Thursday, July 19, 2018

BASF loses on jurisdictional argument in NOx case

The issue in BASF was jurisdictional:

BASF now asks this court to vacate and remand the
two ’662 Patent IPR appeals on jurisdictional SAS
grounds.5 Specifically, BASF argues that “the Board’s
decisions with respect to at least the 662 patent are
improper, i.e., ultra vires, as they are not final decisions
as required by § 318(a)” and as such, “appellate review by
this Court of those decisions pursuant to § 319 is no
longer available.” Appellant’s Supp. Br. at 8. Therefore,
BASF asks this Court to “dismiss the [’662 IPR appeals]
as moot” and “direct the Board to vacate those decisions
on remand” on the sole ground that “reviewable, final
written decisions by the Board do not exist” in the two
’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
Importantly, BASF does not seek the Board’s evaluation
of the non-instituted claims.


In short, BASF provides no substantive
reason to warrant remand.6 It argues only jurisdictional
For this important reason, BASF’s request is controlled
by PGS Geophysical AS v. Iancu, where this court
rejected the jurisdictional challenge and proceeded to
review the merits of the Board’s decision. This case—like
PGS Geophysical—is a straight challenge to this court’s
authority to hear the appeal. In PGS Geophysical, we
specifically held that “the combination of the noninstitution
decisions and the final written decisions on the
instituted claims and grounds ‘terminated the IPR proceeding[s]’”
such that those decisions were final and
reviewable for purposes of this court’s jurisdiction. 891
F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reasoning
applies here.
This court further held in PGS Geophysical that a
partial institution error is not one we are required to “act
on in the absence of an appropriate request for relief on
that basis.” Id. at 1362 (emphasis added). Such a request
should include a substantive claim of harmful error,
which is absent here. Id. (“Moreover, the Supreme Court
in SAS characterized the error at issue here as an error
under 5 U.S.C. § 706, but errors under that provision are
generally subject to a traditional harmless-error analysis,
with challengers of the agency action having the burden
of showing prejudice”) (citing Shinseki v. Sanders, 556
U.S. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
not argued prejudice at all; it does not request to have the
Board address the non-instituted claims. Thus, we see no
reason to vacate and remand on the ’662 Patent IPR

Of some text about NO reduction:

Zones discloses using a copper-based CHA zeolite for
the “reduction of oxides of nitrogen contained in a gas
stream in the presence of oxygen.” Zones, col. 1 ll. 55–56,
col. 8 ll. 16–17. Zones Inventor Dr. Stacey Zones stated
that this phrase “refers to and teaches a number of different
reactions, including . . . the selective catalytic reduction
of NO in the presence of an ammonia reducing agent
and oxygen.” Appx3033. Umicore expert Dr. Lercher
testified to the same. Appx3389 (36:16–37:25). BASF
agreed in its Patent Owner’s Preliminary Response that
“reduction of oxides of nitrogen” in Zones “encompasses a
number of reactions,” including ammonia SCR, and again
agreed in oral argument before the Board that the ammonia
SCR reaction is “encompassed within that phrase.”
Appx541, n.5; Appx202 (46:6–23).

Maeshima explains that zeolite catalysts can be used
with either hydrocarbons or ammonia as the reducing
agent. Maeshima, col. 1 ll. 15–21, col. 2 ll. 4–8. Maeshima
teaches that ammonia SCR is preferred because less
of the reducing agent can be used and “nitrogen oxides
can be removed at a high ratio.” Id. at col. 1 ll. 21–24.

Wednesday, July 18, 2018

US Patent 9,790,490 challenged by Benson Hill Biosystems

In another skirmish in the CRISPR wars, Benson Hill Biosystems has filed a petition for
post grant review of US 9,790,490.

CAFC in In re SWARTZ: cold fusion and collateral estoppel

Within the decision:

Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed.
Cir. 2000) (“Swartz I”), this court held that the claims of
Swartz’s U.S. Patent Application No. 07/760,970 were
unpatentable for failure of utility and enablement. The
at-issue ’765 application is a continuation of the ’970
application, and the representative claims in the two are
nearly identical.

