Thursday, February 11, 2016

CAFC tackles IPR amendments in Nike v. Adidas

The outcome:

This appeal arises from the inter partes review (IPR) of U.S. Patent No. 7,347,011 (the ’011 patent) owned by Nike, Inc. (Nike). The United States Patent and Trademark Office, Patent Trial and Appeal Board (Board) granted the IPR petition filed by adidas AG (Adidas) and instituted inter partes review of claims 1–46 of the ’011 patent. Nike then filed a motion to amend in which it requested cancellation of claims 1–46 and proposed substitute claims 47–50. The Board granted Nike’s motion to cancel claims 1–46, but denied the motion as to the substitute claims because Nike failed to meet its burden of establishing patentability of substitute claims 47–50. Nike now appeals the Board’s denial of its motion to amend, and the Director of the United States Patent and Trademark Office (Director) intervened to defend the Board’s decision. For the reasons stated below, we affirmin-part, vacate-in-part, and remand for further proceedings consistent with this opinion.

An issue here is amendments during an IPR:

Particularly relevant to this case is § 316(a)(9), in which Congress delegated authority to the PTO to prescribe regulations “setting forth standards and procedures for allowing the patent owner to move to amend the patent under [§ 316](d) to cancel a challenged claim or propose a reasonable number of substitute claims.” Id. § 316(a)(9); see also id. § 316(d)(1) (“During an inter partes review . . . , the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.”). Consistent with § 316(a)(9), the PTO promulgated a regulation relating to motions practice, 37 C.F.R. § 42.20, which explains that “[r]elief, other than a petition requesting the institution of a trial, must be requested in the form of a motion” and that “[t]he moving party has the burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(a), (c). The Board addressed these regulations in its Idle Free “informative” decision in which it interpreted section 42.20(c) and explained that “[t]he burden is not on the petitioner to show unpatentability [of new, substitute claims], but on the patent owner to show patentable distinction over the prior art.” Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, 2013 WL 5947697, at *4 (PTAB June 11, 2013);

But the CAFC was not swayed from its previous course:

For these reasons, Nike’s attempt to undo our conclusion in Proxyconn—that the PTO may impose the burden of establishing the patentability of proposed substitute claims on the patent owner—is not persuasive. (...)

Our precedent recognizes that § 316(a)(9) instructed the PTO to promulgate a regulation setting forth the standard for motions to amend a patent that might be filed as part of an IPR proceeding. The PTO did just that in 37 C.F.R. § 42.20(c) and, as we held in Proxyconn, the Board permissibly interpreted this regulation as imposing the burden of proving patentability of a proposed substitute claim on the movant: the patent owner. Section 316(e), on the other hand, speaks to a different context. Section 316(e) places the burden on the petitioner to prove unpatentability of any issued claim for which the Board has instituted review and requires that the petitioner carry this burden by a preponderance of the evidence. Thus, the Board did not err by placing the burden on Nike to establish patentability over the prior art of Nike’s proposed substitute claims.

Yes, KSR is cited in the obviousness analysis:

In KSR, the Supreme Court instructed that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” 550 U.S. at 420

Footnote 2 shows that Nike is getting a remand relating to secondary considerations:

we must remand for reconsideration of obviousness in light of Nike’s evidence of secondary considerations. As such, it may be appropriate for the Board to consider the passage of time in connection with Nike’s secondary considerations evidence on remand.

In re Kao is cited: In fact, we have expressly stated that “when secondary considerations are present . . . it is error not to consider them.” In re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011)


our precedent dictates that the Board is bound to fully consider properly presented evidence on the long-felt need for a claimed invention. Recognizing that the Board operates under stringent time constraints, we do not hold that it is obliged to explicitly address conclusory and unsupported arguments raised by a litigant. Cf. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1296 (Fed. Cir. 2009) (holding that a party cannot preserve an argument if it presents “only a skeletal or undeveloped argument to the trial court”). Under the particular circumstances presented here, however, we conclude that the Board should have explicitly acknowledged and evaluated Nike’s secondary considerations evidence.

As to claim grouping:

We agree with Nike that, despite correctly reciting the Idle Free standard that multiple substitute claims are permissible if they are patentably distinct from each other, the Board nevertheless did not engage in any such analysis comparing proposed substitute claims 48 and 49. Thus, the Board’s decision to group substitute claims 48 and 49 together, meaning that claim 49 would stand and fall with claim 48, is not consistent with the rule set out by the Board in Idle Free. The Board has not provided a supported basis for grouping the two claims together in this manner. We must therefore remand for a proper determination of how these claims should be treated per the standard set forth in Idle Free, and, if necessary, a full consideration of the patentability of each.

An IPBiz favorite, Nelson v. Adams, is cited:

Adidas seems to imply that Nike insufficiently preserved the argument by raising it only in its motion to amend and not in its reply brief. An issue is preserved for appeal, however, so long as it can be said that the tribunal was “‘fairly put on notice as to the substance of the issue.’” Consolidation Coal Co. v. United States, 351 F.3d 1374, 1378 (Fed. Cir. 2003) (quoting Nelson v. Adams USA, Inc., 529 U.S. 460, 469 (2000)). Nike raised this argument in its motion to amend and supported the argument with its expert declaration. This was sufficient to put the Board on notice that Nike was asserting the “apertures formed by omitting stitches . . . and . . . for receiving laces” limitation as a patentable distinction. We therefore cannot agree with Adidas that Nike has waived its arguments relating to the patentability of claim 49.

Of negative claim limitations:

Even if we assume, as the Board did, that this claim limitation is a negative limitation, Adidas is incorrect that any sort of heightened standard applies. “Negative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Id. at 1351. We recently explained in Inphi that, contrary to Adidas’s argument, Santarus did not create a heightened standard for written description support of negative limitations. Inphi, 805 F.3d at 1356. We further explained that “[w]hen viewed in its proper context, Santarus simply reflects the fact that the specification need only satisfy the requirements of § 112, paragraph 1 as described in this court’s existing jurisprudence.” Id. (citing MPEP § 2173.05(i) (“If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”)). Thus, we need only consider whether the disclosures of the ’011 patent, using the customary standard for the written description requirement, allow persons of ordinary skill in the art to recognize that the inventor invented a flat-knit textile with flat-knit edges that are knit to shape rather than being cut from a larger textile web.


After the Board’s decision in this case, the Board issued MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, 2015 WL 4383224 (PTAB July 15, 2015), which has been designated by the PTO as a Representative Decision on Motions to Amend. See Standard Operating Procedure 2, at 3 (¶ IV.A–B) (explaining that Board decisions labeled “representative” are “not binding authority,” but provide “a representative sample of outcomes on a matter”). In MasterImage 3D, the Board “ma[d]e three points of clarification regarding” Idle Free’s requirement that the patent owner show that its proposed substitute claims are patentable over the prior art of record and also other prior art known to the patent owner. Importantly, the Board explained that “[t]he reference to ‘prior art known to the patent owner’ . . . in Idle Free, should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of the Motion to Amend.” MasterImage 3D, Slip. Op. at 3. At oral argument in the present case, the PTO confirmed this characterization of MasterImage 3D. See Oral Argument at 29:13–29:22 available at (“[MasterImage] is not a change of Idle Free, it’s more of a clarification of Idle Free.”). The PTO further explained that, although the Board’s denial of Nike’s motion to amend was based on a reasonable reading of Idle Free, given the clarification in MasterImage 3D, the PTO acknowledged that the Board “read Idle Free too aggressively in this decision.” Id. at 29:23–30:01. We agree with the PTO. At the heart of Idle Free, as interpreted by MasterImage 3D, is the question of whether the patent owner has submitted the necessary information to comply with its duty of candor to the office. In this case, there is not, and there has never been, an allegation that Nike violated its duty of candor. Moreover, the PTO acknowledged that Nike’s statement about the substitute claims’ patentability over prior art not of record but known to Nike would satisfy the obligation as explained in MasterImage 3D. Id. at 35:50–36:06. After MasterImage’s explanation of Idle Free, we cannot see how the statement used by Nike would be inadequate, absent an allegation of conduct violating the duty of candor. We therefore conclude that this was an improper ground on which to deny Nike’s motion to amend.

