Monday, September 24, 2018

Hyatt wins legal point at CAFC, but loses anyway

Gilbert Hyatt sued the United States Patent and
Trademark Office alleging that the PTO acted unlawfully
in denying his petition for rulemaking. Mr. Hyatt now
appeals from the district court’s grant of the PTO’s motion
for summary judgment and dismissal of his claims for
lack of subject matter jurisdiction. We reverse the district
court’s dismissal for lack of subject matter jurisdiction.
Because Mr. Hyatt’s claims are either time-barred or
reliant on mistaken statutory interpretation, however, we
affirm on alternate grounds the district court’s grant of
summary judgment.

Of note:

In contrast to the agency actions challenged in those
cases, the PTO’s denial of Mr. Hyatt’s petition was not an
intermediate action taken in the course of proceedings
that would culminate in a final agency action exclusively
reviewable by this court and the Eastern Virginia district
court. The process for petitioning the PTO for rulemaking
is completely separate from the patent application examination
process that culminates in final PTAB decisions.
Thus, we do not need to exercise exclusive jurisdiction
over denials of petitions for rulemaking in order to protect
our future jurisdiction. If another court granted Mr.
Hyatt’s requested relief and prohibited PTO examiners
from reopening prosecution of applications after an appeal
brief has been filed, the prosecution process would
change, but our ability to review final PTAB decisions
would remain unaffected.

Accordingly, the exclusive jurisdiction of this court
and the Eastern Virginia district court to review final
PTAB decisions under § 141 and § 145 does not displace
the district court’s jurisdiction over APA challenges to the
PTO’s denial of a petition for rulemaking.

Of the time bar issue

Because his other claims are time-barred, we only
consider the merits of Mr. Hyatt’s claim that the PTO
unlawfully denied his petition for rulemaking because
MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1). Section
6(b)(1) requires that the PTAB “shall — (1) on written
appeal of an applicant, review adverse decisions of examiners
upon applications for patents pursuant to section
134(a).” Under 35 U.S.C. § 134(a), “[a]n applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee
for such appeal.”

Sunday, September 23, 2018

Curious collection of stories on "CBS Sunday Morning" on 23 September 2018

The cover story on Sandy Hook was sad: A battle currently pits parents still mourning the loss of their children in the Sandy Hook school shooting against purveyors of the most mean-spirited and outlandish of myths. Our Cover Story is reported by Tony Dokoupil

Kurt Andersen was quoted in the piece, in turn quoting Patrick Moynihan:

"As Daniel Patrick Moynihan famously said 30 years ago, many times, repeatedly, 'You're entitled to your own opinions but not to your own facts,'" said Kurt Andersen. "He was kind of joking back then. And we've come to this place where many, many, many millions of people feel absolutely entitled to their own facts."

Although the details of the case against Alex Jones were not enumerated, Floyd Abrams was quoted:

Floyd Abrams is a respected First Amendment lawyer, famed for defending The New York Times' publication of the Pentagon Papers. "This is a very tough case for Alex Jones to win," he said, "because what he has said is so appalling."

He says Jones may have gone beyond the protections of free speech, and the consequences may be severe.

The Almanac feature touching on "Typhoid Mary" was a bit grim: And now a page from our "Sunday Morning" Almanac: September 23, 1869, 149 years ago today … the day that saw the birth, in rural Ireland, of Mary Mallon – remembered today as "Typhoid Mary."

The piece by Dr. Sanjay Gupta somewhat indirectly addressed the Kavanaugh / Ford issue. Although the connection was made clear in the prefatory text --The question of whether alcohol affects memory hangs over the current Supreme Court confirmation battle. Here with some answers is Dr. Sanjay Gupta: --, the indicated conclusion was a bit oblique, with the story ending on a suggestion "to improve your memory":

Truth is: When it comes to alcohol and memory, people assume a lot of things – and a lot of those assumptions are wrong.


One study last year showed that in this situation mild- to moderately-intoxicated people had very similar recall as sober people.

