Saturday, January 20, 2018

Minnesota Vikings seeking a trademark in 'Minneapolis Miracle'

Note the post at ESPN Vikings seek trademarks for 'Minneapolis Miracle' and 'Minnesota Miracle'

This relates to the pass of Case Keenum to Stefon Diggs.

As to "miracle," CBS Sports wrote: One of the most unlikely quarterbacks of one of the most unlikely contenders engineered one of the most unlikely game-winning drives anyone will ever see

Copyright infringement case over “The Rest of Our Life”

The Independent discusses a recent copyright infringement case involving the song “The Rest of Our Life”.

Of note in the text:

Carey and Golden filed a lawsuit in New York last week accusing Sheeran and his co-writers of “wilful copyright infringement”


The complaint says that during a studio writing session, Rae, who is named as a co-writer on “When I Found You” but is not named amongst the plaintiffs, mentioned a fan had tweeted at her about the similarities between the two songs. It goes on to note that Sheeran was “touring extensively in Australia” when Rae’s song was enjoying success on Australian radio stations. [going to possible evidence of access. Compare CA7 case involving the BeeGees.]

[AND NOTE as to possible knowledge of copying]

The reason for Rae’s absence from the suit is, according to Carey and Golden, because her boyfriend – a marketing manager for Sony Music who was involved in promoting Sheeran’s “The Rest of Our Life” in Australia – was aware of similarities between the songs for more than two months before its release.

LINK: Ed Sheeran hit with plagiarism lawsuit over song he co-wrote for Tim McGraw and Faith Hill

DOMINICK THERESA of Edison, NJ appearing pro se before the CAFC, loses

Of note as to anticipation of a claim using the word "or":

Theresa’s first argument is that the Board erred in
ignoring the limitations of claims 1, 5, 20, and 24, involving
marking the labels with “symbols,” even though none
of the cited references disclosed the use of symbols.
(Slater only used words or numbers.) This argument is

First, claim 1 requires marking the labels with “preset
words or pre-set symbols.” J.A. 416 (emphasis added).
“When a claim covers several structures or compositions,
either generically or as alternatives, the claim is deemed
anticipated if any of the structures or compositions within
the scope of the claim is known in the prior art.” Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (citing Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed.
Cir. 1984)). Thus, since Slater undisputedly disclosed the
use of pre-determined words, claim 1 can be obvious in
light of the prior art even without a reference to symbols.
So too with dependent claim 5, which includes a limitation
that builds on the alternative limitation in claim 1,
while preserving the alternative options.

As to using a reference for ALL that it teaches:

Theresa also contends the Board erred in relying on
Erickson for use of a color-coded system in conjunction
with memory devices, because Erickson’s claimed invention
focused on the RFID tags. True, Erickson’s reference
to color-coded file folders related to the combination of the
RFID system therein with a third-party system that
already existed. But Erickson need not be limited to the
invention claimed therein; it may be cited for all that it
teaches. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006) (“[T]he teaching of [a reference] is not limited to the
specific invention disclosed.”).

When a reference says "just one example," the examiner and Board
can infer others:

Though Slater disclosed labels for keys, it acknowledged
that keys were “just one example” of how the colorcoded
system disclosed therein could be used. J.A. 461
¶ 16. “The need for such a product can be found in a
number of places where people carry multiple objects that
appear the same,” such as pill bottles or toothbrushes.
Id.; see also J.A. 460 ¶ 6 (noting that similar labels exist
to identify circuit breakers or storage boxes and to convey
further information about the labeled items). The examiner
found, and the Board agreed, this indicated that
Slater’s system could be successfully applied to a set of
Yu’s flash memory devices, and Erickson had already
taught the application of a color-coding system to memory
devices. J.A. 16–17, 350–51

Friday, January 19, 2018

CAFC affirms ED Texas in Flexuspine matter

From the decision:

Globus Medical, Inc., appeals the district court’s decision
denying its Rule 59(e) motion and denying as moot
its Rule 50(b) motion. Flexuspine, Inc., cross-appeals
from the district court’s grant of summary judgment of
noninfringement of its U.S. Patent No. 8,123,810 (“’810
patent”). We affirm the district court’s decisions
(1) denying Globus’s Rule 59(e) motion, (2) denying as
moot its Rule 50(b) motion, and (3) granting summary
judgment of noninfringement.

Of the issues:

The district court entered final judgment that Globus
did not infringe any of the asserted claims of the two
remaining patents. The court’s judgment did not address
invalidity of the patents-in-suit. Globus filed a Rule 59(e)
motion requesting that the judgment be amended to
include the jury’s invalidity verdict. Flexuspine opposed.

Globus then filed a Rule 50(b) motion for judgment as a
matter of law on invalidity. Globus argued in support of
the Rule 50(b) motion that given the overwhelming invalidity
evidence presented at trial, judgment as a matter of
law on invalidity was required even if the court denied
Globus’s Rule 59(e) motion. Flexuspine did not file a
response to the Rule 50(b) motion.

The district court denied Globus’s Rule 59(e) motion.
The court also dismissed Globus’s invalidity counterclaims
without prejudice and so denied as moot its Rule
50(b) motion. Globus appeals. Flexuspine cross-appeals
from the district court’s pre-trial order granting summary
judgment of no infringement on the ’810 patent. Flexuspine
does not appeal the judgment of noninfringement
of the other two patents-in-suit.