The core requirements for collateral estoppel are that:
the issue in question is identical to an issue previously
decided, the issue was actually litigated in the prior
proceeding, the resolution of the issue was necessary to
the prior judgment, and the party challenging the issue
must have been given a full and fair opportunity to litigate
the issue in the prior proceeding. Jet, Inc. v. Sewage
Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000).
Swartz argues that the district court wrongly applied
estoppel here because he submitted new references not
present in the previous appeals to show utility, and
because the applications here no longer include explicit
references to cold fusion.

Neither the new references nor the elimination of explicit
reference to cold fusion avoids the application of
collateral estoppel. Swartz has not shown that these
differences “materially alter the question of invalidity.”
See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). Substantially identical claims were
previously found to be invalid as lacking utility and not
enabled. That holding is binding on Swartz.


As discussed above, applications that suggest inherently
unbelievable inventions satisfy the Board’s initial burden
to show lack of utility, and we have previously held that
Dr. Swartz’s LENR-related inventions here properly fall
within that realm.

The decision was per curiam, Before PROST, Chief Judge, NEWMAN and LINN, Circuit

Walmart's US Patent 10,020,004, "Listening to the Frontend": "A need exists for ways to capture the sounds resulting from people in the shopping facility"

The background section of US 10,020,004 states

Many different types of sounds result from people in a shopping facility. For example, guests of the shopping facility may talk amongst each other or with employees of the shopping facility. Additionally, guests and employee movements and activities can generate additional sounds. A need exists for ways to capture the sounds resulting from people in the shopping facility and determine performance of employees based on those sounds.

The first claim states

A system in a shopping facility for determining a performance metric for an employee, the system comprising: one or more sound sensors distributed throughout at least a portion of the shopping facility and configured to receive at least sounds resulting from activity in the shopping facility; and a control circuit communicatively coupled to the one or more sound sensors, the control circuit being configured to: receive, from at least one of the one or more sound sensors, audio data, wherein the audio data includes sounds associated with items being scanned and sounds associated with bags; determine, based on the sounds associated with bags, a number of bags used; determine, based on the audio data associated with items being scanned, a number of items scanned; calculate, based on the number of bags used and the number of items scanned, a number of items per bag; receive an indication of an employee; correlate the audio data and the indication of the employee; and determine, based at least in part on the audio data and the indication of the employee, the performance metric for the employee, wherein the performance metric for the employee is based on the number of items per bag.

There is no expectation of privacy when shopping at WalMart.

The assignee is WALMART APOLLO, LLC (Bentonville, AR) .

PCT; App. No. PCT/US2017/028823; International Search Report and Written Opinion dated Jul. 13, 2017.

Lawsuits related to Facebook

Here are two related to pictures on Facebook:


Dennis v Napoli, 2015 N.Y. Misc. LEXIS 3020, 2015 NY Slip Op 31540(U) (N.Y. Sup. Ct. August 12, 2015) (Links to an external site.)Links to an external site.
The complaint alleges that since discovering the affair Marie has launched a campaign to ruin plaintiff's personal and professional life. Specifically, the complaint alleges that Marie has sent numerous letters, emails, texts and Facebook messages to plaintiffs family, friends, employers and future employers defaming plaintiff as well as posting vicious and insulting comments on plaintiff's Facebook (Links to an external site.)Links to an external For instance, the complaint alleges that within a month of plaintiff arriving at her new job in Houston, Marie sent several identical letters to the wives and family members of the partners at her current employer, wherein she, among other (Links to an external site.)Links to an external site.things, referred to plaintiff as a "sexual predator" and "sex addict,"
These pictures depict plaintiff with her classmates at the Trial Lawyers College and three of her professors. Several of these people are also tagged in the photos and, thus, Marie's comments can be seen by these classmates and professors and anyone they are "friends" with on Facebook. In her comments, Marie again refers to plaintiff as a "slut" and claims that plaintiff was fired from the Firm for being a "slut." As these communications are specifically (Links to an external site.)Links to an external site.directed at plaintiff's colleagues, it is clear that if they are continued they are capable of injuring plaintiff's standing and reputation in her professional life.
Separately, from
Chesney v. State, 165 So. 3d 498, 2015 Miss. App. LEXIS 277 (Miss. Ct. App. May 19, 2015) (Links to an external site.)Links to an external site.
On 08-23-11[,] Mrs. Stewart came to the [police department] to file a complaint on identity theft. Mrs. Stewart stated that someone had stole[n] a picture of her off her Facebook page and created another Facebook on her. This person has since defrauded, slander[ed], used her identity in such a way[,] which [**12] (Links to an external site.)Links to an external site. became harmful to the job . . . which Mrs. Stewart held. I sent Facebook a subpeona and received back information on a[n] Amanda Warren. I have since received information from John Paul Dove from Meridian[,] M[ississippi,] stating that it was in fact a Stan Chesney who was using the name of Sherri Stewart. Mr. Dove stated it started back in 2010 with different users and then Sherri Stewart's name with the same messages and pattern as before.