Now, there is a thing known as "blackout drunk." That is not the same as "passed out drunk." Someone who is blacked-out drunk may still be talking and walking. But they might be totally amnestic to the event, meaning they have no memory of it.

The biggest culprit is not necessarily how much you drank, but how quickly they drank it – the binge drinker.

With memory and alcohol you also have to consider how much time has passed. While a mild- to moderately-intoxicated person can remember things pretty well in the short term, their long term memories are much more difficult to retrieve.

And to understand why, it helps to understand how memory works. You take in sensory information – see, hear, feel – and that almost immediately gets transferred to short-term memory. From there, short-term memories get encoded into long-term memory.

It's this last phase where alcohol seems to have the most impact. For someone who's intoxicated, that encoding into long-term memory often doesn't occur very well, or at all. And that is why days later someone may have a hard time remembering something that was so vivid earlier, but can't retrieve the memory from the long-term stores, because the memories were never there in the first place.

[Then, the narrative abruptly and oddly switches from absence of long term memory through binge intoxication (related to the viewpoint of the Ford scenario AND why Kavanaugh might not remember) to a recommendation to the general public]

If you want to improve your memory, the best things you can really do: pay attention when something is happening; that helps a lot. And don't forget sleep, because it's when you sleep that your body consolidates and transfers your short-term memories to long-term memoriesm the kind you'll have for the rest of your life.


The viewer was told there was no space for the news events of the coming week. CBS sunday morning calendar | We have it on Downloadsearch‎

The moment of nature involved dolphins in the Red Sea. Previously, on Jan 21, 2018 , Sunday Morning did sea slugs in the Red Sea.

***Merely as background

Christine Blasey Ford, Kavanaugh accuser, commits to public hearing this Thursday , including

In a statement on Sunday [23 Sept. 2018], Ford's lawyers Debra Katz, Lisa Banks and Michael Bromwich said their client "has agreed to move forward" with a public hearing before the Senate Judiciary Committee on Thursday, Sept. 27, at 10 a.m. on Capitol Hill. The legal team said that "important progress" had been made with committee staffers after a week of negotiations over the format and conditions of her testimony.

"Despite actual threats to her safety and her life, Dr. Ford believes it is important for Senators to hear directly from her about the sexual assault committed against her," the attorneys wrote. Committee Chairman Chuck Grassley confirmed the hearing would be taking place on Thursday in a statement late Sunday, calling it a "continuation of the hearing to consider" Kavanaugh's nomination. Following Ford's testimony, the statement said, Kavanaugh will then "appear before the committee."

Saturday, September 22, 2018

CAFC discusses "entire market value rule" in Power Integrations

Power Integrations, Inc. owns U.S. Patent Nos.
6,212,079 (“the ’079 patent”) and 6,538,908 (“the ’908
patent”). Power Integrations sued Fairchild Semiconductor
Corporation and Fairchild (Taiwan) Corporation
(collectively “Fairchild”) for infringement. A jury found
Fairchild literally infringed claims 31, 34, 38, and 42 of
the ’079 patent and infringed claims 26 and 27 of the ’908
patent under the doctrine of equivalents. In a second trial,
a jury awarded damages of roughly $140 million, finding
that the entire market value rule applied in calculating
damages for infringement of the ’079 patent. The district
court denied Fairchild’s motions for judgment as a matter
of law. Fairchild appeals.

We affirm the district court’s judgments of infringement.
We conclude that the entire market value rule
cannot be used here to calculate damages. We vacate the
damages award and remand for further proceedings.

Lester Holt omits mention of "Wisdom of the Crowd" on 21 Sept 2018

In discussing "Countdown to Capture" on NBC Nightly News on September 21, 2018, Lester Holt did not mention
the TV series "Wisdom of the Crowd," which described much the same function.

Life imitating art, but forgotten?

Monday, September 17, 2018

CAFC chastises PTAB in DuPont case: the evidence in this case supports the unremarkable fact that an oxidation reaction is affected by temperature and PO2. No substantial evidence supports the Board’s contrary finding that it made under the wrong legal standard.