Should Bank of America be giving lectures to USPTO employees?

IPBiz got a chuckle from the Bloomberg post titled --Wall Street Is Trying to Beat Silicon Valley at Its Own Game--, which included the text

In January dozens of government patent examiners gathered in a suburban Washington lecture hall to listen to Bank of America employees go through a slideshow. Hundreds more tuned in for a webcast.


--Recall Bank of America's published patent application 20080103804 (11/923186, filed 24 Oct. 2007), titled COUNTRY ASSESSMENT, which was discussed in IPBiz in 2008
[ ]

which mentioned the now famous amendments:
The words "a Spanish speaking country" became --a country that speaks Language S.--
The words "Mexico and Spain" became --Country M and Country S (that predominantly speak Language S)--

Remember also the text: One recalls the absolute clumsiness manifested by Bank of America in a similar application, 20080103804 .


Separately, from Blawgsearch on 11 February 2016:

Wednesday, February 10, 2016

3M loses in Transweb appeal at CAFC

In Transweb v. 3M, Seth Waxman argued for the appellant 3M, but the CAFC affirmed the judgment of Judge Faith
S. Hochberg of DNJ.

The beginning of the opinion shows the extent of 3M's loss:

3M sued TransWeb for infringement of several patents.
TransWeb sued for declaratory judgment of invalidity
and non-infringement of the patents. A jury found
the patents to be invalid based on TransWeb’s prior public
use of the patented method. In accordance with an advisory
verdict from the jury, the district court found the
patents unenforceable due to inequitable conduct. The
jury also found 3M to be liable for a Walker Process antitrust
violation and that attorney fees were an appropriate
antitrust remedy. The district court awarded approximately
$26 million to TransWeb, including trebled attorney
fees as antitrust damages. The primary issues are
whether sufficient corroborating evidence exists to support
the finding of prior public use by TransWeb, and
whether the attorney fees are an appropriate basis for
damages under the antitrust laws in this context. We
hold in the affirmative on both issues. For the latter
issue, we find that TransWeb’s attorney fees appropriately
flow from the unlawful aspect of 3M’s antitrust violation
and thus are an antitrust injury that can properly
serve as the basis for antitrust damages. For these reasons,
we affirm the district court’s judgment.

The decision outlines the technology:

TransWeb and 3M independently developed a technique
for imparting this electret characteristic by using
plasma fluorination. Fluorination involves introducing
fluorine atoms into the chemical structure of the filter
web. Previously known techniques involved mixing
fluorine compounds into the melted filter material, but
this proved disadvantageous. Instead, TransWeb and 3M
both discovered that it would be advantageous to first
form the fibrous web and then introduce the fluorine
atoms into the chemical structure. This technique involves
exposing a gaseous fluorine compound to the
surface of the filter web in the presence of plasma. The
intense heat and electromagnetic energy introduced by
the plasma cause some of the chemical bonds on the
surface of the filter web to break, and the fluorine atoms
fill in those bonds to form fluorine compounds on the
surface of the filter web.
Plasma-fluorinated filter media are particularly effective
in oily environments, where other types of filter
media might perform poorly or quickly degrade.

As background, wikipedia discusses what a "plasma" is:

A plasma can be created by heating a gas or subjecting it to a strong electromagnetic field applied with a laser or microwave generator. This decreases or increases the number of electrons, creating positive or negative charged particles called ions, and is accompanied by the dissociation of molecular bonds, if present.
The presence of a significant number of charge carriers makes plasma electrically conductive so that it responds strongly to electromagnetic fields.

A significant issue in this case:

The present appeal focuses largely on the events surrounding
a filtration industry exposition that occurred in
late April and early May of 1997. It is uncontested that
TransWeb’s founder, Kumar Ogale, attended the expo and
handed out samples of filter material. The filter material
included samples of TransWeb’s “T-Melt” products, an
identifier for the general class of melt-blown, i.e., nonwoven
fibrous web, media. The primary dispute is whether
Mr. Ogale handed out, more specifically, samples of the
“T-Melt P” products, which is the specific class of plasmafluorinated
T-Melt products. Mr. Ogale testified at trial
that he did in fact hand out T-Melt P samples at the expo,
though no independent documents or testimony evidence
this fact.
The parties do not contest that if Mr. Ogale
handed out T-Melt P samples at the expo, then they
would serve as prior art to the plasma fluorination technique
of the claimed methods. The expo occurred more
than one year prior to the priority date of the patents
asserted in this case, so any public disclosure of plasma
fluorination at the expo would be a statutory bar to patentability,
at least based on that feature

The actions at DNJ:

The district court in New Jersey ultimately presented
the following issues to a jury: infringement of claims 31
and 57 of the ’458 patent; invalidity for obviousness of
claims 31 and 57; unenforceability of the ’458 and ’551
patents due to inequitable conduct; Walker Process antitrust
violation based on fraudulent procurement and
subsequent assertion of the ’458 and ’551 patents; sham
litigation antitrust violation based on assertion of the ’458
and ’551 patents; entitlement to lost profits damages for
antitrust violations; and entitlement to attorney fees as
damages for antitrust violations. The jury delivered the
following verdicts: claims 31 and 57 are not infringed;
claims 31 and 57 are invalid; both patents are unenforceable;
3M committed a Walker Process violation but not a
sham litigation violation; and TransWeb is entitled to lost
profits and attorney fees as antitrust damages.
The district court entered judgment in accordance
with the jury verdicts. 3M moved for judgment as a
matter of law, which the district court denied.

The CAFC laid out some of the pertinent law:

Oral testimony by an interested party on its own will
generally not suffice as “clear and convincing” evidence of
invalidity. See Lazare Kaplan Int’l v. Photoscribe Techs.,
628 F.3d 1359, 1374 (Fed. Cir. 2010); Price v. Symsek, 988
F.2d 1187, 1194 (Fed. Cir. 1993). Rather, such oral testimony
must be corroborated by some other evidence. See
Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368,
1371 (Fed. Cir. 1998). The corroborating evidence can
include documents and testimonial evidence. See Lazare
Kaplan, 628 F.3d at 1374–75, Adenta GmbH v. OrthoArm,
Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007), Sandt Tech. v.
Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
(Fed. Cir. 2001). Circumstantial evidence can be sufficient.
See Sandt, 264 F.3d at 1351; Knorr v. Pearson, 671
F.2d 1368, 1373 (C.C.P.A. 1982). This corroboration
requirement for testimony by an interested party is based
on the sometimes unreliable nature of oral testimony, due
to the “forgetfulness of witnesses, their liability to mistakes,
their proneness to recollect things as the party
calling them would have them recollect, aside from the
temptation to actual perjury.” Lazare Kaplan, 628 F.3d at
1374 (quoting Washburn & Moen Mfg. Co. v. Beat ‘Em All
Barbed-Wire Co., 143 U.S. 275, 284 (1892)).