Tuesday, July 17, 2018

Pro se Appellant Burnett loses in a 12(b)(6)/101 case

The outcome was that pro se appellant Burnett lost:

Carl M. Burnett (“Burnett”) appeals an order of the
United States District Court for the District of Maryland
dismissing Burnett’s amended complaint for failure to
state a claim upon which relief can be granted. Burnett v.
Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
(“District Court Decision”). Specifically, because the
district court held that claims 1 and 9 of U.S. Patent No.
7,107,286 (“the ’286 patent”) are invalid as directed to
ineligible subject matter under 35 U.S.C. § 101, it concluded
that dismissal pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure was appropriate. Burnett
argues that the asserted claims are patent-eligible,
that the district court erred procedurally when it failed to
construe five allegedly disputed claim terms, and that the
district court violated Burnett’s due process rights when it
failed to hold Rule 12(b)(6) and claim construction hearings.
We affirm.

As to 12(b)(6), the CAFC noted:

The Fourth Circuit reviews de novo a dismissal under
Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
F.3d 380, 385 (4th Cir. 2009). “We have held that patent
eligibility can be determined at the Rule 12(b)(6) stage,”
but “only when there are no factual allegations that,
taken as true, prevent resolving the eligibility question as
a matter of law.”
Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
Here, the district court appropriately assessed eligibility
at the pleading stage because the asserted claims are
patent-ineligible even when accepting as true all factual
allegations pled in Burnett’s amended complaint

Of abstract idea:

Like the concept of using a formula to convert binarycoded
decimals into pure binary numerals, which the
Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72, the concept of using a formula to convert
geospatial coordinates into natural numbers, if found
eligible, “would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm
itself.” Claims 1 and 9 are both directed to a
similarly abstract idea.

Of Alice:

The remainder of Burnett’s arguments related to his
proposed claim constructions stand for the proposition
that “the claims recite significantly more than the purported
idea of a ‘mathematical methodology.’” Appellant
Br. at 46. But that a claim allegedly contains more than
an abstract idea does not mean the claim survives step
one, because, under that inquiry, it is enough that the
claims are directed to a mathematical methodology at all;
rather, Burnett’s argument is more appropriately assessed
under our inquiry in step two. Alice, 134 S. Ct. at
2355 (assessing under step two whether additional features
in a claim transform an otherwise a patentineligible
concept into a patent-eligible concept).


As the district noted, these additional features effectively
do no “more than simply state the [abstract idea]
while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
The preambles of both claims, as construed by Burnett,
instruct a user to implement the mathematical methodology
or instruct using a “geospatial media recorder” to do
the same. Such “wholly generic computer implementation
is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract
idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
at 77); accord Gottschalk, 409 U.S at 70–72.

CAFC finds D. Del. erred in claim construction in Blackbird v. ELB; Judge Reyna dissents

The outcome was that the D. Delaware decision of Judge Andrews of noninfringement was vacated:

Blackbird Tech LLC (“Blackbird”) appeals the U.S.
District Court for the District of Delaware’s entry of
judgment of noninfringement of claim 12 of U.S. Patent
No. 7,086,747 (“’747 patent”) based on its construction of
“attachment surface.” Because the court erred in construing
“attachment surface,” we vacate and remand.

This was an appeal by the patentee Blackbird, owner of the ’747 patent, which is directed to
energy efficient lighting apparatuses.

