Thursday, August 17, 2017

Issues with statues of Roger Taney


WJLA reported:


The Robert E. Lee and "Stonewall" Jackson statue in Wyman Park, the Roger B. Taney statue in Mount Vernon, the Confederate Women’s Monument in Bishop Park and the Confederate Soldiers and Sailors Monument on Mount Royal Avenue were all removed between 12:00 a.m. and 3:30 a.m. Wednesday morning. [16 August 2017]



On 17 August 2017, the Washington Post stated:


Maryland Senate President Thomas V. Mike Miller Jr. (D-Calvert) on Thursday [17 Aug 17] lashed out at Gov. Larry Hogan (R) for quickly advancing plans this week to remove a controversial State House statue of former U.S. Supreme Court justice Roger B. Taney, who defended slavery in the landmark 1857 Dred Scott decision.

In a letter to the governor, Miller defended Taney’s legacy and said the memorial should stay put to help educate people about the past. He also criticized Hogan for pushing a vote on the matter “outside the public eye.”


link to WaPo: https://www.washingtonpost.com/local/md-politics/md-senate-president-slams-hogan-for-fast-vote-to-remove-taney-statue/2017/08/17/41833b12-8390-11e7-ab27-1a21a8e006ab_story.html?utm_term=.e26cdbdc081b

Of interest to patent people, Taney was in the dissenting four in Winans v. Denmead, 56 U.S. 15, with Curtis (a dissenter in Dred Scott) writing the majority opinion in Winans. Of the dissent in Winan:


The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only?

The claim of today is that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints does this patent impose in this branch of mechanic art?



The dissent in Winans comprised MR. CHIEF JUSTICE TANEY, MR. JUSTICE CATRON, MR. JUSTICE DANIEL, and MR. JUSTICE CAMPBELL, .

Curtis was so disgusted with Dred Scott that he resigned from the Supreme Court.

Of the dissent in Dred Scott, from wikipedia:


Justice Benjamin Robbins Curtis, in dissent, attacked much of the Court's decision as obiter dicta, on the ground that once the Court determined that it did not have jurisdiction to hear Scott's case, it must simply dismiss the action, and not pass judgment on the merits of the claims. The dissents by Curtis and McLean also attacked the Court's overturning of the Missouri Compromise on its merits, noting both that it was not necessary to decide the question, and also that none of the authors of the Constitution had ever objected on constitutional grounds to the United States Congress' adoption of the antislavery provisions of the Northwest Ordinance passed by the Continental Congress, or the subsequent acts that barred slavery north of 36°30' N.

Wednesday, August 16, 2017

Georgetown Rail prevails over Holland at the CAFC. Analysis of the preamble.


An issue in the case was the position of the accused infringer that an element in the preamble (“mounted on a vehicle for movement along the railroad track”) was a limitation of the claim. The CAFC wrote:


In the context of the entire patent, it is apparent that
the term “mounted on a vehicle for movement along the
railroad track” is meant to describe the principal intended
use of the invention but not to import a structural limitation
or to exclude from the reach of the claims an assembly
that does not include a vehicle mount. Nothing in the
specification or prosecution history states, or even suggests,
that Georgetown intended to exclude use of technology
that was structurally identical to its claimed
product but that was installed and performed analysis on
a non-vehicle mount.

(...)

The body of
the claim itself describes a “structurally complete invention,”
Rowe, 112 F.3d at 478, because it describes a closed
“system” comprised of a “light generator,” “optical receiver,”
and “processor,” which are the objects required to
perform the stated purposes of gathering and processing
data on misaligned track ties, (...) The location of the system is not an
essential feature of the invention. Indeed, as the District
Court noted, the specification states that “[t]he computer
analysis can be performed by the processing device . . .
located on the inspection vehicle. Alternatively, the
computer analysis can be performed by another computer
system having image processing software known in the
art.” Georgetown Rail I, 2014 WL 11498109, at *2−3
(quoting ’329 patent col. 7 ll. 10−14).



Of colorful language by the CAFC:


Holland argues as an example of the need to include the
preamble in the claim language that the claim terms
“plurality of images” and light generator and cameras
that are “positioned adjacent” to the track would not
make sense without the preamble. Id. (internal quotation
marks omitted). This puts the caboose before the locomotive.
It is easy to imagine that the patented system could
be manually carried or pulled across tracks, and that
software configured in any type of device, on-site or off,
could process the data.



As to enhanced damages:


None of the arguments Holland makes with respect to
the findings of enhanced damages demonstrate abuse of
discretion by the District Court. The District Court made
detailed factual findings which, taken together, support
its award of enhanced damages. It did not merely look at
the jury’s finding of willfulness; rather, it applied and
considered all nine Read factors. Specifically, after ana
lyzing each Read factor individually, the District Court
stated that “[f]actors 1, 2, and 5 support enhancement;
factors 3, 4, and 7 slightly support enhancement; and
factors 6, 8, and 9 are neutral.” Georgetown Rail II, 2016
WL 3346084, at *21. It also found that “no single factor
weighs against enhancement.” Id. Finally, the District
Court took into account the degree of willfulness and
found that it was “not warranted” to enhance damages to
the full maximum statutory amount of treble damages
(over $4,500,000); rather, it awarded only an additional
$1,000,000. Id. Considering all of the Read factors and
the District Court’s statutory authority to treble damages
under § 284, the award of $1,000,000 in addition to the
damages award of $1,544,333 was not an abuse of discretion.