Of the jury

First, Globus argues that the district court was not
authorized to direct the jury to further consider its answers
and verdict because the jury’s first answers were
not inconsistent with each other. Globus maintains that
the fact that the jury overlooked the stop instructions was
not sufficient to render the verdict internally inconsistent.
We disagree.
In White v. Grinfas, 809 F.2d 1157 (5th Cir. 1987),
like here, the problem with the verdict “was caused by the
jury’s failure to follow the court’s instructions.” 809 F.2d
at 1161. In that case, the jury was directed to answer
questions following question 3 only if it answered “yes” to
that question. The jury answered “no” to that question
but continued to answer further questions, ignoring the
court’s instructions. The Fifth Circuit observed that
“[b]ecause all the questions subsequent to question 3 were
predicated on an affirmative response to that question,
the subsequent answers had to conflict with the [“no”]
answer to question 3, regardless of whether they were
also in conflict with each other.” Id. (emphasis added).
Accordingly, under Fifth Circuit law, a jury answering
questions in violation of a stop instruction is sufficient to
render the verdict internally inconsistent.

Of interest:

We conclude that the district court was within its discretion
to dismiss Globus’s invalidity counterclaims
without prejudice. This court has expressly held that “[a]
district court judge faced with an invalidity counterclaim
challenging a patent that it concludes was not infringed
may either hear the claim or dismiss it without prejudice.”
Id. (citing Nystrom v. TREX Co., 339 F.3d 1347,
1351 (Fed. Cir. 2003)). Globus is correct that a district
court is typically faced with a live invalidity counterclaim
only after the court grants summary judgment of noninfringement
and that its discretion to dismiss invalidity
counterclaims at later stages in the proceedings may be
more limited.2 Under the specific circumstances here,
however—where the district court clarified that Globus’s
invalidity counterclaims were not submitted to the jury
and Globus waived its right during the trial to have the
jury consider those claims—it was within the district
court’s discretion to dismiss Globus’s counterclaims
without prejudice.

Once the district court dismissed Globus’s invalidity
counterclaims without prejudice, invalidity was no longer
a live issue amenable to being decided as a matter of law.
The court properly denied as moot Globus’s Rule 50(b)
motion for judgment as a matter of law of invalidity.

Cardinal Chem appears in footnote 2: Cardinal
Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 100–01 (1993)

***Separately, Blawgsearch on 19 Jan 2018 lists IPBiz as the number one IP Blog for
the day, week and month. Of the week:

Development in European patents in CRISPR area

In September 2016, IPBiz discussed an issue between Marraffini/Rockefeller and Zhang/Broad related to US filings in the
CRISPR area. See CRISPR patent confusion over lawyer representation .

Kelly Servick at Science has a post on some fallout in the European patent area related to the Marraffini matter.
See Broad Institute takes a hit in European CRISPR patent struggle .

The initial dispute never quite made sense. If Feng Zhang were an inventor on the Marraffnni application, a signed oath by Feng pursuant to 37 CFR 1.63 would have been required.

Servick wrote in her 2018 post:

Unfortunately, those earliest U.S. filings include an inventor, microbiologist Luciano Marraffini of The Rockefeller University in New York City, who was not listed on the European filing. Disagreement between Rockefeller and the Broad over Marraffini’s role in key CRISPR inventions led to a bizarre dispute, creating conflicting, identical patents with different authors, The Scientist reported in 2016.

The two institutions settled the disagreement earlier this week. But because of strict rules in Europe about the listing of inventors on patents, Marraffini’s exclusion from the European filing meant the Broad couldn’t claim the “priority date” of the earliest U.S. patents, and therefore couldn’t lay first claim in Europe to the technologies described.

The invalidated patent is one of several facing formal “oppositions” filed with EPO. One opponent of the now-revoked patent was CRISPR Therapeutics, co-founded by microbiologist Emmanuelle Charpentier, now at the Max Planck Institute for Infection Biology in Berlin, who collaborated with Doudna on early CRISPR technology and is listed on key patents. And the same issue could threaten more of the Broad’s intellectual property in Europe, says Jacob Sherkow, a patent specialist at New York Law School in New York City. “If the Broad can’t get the priority date that they want in their patents, things are just going to be really bad for them,” he says. “It looks like UC Berkeley and Emmanuelle Charpentier are going to have the dominant patent position in Europe going forward.”

GenomeWeb wrote of the matter:

Meanwhile in Europe, the Broad said that the European Patent Office has decided after an initial review to deny the institute's reliance on a US priority provisional application for a CRISPR-related patent in Europe based on a technicality.

According to the Broad, the issue relates to "the current interpretation of rules that dictate what happens when the names of inventors differ across international applications. This interpretation affects many other European patents that rely on US provisional patent applications, and is inconsistent with treaties designed to harmonize the international patent process, including that of the United States and Europe."

The Broad said that it intends to appeal the decision to the EPO Board of Appeal and that it is confident that the agency will "harmonize" its procedures to be consistent with international treaties.

