Tuesday, June 19, 2018

CAFC addresses "contingent motions to amend" in Sirona Dental

There was a mixed decision in Sirona Dental. The CAFC affirmed the Board's patentability conclusions. Of relevance, however, the CAFC found PTAB erred on Sirona's contingent motion to amend.

Aqua Products and SAS Institute are cited in the CAFC opinion.

US Patent 10,000,000 issues on 19 June 2018: COHERENT LADAR USING INTRA-PIXEL QUADRATURE DETECTION to Joseph Marron of Raytheon

The underlying application was filed March 10, 2015 and the invention is directed to a frequency modulated (coherent)
laser detection and ranging system.

A story line within the June 18, 2018 episode of Elementary (titled "Sand Trap") is of interest, for a kind of man bites dog twist. Within, the CEO of a company decides to dedicate the company's inventions on an oil-spill oil recovery skimmer to the public. The leader of the project rebels, steals the company's plans (as well as stealing from other inventors across the globe), but is murdered. Curiously, however, not by the intellectual property theft victims, nor by the sand pirates. Rather, by a seemingly mild-mannered county government employee living by kick-backs from contractors. The actions of the fictional CEO in "Sand Trap" might evoke Elon Musk in 2014 [From Forbes: Elon Musk’s announcement that Tesla Motors (TSLA) is treating its patents as open source is a truly daring move]. As to the county employee, he killed two people, the second by drilling his subordinate county worker through the head with a power drill.

A story line within the June 17, 2017 episode of Instinct (titled "Blast from the Past") has an interesting story line on plagiarism.

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.

One reference to Chicago Law in Hersh's new book, relating to his "break-through" story on Calley:

Latimer, speaking very deliberately, as he always did, acknowledged that yes, Calley was his client and it was a miscarriage of justice. Touchdown. I told the judge I was flying to the West Coast soon and asked if he would mind if I arranged a stopover in Salt Lake City. We settled on a day in early November. I had no need to go to the West Coast but thought it best to hide my eagerness. I also spent half a day in the Pentagon library reading a number of the judge’s decisions, and even briefing a few of them; it was a reminder of what I did not do enough of during my underachieving year at the University of Chicago Law School.

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.

link: http://www.nwherald.com/2018/06/12/documents-read-hanlons-legal-brief-trustees-are-calling-plagiarism/dbt58jl/

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.

link: https://www.hollywoodreporter.com/thr-esq/mgm-sues-buckaroo-banzai-writer-director-right-make-new-tv-series-950671

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.

link: https://www.cbsnews.com/news/almanac-forest-fire-lookout-towers/


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

link: http://www.encyclopediaofarkansas.net/encyclopedia/entry-detail.aspx?entryID=7905


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

link: http://www.firelookout.com/id/bertha.html