A “rule of reason” analysis is used to determine the
sufficiency of corroboration, under which “all pertinent
evidence is examined in order to determine whether the
inventor’s story is credible.” Sandt, 264 F.3d at 1350
(quoting Price, 988 F.2d at 1195) (internal quotation
marks omitted). Importantly, this analysis “does not
require that every detail of the testimony be independently
and conclusively supported” by the corroborating evidence.
Ohio Willow Wood Co. v. Alps South, 735 F.3d
1333, 1348 (Fed. Cir. 2013). Such a requirement would
indeed be “the antithesis of the rule of reason.” Cooper v.
Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998). We have
generally been most skeptical of oral testimony that is
supported only by testimonial evidence of other interested
persons. Compare Allergan, Inc. v. Apotex Inc., 754 F.3d
952, 968 (Fed. Cir. 2014), and Lacks Indus. v. McKechnie
Vehicle Components USA, 322 F.3d 1335, 1350 (Fed. Cir.
2003), with Adenta, 501 F.3d at 1371–73, and Sandt, 264
F.3d at 1351–52. We have repeatedly noted that contemporaneous
documentary evidence provides greater corroborative
value. See Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1169–70 (Fed. Cir. 2006); Sandt, 264 F.3d at
1350–51; Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d
1354, 1366 (Fed. Cir. 1999); Woodland Tr., 148 F.3d at
1373; Price, 988 F.2d at 1196. But there are no hard and
fast rules as to what constitutes sufficient corroboration,
and each case must be decided on its own facts. See
Sandt, 264 F.3d at 1350

The CAFC described 3M's argument as follows:

3M’s legal argument attempts to lead us to a legal
conclusion that this court has repeatedly rejected. 3M
asks us to focus on one particular detail of the oral testimony
and determine whether that detail is independently
evidenced. But we have repeatedly rejected an elementwise
attack on corroboration of oral testimony. See Fleming,
774 F.3d at 1377; Ohio Willow Wood, 735 F.3d at
1348 (characterizing as “misplaced” an argument that a
particular claim feature in oral testimony was not separately
evidenced, and finding the argument incompatible
with the rule of reason); Lazare Kaplan, 628 F.3d at
1373–75; Adenta, 501 F.3d at 1371–73.

Other evidence:

TransWeb’s own patent application, filed at the
same time as the expo, demonstrates that Mr. Ogale had
invented and was seeking patent protection for the plasma-fluorinated
material at least by the time of the expo.
The correspondence with Filtration Group demonstrates
that Mr. Ogale was sending out samples of the plasmafluorinated
T-Melt product shortly after the expo. The
numerous correspondences contemporaneous with the
Filtration Group correspondence, each accompanying
samples of filter material not specifically identified as TMelt,
show that Mr. Ogale was sending out other samples
of filter material that may have been plasma-fluorinated.
The correspondence with Gerson demonstrates that
TransWeb was offering for sale large quantities of the
plasma-fluorinated product within two months of the
expo. Considered in its totality, this body of evidence
provides abundant support for the credibility of
Mr. Ogale’s claim that he distributed the plasmafluorinated
material at the expo. As such, we find no
clear error in the district court’s determination that
Mr. Ogale’s testimony was sufficiently corroborated.

Of interest:

3M further contends that unexpected results and
commercial success demonstrate the non-obviousness of
the claims. For commercial success, 3M relies on a single,
confused exchange between its attorney and TransWeb’s
expert witness at trial, wherein the witness says that he
does not know about the commercial success of 3M’s
products, though maybe he said he did in the past. J.A.
2105–06. Similarly with unexpected results, 3M relies on
a single, self-serving annotation in the ’458 patent inventor’s
notebook and a corresponding statement at trial.
The jury heard and rejected this evidence in concluding
that the claims were obvious. None of these arguments
as to objective indicia demonstrate that the jury was
unreasonable in finding the claims obvious, so we will not
disturb that verdict

As to inequitable conduct under the "but - for" standard:

The expo samples present a definitional case of but for
materiality. During prosecution of the ’497 application,
the examiner initially allowed all claims. When 3M
notified the examiner of one of the TransWeb samples
that it had on hand, the examiner rejected all claims as
obvious over that disclosure and the Angadjivand patent.
Only when 3M clarified its dubious assertion that the
TransWeb samples were only received after signing of a
confidentiality agreement and thus were not prior art did
the examiner allow the claims. Because the examiner
would not have allowed the claims had the TransWeb
samples been properly disclosed as prior art, the
TransWeb samples are but-for material.

The CAFC went into detail on the inequitable conduct:

The district court concluded based on a detailed review
of the record that Marvin Jones, an inventor for the
asserted patents, and Karl Hanson, an in-house attorney
at 3M, both acted with specific intent to deceive the
patent office as to the TransWeb materials. The jury
unanimously reached the same conclusion. While it is not
necessary for us to recount the entire treatment of the
factual record performed so thoroughly by the district
court, see TransWeb, LLC v. 3M Innovative Properties Co.,
16 F. Supp. 3d 385, 398–407 (D.N.J. 2014), we note a few
particular details that demonstrate that the district court
did not clearly err in finding a specific intent to deceive on
the part of Mr. Jones and Mr. Hanson.
The record makes abundantly clear that 3M generally
and Mr. Jones particularly were very much aware of the
samples TransWeb was distributing at the expo. A week
prior to the expo, a group of six 3M employees was party
to a lengthy email coordinating 3M’s efforts to gather
information from TransWeb at the expo. The email
identified two employees as the “point people” in gathering
information from TransWeb. J.A. 6860. The other
parties to the email and their subordinates were to channel
any questions through the point people. One of the
point people had already met with TransWeb and received
“quite a bit of information and non-production
samples.” Id. The email also included an article from
Nonwovens Industry briefly mentioning TransWeb’s TMelt
products. One of the parties to the email was
Mr. Jones’s supervisor, and she forwarded the email to
Mr. Jones on the day that the expo began. Mr. Jones
attended the expo. While he professed at trial to have no
recollection of visiting the TransWeb booth, the district
court found his testimony “simply not credible” and noted
that “his demeanor was one of a witness trying to distance
himself from any knowledge of TransWeb’s presence and
activities at the Expo.” TransWeb, 16 F. Supp. 3d at 399.
Mr. Jones’s supervisor again sent him an email within a
month after the expo detailing the information and samples
received from TransWeb by the point people. This
email noted that TransWeb’s production operations were
up and running, that it was sending samples to potential
clients, that 3M already had a small sample, and that 3M
was expecting a larger sample soon thereafter.


The district court found that Mr. Hanson undertook
an intentional scheme to paper over the potentially prior
art nature of the Racal-received samples. The Racal
employees received the plasma-fluorinated samples from
TransWeb at latest one month after the expo. Therefore,
these samples were highly relevant to what TransWeb
distributed at the expo. The record casts great doubt on
whether Racal had received the samples before or after
execution of a confidentiality agreement, thereby potentially
rendering them public disclosures and prior art to
the ’497 application. At around the same time that 3M
was requesting further samples from TransWeb and
learning of the potential prior art nature of the Racal
samples, Mr. Hanson sent a confusing letter to Mr. Ogale
purporting to clarify some issues as to the confidentially
agreements between TransWeb and 3M and between
TransWeb and Racal. Mr. Hanson had never had any
communication with TransWeb, and the district court
concluded that the only possible purpose for the letter was
to get an admission from Mr. Ogale that the Racalreceived
samples were covered by a confidentiality
agreement, even though this point was itself dubious.
Mr. Hanson subsequently did submit this letter to the
patent office as definitive proof that the TransWeb samples
were not prior art to the ’497 application.
The district court noted other circumstantial evidence
suggesting a specific intent by 3M employees to hide the
prior art nature of the TransWeb products. The district
court noted that only after Mr. Hanson met with the
Racal employee did that employee type meeting notes
from his original meeting with Mr. Ogale after the expo.
Those typed notes contained additional information
regarding patents that had not been in the original handwritten
notes. The district court noted that Mr. Hanson
waited several years between learning of the potential
TransWeb prior art and informing the patent office. In
fact, Mr. Hanson did not disclose the TransWeb material
to the patent office until after negotiations for 3M to
purchase TransWeb had broken down. Further,
Mr. Hanson waited until the last possible moment, when
a notice of allowance had already been mailed, to submit
the TransWeb material in a request for continued prosecution.
The district court found Mr. Hanson’s testimony
at trial attempting to explain this delay wholly incredible.
Based on these factual findings, the district court concluded
that the only reasonable inference that explains
the actions of Mr. Hanson and Mr. Jones is that they
strategically delayed in disclosing the TransWeb prior art
and then intentionally made an inaccurate disclosure of
that material. We can find no clear error in this conclusion,
particularly as the district court’s findings are based
in large degree on its determinations that Mr. Jones and
Mr. Hanson were not credible during relevant parts of
their testimony. See In re Rosuvastatin Calcium Patent
Litig., 703 F.3d 511, 521 (Fed. Cir. 2012) (“‘This court may
not reassess, and indeed is incapable of reassessing,
witness credibility and motive issues on review.’” (quoting
LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 274
F.3d 1347, 1361 (Fed. Cir. 2001)).