However, ERS Genomics — which provides access to competing CRISPR/Cas8 intellectual property held by Emmanuelle Charpentier of the Max Planck Institute for Infection Biology in Berlin — responded to Broad's statement, noting that the EPO "rejected the Broad Institute's position that its patent was entitled to a priority date pre-dating the prior art," and that the EPO decided that "in originally obtaining the patent, the Broad Institute ... failed to follow rules and established caselaw for properly establishing an earlier priority date."

ERS further noted that Broad's expectation that the EPO will harmonize procedures to be consistent with international treaties "would require a change in the law itself."

See Rockefeller, Broad Settle CRISPR IP Dispute; EPO Denies Broad European Patent

Thursday, January 18, 2018

CAFC finds that CD Cal failed to provide a “full and fair opportunity to ventilate the issues.”

The opinion begins

Defendant Zinus, Inc., appeals from a summary
judgment entered in favor of plaintiff Cap Export, LLC,
and third-party defendants Abraham Amouyal and
4Moda Corp. (collectively, “Cap Export”) by the United
States District Court for the Central District of California.
The district court ordered Zinus, the owner of U.S. Patent
No. 8,931,123 (“the ’123 patent”), to file a motion for
summary judgment of validity of that patent. Following
briefing, the court held two of the asserted claims of
Zinus’s patent invalid for obviousness. The court then
dismissed all of Zinus’s counterclaims with prejudice. We
vacate the district court’s summary judgment and remand
for further proceedings.

Of the issues leading to decision to vacate:

On appeal, Zinus raises a number of objections to the
district court’s summary judgment ruling. Three of
Zinus’s arguments are persuasive.

First, the district court improperly granted summary
judgment for Cap Export sua sponte, without proper
notice to Zinus. “It is well established that a district court
has ‘the power to enter summary judgment[] sua sponte,
so long as the losing party was on notice that she had to
come forward with all of her evidence.’” Mikkelsen Graphic
Eng’g, Inc. v. Zund Am., Inc., 541 F. App’x 964, 972
(Fed. Cir. 2013) (quoting Celotex Corp. v. Catrett, 477 U.S.
317, 326 (1986)); see also Albino v. Baca, 747 F.3d 1162,
1176 (9th Cir. 2014) (“Even when there has been no crossmotion
for summary judgment, a district court may enter
summary judgment sua sponte against a moving party if
the losing party has had a full and fair opportunity to
ventilate the issues involved in the matter.”). Rule 56(f)
of the Federal Rules of Civil Procedure provides that
district courts may grant summary judgment for a nonmovant
only after “giving notice and a reasonable time to
respond.” See Mikkelsen, 541 F. App’x at 972–73.


When it ordered Zinus to make a motion for summary
judgment of validity, the district court provided no notice
that the court was contemplating entering summary
judgment of invalidity. Normally, if a patent holder were
to lose a motion for summary judgment of validity, the
result would be a trial, not a judgment of invalidity. In
fact, because a patent carries a presumption of validity
and a challenger must prove invalidity by clear and
convincing evidence, a patentee need not present any
factual evidence to prevail on a motion for summary
judgment of validity. Massey v. Del Labs., Inc., 118 F.3d
1568, 1573 (Fed. Cir. 1997). The district court gave no
notice that it might grant summary judgment against
Furthermore, Zinus lacked a “full and fair opportunity
to ventilate the issues.” Gospel Missions of Am. v. City of
Los Angeles, 328 F.3d 548, 553 (9th Cir. 2003). Because of
the unusual sequence of briefs and evidence, Zinus did not
have an opportunity to depose Cap Export’s expert, whose
declaration was first presented as part of Cap Export’s
sur-reply filed on November 11, 2016. Nevertheless, the
district court relied on the expert’s testimony and found it
“credible.” Zinus was also denied an opportunity to
present evidence of objective indicia of nonobviousness,
which could have supported its position that the claims of
the ’123 patent were not obvious. See, e.g., Cheese Sys.,
Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d
1341, 1353 (Fed. Cir. 2013). Although Zinus stated in its
reply brief in support of its motion for summary judgment
of validity that it was not “at this time asking the Court to
consider any objective evidence of nonobviousness,” Zinus
was entitled to present evidence of nonobviousness,
including objective evidence of nonobviousness, in defending
against a motion for summary judgment of invalidity.
Under these circumstances, Zinus lacked both notice
that the district court would enter summary judgment of
invalidity sua sponte and an opportunity to present evidence
and argument as to why summary judgment should
not be entered against it. Accordingly, the district court’s
entry of summary judgment in Cap Export’s favor was
procedurally improper.

Of the second point

As neither party raised arguments regarding the validity of
claim 2, the district court erred in dismissing that claim
with prejudice. In addition, although a district court may
decline to exercise supplemental jurisdiction over state
law claims after dismissing federal claims pursuant to 28
U.S.C. § 1367(c)(3), any such dismissal must be without
prejudice. Davila v. Smith, 684 F. App’x 637, 638 (9th
Cir. 2017) (citing Gini v. Las Vegas Metro. Police Dep’t, 40
F.3d 1041, 1046 (9th Cir. 1994)). Accordingly, the district
court erred in dismissing claim 2 of the ’123 patent and
Zinus’s state law claims with prejudice.