Tuesday, August 15, 2017

Clinton Pastor Plagiarized, but victim notes: “The last thing the world needs right now is two pastors having a public dispute over a blog,”


From time to time, IPBiz has discussed pastors who plagiarize (e.g., Plagiarizing pastors, revisited ) and sermons which have been copied (e.g.,
The issue of copying sermons, re-visited
.

Related to a book by United Methodist minister Rev. Bill Shillady, which book presented compiled emails sent to Hillary Clinton, the Washington Post noted


Indiana pastor Matt Deuel read a prominent piece of Shillady’s book — the email Shillady sent to Clinton the morning after the 2016 election — when CNN published it last week. He recognized it as resembling his own March 2016 blog post and on Saturday he contacted a reporter for CNN, which first published the news Monday.



AND


The publisher, Abingdon Press, said it will cite Deuel in future printings of the book, “Strong for a Moment Like This.”



Stipulating that there was unattributed copying, one notes, as to copyright, this would likely count as a transformative work. The major import of the emails was not the specific content, but rather that they were sent to Hillary Clinton and when (and why) they were sent.

Going back to sermons, IPBiz had a post Popsicle patent wars of yesteryear, which began:


Ministers, in sermons about sharing, frequently point to the story of the two-stick Popsicle. Sometimes the ministers mention that the Popsicle was invented by an eleven year old boy, Frank Epperson, in 1905. And during the depression, the two stick popsicle was introduced so that one could share.



AND there is a sermon about a (mythical?) US submarine sunk in New York City harbor, with a sailor inside tapping out in code: is there hope?

CROCS loses on design patent


In 2015, there was an article in JPTOS titled -- Unpatentability by Design: The Overlooked Use of Inter Partes and Post-grant Review to Challenge Design Patents -- [97 JPTOS 96 ]

In August 2017, CNBC had a story on a CROCS design patent application, which included:


The U.S. Patent and Trademark Office recently issued a final rejection of Crocs' key design patent, which Crocs has said it plans to appeal, according to Footwear News.

SD NY assesses damages against Costco for Tiffany trademark violation

In a 2015 decision, SD NY gave summary judgment in favor of TIFFANY AND COMPANY, holding Costco liable for trademark infringement and trademark counterfeiting under the Lanham Act with respect to engagement rings sold under certain signage that referenced the mark "Tiffany" as a standalone term. A decision on August 14, 2017 addressed damages.

An issue in Tiffany v. Costco, 2017 U.S. Dist. LEXIS 128946, was "equitable vs. legal":


In the Summary Judgment Opinion, the Court stated that "[i]t was still an open question in the Second Circuit as to whether the accounting of profits in a trademark infringement action is an equitable or legal remedy." (S.J. Op. at 36.) In the parties' post-trial briefing, Costco contends that the jury verdict on the "Accounting of Profits Issues" was rendered on an equitable remedy for which there is no federal right to a jury trial, and that the Court is obligated to make an independent determination as to the accounting of profits. Tiffany, likewise, urges that "regardless of where the Court comes out on the state of the law, Tiffany believes the Court should set out findings of fact that would support the jury's determinations, whether or not it was advisory on actual profits." (Tiffany Br. at 3.) Although the Second Circuit has not explicitly ruled on the issue, in Gucci America, Inc. v. Weixing Li, a trademark infringement action under 15 U.S.C. Section 1117(a), the court characterized the accounting of profits sought by the plaintiff as an "equitable remedy." 768 F.3d 122, 130 (2d Cir. 2014). The Court will treat the jury verdict as to accounting of profits as advisory and make its own findings.



The issue of profits through membership fees arose:



Tiffany also presented credible evidence that Costco's profits are not limited to the margin between product costs and sales, but also include very substantial sums derived from warehouse membership fees. Douglas Schutt, Costco's Chief Merchandising Officer, acknowledged that Costco's "business model of charging the membership fee . . . is one of the things that enables [Costco] to charge less of a markup on the individual products [Costco] sell[s]." (Tr. 444.) Costco uses a "treasure hunt" marketing concept - creating "buzz" among members by offering "brand name merchandise at exceptional values" to drive frequent member visits and renewals. (Id. 461-63.) Kaczmarek, Tiffany's expert, testified credibly that even the 13% markup figure that he had used in his analysis is very low, and that Costco is "able to survive with that low markup because they charge membership fees annually. So they make most of their money on the membership fees and so that's how they can actually make such small profits on the items. That's what attracts customers to want to go to Costco." (Tr. 281.)

(...)

The Court finds that Costco has failed to prove that its profits on sales of rings under Standalone Signage were limited to the 10.31% margin computed by Costco's damages expert. That margin is artificially small, and was made possible chiefly by the subsidizing impact of membership fees, which are themselves enhanced by the pull of the "treasure hunt" tactic in which Costco uses extraordinary bargains on brand-name merchandise to pull customers into its stores. Fine jewelry is the first display case customers encounter in Costco's standard store layout, along with name-branded luxury watches. (Tr. 451-452, 466-467, 470.) In light of the role of the membership fees in Costco's business model and of its use of Tiffany's mark in selling fine jewelry, which is prominently displayed at the entrance of the stores to catch the [*16] eye of the customer, the Court finds it necessary and appropriate as an equitable matter to impute a sufficient portion of the membership revenue to the sale of these rings to bring the recoverable profit margin on the rings into the profit margin range of a typical run-of-the-mill jewelry store, which is approximately 50-100%. The Court further finds that the advisory jury's award of $3.7 million in profits on the Standalone Signage sales, a figure that is slightly more than 50% of the sales revenue proven in connection with those sales, constitutes a just and appropriate award of Costco's profits attributable to the infringing sales.