The case also involved antitrust violations:

The jury found that 3M committed a Walker Process
antitrust violation, and awarded TransWeb damages of
lost profits and attorney fees. The district court denied
3M’s motion for JMOL. 3M contests this judgment based
on several purported flaws in market definitions for the
antitrust claim and based on the theory that TransWeb’s
attorney fees are not appropriate antitrust damages for
the Walker Process violation.

Of the attorney fees matter:

No assertion of a patent known to be fraudulentlyobtained
can be a proper use of legal process. No successful
outcome of that litigation, regardless of how much the
patentee subjectively desires it, would save that suit from
being improper due to its tainted origin. Therefore, we
find the holdings of our sister circuits allowing attorney
fees as antitrust damages in contexts such as sham litigation
and lawsuits in furtherance of a broader anticompetitive
scheme to be persuasive arguments in favor of
allowing TransWeb to recover its attorney fees as § 4
damages in this case.

To conclude otherwise would be contrary to the purpose
of the antitrust laws. The antitrust laws exist to
protect competition. See Brown Shoe, 370 U.S. at 320
(1962). If we were to hold that TransWeb can seek antitrust
damages only under option one, forfeiture of competition,
but not option two, defending the anticompetitive
suit, then we would be incentivizing the former over the
latter. This would amount to incentivizing TransWeb to
forfeit competition rather than continue it. This is not in
accord with the purpose of those very same antitrust laws.
Furthermore, it furthers the purpose of the antitrust
laws to encourage TransWeb to bring its antitrust suit
under option two instead of waiting to be excluded from
the market under option one. If TransWeb proceeds only
after being excluded from the market under option one,
then the injury-in-fact will no longer be borne by
TransWeb alone, but rather would be shared by all consumers
in the relevant markets.


CAFC gives a mixed ruling in Convolve/MIT vs. Compaq

In Convolve and MIT vs. Compaq, a case appealed to the CAFC from SDNY, the beginning of the opinion states:

This case returns to us after a remand to the Southern
District of New York. In the first appeal, we reversed
the district court’s summary judgment ruling that no
accused products met the patent’s “selected unwanted
frequencies” limitation and remanded for further proceedings.
On remand, the district court granted summary
judgment on alternative grounds. Because we agree with
the district court that Seagate’s disk drives do not possess
a user interface, but conclude that the district court erred
by importing limitations into the “command” steps and in
granting summary judgment based on intervening rights,
we again affirm-in-part, vacate-in-part, reverse-in-part,
and remand for further proceedings.

As to different courts finding different claim constructions,
note footnote 1:

A jury determination in a parallel proceeding in
the Eastern District of Texas applying a different claim
construction does not compel a different result. Cf. J.A.
5051–52; J.A. 5063–65.

Of error by SDNY:

The district court erred by granting summary judgment
that Compaq’s F10 BIOS interface does not meet
the “commands” limitation of the asserted claim. In its
summary judgment ruling, the district court treated all
asserted claims as having the same scope, and concluded
that the recited “commands” must be “shaped when
issued from the processor in order to satisfy the claim
limitation[s],” J.A. 42, and therefore Compaq’s F10 BIOS
interface cannot infringe because it itself does not issue
shaped commands. Implicit in this ruling is a claim
interpretation that requires a singular processor associated
with the user interface that issues commands, and
excludes the existence of a second processor capable of
issuing those commands, such as one integrated into the
data storage device. This overlooks the differences among
the asserted claims.

Of the use of indefinite articles in claims:

Claims 9 and 15 pose a greater challenge, however,
because they recite an apparatus comprising “a processor”
that executes certain process steps “to generate a user
interface,” “to alter settings in the user interface,” and “to
output commands to the data storage device.” See, e.g.,
’473C1 patent col 2 ll. 7–22 (reexamined claim 9). This
court has “repeatedly emphasized that an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). The
exceptions to this rule are “extremely limited: a patentee
must ‘evince [ ] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’”
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1342 (Fed. Cir. 2008). Thus, absent a clear intent in the
claims themselves, the specification, or the prosecution
history, we interpret “a processor” as “one or more processors.”


To the extent the examiner suggested in a later office
action that “the user interface runs on the processor of the
host computer, but not on the processor of the disk drive,”
the applicant objected and argued that the ’473 patent
discloses that “the user interface can run (i) on the processor
of the host computer, (ii) on the processor of the
disk drive, (iii) or both.” J.A. 5046. The examiner subsequently
allowed the claims. Although there is some
evidence that the examiner also understood the claims to
require that all functions occur on a user interface “running
on the processor external to the data storage device,”
J.A. 4218–19, it is not clear from the record that allowance
was based on this understanding, or that the patentee
disclaimed this claim scope. Thus, we conclude that
the district court did not err in granting summary judgment
that Compaq’s F10 BIOS does not meet the “commands”
limitation in claims 1, 3, and 5. But, we find the
district court erred by interpreting the remaining asserted
claims as requiring the processor associated with the
user interface to also generate the claimed commands.

Of claim construction:

The proper claim construction is “the meaning that
the term would have to a person of ordinary skill in the
art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips,
415 F.3d at 1313. The specification “is the single best
guide to the meaning of a disputed term” and is usually
“dispositive.” Id. at 1315 (citation omitted)
. On their
face, the original claims recite only “acoustic noise,” which
could encompass any manner of acoustic noise, including
that generated from the spindle. But when read in conjunction
with the remaining claim limitations and in light
of the specification and prosecution history, a person of
ordinary skill in the art would understand the claims to
be limited to seek acoustic noise.


While the specification, in and of itself, may not require
the “seek acoustic noise” construction
, the prosecution
history of the ’473 patent before the 2008
reexamination demonstrates that acoustic noise is limited
to “seek” acoustic noise. In an office action dated March
26, 2001, the Patent Office rejected several of the claims
as anticipated or obvious in light of two prior art references:
Rowan and Koizumi. The Patent Office determined
that Rowan teaches a mechanism for controlling seek
time and both electrical noise and acoustic noise from the
spindle motor, J.A. 1893, and that Koizumi teaches
“reduc[ing] the spindle speed to achieve the quiet mode,”
J.A. 1896. In response, on April 2, 2001, the patentee
amended the claims “to state explicitly that the noise to
be controlled is acoustic noise as opposed to electrical
noise.” J.A. 1909. In explaining the reasoning for the
amendment, the applicant went further and made clear
that the acoustic noise problems addressed by the claims
and the specification are limited to those generated by the
seek function, not the spindle motor. See J.A. 1910 (explaining
that “as now claimed, it is the acoustic noise level
of the data storage device that is controlled by changing
seek trajectory shape to reduce unwanted frequencies by
shaping input signals to the data storage device”).


To the extent the specification alone does not limit the
claims to seek acoustic noise, these prosecution history
statements show a clear intent to limit the scope of the
claims to seek acoustic noise—i.e., acoustic noise generated
by the movement of the drive’s arm and read/write
head during the seek process. We note further that the
appellees themselves submitted a proposed construction
for the term “acoustic noise level of the data storage
device” that expressly excluded “audible noise emanating
from the spindle motor of the ‘data storage device.’” J.A.