Of the third point

Third, the district court improperly relied on the “bed
in a box” prior art reference despite a factual dispute
regarding whether the reference predated the ’123 patent.
Cap Export alluded to the “Amazing Bed in a Box” website
only in its April 2016 letter to Zinus’s counsel; it did
not assert the website as prior art in any of its briefs to
the district court in connection with Zinus’s motion for
summary judgment of validity. In its opening brief on
that motion, Zinus argued that the website does not
predate the priority date of the ’123 patent, which is
September 25, 2013, because the website appears to have
been posted in November 2014.2 It appears that Cap
Export may have abandoned the reference altogether, as
Cap Export did not address that reference in its opposition
brief before the district court. See Shakur v. Schriro,
514 F.3d 878, 892 (9th Cir. 2008) (holding that a party
abandons claims by not defending them in opposition to a
motion for summary judgment); Stichting Pensioenfonds
ABP v. Countrywide Fin. Corp., 802 F. Supp. 2d 1125,
1132 (C.D. Cal. 2011) (“[I]n most circumstances, failure to
respond in an opposition brief to an argument put forward
in an opening brief constitutes waiver or abandonment in
regard to the uncontested issue.”).
Nevertheless, the district court relied on that reference
in concluding that claims 1 and 3 would have been
obvious. The court explained that “someone with ordinary
skill in the art would view the Tiffany Bed (with a
headboard compartment), the Aspelund bed (with legs
attached to the footboard), and the Bed in a Box (where
all pieces of the bed fit in one compartment), and combine
these references . . . .” At best, the disputed fact regarding
the publication date of the “bed in a box” reference
precludes reliance on that reference for purposes of summary
judgment. See Tennison v. City & Cty. of San
Francisco, 570 F.3d 1078, 1087 (9th Cir. 2009); Lamle v.
Mattel, Inc., 65 F. App’x 293, 295 (Fed. Cir. 2003).

Tuesday, January 16, 2018

LIQWD, INC./OLAPLEX LLC win appeal at CAFC against L’ORÉAL: context is central in claim construction

Olaplex moved for a preliminary injunction, and in
July 2017, the district court denied the motion. The
court’s dispositive basis for denying the motion was its
construction of the claim requirement that the mixture
not contain a “hair coloring agent.” Because the adopted
construction excluded L’Oréal’s products, the court concluded,
Olaplex had failed to show a likelihood of success
on the merits of its infringement claims and therefore a
preliminary injunction was inappropriate. Id. at *7.
Olaplex timely appealed. We have jurisdiction under
28 U.S.C. § 1292(a)(1) and (c)(1). We now conclude that
the district court erred in its claim construction, and we
therefore vacate the denial of the preliminary injunction
and remand for further proceedings.

Within the case:

Context is central in claim construction, see,
e.g., Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599, 608
(Fed. Cir. 2015); Phillips v. AWH Corp., 415 F.3d 1303,
1321 (Fed. Cir. 2005) (en banc), and here the method
claims’ focus on producing results suggests a focus on
whether “hair coloring” results from the mixture actually
applied to hair. Cf. Cox Commc’ns, Inc. v. Sprint
Commc’n Co. LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016)
(“All of the asserted claims are method claims, so it makes
sense to define the inventive method as a series of functions.”).
It is beyond dispute that not only the chemical
identity of molecules in the mixture, but the quantity of
such molecules, matters to whether the mixture contains
a constituent that in fact produces the result of hair
coloring. Accordingly, it is one natural interpretation of
the claim language, in context, to focus on what is actually
present in the mixture, considering both chemical
identity and quantity. In short, it is natural to say that a
particular mixture “does not contain a hair-coloring
agent,” despite the presence of certain identified molecules
that if greatly increased in number could change
hair color, if there are not enough of those molecules to
actually change hair color.

The case illustrates "what can happen" when a district court does
not address all arguments:

The district court did not rest its denial of the requested
preliminary injunction on any of the other bases
advanced by L’Oréal for denying the injunction.

Plagiarism at The Daily Beast leads to resignation

The New York Post reported on a plagiarism incident at The Daily Beast, which led to a quick resignation by the offender

John Avlon, the Daily Beast’s editor-in-chief, confirmed to The Post in a statement Tuesday that Crocker’s article was deleted and replaced with an editor’s note after the outlet learned of the allegations and confirmed them.

“Lizzie Crocker offered to resign and her resignation was accepted,” Avlon said in a statement. “When a second instance of plagiarism emerged, that story was deleted as well. A larger investigation of her work at The Beast is underway. We take plagiarism seriously, and will not allow the hard-earned trust we’ve built with our millions of loyal readers to be compromised.”

Crocker’s story on Roiphe — a writer for Harper’s Magazine who reportedly intends to name the author of the so-called “Sh—y Men in Media” list of male journalists accused of sexual misconduct — has now been replaced by an editor’s note.

“The story published about author Katie Roiphe violated The Daily Beast’s Code of Ethics and Standards and has been removed,” the statement reads.


The "crass edge"?

Tom Porter of Newsweek had text on Joe Biden in the post --This Is Who Trump Is Afraid of Facing in 2020, and It's Not Bernie Sanders --:

“What we can’t let voters do is think they can get the same policies with someone they like better, like Joe Biden—someone who would fight for them but who doesn’t have the crass edge,” one former White House staffer told Politico.