As to punitive damages:



The issues of whether punitive damages were warranted and, if so, of how much punitive damages to award were within the province of the jury, and the jury's decision cannot be set aside unless "there exists such a complete absence of evidence supporting the verdict that the jury's findings could only have been the result of sheer surmise and conjecture, or the evidence in favor of the movant is so overwhelming that reasonable and fair minded persons could not arrive at a verdict against it." Providencia v. ex rel. K.V. v. Schultze, No. 02 CV 9516, 2009 U.S. Dist. LEXIS 30411, 2009 WL 890057, at *1 (S.D.N.Y. Apr. 2, 2009) (quoting Brady v. Wal-Mart Stores, Inc., 531 F. 3d 127, 133 (2d Cir. 2008) (internal quotation marks omitted)). As the Court stated in its Summary Judgment Opinion, "Tiffany . . . proffered [in connection with that motion practice] evidence upon which the finder of fact could conclude that Costco's behavior satisfied the 'gross, wanton or willful' standard" required for awarding punitive [*21] damages." (Docket entry no. 175 at 34.) Even more evidence of conduct supporting punitive damages was adduced at trial, including evidence of the conduct and attitude of Costco's senior executives towards use of the "Tiffany" mark and the lawsuit, customer confusion, and marketing strategies designed to invoke an association with Tiffany. Given that there plainly was enough evidence to support the jury's award of punitive damages, the jury's finding that punitive damages were warranted will not be disturbed.



The outcome:

Treating the jury's verdict as advisory only as to the recovery of profits, the Court finds that Plaintiffs are entitled to recover trebled profits of $11.1 million, and judgment will be entered in their favor in that amount, plus prejudgment interest at the annual rate set under 26 U.S.C. § 6621(a)(2) for the period from February 15, 2013, through the date of judgment and punitive damages of $8.25 million, unless Plaintiffs file within seven (7) days from the date hereof a written election to instead recover the $2 million in statutory and $8.25 million in punitive damages awarded by the jury.
Costco is permanently enjoined from using the mark TIFFANY as a standalone term, not combined with any immediately following modifiers such as "setting," "set" or "style," in connection with its advisement and/or sale of any products that were not manufactured by Plaintiffs or their affiliates.

Visual Memory claims survive 101 challenge by 2-1 vote at CAFC




Visual Memory, LLC appeals the district court’s dismissal
of its patent infringement complaint against
NVIDIA Corporation. The district court held that Visual
Memory’s U.S. Patent No. 5,953,740 is drawn to patent ineligible
subject matter, and therefore its complaint
failed to state a claim under Federal Rule of Civil Procedure
12(b)(6). We conclude instead that the ’740 patent
claims an improvement to computer memory systems and
is not directed to an abstract idea. Accordingly, we reverse
the district court and remand for further proceedings


Of the analysis:


Our analysis begins with Alice step one. Although the
two steps in the Alice framework “involve overlapping
scrutiny of the content of the claims,” the “Supreme
Court’s formulation makes clear that the first-stage filter
is a meaningful one, sometimes ending the § 101 inquiry.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016). In this regard, we must articulate with
specificity what the claims are directed to, Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir.
2017), and “ask whether the claims are directed to an
improvement to computer functionality versus being
directed to an abstract idea.” Enfish, 822 F.3d at 1335
(“[S]ome improvements in computer-related technology
when appropriately claimed are undoubtedly not abstract,
such as a chip architecture, an LED display, and the
like.”).



AND


With these guideposts in mind, and cognizant of the
difficulty inherent in delineating the contours of an abstract
idea, we turn to the claims at issue here. Our
review of the ’740 patent claims demonstrates that they
are directed to an improved computer memory system, not
to the abstract idea of categorical data storage. Claim 1
requires a memory system “having one or more programmable
operational characteristics, said characteristics
being defined through configuration by said computer
based on the type of said processor,” and “determin[ing] a
type of data stored by said cache.” ’740 patent col. 6
ll. 29–38. Dependent claims 2 and 3 narrow the cache’s
programmable operational characteristic to storing certain
types of data (“only code data or . . . both code data
and non-code data”) and buffering data from certain
sources (“buffering of data solely from said bus master or
. . . both from said bus master and said processor”), respectively.
Id. at col. 6 ll. 39–51. Claim 6 recites the fast
page mode embodiment with a programmable operational
characteristic, and dependent claim 7 defines the programmable
operational characteristic as the type of data
to be stored. Id. at col. 7 ll. 3–26. None of the claims
recite all types and all forms of categorical data storage.

Can a state law or regulation define ownership of a US Patent?