This case went to the CAFC so that a claim construction issue could
be resolved:

The parties disputed the meaning of “attachment surface,”
specifically whether the attachment surface must be
secured to the ballast cover. Blackbird proposed construing
“attachment surface” as “layer of the housing to which
the illumination surface is secured,” and Defendants
proposed “layer of the housing that is secured to the
ballast cover and to which the illumination surface is
secured.” J.A. 7. The district court construed “attachment
surface” as “layer of the housing that is secured to
the ballast cover.” J.A. 7–9.

Following claim construction, Blackbird stipulated to
, and the district court entered judgment
in favor of Defendants. Blackbird timely appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).

By a vote of 2-1, the CAFC found D. Delaware erred:

We conclude that the district court erred in construing
“attachment surface” to be secured to the ballast cover.
By its plain language, claim 12 does not require the
attachment surface to be secured to the ballast cover.

Judge Reyna dissented:

Claim 12 does not expressly require that the attachment
surface be attached to anything other than to the
illumination surface. However, claim 12 does expressly
describe a lighting apparatus “for retrofit with an existing
light fixture having a ballast cover.” ’747 patent col. 11 ll.
26–27 (emphases added). The majority fails to give
meaning to these claim terms by holding that “attachment
surface” means “layer of the housing to which the
illumination surface is secured,” and concludes that the
patent owner is entitled to patent scope that is neither
described in nor supported by the specification.
The plain language of claim 12, read in the context of
the specification, implicitly requires that the attachment
surface be secured to the ballast cover to achieve the
retrofit function. Apart from the preamble, which the
parties agree is limiting, claim 12 contains no reference to
the ballast cover, the existing light fixture, or where or
how the apparatus is retrofit with the existing light
fixture. Because the only feature of the existing light
fixture described in claim 12 is the ballast cover, a person
of ordinary skill would necessarily conclude that the
attachment surface is secured to the ballast cover of the
existing light fixture. This would not be a big leap.


Taken collectively, these disclosures in the claims
and the specification—and the lack of any reference in the
intrinsic record showing the attachment surface being
secured to anything other than the ballast cover—teach a
skilled artisan that the attachment surface described in
claim 12 is secured to the ballast cover of the existing
light fixture. See MBO Labs., Inc. v. Becton, Dickinson &
Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (“The words of
patent claims have the meaning and scope with which
they are used in the specification and the prosecution

Judge Reyna also noted:

The majority’s construction thus opens the door for
the ’747 patent to be subsequently invalidated for failure
to satisfy the written description requirement. Stated
differently, the majority’s construction is a route towards
rendering the patent invalid. See Carman Indus., Inc. v.
Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983) (“Claims should
be so construed, if possible, as to sustain their validity. If
such a construction would result in invalidity of the
claims, the appropriate legal conclusion is one of noninfringement,
not invalidity.”). The majority likewise
invites an enablement challenge; under the majority’s
approach, the retrofit aspect of the invention is merely an
afterthought, one for which a skilled artisan must figure
out for themselves the means by which the retrofit function
of the invention shall be achieved, without any guidance
from the patent. See Maj. Op. at 9. This result is
absurd, given that when the patent is read as a whole,
such guidance is clearly provided.
Worse still, because the majority’s construction “does
not recite how the lighting apparatus is installed into an
existing light fixture,” id., the majority effectively reads
the retrofit function out of claim 12 and claim 29, the
retrofitting method claim. Claim 29, while not at issue in
this case, is instructive. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Because claim
terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate
the meaning of the same term in other claims.”).
Claim 29 contains the same “attachment surface” limitation
at issue in claim 12:

Sunday, July 15, 2018

Steve Hartman does "CBS Sunday Morning" on 15 July 2018

Steve Hartman both hosted the 15 July 2018 "Sunday Morning" and had a story therein about Robert Moore of Ponca City, OK.

The choice for Almanac was unusual, recalling the murder on 15 July 1997 of Giovanni Maria "Gianni" Versace. Implicitly, there are intellectual property themes here, both as to the mark Versace and as to inventions. Of the latter, from wikipedia

Among Versace's most famous innovations was his 1982 invention of a type of super-light chainmail called 'Oroton', which became a signature material in his outfits. His suits were inspired more by his experience in female tailoring, departing from masculine Savile Row models by crafting suits which accentuated the male form and "insisted on men as sex objects.