Of the intervening rights analysis

In the intervening rights analysis, our task is to interpret
the scope of the claims per the Phillips standard,
see Laitram IV, 163 F.3d at 1346–47, and under the
correct standard, the specification “is the single best guide
to the meaning of the disputed term,” and is usually
dispositive, Phillips, 415 F.3d at 1313. “In addition to
consulting the specification, we have held that a court
should also consider the patent’s prosecution history, if it
is in evidence.” Id. at 1317 (citations and internal quotation
marks omitted). Thus, the examiner’s finding under
the broadest reasonable interpretation that the claims are
not limited to “seek acoustic noise” cannot be dispositive.
To the extent that the district court adopted this reasoning
wholesale without accounting for the differences
between the broadest reasonable interpretation standard
and Phillips, the court erred.

In sum, we conclude that the addition of the term
“seek” before “acoustic noise” did not alter the scope of the
claim. In so concluding, we decline to give significant
weight to the patentee’s and the examiner’s use of the
term “clarify” or “clarifying” in describing the amendment
in prosecution. The inquiry must focus on a case-by-case
analysis of the scope of the claims before and after claim
amendment, which gives rise to the intervening rights
challenge. See Laitram I, 952 F.2d at 1360–61 (rejecting
a per se rule and emphasizing that each case is decided on
its facts). Here, the language of the claims, read in light
of the specification and prosecution history, especially the
applicant’s 2001 remarks and amendment, compel a
conclusion that the claims as originally drafted were
limited to seek acoustic noise despite the lack of an express
recitation in the claims.


Tuesday, February 09, 2016

Trade secret case in ED Pa involving scientists at GSK

The GSK technology that was involved:

The biopharmaceutical products being developed by GSK were designed to fight cancer and other serious diseases. One product under development was a monoclonal antibody (“mAB”) designed to link to HER3 receptors on human body cells. In certain forms of cancer, HER3 receptors are “overexpressed,” that is, human body cells contain too many of these receptors. This overexpression contributes to the development of cancer.

The accused:

YU XUE, a/k/a “Joyce,” worked as a research scientist for GSK facility from June 2006 until January 2016. For a portion of that time period, YU XUE was a senior-level manager at GSK with oversight of two to three junior employees.
YU XUE e-mailed GSK trade secret and otherwise confidential information relating to a dozen or more products and numerous GSK processes from her GSK e-mail account to her personal account and then forwarded that trade secret information to TAO LI, YAN MEI, and others.
YU XUE was regarded as one of the top protein biochemists in the world. She has a Ph.D. in Biological Chemistry from the University of North Carolina and an undergraduate degree from Peking University in China. According to her resume, she was the HER3 project co-leader at GSK working on monoclonal antibody design. She previously worked on structure modeling and antibody protein purification. According to her resume, she has successfully humanized and patented at least four separate antibodies. Prior to working at GSK, she worked for six years at the University of North Carolina as a research analyst.

LUCY XI, a/k/a “Lu Xi,” was the wife of YAN MEI. LUCY XI worked as a scientist at GSK from July 14, 2008 until November 3, 2015.

Some of the material in question:

Document 35 was an internal GSK PowerPoint presentation titled “Anti-HER3 mAB” (monoclonal antibody) and identified a specific GSK antibody under development. Document 35 contained both GSK trade secret information and other confidential, but not trade secret, information. Document 35 contained GSK’s strategy for developing an anti-HER3 monoclonal antibody and information on a specific candidate for anti-HER3 for clinical trials. Document 35 outlined the development risks and opportunities of a specific anti-HER3 antibody candidate for GSK. Document 35 opined that this candidate “would provide GSK with [a] package similar to Herceptin/HercepTest that showed great therapeutic value to cancer patients.” It also provided the pre-clinical data in support of the candidate antibody and a thorough explanation of how it worked.

Among other things, federal law was implicated:

violation of Title 18, United States Code, Sections 1832(a)(1), (a)(2), and (a)(3).
All in violation of Title 18, United States Code, Section 1832(a)(5).

Timothy Lee's post in The Hill wrong on the facts

In a post on the Hill on 8 Feb., Timothy Lee wrote of those opposing Goodlatte's Innovation Act: And conspicuously, opponents never seem to cite actual legislative text or verifiable data in support of their cursory allegations.

This simply is not true. As one example, opponents of the Innovation Act have repeatedly attacked the fee-shifting provision.

PLI talked about fee-shifting:

The philosophy behind fee-shifting is that a “loser pays” system will cause a plaintiff to think twice before filing a lawsuit and possibly chill any potential litigation that may be unnecessary. Potentially open-ended liability influences behavior, and that is the specific desire of the fee-shifting provisions. In the United States, however, we historically do not want the fear of seeking redress to influence behavior. While a fee-shifting rule may make those with weak cases think twice, it will also make those with very strong cases think twice, which has not been acceptable from a philosophical standpoint in the U.S.

The ‘loser pays” provisions of the Innovation Act set up more than a possibility of fee-shifting. The Innovation Act sets up a presumption that the loser of a patent infringement litigation would have to pay the attorney’s fees of the winner unless the loser’s positions were objectively reasonable. This is a deviation in the burden of paying for litigation that is extraordinarily rare within the U.S. legal system. The most alarming thing about this fee-shifting provision is that there has been little or no discussion about whether it is a good idea. It was decided entering into this rushed process that fee-shifting was a good idea and the only relevant question for discussion was how it was going to be implemented.


As one example of an opponent, the NVCA explicitly identified fee-shifting as problematic:

The National Venture Capital Association (NVCA) today issued the following statement concerning H.R. 9, The Innovation Act of 2015, ahead of a House Judiciary Committee hearing today on the legislation.

“As the old adage goes, the devil is in the detail. The more our membership digs into the details of H.R. 9, the more concerned they become with the unintended consequences that will impact entrepreneurship and dry up innovation,” said Bobby Franklin, President and CEO of NVCA. “In particular, our membership is growing increasingly concerned that the fee shifting provision will have a devastating impact on startup companies trying to enforce their patents against incumbents and on small companies facing legal challenges by their larger, well-financed competitors. This blunt instrument gives a tremendous advantage to large, incumbent companies and will have a far greater impact on the ability of entrepreneurs to defend their intellectual property than it will on curbing patent troll behavior.”


See also:

Link to post by Timothy Lee:

Rosebud loses appeal in Adobe case; CAFC explicates pre-grant damages under 35 USC 154(d)

The outcome

Rosebud LMS Inc. appeals from the district court’s
grant of summary judgment that Adobe Systems Inc. was
not liable for pre-issuance damages under 35 U.S.C.
§ 154(d) because it had no actual notice of the published
patent application that led to asserted U.S. Patent No.
8,578,280. For the reasons discussed below, we affirm.

The issue of pre-grant damages:

Relevant to this appeal, § 154(d)
provides for damages that take place before a patent
issues if the infringer “had actual notice of the published
patent application.” Id. § 154(d)(1)(B).

The arguments:

The nature of § 154(d)’s “actual notice” requirement is
an issue of first impression for this court. Adobe argues
that actual notice under § 154(d) requires an affirmative
act by the applicant. Without conceding knowledge,
Adobe argues that knowledge of the patent would not
have been enough—notice had to come directly from the
patentee for the “actual notice” requirement to be met.
Because it is undisputed that Rosebud did not affirmatively
give Adobe notice of the published ’280 patent
application, Adobe argues that we should affirm the
district court’s summary judgment.

