to interjurisdictional
uniformity under the authority of the single
appeals court”); see also Restatement (First) of Judgments
§ 70, cmt. a (Am. Law Inst. 1942), (“Under the doctrine of
stare decisis, where a court has in one case decided a
question of law it will in subsequent cases in which the
same question of law arises ordinarily decide it in the
same way. The doctrine is not rigidly applied, and a court
will sometimes overrule its prior decisions. The doctrine
of stare decisis is applicable although the parties in the
later action are different from those in the prior actions.”);
Stare Decisis, Black’s Law Dictionary (10th ed. 2014).
No error has been shown in this claim construction,
and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term. Miken
Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d
1331, 1338 n.1 (Fed. Cir. 2008) (“[F]or us not to adopt the
same claim construction in a case such as this, in which
the construction of the claim term in question was a
necessary predicate to the determination of a prior litigation
before this court and is evident from the face of the
intrinsic record without resort to expert testimony, would
run counter to the Supreme Court’s guidance on stare
decisis in Markman . . . .”); Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take
our task lightly in this regard, as we recognize the national
stare decisis effect that this court’s decisions on
claim construction have.”); see also Brady Const. Innovations,
Inc. v. Perfect Wall, Inc., 290 F. A’ppx 358, 363 (Fed.
Cir. 2008) (“Under the principles of stare decisis and the
Supreme Court’s guidance in Markman, this court follows
the claim construction of prior panels absent exceptional
circumstances.”). Here, it was shown that the MSJ Defendants’
accused cameras utilize fixed mounts that
require tools for removal. As such, the accused devices
are outside the literal scope of claim 1.

One suspects a relation to Judge Newman's recent
See Knowles loses appeal at CAFC; Judge Newman in dissent: "never before has a final claim construction by this court been held not to be preclusive".

Monday, March 05, 2018

Knowles loses appeal at CAFC; Judge Newman in dissent: "never before has a final claim construction by this court been held not to be preclusive".

Appellant Knowles Electronics, LLC (“Knowles”) appeals
the inter partes reexamination decision on appeal of
the U.S. Patent and Trademark Office’s (“USPTO”) Patent
Trial and Appeal Board (“PTAB”) affirming an examiner’s
rejection of claims 1−4 of U.S. Patent No. 6,781,231
(“the ’231 patent”) for anticipation and proposed claims
23−27 for lack of an adequate written description.1
Cirrus Logic, Inc. v. Knowles Elecs. LLC (Cirrus I), No.
2015-004342, 2015 WL 5272691, at *2−3 (P.T.A.B. Sept.
8, 2015); see Cirrus Logic, Inc. v. Knowles Elecs. LLC
(Cirrus II), No. 2015-004342, 2016 WL 1378707, at *1−2
(P.T.A.B. Apr. 5, 2016) (denying request for rehearing).
Knowles appeals. We have subject matter jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm

Judge Newman, in dissent, began:

I write in concern for perpetuation of the erroneous
position that the PTAB need not apply the prior final
judicial decision of the same issue of the same claims of
the same patent.1 This error not only produces an incorrect
result in this case, but will further impart uncertain
ty to proceedings under the America Invents Act. The
purpose whereby the PTAB was created as an agency
tribunal, in order to provide stable law and economical
determination of patent validity, is negated when final
adjudication in a court of last resort may be ignored, and
the issue litigated afresh in the agency tribunal.
The Supreme Court has recognized, “courts may take
it as given that Congress has legislated with the expectation
that the principle [of issue preclusion] will apply
except when a statutory purpose to the contrary is evident.”
B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S.
Ct. 1293, 1303, 1305–06 (2015) (alteration in original)
(quoting Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501
U.S. 104, 108 (1991)). A prior judicial decision resolving
the same issue is accorded preclusive effect not only in
subsequent court proceedings but also before an administrative
agency, subject only to the established equitable
and due process exceptions to preclusion.

However, the PTAB stated that “precedent makes
clear that the USPTO is not bound in reexamination
proceedings by claim constructions produced by a court.”
PTAB Op. *12. While precedent has previously addressed
the effect of a prior district court claim construction on a
subsequent PTO proceeding, never before has a final
claim construction by this court been held not to be preclusive.