DuPont, at the CAFC, won its appeal of a PTAB decision:

E. I. du Pont de Nemours and Company and ArcherDaniels-Midland
Company (collectively, “DuPont”) appeal
from an inter partes review (“IPR”) decision of the United
States Patent and Trademark Office Patent Trial and
Appeal Board (the “Board”). See DuPont v. Furanix
Techs. B.V., No. IPR2015-01838, Paper No. 43, slip op.
(P.T.A.B. Mar. 3, 2017) (“Decision”). The Board held that
DuPont failed to prove by preponderant evidence that
claims 1–5 and 7–9 of U.S. Patent 8,865,921 (“’921 patent”)
would have been obvious at the time of the claimed
invention. We conclude that the Board applied the wrong
legal standards for obviousness, and reverse.

As to standing

Under the circumstances here, we agree with DuPont
that it has standing to appeal the Board’s decision. As in
the declaratory judgment context, a petitioner who appeals
from an IPR decision need not face “a specific threat
of infringement litigation by the patentee” to establish
jurisdiction. ABB Inc. v. Cooper Indus., LLC, 635 F.3d
1345, 1348 (Fed. Cir. 2011). Rather, on appeal the petitioner
must generally show a controversy “of sufficient
immediacy and reality” to warrant the requested judicial
relief. Id. (citing MedImmune, Inc. v. Genentech, Inc., 549
U.S. 118, 127 (2007)).
Such a controversy exists here because DuPont currently
operates a plant capable of infringing the ’921
patent. After Synvina challenged DuPont’s standing in
its responsive brief,12 DuPont submitted several declarations
in support of standing.

As to obviousness:

Our review of a Board decision is limited. In re Baxter
Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We
review the Board’s legal determinations de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we
review the Board’s factual findings underlying those
determinations for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported
by substantial evidence if a reasonable mind might
accept the evidence as adequate to support the finding.
Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229
DuPont asserts that the Board erred in its obviousness
analysis primarily in two ways. First, DuPont
argues that the Board misinterpreted our precedent and
erroneously refused to apply a burden-shifting framework
in the context of overlapping prior-art ranges from cases
such as In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), and
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299
(Fed. Cir. 2006). Second, DuPont contends that the Board
invoked a “result-effective variable” requirement inconsistent
with precedent. Given these errors, DuPont
argues that the Board’s decision should be reversed with
respect to each instituted claim

As to optimization:

The legal principle at issue in this case is old. For
decades, this court and its predecessor have recognized
that “where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum
or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955); see also, e.g., In
re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus,
“[n]ormally, it is to be expected that a change in temperature,
or in concentration, or in both, would be an un-
patentable modification.” Aller, 220 F.2d at 456. A more
specific application of this general principle is that “[a]
prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed
in the prior art.” Peterson, 315 F.3d at 1329 (collecting
cases). We have said that such overlap creates a
presumption of obviousness. See Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 737–38 (Fed. Cir. 2013);
Ormco, 463 F.3d at 1311; Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
There are several ways by which the patentee may
rebut that presumption. First, a modification of a process
parameter may be patentable if it “produce[s] a new and
unexpected result which is different in kind and not
merely in degree from the results of the prior art.” Aller,
220 F.2d at 456. A claimed range that demonstrates such
unexpected results is referred to as a “critical” range, and
the patentee has the burden of proving criticality. Id.
Second, and relatedly, a patentee may rebut the presumption
of obviousness by showing that the prior art taught
away from the claimed range. Ormco, 463 F.3d at 1311.
Third, a change to a parameter may be patentable if the
parameter was not recognized as “result-effective.” In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing In re Antonie, 559 F.2d 618, 620 (CCPA
1977)). But “[a] recognition in the prior art that a property
is affected by the variable is sufficient to find the
variable result-effective.” Id. at 1297. Fourth, we have
reasoned that disclosure of very broad ranges may not
invite routine optimization. Genetics Inst., LLC v. Novartis
Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed.
Cir. 2011) (holding that ordinary motivation to optimize
did not apply where disclosure was 68,000 protein variants
including 2,332 amino acids); Peterson, 315 F.3d at
1330 n.1. As we explain, the presumption of obviousness
applies here, and none of the means for rebutting it has
been shown.