Sunday Morning also noted the deaths of Tab Hunter and Nancy Sinatra, Senior.

The Milepost recalled the death of Emmett Till in 1955, and noted the case had been re-opened.

Sunday Morning recycled an October 2017 story on Peter Bellerby and globe making.

Of Jennifer Garner, CBS noted she attended Denison University in Granville, Ohio, where she changed her major from chemistry to theater, CBS did not note that, while growing up, she attended a local United Methodist Church every Sunday and went to Vacation Bible School. (see wikipedia)

The moment of nature feature was elephants in Tanzania.

The cover story was on iGen, and discussed the impact of the prevalence of smart phones on middle schoolers, including 8th graders.

There was an upbeat report on soccer (Axelrod) which did not mention the low tv ratings. From the LA Times:

The 48 group stage telecasts on Fox and FS1 averaged 2.069 million viewers, according to Nielsen Media Research. That is down 42% from the 3.54 million average on ESPN, ESPN2 and ABC four years ago and down 15% from the 2.429 million average on ESPN, ESPN2 and ABC eight years ago.

Sunday Morning included a plug for an interview of President Trump by Jeff Glor, to appear later in the morning on "Face the Nation." [EU as a "foe".]

Saturday, July 14, 2018

"The Happenings," then and now

Of the concept of a "happening," the website observes:

In October 1959, artist and Rutgers professor Allan Kaprow presented 18 Happenings in 6 Parts at the Reuben Gallery in New York’s East Village. Although he had experimented with the form earlier, this marked the first use of the term “Happening.”
The Happenings burned bright and fast, tapering off in 1963 when Kaprow moved on. Grooms and Oldenburg had already left to pursue other projects. News of the novel art form had started to travel—there were “thrill clubs” that came from Long Island to experience the Happenings and, for Oldenburg, the “audience became less and less interesting to me. I couldn’t really reach them.” The term “Happening” became such an accepted part of 1960s vernacular that it was used as a title for a song by girl group The Supremes.


The song referenced by, "The Happening," was the theme song for the 1967 movie "The Happening," which starred, among others, Faye Dunaway, Anthony Quinn, and George Maharis. Oscar Homolka, frequently cast as a heavy (by Hitchcock in Sabotage, Reward to Finder), also appeared. did not mention the musical group The Happenings, comprised of graduates from a high school in Paterson, New Jersey, most notably Bob Miranda. The Happenings were big around 1966-1967. Of relevance to intellectual property, their big hits were cover songs, of previously recorded songs. From wikipedia:

The band's original concept and much of its commercial success came as a cover band playing classic songs in a unique style. Said Miranda, the group's concept was to "take a song that's already proven it could be a hit and put our spin on it."


The group's major hits were "See You In September" (1966), which was originally recorded by The Tempos in 1959, and a cover version of the George Gershwin/Ira Gershwin song, "I Got Rhythm" (1967), updated for the group's sunshine pop musical style. "See You In September" and "I Got Rhythm" were on the Billboard Hot 100 Singles charts for 14 weeks in 1966 and 13 weeks in 1967, respectively, forming musical bookends for the 1966-1967 school year, based on their Hot 100 #3 peak dates.

As an update, Bob Miranda & The Happenings appeared at Duke Island Park in Bridgewater, New Jersey on July 8, 2018.

Friday, July 13, 2018

CAFC affirms PTAB in Jazz Pharmaceuticals

The outcome:

Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from six
inter partes review (“IPR”) decisions of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (the “Board”).1 Collectively, the decisions held
certain claims of Jazz’s U.S. Patents 7,668,730 (“’730
patent”), 7,765,106, 7,765,107, 7,895,059, 8,589,182,
8,457,988 (“’988 patent”), and 8,731,963 (“’963 patent”)
(together, the “patents in suit”) invalid as obvious. Because
the Board did not err in its conclusions of obviousness,
we affirm.