As to "crass," recall Biden's IQ remark, as mentioned for example within IPBiz:

See also E.J. Dionne's 1987 piece Biden Admits Errors and Criticizes Latest Report , which includes text about an outburst by Biden on April 3, 1987 in Claremont, NH:

The tape, which was made available by C-SPAN in response to a reporter's request, showed a testy exchange in response to a question about his law school record from a man identified only as "Frank." Mr. Biden looked at his questioner and said: "I think I have a much higher I.Q. than you do."

He then went on to say that he "went to law school on a full academic scholarship - the only one in my class to have a full academic scholarship," Mr. Biden said. He also said that he "ended up in the top half" of his class and won a prize in an international moot court competition. In college, Mr. Biden said in the appearance, he was "the outstanding student in the political science department" and "graduated with three degrees from college."

IPBiz notes that, even if what Biden said were true (i.e., graduated in top half of class at Syracuse Law School and had three (undergrad) degrees from the University of Delaware), such credentials probably should not be used to assert "I think I have a much higher I.Q. than you do." In fact, what Biden said wasn't true. He graduated well-into the bottom half of his class at Syracuse Law (76th in a class of 85). Anybody who has any familiarity with law school knows how grade-conscious law students (and potential employers of law students) are. When Biden later said: "I did not graduate in the top half of my class at law school and my recollection of this was inaccurate", it was an unbelievable understatement. Law students do not have inaccurate memories of their final grade point average, or whether they were in the "top half" or "bottom half" of their class. Biden is a legend in his own mind, and an overachiever trying to compensate for less than stellar credentials.

from Went to a garden party: does Joe Biden hide in your shoes?

From the 1987 Dionne piece in the NY Times:

WASHINGTON, Sept. 21— Senator Joseph R. Biden Jr. issued a formal statement today acknowledging that he had misstated several facts about his past last April in a campaign appearance in New Hampshire.

But the Delaware Democrat insisted today, as he had Sunday night in an interview with The New York Times, that some of the disputed statements were true and that his misstatements were the product of a faulty memory and the fact that he lost his temper.

Mr. Biden, whose Presidential campaign has been shaken by news reports about his unattributed use of speeches from other politicians and a plagiarism incident while he was in law school, said in The Times interview that he was ''frustrated'' and ''angry as hell'' over the reports.


Mr. Biden's campaign staff met this weekend in Wilmington, Del., in an effort to come up with a strategy in face of the building controversy. A senior adviser to the Biden campaign dismissed speculation that he would withdraw from the contest. ''Of course he's going to stay in,'' the adviser said, dismissing the recent reports on Mr. Biden as ''random press frenzy.''

The adviser said the latest troubles might ''free'' Mr. Biden to ''get into being himself'' and to campaign as an aggressive ''populist, anti-Establishment'' candidate and a defender of the interests of the American middle class.


See also post at Yelp:

In this clip from 1988, Joe Biden becomes irate with an interviewer, interrupts him and proceeds to boast about his intelligence and academic achievements. He mentions how he was the only one in his class in law school with a full academic scholarship and boost about his awards and degrees.…

Sunday, January 14, 2018

The CAFC in Exmark v. Briggs & Stratton: "While this argument seems facially logical, it fails nonetheless."

The opinion of Chief Judge Joseph F. Bataillon of D. Nebraska did not fare well at the CAFC, which began its opinion:

Exmark Manufacturing Company filed suit against
Briggs & Stratton Power Products Group, LLC in the
United States District Court for the District of Nebraska,
alleging infringement of, inter alia, claim 1 of U.S. Patent
No. 5,987,863. The district court entered summary judgment
that claim 1 was not invalid because the claim
survived multiple reexaminations involving the same
prior art. The district court also denied summary judgment
of indefiniteness with respect to claim 1.1 The case
proceeded to a jury trial, where the jury found that Briggs
willfully infringed Exmark’s patent. The jury awarded
$24,280,330 in compensatory damages, which the district
court doubled as enhanced damages for Briggs’ willful

Briggs appeals several of the district court’s orders,
including the district court’s: (1) summary judgment that
claim 1 is not anticipated or obvious, (2) denial of summary
judgment that claim 1 is indefinite, (3) denial of a
new trial on damages, (4) evidentiary rulings related to
damages, (5) denial of a new trial on willfulness, and
(6) denial of Briggs’ laches defense.

We conclude the district court erred by basing its
summary judgment of no invalidity solely on the fact that
claim 1 survived multiple reexaminations. Accordingly,
we vacate the district court’s summary judgment of no
invalidity. We remand to the district court for it to make
an independent determination of whether genuine issues
of material fact preclude summary judgment that claim 1
is not anticipated or obvious in view of the prior art. We
also hold that the district court erred in denying a new
trial on damages because Exmark’s damages expert failed
to provide an adequate explanation as to how she arrived
at a 5% royalty rate for the patented feature relative to
other conventional features of the accused products. We
also conclude that the district court abused its discretion
by limiting the evidence relevant to damages to prior art
that had been commercialized. Likewise, we conclude
that the district court abused its discretion by excluding
from the willfulness trial evidence relating to patent
validity based on its determination that Briggs’ invalidity
defenses were objectively unreasonable. The district
court’s evidentiary ruling does not comport with the
Supreme Court’s recent decision in Halo Electronics, Inc.
v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), mandating
that willfulness is to be determined by the jury regardless
of whether Briggs’ defenses were objectively
reasonable. Accordingly, we vacate the jury’s finding of
willfulness, vacate the jury’s damages award, vacate the
district court’s enhanced damages award, and remand for
proceedings consistent with this precedent. We also
affirm the district court’s denial of summary judgment
that claim 1 is indefinite, and affirm its denial of Briggs’
laches defense.