As to overlapping range:

We agree with DuPont that the Board erred in concluding
that the type of burden-shifting framework consistently
applied in our overlapping range cases was
implicitly foreclosed by subsequent cases not addressing
this framework. We have articulated the relevant framework
as follows. “[W]here there is a range disclosed in the
prior art, and the claimed invention falls within that
range, the burden of production falls upon the patentee to
come forward with evidence” of teaching away, unexpected
results, or other pertinent evidence of nonobviousness.
Galderma, 737 F.3d at 738; see Allergan, Inc. v.
Sandoz Inc., 796 F.3d 1293, 1304–05 (Fed. Cir. 2015)
(citing Galderma, 737 F.3d at 737–38); Ormco, 463 F.3d
at 1311 (“Where a claimed range overlaps with a range
disclosed in the prior art, there is a presumption of obviousness.
The presumption can be rebutted if it can be
shown that the prior art teaches away from the claimed
range, or the claimed range produces new and unexpected
results.”) (citations omitted)); Iron Grip Barbell, 392 F.3d
at 1322 (same). The factfinder then assesses that evidence,
along with all other evidence of record, to determine
whether a patent challenger has carried its burden
of persuasion to prove that the claimed range was obvious.

Since Dynamic Drinkware and Magnum Oil did not
alter the framework governing overlapping range cases,
and Synvina presents no persuasive argument supporting
a special rule for IPRs, we conclude that the same scheme
applicable to district court adjudications and PTO examinations
controls in IPR proceedings. Thus, “where there
is a range disclosed in the prior art, and the claimed
invention falls within that range, the burden of production
falls upon the patentee to come forward with evidence”
of teaching away, unexpected results or criticality,
or other pertinent objective indicia indicating that the
overlapping range would not have been obvious in light of
that prior art. Galderma, 737 F.3d at 738.

The Board committed legal error as to result-effective variable:

Next, we address DuPont’s argument that the Board
erred in holding that the PO2 and temperature of a known
oxidation reaction were not “result-effective variables.”
Synvina disagrees, arguing that the Board properly
concluded that DuPont failed to prove that the claimed
parameters were result-effective.
We agree with DuPont that the Board erred in its
analysis of whether PO2 and temperature were resulteffective
variables. As we explain, the Board did not
apply the proper legal standard for result-effective variables,
and, under the correct standard, PO2 and temperature
are result-effective variables.

The idea behind the “result-effective variable” analysis
is straightforward. Our predecessor court reasoned
that a person of ordinary skill would not always be motivated
to optimize a parameter “if there is no evidence in
the record that the prior art recognized that [that] particular
parameter affected the result.” Antonie, 559 F.2d at
620. For example, in Antonie the claimed device was
characterized by a certain ratio, and the prior art did not
disclose that ratio and was silent regarding one of the
variables in the ratio. Id. at 619. Our predecessor court
thus reversed the Board’s conclusion of obviousness. Id.
at 620.
Antonie described the situation where a “parameter
optimized was not recognized to be a result-effective
variable” as an “exception” to the general principle in
Aller that “the discovery of an optimum value of a variable
in a known process is normally obvious.” Id. at 620.
Our subsequent cases have confirmed that this exception
is a narrow one. Indeed, we have located no case where
this court relied on a variable not being result-effective in
an obviousness analysis. In summarizing the relevant
precedent from our predecessor court, we observed in
Applied Materials that “[i]n cases in which the disclosure
in the prior art was insufficient to find a variable resulteffective,
there was essentially no disclosure of the relationship
between the variable and the result in the prior
art.” 692 F.3d at 1297. Likewise, if the prior art does
recognize that the variable affects the relevant property
or result, then the variable is result-effective. Id. (“A
recognition in the prior art that a property is affected by
the variable is sufficient to find the variable resulteffective.”).
And “the prior art need not provide the exact
method of optimization for the variable to be resulteffective.”
Although the Board correctly articulated the basic
standard for result-effective variables, Decision, slip op. at
16–17 (citing Applied Materials, 692 F.3d at 1297), it did
not follow it. Rather, the Board appears to have required
DuPont to prove that the disclosures in the prior art
“necessarily required” the variable to be within the
claimed range, or that the variables “predictably affected
FDCA yields.” Id. at 19. But that was not DuPont’s
burden. Under the applicable standard, DuPont needed
to show that it was recognized in the prior art, either
expressly or implicitly, that the claimed oxidation reaction
was affected by reaction temperature and PO2. See
Applied Materials, 692 F.3d at 1297; Antonie, 559 F.2d at
620. And there does not appear to be a legitimate dispute
that temperature and PO2 were understood to affect the
claimed oxidation reaction, which was known at the time
of invention.
Rather, each reference relevant to claims 1–5 expressly
disclosed appropriate or preferred temperatures and air
pressures for the reaction, indicating that persons of
ordinary skill understood that the reaction was affected
by temperature and pressure. The testimony of thenpatent
owner Furanix’s expert was consistent with this
understanding. He explained that temperature generally
affects the rate of chemical reactions, and if a temperature
is too low, the reaction may not occur at all.