Judge Newman mentioned "separation of powers":

This conflict between court decision and agency obligation
raises issues of litigation and patent policy, as well
as invoking the fundamentals of stare decisis and separation
of powers. The adjudication of questions of patent
law takes on special significance in light of the purposes
of the America Invents Act. The purposes of efficiency,
economy, and finality of patent review are lost when
judicial determination of the same question of patentability
has been completed, including appeal to and decision
by the Federal Circuit—yet the decision is ignored and
the proceeding repeated by the administrative agency and
again appealed to the Federal Circuit; and where, as here,
the Federal Circuit reaches a contrary decision.

Appellant Nalco wins reversal at CAFC: The “purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits.”

The outcome:

Nalco Company (“Nalco”) appeals from the district
court’s decision dismissing its Fourth Amended Complaint
(“4AC”) with prejudice for failure to state a claim
upon which relief can be granted. The 4AC alleged infringement
of U.S. Patent No. 6,808,692 (“the ’692 patent”)
by Appellees Chem-Mod, LLC, Arthur J. Gallagher
& Co., Gallagher Clean Energy, LLC, AJG Coal, Inc., and
various Refined Coal LLCs (collectively, “Defendants”).
Nalco Co. v. Chem-Mod, LLC (Nalco 4AC Order), No. 14-
cv-2510, 2016 WL 1594966 (N.D. Ill. Apr. 20, 2016),
reconsideration denied, Nalco Co. v. Chem-Mod, LLC
(Nalco 4AC Reconsideration Order), No. 14-cv-2510, 2016
WL 4798950 (N.D. Ill. Sept. 14, 2016). We conclude that
the district court erred in dismissing Nalco’s direct infringement
claims and, thus, reverse the district court’s
order as to those claims. We also reverse the district
court’s dismissal of Nalco’s doctrine of equivalents, indirect,
and willful infringement claims. We remand for
further proceedings in this matter.

The technology in question was removing mercury from flue gas
from the combustion of coal: “Enhanced Mercury Control in Coal-Fired Power
Plants,” which describes a method for the removal of
elemental mercury, a toxic pollutant, from the flue gas
created by combustion in coal-fired power plants.

The legal issue:

Federal Rule of Civil Procedure 8(a)(2) “generally requires
only a plausible ‘short and plain’ statement of the
plaintiff’s claim,” showing that the plaintiff is entitled to
relief. Skinner v. Switzer, 562 U.S. 530 (2011). “Because
it raises a purely procedural issue, an appeal from an
order granting a motion to dismiss for failure to state a
claim upon which relief can be granted is reviewed under
the applicable law of the regional circuit.” In re Bill of
Lading Transmission & Processing Sys. Patent Litig., 681
F.3d 1323, 1331 (Fed. Cir. 2012) (citing McZeal v. Sprint
Nextel Corp., 501 F.3d 1354, 1355–56 (Fed. Cir. 2007));
C & F Packing Co. v. IBP, Inc., 224 F.3d 1296, 1306 (Fed.
Cir. 2000)). The Seventh Circuit reviews a district court’s
dismissal for failure to state a claim under Rule 12(b)(6)
de novo, and the district court’s decision to dismiss with
prejudice under Rule 12(b)(6) for abuse of discretion.
Manistee Apartments, LLC v. City of Chi., 844 F.3d 630,
633 (7th Cir. 2016). In so doing, the Seventh Circuit
“assume[s] all well-pleaded allegations are true and
draw[s] all reasonable inferences in the light most favorable
to the plaintiff.” Id.


Defendants do not seem to challenge that Nalco met
the notice requirement of FRCP Rule 8 or the pleading
standard required under Twombly and Iqbal. Instead,
Defendants assert that Nalco’s infringement claims
simply are not plausible because “a party may plead itself
out of court by pleading facts that establish an impenetrable
defense to its claims.” Tamayo v. Blagojevich, 526
F.3d 1074, 1086 (7th Cir. 2008) (citing Massey v. Merrill
Lynch & Co., Inc., 464 F.3d 642, 650 (7th Cir. 2006)).
Defendants contend that Nalco has done just this.