We agree with Adobe and the district court that constructive
knowledge would not satisfy the actual notice
requirement. We do not, however, agree with Adobe that
§ 154(d)’s requirement of actual notice requires an affirmative
act by the applicant giving notice of the published
patent application to the infringer. Certainly, “actual
notice” includes a party affirmatively acting to provide
See, e.g., 58 Am. Jur. 2d Notice § 4 (2015) (defining
actual notice as “notice expressly and actually given”);
Black’s Law Dictionary 1227 (10th ed. 2014) (defining
actual notice as “[n]otice given directly to, or received
personally by, a party”). But the ordinary meaning of
“actual notice” also includes knowledge obtained without
an affirmative act of notification. “Indeed, ‘actual notice’
is synonymous with knowledge.” 58 Am. Jur. 2d Notice
§ 4 (2015) (also explaining that “[a]ctual notice rests upon
personal information or knowledge while constructive
notice is notice that the law imputes to a person not
having personal information or knowledge”).

The CAFC makes an invitation to Congress:

Moreover, a strict rule requiring notification by the applicant is
simpler to implement and does not leave the accused
infringer in the difficult situation of having to rebut
allegations that it knew of the published application. If
Congress wishes, it can amend the statute to require an
affirmative act by the patentee. We cannot. In the absence
of such action, we interpret the actual notice requirement
of § 154(d) as it is clearly written to have its
ordinary meaning

As to whether Adobe knew about the patent, there was a discovery

Rosebud alternatively argues that the district court
abused its discretion when it granted summary judgment
before completion of fact discovery relating to Adobe’s
knowledge of the published ’280 patent application. It
argues that it served a Federal Rule of Civil Procedure
30(b)(6) deposition notice on Adobe that included topics
related to the published ’280 patent application; that it
served subpoenas on Adobe’s outside counsel for the
earlier Rosebud litigations regarding their knowledge of
the published ’280 patent application; and that it requested
depositions of Adobe employees. It asserts that it
diligently scheduled this discovery to be completed before
fact discovery closed.

The district court did not abuse its discretion in granting
summary judgment before the close of discovery.
Rosebud had notice of Adobe’s intent to file an early
motion for summary judgment, and did not oppose this.

FRCP 56(a), (b), and (d) state:

(a) Motion for Summary Judgment or Partial Summary Judgment. A party may move for summary judgment, identifying each claim or defense — or the part of each claim or defense — on which summary judgment is sought. The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. The court should state on the record the reasons for granting or denying the motion.

(b) Time to File a Motion. Unless a different time is set by local rule or the court orders otherwise, a party may file a motion for summary judgment at any time until 30 days after the close of all discovery.

(d) When Facts Are Unavailable to the Nonmovant. If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may:

(1) defer considering the motion or deny it;

(2) allow time to obtain affidavits or declarations or to take discovery; or

(3) issue any other appropriate order.

Under FRCP 56(d), the appropriate course is to file a declaration or affidavit.
From the case SPIERER v. ROSSMAN, 798 F.3d 502 (CA7 2015) :

Rule 56(d) allows the non-moving party to submit an affidavit or declaration requesting the court to defer or deny judgment in order to allow for appropriate discovery to address matters raised by the motion. Fed. R. Civ. P. 56(d). Here, the plaintiffs took an unusual course of action: they responded to the motion and filed a declaration under Rule 56(d) that included a boilerplate request for discovery without identifying specific evidence needed to respond to defendants' motion. The magistrate judge found the declaration deficient because it was too general to notify the court of any actual evidence needed to respond to the motion. Still more problematic, the declaration, as composed, did not serve as a motion under Rule 56(d) for additional time to respond to the summary judgment motion.

***Entirely separately, from blawgsearch on 9 Feb. 2016:

Monday, February 08, 2016

IBM loses appeal at CAFC against Intellectual Ventures on IPR2014-00180

KENNETH R. ADAMO of Kirkland & Ellis LLP argued for IBM.


The IPR related to U.S. Patent No. 7,634,666 of
Intellectual Ventures II LLC.

Separately, from blawgsearch for 8 Feb 2016:

Saturday, February 06, 2016

The Los Angeles Times does CRISPR patent battle

The article The billion-dollar CRISPR patent battle: A case of big money shaping science discusses the patent interference battle between Doudna and Zhang .

Of some interest:

Because the initial Doudna and Zhang patent filings predated the change, the old rules apply. But it's still a complicated chronology. UC filed a broad patent for Doudna, Charpentier and two colleagues in 2013, and the Broad for a dozen patents on behalf of Zheng and several colleagues starting a few months later. But the Broad asked for "fast-track" examination, so its patents got issued before the examination of UC's more extensive claims was complete.

Of Zhang's filing date, from a previous IPBiz post:

**Of the Zhang patent, as noted in an IPBiz post in March 2015 [ CRISPR is high profile in science, patents; competitor labeled a mere second comer ]:

US 8,945,839 issued on February 3, 2015. A "Track I" request had been made on 18 April 2014. A final rejection was issued on 18 Nov. 2014, with claims 1-28 rejected as anticipated over Jinek, WO'772 (later identified as Doudna). There was an issue of whether or not the priority documents to WO 2013/176772 supported the later disclosure. In this, there was an issue that the patent applicant had presented only arguments of counsel, with the examiner citing to In re Huang, 100 F.3d 136, 139 (CAFC 1996 ) and In re De Blauwe, 736 F.2d 699, 705 (CAFC 1984 ). Applicant brought up arguments made to the EPO about a Jinek journal publication, which were not of interest to the USPTO.
In a response filed 1 Dec. 2014, applicant was especially harsh to the Doudna application: "Doudna is nothing more than a mere 'second comer' and had no CRISPR-Cas invention prior to Feng Zhang."

One notes that the non-provisional application underlying Zhang's 8,945,839 patent was filed April 18, 2014.
The priority claim in the patent states

This application is a continuation of U.S. application Ser. No. 14/183,429 filed Feb. 18, 2014, which is a continuation of U.S. patent application Ser. No. 14/054,414 filed Oct. 15, 2013, now U.S. Pat. No. 8,697,359, which claims priority to U.S. provisional patent application 61/842,322 having Broad reference BI-2011/008A, entitled CRISPR-CAS SYSTEMS AND METHODS FOR ALTERING EXPRESSION OF GENE PRODUCTS filed on Jul. 2, 2013. Priority is also claimed to U.S. provisional patent applications 61/736,527, 61/748,427, 61/791,409 and 61/835,931 having Broad reference BI-2011/008, BI-2011/008, Broad reference BI-2011/008, and BI-2011/008 respectively, all entitled SYSTEMS METHODS AND COMPOSITIONS FOR SEQUENCE MANIPULATION filed on Dec. 12, 2012, Jan. 2, 2013, Mar. 15, 2013 and Jun. 17, 2013, respectively.


Plagiarism issue in Iowa handled quite differently than at Southern Illinois University (SIU)

A few years ago, Southern Illinois University was in the headlines concerning one case of self-plagiarism
(involving a strategic plan presented to SIU copied from a plan in Texas, although the same person wrote both plans) and one case of plagiarism in a Ph.D. thesis (of the university president, no less). The self-plagiarism case went away, and the thesis plagiarism case was softly addressed.

In 2016, the president of Kirkwood Community College in Iowa, one Mick Starcevich , copied, without attribution,
a story he used in a speech made during an annual employee recognition event on Martin Luther King Day — Jan. 18, 2016.
As seen in the story Kirkwood board to discuss President Mick Starcevich's plagiarism admission , this copying event is being treated as a big deal.

One recalls a campaign speech by (now) Vice President Joe Biden, which contained a story copied from Neil Kinnoch. It is argued that sometimes there was attribution, but sometimes not. The bigger issue was that the story, as to Joe Biden, was false.

Of SIU, see for example


which includes the text:

An irony here is that the previous accused SIU administrator has been suspected of plagiarism in a speech given on Martin Luther King Day, with King at Boston University having been found to have plagiarized a previous thesis at BU in creating his own doctoral dissertation.