Altogether, the evidence in this case supports the unremarkable
fact that an oxidation reaction is affected by
temperature and PO2. No substantial evidence supports
the Board’s contrary finding that it made under the wrong
legal standard.14 On the record evidence, only one finding
was permissible: temperature and PO2 were recognized
as result-effective variables.

Footnote 14: We assume, without deciding, that whether a variable
was recognized as result-effective is a question of
fact. See Graham v. John Deere Co. of Kan. City, 383 U.S.
1, 17 (1966) (scope and content of the prior art are factual


Friday, September 14, 2018

ParkerVision loses appeal of PTAB decision at CAFC

The outcome:

ParkerVision, Inc. (“ParkerVision”) appeals from
three final written decisions of the U.S. Patent Trial and
Appeal Board (“Board”) in related inter partes review
proceedings, in which the Board held certain claims of
U.S. Patent No. 6,091,940 (“the ’940 patent”) unpatentable
as obvious under 35 U.S.C. § 103(a).1 Qualcomm Inc.
and Qualcomm Atheros, Inc. (together, “Qualcomm”)
cross-appeal from the Board’s determination that Qualcomm
failed to prove by a preponderance of the evidence
that certain other claims of the ’940 patent are unpatentable.
We affirm.

The appealed matter:

ParkerVision argues on appeal that the Board erred
in holding the apparatus claims challenged in the Nozawa
IPRs unpatentable, while Qualcomm contends in its crossappeal
that the Board erred in upholding the patentability
of the challenged method claims. We address these
arguments in turn.

The CAFC noted

We explained long ago that “[a]pparatus claims cover
what a device is, not what a device does.” HewlettPackard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). As a result, “[a]n invention need not
operate differently than the prior art to be patentable, but
need only be different”—or, rather, “unobviously different.”
Id. at 1464 & n.2 (citations omitted). A corollary of
these principles is that an apparatus that is “capable of”
performing certain functions may be anticipated by or
obvious in view of a prior art apparatus that can likewise
perform these functions. See Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (explaining
“that, to infringe a claim that recites capability
and not actual operation, an accused device ‘need only be
capable of operating’ in the described mode.” (quoting
Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832
(Fed. Cir. 1991))). Indeed, “depending on the claims, ‘an
accused device may be found to infringe if it is reasonably
capable of satisfying the claim limitations, even though it
may also be capable of noninfringing modes of operation.’”
Id. (citations omitted). Similarly, a prior art
reference may anticipate or render obvious an apparatus
claim—depending on the claim language—if the reference
discloses an apparatus that is reasonably capable of
operating so as to meet the claim limitations, even if it
does not meet the claim limitations in all modes of operation.