As to pleading oneself out of court:

The only argument Defendants make regarding the
implausibility of this theory is that the thermolabile
bromine precursor could not survive the extreme heat of
the combustion areas of the furnace without decomposing,
as thermolabile materials are unstable when heated.
Defendants’ objection relies on a factual finding that a
thermolabile material could not survive passing from the
combustion zone to the flue. But Defendants have not
explained why we should—or could—make such a finding
at this stage in light of Nalco’s explicit pleadings to the
contrary. Nor does any of the evidence cited by the parties
indicate that Nalco has pled itself out of court.
asserts that Felsvang (U.S. Patent No. 5,435,980), cited
on the face of the ’692 patent, teaches injecting a thermolabile
halide precursor into the combustion zone to have
an effect in the flue region. Nalco asserts that the inventor
of the ’692 patent developed the claimed invention by
mixing coal with a bromine precursor and then injecting
the treated coal mixture into the combustion zone. Nalco
also cites to the Board’s rejection of the position that
“thermolabile” included a temperature restriction. J.A.
4913. Though Nalco was not required to provide evidentiary
support for its claims at this stage of the proceedings,
its evidence is not inconsistent with its claims as the
district court seemed to believe.

Bottom line:

It is not appropriate to
resolve these disputes, or to determine whether the method
claimed in the ’692 patent should be confined to the
preferred embodiment, on a Rule 12(b)(6) motion, without
the benefit of claim construction. The “purpose of a
motion to dismiss is to test the sufficiency of the complaint,
not to decide the merits.” Gibson v. City of Chi., 910 F.2d
1510, 1520 (7th Cir. 1990) (emphasis added) (citation
omitted). The plausibility standard “does not impose a
probability requirement at the pleading stage; it simply
calls for enough fact to raise a reasonable expectation that
discovery will reveal evidence” to support the plaintiff’s
allegations. Twombly, 550 U.S. at 556.

Tuesday, February 27, 2018

Biogen patent on interferon multiple sclerosis drug invalidated

A jury in the federal district court of New Jersey on 23 February 2018 found that U.S. Patent Number 7,588,755 (related to the MS drug Avonex) was invalid, getting Serono's product Rebif off the hook.


The jury invalidated Biogen's patent, finding that prior knowledge existed of interferons as a treatment for a number of different medical conditions. Biogen had tried to argue that Pfizer and EMD Serono had infringed on two claims of the patent.

"As a result of this finding, there is effectively no patent to infringe and no royalty or settlement obligation payable by Serono to Biogen," [Leerink analyst Geoffrey ] Porges said. "Biogen was seeking multibillion-dollar damages on the basis of a claimed 8.5% royalty on future and prior sales, as well as damages."


Biogen declined to comment to Investor's Business Daily on the case. The biotech "will have to look hard at the cost of continuing this litigation to appeal, for what is a declining product and a trial with a low probability of legal success," Porges said.

Porges doesn't expect a flood of generic entrants to the class. Interferons are in decline, but still represent a $5.5 billion revenue category. The challenges of manufacturing, developing and commercializing a biosimilar version of interferon are significant.


Pfizer and EMD Serono have been selling Rebif.

Patent lawyers as magicians?

Many of the "patent law" blogs have been silent on Judge Stark's ruling in favor of Gilead in the hepatitis C dispute. emphasized the lawyers rather than the substance.

Scott Graham of on the Stark decision in Idenix/Merck v. Gilead in post Skilled in the Art: Gilead's Houdini Act :

I begin today by asking: Is Fish & Richardson partner Jonathan Singer a distant relative of Harry Houdini? Once again Fish and Singer— this time with help from Irell & Manella and Orrick—have wriggled out of a massive verdict that a jury slapped on client Gilead Sciences Inc.