At PatentlyO, Dennis Crouch wrote:


An important element of the original district court decision here (that was affirmed without opinion) points out a Florida State Regulation that “An invention which is made in the field or discipline in which the employee is employed by the University or by using University support is the property of the University…” R. 6C4–10.012(3)(c) (emphasis added). To be clear, this regulation is not a “contract” with the future inventor but instead a regulation in the Florida code that identifies ownership of the patent right — seemingly in conflict with the statement in Stanford v. Roche that “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”




link: https://patentlyo.com/patent/2017/08/right-trial-attorney.html#comments

The post is about the case AIA America v. Avid Radiopharma (Fed. Cir. 2017), which case includes the text:


Dr. Hardy and his team believed the Athena agreement
undervalued their research. Soon thereafter, Mr.
Sexton, a Kansas City businessman who had no experience
in scientific research but saw a business opportunity
for himself, offered Dr. Hardy and his team a better deal
than they had with Athena. Initially, Dr. Hardy and his
team attempted to undermine the agreement with Athena
by misrepresenting the origins of their work on the London
Mutation. This attempt failed when Imperial determined
that it owned the discovery under United Kingdom
law by its employment of the inventors.
Dr. Hardy, his
team, and Mr. Sexton then “decided to make sure [they]
didn’t give anything else away.” J.A. 2759:13–14.



The question of Dennis related to the power of the Florida government to
dictate patent ownership, but then there was a question of the power of
the federal government to do so.

LBE wrote:


In Stanford v. Roche, 563 U.S. 776; 131 S. Ct. 2188; 180 L. Ed. 2d 1 , — Stanford claimed that Holodny had no rights to assign because the University’s HIV research was federally funded, giving the school superior rights in the invention under the Bayh-Dole Act. — The Supreme Court noted: The
question here is whether the University and Small Busi-
ness Patent Procedures Act of 1980—commonly referred to
as the Bayh-Dole Act—displaces that norm and automati-
cally vests title to federally funded inventions in federal
contractors. We hold that it does not.
Theoretically, Congress might have written Bayh-Dole differently, to displace the norm, and that would have been within the scope of Congressional powers. But, as you suggest, not likely within the scope of powers of Florida lawmakers. Or, is there an 11th Amendment/Florida Prepaid Postsecondary kind of issue?



AND


Prior to Bayh-Dole, many government agencies were reluctant to relinquish their ownership of the government funded patents to universities or industry. Instead these agencies granted nonexclusive licenses to anyone who wished to produce the inventions.

AND from a 1924 case:

It is unthinkable that, where a valuable instrument in the war against disease is developed by a public agency through the use of public funds, the public servants employed in its production should be allowed to monopolize it for private gain and levy a tribute upon the public which has paid for its production, upon merely granting a nonexclusive license for its use to the governmental department in which they are employed.

Not clear what the answer to Dennis’ question is…




Further on the pre-Bayh-Dole period:


Before the Bayh-Dole Act was passed in 1980, federal funding to universities resembled a system of government selection and subsidization of private innovators. Researchers received federal money either through allocation by the university or based on the individual research proposal. The intellectual property resulting from such federally funded research then belonged to the federal government, who usually dedicated it to the public domain, and granted nonexclusive licenses for its use



from 18 Harv. J. Law & Tec 459 (2005)

**


Before 1980, most inventions made with government funding were never patented. n4 The U.S. government generally held title to those few inventions that were actually patented, whether created at federal labs or in academia. n5 Non-exclusive licenses were usually available at a reasonable rate, though these were never very popular. n6



from 2005 B.C. Intell. Prop. & Tech. F. 93001

**

Innovation's Golden Goose, supra note 10. ("Before Bayh-Dole, the fruits of research supported by government agencies had belonged strictly to the federal government.



from Carl E. Gulbrandsen , 2007 Wis. L. Rev. 1149

**

As to state law and patents-->


To support this position, the court looked to Jim Arnold Corp. v. Hydrotech Systems, n58 which held that patent ownership is a state court question. n59 In doing so, the court read that holding expansively; though Jim Arnold Corp.'s holding concerned only whether the state court had jurisdiction, here the court read it to mean that state law controls in patent ownership cases. n60
Having established that state law generally controls patent ownership, Akazawa held that the same doctrine should apply when foreign law, rather than [*64] state law, controls.



from 64 Okla. L. Rev. 57 (2011)

**


Other state laws regulating issues related to patents have not been preempted. This seems to create some room for state legislatures to regulate a limited range of patent related issues.
For example, a state contract law has overcome preemption challenges where it governed agreements to license or assign a patent. n146 In deciding this case, the Supreme Court stated that "[c]ommercial agreements traditionally are the domain of state law." n147 The Court then found that the [*781] state law did not violate any of the three objectives of federal patent law. n148 First, it found that the state law actually encouraged invention by providing royalties to patent owners. n149 Second, the Court found that the state licensing law encouraged disclosure of inventions. n150 Third, the enforcement of a licensing agreement under state licensing law did not withdraw any idea from the public domain. n151 Based on these findings, the Supreme Court determined that the state contract law was not preempted. n152



from 68 S.C. L. Rev. 761 (2017)

**

We have previously held that patent ownership is determined by state, not federal law. Akazawa, 520 F.3d at 1357 (citing Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) ("[T]he question of who owns the patent rights and on what terms typically is a question exclusively for state courts.")). However, "the question of whether [**11] a patent assignment clause creates an automatic assignment or merely an obligation to assign is intimately bound up with the question of standing in patent cases," and therefore we have "treated it as a matter of federal law." DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). Usually, federal law is used to determine the validity and terms of an assignment, but state law controls any transfer of patent ownership by operation of law not deemed an assignment.