Here, the apparatus claims are most similar to those
in Ericsson and are fundamentally dissimilar to those in
Ball Aerosol. The ’940 patent’s apparatus claims are
drawn to “[a]n apparatus for frequency up-conversion”
(claim 4) or “[a]n apparatus for communicating” (claim
22), all of which comprise “a switch module to receive” an
oscillating signal and a bias signal, wherein the oscillating
signal “causes said switch module to gate said bias
signal and thereby generate a periodic signal having a
plurality of harmonics.” ’940 patent, col. 67, ll. 25–33
(emphases added); id. col. 69, ll. 19–32 (emphases added).
Accordingly, just as D-Link’s products only required a
component that was reasonably capable of “arranging
information for transmission . . . which identifies a type of
payload information . . . ,” Ericsson, 773 F.3d at 1217,
Nozawa’s circuit requires only an oscillating signal that is
reasonably capable of gating the bias signal in a manner
that generates a periodic signal having a plurality of
harmonics. And, unlike in Ball Aerosol, the claims here
recite no structural limitations that would preclude a
prior art reference that discloses a different structure
from performing the claimed function.

But Qualcomm loses the cross-appeal

The method claims present a different story, however.
While Qualcomm was only required to identify a prior art
reference that discloses an apparatus “capable of” performing
the recited functions to prove that the apparatus
claims would have been obvious, more was required with
respect to the method claims. Specifically, Qualcomm
needed to present evidence and argument that a person of
ordinary skill would have been motivated to operate
Nozawa in a manner that satisfied the “plurality of harmonics”
limitation. See InTouch Techs., Inc. v. VGO
Commc’ns, Inc., 751 F.3d 1327, 1346–47 (Fed. Cir. 2014)
(explaining that a party seeking to invalidate method
claims on obviousness grounds must “demonstrate . . .
‘that a skilled artisan would have been motivated to
combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in
doing so’”). Qualcomm failed to do so.

Thursday, September 13, 2018

"Printed publication" issue in Nobel Biocare

The parties dispute whether the ABT Catalog qualifies
as a “printed publication” under pre-AIA § 102(b).
Whether a reference qualifies as a “printed publication” is
a legal conclusion based on underlying factual findings.
Jazz Pharm., 895 F.3d at 1356. The underlying factual
findings include whether a reference was publicly accessible.
In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).
In an IPR, the petitioner bears the burden of establishing
by a preponderance of the evidence that a particular
document is a printed publication. Medtronic, Inc. v.
Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).
“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’
. . . .” 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.” Medtronic, 891 F.3d at 1380 (internal quotation
marks and citations omitted). “Whether a reference is
publicly accessible is determined on a case-by-case basis
based on the ‘facts and circumstances surrounding the
reference’s disclosure to members of the public.’” In re
Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
We first note that we are not bound by our prior affirmance
of the ITC’s holding that there was insufficient
evidence to find pre-critical date public accessibility. The
parties agree that our prior decision is not binding on this
factual issue. Oral Arg. at 13:05–14:17, 26:49–28:36. As
the Board correctly observed, the evidentiary standard in
its proceedings, preponderance of the evidence, is different
from the higher standard applicable in ITC proceedings,
clear and convincing evidence. See Board Decision,
2017 Pat. App. LEXIS 8329, at *22. The Board also had
“more evidence on this issue than what was before the
ITC.” Id. Moreover, we apply a substantial evidence
standard of review to both ITC and Board factual findings,
“and the possibility of drawing two inconsistent
conclusions from the evidence does not prevent an administrative
agency’s finding from being supported by substantial
evidence.” Consolo v. Fed. Mar. Comm’n, 383
U.S. 607, 620 (1966).


We agree with Instradent that substantial evidence
supports the Board’s finding that the ABT Catalog was
publicly accessible prior to the critical date. The Board
credited Chakir and Hantman’s testimony that Chakir
obtained a copy of the ABT Catalog at the March 2003
IDS Conference and that Hantman retained that copy in
his records thereafter. Hantman’s declaration included
excerpts of his copy of the ABT Catalog taken from his
files. The Board found that Hantman’s copy of the ABT
Catalog and the copy offered as prior art by Instradent in
the IPR had identical pages except for some handwriting
on the cover of Hantman’s copy. Nobel does not dispute
this finding. Hantman and Chakir provided specific
details as to why Chakir collected dental implant brochures
for Hantman at the March 2003 IDS Conference.
Hantman further provided specific details as to why he
remembers the circumstances under which he received
the ABT Catalog. The Board reasonably credited their
combined testimony as supporting its public accessibility
finding. See TypeRight Keyboard Corp. v. Microsoft Corp.,
374 F.3d 1151, 1159 (Fed. Cir. 2004) (stating that the
proffered testimony of two witnesses relating to public
accessibility at a trade show “is sufficient to support a
jury finding that the Marquardt document is prior art”).