Fish and Gilead took a $2.5 billion hit in Delaware federal court in December 2016. Jurors found that Gilead willfully infringed a Merck patent on a hepatitis C treatment. But on Friday U.S. District Judge Leonard Stark granted Gilead’s post-trial motion to invalidate Merck’s patent for enablement, saying essentially that the patent wasn’t precise enough to predict breakthrough medicines like Gilead’s sofosbuvir.

Sound familiar? Yes, it does. In 2015 Merck scored a $200 million verdict against Gilead— same medication, different patents—but U.S. District Judge Beth Labson Freeman threw it out based on Merck’s unclean hands. Singer argued both that motion to Freeman and the enablement motion decided Friday.

A key part of the opinion of Judge Stark relies on text from the 2007 post-Supreme Court Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334; 83 U.S.P.Q.2D (BNA) 1673 (CAFC 2007) ; for convenience IPBiz includes the FULL text of the paragraph:

The rule that a jury verdict is reviewed for support by "substantial evidence" does not mean that the reviewing court must ignore the evidence that does not support the verdict. See Reeves, 530 U.S. at 150-51 ("in entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record"). The Court in Reeves stated that "[i]n the analogous context of summary judgment under Rule 56, we have stated that the court must review the record 'taken as a whole'," citing Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 [page 1682] (1986), and observed that "the standard for granting summary judgment 'mirrors' the standard for judgment as a matter of law, such that 'the inquiry under each is the same'," citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-251, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). Thus the Court pointed out that "the court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence," Reeves, 530 U.S. at 150, but cautioning that "although the court should review the record as a whole, it must disregard all evidence favorable to the moving party that the jury is not required to believe. See 9A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 2529, p. 299 (2d ed. 1995). That is, the court should give credence to the evidence favoring the nonmovant as well as that 'evidence supporting the moving party that is uncontradicted and unimpeached'." Id. (citations omitted).

The portion cited in the opinion by Judge Stark is as follows:

"The rule that a jury verdict is reviewed for support by 'substantial evidence' does not mean that the reviewing court must ignore the evidence that does not support the verdict.... That is, the court should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached." Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334, 1345 (Fed. Cir. 2007).

Judge Newman, in dissent in Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320; 21 U.S.P.Q.2D (BNA) 1161 (CAFC 1991), laid out the standards for "substantial evidence," drawing in part from cases in the Third Circuit Court of Appeals:

The standard of judicial review of jury verdicts is established. Sometimes described as a "reasonable jury" standard and sometimes as a "substantial evidence" standard, the challenger must show that there was not an evidentiary basis for the verdict. As discussed by the Court:

But where, as here, there is an evidentiary basis for the jury's verdict, the jury is free to discard or disbelieve whatever facts are inconsistent with its conclusion. And the appellate court's function is exhausted when that evidentiary basis becomes apparent, it being immaterial that the court might draw a contrary inference or feel that another conclusion is more reasonable.

Lavender v. Kurn, 327 U.S. 645, 653, 90 L. Ed. 916 , 66 S. Ct. 740 (1946). This standard has its roots in the Constitution and in tradition, for the principles underlying the jury right require that the jury verdict receive judicial deference.

Many illustrations of the requisite standard of appellate review of jury verdicts appear in the precedent of the Third Circuit. 1Link to the text of the note [page 1171] E.g., Chuy v. Philadelphia Eagles Football Club, 595 F.2d 1265, 1273 (3d Cir. 1979) (en banc) ("Our limited function at this point is to ascertain from review of the record whether there is sufficient evidence to sustain the verdict of the jury on this issue"); Dawson v. Chrysler Corp., 630 F.2d 950, 959 (3d Cir. 1980), cert. denied, 450 U.S. 959, 67 L. Ed. 2d 383 , 101 S. Ct. 1418 (1981) (the jury verdict must be sustained unless the record "is critically deficient of that minimum quantum of evidence from which a jury might reasonably [page 1333] afford relief"), quoting Denneny v. Siegel, 407 F.2d 433, 439 (3d Cir. 1969).

Federal Circuit decisions have well illustrated this standard. E.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1571, 1 USPQ2d 1081, 1085 (Fed. Cir. 1986):

To convince this court that a trial judge erred in granting a motion for JNOV, an appellant need only show that there was substantial evidence to support the jury's findings and that those findings can support the jury's legal conclusion.