The lack of an independent analysis by the district court
was found to be problematic:

Briggs argues that the district court erred by granting
summary judgment that claim 1 is not invalid as anticipated
or obvious based solely on the fact that claim 1
survived multiple reexaminations involving the same
prior art. We agree.
The district court’s summary judgment decision was
limited to a single paragraph containing a single basis.


Though the district court stated that
it gave the reexaminations “some, though not determinative,
weight,” id. (emphasis added), it appears from its
cursory decision that, in fact, the court granted summary
judgment based on the claim surviving multiple reexaminations.
No other explanation for granting summary
judgment was provided. The question thus presented is
whether a reexamination confirming patentability of a
claim can form the sole basis for granting summary
judgment that a claim is not invalid based on the same
prior art.
We hold that a reexamination confirming patentability
of a patent claim alone is not determinative of whether
a genuine issue of fact precludes summary judgment of no
invalidity. Surviving a reexamination does not warrant
ipso facto summary judgment that a patent is not invalid.
Holding otherwise would improperly give complete deference
and preclusive effect to the PTO’s patentability
determination, foreclosing challenges to patent validity in
district court based on the same prior art.

The CAFC went on to say:

Our holding is supported by our prior decisions stating
that a district court “is never bound by an examiner’s
finding in an ex parte patent application proceeding.”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir.
2007) (citing Fromson v. Advance Offset Plate, Inc.,
755 F.2d 1549, 1555 (Fed. Cir. 1985)). We have said the
same regarding an examiner’s findings during reissue
proceedings. See Fromson, 755 F.2d at 1555 (“The Examiner’s
decision, on an original or reissue application, is
never binding on a court.”); Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1139 (Fed. Cir. 1985) (“IPC’s view is
incorrect that the PTO’s [reissue] decision must be given
controlling weight . . . .”). While the PTO’s findings
during reexamination are “evidence the court must consider
in determining whether the party asserting invalidity
has met its statutory burden by clear and convincing
evidence,” they are not dispositive. Fromson, 755 F.2d at
Instead, the “deference [owed] to the decisions of the
USPTO takes the form of the presumption of validity
under 35 U.S.C. § 282. That is, by statute a patent is
valid upon issuance and included within the presumption
of validity is a presumption of non-obviousness.” Pfizer,
480 F.3d at 1359 (emphases added) (citations omitted).
This presumption also follows a patent claim surviving
reexamination. See Superior Fireplace Co. v. Majestic
Prods. Co., 270 F.3d 1358, 1367 (Fed. Cir. 2001) (“Challenges
to the validity of claims, whether regularly issued,
issued after a reexamination . . . or issued after a reissue
. . . must meet the clear and convincing standard of
persuasion. This requirement is based on the presumption
of validity.” (emphasis added) (citations omitted)).
The presumption of validity, however, is just that—a
presumption—which can be overcome by the patent
challenger who meets its high burden of proving the
factual elements of invalidity by clear and convincing
evidence. Id. We recognize the district court must consider
reexaminations as evidence “in determining whether
the party asserting invalidity has met its statutory burden
by clear and convincing evidence.” Pfizer, 480 F.3d at
1360 (quoting Fromson, 755 F.2d at 1555). But just as an
original examination resulting in patent issuance does not
foreclose an invalidity attack in district court, so too does
a reexamination confirming a claim not preclude a patent
challenger from meeting its burden of proving invalidity.
We thus “affirm the obligation of the district court to
reach an independent conclusion.” Interconnect, 774 F.2d
at 1139.

The same could be said of a district court's obligation
of de novo review of a magistrate's conclusions of law.

**Of interest:

Finally, Exmark asserts that Briggs’ strategic decision
to challenge validity through reexamination at the
PTO gave Briggs advantages that it would not get in
district court, including a lack of a presumption of validity
and the ability to rely on the broadest reasonable interpretation.
Therefore, Exmark argues, Briggs cannot
ignore the result of reexamination having chosen its
forum and lost. Exmark seems to suggest that because
Briggs was unable to invalidate the claims under a lower
standard of patentability and a broader claim construction
standard, Briggs cannot establish invalidity by clear
and convincing evidence. While this argument seems
facially logical, it fails nonetheless.