The Finnigan case is cited:

We next address the sufficiency of the corroboration of
the testimony. “[C]orroboration is required of any witness
whose testimony alone is asserted to invalidate a patent,
regardless of his or her level of interest.” Finnigan Corp.
v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir.
1999). Corroborating evidence may include documentary
or testimonial evidence. See TransWeb, LLC v. 3M Innovative
Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016).
Circumstantial evidence can be sufficient corroboration.
Id. We have articulated a number of factors that may be
considered in assessing the sufficiency of the corroboration
in prior invention or public use cases:

Tuesday, September 11, 2018

Big defeat for UC/Berkeley in CRISPR war

The outcome was an affirmance that no interference-in-fact existed;
UC/Berkeley loses its appeal:

This case turns in its entirety on the substantial evidence
standard. The Board found a person of ordinary
skill in the art would not have had a reasonable expectation
of success in applying the CRISPR-Cas9 system in
eukaryotic cells. J.A. 48–49. Given the mixture of evidence
in the record, we hold that substantial evidence
supports the Board’s finding that there was not a reasonable
expectation of success, and we affirm. UC argues
that the Board: (1) improperly adopted a rigid test for
obviousness that required the prior art contain specific
instructions, and (2) erred in dismissing evidence of
simultaneous invention as irrelevant. For the reasons set
forth below, we hold the Board did not err in its analysis.

Statements made on the UC/Berkeley side were used
AGAINST UC/Berkeley:

The Board was also presented evidence of statements
by the UC inventors acknowledging doubts and frustrations
about engineering CRISPR-Cas9 systems to function
in eukaryotic cells and noting the significance of Broad’s
success. One of the named inventors, Dr. Jennifer Doudna,
acknowledged the “huge bottleneck” in making genetic
modifications in animals and humans, J.A. 5911, and
after the publication of the initial UC research, she stated
“[o]ur 2012 paper was a big success, but there was a
problem. We weren’t sure if CRISPR/Cas9 would work in
eukaryotes,” J.A. 5880. She also explained that she had
“many frustrations” in getting CRISPR-Cas9 to work in
human cells, and that she thought success in doing so
would be “a profound discovery.” J.A. 5908. Evidence in
the record also suggested her colleagues recognized
Broad’s development was significant. When a colleague
contacted Dr. Doudna to inform her of Broad’s success he
stated “I hope you’re sitting down,” “CRISPR is turning
out to be absolutely spectacular in [Broad researcher]
George Church’s hands.” J.A. 5908. The Board viewed
this evidence as indicating that an ordinarily skilled
artisan would have lacked a reasonable expectation of

Footnote 3:

UC also argues the Board erred in giving “near dispositive
weight” to statements by Dr. Doudna and Dr.
Carroll, which it claims were misinterpreted by the
Board. The Board considered a variety of statements
made by both Dr. Doudna and Dr. Carroll. In doing so, it
afforded the statements weight depending on the contexts
in which they were made and their relevance to its analysis.
See J.A. 14–23. To the extent UC argues the Board
erred in its reading of these statements in the contexts in
which they arose, we conclude substantial evidence supports
the Board’s interpretation.

Note text by the CAFC:

UC expended substantial time and effort to convince
this court that substantial evidence supports the view it
would like us to adopt, namely, that a person of ordinary
skill would have had a reasonable expectation of success
in implementing the CRISPR-Cas9 system in eukaryotes.
There is certainly evidence in the record that could support
this position. The prior art contained a number of
techniques that had been used for adapting prokaryotic
systems for use in eukaryotic cells, obstacles adopting
other prokaryotic systems had been overcome, and Dr.
Carroll suggested using those techniques to implement
CRISPR-Cas9 in eukaryotes. We are, however, an appellate
body. We do not reweigh the evidence. It is not our
role to ask whether substantial evidence supports factfindings
not made by the Board, but instead whether such
evidence supports the findings that were in fact made.
Here, we conclude that it does.