from Sky Technologies, 576 F.3d 1374
**


Under the classical conception of the patent, individual states lost the power to determine entitlement to a patent or the scope of the patent property right. But the Constitution's Patent Clause authorized Congress only to "secure" the exclusive patent right. Once a patent was issued and entered the stream of commerce, its management as a property right largely befell the states. That division of responsibility has very largely persisted, although with qualifications emanating from the first sale doctrine, federal antitrust, and misuse policy. Federal law defines entitlement to a patent, its appropriate scope, and enforcement power by means of infringement actions. By contrast, state commercial law determines questions about licensing, assignment, and descent.



from 58 Ariz. L. Rev. 263 (2016)

**

"there is nothing that limits assignment as the only means for transferring patent ownership...by operation of law," Akazawa, 520 F.3d at 1356
**
The Tenth Circuit acknowledged that "states retain the power to 'adopt rules for the promotion of intellectual creation within their own jurisdictions' so long as those rules do not impermissibly interfere with the federal patent scheme."

174 F.3d 1104, 1108-9 (10th Cir. 1999).

**

Monday, August 14, 2017

CAFC goes through FRCP 60 in Piccone case

The CAFC decision in PICCONE v. Matal (and others) is per curiam and not precedential. There apparently were some disciplinary issues with registered patent attorney Piccone, but in this sequence, Piccone sued the PTO (and others) in ED Va for items including alleged
constitutional violations by the Individual Defendants,
challenges to the PTO’s FOIA decisions, and a request for
declaratory relief from the PTO’s disciplinary proceedings.

His complaint was dismissed on October 27, 2015. The district court
issued a separate order later that day informing Mr. Piccone he had
thirty days to file a notice of appeal.

On December 9, 2015, Mr. Piccone filed a motion to
reconsider the October 27 order.

The district court denied the
motion for reconsideration on December 30, 2015.

On February 29, 2016, Mr. Piccone filed a notice of
appeal to the Court of Appeals for the Fourth Circuit,
which transferred the case to our court. His notice stated
that he was appealing “the final judgment dismissing the
above-identified case, entered December 29, 2015.” We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

The CAFC began its discussion with


Although the majority of Mr. Piccone’s brief to our
court addresses the district court’s October 27, 2015 order
granting summary judgment, our appellate jurisdiction is
limited to reviewing the district court’s December 30,
2015 order denying Mr. Piccone’s motion for reconsideration.1
The timely filing of a notice of appeal in a civil case
is a jurisdictional requirement. Bowles v. Russell, 551
U.S. 205, 214 (2007). Under the Federal Rules of Appellate
Procedure, Mr. Piccone had sixty days from the date
of the October 27, 2015 order to file his notice of appeal.
See Fed. R. App. P. 4(a)(1)(B)(ii); Gist v. United States,
504 F. App’x 918, 918 (Fed. Cir. 2013). Mr. Piccone did
not file his notice of appeal until February 29, 2016, more
than four months after the summary judgment order.
And his notice of appeal only identified the district court’s
December 30, 2015 order denying reconsideration. We
therefore lack jurisdiction to review the October 27, 2015
order.




Of some interest is the discussion of the "motion for reconsideration":


The district court interpreted Mr. Piccone’s December
9, 2015 motion for reconsideration as a motion under Rule
60 rather than Rule 59 of the Federal Rules of Civil
Procedure. We see no error in this conclusion. Under
Rule 59, a party must file a motion to amend a judgment
within twenty-eight days of the entry of the judgment.
Fed. R. Civ. P. 59(e). Mr. Piccone filed his motion fortythree
days after the October 27, 2015 order. The district
court properly treated his motion as a Rule 60 motion,
which may be filed within a year of entry of judgment.
See Fed. R. Civ. P. 60(c)(1).



For a court to reconsider an initial ruling, there is not much time
for the losing party to file. In D NJ, Local Rule 7.1(i) states:
Unless otherwise provided by statute or rule (such as Fed. R. Civ. P. 50, 52 and 59), a motion for reconsideration shall be served and filed within 14 days after the entry of the order or judgment on the original motion by the Judge or Magistrate Judge. A brief setting forth concisely the matter or controlling decisions which the party believes the Judge or Magistrate Judge has overlooked shall be filed with the Notice of Motion.

On FRCP 59, from PETERSON v. Brooks, 2008 U.S. Dist. LEXIS 66904 :


Federal Rule of Civil Procedure 59(e) provides that a party may file a motion within ten days of the entry of a judgment requesting that the court alter or amend the judgment. Fed. R. Civ. P. 59(e). Such a motion is considered a motion for reconsideration.

"A proper Rule 59(e) motion must be based on either an intervening change in controlling law, the availability of new or previously unavailable evidence, or the need to correct clear error or prevent manifest injustice." Choi v. Kim, 258 Fed. App'x 413, 416 (3d Cir. 2007) (citing North River Ins. Co. v. CIGNA Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995)).



The current version of FRCP 59(e) does recite 28 days: A motion to alter or amend a judgment must be filed no later than 28 days after the entry of the judgment.


**One notes a curious error in the CAFC decision:


The Fourth Circuit reviews
the denial of a Rule 60(b) motion for abuse of discretion.
Aikens v. Ingram, 652 F.3d 496, 501 (Fed. Cir. 2011).