TSM arises at the end of the opinion

We also agree with Amneal that Jazz misinterprets
both the Supreme Court’s decision in KSR and this court’s
obviousness precedent. KSR did not impose a rigid requirement
to identify both a problem to be solved in the
art and a finite universe of potential options. Rather, the
Supreme Court rejected the teaching, suggestion, or
motivation test, because the Court considered that the
test was a “[r]igid, preventative rule[] that den[ies] factfinders
recourse to common sense.” KSR, 550 U.S. at 421.

Furthermore, the Supreme Court also rejected the “assumption
that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior
art designed to solve the same problem.” Id. at 420. We
have similarly recognized that persons of ordinary skill
have diverse motivations, including “[t]he normal desire
. . . to improve upon what is already generally known.” In
re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017); see
also Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280,
1291 (Fed. Cir. 2012) (“New compounds may be created
from theoretical considerations rather than from attempts
to improve on prior art compounds.”).
KSR did state that “[w]hen there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options
within his or her technical grasp.” KSR, 550 U.S. at
421. But it did not set forth such factors as part of a
mandatory formula. To treat them as such would be
inconsistent with KSR’s holding and our own case law.
Thus, the Board did not err in concluding that implementing
the ACA materials’ centralized database system on
multiple computers “would have been a predictable use of
a known distributed data system according to its established
function.” ’730/’988 Decision, 2016 WL 7985458, at
*25 (citing KSR, 550 U.S. at 417). As Jazz has presented
no other arguments challenging the Board’s finding of a
motivation to modify, we affirm its holdings with respect
to claims 2 and 10 of the ’988 patent and claims 24, 26,
and 27 of the ’963 patent

CUSTOPHARM INC. loses its appeal against Endo

The CAFC affirmed the "not invalid" determination of Judge Robinson of D. Delaware:

After a four-day bench trial on invalidity, the
district court concluded that Custopharm had not proven
that the claims were invalid under 35 U.S.C. § 103.
Custopharm appealed. For the reasons below, we find no
reversible errors in the district court’s conclusion and
accordingly, we affirm

Of review standards:

“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). We review the district court’s conclusions of
law de novo. Eli Lilly & Co. v. Teva Parenteral Meds.,
Inc., 845 F.3d 1357, 1372 (Fed. Cir. 2017). And we review
the district court’s factual findings for clear error. Par
Pharm., 773 F.3d at 1194.

There was an issue of "which guidelines":

First, Custopharm’s overdose argument is predicated
on the assumption that a skilled artisan would have
applied the AACE Guidelines to the exclusion of other
guidelines that existed at the time, including the FDA
Guidelines. Under the FDA Guidelines, the range of
normal testosterone is 300 to 1000 ng/dl or 10 to
35 nmol/l. The record evidence sufficiently demonstrates
that the most prevalently applied guidelines in clinical
practice were the FDA Guidelines, not the AACE Guidelines.
The studies underlying the Articles all employed
the FDA Guidelines.

Of motivation

Second, Custopharm argues that the obviousness of
an invention does not require using the “best” motivation8;
only a “suitable” motivation is required. Par
Pharm., 773 F.3d at 1197–98. But this is a misunderstanding
of Custopharm’s burden. While the FDA Guidelines
do not teach away from using the AACE Guidelines,
the district court found that Custopharm had not shown,
by clear and convincing evidence, that a skilled artisan
would have recognized that patients injected with
1000 mg TU were being overdosed. To meet its burden,
Custopharm needed to do more than merely show that the
prior art does not preclude lowering the dose of TU.
Custopharm needed to affirmatively demonstrate that a
skilled artisan would have been motivated to lower the
dose of TU despite no clear evidence of overdosing under
the FDA Guidelines. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007) (“[T]he burden falls on
the challenger of the patent to show by clear and convincing
evidence that a skilled artisan would have been
motivated to combine the teachings of the prior art references
to achieve the claimed invention . . . .”).