Of simultaneous invention:

Simultaneous invention may serve as evidence of obviousness
when considered in light of all of the circumstances.
Lindemann Maschinenfabrik GMBH v. Am.
Hoist & Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984).
We have recognized that simultaneous invention may
bear upon the obviousness analysis in two ways. Monarch
Knitting Mach. Corp. v. Sulzer Morat GmbH, 139
F.3d 877, 883 (Fed. Cir. 1998). First, it is evidence of the
level of skill in the art. Id. Second, it constitutes objective
evidence that persons of ordinary skill in the art
understood the problem and a solution to that problem.
Id. Inherent in the existence of interference practice is
the principle that evidence of simultaneous invention
cannot alone show obviousness, otherwise any claims
involved in an interference would be unpatentable for
obviousness. Lindemann, 730 F.2d at 1460. The weight
of evidence of simultaneous invention must, therefore, be
carefully considered in light of all the circumstances. See
Monarch Knitting, 139 F.3d at 883.
In August 2012, the Jinek 2012 paper was published
explaining the CRISPR-Cas9 system and its use in vitro
using isolated components. There is no dispute that this
represented a breakthrough in the art. The fact that six
research groups succeeded in applying this technology in
eukaryotic cells within a short period of time after this is
certainly strong evidence that there was a motivation to
combine the prior art in this manner. The Board expressly
recognized UC’s evidence of simultaneous invention in
this context, and it concluded the evidence of simultaneous
invention was evidence of the motivation to combine
the prior art references but did not “necessarily” indicate
an expectation of success prior to the completion of the
experiments. J.A. 23.

UC would have the Board read more into this evidence
and infer that because several research teams
pursued a particular approach, and that approach was
ultimately successful, they must have expected that
approach to work. It argued to the Board that absent an
expectation of success, multiple groups “would not have
undertaken the use of UC’s Type-II CRISPR-Cas system
in eukaryotic cells.” J.A. 245. The Board rejected this
bright-line rule and instead determined in this instance
the evidence of simultaneous invention did not establish a
reasonable expectation of success given the “specific
context of the art at the time.” See J.A. 23–25. The Board
explained that “[e]ach case must be decided in its particular
context, including the characteristics of the science or
technology, its state of advance, the nature of the known
choices, the specificity or generality of the prior art, and
the predictability of results in the area of interest.”
J.A. 25 (quoting Abbott Labs. v. Sandoz, Inc., 544 F.3d
1341, 1352 (Fed. Cir. 2008)). We do not see any error in
this analysis. Contrary to UC’s claims, the Board recognized
that UC’s evidence of simultaneous invention is
relevant to the obviousness determination. We consider
Broad’s evidence of simultaneous invention, along with
evidence regarding the state of the art, the statements of
the inventors, failures involving similar technologies, and
the remainder of the record evidence, and conclude the
Board’s finding is supported by substantial evidence.

The conclusion:

For the foregoing reasons, we affirm the Board’s
judgment of no interference-in-fact. The Board performed
a thorough analysis of the factual evidence and considered
a variety of statements by experts for both parties and the
inventors, past failures and successes in the field, evidence
of simultaneous invention, and the extent to which
the art provided instructions for applying the CRISPRCas9
technology in a new environment. In light of this
exhaustive analysis and on this record, we conclude that
substantial evidence supports the Board’s finding that
there was not a reasonable expectation of success, and the
Board did not err in its determination that there is no

We have considered UC’s remaining arguments and
find them unpersuasive. We note that this case is about
the scope of two sets of applied-for claims, and whether
those claims are patentably distinct. It is not a ruling on
the validity of either set of claims.

***Of relevance

UC’s Patent Application No. 13/842,859

Broad's U.S. Patent No. 8,697,359

PTAB 106,048