Friday, February 05, 2016

Apple files for mistrial in VirnetX case

The Verge, citing to the Texas Lawyer, states that Apple has filed for a mistrial in the VirnetX case:

Apple has filed for a mistrial in a patent infringement suit just days after being ordered to pay $625.6 million in damages. VirnetX, which is regularly described as a "patent troll," sued Apple claiming it infringed on four patents related to communications protocols patents used in iMessage, FaceTime, and VPN on Demand, as well as the Apple devices using the software. Apple was found guilty on all claims, but the company now says lawyers for VirnetX used "arguments outside the evidence and blatantly misrepresented the testimony of Apple's witnesses" in closing arguments this week, according to legal blog Texas Lawyer.

link to the Verge:

D NJ allows trade secret case to proceed over issue that receiving company had reason to Know that it obtained plaintiff’s claimed “trade secrets” by Improper means

There is an interesting trade secret case in the federal district court of New Jersey involving
alleged trade secret disclosure by an employee moving from Baxter to HQ.

Text of a recent ruling:

The Court, however, need not belabor the parties’
positions, because genuine factual disputes plainly preclude a
finding in HQ’s favor. Indeed, Mr. Owoo’s presentment of his
esmolol proposal to HQ less than a month after his Baxter
termination, standing alone, creates a reasonable inference that
Mr. Owoo conceived of his esmolol proposal while at Baxter
, and
HQ’s own records permit the inference that it named Ms. Castagna
an inventor mostly as a courtesy (and not necessarily because
she conceived of the esmolol formulation embodied in HQ’s
patents). (See Exs. B, D, E to Kelly Dec.; Ex. 29 to Gallo
Dec.; Squeglia Dep. at 174:23-175:2.) Even more, no party
challenges the fact that Mr. Owoo contractually assigned to
Baxter his rights to any invention “conceived or reduced to
practice by” him, during his employment with Baxter or within
120 days following his termination.


Forbes covers Better Mouse / SteelSeries litigation in ED Texas as troll case

Forbes talked about a victory over a patent troll:

Instead of paying off the hastily formed holding company that sued it over a Taiwan inventor’s patent covering mouse technology, SteelSeries fought. And in a four-day trial that ended Jan. 14, an 8-member jury consisting mostly of blue-collar workers rejected Better Mouse Co.’s claims after SteelSeries presented detailed technical evidence showing the patent was likely invalid due to a previous invention and SteelSeries hadn’t violated it anyway.


CAFC reverses district court in AngioScore/TriReme case

The issue of conveyance of patent rights of a consultant arises in the AngioScore case, in which appellant TriReme won a remand.

AngioScore, Inc. (“AngioScore”) claims exclusive ownership of U.S. Patent Nos. 8,080,026 (“the ’026 patent”), 8,454,636 (“the ’636 patent”), and 8,721,667 (“the ’667 patent”) (collectively, “the AngioScore patents”). TriReme Medical, LLC (“TriReme”), claiming to have received an assignment of an interest in the AngioScore patents from Dr. Chaim Lotan, brought suit for correction of inventorship. It sought to have Dr. Lotan named as an inventor on the patents pursuant to 35 U.S.C. § 256. The district court dismissed for lack of subject matter jurisdiction, holding that any interest Dr. Lotan may have had in the AngioScore patents had been assigned earlier to AngioScore under a consulting agreement, and that TriReme as a consequence lacked standing. TriReme appeals. We reverse and remand for further proceedings.

Two contract provisions were relevant.

Of section 9(a):

What § 9(a) does, at most, is grant AngioScore a nonexclusive license in the event that the consultant incorporates a Prior Invention into an AngioScore product during the term of the Consulting Agreement. But such license is not exclusive and would not prevent Dr. Lotan from subsequently assigning his rights in those contributions to TriReme. In short, the district court erred to the extent it relied on § 9(a) to find that Dr. Lotan assigned his rights to AngioScore.

Of section 9(b):

Whether Dr. Lotan assigned his rights under § 9(b) thus depends on whether Dr. Lotan’s continued work on AngioSculpt after the effective date in fact amounted to “developing,” or “reducing to practice” an “invention,” “development,” or “improvement” pursuant to § 9(b). Id. Only if Dr. Lotan’s continued work after May 1, 2003, constituted “developing,” or “reducing to practice” would his inventive contribution have been assigned to AngioScore under § 9(b) of the Consulting Agreement. Id. It is undisputed that while Dr. Lotan no longer worked on the physical design of the catheter after the effective date, he continued “talking” with AngioScore, performing work relating to designing, implementing, and analyzing clinical trials. J.A. 14. The parties dispute the
significance of this clinical trial work, however, disagreeing as to whether it amounted to “conceiving,” “developing,” or “reducing to practice” an “invention,” “development,” or “improvement” pursuant to § 9(b). Discovery before the district court was limited regarding Dr. Lotan’s work after May 1, 2003, and there was no trial. Nor did the district court make any findings about this work. The district court merely found that Dr. Lotan’s post-effective date work on AngioSculpt “might have amounted to” “developing” or “reducing to practice” his recommendations.1 J.A. 15. Whether this work falls under § 9(b) remains a question of fact that cannot be resolved on a motion to dismiss. We remand for the district court to consider whether Dr. Lotan’s continued work on AngioSculpt after the effective date came within the language of § 9(b).

The decision notes "costs to appellee [AngioScore]".

Trivascular loses appeal of IPR decision at CAFC

Of the "broadest reasonable interpretation" standard:

In construing claim terms, the Board must determine the scope of the claims by giving them their broadest reasonable construction in light of the specification as they would be interpreted by one of ordinary skill in the art. Cuozzo, 793 F.3d at 1279-80; compare Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015).

While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); see In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012) (finding the Patent Office’s construction unreasonably broad because it was “unreasonable and inconsistent with the language of the claims and the specification”). Construing individual words of a claim without considering the context in which those words appear is simply not “reasonable.” Instead, it is the “use of the words in the context of the written description and customarily by those of skill in the relevant art that accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms in the claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). 2

The decision discusses the Blue Ridge Mountains:

TriVascular alleges that the Board’s construction is contrary to the plain meaning of the claim term. In support of its argument, TriVascular asserts that the Board’s construction is unreasonably narrow in light of the common definition of a topological “ridge.” TriVascular points to the Blue Ridge Mountains in the Appalachian Mountain Range, which TriVascular alleges constitute “discontinuous” protrusions that collectively form the mountain ridge. Appellant’s Br. 31-32. We find TriVascular’s arguments to be unpersuasive. First, we note that TriVascular does not explain why the Board should have resorted to a topological or cartographical definition of “ridge,” over a general dictionary definition that is consistent with both the specification’s teachings and the remaining claim limitations. And, even resorting to the topological definition of ridge, TriVascular has failed to explain why such a topological definition would encompass discontinuous peaks in a mountain range, when mountain ranges typically consist of adjacent, continuous mountain peaks.1 To adopt TriVascular’s definition and construe “circumferential” to include discontinuous points would be to adopt an unreasonably broad construction.

Footnote 1 states:

TriVascular’s utilization of the Blue Ridge Mountains as an exemplary mountain ridge is particularly unsupportive of their position. In fact, the National Park Service has noted that the Blue Ridge Mountains were so named because “hydrocarbons released into the atmosphere by the forest contribute to the characteristic haze on these mountains and to their distinctive color.” National Park Service, Blue Ridge Mountains, Frequently Asked Questions, at (last visited January 8, 2016). The eponymous blue haze of the mountain range constitutes a continuous ridge bridging the range’s mountain peaks. Thus the word “Blue” modifies the term “Ridge”; the term “Ridge” is not intended to modify the word “Mountains

And footnote 2:

Because TriVascular argues for a broader construction than the one the Board employed rather than a narrower one, the Supreme Court’s grant of certiorari to consider the propriety of the broadest reasonable interpretation standard in IPRs will not impact our decision to affirm the Board’s claim construction and nonobviousness conclusion here. Cuozzo, 793 F.3d 1268, cert. granted, Cuozzo Speed Techs., LLC v. Lee, No. 15-446, 2016 WL 205946 (U.S. Jan. 15, 2016). Accordingly, we need not delay deciding this case pending the Supreme Court decision in Cuozzo.