Also, e.g., DMI, Inc. v. Deere & Co., 802 F.2d 421, 425, 231 USPQ 276, 278 (Fed. Cir. 1986) (to reverse the jury, the findings must not be supported by substantial evidence); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 619, 225 USPQ 634, 636 (Fed. Cir.), cert. dismissed, 474 U.S. 976 (1985) (determining from the evidence as a whole whether there was substantial evidence in support of the jury verdict); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893, 221 USPQ 669, 673 (Fed. Cir.), cert. denied, 469 U.S. 857, 83 L. Ed. 2d 120 , 105 S. Ct. 187, 225 U.S.P.Q. (BNA) 792 (1984) ("only when the court is convinced upon the record before the jury that reasonable persons could not have reached a verdict for the non-mover, should it grant the motion for JNOV.")

On judicial review following a duly made motion for judgment n.o.v, the evidence must be viewed and reasonable inferences drawn in the light most favorable to the party with the jury verdict. Continental Ore Co. v. Union Carbide & Carbon Corp., 370 U.S. 690, 696, 8 L. Ed. 2d 777 , 82 S. Ct. 1404 (1962); Danny Kresky Enterprises Corp. v. Magid, 716 F.2d 206, 209 (3d Cir. 1983); Chuy, 595 F.2d at 1273. The reviewing court is not free to reweigh the evidence or substitute its own judgment for that of the jury, Blair v. Manhattan Life Ins. Co., 692 F.2d 296, 300 (3d Cir. 1982), or to pass on the credibility of witnesses. Kinnel v. Mid-Atlantic Mausoleums, Inc., 850 F.2d 958, 961 (3d Cir. 1988).

Those functions are assigned to the fact-finder, in this case the jury. Our function is to determine only whether there is evidence upon which the jury could properly return a verdict, viewing the evidence most favorably to Kinnel the non-movant, and giving Kinnel the benefit of all reasonable inferences.

Id. at 961-62.

The Federal Circuit is in accord. E.g., Orthokinetics, 806 F.2d at 1572-73, 1 USPQ2d at 1085-86 (it is "a misunderstanding of our appellate role" for this court to determine what is supported by the evidence as a whole, rather than whether the evidence the jury could have believed was substantial); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed. Cir. 1983) (the appellate court must consider all the evidence in the light most favorable to the non-movant, must not determine the credibility of witnesses, and must not substitute its choice for that of the jury in finding facts, drawing inferences, or deciding between conflicting elements in the evidence). These are functions of the trier of fact, not the reviewing court.

Of review for "substantial evidence," the Court of Appeals for the Federal Circuit had stated in Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575: [jury] determination must be upheld if any set of facts supported by substantial evidence is capable of sustaining the verdict. Orthokinetics, 806 F.2d at 1580, 1 U.S.P.Q.2D (BNA) at 1091.

In Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 , the CAFC stated:

Thus, in reviewing the denial of the JMOL motion on the issue of obviousness, we examine the evidence in the light most favorable to the verdict and determine whether a reasonable jury could have found all the facts necessary to support the verdict of nonobviousness, i.e., whether substantial evidence supports the verdict. See Caver v. City of Trenton, 420 F.3d 243, 262 (3d Cir. 2005); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546 (Fed. Cir. 1983).

See post on IPBiz on 18 Feb 18:

US District Court of Delaware rules against Merck in case related to hepatitis C drugs Sovaldi and Harvoni

Sunday, February 25, 2018

Croatian judge files criminal complaints against members of ethics committee

Science reports on a complicated plagiarism issue in the story
Croatia’s top judge sues national ethics panel after it finds him guilty of plagiarism :

Miroslav Šeparović, president of the Constitutional Court of the Republic of Croatia, announced last week that he has filed criminal complaints against all five members of the Committee on Ethics in Science and Higher Education (CESHE), after it concluded that Šeparović’s 2013 doctoral thesis about children’s rights in EU and Croatian law contained repeated instances of “incomplete and opaque citations” of other people’s work.