It is important to consider the substantive and procedural
differences between challenging patentability in an
ex parte reexamination and challenging patent validity in
federal court. Notably, unlike challenging validity in
district court, in an ex parte reexamination, the claims
are construed under the broadest reasonable interpretation,
the patent challenger does not participate beyond its
initial request for reexamination, the admission of evidence
is not governed by the Federal Rules, and the
burden of proving unpatentability is merely a preponderance
of evidence. Such differences, however, are material
in district court litigation. For example, the scope of the
construed claims, particularly to the extent there are
differences between the PTO’s and district court’s construction,
must be considered in determining whether a
genuine issue of material fact exists as to whether a prior
art reference anticipates or renders a claim obvious.
In this case, the district court adopted the parties’
agreed-to construction of “first flow control baffle” as “a
front structure within the walls of the mower deck that
controls the flow of air and grass clippings.” Exmark Mfg.
Co. v. Briggs & Stratton Power Prods. Grp., LLC, No.
8:10CV187, 2011 WL 5976264, at *4 (D. Neb. Nov. 29,
2011); see also J.A. 1558 at 105:14–18. On appeal of the
reexamination before the Board, in which Briggs did not
participate, Exmark and the examiner disagreed about
the proper interpretation of “baffle” and “flow control
baffle.” Exmark argued that “the entire first flow control
baffle must be a baffle, and thus, the individual baffle
portions must also be baffles,” and that “a ‘baffle’ needs to
control the flow of air and grass clippings.” J.A. 3708.
The Board agreed with Exmark and construed “baffle”
and “flow control baffle” as “an element that ‘controls’ the
flow of air and grass clippings within the mower deck in a
‘meaningful way.’” J.A. 3707.

***Of previously reviewed prior art, note a previous
post on IPBiz, including text:

Beecham's '639 patent on nabumetone (RELAFEN) was found invalid
over prior art that had been examined by the PTO.

There were separate issues of unenforceability (inequitable conduct).
Curiously, in a parallel application to that leading to the '639 patent,
Beecham told the PTO that the prior art did not even disclose the compound nabumetone.

I had written in Intellectual Property Today in July 2001 ("A Tale of Conflicting Models - The Coming Skirmish on the IP Frontier"): (...)

GlaxoSmithKline settles RELAFEN case

See also

Values learned from Gettysburg

Back in October 2017, there was some flutter about a Twitter posting by James Comey, which included a photograph from
Gettysburg National Military Park.
See James Comey might be pondering 'leadership and values' at Gettysburg .

A bit of detective work had preceded this. See This Is Almost Certainly James Comey’s Twitter Account by
Ashley Feinberg.

LBE includes here a photo at Little Round Top at Gettysburg taken in January 2018 showing a soaring hawk against a cloud framed by the statue of Brigadier General Gouverneur Kemble Warren.

Warren was a significant hero at Gettysburg, for recognizing the significance of Little Round Top. HOWEVER, after Five Forks, Warren was removed from command of V Corps, and spent the rest of his life trying to clear his name.

As to the hawk, cross-reference to the opening and closing scenes of the movie "Bridge on the River Kwai."

Photo by LBE:

Thursday, January 11, 2018

Darrell Issa of California's 49th congressional district not running for re-election

Although known in IP circles for his patent positions, Issa was involved in the recall of then Governor Gray Davis; from wikipedia:

Issa came to national prominence in 2003 when he contributed more than $1.6 million to help fund a signature-gathering drive for the petition to recall California Governor Gray Davis. At the time he made the contribution, it was widely believed that Issa intended to place himself on the ballot to replace Davis. However, following the entrance of fellow Republican Arnold Schwarzenegger into the race, two days before the filing deadline, Issa announced that he would not run.

And, about one year ago in January 2017:

President-elect Donald Trump has decided to keep former Google executive Michelle Lee on as director of the U.S. Patent and Trademark office, according to Rep. Darrell Issa, who informed tech industry organizations gathered in Washington Thursday for a breakfast event.

Issa's comments were confirmed by two sources in attendance and a congressional aide.


From USInventor:

US Inventor’s Paul Morinville, along with other passionate inventors, took to the streets this weekend to protest Congressman Darrell Issa and his views on Intellectual Property policy.

Paul writes: “Issa bullied through the America Invents Act to ingratiate his friends and contributors at the CTA. While Issa is weakening our patent system, China, Europe and other countries are strengthening theirs. It is today better to patent in China than it is to patent here. If Issa is allowed to continue, we will not only be buying goods manufactured in China, but they will be invented there as well.”

Wednesday, January 10, 2018

Mixed result in Finjan case

The outcome:

A jury found Blue Coat Systems, Inc. (“Blue Coat”) liable
for infringement of four patents owned by Finjan,
Inc. (“Finjan”) and awarded approximately $39.5 million
in reasonable royalty damages. After trial, the district
court concluded that the ’844 patent was patent-eligible
under 35 U.S.C. § 101 and denied Blue Coat’s post-trial
motions for judgment as a matter of law (“JMOL”) and a
new trial. Blue Coat appeals.

We find no error in the district court’s subject matter
eligibility determination as to the ’844 patent and agree
that substantial evidence supports the jury’s finding of
infringement of the ’844 and ’731 patents. However, we
conclude that Blue Coat was entitled to JMOL of noninfringement
for the ’968 patent because the accused
products do not perform the claimed “policy index” limitation.
On appeal, Blue Coat does not challenge the verdict
of infringement for the ’633 patent.

With respect to damages, we affirm the award with
respect to the ’731 and ’633 patents. We vacate the damages
award for the ’968 patent, as there was no infringement.
With respect to the ’844 patent, we agree with Blue
Coat that Finjan failed to apportion damages to the
infringing functionality and that the $8-per-user royalty
rate was unsupported by substantial evidence.

We therefore affirm-in-part, reverse-in-part, and remand
to the district court for further consideration of the
damages issue as to the ’844 patent.

Blue Coat, represented by Mark Lemley, prevailed on the
'968 patent matter.