The Aikens case, of course, is from the Fourth Circuit, not from the Fed. Cir. [ Plaintiff Frederick Aikens, a former colonel in the North Carolina Army National Guard, filed a complaint against defendant National Guard officers alleging that they violated his Fourth Amendment rights by wrongfully intercepting, reading, and forwarding his e-mails while he was deployed in Kuwait. Aikens lost his appeal. ]



[In passing, FRCP 54 is used to seek clarification of a non-final order: : “Federal Rule of Civil Procedure 54(b) provides that any non-final decision or order "may be revised at any time before the entry of judgment adjudicating all the claims." Fed.R.Civ.P. 54(b). Pursuant to this rule, Hines seeks clarification of this court's May 9, 2011 order, arguing that the order was unclear… “ ]

Friday, August 11, 2017

Amgen loses appeal at CAFC in Hospira / Epogen case

The issue was appeal of a denial of a motion to compel:


Amgen Inc. (“Amgen”) appeals an order of the United
States District Court for the District of Delaware denying
Amgen’s motion to compel discovery from Hospira, Inc.
(“Hospira”) in a patent infringement case governed by the
Biologics Price Competition and Innovation Act of 2009
(“BPCIA”),



The material in question was Epogen:


Hospira filed a subsection (k) application with the
FDA in December 2014 seeking approval of a biosimilar of
EPOGEN®, a biological product developed by Amgen and
approved by the FDA under section 262(a) in 1989. In
accordance with paragraph (l)(2)(A), Hospira provided a
copy of its application to Amgen. Hospira did not separately
provide information concerning “the process . . .
used to manufacture the biological product”—again, as
required by the statute—but contends that such information
was disclosed in its application.



The motion to compel was denied by D. Delaware for lack of
relevance:


Hospira refused Amgen’s discovery requests, and
Amgen ultimately filed a motion to compel discovery. The
district court denied Amgen’s motion, stating that the
cell-culture information sought by Amgen had “essentially,
no relevance to the patents that are asserted,” J.A. 37,
a conclusion that Amgen does not now dispute.
Amgen appealed the district court’s interlocutory order.
Hospira then moved this court to dismiss Amgen’s
appeal for lack of jurisdiction. We denied Hospira’s motion,
but asked the parties to brief “whether this court has
jurisdiction pursuant to the collateral order doctrine or
under the All Writs Act.” Order, Amgen, Inc. v. Hospira,
Inc., No. 16-2179 (Fed. Cir. Aug. 12, 2016), ECF No. 16



Of note in the case:


Nothing in Sandoz suggests that the BPCIA somehow
supplants the preexisting rules of civil procedure. Our
opinion in Amgen merely acknowledged that a sponsor
“can access the required information through discovery,”
794 F.3d at 1356, but our statement did not purport to
hold that the usual rules governing discovery do not apply
in the BPCIA context. Nor does anything in Sandoz
suggest otherwise

(...)

Under Amgen’s reading of the statute,
an applicant could effectively control the scope of litigation
under the BPCIA by withholding information under
paragraph (l)(2)(A), thereby preventing the sponsor from
identifying and bringing suit on patents related to the
biological product that the sponsor “believes a claim of
patent infringement could reasonably be asserted” under
paragraph (l)(3)(A). We note that the statute penalizes
sponsors that decline to participate in the BPCIA’s information
exchanges because under 35 U.S.C. § 271(e)(6)(C),
a sponsor that fails to list a patent that “should have been
included in the list described in [paragraph (l)(3)(A)] . . .
may not bring an action under this section for infringement
of the patent with respect to the biological product.”
In contending that a sponsor would be unable to list a
patent under paragraph (l)(3)(A), Amgen emphasizes that
the sponsor must form a good-faith belief that a patent
listed under paragraph (l)(3)(A) “could reasonably be
asserted.” Amgen asserts that a sponsor listing a patent
without the benefit of the applicant’s paragraph (l)(2)(A)
disclosures would later be subject to sanctions under
Federal Rule of Civil Procedure 11 or antitrust liability
for asserting baseless claims of patent infringement.

(...)