Of inherency:

To establish that a prior art reference inherently—
rather than expressly—discloses a claim limitation, “the
limitation at issue necessarily must be present, or [is] the
natural result of the combination of elements explicitly
disclosed by the prior art.” Par Pharm., 773 F.3d at 1196.
Here, Custopharm argues that the vehicle formulation
was “necessarily present” in the Articles because it was
later revealed to be the actual formulation the authors of
the Articles used in their reported clinical studies. We
An inherent characteristic of a formulation can be
part of the prior art in an obviousness analysis even if the
inherent characteristic was unrecognized or unappreciated
by a skilled artisan. See In re Kao, 639 F.3d 1057,
1070 (Fed. Cir. 2011). But, inherency “may not be established
by probabilities or possibilities.” Par Pharm., 773
F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)). “The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. (citing In re Rijckaert, 9 F.3d 1531, 1533–34 (Fed. Cir.
1993); Oelrich, 666 F.2d at 581 (“[M]ere recitation of a
newly discovered function or property, inherently possessed
by things in the prior art, does not distinguish a
claim drawn to those things from the prior art.”); In re
Shetty, 566 F.2d 81, 86 (CCPA 1977) (“[T]he inherency of
an advantage and its obviousness are entirely different
questions. . . . Obviousness cannot be predicated on what
is unknown.” (quoting In re Spormann, 363 F.2d 444, 448
(CCPA 1966))).

Footnote 9 delves into waiver:

Custopharm, however, did not respond to Endo’s contention
that Custopharm waived this argument by failing to
raise it before the district court. We agree with Endo. In
its reply brief, Custopharm argued that Helsinn
Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., is a
pertinent intervening case, but did not explain how it is
an intervening change in law to the inherency doctrine,
especially given that it is an on-sale bar case. 855 F.3d
1356 (Fed. Cir. 2017).

Wednesday, July 11, 2018

Czech politician Mala resigns over accusations of plagiarism

Tatana Mala, who briefly served as justice minister in the Czech Republic, resigned over possible
plagiarism issues in two theses (of widely divergent subject matter).

One: Microclimatic conditions of rabbit breeding at the Mendel University (allegation of copying 11 pages of text from a thesis of another student, who wrote about a similar topic two years before she did; recall the Martin Luther King issue at Boston University.)

The other: before Faculty of Law at the Pan-European University in Bratislava. The Prague Daily Monitor noted:

The university declared on Friday that her thesis was pass the system for uncovering plagiarism and was classified as original. According to available information, the Slovak university's system did not work with Czech sources, however.


See also:

**As to King's thesis at Boston University:

Worse, in the view of most academic standards, was King's appropriation of works by other writers about Tillich, including a 1952 doctoral dissertation by another Boston University student. In the general bibliography of his thesis, King referred to the other student's dissertation but did not cite particular passages.

--the 1952 thesis was that of Jack Stewart Boozer


See also:

Of Boozer:

CAFC finds Board applied wrong legal standard in Apple v. ContentGuard

Apple Inc. and Google LLC appeal from the Patent
Trial and Appeal Board’s decision to grant ContentGuard
Holdings, Inc.’s motion to amend in a covered business
method review of U.S. Patent 7,774,280. Because the
Board applied the wrong legal standard to determine
whether the ’280 patent qualified as a covered business
method, we vacate and remand for further proceedings.

As we explained in Unwired Planet, the mere possibility
that a patent can be used in financial transactions is
not enough to make it a CBM patent. 841 F.3d at 1382.
Although the ’280 patent describes embodiments where
the claimed DRM system is used to monetize digital
works, it also explains how the claimed invention can be
used in ways that do not involve financial transactions.
For instance, the specification describes how the claimed
invention can manage healthcare records.


Instead, we hold only that it is not enough for the specification to describe
how the invention could, in some instances, be used to
facilitate financial transactions.
Petitioners and the Patent and Trademark Office, as
intervenors, argue that the Board also determined the
claims are “financial in nature” in its final written decision.
Accordingly, petitioners and the Patent and Trademark
Office maintain that we can sustain the Board’s
determination on that alternative ground. However,
references to the “incidental to” or “complementary to”
standard appear throughout the Board’s final written
decision. See, e.g., J.A. 7–8, 11, 12. On the record before
us, we are unable to discern whether the Board would
have concluded that the ’280 patent qualifies as a CBM
patent had it not applied this standard. On remand, the
Board must determine whether the ’280 patent qualifies
as a CBM patent in the first instance without relying on
the “incidental to” or “complementary to” standard.