Of estoppel issues:

TriVascular nonetheless argues that there must be “written evidence” to contradict an applicant’s concessions made in an amendment, and that “[w]here the record is devoid of any written documentation, no inferences can be made as to what the examiner relied upon or understood.” Appellant’s Br. 36. TriVascular contends that this proposition flows from three cases, Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094 (Fed. Cir. 2003), and Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556 (Fed. Cir. 1983). TriVascular’s reliance on these cases is misplaced. First, TriVascular argues that this court explained in Litton that failure to document the results of an interview with the examiner estopped the applicant from later contending that the “prosecution record is not true.” Appellant’s Br. 37 (citing Litton, 728 F.2d at 1439). Litton involved a case where an applicant elected to continue prosecution by filing a continuation application. Litton then had an examiner interview, the results of which were not documented. After the examiner interview, Litton filed an amendment clarifying that the continuation application was a continuation in part (“CIP”). Subsequently in litigation, Litton attempted to argue that, in the undocumented examiner interview, the examiner accepted Litton’s explanation that the continuation application did not contain new matter, and therefore should be entitled to the continuation application’s filing date. A review of the prosecution history in each case is necessarily context-specific. Unlike the present case, the examiner in Litton accepted Litton’s written filing, which characterized the application as a CIP.

Of relevance to the recent J&J/Ethicon decision:

TriVascular next contends that the Board’s conclusion of nonobviousness is inconsistent with the Board’s findings in its Institution Decision, since the Board found that TriVascular had initially demonstrated a reasonable expectation of success in demonstrating obviousness. TriVascular argues that the Board should not have changed its view of the patent’s validity without clearly explaining why it had done so. In fact, this misguided theme pervades TriVascular’s briefs. Contrary to TriVascular’s assertions, the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one, which we decline to do


TriVascular’s argument also fails to appreciate that there is a significant difference between a petitioner’s burden to establish a “reasonable likelihood of success” at institution, and actually proving invalidity by a preponderance of the evidence at trial. Compare 35 U.S.C. § 314(a) (standard for institution of inter partes review), with 35 U.S.C. § 316(e) (burden of proving invalidity during inter partes review). The Board’s findings in its Final Written Decision were thus not inconsistent with those in its Institution Decision; they were made under a qualitatively different standard.

Wednesday, February 03, 2016

More on the Myth of the Solo Inventor

Following up on the discussion of Edison, it is hard to fathom anyone placing the Edison circa 1880 as anything like a solo inventor. He had a big team working on the light bulb (and electrical current) matters.

There is an important footnote to the story. Edison noted deposits forming in his light bulb, and followed up on the observation. Edison obtained a patent for a voltage-regulating device using the effect on November 15, 1883 (U.S. patent 307,031. However, because Edison was not an "AC" man, he never perceived that his device could be used as a rectifier (diode). As wikipedia notes: The British physicist John Ambrose Fleming, working for the British "Wireless Telegraphy" Company, discovered that the Edison Effect could be used to detect radio waves. Fleming went on to develop the two-element vacuum tube known as the diode, which he patented on November 16, 1904.

**Returning to "solo inventors," within the abstract of Lemley's "Myth of the Solo Inventor," one finds:

The canonical story of the lone genius inventor is largely a myth. Edison didn’t invent the light bulb; he found a bamboo fiber that worked better as a filament in the light bulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of U.S. Reports resolving the question of whether Bell could have a patent despite the fact that he hadn’t actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk, but their plane didn’t work very well, and was quickly surpassed by aircraft built by Glenn Curtis and others – planes that the Wrights delayed by over a decade with patent lawsuits.

The point can be made more general: surveys of hundreds of significant new technologies show that almost all of them are invented simultaneously or nearly simultaneously by two or more teams working independently of each other. Invention appears in significant part to be a social, not an individual, phenomenon. Inventors build on the work of those who came before, and new ideas are often "in the air," or result from changes in market demand or the availability of new or cheaper starting materials. And in the few circumstances where that is not true – where inventions truly are "singletons" – it is often because of an accident or error in the experiment rather than a conscious effort to invent.

In spite of Lemley's explicit reference to "bamboo" in the abstract of his law review, Lisa Larrimore Ouellette wrote:

Lemley isn't making any claims about the scope of the patents these inventors received, so whether "bamboo" appears in Edison's patent is irrelevant. Rather, his claim is a historical one: that while society thinks of Edison as stepping into vacuum and independently creating this pioneering invention, he was really building on others' ideas much more than the canonical myth suggests. I don't think Lemley did original research on this - he relied on peer-reviewed articles like this one - and it is possible that the scholars he relies on got the history wrong. But I don't think your post on ezinearticles about whether Edison was a patent troll really addresses this historical claim.

As we have noted, Edison's famous US Patent No. No. 223,898, granted January 27, 1880, does not mention "bamboo." This is not irrelevant. Even at the time of patent issue (Jan. 1880), Edison's team had not even tested the bamboo. The longer bulb lifetimes given by bamboo filaments did not exist at the time of filing or at the time of issue. If "bamboo" were the invention, then Lemley could just as well have said Edison "hadn’t actually gotten the invention to work at the time he filed ". But the idea of Edison was to have a bulb employing high voltage, high resistance, but low current, which Sawyer and Mann had not figured out. This idea was NOT "in the air." Separately, the patent actions taken in the 1880s and 1890s (mentioned in the ezine article) prove that Edison's contemporaries did NOT think Edison was stepping into a vacuum.

Similarly, Langley, and all the competitors of the Wrights, had not figured out a means of three-dimensional control of an aircraft. Langley's Aerodrome had no control, which is one reason his "test" was carried out on a river. The Wrights' idea was not "in the air."

Neither the concept of Edison as to high resistance nor the Wright's three dimensional control represent examples of near-simultaneous invention. Edison was trying to make a device with low current consumption, which thus would be practical for mass production. No one else was. The Wrights were working on three-dimensional control of aircraft; as they pointed out, with enough power, anyone could make a door fly; flying per se was not the issue.

As to Carlson, Lemley writes:

But on balance I don‘t think the photocopier can be counted as either a case of simultaneous invention or of incremental improvement. Carlson did go down a different path, and there is no evidence of simultaneous or near-simultaneous invention. Indeed, Mort notes that ―had Carlson been totally influenced by the state of knowledge in 1938 he might have been inclined to drop the whole idea‖ of electrostatic glass, since the rest of the world seemed focused on the use of crystals.147

[Of the Mort comment, note that Carlson's initial work was on sulfur; as wikipedia states: Carlson's early experiments, conducted in his apartment kitchen, were smoky, smelly, and occasionally explosive. In one set of experiments, he was melting pure crystalline sulfur (a photoconductor) onto a plate of zinc by moving it just so over the flame of his kitchen stove. ]

BUT note the following text in Lemley's "Myth":

History, then, suggests that overwhelmingly, inventions—even so-called pioneering inventions—are actually incremental improvements,often made at roughly the same time by multiple inventors. That doesn‘t mean the inventions I have catalogued here have no value; far from it. Edison, Wright, Bell, and the rest made useful contributions to society. But they did not invent things out of whole cloth.
The few cases that don‘t involve simultaneous work are mostly the result not of deliberate invention, but of accident. The photocopier seems the primary exception to this story, the only case in which a single inventor working alone develops a wholly new product that no one else achieves at roughly the same time.

One suspects that there are other individual inventions, which were not simultaneous. The "invention" of the mouse at Xerox might be one.

In passing, note the following incorrect statement that appears on wikipedia: Photoconductors using organic compounds (like zinc oxide or cadmium sulfide) are electrochemically charged vice-versa to the preceding system in order to exploit their native properties in printing.[