Amgen’s argument misunderstands the statute. Paragraph
(l)(3)(A) merely requires the sponsor to list patents
that it “believes . . . could reasonably be asserted.” (emphasis
added). The statute provides no sanction for holding
or asserting a mistaken belief in good faith. Moreover,
once a patent is listed by the sponsor, the BPCIA’s information
exchange further requires the applicant to “provide
to the . . . sponsor, with respect to each patent listed
. . . a detailed statement that describes, on a claim by
claim basis, the factual and legal basis of the opinion of
the subsection (k) applicant that such patent is invalid,
unenforceable, or will not be infringed.” 42 U.S.C.
§ 262(l)(3)(B)(ii) (emphases added). In other words, once a
sponsor lists a patent under paragraph (l)(3)(A), the
applicant must once again come forward with additional
disclosures under paragraph (l)(3)(B) that inform whether
“a claim of patent infringement . . . could” or could not
“reasonably be asserted.” If the applicant fails to comply
with its obligation to respond under paragraph (l)(3)(B),
the sponsor would have a reasonable basis for asserting a
claim of patent infringement.
Furthermore, under Rule 11, one submits a filing “to
the best of the person’s knowledge, information, and
belief, formed after an inquiry reasonable under the
circumstances.” Fed. R. Civ. P. 11(b). The rule also expressly
permits factual allegations that “will likely have
evidentiary support after a reasonable opportunity for
further investigation or discovery.” Fed. R. Civ. P.
11(b)(3). Thus, if a sponsor forms a belief based on an
inquiry limited by an applicant’s withholding of information,
the sponsor has still satisfied Rule 11. See, e.g.,
Hoffman-La Roche Inc. v. Invamed Inc., 213 F.3d 1359,
1363–64 (Fed. Cir. 2000) (affirming denial of Rule 11
sanctions where patentees unsuccessfully sought manufacturing
information from defendants before suit and
“attempted to ascertain whether the processes so used
were infringing, but were unable to do so”); Morda v.
Klein, 865 F.2d 782, 785–86 (6th Cir. 1989) (affirming
denial of Rule 11 sanctions because “[i]t would be particularly
difficult to fault plaintiffs for a lack of prefiling
inquiry when, as here, defendants have refused plaintiffs
access to material information that would bear on certain
allegations made in the complaint”). The Supreme Court
appears to have contemplated the filing of suit after an
applicant fails to disclose information under paragraph
(l)(2)(A). See Sandoz, 137 S. Ct. at 1676 (“If the applicant
failed to provide that information, then the sponsor but
not the applicant, could bring an immediate declaratory
judgment action pursuant to § 262(l)(9)(C).”).


There was reference to a Supreme Court decision on finality.

A final decision of a district court means, with limited exceptions, an order that ends the litigation on the merits and leaves nothing for the district court to do but execute the judgment. Coopers & Lybrand v. Livesay, 437 U.S. 463, 467, 98 S. Ct. 2454, 2457, 57 L. Ed. 2d 351 (1978).

Tuesday, August 08, 2017

Li v. Matal. Matter arising out of attorney discipline in New Jersey



The outcome


Feng Li appeals from the decision of the United States
District Court for the Eastern District of Virginia granting
the motion of the United States Patent and Trademark
Office (“USPTO”) and the Director of the USPTO
(collectively, “Appellees”) to dismiss Mr. Li’s complaint for
lack of subject matter jurisdiction and failure to state a
claim, thereby affirming the USPTO’s decision to exclude
Mr. Li from practice before the USPTO. Li v. Matal, No.
15-cv-668 (E.D. Va. Jan. 22, 2016). We affirm.



The case has a New Jersey connection:


After successfully obtaining a
judgment for his clients, Mr. Li disagreed with his clients
on the amount of attorney’s fees he was owed, resulting in
his clients filing suit in New Jersey state court. Knowing
the fees were in dispute, Mr. Li transferred $1.2 million of
the judgment into trust funds in his children’s names.
The New Jersey Office of Attorney Ethics determined that
Mr. Li violated the New Jersey Rules of Professional
Conduct by taking possession of client funds he knew to
be disputed. In 2013, the Supreme Court of New Jersey
disbarred Mr. Li from the practice of law based on attorney
misconduct.

(...)


Mr. Li’s response to the
Notice and Order did not dispute the fact that he had
been disbarred in New Jersey, but rather argued that
reciprocal discipline by the USPTO was not justified
because the New Jersey Supreme Court did not have
jurisdiction to disbar him based on his conduct in New
York
. He further argued that the New Jersey Supreme
Court’s actions violated the due process, equal protection,
and Ex Post Facto clauses of the U.S. Constitution. On
April 28, 2015, the Director of the USPTO issued a final
order pursuant to 37 C.F.R. § 11.24, excluding Mr. Li from
practice before the USPTO. The USPTO Director carefully
applied § 11.24 and found that Mr. Li failed to meet his
burden to show by clear and convincing evidence that: (1)
the New Jersey disciplinary process was “so lacking in
notice or opportunity to be heard;” (2) there was an “infirmity
of proof” establishing his conduct; or (3) a “grave
injustice” would result from his disbarment.



Of CAFC review:


Our review of a district court’s
decision on a petition brought pursuant to 35 U.S.C. § 32
is de novo, “reapplying the standard” applied by the
district court under the APA.

CAFC affirms TTAB in IN RE: I.AM.SYMBOLIC, LLC,


Symbolic lost its appeal to the CAFC from an adverse decision
from the TTAB. Its arguments:


Symbolic argues that the Board erred in its likelihood
of confusion analysis by: (1) holding that the will.i.am
restriction is “precatory” and “meaningless” and therefore
not considering it in analyzing certain DuPont factors;
(2) ignoring third-party use and the peaceful coexistence
on the primary and supplemental registers and in the
marketplace of other I AM marks; and (3) finding a likelihood
of reverse confusion. We will address each argument
in turn.






Likelihood of confusion is a question of law based on
underlying findings of fact. In re Chatam Int’l Inc., 380
F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
of confusion based on the factors set forth in DuPont. 476
F.2d at 1361. “The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence
but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
Alberto–Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)
(alteration in original)). While evidence of actual confusion
may be considered in the DuPont analysis, “a showing
of actual confusion is not necessary to establish a
likelihood of confusion.” Id. (citing Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 1571 (Fed. Cir.
1983)). In the likelihood of confusion analysis “doubts are
to be resolved against the newcomer and in favor of the
prior user.” San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 684 (CCPA 1977).