Thus, the conclusory "alternative ground" argument was rejected
because the decision seemed to rest on the non-alternative ground.

The CAFC second guesses CD Cal on relative strength of invalidity theories; remand asks for a more complete explanation

In Polara Engineering v. Campbell, invalidity theories
of defendant Campbell were rejected, but enhanced damage
analysis by CD Cal was rejected.

Campbell Company (“Campbell”) appeals from the final
judgment of the United States District Court for the
Central District of California entering judgment in favor
of Polara Engineering Inc. (“Polara”) on its claim for
infringement of claims 1–4 (“the asserted claims”) of U.S.
Patent 7,145,476 (“the ’476 patent”) and its decision,
following a jury trial, denying Campbell’s post-trial motions
for judgment as a matter of law of invalidity and no
willfulness, and granting Polara’s motion to enhance the
damages award. See Polara Eng’g, Inc. v. Campbell Co.,
237 F. Supp. 3d 956 (C.D. Cal. 2017) (“Post-trial Motions
Opinion”); Judgment, Polara Eng’g, Inc. v. Campbell Co.,
No. SACV-13-00007 (C.D. Cal. Mar. 31, 2017), ECF No.
499 (J.A. 83–84). For the following reasons, we affirm in
part, vacate in part, and remand.1

An argument of invalidity through public use by Campbell
was rejected:

We agree with Polara that substantial evidence supports
the jury’s finding of experimental use that negates
application of the public use bar.
The jury could have properly based its finding of
experimental use on the need for testing to ensure the
durability and safety of the claimed APS. In City of
Elizabeth v. American Nicholson Pavement Co., the Supreme
Court held that testing an inventive pavement for
“usefulness and durability” for six years on a public
roadway constituted experimental use. 97 U.S. 126, 133–
34 (1877). We have similarly recognized as sufficient to
negate the statutory bar experimental use testing performed
“to perfect features inherent to the claimed invention,”
such as “durability.” Electromotive Div. of Gen.
Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417
F.3d 1203, 1211–12 (Fed. Cir. 2005) (collecting cases);
accord Manville Sales Corp. v. Paramount Sys., Inc., 917
F.2d 544, 551 (Fed. Cir. 1990) (“When durability in an
outdoor environment is inherent to the purpose of an
invention, then further testing to determine the invention’s
ability to serve that purpose will not subject the
invention to a section 102(b) bar.”).
The factual situation here bears a striking similarity
to the situation in City of Elizabeth.

The relative strength of the public use defense was a factor used
by the CAFC to vacate enhanced damages:

The district court referred to Campbell’s invalidity
theories generally in the closeness of the case Read factor.
In determining that this factor was “neutral,” the district
court merely observed that “obviousness was a close call”
and that the “other invalidity theories were weaker.”
Post-trial Motions Opinion, 237 F. Supp. 3d at 993. This
explanation is insufficient for us to determine why the
court viewed this factor as “neutral.” The court’s use of
the relative term “weaker” provides little insight because
it did not explain its reasons for viewing the other defenses,
especially public use, as comparatively “weaker.” We
view the public use defense, which the court did not
explicitly address, as a closer call than obviousness.
Thus, to the extent the district court determined that the
public use defense was weak in this case, the court clearly

Accordingly, we vacate the award of enhanced damages
and remand. See, e.g., Whitserve, LLC v. Comput.
Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) (remanding
“for a determination of whether enhanced damages
are warranted and an explanation of the grounds for that
determination”); S.C. Johnson & Son, Inc. v. CarterWallace,
Inc., 781 F.2d 198, 202 (Fed. Cir. 1986) (“vacat[ing]
the decision refusing [enhanced] damages under
35 U.S.C. § 284, and remand[ing] for clarification by the
district court”). On remand, we instruct the district court
to provide a more complete explanation, including a
discussion of the public use defense, in exercising its
discretion. We express no view on whether damages
should be enhanced or, if so, by what amount

Note also footnote 1:

Although Polara noticed a cross-appeal from certain
determinations of the district court, it has not pursued
those issues in its briefing before this court.
Accordingly, Polara has not properly raised any issue on
cross-appeal, and we need not address the cross-appeal.