From the decision:

Blue Coat also argues that it was entitled to JMOL of
non-infringement with respect to the ’968 patent because
Finjan failed to introduce substantial evidence that the
accused products implement the claimed “policy index.”
We agree.

The ’968 patent is directed to a “policy-based” cache
manager that can efficiently manage cached content
according to a plurality of security policies. The patentee
agrees that a “policy” is a rule or set of rules that determines
whether a piece of content can be accessed by a
user. Different policies can apply to different users, and
the decision of whether to let a user access content is
made by comparing the content’s security profile with the
policy governing the user’s access. Thus, the policy based
cache manager in the ’968 patent is a data structure that
keeps track of whether content is permitted under various
policies. Claim 1, the sole asserted claim, is reproduced
below, with key language underlined:

1. A policy-based cache manager, comprising:

a memory storing a cache of digital content,
a plurality of policies, and a policy
index to the cache contents, the policy index
including entries that relate cache
content and policies by indicating cache
content that is known to be allowable relative
to a given policy, for each of a plurality
of policies;


the results of which are
saved as entries in the policy index.

The CAFC noted:

As Finjan’s expert
expressly acknowledged, however, Proxy SG does not save
final decisions about whether content can be accessed by
users subject to a given policy. It simply stores the evaluation
of each individual rule that goes into making an
ultimate policy decision. This is not what the claim language
requires. The policy index claimed in the ’968
patent must store the “results” of a content evaluator’s
determination of “whether a given digital content is
allowable relative to a given policy.”

How Blue Coat prevailed at the CAFC is of interest:

At summary judgment, the district court agreed that
this claim language requires the policy index to store final
allowability determinations and noted that “Defendant’s
argument would likely prevail if all policies consist of
multiple rules or conditions.” Finjan, Inc. v. Blue Coat
Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 3630000, at *9
(N.D. Cal. June 2, 2015). The court nevertheless declined
to grant summary judgement because “the ’968 patent
specifically provides that a policy can be just one rule.” Id.
If Proxy SG saved the results of applying each rule that
makes up a one-rule policy, it would be saving final allowability
determinations for a plurality of policies and
thus infringing. The district court therefore gave Finjan
the opportunity to prove at trial that “the Proxy SG policy
cache contains a number of condition evaluations, each of
which is determinative of whether a file is allowable
relative to one of a plurality of single condition policies.”

At trial, Finjan made no such showing. There was no
evidence indicating that the condition determinations
stored by Proxy SG are final allowability decisions for
users governed by single-rule policies. Indeed, Finjan’s
expert acknowledged that Proxy SG never saves final
allowability determinations and must instead re-evaluate
the allowability of content each time it is requested. It is
therefore clear that the jury’s infringement verdict was
not supported by substantial evidence.

Because Finjan failed to present evidence that the accused
product ever stores final allowability determinations,
Blue Coat was entitled to JMOL of noninfringement.

Of damages

Two categories of compensation for infringement are the
patentee’s lost profits and the “reasonable royalty he
would have received through arms-length bargaining.”
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324
(Fed. Cir. 2009).
The only measure of damages at issue in this case is a
reasonable royalty, which “seeks to compensate the patentee
. . . for its lost opportunity to obtain a reasonable
royalty that the infringer would have been willing to pay
if it had been barred from infringing.” AstraZeneca AB v.
Apotex Corp., 782 F.3d 1324, 1334 (Fed. Cir. 2015) (citing
Lucent Techs., 580 F.3d at 1325).

An issue

We agree with Blue Coat that the $8-per-user royalty
rate employed in Finjan’s analysis was unsupported by
substantial evidence. There is no evidence that Finjan
ever actually used or proposed an $8-per-user fee in any
comparable license or negotiation. Rather, the $8-per-user
fee is based on testimony from Finjan’s Vice President of
IP Licensing, Ivan Chaperot, that the current “starting
point” in licensing negotiations is an “8 to 16 percent
royalty rate or something that is consistent with
that . . . like $8 per user fee.” J.A. 40409. Mr. Chaperot
further testified that the 8–16% figure was based on a
2008 verdict obtained by Finjan against Secure Computing.
On this basis, Finjan’s counsel urged the jury to use
an $8-per-user royalty rate for the hypothetical negotiation
because “that’s what Finjan would have asked for at
the time.” J.A. 41654.
While any reasonable royalty analysis “necessarily involves
an element of approximation and uncertainty, a
trier of fact must have some factual basis for a determination
of a reasonable royalty.” Unisplay, S.A. v. Am. Elec.
Sign Co., 69 F.3d 512, 517 (Fed. Cir. 1995). Mr. Chaperot’s
testimony that an $8-per-user fee is “consistent with”
the 8–16% royalty rate established in Secure Computing
is insufficient. There is no evidence to support Mr. Chaperot’s
conclusory statement that an 8–16% royalty rate
would correspond to an $8-per-user fee, and Finjan fails to
adequately tie the facts of Secure Computing to the facts
in this case.
See LaserDynamics, 694 F.3d at 79
(“[A]lleging a loose or vague comparability between different
technologies or licenses does not suffice.”).
Secure Computing did not involve the ’844 patent, and
there is no evidence showing that the patents that were at
issue are economically or technologically comparable.