The Coach case arose:


Furthermore, Symbolic’s reliance on Coach is misplaced.
Although it is true that word marks identical in
sound and appearance may have different meanings and
commercial impressions, 668 F.3d at 1369, the Board’s
finding that this is not such a case is supported by substantial
evidence. Unlike in Coach, Symbolic did not
establish that the words “I AM,” which comprise the
totality of the mark, by themselves “ha[ve] many different
definitions in different contexts,” or that I AM when
applied to Symbolic’s goods “brings to mind” something
different from I AM when applied to registrants’ marks.
Id.



Of reverse confusion:


“The term ‘reverse confusion’ has been used to describe
the situation where a significantly larger or prominent
newcomer ‘saturates the market’ with a trademark
that is confusingly similar to that of a smaller, senior
registrant for related goods or services.” In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (quoting Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957
& n.12 (7th Cir. 1992)). In that situation, “[t]he junior
user does not seek to benefit from the goodwill of the
senior user; however, the senior user may experience
diminution or even loss of its mark’s identity and goodwill
due to extensive use of a confusingly similar mark by the
junior user.” Id. Trademark law “protects the registrant
and senior user from adverse commercial impact due to
use of a similar mark by a newcomer.” Id.; see also Wallpaper
Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 762 (CCPA 1982) (explaining “even where there is
reverse confusion . . . another source with superior de jure
rights may prevail regardless of what source or sources
the public identifies with the mark”).

Symbolic argues that the Board found a likelihood of
reverse confusion and that that finding is not supported
by substantial evidence. The PTO responds that the
Board did not find a likelihood of reverse confusion and
that its finding that the fame of the marks, the fifth
DuPont factor, is neutral is supported by substantial
evidence.
We agree with the PTO that the Board did not find a
likelihood of reverse confusion. The Board treated the
fifth DuPont factor as “neutral” and explained that the
“purported lack of fame” of registrants’ marks was of
“little consequence.” Symbolic I, 116 U.S.P.Q.2d at 1412;
Symbolic II, 2015 WL 6746544, at *8; Symbolic III, 2015
WL 6746545, at *8. That determination is consistent with
our precedent holding that the purported lack of fame of a
registrant’s mark has “little probative value” in the likelihood
of confusion analysis. Majestic Distilling, 315 F.3d
at 1317.
Symbolic points to a footnote in the Board’s opinions
in support of its contention that the Board found a likelihood
of reverse confusion.

Monday, August 07, 2017

CAFC in Personal Audio: a third-party winning challenger at PTAB is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor



Of the standing issue in Personal Audio (Appeal from the United States
Patent and Trademark Office, Patent Trial and Appeal Board in
No. IPR2014-00070):



We asked the parties to brief the question of whether
EFF has standing to participate in this appeal, in view of
the court’s holding in Consumer Watchdog v. Wisconsin
Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir.
2014), that a PTAB petitioner that does not meet the
Article III case-or-controversy requirement does not have
standing to invoke judicial power, and thus does not have
standing to appeal to this court from a PTAB decision on
inter partes reexamination. The court in Consumer
Watchdog stated that “although Article III standing is not
necessarily a requirement to appear before an administrative
agency, once a party seeks review in a federal
court, ‘the constitutional requirement that it have standing
kicks in.’” Id. at 1261 (quoting Sierra Club v. E.P.A.,
292 F.3d 895, 899 (D.C. Cir. 2002)). Thus the court held
that Consumer Watchdog, a non-profit organization
described as representing the public interest, did not have
standing to appeal to the Federal Circuit from the PTAB
decision that sustained the validity of the patent Consumer
Watchdog had challenged.

35 U.S.C. § 141(c) provides the right of appeal to the
Federal Circuit for “[a] party to an inter partes review or
a post-grant review who is dissatisfied with the final
written decision of the Patent Trial and Appeal Board.”
Consumer Watchdog raises no question as to whether
EFF has standing to appear in this court to defend the
judgment of the PTAB, for EFF is not the appellant. The
Court explained in ASARCO Inc. v. Kadish, 490 U.S. 605
(1989), in an appeal from the Arizona Supreme Court to
the United States Supreme Court, that standing to appeal
is measured for the party “seek[ing] entry to the federal
courts for the first time in the lawsuit”:

(...)
The following year, in U.S. Department of
Labor v. Triplett, 494 U.S. 715, 732 (1990), Justice Marshall
explained in concurrence that: “Because respondent
has not invoked the authority of any federal court, then,
federal standing principles are simply inapplicable to
him.”
Here, the party invoking judicial review is Personal
Audio; it is apparent that Personal Audio, on cancellation
of its patent claims by the PTAB, has experienced an
alteration of “tangible legal rights . . . that is sufficiently
‘distinct and palpable’ to confer standing under Article
III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal
citations omitted). With Article III satisfied as to the
appellant, EFF is not constitutionally excluded from
appearing in court to defend the PTAB decision in its
favor.



After a discussion of the substantive patent issues, the CAFC
affirmed PTAB:


We have considered all of Personal Audio’s arguments,
and affirm the PTAB’s conclusion that the challenged
claims are anticipated by the Patrick/CBC
reference, and alternatively that the claims are invalid as
obvious in view of the Compton/CNN reference.
CONCLUSION
The decision of the PTAB, holding claims 31–35 of the
’504 Patent unpatentable, is affirmed.




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